Lord Lyndhurst, L. C., with respect to the costs :-" If a party entitled to oppose does come and oppose, and opposes successfully, if we do not give costs we shall discourage persons coming to protect the interests of the public. We have the power to give costs in any matter referred to us and sitting here as a Judicial Committee, we can give costs under the general Act, not under the Patent Act."

A somewhat curious state of circumstances was produced by the direct interference of the Legislature," confirming a Patent which had become void from nonenrolment of the Specification as required by the Letterspatent. Letters-patent, dated 19th May, 1838, containing a proviso for enrolment of the Specification within four months from their date, had been granted for the invention of wood-paving to S., who from inadvertence and misinformation omitted to enrol until 19th November, 1838, thereby avoiding his Patent. On the 29th January, 1839, Letters-patent for an improved pavement were granted to C., who duly enrolled his Specification.° The Act recited the grant of the Letters-patent confirming the Patent of S., the enrolment of the Specification within six months from the date of the Patent, and the proviso for avoiding it if it should become vested in or in trust for more than twelve persons; and, after further reciting that certain persons had agreed to form a company to work the Patent, sanctioned the formation of the Company, and enabled the Patentee to assign the Patent to them, or license them to work it. A subsequent section, reciting the non-enrolment of the Specification within due time, from inadvertence and misinformation, and that it was expedient that the Patent should be rendered valid to the extent thereinafter mentioned, enacted that the Letters-Patent should during the remainder of the term be considered, deemed and taken to be as valid and n 4 & 5 Vict. c. 91, s. 31 (Local and Personal).

• Stead v. Carey (1845), 1 C. B. 496.

effectual as if the Specification had been enrolled within four months. Held, that the Confirmation of the Patent was unconditional, and was not dependent on the formation of a company, and that the defendant was precluded from using the plaintiff's Patent.

Patent.

An unsuccessful application for Confirmation of Letters- Robinson's patent for Scotland was made by the assignee in the case of Robinson's Patent. The Petitioner had discovered, since the grant of the Letters-patent, that the invention had been used in England prior to their date, and was advised that, in consequence of the decision in Brown v. Annandale, such user would invalidate his Patent for the purpose of taking legal proceedings in Scotland. The assistance of the Committee was refused on the ground that "the Act of Parliament was meant to meet a totally different case.""

refused for

want of

Upon an application for a Confirmation of Card's Card's Patent Patent, it was proved that the Patent article was not publicly and generally known prior to the Letters- novelty. patent, but that some persons had systematically used an article identical with the Patent article for several years prior to the grant of the Letters-patent, and that the subject of the Patent was little more than the application of a well-known article of trade. Under such circumstances, their Lordships refused to recommend the Confirmation of the Letters-patent. Caveats had been entered against this Petition, but, owing to the objections not having been lodged in time, were not prosecuted.

In delivering the judgment of the Committee in that case, Lord Campbell said: "By the law as it stood prior

P (1845) nipping lever, 5 Moo. 65.

22 March, 1833.

* (1842) paper, 8 Cl. & Fin. 437; Web. P. R. 433; and see Roebuck v. Stirling (1774), oil of vitriol, 5 Browne's Supp. Morrison, 522, and cited 8 Cl. & Fin. 447, n.

• Per Lord Campbell.

t (1848, P. C.), candle-wicks, 6 Moo. 207; 12 Jur. 507.

to the Stat. 5 & 6 Will. IV. c. 83, it was necessary to the validity of the Patent that the invention should be new as well as that it should be useful; and if it could be proved that the invention had been practised publicly by any person before the Letters-patent were granted, the Patent was invalid. That Law led to hardships in many cases, because it often happened that after experiments had been tried and a certain progress made in the invention, and the experiments proving abortive, they were subsequently abandoned, some other ingenious man de novo took up the invention and completed the process, by which a great benefit was conferred upon the community, whereupon he obtained a Patent for his invention; but as soon as he began to reap the fruit of his invention his Patent was infringed; and when he brought an action for such infringement, the former abortive experiments were brought up to prove that the invention was not new. Some doubt existed in Westminster Hall whether, if the experiment, although it had been to a certain degree successful, had been abandoned, it would vitiate the after-acquired Patent: but to remove all doubt upon the subject this enactment was resorted to by the Legislature (5 & 6 Will. IV. c. 83), that, although there may have been a general knowledge of the invention, if it was not actually carried out and had been abandoned, that such knowledge should not vitiate the Patent which perfected and rendered beneficial the original discovery. The language used by the Legislature is this, that the Committee, 'upon examining the matter and being satisfied that such Patentee believed himself to be the first and original inventor, and being satisfied that such invention, or part thereof, had not been publicly and generally used before the date of such first Letters-patent, may report to His Majesty their opinion that the prayer of such Petition ought to be complied with, whereupon His Majesty may, if he think fit, grant such prayer, and the said Letters-patent shall

be available in Law and Equity to give such Petitioner the sole right of using, making and vending such invention, as against all persons whatsoever;' probably with the words intended to be understood, notwithstanding any prior use of the said invention. It seems to us, that in this case the Petitioner has not afforded sufficient evidence from which we can reasonably infer that he was the first inventor."

of Patent.

The invention had become partially known and adopted by persons not licencees. The injustice to such, of confirming the Letters-patent, was strongly dwelt upon. "Their Lordships are of opinion," said the noble Lord," "that this is not a case which the Legislature had in contemplation when this enactment was passed; that it had in view the case where there had been an invention which had actually been practised, but which had not been continued to be practised; so that, under the cir- User disconcumstances, the Patent should not be rendered invalid tinued at date by the attempts to use it in the first instance having been abortive, and where the Letters-patent, under those circumstances, are confirmed, no injury can be done to any one. The inventor who has obtained his Letters- Confirmation patent and made his invention public for the benefit of a reward for ingenuity, inthe community has his fair reward for his ingenuity and dustry and his industry and the capital which he has employed, and no one suffers by justice being done to him. There- Abandoned fore, in a case where it appears that an invention has inventions.. been carried on to a certain degree and abandoned, the Act of Parliament may most beneficially be acted upon. But their Lordships are of opinion, that a case of this sort, where the invention was used before the Patent was considered beneficial by those who carried it out, and was proved to be beneficial by the persons so using it, never having been abandoned, but used by them down. to the time at which this application is made, is a case to which the Act was never intended to apply."

"In re Card's Patent (1848, P. C.), candle-wicks, 6 Moo. 214.

capital.

Extention of the term of Patent privileges.

Special Acts.

IV. c. 83, s. 4.

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of intention to apply.

W

An equally important function of the Judicial Committee with that of confirming Letters-patent, and one more frequently resorted to, is that of deciding on the extension of the term of Patent privileges. The term of fourteen years, prescribed by the Statute of James as the limit of their duration, is, as has been above remarked, in many cases inadequate for the remuneration of the Patentee. Till very recently, however, nothing short of a resort to the Legislature could extend that term. Frequent applications for such assistance suggested the advisability of framing some general measure to confer the requisite relief, and resulted eventually in the enactment Stat. 5 & 6 Will. of Stat. 5 & 6 Will. IV. c. 83; by section 4 of which it was declared, "that if any person, who now hath or shall hereafter obtain any Letters-patent as aforesaid, shall advertise in the London Gazette' three times and in three London papers, and three times in some country paper published in the town where or near to which he carried on any manufacture of anything made according to his Specification, or near to or in which he resides in case he carried 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 apply to His Majesty in Council for a Prolongation of his term of sole using and vending his invention, and shall petition His Majesty in Council, it shall be lawful for any person to enter a caveat at the Council Office; and if His Majesty shall refer the consideration of such Petition to the Judicial Committee of the Privy Council, and notice shall first be by him given to any person or persons who shall have entered such caveats, the Petitioner shall be heard by his counsel and witnesses to prove his case, and the persons entering caveats shall likewise be heard by their counsel and witnesses; whereupon, and upon hearing and inquiring of

Caveat.

Hearing.

▾ See the instances cited Web. P. R. 38.

"As grantee, assignee or otherwise." Stat. 5 & 6 Will. IV. s. 1.