The following certificate was afterwards sent :—

"We have heard this case argued by counsel, and considered the same, and are of opinion

"1st. That the grant of the first-mentioned exclusive license to the said Philip Protheroe and Samuel Guppy did not invalidate the letters patent.

"2d. That the assignment to, and vesting of, the said firstmentioned license in the said partnership of more than twelve persons, did not invalidate the letters patent.

"3d. That the grant of the said twelve last-mentioned exclusive licenses, nor of any of them, did not invalidate the said letters patent.

"4th. That if all the grantees of all the licenses were to coalesce and become jointly interested in such licenses, the letters patent would not be thereby invalidated.

"5th. That the letters patent would not be invalidated if the districts covered by the licenses had included the whole of England, Wales, and Berwick-upon-Tweed.

"6th. That they would not have been so if such districts had included the whole of England, Wales, Berwick-upon-Tweed, and the Colonies.

"Dated this 20th day of November, 1839.

The clause limiting the interest in letters patent to twelve (ante 414), differs somewhat in form from the old clause, limiting that interest to five (Law & Practice, Pr. F., XIII., n. x.); but under either, until the above decision, considerable doubts were entertained whether a sole and exclusive license to a greater number of persons would not render the letters patent void. See 7 Sweet's Jarman, 536. The above case establishes, however, a clear distinction between an interest in letters patent, and an interest in a license under letters patent. The grantee of a sole and exclusive license has an equitable title, co-extensive with the grantee or assignee of the letters patent; his legal title, however, is very different; for he cannot sue in his own name for infringements, he cannot enter a disclaimer, or memorandum of alteration (unless indeed a very different interpretation should be put upon the word "obtain" than was done in the recent case of Spilsbury v. Abbott, ante 258, so as to give effect to the word "otherwise"), nor can he avail himself of the provisions of the statute as to confirmation and extension. On these grounds it is necessary that a license deed, which is to confer an interest practically amounting to an assignment, should specially provide for the grantee or assignee of the letters patent doing all acts necessary to enable the grantees of the license to avail themselves of the advantages of the statute.

It has been decided under the old clause, that no action could be maintained upon a bond conditioned for the payment of a sum of money, on the formation of a company which should consist of four thousand shares, and be the assignees of certain letters patent, such a condition being illegal, Duvergier v. Fellowes, 2 M. & P. 384; in error, 10 B. & C. 826; and in the House of Lords, C. C. & F. 89. It has also been decided, that the above proviso is confined to assignments by act of the party, and not by operation of law; Bloxam v. Elsee, 6 B. & C. 169.

Questions of difficulty arise as to the assignment of shares in, or parts of, letters patent, and the partnerships thereby created by the participation in profits; for it is obvious that a share in letters patent can only be a share in the profits made by working the same; letters patent not being divisible into portions like an estate, and yielding no profit unless the invention be worked. Some of these consequences may be avoided by a license instead of an assignment; the rent or license dues being reserved by way of per centage on the gross amount of the sales, instead of by way of share in the profits, or per centage on the net returns. See Elgie v. Webster, 5 M. & W. 518; and Ridgway v. Philip, 1 Cr. M. & R.; 5 Tyr. 131.

The assignment of a bankrupt's effects will pass any letters patent which may be granted to

The Petition.

Re CUTLER'S PATENT.

Cor. Lord Cottenham, L. C.

April 18 & 19, 1839.

The proceedings in this case were on a petition to the Lord Chancellor to affix the great seal to certain letters patent, against which a caveat had been lodged. The petition and accompanying affidavits stated the following facts. The application of the petitioner for letters patent for "an improved method or methods of constructing chains for suspension bridges, cables, mining, and other purposes, and for an improved method or methods of making the bars, links, and bolts thereof;" the Attorney General (Sir J. Campbell) reported in due course in favour of the patent, there having been no opposition on a caveat upon which notice was given; the delivery of the privy seal bill, bearing date the 11th day of March, on the same day at the great seal patent office, and that in due course the patent would have been engrossed and sealed on the 12th. That on the 11th of March notice was received of a caveat having been entered on the 9th, whereby the patent was stopped, and on the 12th a petition was presented by Cutler, that the caveat might be discharged, and the letters patent sealed; but before this petition could be heard affidavits were filed on behalf of the opponent Haines, stating that he had invented a chain which he believed Cutler to have pirated, and to be attempting to obtain letters patent for the same. That at the hearing of this petition on the 25th of March, the Lord Chancellor ordered that the matters of the said petition should be referred to the Attorney General, to inquire and report whether the letters patent ought to issue; that all parties should be restrained from doing any act relating to the said invention until after the report of the Attorney General, which was to be made to the Lord Chancellor; and that if the Attorney General should report that the patent ought to issue, that the same should be sealed as of the 12th of March, but not to be sealed until further order; the question of costs reserved. That at the hearing before the

the bankrupt before he obtains his certificate. Hesse v. Stevenson, 3 B. & P. 565.

See Cartwright v. Amatt, 2 B. & P. 43, as to the assignment of letters patent taking effect on the occurrence of a certain future event.

A doubt was casually expressed by Lord Thurlow (ex parte O'Reilly, 1 Ves. Jun. 129, & post 432), whether letters patent could be the subject of a trust; but the doubt appears to be without any foundation. Letters patent are constantly

the subject of trust. It has also been doubted whether letters patent on a secret trust for an alien enemy were valid; but any objection on this ground would appear to be confined to the remedy of such alien enemy on a contract, 6 T. R. 23; 2 Ves. & B. 323; 13 Ves. Jun. 71; 1 B. Moore, 133; 7 Taunt. 439; 4 Y. & C. 485.

See ante 291, as to question of estoppel and contracts in respect of letters patent voidable in law.

Attorney General on the 27th of March, it was agreed that each A.D. 1859. party should produce a model of his invention, and the Attorney General decided, and the opponents admitted, that there was no similarity between the inventions. That the opponents thereupon attacked the novelty of the invention, and a drawing was produced from a specification of a patent granted to Fussell and Douglas in 1799, but the Attorney General decided that the inventions were different, and that Cutler was entitled to have his patent allowed; he required, however, that an outline of the specification should be left with him, which was accordingly done on the 27th of March; and that the Attorney General required a fuller description as to part, so as to show more distinctly the invention claimed, and promised to report to the Lord Chancellor on receiving the order of reference. The fuller description required was supplied by certain drawings, which, together with the order of reference, were left with the Attorney General on the 28th, and Mr. Cutler left town, considering the matter settled. That on the 30th the opponents obtained the appointment of another hearing before the Attorney General, on a statement that the drawing which had been exhibited as, and believed to be, a correct representation of Messrs. Fussell and Douglas's invention was incorrect, and upon examination of the original specification it clearly appeared that the invention for which Cutler had applied was old. That Cutler on hearing of this had some models made according to the specification and drawings of Fussell and Douglas's patent, and requested the Attorney General to see these models before making his report; but this request being refused, notice was immediately given that application would be made to the Lord Chancellor for an order for a further hearing, and that the Attorney General should in the mean time withhold his report. That the Attorney General, however, on the 2d of April made his report, whereby he certified," that having examined all proper parties, and inspected and considered all necessary papers and documents relating to the matters in his lordship's order mentioned, he was of opinion that the patent ought not to issue, on the ground that the alleged inventions are not new and useful." And he further certified, "that this was a different ground from that upon which the caveat was lodged against the said patent, and that it was not until the second meeting that the party objecting to the said patent was prepared to substantiate the said ground of objection thereto."

The petition then stated, as exceptions to the above report, that the ground alleged therein not being before the Attorney General under the Chancellor's order of the 25th of March, as matter included in the caveat against the great seal being attached to the patent, the Attorney General was not authorized

Argument for the petitioner.

to go into such foreign matter, or to adopt the proceedings he had adopted; that the Attorney General having admitted ex parte statements and evidence, the petitioner was entitled to have been allowed to disprove such statements and evidence; that the ground of the report, that the inventions were not new and useful, applied to only one of the four inventions; that the report was grounded on false and fraudulent drawings and representations; and that no disinterested person of science had been called in competent to assist the Attorney General in coming to a proper conclusion.

Wigram (Girdlestone and Jenkins with him) for the petitioner. This case comes before the court under circumstances which are certainly not of very frequent occurrence. Mr. Cutler had invented, as he says, a new and useful invention for making chains; that he had applied for a patent, and the application had regularly gone through all the offices preceding your lordship's office, and which came there with a view to your lordship's seal being affixed, and it would have been affixed on the 12th of March, had not, a few days before, on behalf of a person of the name of Haines, a caveat been lodged, which prevented the great seal from being affixed to the patent.

A petition was then presented, praying that the great seal might be put to the patent, on which your lordship thought, upon its coming before you, that the most convenient course was, that it should be referred to the Attorney General to represent to your lordship how the case stood. The case made by the respondents to that petition was, that the invention for which we were seeking to obtain a patent was an invention of their own, and that a communication having taken place between themselves and Mr. Cutler, he had thereby acquired the knowledge of their invention, and was about fraudulently to obtain a patent for that invention. It was quite open for them to suggest any thing as to the novelty or the utility, because that was the case they suggested. An application for a patent is not ex debito justitiæ, and the parties are at the discretion of those who advise the crown whether it should go on or not, and therefore the case cannot be put as one in which there was any infringement of the right between the parties, because, supposing all the world were willing that you should put your seal to the patent, if you are of opinion that it is not a proper patent, you would not do it. The parties went before the Attorney General, and your lordship made it part of the order, that if the report should be in favour of the patent, you would affix your seal to it, as upon an antecedent day to the order of the 12th of March, so as to prevent any evil arising from the intermediate discovery. The parties met before the Attorney General, and when they went there the only question

to be raised before the Attorney General was, whether what we A.D. 1839. called our invention was, as alleged by the respondents, the invention of Mr. Haines, who had lodged the caveat; the Attorney General as to that ground of objection, taken by Mr. Haines, reported that there was no foundation for it at all; consequently if it rested upon that alone, there would be no difficulty in the present case. But the case took a turn, which has involved Mr. Cutler in this difficulty. The parties appeared before the Attorney General, and it being a part of the order that the patent should be sealed as of an antecedent day, there was no object whatever for one party concealing from the other what his invention in truth was. It was then agreed between the parties, and this is sworn to by two witnesses, and not denied, that each should produce his own model for the inspection of the Attorney General, and if it turned out that Mr. Cutler's invention was not the invention of Mr. Haines, that the patent should go. That was a contract to which the Attorney General was no party, and neither he nor the parties therefore would be bound by that agreement; but that was the agreement sworn to between the parties, and it was understood that no further impediment should be thrown in the way of the patent being sealed, if it turned out not to be the same invention. Mr. Cutler did produce a model of his chain, and the other party produced a model of their chain, and the Attorney General was clearly of opinion that the two were in no respect similar, and he was also of opinion that Mr. Cutler's patent was a meritorious invention, and one which entitled him to a patent, and that the patent should go. The Attorney General did afterwards, in point of fact, prepare a report in our favour. It appears that Mr. Farey, the scientific gentleman who had acted on behalf of Mr. Haines, to explain to the Attorney General what the nature of Mr. Haines's invention was, on the Attorney General being of opinion that there was no similarity between the two, and that that appeared upon a comparison between them as amicus curiæ, stated that the invention was not new, and the Solicitor General said that he should take the opinion of the court on the present case, not as to whether Mr. Haines has a right to oppose this on the ground that it is a copy of his invention, but whether upon the mere ground of discretion in crown, whether the court will or not consider this as a useful invention for which a patent should be granted; and if he is to advise the court on the case or give information, of course it is immaterial whether he is heard as counsel, or in any other way whatever. But what have the parties done? It is agreed, as sworn to by two witnesses, and not contradicted by any one, that it was agreed between these parties, that if Mr. Cutler's invention was not the same as Mr. Haines's, the patent Mr. Farey tells the Attorney General that he knew

the

should go.