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Macr. P. C. 234). But a patentee disclaiming after he has obtained an injunction against an infringement cannot enforce the injunction after disclaimer, but must proceed de novo. (See Dudgeon v. Thomson,

L. R. 3 A. C. 34.)

In the matter of Bateman and Moore's Patent (Macr. P. C. 116), an application was made (1854) to Bethell, S. G., for leave to alter the specification, so as to make it disclaim the separate parts of the invention, and claim only the combination. The Solicitor-General said, that he should require to see from the specification itself that it had not been intended to claim the separate parts, but their combination only. Finding some indication of an intention to claim the apparatus as a whole, he gave the patentees permission to reject certain words in the claiming part of the specification which were inconsistent with such a construction.

When some distinct and separate part of the invention is clearly old or useless, then there is no difficulty in excising it from the specification by a disclaimer. But where this is not the case, the entry of a disclaimer before a trial at law, is a matter of doubtful policy. In the reported cases of the allowance of disclaimers, trials at law had previously taken place, wherein the difficulties and objections to be obviated had been pointed out.

Every disclaimer which would have the effect of extending the exclusive right granted by the patent will be void by the language of the Act. For example, if the specification showed that the parts were claimed, and not their combination, then a disclaimer which sought to reject the parts, and to insert a claim for the combination alone, would be bad, inasmuch as this would be an attempt to extend the original privileges of the patent. "The object of the Act authorizing disclaimers" (said Lord Westbury in the case of Ralston v. Smith, 11

H. L. C. 223) "was plainly this, that when you have in your specification a sufficient and good description of a useful invention, but that description is imperilled or hazarded by something being annexed to it which is capable of being severed, leaving the original description in its integrity good and sufficient, without the necessity of addition, then you may, by the operation of a disclaimer, lop off the vicious matter, and leave the original invention, as described in the specification, untainted and uninjured by that vicious excess."

The operation of a disclaimer was considered in the case of Seed v. Higgins (8 E. & B. 755). The patentee described in his specification, and illustrated by drawings, some machinery for preparing cotton, and after saying that the apparatus so described represented one particular and practicable mode of carrying out the invention, he proceeded to state that he did not intend to confine himself to this particular method, but claimed as his invention the application of the law or principle of centrifugal force for a certain purpose. He afterwards disclaimed his claim to the application of the law or principle, except only the application of centrifugal force acting in a certain manner as described in the specification. This was held to be a limitation of his claim to the particular apparatus described, whereby the principle was applied in a certain way, and afforded no ground for contending that the disclaimer described a different invention from that described in the specification. This view was also taken on appeal by the Court of Exchequer Chamber (8 E. and B. 771) and by the House of Lords (8 H. L. C. 550).

The phraseology of the Act is somewhat indefinite, but the section has been held to apply to all cases where the disclaimer attempts to give the patentee a right which he could not have enjoyed under the

specification as originally framed.

Thus, in the case

of Ralston v. Smith (11 C. B. N. s. 471) it was decided by the Court of Exchequer Chamber, and afterwards by the House of Lords (11 H. L. C. 223) that a disclaimer is bad which is in effect an attempt to turn a specification for an impracticable generality into a grant for a specific process, comprised within the generality in one sense, but not to be discovered there without going through the same course of experiment which led to the discovery of the specific process in the disclaimer. The specification in this case was expressed in general terms, embracing a great number of modes of engraving upon rollers any desired design for the purpose of embossing woven fabrics. It was afterwards found that only rollers with circular grooves would answer, and the patentee thereupon, by disclaimer, limited his invention to such rollers. "Now" (said Lord Chelmsford) " as these were not specifically described in the original specification, but were merely involved in the general terms which were used, the patentee had not complied with the conditions of the letters patent in particularly describing and ascertaining the nature of his invention. When, therefore, by his disclaimer he confines his claim to circular grooved rollers as his sole invention, though in one sense he may be said to narrow a right, yet he really extends it, because he thereby describes his alleged invention sufficiently to enable him now to assert a right under the patent which he never could have successfully maintained upon the original specification alone."

It seems from the case of Thomas v. Welch (L. R. 1 C. P. 192) that all the claims may be struck out by disclaimer, provided that there is enough left in the specification to show clearly what is the invention claimed by the patentee.

By the fifth section of the 7 and 8 Vict. c. 69, the

right to enter a disclaimer, or to amend, is given to an assignee who has acquired the whole interest in the patent. When the patentee has assigned part of his interest only, the patentee and assignee must join in making any disclaimer or alteration.

Under the language of that part of the section which enacts that "no objection shall be made, in any proceeding whatsoever, on the ground that the party making such disclaimer or memorandum of alteration had not such authority in that behalf," it was held that the disclaimer of a patentee who had assigned all his interest in the patent could not be objected to (Wallington v. Dale, 7 Exch. 888). Mere clerical errors may be amended by the order of the Lord Chancellor or Master of the Rolls without the necessity of filing a memorandum of alteration (Re Sharp's Patent, 3 Beav. 245; Re Redmond, 5 Russ. 44; Re Rubery's Patent, 1 W. P. C. 649; Re Dismore, 18 Beav. 538; Re Johnson's Patent, L. R. 5 Ch. D. 503). The Master of the Rolls may order a disclaimer to be removed from the file, when filed without the consent of the patentee (Re Berdan's Patent, L. R. 20 Eq. 346).

The M. R. refused to cancel a memorandum of alteration made under 5 and 6 William IV. c. 83, when application was made to him for that purpose, on the ground that it extended the patentee's privilege, and infringed the petitioner's patent rights, for he held he had no jurisdiction (Re Sharp's Patent, 3 Beav. 245).

The application for leave to enter a disclaimer or memorandum of alteration, must be made at the Patent Commissioner's Office, and it is then referred to the proper law officer. The petition must be impressed with the stamp of £5. Persons having adverse interests may lodge caveats (requiring a £2 stamp) at the office, and they are then entitled to notice when the application is heard by the law officer. Leave

having been obtained, and the law-officer's fiat issued, the disclaimer or memorandum of alteration is simply filed at the office, no enrolling being now required.

There is no appeal from the decision of the law officer granting or refusing leave to file a disclaimer. In the case of Medlock's Patent, cited above (p. 181), the owners of the patent, after the Solicitor-General had refused his fiat, presented a petition to the Commissioners of Patents, submitting that the law officer having once granted his fiat, it could not be recalled, and praying that the disclaimer and fiat might be filed, so that the validity of the conditions imposed might be tried in a court of law, or that the disclaimer might be referred to the Commissioners of Patents, or that the Commissioners would require a fuller statement of the case, and that the petitioners might be heard before them. The petition was, however, returned, endorsed with the word "refused" (Newton's Lond. Jour. vol. 22. N. s. 70, 71).

The law officer has not the power of awarding to the successful opponent to an application for leave to enter and file a disclaimer the costs of his opposition. This was decided recently by the Queen's Bench division, and affirmed on appeal in the case of Kynock v. The National Small Arms Company, Limited (Law Journal, Notes of Cases, vol. 12, p. 153).

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