Argument at the hearing.

Sir F. Pollock

lant.

Scotland by the same statute, there being no patent for Scotland, shows these countries to have been considered as one in respect of patents (d). The respondents appended to their case the judgments of the Court of Session in Roebuck's case (e).

The case came on for argument in the House of Lords on Thursday, the 24th of February, 1842. Sir F. Pollock, A. G. and Biggs Andrews were counsel for the appellant; Kelly and Godson for the respondents. The Lord Chancellor Lyndhurst presided, assisted by Lords Brougham and Campbell.

The Attorney General having opened the appellant's case, by for the appel shortly stating the relative positions of the parties, and the nature of the contest between them, and having read from the printed case the issues and bill of exceptions, and the interlocutors on which the appeal arose, described the questions to be considered as simply whether, according to the laws of England, Scotland, and Ireland, as they now stand with regard to letters patent for inventions, the condition of novelty inserted in the grants extends beyond those parts of the United Kingdom respectively for which the grants were made, that is, whether it is not sufficient that the invention be new, quoad the country for which the grant is made.

The appellant contends that all grants of this kind proceed from the prerogative; that the statute of James regulating English patents was merely restrictive; that these, namely, English patents, as well as Scotch, derive their force solely from the prerogative, and not from any statute law. The only difference is, that in England there is a restraining statute-in Scotland there is none: each country is perfectly distinct. [Lord Brougham: But if before the statute a person represented to the crown that his invention was new, and not before used in these kingdoms, would not the grant have been equally void for misrepresentation?] That might be. The proviso making the patent void is the same in English and in the Irish patents as in the Scotch; the proviso regulates the extent of novelty in each, mutatis mutandis. It is no ground therefore to set aside the patent because it might have been used in some other part. I contend that the crown has the same right to grant patents in Scotland,

Roebuck's case in the Court of Session, Clark's case appears to have been cited for a different purpose, namely, to show that the action would lie, for in no part of the arguments upon the question of previous knowledge of the invention, was the slightest reference made to Clark's case; further, the respondents, Stirling and Son, never refer to it in their long and elaborate printed case, which is almost conclusive as to no such evidence having been given. In the course of the subsequent argument on the principal case, the Lord Chancellor Lyndhurst remarked, with respect to Clark v. Laycock, that the respondents were not justified in their statement of the effect of that case, there being nothing whatever to show that any evi

dence of the use of the invention in Scotland was given. In the report of the case of Clark v. Laycock, in Morrison, 5045, nothing is said about the use of the invention; and the statement by the respondents is taken from Lord Hailes' decisions, and is said to have been a mistake of Lord Gardenston.

(d) See act extending Liardet's patent, ante 52. Supposing the communication of rights to be as contended for by the respondents, this and similar acts would deprive the people of Scotland of their vested rights to use an invention old in England, and be pro tanto a repeal of the Union. See acts cited, ante 40, n.

(e) Post 451-2. These are a valuable addition to the report, ante 45.

as it had before the union of the two kingdoms. The act of Sir F. Pollock James has no force whatever in Scotland. The crown may an-for the appellant. nex what conditions it pleases to its grants. They proceed solely from the prerogative. This prerogative is restrained in England, but it is not so in Scotland. [Lord Campbell: But it has always been considered that the sixth article of the union has made the law of Scotland the same as in England with reference to patents (f).] [Lord Brougham: All English cases are cited in Scotch patent cases, just as in England. The leading cases are cited as law there as much as here (g).] It is immaterial to me whether the statute of James applies or not. My argument is independent of that entirely. Assuming that to be so, still the crown of Scotland is in the same situation as respects granting patents as the crown of England. [The Lord Chancellor and Lord Brougham: Then you must contend, under the words of the proviso of the 6th section of the statute of James, that any person importing an invention into Scotland from England, is equally entitled to a patent as if he brought it from beyond seas.] I do; Scotland is a foreign country as to England for this purpose. [Lord Brougham: But do you consider a man has the same merit who brings over a foreign invention from beyond seas, as if he merely brought it across the Tweed-from Berwick, for instance?] I contend he is quoad hoc the inventor. He may either call himself the inventor, or he may state the fact of his having first introduced the invention.

The question, then, is this. Is not the crown entitled to grant a patent to an inventor, inventing or bringing an invention into Scotland, just the same as it can to an inventor in England? [Lord Brougham: The word "realm" in the statute of James, of course meant England at that time?] Yes, and still must mean the same; and if it is to be subsequently applied to Scotland, it must mean the realm of Scotland only. [Lord Brougham: That does not get rid of my difficulty. The petitioner states in his application, that his invention has not been before used intra hæ regna these kingdoms; he deceives the crown, and the grant would be void, independently of the statute (h).] [The Lord Chancellor: If the word realm means the United Kingdom, then the proviso in all English patents is illegal, and the consequence would be that every English patent would be void (i).] It would be so if such is the right construction. This shows, therefore, that each country must still be considered distinct for these purposes.

It is respectfully submitted, that the sixth article of the Treaty of Union cannot have the effect here stated without a forced construction. See the 6th article, post 453. Further, that the law relating to patents is in no respect a law relating to the regulation of trade, within the meaning of that article, but that the peculiar words, allowances, encouragements, drawbacks, show the kind of regulations alluded to, namely, such as are the subject of navigation, excise, and customs law. That the prohibitions and restrictions granted by letters patent,

are of an entirely different nature, and derive their authority simply from the prerogative of the crown.

See ante 48.

(g) The principles of the common law of the two ancient kingdoms, are unquestionably the same, ante 34, n.; there is no report of any case of patents in Scotland before the union, and but few have occurred; so that the cases decided in this country are the only cases which could be referred to. (h) See post 453. (i) See post 453.

Sir F. Pollock

The court below has decided on the authority of Roebuck v. for the appellant. Stirling, and I admit, that if that decision, as mentioned in the

printed cases, is to stand good, I have not another word to say
in support of the present appeal. [The Lord Chancellor: There
is no doubt, I suppose, that the invention was known in England
before the date of the Scotch patent?] Oh, certainly. But the
patentee bond fide took out his patent without knowing that.
He was certainly the original inventor in Scotland-that was not
disputed. Now there has been one uniform practice as to these
matters ever since the union. There is no single case or trace
of any thing on the point in any single book, English or Scotch.
I undertake to speak positively as to English books. It is the
opinion also of all Westminster Hall, without one dissentient
voice (and several most eminent opinions have been taken), that
looking at the language of the patent and of the statute, the
condition of novelty only applies to the country for which the
patent is granted. [The Lord Chancellor: The words of the
proviso are decisive, if they are justified by the statute. They
are the same, I suppose, in English and Irish patents. How is
it in the West Indies?-a patent for the colonies, I mean.]
[Lord Campbell: These are granted either by including them in
the English patent, or by an order in council, extending the grant
to certain colonies.] [The Lord Chancellor: How is the prac-
tice as to obtaining the Scotch patents? Are they obtained
simultaneously, or afterwards?] In both ways; if the petition
for the English states an intention to proceed for the Scotch and
Irish patents, an extension of time to enrol the specification is
given. [The Lord Chancellor : It seems to me to turn on the
construction of the act. The crown can only grant a patent for
what is new. The question is, where new?] You have evidence
of the construction of the act in a long course of usage-I mean
in the form of the proviso. [Lord Campbell: But how can you
apply "hæ regna" in the recital to Scotland only?] That phrase
might well be used, as the sovereign speaks in the plural, "We,
&c." [Lord Brougham: Was it not, do you think, “hoc reg-
num" before the union?] [The Lord Chancellor: It would be
a monstrous thing if an invention, having full publicity in one
part of the United Kingdom, could be made the subject of a pa-
tent in another part of it.] [Lord Campbell: If the crown were
made aware of that fact, the grant would be refused.] Is a uni-
form practice of two hundred years to be upset by a legal de-
cision? It will be very doubtful, if it be decided that the proviso
is too limited, whether any patent is good. [The Lord Chan-
cellor It is a restrictive proviso less than the act authorized,
no doubt, if we hold the act is to be so construed.] Then, if the
proviso is bad, very great and serious doubts will arise if the
patent is not bad altogether. The real question is, whether a
practical construction of the act shall be set aside merely by a
legal decision, or whether it should not be by an act of the legis

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66

lature, to be brought in for the express purpose, particularly sir F. Pollock considering the vast interests grown up under the supposed state for the appellant. of the law.

The decision upon which the court below proceeded, namely, the judgment in the House of Lords, in the case of Roebuck v. Stirling, in 1774, was on other grounds. [Lord Brougham: "As well as for the reasons therein," that is in the interlocutors.] No doubt; I must admit that refers to the reasons assigned in the interlocutor. I do not know if I may resort to the Scotch law of disuetude in this case. The statute has been entirely disused in this respect for above seventy years.

(The lords having consulted together, and referred to the printed cases in Roebuck and Stirling, and to the journals of the House of Lords)-[The Lord Chancellor: If we are to take that according to the letter, it is a distinct decision on the very point. It appears that Lord Mansfield was present as well as Lord Thurlow, when the judgment was given.] [Lord Brougham: It is quite clear that Lord Mansfield was there on purpose to take part in the case. He was not there on the day before, or on the day after.] The lords having again consulted-[The Lord Chancellor: I can readily understand why this form of letters patent was so framed before the union, and it has not been altered since, as it should have been (k).]

It is singular enough that the respondents in Roebuck & Stirling never put their case on this ground; so little did they expect to succeed on this point, that they scarcely mentioned it in their reasons. [Lord Campbell: It is raised distinctly (1).] [Lord Brougham: They having taken two points, the House says, we form our affirmation on that ground, as well as others.]

To what extent, then, are judgments of this house to be held binding? of course the house has the same power to review its judgments, as the courts below have. [The Lord Chancellor : They are binding on all inferior jurisdictions, but not absolutely binding on this house; but it would require strong reasons for us to set aside a decision on the very point.] The true rule I take to be, whether the decision is binding, beyond the strict necessity of the case. If it be found applicable on other grounds, it is open to question. The reasons assigned form no part of the judgment. The decision does not make the reasons assigned law. If the judgment be right, and clearly maintainable on other grounds, then it is open to me to re-argue the other points. [The Lord Chancellor : This is part of the judgment of the house itself, the reason is made an essential part of the judgment. It is not the opinion of any single lord, on which he

(k) This, it is apprehended, applies to the form of the proviso, and not to the question suggested by Lord Brougham, ante 444, whether, before the

union, the petition used the words hoc regnum, and not ha regna.

(1) See ante 45 and 47.

Sir F. Pollock founded his judgment, but of the whole house.] It is clear that for the appellant. there was prior usage there, by the party himself, in Scotland.

That was quite a sufficient ground, therefore, to set aside the
patent, and support the judgment. Another circumstance is,
that no costs appear to be given. This is evidence that the de-
cision was not given on the ground taken. I come back to the
circumstance, that the practice has been uniform the other way,
for above 200 years. This I contend is a practical construction
of the act of parliament, during all that period. [Lord Camp-
bell: An English patent might remain good with the old form of
proviso, notwithstanding the union, although a Scotch patent
might not be so. I don't mean to say that that is so. The
crown would not then be deceived in its grant, and the patent
void on that account.] No decision could be more inconve
nient, than that an English patent would not be vitiated by prior
use in Scotland, although a Scotch one would by prior use in
England; this would not be putting the subjects of both countries
on an equality. But the 6th article of the union does not, in fact,
apply to this case. It has nothing on earth to do with mo-
nopolies for inventions. There was a patent law in Scotland
long before. It was precisely the same as in England, no statute
before or since the union in any way affecting it. [The Lord
Chancellor What is a form of a patent for a foreign communica-
tion? If an inventor stated he has imported an invention from
England not before used in Scotland, would he get a patent for
it?] I very much doubt if it appears on the face of the patent,
that the invention was imported from abroad, if it would not be
void. It was not formerly usual to state the fact of having im-
ported it, but the applicant was called the inventor: I believe
they have lately put in the petition, that he has brought the in-
vention from abroad (m). [Lord Brougham (having read seve-
ral passages from a Scotch patent for a foreign invention): This
is very different to a patent for an original invention. It is not
called his invention. It states the fact of his having received it
from a certain foreigner residing abroad, and the proviso is dif-
ferent (n).] The question comes back to this. Has the crown
power to grant a patent in this form or not? Did the crown
lose by the act of union the power to grant
kingdom separately from another as before.
patent, the proviso makes it clear, that no prior usage except in
Scotland will vacate it. Every patent both English and Scotch
is in jeopardy if this is not right. At least it will be extremely

:

a patent for one If it be a good

(m) In such a case the common statement in the petition is, that in consequence of a communication from abroad, the party is in possession of an invention for, &c.; but the more proper form would appear to be to pursue the words of the statute. See Law & Practice, Pr. F., I., and post.

(n) The Attorney General objected to this patent being referred to as any authority, as it had been granted since the present question was raised. There is little doubt, but that since the union the petitions, &c. for Scotch patents have been simply translations of the English, mutatis mutandis.