Ex parte Henson in re Alcock. This was an application on a caveat lodged by Henson against sealing letters patent to Alcock for improvements in machinery for making bobbin net lace. Henson stated on affidavit his belief that the invention for which Alcock was soliciting letters patent was the deponent's invention, and which he had communicated in confidence to Alcock, who was his nephew. It was argued on the part of Alcock, that Henson had no right to oppose at this stage, the time for opposing having gone by, the Attorney General having issued his bill; but Lord Chancellor Brougham: "I cannot look at this case, and deny that they (the agents of Henson) have a strict right to be here, but it is a right which must be exercised very sparingly; and a discretion must necessarily be vested in the court. In the very peculiar circumstances of this case, I am disposed to give them the benefit of it, exercising it in a somewhat roundabout way by sending it to the Attorney General; but the very circumstance upon which that suspicion rests leads me to reserve the question of costs." The case was then sent for the decision of the Attorney General, as to whether the inventions were the same, the Lord Chancellor observing, that it was in the nature of an inquiry before the Attorney General to assist the conscience of the court to see whether the sealing should go. It was then agreed that the Attorney General should report whether the patent should be granted, and that what was produced before him should be afterwards enrolled as the specification. The Attorney General directed that the patent should be sealed, the improvements being dissimilar to those of Henson, and not infringing upon his inventions. The letters patent were sealed as of the day on which they came to the great seal. See 2 Newton's Lon. J. Conj. Ser. 32. This was a petition by Mr. Daly, manager and proprietor of the Theatre Royal, Dublin, to the Lord Chancellor of Ireland, praying him to withhold the great seal from a patent professing to have been granted by the crown under the powers vested in it by 26 Geo. 3, c. 57, and authorising Mr. Astley to have a theatre for exhibiting, during certain months in the year, feats of horsemanship and musical pieces, &c. Daly, in November, 1786, had obtained a patent for the Theatre Royal, and now opposed the passing of Astley's patent, on the ground of the great prejudice it would be to him after the expense he had been at in fitting up and supporting the theatre. The Lord Chancellor: There are several stages of opposing the passing of patents. The first is an application to the crown, while the granting of the patent is under the consideration of his majesty; upon such an application the crown would refer it to the great officers of state. Secondly-When it comes to the privy seal, a like application may be made. The Lord Privy Seal has sometimes heard the matter himself, at other times he has referred it to a committee. Thirdly-An application may be made to the great seal if the grant be illegal'; or if the crown be imposed on or deceived in such cases, the Chancellor will withhold the seal. In this case, as to the matter of discretion whether the crown ought or ought not to grant such a patent, I have nothing to do with that. The single question here is, whether these exhibitions of Astley's are the subject of a patent within the act? The objections made to this patent are, either that it is illegal; or, secondly, that it is inconsistent with that granted to Daly-that if there are more places of entertainment than one, the people will be divided. As to the first, the act gives a power to the crown to grant licenses for establishing and keeping a theatre, and enacts that none others than those who are so licensed shall exhibit interludes, tragedies, &c. But the crown has power by the act to grant from time to time, and when and as often as it think fit, one or more letters patent to one or more persons, for establishing and keeping one or more theatres, &c., so that if, instead of this, the grant to Astley bad been of a theatre in as ample a manner as Daly's, can there be any doubt but that it would be good? Besides, there is a reservation in Daly's patent of such as should be thereafter licensed. As to the second objection, that it infringes on Daly's patent that it tends to diminish his profits. Certainly, the more places of entertainment there are, it will make some difference to all. Perhaps it is better there should be more. It is said he has laid out money on the faith of having an exclusive patent. He had knowledge of the power of the crown to grant others, and his own expressly reserved it. It is said that I ought, as keeper of the king's conscience, to withhold the great seal. But the granting of this patent has been considered by the Lord Lieutenant, so I do not think I have any thing to do with that. If, indeed, the patent were illegal, it would be otherwise. I can't withhold the great seal. Vern. & Scriv. 499. Ex parte O'Reilly. In this case several caveats were entered against affixing the great seal to letters patent for thirtyone years, authorizing the petitioner to build a house for the representation of Italian operas on a new site, the old house having been burnt down. A great number of matters were discussed in the above case, before the Lord Chancellor Thurlow, of which the following may be noticed: 1 Ves. Jun. 112: The court refused to seal a patent for representing Italian operas, because the provisions for carrying it on were by agreement with the Lord Chamberlain, his executors and administrators, and the right to the patent was not sufficiently connected with the property in the house. It is not sufficient for the party applying merely to answer objections; he must lay a proper case. Upon such application, the court will take care that the king is not deceived, nor his object disappointed; and will represent the whole to the king, but will not decide upon the merits of the various claimants. The court will not seal a patent which does not put the parties under some control, though there is no caveat. A patent in fee could not stand if abused. A patent must be under proper restraints. Query, if a patent can be the subject of a trust. See ante 418, n. APPEAL FROM THE COURT OF SESSION (a). JAMES BROWN (Appellant). ALEXANDER ANNANDALE & SON (Respondents). [In the House of Lords, 24 & 25 February, 1842.] The public use of an invention in England prior to the date of letters patent invalidate such This was an appeal from the first division of the Court of Session of Scotland, wherein the appellant complained of certain interlocutors pronounced under the following circumstances. The appellant had obtained letters patent under the seal ap- for Scotland will pointed by the Treaty of Union to be used in place of the great seal of Scotland, on a warrant under the sign manual, dated at St. James's, 26 Jan. 1836, and written to the seal registered and sealed at Edinburgh, 4 Feb. 1836, for "a certain improvement the colonies or certain improvements in the making or manufacturing of abroad would paper." letters patent. Semble that the use of an invention in any of invalidate subsequent letters The specification was enrolled in the Chancellory of Scotland, patent. 4 Jan. 1836; but it is unnecessary, for the purposes of this report, to state any particulars of the invention. The appellant (the pursuer in the court below) applied to the Court of Session, for suspension and interdict against the respondents (the defenders in the court below), in using certain machinery in the manufacture of paper. The respondents, in their answers to the note of suspension, denied that the machinery complained of was substantially the same as that described in the specification; and stated further, that the letters patent were void, because the alleged invention was not new, having been known, and publicly used and practised, both in England and Scotland, before the date of the patent. The note of suspension and interdict was then merely passed to try the two questions, of the infringement, and the validity of the patent; the interdict was not pressed. The appellant then instituted a summons for damages; in answer to which the defendants, as before, denied the infringement and the validity of the patent, on the grounds, 1. that the specification had not been enrolled in time (b); 2. that the invention was not new, having been known and publicly used both in England and Scotland prior to the patent. (a) See a report of and observations on this case by Mr. Shearman, one of the respondents' agents, in Newton's London Journal, vol. xxi. C.S. See also the case of Roebuck v. Stirling, ante 45. (b) It seems to have been admitted afterwards that this specification was in time; the letters patent bear date on the day of sealing; and the time for specifying runs from, or exclusive of, that day. See ante 154, n. a. ; also ante 430, n. c. as to the sealing as of an earlier day. Trial of the issues. Verdict. Interlocutors, 8 July, 1841. The above two processes having been (according to the practice of the Scotch courts) conjoined by interlocutor, a record was made up, and certain admissions and issues were agreed to. The issues came to be tried before Lord Mackenzie, one of the judges of the First Division of the Court of Session, and a jury, on the 14th and 15th days of May, 1841; and after the evidence on the pursuer's part had been concluded, the counsel for the defenders, in his address to the jury, stated, that it would be a part of the defenders' case to bring evidence to prove, inter alia, his averment on the record, that the invention specified by the pursuer had been publicly used in England before the date of his patent. Whereupon the admissibility of any such evidence was objected to by the pursuer's counsel, on the ground, that previous public use of the invention in England was not a ground for invalidating the pursuer's patent for Scotland. Lord Mackenzie overruled the objection, and decided that the evidence was admissible, as proving a ground of the invalidity of the patent. Against this judgment the counsel for the pursuer excepted, and lodged the following minute: "In respect of the opinion of the judge, that the use and practice averred as to England is competent in evidence to establish the first issue for the defenders, the pursuer admits that the verdict must, in point of fact, go on that first issue for the defenders, subject to exception to the opinion of the judge; the pursuer admitting that, if the above point of law is decided against him, the defenders are entitled to judgment in the cause." Upon which the jury, "In respect of the matters proven before them, and of the minute of the counsel for the pursuer, find for the defenders on the first issue." The bill of exceptions came to be argued before their lordships of the First Division of the Court of Session, when, on the 8th of July, 1841, they pronounced the following interlocutor:"The lords having heard counsel for the parties, disallow this bill of exceptions.' The above decision in favour of the defenders was further car13 July, 1841. ried out by the following additional interlocutor, or decree :"The lords, in respect of the verdict of the jury in this cause, apply the same; and in the process of suspension and interdict, find the letters orderly proceeded, and dismiss the suspension; and in the action of declarator and damages, assoilzie the defenders from the conclusions of the summons, and decern; find the defenders entitled to expenses in the said conjoined actions, and remit the accounts when lodged to the auditor to tax and report." Against the above two interlocutors the appellant (the pursuer below) brought the present appeal, praying that their lordships would be pleased to reverse, vary, or alter the same, or that he might have such relief in the premises as to their lordships should seem meet, and for the two following reasons: 1. There is no communication of rights under patents for in- Appellant's case ventions between the subjects of the two parts of the United Kingdom, and therefore the fact, that the improvement invented by the appellant in Scotland had been previously used in England, is not a ground in law for invalidating the patent for Scotland. The power of the crown in Scotland to grant exclusive privileges in respect of new inventions, is not given by any statute, but is founded on the immemorial usage of the crown, and the acquiescence of the nation. The attempts made to stretch this prerogative beyond its just limits, gave rise to the act of monopolies (6), which was declaratory of the principles of the common law, but left the prerogative of the crown untouched. The terms of the Scotch patents varied, some being for thirteen, others for twenty-one years; since the union, the term prescribed by the statute of monopolies for England has also been adopted for the Scotch patents (c), but there is nothing to limit it to this. The grants, and the extent of the rights thereby conferred, are as distinct since the union as before, each being confined to its own country; and in this respect each part of the United Kingdom must be considered as a distinct, separate, and independent country and jurisdiction relatively to the other; for were it not so, but the kingdoms of England and Scotland are to be considered as but one country, all rights of patents for inventions should be co-extensive and equally effectual in both parts of the United Kingdom, a conclusion directly at variance with the acknowledged fact, since the patent for each country is strictly confined to that country; the freedom and intercourse of trade referred to in the articles of union do not extend to such rights as patents in either country. Patents for invention are not the only rights as to which a similar distinction exists respecting the rights of trade, since by the Scottish statute in favour of the royal burghs, the exclusive right of importing all foreign commodities for sale is conferred on the merchant-freemen of the royal burghs (d); and, according to the legal construction of that statute, the word foreign must apply to England. But the case as to the rights under letters patent for inventions is much stronger; for letters patent are, in their nature, matters of private right, constituted by grant ex speciali gratiá on the part of the crown, and accordingly pass in Scotland under the seal ap (b) Acts of Charles I.; A. D. 1641; ante 33. (c) Ante 34, n. See also Dallas's System of Styles; Edin. 1697. (d) See Act, 1693, c. 12. It was accordingly adjudged in the case of the incorporate trades of Aberdeen against the Magistrates and Guildry, that none but the guild brethren, as contradistinguished even from the trades of the borough, could import from England commodities which were either the native produce of that country, or of the colonies abroad. Mor. Dict. 1779. Appellant's case. pointed by the 24th article of the Treaty of Union, to be kept and used in Scotland in all things relating to private rights or grants which have usually passed under the great seal of Scotland, and which only concern offices, grants, commissions, and private rights, within that kingdom. Further, letters patent are accompanied by no interchange of rights and privileges between the subjects of the two parts of the United Kingdom, but letters patent for one country are entirely confined thereto, and have no effect whatever in the other. But except in regard to such privileges and advantages of trade and commerce, as to which it was provided by the Treaty of Union that there should be full freedom and intercourse between the subjects of the United Kingdom, and for the regulation of which the laws were after the union to be the same in Scotland as in England, the 18th article of the Treaty of Union expressly declares, "that all other laws in use within the kingdom of Scotland do, after the union, remain in the same force as before (e)." It would appear to follow, therefore, that all questions touching the validity of letters patent for Scotland, must be tried and determined according to the law of that country alone, and without reference to the legal condition of the subject-matter of such letters patent as to freedom or restriction in England, or any other country. The general requisites of the law of Scotland with respect to letters patent, are the same as of the law of England, except as regards the limits of their respective jurisdictions; but in applying those requisites, the matter must be considered solely with reference to the validity of letters patent in Scotland, and the effects of rights arising under them in that country, just as if England had no connexion with it. 2. Because, according to the just construction and true meaning of the letters patent granted to the appellant in Scotland, the requisite as to the novelty of the improvement is, that it was invented in Scotland by the appellant; and there is no condition, expressed or implied, that the mere circumstance of its having been previously known or used in England should infer a nullity of the patent. The parts of the letters patent material to advert to, are the following. First, the recital of the petition, which, having stated the invention by the appellant, proceeded as follows: Quam inventionem credit pro generali beneficio et commodo futuram esse, dictam inventionem novam esse et haud unquam ante hoc factitatam aut usitatam fuisse per ullam aliam personam aut personas quascunque intra hæ regna (f) ut intelligit et credit. Then fol (e) As to the meaning of the sixth article of the Treaty of Union, and this question generally, see ante 48, in note. It will be material to observe, that this form of letters patent is a translation of the usual form for England; the words ha regna being substituted for England, &c. at this place, but Scotland at others, as in the prayer in the next sentence. |