Chancellor, setting forth the facts, accompanied by an affidavit in support. The duplicate letters patent are impressed with a stamp of £5.

By the 22nd Vict. c. 16, the Secretary of State for War is empowered to acquire by purchase or gift, the benefit of any inventions of improvements in munitions of war, and of any letters patent obtained for the same, and to prevent the disclosure of such inventions. (See the statute at length in the Appendix.)

The Court of Queen's Bench decided in the case of Feather v. The Queen (6 B. & S. 257) that letters patent in the form in which they are usually issued, are not valid as against the Crown, and that the Crown is entitled, notwithstanding the grant, to use the invention without the assent of the patentee (see the case more fully stated in the chapter on Infringements); but manufacturers manufacturing for the Crown are not in the same position (See Dixon v. The Small Arms Company, Limited, L. R. 1 App. Ca. 632).

As to the mode of applying for a prolongation of letters patent, and the principles which guide the Privy Council in deciding upon the application, we must refer the reader to a subsequent chapter.

179

CHAPTER X.

DISCLAIMERS.

It has been already shown that a patent which includes two inventions, of which one is not new or not useful, is altogether invalid; and that if the patent is confined to a single invention, any material part of which has either of these defects, the patent is likewise invalid. The fatal effect of an inconsistency between the title and the specification has also been pointed out. To remedy a law which in very many cases bore unjustly upon patentees, a clause was introduced into the Act 5 & 6 Wm. IV. c. 83, by which a patentee is empowered (by leave of the Attorney or SolicitorGeneral, in case of an English patent; or of the Lord Advocate or the Solicitor-General for Scotland, in case of a Scotch patent; or of the Attorney or SolicitorGeneral for Ireland, in case of an Irish patent, certified by his fiat and signature), to enter a disclaimer of either the title of the invention or of the specification, stating the reason for such disclaimer; or with the like leave to enter a memorandum of any alteration in the title or specification (not being such disclaimer or alteration as shall extend the exclusive right granted by the said letters patent); and such disclaimer or memorandum being filed with the specification, is then to be deemed part of the letters patent, or of the specification, in all courts. It is, however, expressly provided that the disclaimer, or memorandum of alteration, shall not be receivable in evidence in any

action or suit pending at the time it was filed, except in a proceeding by scire facias.

The effect of this clause has been to check the bringing of the action of scire facias to repeal patents, except where the vice complained of goes to the essence of the invention, and to every part of it. The patentee being enabled not only to amend the title and specification by disclaimer, but to put his disclaimer in evidence at the trial, it may be that the prosecutor's case will be altogether cut away from him. In such event he may be called upon to pay the patentee's costs, the payment of such costs being the condition of the bond given by him at the commencement of the suit, in case the patent shall not be cancelled by means of the writ of scire facias, or proceedings thereunder. Leave to put the bond in suit must, however, be first obtained from the Master of the Rolls or the AttorneyGeneral; and neither functionary is likely to grant such leave, when the prosecutor stayed his proceedings as soon as he received notice of the disclaimer by which the invalidity of a patent was cured. See what fell from the judges in The Queen v. Mill (10 C. B. 379).

By the 39th section of the Patent Law Amendment Act, 1852, the provisions of the 5 & 6 Wm. IV. c. 83, and of 7 & 8 Vict. c. 69, as to disclaimers and memoranda of alteration are directed to apply to patents under that Act. The same section declares that no action shall be brought upon any letters patent which, or the specification of which, has been altered by disclaimer or memorandum, in respect of any infringement committed prior to the filing of the disclaimer or memorandum, without the express permission of the law officer. It is further declared, that the filing of any disclaimer or memorandum of alteration, in pursuance of the law officer's leave, shall, except in

cases of fraud, be conclusive as to the right of the party to enter such disclaimer and memorandum.

The judges of the Court of Queen's Bench having decided, in the case of Holmes v. London and NorthWestern Railway Company, that a patent for an improved turn-table for railway purposes was invalid, because the patentee had not limited his claims to the combination of the parts of the machine, but had described, and was therefore considered to have claimed, the several parts, some of which were old, the assignee of the patent applied to the Solicitor-General for leave to enter a disclaimer of the separate parts of the turntable, so as to confine the claim of invention to the combination of parts forming the whole apparatus. The Solicitor-General (1853), after hearing counsel in opposition, as well as for the applicant, granted the leave sought for, upon the terms of the applicant undertaking not to bring or prosecute any action or suit against certain parties, in respect of any turn-tables made or used by them before the date of the disclaimer (Macr. P. C. 31). See also in the matter of Smith's Patent (Macr. P. C. 232).

The principle of the above cases received considerable extension in Re Medlock's Patent, the facts of which are stated in an article in Newton's Lond. Jour. vol. 22, N. s. 69. This was an application for leave to enter a disclaimer of part of a specification under a patent for preparing a red or purple dye by treating aniline with dry arsenic acid. The patent had been the subject of considerable litigation, which had resulted in its being declared invalid on the ground that two alternative processes were described in the specification, of which confessedly only one would answer. (See Simpson v. Holliday, 13 W. R. 577, cited ante, p. 136.) The application was opposed by several chemical manufacturers, some of whom had been made

defendants in the various suits instituted by the owners of the patent. After hearing counsel on both sides, Collier, S. G., granted the leave sought for, but only on the terms that the applicants should bring no action against the opposers "for any infringement of the patent by the use, or continued use, during the continuance of the patent, of any processes for manufacturing red and purple dyes in use by them at the present time." The applicants refused to accept this condition, and the Solicitor-General consequently disallowed the disclaimer.

In Re Tranter's Patent of 1865, which was a patent for firearms and cartridges, an application was made in August, 1873, by the assignees of the patent for leave to disclaim certain portions of the matters claimed in the specification, and the application was opposed by manufacturers of firearms and cartridges chiefly on the ground that they had embarked large capital in the manufacture of cartridges, and that they should be protected in their manufacture against any proceedings on the part of proprietors of a patent which had been allowed to remain in its imperfect state for such a long time, inasmuch as the effect of the disclaimer would be to enable the applicants to take such proceedings. The A. G., Coleridge, granted the leave sought for, but only on the condition that the applicants "should undertake that no legal proceedings be taken against the opponents in respect of the manufacture, use, or sale of cartridges, or for any alleged infringement of the patent in question when amended by disclaimer." And this decision was followed by Giffard, S. G., in the case of Re Jones's Patent, on the application of Mr. Battley, the assignee, for similar leave.

The law officer, however, will not always insist upon the patentee giving an undertaking of this nature. He may think it right that the past infringement of the patent should be paid for (Re Lucas's Patent,