1842. BROWN บ. ANNANDALE. or the dominion of Wales, are contrary to the laws of the realm: but by the sixth section it is enacted, "that this declaration shall not extend to any letters-patent and grants of privilege, for the term of 14 years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures which others, at the time of making such letters-patent and grants, shall not use,” &c. The operation of this Act is not extended to Scotland, either by its terms or by virtue of the Act of Union of the two kingdoms Although in Scotland, since the Union, the duration of the privilege is limited by the patents to 14 years (the same term which the statute gives for the exclusive use of an invention in England), and there are other coincidences in the practice of granting patents in both countries, the rights conferred on the grantees are distinct and separate. A patent granted for England is always confined in terms," within that part of our United Kingdom of Great Britain and Ireland called England, our dominion of Wales, and town of Berwick-upon-Tweed: and vice versa, a patent for Scotland confines the benefits of the invention to the patentee," intra eam partem regni nostri uniti Magnæ Britanniæ et Hiberniæ, Scotiam vocatam." These are the terms used in both countries respectively, as well in the petitions to the Sovereign praying the patents as in the patents themselves, as may be seen in the forms given in the books of practice (b); showing clearly that, notwithstanding (b) The letters-patent to the Appellant, dated the 4th of February 1836, recited his petition to the Crown, setting forth that he had discovered a certain improvement in the manufacturing of paper: quam inventionem credit pro generali beneficio et commodo futuram esse, dictam inventionem novam esse et haud unquam antehac factitatam aut usitatam fuisse per ullam aliam personam aut personas, quosquemque intra HÆC REGNA, ut intelligit et credit. Petitor the Union, there is no communication of the law of patents, or of the rights arising under patents, between the two countries; but that each part of the United Kingdom is in this respect as distinct, separate, and independent, relatively to the other, as any foreign country Lord Campbell:-But it has been considered that the 6th article of the Act of Union has made the law of Scotland the same as the law of England with respect to letters-patent, and the rights under them. igitur humillime supplicavit ut nobis gratiose placuerit concedere sibi, &c. nostras regias literas-patentes, &c. pro factitatione, usitatione, &c. dictæ ejus inventionis, &c. INTRA ILLAM PARTEM regni nostri uniti Magna Britanniæ et Hiberniæ, Scotiam vocatam, pro termino 14 ANNORUM SECUNDUM STATUTUM."-The patent then proceeds in the usual form to grant to the Appellant the sole privilege of using the said invention within that part of the United Kingdom called Scotland, and to prohibit all other persons, without his permission, from using the same therein; and then comes this prog viso: "PROVISO ut si quovis tempore durante dicto termino, &c. nobis, hæredibus et successoribus nostris, &c. manifestum reddetur hanc nostram concessionem legi contrariam vel subditis nostris damnosam vel incommodam esse, vel dictam inventionam, QUOAD PUBLICUM EJUS IN ILLA PARTE regni nostri uniti, SCOTIA VOCata, USUM ET EXERCITIUM, NON ESSE NOVAM INVENTIONEM, VEL A DICTO J. BROWN, UT PRÆDICITUR, NON ESSE INVENTAM, tum per ejus rei significationem a nobis, &c. præsentes HÆ LITERÆ PENITUS CASSABUNT, ac prorsus ad omnes intentiones et proposita, IRRITE FIENT," &c. "PROVISO etiam quod præsentes hæ literæ, &c. non extendent ad privilegium dandum dicto J. Brown, executoribus &c. extendi vel faciendi quodcunque inventum vel opus quod prius AB ULLIS SUBDITIS NOSTRIS QUIBUSCUNQUE EXCOGITATUM aut inventum publice. que in PRÆDICTA regni nostri uniti PARTE SCOTIA VOCATA factitatum vel exercitatum fuerit quibus similes litera-patentes pro solo usu et exercitio ejusdem antea concessæ fuerant," &c. [All petitions to the Crown for English patents pray the exclusive benefits of the inventions" within that part of the United Kingdom of Great Britain and Ireland called England, your dominion of Wales, and town of Berwick-upon-Tweed.' These words are also used in the granting parts of the patents, and again in the clauses prohibiting others from using the inventions, and in the provisos for the novelty of the invention, &c.-Godson on Patents, p. 170; and App. Nos. I. & III., last Edition.] 1842. BROWN บ. ANNANDALE. 1842. BROWN v. ANNANDALE. Lord Brougham:-Yes, English cases are cited in patent cases in the Courts of Scotland, just as in England: Turner v. Winter, Boulton v. Bull, and all the leading cases, are cited as law there as well as here. The Attorney-general:-It is immaterial whether the law of England applies to Scotland or not: assuming that it does, still we maintain that the Crown of Scotland is in the same situation as respects the granting of patents as the Crown of England. The man who brings into this country an invention, and first publishes it here, is the inventor for all purposes. The Crown can give the exclusive use in Scotland to what is new in Scotland, as it can in England to what is new in England. It is not a ground for setting aside a patent, that the invention protected by it had been used in another country. If the patent in the present case was a good patent, it cannot be invalidated by anything but user of the machinery in Scotland; user in England cannot affect it. That, however, is the only ground of defence now set up by the Respondents. If their argument prevails, nearly all the existing patents are bad, as most of the inventions have been first known in other countries. The Lord Chancellor :-Then you contend that any person introducing an invention into Scotland from England, is equally entitled to a patent as if he imported it from beyond the seas. The Attorney-general:-I do; Scotland is a foreign country as to England for this purpose. The question is this is not the Crown entitled to grant a patent to an inventor, inventing or importing an invention into Scotland, just the same as it can to an inventor in England? The word "realm," in the statute of James, means now, as it meant before the Union, the realm of England Lord Brougham:-That does not get rid of my difficulty. The petitioner for the patent states that his invention has not been before used intra hæc regna (c), these kingdoms; and that is recited in the patent. He deceives the Crown, and therefore the grant would be void, independently of the statute. The Lord Chancellor :- If the word "realm" means the United Kingdom, the proviso of novelty" in that said part of our United Kingdom of Great Britain and Ireland called England," &c., is illegal; and the consequence would be that every English patent is void. The Attorney-general:-That would be so if the right construction of "realm" is," the United Kingdom;" but our contention is, that each part of the United Kingdom must be considered distinct for these purposes The Lord Chancellor :-There is no doubt, I suppose, that this invention was known and used in England before the date of the Scotch patent. The Attorney-general:-No doubt at all: but the Appellant took out his patent without knowing the invention was known in England; he was certainly the original inventor in Scotland. Most of the eminent counsel whose opinions have been taken in this case agree, looking at the language of the patent and of the statute, that the condition of novelty only applies to the country for which the patent is granted. (c) See note (b), ante, p. 442. 1842. BROWN v. ANNANDALE. 1842. BROWN D. ANNANDALE. 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. Those words in the Appellant's patent are: "Proviso semper, &c. dictam inventionem, quoad publicum ejus in illa parte regni nostri uniti, SCOTIA vocata, usum et exercitium, non esse novam inventionem, vel a dicto Jacobo Brown, ut prædicitur, non esse inventam." 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 of James 1, in a long course of usage, in the form of the proviso. It is a restrictive proviso, less than the Act authorises, if we hold that the Act is to be so construed. 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 patent in another part of it. There is a difficulty in applying the words "hæc regna," in the recital in the patent, to Scotland only. The Attorney-general:-If the proviso is bad, very serious doubt will arise whether the patent is not bad altogether. The question is, whether a practical construction of the Act-a uniform practice of 200 years-shall be set aside merely by a legal decision; or whether it should not be by Act of the Legislature to be passed for the very purpose, particularly when the vast interests grown up under the supposed state of the law are considered? If the decision in Roebuck v. Stirling (d), on the authority of which the (d) There is a short report of Roebuck v. Stirling, in 5 Brown's Supplement to Morrison's Collection of Decisions in the Court of Session. There is no report of the case on appeal to the House of Lords. The following is taken from the printed appeal cases of both parties, in Lincoln's-Inn library; from Lord Hailes' Notes of Decisions of the Lords of Council and Session from the year 1766 to 1791, edited by Mr. Brown, vol. 1, p. 566; and from the Journals |