CHAPTER XI. Title of Patent. 1. THE title of the invention in the patent must agree with the invention as claimed in the specification; the language of the patent may be explained and reduced to a certainty by the specification, but the patent must not claim one thing, and the specification another. (a) 2. It was stated to the Committee of 1829, that few things were more difficult than to prepare a title to a patent so that it might not be so clear as to call the attention of rivals, and enable them to discover the subject, and not so obscure as to endanger the existence of the patent in a court of justice, as containing an imperfect definition of the invention described in the specification. (b) The grant of protection from the date of application, has now in a great measure removed this difficulty.(c) Still, however, an inventor is obliged to prepare the title of his patent before he can safely venture on trial of his invention. Material improvements may suggest themselves after the patentee has secured his right. The patentee may include such improvements in his specification if they are merely improved means of carrying the invention into effect. If they are distinct inventions, an attempt to include them will avoid the patent. 3. If the title is for one thing, and the specification describes another, (d) as a patent "for making white lead," the substance made being a white substance, like white lead, the patent is void, because there is no specification enrolled of (a) Epitome of the Law relating to Patents, by J. W. Smith, 19. (d) Turner v. Winter, Dav. Pat. Ca. 145, 155; Webst. P. C. 77. the invention protected by the patent. Where the title necessarily embraces more than the specification describes, the entire patent is void, because the entire discovery of all the things for which the patent is taken out, is the consideration for which the patent is granted by the Crown.(e) 4. A patent is not void simply on the ground that its title is conceived in such terms as to be capable of comprising some other invention besides that described in the specification, in the absence of any proof of fraud upon the Crown.' Accordingly, the title of a patent being "for improvements in carriages," where the invention was an improvement in German shutters, which are used in some kinds of carriages only, the Court held that the title might be taken to mean improvements in some kinds of carriages, and that the patent was valid.(f) The title should give some idea, and, as far as it goes, a true idea, of the invention; it is sufficient if it be consistent with it. A title for " an improved application of air to furnaces," is a good title of an invention for the use of heated air.(g) An invention of a means of giving paper, by the application of a certain composition, such a surface as renders the lines of copper-plate printing more distinct, is properly described as "an improvement in copper-plate printing."(h) The title of a patent was "for improvements in making bobbin-net lace." The invention was a mode of making spots in it. Held good.(i) Patent for "improvements in the manufacture of plaited fabrics." The invention was of a single improvement, by a combination of processes in the mode of manufacturing them. Held not to be an inconsistency invalidating the patent.(k) 5. The judgment of the Court of Queen's Bench, that a patent might be void, if the vagueness of the title was such as (e) Bloxam v. Elsee, 6 B. & C. 169; Cook v. Pearce, 8 Q. B. 1063, Tindal, C.J.; Jessop's case, 2 H. Black. 476, 489; Rex v. Wheeler, 2 B. & A. 345; Morgan v. Seaward, 2 M. & W. 544. (f) Cook v. Pearce, 8 Q. B. 1044; see Macalpine v. Mangnall, 3 C. B. 512. (g) Neilson v. Harford, Webst. Pat. Ca. 333, Lord Abinger. (h) Sturtz v. De la Rue, 5 Russ. 322. (i) Fisher v. Dewick, 8 Q. B. 1036, stated by Sir F. Pollock. (k) Nickels v. Haslam, 7 M. & G. 378; see also Beard v. Egerton, 3 C. B. 122; Reg. v. Mill, 10 C. B. 379. not to disclose or point out the particular improvements for which the patent was obtained, was overruled in the Exchequer Chamber.(1) 66 The title appears to have been formerly looked at with considerable strictness. Metcalfe's patent was repealed, because a hair brush, made with clusters of bristles of unequal length, was described in the title as a tapering brush."(m) Lord Cochrane's patent for “ an improved method of lighting cities, towns, and villages," the invention being an improved lamp, particularly applicable to lighting streets, was held bad.(n) So Wheeler's patent for " a new method of drying and preparing malt;" the invention being a method of roasting it after it was made, for the purpose of colouring beer. (o) 6. The title need not suggest the purpose of the improvements; but if a purpose is suggested, to which the invention proves not to be applicable, the patent is void. (p) Mr. Sweet, referring to the judgment of Mr. Baron Parke in Morgan v. Seaward, recommends the avoidance of the word "improvement," both in the title and specification, by way of caution; stating at the same time, that its absence would probably not save a patent, if the invention claimed in it was useless.(g) 7. Vagueness of title is an objection that may be taken on the part of the Crown before it grants the patent. (r) Should the title of a patent, applied for under the recent Act, appear too large or insufficient, the law officer to whom the application for the patent is referred, may allow or require the same to be amended. (s) 8. The patentee is bound in his specification to describe all the improvements in his invention which he may have made up to the time of filing his specification; but in doing so, he must be very cautious not to include any invention which cannot be comprised under the title of his patent. Should he (1) Cook v. Pearce, 8 Q. B. 1044. (m) Rex v. Metcalfe, 2 Stark. N. P. C. 249. (n) Lord Cochrane v. Smethurst, 1 Stark. N. P. C. 205. 7 Jarman, by Sweet, 503, 579. attempt to include a claim for such an invention in his specification, the patent will be void. In Croll v. Edge, the title of the patent was "for improvements in the manufacture of gas, and in the apparatus used when measuring and transmitting gas." The specification enrolled, recited a patent with a title "for improvements in the manufacture of gas, and in the apparatus used therein, and when transmitting and measuring gas." The invention, in addition to improvements in the mode of manufacturing and measuring gas, claimed a new mode of setting and manufacturing clay retorts. The patent was held void. The Court said, no one could doubt that the main claim of the specification was an improvement in the apparatus for manufacturing gas. No patent had been granted for that. They considered the enrolment of the specification as an attempt, either to remedy an oversight, or to extend the patent; and that the patentee had not specified the restricted patent which he had obtained.(t) 9. Evidence of a design on the part of the inventor to choose a vague and general title, in order to avail himself at the time of filing his specification of an invention not discovered at the date of his patent, such invention being different from that for which the patent was really taken out, would be evidence of fraud upon the Crown, and avoid his patent.(u) 10. Defects in the title may in some cases be cured by a disclaimer.(x) It seems that a disclaimer need not be expressly applied to the title. A disclaimer of certain parts of an invention seems to be a disclaimer of the title, so far as it is applicable to such parts.(y) 11. Pleas, that the patentee did not particularly describe the nature of his invention; and that the invention described is different from that for which the patent is granted, are proper to raise the question of the sufficiency of the title.(z) If the title is set out in the plea, it must be set out accurately. (t) Croll v. Edge, 19 Law J. C. P. 261; S. C. 9 C. B. 465. (u) See Cook v. Pearce, 8 Q. B. 1064. (x) Stat. 5 & 6 Wm. 4, cap. 83, s. 1. See post. (y) Per Jervis, C.J. and Maule, J. 10 C. B. 390, 396, Reg. v. Mill. Croll v. Edge, 19 Law J. C. P. 261; 9 C. B. 465; see Stead v. Carey, 1 C. B. 496. CHAPTER XII. Specification. SECTION I.-GENERAL RULES. The Language and Construction of the Specification. 1. EVERY patent contains a condition that it shall be void, if the patentee does not particularly describe and ascertain the nature of his invention, and the manner in which the same is to be performed, by an instrument in writing under his hand and seal, within a certain time named in the patent. This period is allowed to give him opportunities of perfecting his invention by experiments, and calling to his assistance the knowledge and experience of others, in order that he may make his specification as clear, correct, and comprehensive as possible. The object of the specification is to put the public in full possession of the invention, to the end that it may be generally exercised after the expiration of the period of protection granted by the patent. (a) 2. In preparing a specification, it is necessary to examine thoroughly the existing state of the art in which the invention is made, and all improvements and inventions which have from time to time been patented, either here or abroad, or otherwise made public in the United Kingdom or colonies; to compare the new invention with all past knowledge on the subject, and to ascertain exactly in what the improvement consists. The patentee must then consider whether the invention is new in principle, that the claim may be made as large as possible, so as to prevent any adaptations of the principle by different machinery. If it is merely an old principle, carried out by new and improved machinery, the claim must be (a) Per Lord Mansfield, Liardet v. Johnson, Webst. Pat. Ca. 54, n. |