Sufficiency of Specification. See under Specification, pp. 421-436. Superiority of Materials is not good subject-matter, pp. 530 (d), 537 (p). Supply of anticipating publication, p. 545 (g).

(9) PICKARD AND CURRY v. PRESCOTT. [1890]

A French periodical containing what was admittedly an anticipation, was supplied to one person before the date of the plaintiff's patent. Held, that in the absence of further evidence this was fatal. (7 0. R. 361.)

Tenants in Common, right to sue descends to survivor, p. 287 (s) right to work patent vested in trustee for, p. 207 (1).

Terms of grant of letters patent, pp. 148, 149.

Terms imposed on extension, pp. 136-139.

Terms in specification to be explained by jury, pp. 461 (p), 470 (p).
Threats,

person aggrieved by, may bring action, Patents Act, 1883, sect. 32, p. 546
section not to apply if person making, prosecutes action with due dili-
gence, sect. 32, p. 546.

Cases as to, before the Act of 1883, p. 546

action formerly did not lie unless mala fides was shown, p. 546 (h)

or if defendant bonâ fide intended to follow up his threats, p. 547 (i) (k) or if he undertook to do so, p. 547 (j)

or if made with reasonable and probable cause, p. 547 (k)

or if threatening statements were true, p. 547 (1)

or if defendant believed them to be true, p. 548 (m)

circular issued bona fide not restrained by interim injunction unless in violation of contract, p. 548 (n)

validity of patent was not in issue, p. 552 (y).

Cases since the Act of 1883, p. 549

plaintiff is person aggrieved when he is threatened, sect. 32, p. 546

or his customers, p. 553 (a)

or when customers of his licensees are threatened, p. 553 (z)

injunction granted,

where threats were admitted, p. 554 (c)

where plaintiff made prima facie case of non-infringement, p. 551 (u) (x)

although not proved, p. 551 (u) (x)

motion adjourned where defendants had commenced action first, p. 550 (s)

or where defendant commenced cross-action, pp. 550 (r), 554 (e) threats by advertisement, p. 553 (a)

or by circular, p. 551 (w)

or by solicitor's letter, pp. 553 (z*), 554 (e)

or by private letter, p. 550 (t)

action to bring defendant within the proviso, p. 551 (w) (x)

must be prosecuted without delay, pp. 549 (p), 550 (r), 554 (d), 555 (g) must be of same character as that threatened, pp. 551 (x), 554 (e) need not be against person aggrieved, p. 551 (x)

but must test validity of patent or fact of infringement, p. 551 (x) abandonment of when clear that it would fail, p. 555 (g)

validity of patent is in issue, p. 552 (y)

procedure in action to restrain,

particulars of objection to be given by plaintiff, p. 553 (a)

after defendants have stated on what patents they rely, p. 553 (a)
certificate that validity came in question granted, p. 553 (z*)

onus on defendants when threats were admitted, p. 554 (c)
form of order for injunction, pp. 551 (x), 553 (b)

delay, three months is primâ facie not too great, p. 555 (g)
damages, pp. 550 (t), 552 (y), 554 (c)

costs, pp. 552 (y), 554 (e).

PATENTS ACT, 1883, sect. 32. Where any person claiming to be the patentee of an invention, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged manufacture, use, sale or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats:

Provided that this section shall not apply if the person making such threats with due diligence commences and prosecutes an action for infringement of his patent.

Cases before the Act of 1883.

(h) WREN v. WEILD. [1869]

Rule to set aside a nonsuit. The declaration contained counts to the effect that the plaintiffs made and sold spooling-machines, and that the defendant falsely and maliciously wrote to persons in treaty with the plaintiffs for such machines that they were infringements of a patent of the defendant's, and that if they were used he would claim royalties for their use, and, if not paid, take legal proceedings; in consequence of which the plaintiffs lost the sale of their machines. There was no allegation that the defendant did this without reasonable or probable cause, nor, except indirectly, that the defendant had any patent. Plea, not guilty, and issue thereon. At the trial the plaintiffs, after proving the facts stated in the declaration, tendered evidence to show that the defendant's patent was void for want of novelty, that the defendant himself knew the facts which would render his patent void, and that the plaintiffs' machines were no infringement of the defendant's patent.

Lush, J., was of opinion that, inasmuch as the defendant's patent was still subsisting and not set aside on scire facias or otherwise, this evidence was immaterial. A rule for a new trial was subsequently discharged, when it was Held, (1) that the evidence in question was immaterial to the issue raised; and (2) that the action would not lie unless the plaintiffs could affirmatively prove that the defendant's claim was made malá fide. (L. R., 4 Q. B. 730; 38 L. J., Q. B. 327; 20 L. T. Rep., N. S., 1007.)

(i) DALZIEL v. RAILWAY CARRIAGE AND STEAMBOAT GASLIGHT COMPANY. Malins, V.C., expressed an opinion: "that a man has no right to go about boasting of a patent and not attempt to try its validity." (Not reported. Cited L. R., 13 Eq. 358.)

(i) ROLLINS v. HINKS. Ch. [1872]

There is no presumption in law in favour of the validity of a patent, and therefore a patentee is not entitled to publish statements of his intention to institute legal proceedings, in order to deter persons from purchasing alleged infringements of his patent, if he has no bona fide intention to follow up his threats by taking such proceedings, and the Court will in such case restrain him from making such publication. (L. R., 13 Eq. 355; 41 L. J., Ch. 358.)

A person alleging the invalidity of a patent is not bound to assert his claim by scire facias, in order to establish his right to restrain the publication of statements by the patentee, threatening with legal proceedings persons buying articles of his manufacture alleged to be infringements of the patent. (Ib.)

(j) AXMANN v. LUND. Ch. [1874]

The Court will restrain a patentee from issuing circulars threatening legal proceedings against infringers, unless he will undertake to commence proceedings to assert the validity of his patent; and the fact that the party seeking the aid of the Court was formerly a licensee of the patent under the patentee, and had himself concurred in issuing similar circulars, does not prevent the Court interfering after the expiration of the licence. Rollins v. Hinks followed. (L. R., 18 Eq. 330.)

(k) HALSEY v. BROTHERHOOD. C. A. [1881]

A patent is prima facie good as long as it stands, and the person who alleges it is not good must prove it. Therefore, a patentee who issues notices threatening actions for infringement, cannot be restrained merely because he refuses to follow up his threats by an action, but only if the statement that there is an infringement is untrue to his knowledge, or is not made bona fide, or is proved to be untrue at the time of the action at which the injunction was sought. (15 Ch. D. 514; 19 Ch. D. 386.) The defendant was the holder of a patent for engines, the validity of which was not impeached. Baggallay, L.J.: "I take it to be the result of the case to which I have referred (Wren v. Weild), that he (the defendant) was entitled to state that the engines manufactured by the plaintiffs were infringements of his patent, and to threaten proceedings against any person in respect of such infringement, provided he observed the rule that those threats must have been made with reasonable and probable cause; unless they are made with reasonable and probable cause, there would be the inference that they were maliciously made." (19 Ch. D. 390.)

(1) BURNETT v. TAK. [1882.]

The plaintiff brought an action to restrain the defendant from issuing notices to plaintiff's customers, that plaintiff, in selling goods, was infringing defendant's rights, and from threatening such customers with legal proceedings in case they should purchase

such goods, and applied for an interim injunction :—Held, that as the plaintiff had not satisfied the Court that the statements made by the defendant were false, there was no evidence of malá fides, and therefore the injunction was refused. (45 L. T. 743.)

(m) SUGG v. BRAY. [1881-5]

In 1881 the plaintiff brought an action for an injunction to restrain the repetition of statements by the defendants that the plaintiff infringed the defendants' patent, which the plaintiff alleged were false and maliciously made, and for damages. In 1883 the plaintiff applied for leave to amend, by adding a claim for a declaration that he had not infringed the defendants' patents, or if he had, that those patents were bad. Leave was refused, with costs. The defendants did not commence any action in respect of the alleged infringements, but they contended that they had reasonable and probable cause for making the statements :-Held, that the plaintiffs had not, in fact, infringed the defendants' patent, and that the statements were unfounded; but that the plaintiffs had not proved that the defendants had not made the statements bona fide, in support of rights which they believed they had, and that therefore the plaintiffs were not entitled to damages nor to an injunction.

The 32nd section of the Act of 1883 does not apply to threats made before it came into operation. (1 O. R. 45; 2 O. R. 223; Griff. 210.)

(n) SOCIÉTÉS ANONYMES DES MANUFACTURES DE GLACES v. TILGHMAN'S PATENT SAND BLAST COMPANY. C. A. [1883]

The defendants, who were owners of patents in Belgium and England for an invention for making globes, by deed granted a licence to plaintiffs to use and employ the invention at their manufactory (which was in Belgium), but not elsewhere. The plaintiffs manufactured articles under this licence in Belgium, and sold them in England, and the defendants issued a circular to the trade, warning persons that such importation and sale would be a violation of the English patent. The plaintiffs' application for an injunction to restrain such issue was refused. Where a tradecircular is issued bona fide, an interim injunction will not be granted to restrain it, unless it is in violation of some contract, however much the balance of convenience may be in favour of granting it. (25 Ch. D. 1; 53 L. J. Ch. 1.)

(0) SHARP v. BRAUER. BRAUER v. SHARP. [1885-6].

The plaintiff, Sharp, issued a circular, threatening proceedings against persons infringing his patent for folding-screens. Brauer, a maker of folding-screens in Germany, commenced an action to restrain the issue of this circular to his customers, or persons who might become his customers, whereupon Sharp commenced an action against Brauer, and his agent in England, for infringement. The latter action was heard first, and the patent was held invalid for want of novelty. On the first action coming on for trial, Held,

that at the time the circular was issued, the defendant had a right to advertise himself as patentee, and that there was no evidence of malice on his part. That, therefore, there could be no damages, and no injunction. Section 32 was not referred to in the judgment. In the circumstances, the action was dismissed without costs. (30. R. 193; Griff. 205.)

Cases since the Act of 1883.

(p) Barnett v. BARRETT'S SCREW-STOPPER COMPANY. [1884]

66

The defendant company issued a circular, stating that a SO called" patent stopper of Barnett and Foster was an infringement of their patent, and that they were about to take proceedings against Barnett and Foster, and every one who used the stopper. Barnett and Foster commenced an action under section 32, and moved for an interlocutory injunction. It appeared that the defendants were exclusive licensees of the patent for an area of twelve miles round London, and that the patentee had commenced an action against Barnett and Foster for infringement, and that the defendants were to be joined as co-plaintiffs in that action. Pearson, J., said: "I do see this, that a motion of this kind being made a defendant might, simply to stave off proceedings, issue a writ and nothing more, and then, when it had served his purpose, he might discontinue the action and the Court might be in great difficulties to know what to do. If a new motion were made, he might say, 'I do not mean to continue writing any more letters or circulars. You cannot get an injunction, because we have told you we do not mean to write any more.' Therefore I think the better course will be to adjourn this motion until the result of the action is known, with liberty to apply, and reserving all questions of costs." (10. R. 9, at p. 10; Griff. 47.)

(9) BARNEY v. UNITED TELEPHONE COMPANY.

[1885]

The plaintiff having advertised that he was prepared to supply the Boult telephone, the directors of the defendant company issued an advertisement, warning the public that they were advised that the Boult telephone was an infringement of their patent rights, and that proceedings would be taken to protect their rights. The defendants' solicitors had refused to make the plaintiff sole defendant in an action for infringement, on the ground that he was not in a position to pay damages or costs. On motion for an interlocutory injunction, Chitty, J., said: "I will assume, for the purpose of this judgment, that it comes within section 32. Under that section the Court can grant an injunction against the continuance of this threat, and that I am now asked to do. But the section contains this condition: If the manufacture, use or sale to which the threat relates is not, in fact, an infringement of any legal right of the person making the threats.' Now it appears that there is a serious question between the parties as to whether there is, in fact, an infringement or not, . . . and that is a question which I cannot decide on the present materials. That being so, there can