CHAPTER VI.

THE PROVISIONAL SPECIFICATION.

THE sixth section of the Patent Law Amendment Act, 1852, enacts, that every petition for the grant of letters patent for an invention shall be left at the office of the Commissioners, accompanied by a statement in writing, called the Provisional Specification, signed by, or on behalf of, the applicant for letters patent, describing the nature of the invention. The rules issued under that Act require that the provisional specification shall state distinctly and intelligibly the whole nature of the invention, so that the law officer may be apprised of the improvement, and of the means by which it is to be carried into effect. But a general description of the invention fairly showing its real nature is sufficient. Minute details as to the manner of carrying out the invention need not be given (Re Newall and Elliott, 4 C. B. N. s. 269). The applicant is not bound to illustrate the provisional specification with drawings, though this is occasionally done.

Under sections seven and eight of the Patent Law Amendment Act, 1852, every petition for letters patent is referred to one of the law officers for approval; and it is the duty of the law officer to examine the title and the provisional specification, and to certify that they are correct and in proper form. In case either should be too large or insufficient, he has power to allow or require them to be amended. It may be considered that, when these documents have passed this ordeal, and a certificate of the law officer's approval of them

has been given, no further question can arise upon their sufficiency. But from the results of the actual working of the law, we consider it highly desirable that an inventor should not place too great reliance upon this, but should adopt every means in his power to make both the title and the provisional specification perfectly correct, and in accordance with both the letter and the spirit of the law, that they may, if at any time disputed, be held good upon their own merits.

The object of the provisional specification is both to protect the invention from the time a patent is applied for until the complete specification is filed, and to provide against the introduction into the complete specification of any matters of invention differing from those for which the letters patent were granted. The patentee is not to be prevented including in his complete specification those improvements in practical details which may occur in testing and carrying out the invention, provided that those improvements require the use of the original matter of invention set forth in the provisional specification.

A provisional specification (said Jessel, M. R., in Stoner v. Todd, L. R. 4 Ch. D. 58) was not intended to contain a complete description of the thing so as to enable any workman of ordinary skill to make it, but only to disclose the invention, fairly, no doubt, but in its rough state, until the inventor could perfect its details.

"The office of the provisional specification" (said Lord Chelmsford in Penn v. Bibby, L. R. 2 Ch. 127) "is to describe the nature of the invention, not with minute particularity, but with sufficient precision and accuracy to inform the law officer what is to be the subject matter of the patent. It is not at all necessary that the provisional specification should describe the mode. or modes in which the invention is to be worked or car

ried out. . . . . The filing of the provisional specification protects the invention for six months and gives the patentee during this period the like powers, rights, and privileges as might have been conferred upon him by letters patent. The object of this protection evidently is to enable the patentee to perfect his invention by experiments which, although open and known, will not be a user and publication to the prejudice of letters patent to be afterwards granted, so that he may be in a condition to describe in his complete specification, as the result of his experience, the best manner of performing the invention. It clearly appears, therefore, that the complete specification is in a sense supplemental to the provisional specification, not going beyond nor varying from it as to the nature of the invention, but conveying additional information which may have been acquired during the currency of the provisional specification as to the manner in which the invention is to be performed."

The provisional specification is not intended to ascertain the entirety but the identity of the invention, said Pollock, C. B., in Newall v. Elliott, 1 H. & C. 797. And see also Foxwell v. Bostock, 4 De G. J. & S. 298. But these cases ought to be considered with reference to the later cases of Penn v. Bibby (cited above) and Bailey v. Roberton (cited p. 107), which show that if the claims of the complete specification are not comprehended within the terms of the provisional specification, the patent will be invalid.

In the case of Ex parte Bates and Redgate (L. R.· 4 Ch. 577), Lord Hatherley, C., said that a person by lodging a provisional specification under sect. 6 of the Patent Law Amendment Act, 1852, "obtains no rights against the public (under sect. 8 of the same Act) until his patent has been sealed, and even then the patent will not relate back to acts done in the

interval. He is only protected against the consequences of his own publication, and thus may employ workmen and obtain machinery without the risk of being betrayed. But that is all, and he has no right or privilege against any other person. If he wishes to have more, he may, under sect. 9, file a complete specification, and then he is absolutely protected for six months, and has a right to proceed as if he had a patent for that period. The publication of the complete specification gives to the world the whole benefit of the invention, and then the invention will be protected against any other person obtaining a patent for the same invention."

It sometimes happens that after a provisional specification has been lodged, an inventor thinks it desirable to abandon it and lodge another in a different form. It has been doubted whether a patent obtained upon the latter provisional specification is valid, but in the case of Oxley v. Holden (8 C. B. N. s. 666), it was held that a provisional specification does not become public by the mere fact of abandonment. It does not become public until published by the Patent Office, under the authority of the 2nd sect. of the 16 and 17 Vict. cap. 115. Furthermore, though the first provisional specification may afford an objection at the office to the receiving of the second, or to the granting of a patent for the invention after the first specification has expired, yet there is no principle of law and no enactment making a patent void if so granted.

A prior provisional specification ought not, in the absence of fraud, to stand in the way of the law officer allowing another inventor to file a second provisional specification for the same invention. (Ex parte Bates and Redgate, L. R. 4 Ch. 580.)

CHAPTER VII.

THE COMPLETE SPECIFICATION.

By the ninth section of the Patent Law Amendment Act, 1852, it is enacted, that the applicant, instead of leaving with the petition a provisional specification, may, if he think fit, file with it an instrument in writing, under his hand and seal, to be called a Complete Specification, particularly describing and ascertaining the nature of the invention, and in what manner the same is to be performed.

It must be remarked that under the thirteenth section of the same act, the law officer may object to the form of the complete specification, if left at the patent office along with the petition and declaration, and he may order the language to be altered before the patent is sealed. A complete specification filed after the sealing of the patent is not submitted to any examination of this kind.

It appears that an applicant for a patent does not, by lodging a complete specification under the ninth section of the statute as above mentioned, acquire the rights of a patentee so as, during the six months' protection, to prevent the grant of a patent to another person who had previously obtained provisional protection. (Re Henry's and Farquharson's Applications, L. R. 8 Ch. 167.)

If a provisional specification only shall have been left with the petition, the letters patent contain a clause making them void, in case the patentee shall not describe and ascertain the nature of the invention, and the manner in which the same is to be performed,