Argument on demurrer. that statute, which, after providing that any person having obtained letters patent for any invention, may enter a disclaimer of any part of either the title of the invention, or of the specification, or a memorandum of any alteration therein, enacts, that "such disclaimer or memorandum of alteration being filed by the clerk of the patents, and enrolled with the specification, shall be deemed and taken to be part of such letters patent, or such specification, in all courts whatever." By the old law, before the passing of this statute, where the specification was too large, the patent was held to be wholly void (b). The declaration here describes the disclaimer and memorandum of alteration as having been made on the 30th of April, 1836. The plea states that the disclaimer was not enrolled until the 30th of April, and not until after the infringement had taken place, and that the invention was not a new invention, but, as to a material part, an old invention, by reason whereof the patent was void. It is admitted by the replication, that every thing that was wrongfully done by the defendant was before the disclaimer, but it is alleged that parts of the invention so infringed were new. Apart from the recent statute, the defendant would have a good defence, as the patent would be wholly void. And that statute has no retrospective operation. It says, that such disclaimer being filed and enrolled, it shall be deemed to be part of the specification. [Alderson, B. : Part of the specification; it does not say of the original specification.] Then there is a proviso, "that no such disclaimer or alteration shall be receivable in evidence in any action or suit (save and except in any proceeding in scire facias) pending at the time when such disclaimer or alteration was enrolled, but in every such action or suit the original title and specification alone shall be given in evidence." But there are no words in the act making parties wrong-doers by relation; the disclaimer is only to operate from the date of its filing and enrolment. [Alderson, B. : Then what is the use of the proviso?] It may have been introduced ez majore cautelá, to meet the case where a period has intervened between the obtaining of a fiat for the alteration and the enrolment, in which there may have been an action brought. Admitting that some doubt may arise on the construction of the proviso, the court will not, without express and decisive words, put such a construction upon the clause as would render innocent parties wrong-doers by relation. If such a construction were put upon it, it might be an inducement to a person taking out a patent to put into his specification a great deal more than he was entitled to; and then, without any risk, by means of a subsequent disclaimer, give validity to his patent, and recover (b) R. v. Else, ante 76; Campion v. Benyon, 3 Brod. & B. 5; s. c. 6, B. Moo. 71. against all who had infringed it in the mean time; and it would E.T., 1837. be impossible to take advantage of its invalidity. Rotch, contrâ. The act has a retrospective operation where the infringement takes place with respect to a part of the invention, to which the disclaimer does not apply. If the words of the statute mean that the disclaimer becomes part of the specification "from thenceforth," the effect of that would be to give virtually a new patent, which the statute never intended. The statute intends that the disclaimer shall take effect from the date of the letters patent. The language of the proviso, that the disclaimer or alteration shall not be receivable in evidence, in any action pending at the time of the enrolment, is confirmatory of that view of its meaning. Lord ABINGER, C. B.: It cannot be doubted that the act of Judgment. parliament is obscurely worded, and we are now called upon to pat an interpretation upon it. The act would be unjust if it made a man who was acting consistently with the law at a certain time, subsequently a wrong-doer by relation. We never can presume that such was the intention of the legislature, and we are not at liberty to construe a doubtful act by any such presumption. The only argument that can be offered is upon the proviso which says, "that no disclaimer shall be receivable in any action or suit pending at the time when such disclaimer was enrolled." We consider the sound way of interpreting that is, that it shows the legislature did not intend to make a person. a wrong-doer by relation; because it did not presume that any man would have the courage to bring an action, after he had actually disclaimed, for an infringement of a patent long before such disclaimer was thought of. The intention of the legislature doubtless was, that he should not have the benefit of the disclaimer as to infringements gone by long before such disclaimer was made. The act of parliament is not specific on this point; but we think it never could have been the intention. of the legislature to make persons wrong-doers by relation. The judgment of the court, therefore, will be for the defendant. PARKE, B.: I am of the same opinion. The act of parliament is not very clearly worded, and it might seem, at first, that the construction to be put upon the words of it would be in favour of Mr. Rotch's view of the case. The act enables any party to disclaim any part of either the title of the invention, or of the specification, stating the reason for such disclaimer, or, with such leave as aforesaid, to enter a memorandum of any alteration in the said title or specification, not being such disclaimer or such alteration as shall extend the exclusive right granted by the said letters patent; and such disclaimer or memorandum of alteration, being filed by the said clerk of the patents, and enrolled with the specification, shall be deemed and Judgment. taken to be part of such letters patent or such specification, in Judgment for the defendant. The result of the above decision would appear to be, that the party entitled to letters patent in the title or specification, of which any disclaimer or memorandum of alteration has been enrolled, has no remedy at law in respect of any infringement prior to the date of the enrolment of such disclaimer or memorandum of alteration; but that from the date of such enrolment the patentee acquires a new title. It must, however, be observed, that the enrolment of the disclaimer appears on the record, and the replication admits the material averment in the plea, that the invention, the subject of the letters patent, was not new, and that the letters patent were consequently voidable, and in the application of this decision to other cases, regard must be had to the course of pleading and peculiar circumstances of this case. The consequences dwelt upon in the judgment of the court as those which would result from a different decision, assume not only the facts admitted by the pleadings, but that the patent was voidable before the disclaimer, by reason of the part disclaimed. But many cases may arise in which the part disclaimed is neither a material part of the invention, nor such a part as would prejudice the letters patent, as, for instance, a part, the utility of which is small. The meaning of the proviso would appear to be, that in a case of legal proceedings other than scire facias, in which the original title and specification are relied on, a disclaimer enrolled subsequent to the commencement of such action, should not be receivable in evidence. Because if this were permitted, a defendant might on the trial find himself deprived of a defence which, but for such disclaimer, would entitle him to a verdict. In the above case, the plaintiff declared on his amended patent, and the breaches assigned were in respect of acts prior to such amendment; but suppose a plaintiff to declare on his original pa tent, would he be precluded from recovering by reason of a disclaimer of an immaterial part, as the brush in the case of Lewis v. Marling, (4 C. & P. 52.) or by reason of a memorandum of alteration which was simply explanatory of some part of the specification, leaving the claims unaltered? SPILSBURY AND ABBOTT v. CLOUGH. [2 Gale & Dav. 17; 6 Jur. 579.] 21 Jan., 1842. doing so, did not maintain an ac ment. was not at the patent a new realm, bad for Semble, that the This was an action for infringing letters patent, granted 22d The assignees of March, 1836, to W. Maugham, for certain improvements in of letters patent, in respect of the production of chloride of lime, and certain other chemical which a dissubstances. The declaration, after stating the invention, and claimer had been enrolled by the grant in the usual manner, further stated that Maugham, by a grantee, who, indenture of the 16th of April, 1839, between himself of the at the time of first part, and the plaintiffs respectively of the second and third possess the enparts, assigned to the plaintiff Abbott two equal undivided third tire patent, may parts or shares in the said letters patent, and in the invention tion for infringeand improvements protected thereby, to hold, &c., for his own A plea that the use and benefit, absolutely for the residue of the term; and said invention that afterwards, by another indenture of the same date, between time of making Maugham of the one part, and the plaintiff Spilsbury of the the said letters other part, Maugham assigned one equal undivided third part manufacture or share in the said letters patent and invention, and improvements protected thereby, to Spilsbury, for his own use duplicity. and benefit, for the residue of the term; and that afterwards, on plea would have the 17th of April, 1839, Abbott, by indenture, between himself been good, if of the one part, and Maugham of the other part, reassigned to the words of the Maugham the said two equal undivided third parts in the said let- pursued. ters patent; and that afterwards and whilst the said Maugham was so possessed of and interested in the said two equal third parts in the said letters patent, as last aforesaid, and before the committing of the said grievances on the 14th of November, 1838, Maugham, in pursuance of the act (5 & 6 W. 4, c. 83), with the leave of the then Solicitor General first had and obtained, and certified by his fiat and signature, duly enrolled with the clerk of the patents of England, a disclaimer of a certain part of the said invention, and a memorandum of alteration in the specification of the said letters patent. That afterwards, on the 14th of November, 1839, Maugham, by indenture between himself and Abbott, assigned the said two third parts back again to Abbott. The breaches were assigned in the usual form. statute had been The defendant among other pleas pleaded, fourthly, that the Plea. said invention in the said letters patent mentioned, was not at the time of the making of the said letters patent a new manufacture within this realm, within the true intent and meaning of the act of parliament in that case made and provided. To this plea there was a special demurrer, assigning for Special demurrer. grounds that it does not appear with certainty whether it is intended in the plea to dispute that the invention is new, or that it is a manufacture within the meaning of the statute; and that although in the plea it is alleged that the said invention was not at the time of making the letters patent a new manufacture, yet it is not stated, nor does it appear thereby, whether the said defendant intends to rely on the fact that the invention was at the time of the making of the said letters patent publicly known, or that the said invention was not new to the inventor; and also that the plea attempts to put in issue matter of law, namely, whether the invention is a manufacture within the meaning of the statute. The defendant gave notice that the declaration would be objected to. Petersdorff, in support of the demurrer. The declaration is good, and the action maintainable. The alleged objection, that Maugham had no right under 5 & 6 W. 4, c. 83, s. 1, to make the disclaimer, because at the time he was not possessed of the entire interest in the patent, but of two-thirds only, does not properly arise, for the plaintiffs are the parties in whom the entire right to the patent is vested. But the disclaimer was properly made, for the statute gives the power of disclaiming to "any person who, as grantee, assignee, or otherwise, hath ob tained letters patent," so that Maugham had power to disclaim either in his original character of grantee, or in his subsequent character of assignee. As assignee, certainly, he had obtained two-thirds only of the patent at the time of disclaimer, but the plaintiffs have assented to his act by bringing this action. The real question is, whether a party who has not the whole interest cannot disclaim in conjunction with the parties who have the remainder. The plea is bad for ambiguity. It alleges that the invention was not a new manufacture within this realm, within the meaning of the statute; so that it is doubtful whether the defendant means to contest the novelty of the invention, or that it was a manufacture. Cleasby, contrâ. The declaration shows no right of action; for Maugham, at the time of disclaimer, was possessed of twothirds only of the patent. The circumstance of his having been the original grantee is immaterial. The words of the statute are, as "grantee, assignee, or otherwise." [Coleridge, J.: What is the meaning of the word assignee?] It may mean the assignee of a foreign patent (a). [Coleridge, J.: The assignee may be said to have obtained the patent from the grantee.] But then a person who has a right to a part of a patent cannot disclaim. It is not probable that the legislature intended any thing so unreasonable as that the original grantee should, at any time after he has parted with his interest, have the power (a) The assignee of a foreign patent would have no right in this country except as grantee of letters patent for such imported invention. of |