CHAPTER VII.

CONFIRMATION AND EXTENSION OF PATENTS.

and Extension by Judicial

THE powers conferred upon the Judicial Committee of Confirmation the Privy Council with respect to the Confirmation and Extension of Letters-patent are well adapted to en- Committee. Courage inventors, by excepting them, in the case of ingenious and deserving inventions, from the operation of general rules, which would deprive them of reaping an adequate reward for their exertions.

exercised.

tentee believes

In the case of Confirmation they have been very Powers of Consparingly resorted to, a circumstance to be regretted, firmation little from the evident intention of the devisers of those powers to substitute the mode of operation there prescribed for the present system of Amendment and Disclaimer." Forgotten discoveries, which have never led to any practical result, are, as we have seen, in strictness fatal to the claims of the Patentee. To relieve him in some Where Padegree from the hardships resulting from this rule pro- himself to be vision is made by Stat. 5 & 6 Will. IV. c. 83, s. 2, for the inventor. the case in which the Patentee is proved not to be the real inventor, though he believed himself to be so. It enacts, that "if in any suit or action it shall be proved or specially found that any person, who shall have obtained Letters-patent for any invention or supposed invention, was not the first inventor thereof, or of some part thereof, by reason of some other person or persons having invented or used the same or some part thereof before the date of such Letters-patent, or if such Patentee or his assigns shall discover that some other

See remarks on Westrupp and Gibbins' Patent (1836), distilling apparatus, P. C., Web. P. R. 554.

Confirmation not to preju dice existing rights.

Erroneous in principle.

person had, unknown to such Patentee, invented or used the same or some part thereof before the date of such Letters-patent, it shall and may be lawful for such Patentee or his assigns to petition Her Majesty in Council to confirm the said Letters-patent or to grant new Letters-patent." The grounds on which the Committee may report in favour of the Petition are, if it shall be satisfied that such Patentee believed himself to be the first and original inventor, and that such invention had not been publicly or generally used before the date of such first Letters-patent. The Crown may then, if it see fit, accede to such Petition.

An alternative of two grounds, it is to be observed, is proposed on which to found the Petition. It must either have been found " not new" by a Court of Law, or the Patentee must "discover" that some other person, unknown to such Patentee," has invented or used the same." The effect of the Act would seem to be to remove prior user from the list of elements that may dissolve the Patent, and to render pro hac vice matters already known good subject matter for Patents. The provisions of the Act seem, however, only intended to apply to cases in which it shall appear that the Patentee, at the time he obtained his Patent, was ignorant of his title being defective. He must show that he believed himself to be the first and original inventor, by evidence of the course of experiments by which he arrived at the knowledge of the invention.

b

The recommendation is entirely discretionary with the Privy Council. It is exercised only in extreme cases, and then in such a manner as not to prejudice existing rights. The principle, however, on which the whole proceeding is founded appears a very questionable one, To admit the amount of knowledge in the Patentee to enter into the question, and adopt his ignorance as the (1846) Hindm. 201.

Re Card's Patent (1848, P. C.), candlewicks, 6 Moo. 207.

firmation.

standard of validity, is opposed to the essential principle of Patents, and creates an unnecessary deviation from general rules. The invention may be a very proper subject for the exercise of dispensing powers; but the amount of ignorance on the part of the Patentee surely ought not to be appealed to as a title to advance his position. The Act continues, "and the said Letters-patent shall Effect of Conbe available in Law and Equity to give to such Petitioner the sole right of using and making such invention, as against all persons whatsoever, any law, usage or custom to the contrary notwithstanding." The wording of the clause introduces some obscurity as to the course of practice intended by the Act with reference to the instrument itself, and the nature of the rights created by its operation. "The said Letters-patent" may mean either the original Letters-patent confirmed, notwithstanding the vitiating matter, or new ones, reducing the pretensions of the Patentee within legitimate bounds.

firmation.

The proceedings before the Judicial Committee are Proceedings to regulated by Rules dated Council Office, Whitehall, 18 obtain ConNov. 1835. By Rule I., the party intending to apply for the Confirmation of Letters-patent is required to give "public notice by advertising in the London Gazette Advertisement. three times, and in three London papers, and three times in some country paper published in the town where or near to which he carries on any manufacture of anything made according to his Specification, or near to or in which he resides in case he carries on no such manufacture, or published in the county where he carries on such manufacture, or where he lives, in case there shall not be any paper published in such town, that he intends to petition" Her Majesty under the said section. The advertisement must state the object of such Petition, Object of and give notice of the day on which he intends to apply for a time to be fixed for hearing the matter of his Petition (which day shall not be less than four weeks from the date of the publication of the last of the advertise

Petition.

sition.

ments to be inserted in the London Gazette); and that on or before such day notice must be given of any oppoNotice of opposition intended to be made to the Petition. Any person intending to oppose the said application must lodge notice to that effect at the Council Office, on or before such day so named in the said advertisements, and, having lodged such notice, will be entitled to have from the Petitioner four weeks' notice of the time appointed for the hearing.

Notice to parties to suits or actions.

Opposition.

Petitions must be presented within one week from the insertion of the last of the advertisements required to be published in the London Gazette. All Petitions must be accompanied with affidavits of advertisements having been inserted according to the provisions of section 4 of the said Act, and the first and second of these Rules, and the matters in such affidavits may be disputed by the parties opposing, upon the hearing of the Petitions.

All parties to any former suit or action touching the Letters-patent, and all persons giving notice of opposition, are entitled to be served with a copy of the Petition, and no application to fix a time for hearing shall be made without affidavit of such service.

Parties served with Petitions are to lodge at the Council Office, on or before the days named in the advertisements, notice of intention to oppose; and within a fortnight of such service, notice of the grounds of their objections to the granting of the prayer of such Petition. Such parties may be heard in opposition before the Privy Council. The Crown may object ore tenus at the hearing.*

e

(1836) 3 Knapp. App. I. II. III.; Rules dated 18 Nov. 1835. f Rule III.

g Rule IV.

h Rule V. It seems doubtful whether licencees are entitled to notice; Re Heurteloup's Patent (1836), fire-arms, Web. P. R. 553. 1 Rule VI.

* Re Card's Patent (1848), candlewicks, 6 Moo. 207.

Patent.

A Petition' presented shortly after the passing of the Heurteloup's Act seems to have proceeded on an erroneous apprehension of the circumstances affecting the validity of the Letters-patent. It stated, that since the date of the Letters-patent (1834) the petitioner had discovered that a Patent had been granted in France, in 1821, for the same invention, but that the Specification of the French Patent was not to be found, except in a French work containing an account of expired Patents. No legal proceedings had been instituted by the Patentee. The Judicial Committee directed notice of the day of hearing to be furnished to the French Patentee, and on an affidavit that such notice had been sent through the Post Office, addressed "L. de Valdahon, Paris," recommended the Letters-patent to be confirmed.

Gibbins' Patent.

In the case of Westrupp and Gibbins' Patent," the Westrupp and application was by the assignee. The Letters-patent were dated 24th May, 1831, and assigned by the Patentees separately in 1833 and 1834. The Petition was accompanied by the affidavit of the surviving Patentee, stating his belief that they were the true and first inventors. In opposition it was contended that the invention was old, and that the proper course was by disclaimer of such parts of it as were incontestably known. The question of the invention being generally known was the point mainly in dispute. It was contended for the Petitioner that there was no later account of it than a letter from a learned French gentleman in the Philosophical Transactions of 1670, "concerning the way of making sea water sweet." On the other hand, copies of two Specifications dated 1806 and 1809 were produced, describing precisely, as was alleged, the subject matter of the Patent sought to be confirmed. The Petition was dismissed with costs, the following remarks being made by

m

Re Heurteloup's Patent (1836), fire-arms, Web. P. R. 553.

(1836) Apparatus for making fresh water from salt, Web. P. R.