CHAPTER XI.

CONFIRMATION OF LETTERS PATENT.

Ir sometimes happens that a patentee, who, when he applied for his letters patent, believed himself to be the first and original inventor of that for which he obtained the patent, afterwards discovers that some other person had invented or used the same invention, or part thereof, before the date of his patent, although it had not been publicly and generally used. Previous to the passing of the 5 and 6 Wm. IV. c. 83, such a patentee was in an unfortunate position, for his patent was altogether invalid. But the second section of that Act enacts-(1) that if in any suit or action it shall be proved, or specially found by the jury, that any patentee was not the first inventor of the invention patented, or of some part thereof, by reason of some other person having invented or used the same before the date of the patent, or (2) that if such patentee or his assigns shall discover that some other person had, unknown to such patentee, so invented or used the same, it shall be lawful for such patentee or his assigns to petition the Queen in Council to confirm his patent, or to grant a new patent; and the Judicial Committee of the Privy Council being satisfied that such patentee believed himself to be the first and original inventor, and being satisfied that such invention, or part thereof, had not been publicly and generally used before the date of the patent, may report to the Queen their opinion that the prayer of the petition

ought to be complied with, whereupon the Queen may, if she think fit, grant such prayer. The Act provides that any person opposing such petition is entitled to be heard before the Judicial Committee; and that any person, party to any former suit or action touching such letters patent, is entitled to have notice of such petition before it is presented. The provisions of this Act are made applicable to the patents granted under the Patent Law Amendment Act, 1852. (See sect. 40.)

The statute does not apply to the case of a previous user by the patentee himself; the previous user authorizing an application to the Privy Council must have been that of some other person, and unknown to the patentee at the time he obtained his patent (Pow's Case, 2 W. P. C. 5).

In the matter of Stead's Patent (2 W. P. C. 146) it was held that the statute does not apply where the circumstances are such that the validity of the patent is not affected. The case to be remedied is that of a patentee, who had believed himself to be the original inventor, discovering, either after or before action brought, a prior invention so known that the patent might be invalidated on that ground, although not publicly and generally used. The invalidity of the patent being the ground of the application to the Privy Council, the patentee ought not, after presenting his petition, to do anything which is inconsistent with the assumption of its invalidity, such as bringing an action for infringement.

If the petitioner knows the name of the person whose previous use of the patented invention had invalidated it, the name must be mentioned in the petition; and if his name is unknown, the fact must be stated (Re Lamenaude's Patent, 2 W. P. C. 164). The Committee requires some evidence of the patentee's

belief, that at the time he applied for the patent he was the first inventor (Re Card's Patent, 2 W. P. C. 161).

The words of the statute are very general, but a discretion is clearly given to the Judicial Committee by the language of the Act; and the following cases will show the principles upon which they have proceeded in their decisions::

In Honiball's case it was said that the jurisdiction to confirm letters patent should be very cautiously and sparingly exercised (9 Moore, P. C. C. 452).

Baron Heurteloup obtained a patent in 1834 for certain improvements in fire-arms. He subsequently discovered that part of his invention had been embraced by a patent granted in France in 1821, and that there existed a printed book in the British Museum containing a description of the French invention. The petitioner's affidavit, in support of his petition to the Privy Council, stated that he believed himself to be, at the time of the grant, the true and first inventor of the patented improvements; and further, that he believed the French invention had never been brought into use in France or elsewhere, and that it was not known in England, otherwise than by the introduction of books printed in France, containing a description of the invention. Notice of the day of hearing had been sent through the post-office, addressed to the French patentee. Under these circumstances, their lordships reported that the case was a proper one for confirmation (Heurteloup's Patent, 1 W. P. C. 553).

There are other cases which show that the Privy Council will not grant a confirmation where the previous user of the invention, which is alleged to invalidate a patent, and to call for the aid of the statute, continues up to the date of the patent. In order to

afford ground for the interposition of the Crown, acting on the recommendation of the Privy Council, it must be shown that the previous user was not only not general, but that it had ceased, and was non-existent at the date of the patent, in which case a confirmation does injury to no one. On an application to confirm Card's Patent for improvements in the manufacture of candle-wicks (2 W. P. C. 161), it appeared that another candle-maker had adopted the same method of making wicks before the date of the patent, and that he and his brother had practised it in different parts of the same country. It appeared, moreover, that one of them, and the assignees of the other, had continued to make wicks in that way up to the time of the hearing of the petition. The method had been mentioned by them to other people, and there was ground for supposing that another candle-maker had adopted it. The Judicial Committee considered that this was not such a case as the legislature had in contemplation when they passed the Act, and they refused the application.

Lamenaude obtained a patent on the 18th of July, 1848, for an invention of a method of fixing letters upon glass without wire or iron. It turned out, that somewhere between the 12th and 15th of the same month of July, some letters had been fixed upon glass by this very method by another person. This was sufficient to vitiate the patent, and an application was made to the Privy Council for a confirmation. It was argued that, although the invention had been publicly used, it had not been generally used previous to the date of the patent, and it was proved that the person who had so used it was a consenting party to the application; but it was held that the statute did not apply to such a case as this, where the invention had already got into use, and was actually in use at the

date of the patent (Lamenaude's Patent, 2 W. P. C. 164).

The Act was held not to apply to a case in which it was proved that two patents had been previously procured for substantially the same invention as that covered by the patent which it was sought to confirm, although the previous patents had expired (Westrupp and Gibbin's Patent, 1 W. P. C. 554).

Application was made for the confirmation of a patent granted in 1838 to Mr. Porter, for an improvement in the construction of anchors. It appeared that, after obtaining the patent, Mr. Porter had called on several anchor-smiths in various parts of the country, for the purpose of introducing his invention to their notice; and that when he called upon Messrs. Logan of Liverpool, they directed his attention to an anchor which they had invented in 1826. The construction of their anchor was similar to that of Porter's, and they had sold a few of that make to various shipowners. Notwithstanding this, Porter continued to work his patent, and when it was about to expire, he applied for and obtained an extension for six years. An alleged infringement having taken place, an action was brought by Porter's assignee, and on the trial the facts as to Logan's anchor came out. Porter's assignee then applied to the Privy Council for a confirmation of the extended patent; but it was held, that as the evidence showed that not only Porter was not the original inventor, but that he was aware of the fact at the time he applied for an extension, this was not a proper case for the Crown to grant a confirmation, and the application was refused. "It is not easy," said Mr. Pemberton Leigh, on giving judgment, "to define the exact meaning of the expression, 'publicly and generally used' in the Act of Parliament. Their lordships would not consider the use of the in