that the ground of the opposition should be proved beyond the shadow of a doubt (In re Tolhausen's Patent (c), and also In re Vincent's Patent (d)). If there was any doubt the patent ought to be sealed, so as to give the inventor the benefit of an exhaustive trial. These two latter cases indicate the course the law officer should take, where the ground of opposition is an allegation that the applicant has obtained the invention from the opposing party. Such a question might very frequently raise questions of fact of great delicacy, and the question of the credibility of witnesses. Such questions should be left for trial in open court, more particularly as it will be observed that any such opposing party has an ample and unfettered remedy by petition to revoke the patent under sect. 26. In Edmunds' Patent (e), Sir R. Webster, A.-G., said: "I am clearly of opinion that under the circumstances the comptroller-general was right in declining to stop the patent in the present case. Had he done so, or if I were now to do so, there would be no means of reviewing our decision, whereas if the patent is sealed the question can be raised either in the proceedings to which I have already referred, or it may be in proceedings for revocation, should the parties be advised to institute any such proceedings." In In re Stuart's Application (f), Sir E. Clarke, S.-G., said :) "I think that the law officer is only entitled to stop the issue of a patent, having examined all the evidence given on one side or the other, if he is so clearly of opinion that the opponent has made out his case that he would, if a jury were to find in favour of the applicant, refuse to accept it and overrule the decision on the ground that it was perverse and contrary to the obvious weight and effect of the evidence." Under sect. 11, sub-sect. 1, there are three grounds upon which a grant of letters patent may be opposed and three only, and provided that the opponent relies upon one or other of these three grounds it does not appear upon the face of that sub-section that the C. G. has any jurisdiction to inquire into the question as to the right or title of the opponent to be heard in opposition, (c) 14 W. R. 551. (d) L. R., 2 Ch. 341. (e) Griff. P. C. at page 283; see also Fletcher's Patent, Griff. P. C. 284; In re Todd, 9 P. O. R. 488. (f) 9 P. O. R. 452. although in In re Bell (g), the C. G. refused to hear the opponent on that ground. The notice of opposition must state the grounds upon which the opponent intends to oppose the grant and must be signed by him (h); a copy of such notice is delivered by the comptroller to the applicant (i). Within 14 days after the expiration of two months from the date of the advertisement of the acceptance of the complete specification, the opponent may file statutory declarations in support of his opposition, and must deliver to the applicant a list thereof (k); within 14 days from the delivery of such list the applicant may leave statutory declarations in reply, a list of which must be sent to the opponent; the opponent may leave further declarations at the Patent Office, a list of which must be delivered to the applicant; such last-mentioned declarations must be confined to matters strictly in reply (1). No further evidence may be left on either side except by leave of the comptroller (m). In the case of an opposition upon the first ground, it frequently happens that the law officer is of opinion that both the applicant and the opponent contributed materially to the invention. In such case terms will be imposed giving both parties an interest in the patent (n). In David and Wodley (0), upon the question of workman and master, Sir H. Davey said: "I am of opinion that if a workman is employed by an inventor to make a model for the purpose of carrying out his invention, and the workman suggests improvements in detail of the machine, which are adopted in the machine or model as completed, those suggestions are the property of his employer, and the workman cannot afterwards take out a patent for them." The words "obtained the invention" do not necessarily imply that the person from whom the invention had been obtained had taken out or even intended to take out a patent for it; it refers to the identity of the invention, not the right of the person from whom it was obtained to be regarded as the first and true inventor (p). Where it appeared that a part of the subject of the application had been obtained from the opponent, the law officer struck out that portion and allowed the remainder to go on (9). In In re Edmunds (r), the comptroller was of opinion that the words "legal representative" in sect. 11 meant the executor or administrator of a deceased person and would not include a person holding a power of attorney. In the case of inventions communicated from abroad neither the comptroller nor the law officer will enquire into what happened outside the United Kingdom, the importer is the true and first inventor, and the means by which he may have obtained the invention are of no importance and will not be considered since the merit of the invention consists in its importation into this country (8). The other two grounds of opposition are such as can readily be proved or disproved, hence the power of the law officer can be exercised with less prejudice to the interests of justice. In Cummings' Patent (t), Sir Henry James, although of opinion that the applicant's invention and that which formed the ground of opposition were very nearly the same, thought there was just sufficient difference (although a very slight difference) to justify him in affirming the comptroller-general's decision. He felt, too, that if he refused a patent his decision would be final. It will make no difference in the exercise of the discretion of the law. officer, upon the report of the comptroller, if the specification appears to him to comprise the same invention as is comprised in a previous application, that the validity of the first patent is in dispute (u). "On the ground that the invention has been patented in this country" will not give a locus standi for opposition where only provisional protection has been granted for the previous invention (a); but it is otherwise where the opponent has brought himself within the terms of sect. 15 (y). If the invention, the subject-matter of applicant's specification, is fully described in the specification relied on in opposition, the patent will not be allowed to go, notwithstanding that it is not made the subject of claim in the opposing specification (z). In Stubbs' Patent (a), Sir R. Webster said :-"As this is the first case I have had to deal with, I should like to explain what I mean to do in these cases. Of course I need not remind you that stopping a patent is a very serious step, because there are no means whatever of an applicant getting that which he applies for if I stop it, and it must be distinctly understood that I shall not stop the patent unless I am satisfied that the inventions are identical. I shall not hesitate to stop it if I can see clearly they are identical. . . . I shall, as a rule, allow costs to follow the event." In Re Lorrain (b), Sir R. Webster, A.-G., said: "By allowing a specification in any particular form no harm is done to persons who have a prior patent; but, on the other hand, the law officer is bound to protect the public so that they may not be misled by any specification which, upon the face of it, might be held to have a wider scope or include a wider kind of invention than that to which the patentee is, on the evidence, entitled. The patentee of the later patent frames his specification at his peril." Where it appears to the C. G. or law officer that the applicant's specification is too general and calculated to deceive the public, or appears to overlap the invention of the opponent, the patent will only be granted on condition of the (x) Bailey's Patent, Griff. P. C. 269; Dundon's Patent, Griff. P. C. 278. (y) L'Oiseau and Pierrard, Griff. L. O. C. 36. (z) Von Buch's Application, Griff. L. O. C. 40. (a) Re Stubbs, Griff. P. C. 298; see also Re Todd, 9 P. O. R. 487; Re Tattersall, 9 P. O. R. 150; Re Griffin, 6 P. O. R. 296; Re Cumming, Griff. P. C. 277. (b) 5 P. O. R. 142; see also Re Guest & Barrow, 5 P. O. R. 313. insertion of a disclaiming clause; such clause may be general or special, that is, either a general reference to common knowledge or a special reference to the opponent's specification. Sir R. Webster, in Re Stell's Patent (c), said: "The principles upon which the law officers have acted now for some years in allowing disclaiming clauses are, first, if it appears clear that upon the invention claimed by the prior patentee there will be a repetition of the claim to the earlier invention in the later patent; and secondly, if it is clear that the public would be misled by the later specification without disclaimer." The law officer is always reluctant to allow the insertion of special disclaimers, as disclaimers are considered to be made in the interest of the public, and are inserted on the ground that the public are entitled to know what a subsequent patentee may claim, and to have a fair description of the existing state of knowledge (d). Sir R. Webster, A.-G., in Re Guest & Barrow (e), said: "I have never considered that a prior patentee has any right to be specially named, unless the applicants are willing to name him, and unless it is clear there is no other publication except the one that is mentioned." In re Welch's Patent (f), Sir R. Webster said: "I do not think that a later patentee ought to be compelled to insert a special reference to the earlier specification of the opponent, unless it is practically admitted by the later applicant that the governing principle was, for the first time, discovered or disclosed in the opponent's specification." In an opposition on the second ground the law officer will take into consideration the question of mechanical equivalents in comparing the applicant's specification with the specification relied upon by the opponent (g), but he will not consider the question of disconformity between the opponent's provisional and complete specifications (h). (c) 8 P. O. R. 236; see also Re Guest & Barrow, 5 P. O. R. 313. (d) Per Sir R. Webster, in Re Guest & Barrow, 5 P. O. R. 315; see also Re Sielaff, 5 P. O. R. 484; Re Hill, 5 P. O. R. 599. (e) 5 P. O. R. 315; see also Re Tattersall's Patent, 9 P. O. R. 150, (g) Re Haythornthwaite, 7 P. O. R. |