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the specification did not sufficiently describe the nature of the invention, and the manner in which it was to be performed; secondly, that the invention was not new, having been wholly or in part used and made public before the obtaining of the letters patent; thirdly, that the invention did not produce the effect stated, nor was such effect produced by the plaintiff in the manner stated A rule was obtained for better particulars of the objections to be relied on.

Lord Abinger, C. B.: “Mr. Ogle has brought one of the objections, namely the second, within the case in the Court of Common Pleas (ante 264), which decides that it is not sufficient to say that an alleged invention was wholly or in part used and made public before the obtaining the letters patent; and so far, therefore, the defendant must amend. But I see no objection to any of the rest; and with respect to the first in particular, surely it is enough for the defendant to say to the plaintiff, you do not set forth your invention pro. perly. To go beyond this, would be to require him to argue his case in the objections delivered."

six years before the date of this patent, which does not seem to have been followed in other smiths forges; nor described in any of the pbilosophical journals of the day as an important improvement. The record assuredly gave no information which called upon the pursuer to expect such a line of inquiry and evidence, or would have enabled him to meet it. If this line of inquiry had been al. lowed, and the verdict had been against bim on the ground of prior use, I think he must have been allowed a new trial on the ground of sur. prise, and therefore that this evidence was pro

perly refused.

Practice in Scotland. The fifth section of the statute (5 & 6 W. 4, c. 83) does not apply to Scotland, but the same object is attained on the system of pleading in that country by the closed record on a revised condescendence and answer. The observations made in the recent case of Neilson's patent with reference to the question, as to what was open to a pursuer on the record, will serve to illustrate the cases which occur in this country under the statute. Evidence of user at a place not mentioned on the record, but which was specified in a note of objections, delivered as under the statute, was rejected by Lord Justice Clerk, at the trial. On appeal against that decision,

Lord MEDWYN said, “I have great hesitation in thinking that the fifth section of the act applies to Scotland at all; I think, therefore, that we must look to the closed record, the foundation of these issues, and to the averments on which the parties agreed to close, and of course to foreclose themselves as to all other averments in fact; and we must consider, whether the defender made such statements as to entitle him to go into this line of inquiry. Now, I say, that the pursuer would have been misled by the record, for that he never could have expected any proof against his invention from the examination of an anchorsmith using a common smith's forge in the town of Irvine, or any similar evidence. The record led him to expect quite a different state of facts to be proved against his being the inventor of this improvement. The defender specifies Chapman's invention. He next states the prior use of Neilson's invention, both in England and Scotland, particularly at two iron works in Yorkshire, and one in Staffordshire, mentioning them by name, referring also to the patent of Botfield and Mr. Stirling, and the mode invented by Mr. Jeffries. Now, I hold it was quite incompetent, after exhausting the line of evidence here pointed out, or using as much of it as the defender thought avail able to him, to resort to an inquiry as to the use of heated air in a smith's forge at Irvine, about

"I perceive that in a recent English case, where the note of objections had specified the prior use by certain persons named, and by others, the judge at chan.bers made the party strike out this general expression, and confine the proof to the persons named. In the case of Russell with us it was specified on the record, that there was prior use of making gas pipes by various persons, both in Glasgow and Edinburgh; this generality was not objected to, nor brought before the court, for the practice was recent and in the hands of few. Those who manufactured them were well known, and no further particularizing was required by the party. This is no proof that greater explicitness would not have been required, if it had been necessary and insisted oo; it is only proof that in that case the party did not wish for further notice in order to defend himself. Here I think it was different, more especially when the reference to such works as could have used the hot blast in furnaces were so precise and numerous."

Lord MONCRIEFF : “ It is very clear to me that our statutes concerning the effect of the closed record, which are neither repealed, nor in any manner touched, by Lord Brougham's act, must be in full force, and must rule the question; and that that record cannot be supplemented by any note of objections subsequently lodged. Then it appears to me, that if the party meant to try to prove any special case of prior use, it should have been specifically stated. They did so in various instances, and the consequence was, that they were disproved in the trial by persons who had made themselves acquainted with the works referred to.

“ The case of the gas tubes rather tends to illustrate this point. The averment was definite, and limited to previous use in Edinburgh and Glasgow; and it was so put in the issues. The making of such articles at all was of very recent practice ; and all the persons employed in it in these places were well known. But if you make a general averment about common forges, with reference to numerous places or districts all over the kingdom, it is impossible for any one to tell, or to discover, what the particular thing is which you propose to prove under it.

“An averment of a general custom would be a different case. But even for that the record here would not be sufficient." The Housekill Company v. Neilson & Others.

The above decision of the second division of the Court of Session was affirmed on appeal to the House of Lords. Post.

Cor. Lord Lyndhurst ; Lord Wynford; Hon. T. Erskine;

Sir H. Jenner.

In the Privy



be con

This was an application under the second section of the sta- March 5, 1836. tute to confirm the letters patent granted 22d of May, 1834, to the petitioner, Baron Heurteloup, for “improvements in certain parts of certain descriptions of fire-arms." The petition stated, that the petitioner, in 1834, invented There being no

ho heliomad him “ certain improvements in fire-arms,” and that he believed him-er

evidence of user

of part of an inself to be the true and first inventor of the said improvements, vention con

tained in a puband every part thereof, and was not aware that any other person had invented or used the said improvements. The petition letters patent for

: , such invention then set forth the specification, and stated that part of the said sin invention consists in a small tube, made of soft metal, and filled firmed. with detonating powder, which serves for priming the gun, the end of the tube being advanced to the touch-hole by the action of cocking the gun, while a small piece is cut off just by the touch-hole, and detonated there by the falling of the hammer, without exploding the powder in the remaining part of the tube. That since the granting the said letters patent, the petitioner had discovered that a patent was granted in France, in 1821, to one L. de Valdahon for an invention, whereof part consisted of a straw filled with detonating powder, brought to the touchhole of the gun, and cut off as required to prime and fire the gun, but that the mode of bringing the straw tube to the touchhole is totally different from the petitioner's, and does not constitute the gun a self-priming gun; and further, the tube is of straw instead of metal. That the petitioner believed the said invention of L. de Valdahon had never been used in England, or in France, or elsewhere, and was not known in England, otherwise than by the introduction into England of books printed and published in France, containing a description of the said invention. That no suit or action had been instituted.

There was an affidavit by the petitioner verifying the petition, and also one by the Keeper of the printed books of the British Museum, stating that in 1832 twenty volumes of a French work, containing an account of expired patents, published under the direction of the government, had come into the Museum; in one volume of which the specification of the French patent was contained.

On a former day the judicial committee had directed a notice of the day of hearing to be given to L. de Valdahon, and on affidavit that such notice had been sent through the post office, directed to L. de Valdahon, Paris, their lordships recommended that the letters patent should be confirmed.

assignee, to

and Thomas wiranted the 24th of

will no

In the Privy

WESTRUPP & GIBBINS' PATENT. Council. March 5, 1836. This was an application by Joseph Wells, the assignee, to

confirm the letters patent granted the 24th of May, 1831, to W. Gibbins and Thomas Westrupp, for “improvements in an apparatus for converting sea water, or otherwise impure water,

into fresh and pure water” (a). Letters patent The petition stated the assignment of the letters patent of firmed adversely

the respective grantees by indentures dated 9th of September, to prior right. 1833, and 25th of July, 1834, respectively. That since the

of last date it was discovered that one of the modes of condensing the jurisdiction is purely dis- steam from sea water was known to some person or persons, cretionary.

but not publicly or generally known or used, and that the Costs of oppo, sition will be petitioner believed the same never to have been practised before given in some

the date of the said letters patent. cases.

That no legal proceedings had taken place on the above patent.

The petition was accompanied by an affidavit by the survivor of the patentees, stating his belief that they were the true and first inventors.

The application was opposed, on the ground that part of the invention had been published many years before the patent in a well-known book, and had also been made the subject of a prior patent.

Rotch, in support of the petition, stated the invention to be for the particular mode of distilling by the use of the refrigerator. That this application arose in consequence of a schism

(a) Specification. The invention as described in the specification, consisted in placing the con. denser below the water line in the ship or vessel, and permitting the water in which such ship or vessel floated, to have free and full action on the outer surfaces of the pipes, through which the steam of salt water is passing, and thus rendering any attention for constantly supplying cold or condensing water to the refrigerating apparatus unnecessary, which it was (according to any of the processes known before the patent) stated to require.

The patentees then described and claimed two modes of accomplishing their invention. The first was for conducting the steam generated by cooking with sea water through a pipe to a re. frigerating or condensing apparatus, which con. sisted of a coiled pipe in a tub, placed below the line of flotation of the ship. From the bottom of the tub an inlet pipe proceeded through the ship's side for the admission of a constant flow of cold water from the sea, and from the upper part of the same tub an eduction pipe passed through the ship's side, by which the cooling or condensing water passed away from the tub, by which means

a constant circulation or flow of cold water was kept up to the tub which condensed the stean passing through the coiled pipe within it.

The second part of the invention was thus explained :-“It consists of a simple pipe passing outside of the bow (or any other convenient place) of the ship, and, passing down towards the ship's bottom, enters through the planking, and the condensed water therefore runs into a cask placed below; by this means the water in which the ship floats will at all times be acting on the condensing pipe.”

The inventors then claim their invention in the following words :-"Our invention consists, first, in applying a condenser in the manner shown, such condenser having an inlet and an outlet pipe placed below the water line or mark, as abore described. And secondly, we claim the placing of a pipe or pipes (whether round or otherwise formed) on the outside of a ship or vessel, such pipe or pipes passing below the water line, and thus forming a condenser for the steam or vapour from a boiler, for the purpose of converting sea into fresh or pure water."

which had taken place among the directors of a company formed March 5, 1836. to work the patent of which Mr. Wells was the assignee, one portion of the directors wishing to prevent the completion of the engagement with the petitioner, pretending that they had discovered in a book that which interfered with the petitioner's patent and rendered it invalid. The part said to be old is the pipe going through the side of the vessel into the sea, and back again into the vessel.

Sir F. Pollock opposed the petition on the ground that part was old, and that the parties, instead of coming to the Privy Council to confirm that to which they are not entitled, should have gone to the Attorney General to have disclaimed that which was old, and made the patent good as to the rest, pro. vided it be new.

Lord LYNDHURST: The petitioner must make out a case as strong as this; that if you had claimed for that which is old, and for that only, we should have confirmed the patent. This act was not meant to apply to every-day cases. This clause was altered after the act left the House of Lords. Now you would have a patent against the real inventor, if we confirmed it; I believe, when the clause was in the House of Lords the right of the real inventor was preserved.

Rotch : The whole of the patent is new, except one small connecting link, which certainly is old; but though old it was not generally used, and the inventor of the rest did not know that fact. We find in the Philosophical Transactions of 1670 a letter from a learned French gentleman, concerning the way of making sea water sweet.

Sir F. Pollock : I have the copies of two specifications, the one in 1806, the other in 1809, duly enrolled, and which every subject in this kingdom is bound to know. These two are precisely the patent now sought to be confirmed. Lord LYNDHURST: I do not think the clause of the act was The act not in

tended to conever intended to apply to the case where the patentees choose from setter to shut their eyes, when they might have gone to the office and patent adversely seen this at once.

to the rights of The act could never be intended to apply to a prior patentee. a case when two patents have been taken out for the same thing, that the subsequent patentee should have a right to come to the court, to apply to have the exclusive benefit of the invention, adversely to the rights and interests of the former patentee. It must have been meant to apply to a very different case. [Rotch : Supposing that both parties are going to work the patent; but if it is thirty years ago, and those parties are not going to carry it into practice? What is the meaning of the words of the act?] You are aware it is discretionary with us, particularly when you have another remedy; you may apply to the Attorney General for a disclaimer. (Rotch : If this remedy be open, I would rather adopt it. The words of the act are

In the Privy “publicly and generally used,” not "publicly and generally Council.

known.”] There are joint patentees, and one of the patentees is dead. The surviving patentee makes an affidavit; how are we to be satisfied that the other patentee had not seen the specification? The affidavit is the most general affidavit that can be; it ought to have been pointed to this part of the patent; it is an echo of the original one, that they believed themselves the inventors.

Lord WYNFORD: I apprehend the object of this clause is, that if there are any very minute portions which have been used, and he swears that he did not know it, a very trifling thing, amounting to nothing, in that case the court may confirm it.

Lord LYNDHURST: This is a case in which the act of parliament leaves a discretion in the judicial committee, and I think it is impossible for us, sitting and hearing this case, to say this is a case in which we ought to exercise that discretion to advise the crown to confirm the patent. You have your remedy; you may disclaim it, if the Attorney General thinks proper to give you relief. The Attorney General may be applied to for that purpose.

Lord WYNFORD: That, perhaps, might be a ground for coming again, if you were dissatisfied with that; you would come and say, “Confirm the patent—I cannot have relief under the other branch of the act of parliament."

Rotch: I see nothing in the act which drives us to go and seek a remedy which we do not like.

Lord LYNDHURST: It is very difficult to lay down any precise rule or general rule to govern our discretion in a case of this description. I think we should not be justified in recommending the crown in this case.

Sir F. Pollock: Under the fifteenth section of the statute (3 & 4 W. 4, c. 41), which authorises your lordships to sit here, the costs of the application are in the power of the court. We are brought here to prevent the confirmation of a patent. We show two prior patents; the subjects of the realm are bound to know of these. We have an interest in another patent which would be interfered with. Every body is bound to know the specifications that are enrolled; they are as much matters of record, and as such to be treated and known, as acts of parliament. We have filed our objections, notwithstanding which the

parties still come here. Costs will be Lord LYNDHURST: I have read your objections, and if after cases of success

ess, that they choose to come, it is for them to take the conseful opposition. quences. My opinion on the subject of costs is this; if a party

entitled to oppose does come and oppose, and opposes successfully, if we do not give costs we shall discourage persons coming to protect the interests of the public. We have the

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