which the Ju require the party applying, first, to show some invention; secondly, that the invention is of a nature to benefit the public; and, thirdly, that the inventor has not received an adequate reward. The points considered by the Court Principles on on these occasions were thus stated by Lord Langdale, dicial ComM. R., in the case of an application" opposed by the as- mittee act. signees of a rival Patent:"First, the merits of the invention; secondly, the utility of the machinery which has been invented; and, lastly, whether the Patentee has received a sufficient remuneration for the merit which he has displayed. determined on The validity of Letters-patent being in dispute at the Validity not period of the application, the Judicial Committee will extension. not enter upon that question, but in the absence of their repeal will assume them to be valid. In the case of Kay's Patent an extension was granted on the merits of the invention, pending a suit putting the validity of the Letters-patent in question; Lord Brougham observing, "that if the Judicial Committee had seen that the Patent was manifestly and grossly illegal, they would not advise Her Majesty to grant an extension of it, though such extension would not benefit the party obtaining it, if the Patent in the first instance was invalid; but that if they postponed giving their decision until the results of the suits then pending were land, 22nd December, 1821; for Scotland, 6th April, 1822; and for Ireland, 14th December, 1822. Their Lordships refused to extend a second Patent granted to the same party in 1825. • Per Lord Brougham, Derosne's Patent, sugar (1844), 4 Moo. 416. P In re Pinkus's Patent (1848), atmospheric railway, 12 Jur. 233. In re Kay's Patent (1839), flax-spinning machine, 3 Moo. 24; Kay v. Marshall (1836), L. C., 1 M. & Cr. 373; (1838) C. B., 5 Bing. N. C. 492; (1839) M. R., 1 Bear. 535. of the Patent is doubtful. known, the Patent would in the meantime expire; and being of opinion that upon the merits shown the Patentee ought to have some extension, their Lordships would advise such for a period of three years." The Patent was ultimately declared invalid on the ground of want Where validity of novelty. "On an occasion of this kind," said Lord Langdale, M. R., in a case in which extension was refused, "the Court has, in no very direct way, to consider whether the Patent is or is not valid at Law. Unless clearly invalid, so that it would be altogether nugatory to prolong the Patent, the Court has been rather inclined to assume that the Patent may be good, and so leave the question to any legal considerations that may arise between the parties who are interested in it." Woodcroft's This view of the Court is coincident with that expressed by Lord Brougham in the case of Woodcroft's Patent:" In all cases where there is a disputed right as to the Patent, and where the validity of the Patent may come into question, there are two things to be considered; the first is, whether the case to prove the invalidity of the Patent is so clear as to remove all ordinary doubt; the second, whether the case is so doubtful that the Court would rather retire from its consideration than decide it. In the former case they would not grant the extension, because they did not see the merits and because they would not put the opposing parties to the vexatious process of bringing their scire facias in the Law Courts. But where the matter is doubtful, where conflicting evidence and questions of 'See Bodmer's Patent (1838), cotton carding, 2 Moo. 471, and 2 & 3 Vict. c. 67. " (1841) House of Lords, 8 Cl. & Fin. 245. (1848), Pinkus's Patent, atmospheric railway, 12 Jur. 233; 28 Lond. Journ. 448. (1846), screw-propeller, 28 Lon. Journ. 203. Law arise, this Court will not refuse the discretionary power vested in it by Parliament merely because it was a case in which the validity of the Patent was questioned." In the case of Woodcroft's Propeller" the application Woodcroft's was successful in the face of a powerful opposition (Ship Propeller. Propeller Company, who had adopted Smith's Patent), principally from the merit of the invention. The Patentee had expended £1,200, and received only £460. Their Lordships granted an extension of the Patent for six years, and refused to put the Patentee under conditions, "the invention being a most ingenious application of mathematical principles to mechanical ends." The expense of experiments instituted by the Patentee, Expensive experiments. in addition to the interruption to his ordinary business, forms another item of considerable importance in certain classes of inventions. In Heath's Patent large sums had been expended in experiments, and as the articles manufactured at first were given away, to prove the excellence of the steel, the return had been very small-2007., it was said, would cover all the receipts. The application was by the widow of the Patentee, and was opposed by the defendant to an action for infringement, then pending. Scientific witnesses deposed to the improvement effected by the use of manganese in converting iron into steel, and persons conversant with the trade proved that, previously to the invention, the best cutlery could only be made with shear steel, as no means were known of welding cast steel with iron. The Committee, while cautiously abstaining from expressing any opinion as to C * (1846), screw, 28 Lond. Journ. 196, per Lord Brougham, P. C. * Southworth's Patent (19th April, 1823), machinery for drying calicoes, linen, &c., Exch. (1837), Web. P. R. 487; Lowe's Patent (1846), naphthalized gas, 10 Jur. 363. b (Feb. 8, 1853, P. C.), steel, M. M. 131. c Heath v. Smith (1854), Ex. Ch., 18 Jur. 601. Loss from litigation. Pinkus's the validity of the Patent, considered the invention one of great merit and fraught with considerable advantage to the public, and recommended its extension for seven years. d The trouble and expense of litigation forms, also, a favourite item with the Judicial Committee, who look with great suspicion on an applicant who has compromised legal proceedings. Their Lordships require generally to have a satisfactory explanation of the length of time during which no steps have been taken against infringers. In the case of Smith's screw-propeller, their Lordships' commiseration was excited, from the Patentee's "great misadventure in steering through the Courts of Law." There was no clear proof of any great amount of infringement, but the Patentee had taken proceedings against the wrong parties, and at a cost of 2,0007. had failed in his suit. The Ship Propeller Company, assignees of the Patent, had opposed the extension of a rival Patent. The Admiralty had employed the invention extensively, and owed 25,000l. for its use, but they refused to pay the Patentee in consequence of the litigation and the claims of other parties to the originality of the invention. They adopted the somewhat singular course of paying a large sum of money to a banker for the purpose of distribution among such persons as could substantiate a claim to it. The invention was admitted to be of great merit and public utility. The Patent had, however, not been remunerative. Extended for five years. Piracy, through unavoidable exposure during the ex d Re Simister's Patent (1842), cloth for stays, 4 Moo. 164. e Re Pinkus's Patent (1848), atmospheric railway, 12 Jur. 233. f Re Pettit Smith's Patent (1850), screw-propeller, 7 Moo. 133. Woodcroft's Patent (1847), screw-propeller, 28 Lond. Journ. 196. h Mentioned on the extension of Carpenter's Patent, screw-propeller, M. M. April, 1854. i Sup. p. 174. perimental construction of the Line, was put forward as a strong ground in the case of Pinkus's Atmospheric Railway, but disallowed from the absence of assertion of rights at Law.* muneration. The determination of the Patent is frequently, from Insufficient rethe peculiar nature of the manufacture, the period at which the returns from the invention begin to remunerate the Patentee. In the case of Hardy's Patent,' the Patentee, after having lost largely by carrying on the manufacture, assigned to the Petitioners, who spent 36,000l. in establishing the manufacture. They realized very considerable profits, and at the period of application were, from their position in the trade, likely to command. a very large sale of the Patent article. The invention being one of high merit and of great service to public safety, the Patent was extended in favour of the four Petitioners on condition of their securing to the original Patentee half the profits of their sales, including those for exportation. "It is true," the Court remarked, "they have made large profits, but at the same time there have been some risks." In Derosne's case," the benefit resulting to the public (a reduction of 20 per cent. in price) weighed so strongly with their Lordships, that, even in the absence of any great amount of skill in the invention or risk in the manufacture to counterbalance considerable profits," their Lordships were induced to grant an unconditional extension of the Patent for six years. The application in this case was unopposed. On the extension of Porter's anchor Patent,° it was Porter's stated that the loss in working the Patent up to that anchor. k (1848) 12 Jur. 233. 1 (1849), railway axles, 6 Moo. P. C. 441; 13 Jur. 177; Re Swaine's Patent (1837), mineral waters, Web. P. R. 561. (1844), sugar, 4 Moo. 416. "The Patentee had expended 4,000l. in perfecting the invention. The profits from Licences amounted to 7,920/. |