claim. The party eligible to act in the case of Amendment and Who is to disDisclaimer was at the outset of the practice the subject of considerable difference of opinion, according to the interpretation affixed to the words "any person who as grantee, assignee or otherwise, hath obtained, or who shall hereafter obtain, Letters-patent." assignment, In Spilsbury v. Clough," where the disclaimer had Patentee, after been enrolled by the grantee, who did not at the time entering dispossess the entire interest in it, Lord Denman, C. J., claimer. observed, "I think the grantee falls within the description given in the statute of the persons who may enter a disclaimer; any inconveniences which might arise from such a power may be obviated by the exercise of the discretion conferred upon the Attorney and SolicitorGeneral, who will, before they grant leave for that purpose, take cognizance of the name in which permission is given." The opinions expressed by the learned judges in that case amounted in effect to the position, that, irrespective of his interest in the Patent, the Patentee was the proper party to disclaim. c. 69. To set at rest, however, all doubts as to whether under 7 & 8 Vict. the above provisions a plaintiff, after assigning his interest, could enter a Disclaimer, the Stat. 7 & 8 Vict. c. 69 (Privy Council Appellate Jurisdiction), was enacted, by sect. 5 of which it is enacted, "That in case the original Patentee or Patentees hath or have departed with his or their whole, or any part of his or their interest, by assignment to any other person or persons, it shall be lawful for such Patentee, together with such assignee or assignees, if part only hath been assigned, and for the assignee or assignees, if the whole hath been assigned, to enter a Disclaimer and. Memorandum of alteration, ' Russell v. Ledsam (gas tubes), 1848, 1 H. of L. Cases, 687. (1842), chloride of lime, 2 Gale & Dav. 17; 6 Jur. 579; Web. P. R. 255; 2 Q. B. 466. Per Pollock, C. B., Wallington v. Dale (1852), Exch., gelatine, 19 L. T. 187. Section 6. Disclaimer part of Letters patent. What may be disclaimed. under the powers of the said recited Act," which, when entered and filed as there prescribed, "shall be valid and effectual in favour of any person or persons in whom the rights under the said Letters-patent may then be, or thereafter become, legally vested; and no objection shall be made in any proceeding whatsoever, on the ground that the party making such Disclaimer or Memorandum of such alteration had not sufficient authority in that behalf." By sect. 6, Disclaimers and Memoranda of alterations made before the passing of the act "by such Patentee with such assignee, or by such assignee as aforesaid," are declared valid. The new Act extends to the Patentee the advantages conferred by 5 & 6 Will. IV., amended by 11 & 12 Vict. c. 94, s. 14, and re-enacted by 12 & 13 Vict. c. 109, s. 15, whereby the grantee, assignee or otherwise proprietor of Letters-patent, may enter a "Disclaimer" of any part of either the title of the invention, or of the Specification, stating the reason for such Disclaimer, "which, being enrolled with the Specification, shall be deemed and taken to be part of such Letters-patent and such Specification in all Courts whatsoever." It also declares the filing of the Disclaimer or Memorandum of alteration by leave of the Law Officer to be, except in cases of fraud, conclusive as to the sufficient authority for the entry of the Disclaimer.” The next consideration is the matter to be disclaimed, or the nature and extent of the changes effected by Disclaimer or Memorandum of alteration. As in the case of the subject matter of the original grant, this is a matter with respect to which general rules are inapplicable, and * 5 & 6 Will. IV. c. 83. y 15 & 16 Vict. c. 83, s. 39. Spilsbury v. Clough (1842), chloride of lime, 2 Q. B. 466; Perry v. Skinner (1837), Exch., pens, 2 M. & W. 471; Reg. v. Mill (1850), C. B., instruments for marking, 1 L. M. & P. 444. which must in each case depend upon the nature of the invention. The only restriction imposed by Statute is, that it must not be "such Disclaimer or such alteration as shall extend the exclusive right granted by the said Letters-patent." The extent of the alterations in its description gives, as we have seen, a very inadequate idea of the extent of the alteration in the results of a manufacture. The real effect of any alteration in a Specification may, therefore, be to create a Patent right materially different from that intended to be conferred by the original Letters-patent. Disclaimer. The Act requires a statement of the reason for making Reason for the the Disclaimer. This is usually complied with by setting out shortly in the Petition the points in which the Patentee believes the Title, the description, or the claims in the Specification of his Patent, to be defective. Inconsistency between the Provisional and Complete Specifications seems, in the present aspect of the Law, likely to constitute the main reasons for desiring an alteration in Letters-patent granted under the present system. Crown. The assent of the Crown to the entry of the Dis- Assent of the claimer or Memorandum of alterations is an indispensable preliminary. The Act originating the procedure provided for this assent by means of the fiat and signature of the Attorney or Solicitor-General in the case of an English, of the Lord Advocate or Solicitor-General of Scotland in the case of a Scotch, and of the Attorney or Solicitor-General of Ireland in that of an Irish, Patent. Patents being now granted for the United Kingdom, the assent of the Attorney or Solicitor-General alone is requisite for Patents granted under the new Act; Disclaimers must be assented to by the same Law Officers as before. Applications for Disclaimer and alterations of Patents a 14 Jur. Pt. II., 462, Heath's Patent (steel), 10 M. & W. 444. (1851) Evid. 2789, Sir J. Romilly, M. R. b c 5 & 6 Wil!. IV. c. 83, s. 1. Amendment of Patents granted under the old system. granted under the old system (previously to 1st October, 1852) are not received at the Office of the Commissioners. The practice with regard to these is that obtaining previous to the operation of 15 & 16 Vict. c. 83Petitions and caveats, with reference to English Patents, must be entered, as before that Act, at the chambers of the Law Officers. The first step to be taken by the party entitled to disclaim is by an application for leave, in the following form, to be left at the Office of the Commissioners. TO THE COMMISSIONERS OF PATENTS. day of The petition of A. B. of showeth that your Petitioner hath obtained her Majesty's Letterspatent for bearing date the and hath duly described the nature of his invention, and in what manner the same is to be performed, by an instrument in writing duly filed in the office of the Court of Chancery appointed by the Lord Chancellor for filing Specifications [nature of and reasons for the alterations intended to be made]. Your petitioner therefore prays leave to file in the Office appointed for filing Specifications in Chancery the said Disclaimer [or "Memorandum of alteration"], a copy of which, signed by your Petitioner, is left herewith, in the form in which your Petitioner is desirous the same should be entered as aforesaid. And your Petitioner, &c. Parties interested may oppose the entry of a Disclaimer or Memorandum of alteration, the provisions of the Act being, "that any person may enter a caveat in like manner as caveats are now used to be entered against such Disclaimer or alteration; which caveat, being so entered, shall give the party entering the same a right to have notice of the application being heard by the Attorney-General or the Solicitor-General respectively." A caveat in the following form, left at the Office of the Commissioners, entitles the party leaving it to notice of any application for leave to enter, and seven days notice of the next meeting appointed by the Law Officer. Caveats may be lodged at any time before the actual issuing of the fiat. CAVEAT AGAINST DISCLAIMER. Caveat against any fiat or leave being granted to A. B. to enter any Disclaimer or Memorandum of alteration of any part of the Title or Specification in the Patent of the said A. B. for dated without notice to [party May be lodged until issue of the fiat. The effect of the Patent Law Amendment Act, 1852, Only one requisite. has been to substitute one caveat at the Office of the Commissioners for the caveats at the chambers of the Law Officers of the three kingdoms.h The caveats lodged with the Commissioners are for- Law officer warded, with the Petition, the Disclaimer, and a copy applicant to admay require of the original Specification, to the Law Officer, who vertise. may, before granting his fiat for the entry of a Disclaimer or Memorandum of alteration, require the party applying to advertise in such manner as he may think fit. The following is the form in present use: Notice is hereby given, that A. B., grantee [or "assignee"] of Form of adLetters-patent for dated has applied to vertisement. her Majesty's Commissioners of Patents [or " Attorney" or "Solicitor General"] for leave to enter a Disclaimer [or "Memorandum of alterations"] of certain parts of the Title or said Invention. sideration of In the event of advertisements being required, the Law Time for reOfficer will fix any time, not sooner than ten days from suming the conthe first publication of any such advertisement, for re- the matter. suming the consideration of the matter. In the absence of caveats, or non-appearance of oppo- Practice if unnents, the usual practice of the Law Officer is to allow opposed. the entry of the Disclaimer, which he does by putting b 5 & 6 Will. IV. c. 83, s. 1. i Ibid. The regulations are similar to those observed by the Judicial Committee in the cases of Prolongation. |