English Patents

S. 45 of the Patents Act 19°7 provides that the exhibition of an invention at an industrial or international exhibition certified as such by the Board of Trade, or the publication of any descrip tion of the invention during the period of the holding of the exhibition, or its use for the purpose of the exhibition in the place where it is held, or during the period of the exhibition by any person elsewhere, without the privity or consent of the inventor, shall not prejudice the right of the inventor or of his legal per sonal representative to apply for and obtain a patent, or the validity of any patent granted on the application, provided that two conditions are complied with, viz., (a) the exhibitor must, before exhibiting the invention, give the comptroller-general a prescribed notice of his intention to do so; and (b) the application for the patent must be made before or within six months from the date of the opening of the exhibition. A like saving has been given by the Act of 1919 to the reading of a paper by an inventor before a learned society and to the publication of the paper in the society's transactions subject to a like provision as to notice by the person reading such paper or permitting such publication and as regards (c) the substitution of the date of the reading or publication of the paper for that of the opening of the exhibition.

When an invention is the joint production of more persons than one, they must all apply for and obtain a joint patent, for a patent is rendered invalid on showing that a material part of the inven tion was due to some one not named therein. But under some cir cumstances the patent may be actually granted to one or more of the joint applicants. The mere suggestion of a workman employed by an inventor to carry out his ideas will not require that he should be joined, provided that the former adds nothing sub stantial to the invention, but merely works out in detail the principle discovered by his employer.

Procedure.

The Patents Act 19o7, re-enacting former pro visions, requires an application to be made in a prescribed form (the forms and stamps are on sale at all postal money order offices in the United Kingdom) and left at or sent by post to the patent office in the prescribed manner. The application must contain a declaration that the applicant is the true and first inventor, and it must be accompanied by either a provisional or complete speci fication. A provisional specification describes the nature of an invention, and a complete specification particularly describes and ascertains the nature of the invention and the manner in which it is to be performed and must end with a distinct statement of the invention claimed. Since the introduction of the patent specification, it has been necessary that an invention protected by patent should be accurately described by the inventor. The task of preliminary disclosure falls to the provisional specification introduced by the Patent Law Amendment Act 1852 and continued by the later Acts, but an applicant may dispense with a provi sional specification if he thinks proper to file a complete one in the first instance. Where, however, these two specifications are

filed, it becomes of vital moment to an inventor that the true relation between them should be maintained as defined above. The object of the provisional specification is to secure immediate protection, and to enable a patentee to work at and improve his invention without the risk of his patent being invalidated by premature publication. He is therefore entitled to embody in his complete specification any improved method of working his invention which he may discover in the interval; and he is indeed bound to do so, since, as we have said, the price that a man who desires a patent has to pay to the public for the privilege is that he should make a full disclosure of his invention in his complete specification. But there is a limit to what the patentee may do in this respect. He must not describe in his complete specification an invention not substantially the same as that declared in the provisional. If he falls into this error there is said to be a "vari ance" or "disconformity" between the two specifications. It is by s. 6 of the Patents Act 1907 made the duty of the examiner of the Patent Office to consider the question of disconformity between specifications on applications for patents, and, if he reports that there is disconformity, the comptroller may refuse to accept the complete specification until it has been amended to his satisfac tion, or (with the consent of the applicant) cancel the provisional specification and treat the application as having been made on the date at which the complete specification was left. Moreover, if the complete specification includes an invention not included in the provisional specification, the application may be divided, and the claim for the additional invention included in the complete specification be regarded as an application for that invention made on the date at which the complete specification was left. After a complete specification has been left, an examiner makes an examination or search as to novelty, such investigation dealing with British complete specifications published and dated within 5o years prior to the date of the application (Act of 19o7, s. 7) and power is given to the comptroller to refuse the grant of a patent in cases in which the invention had been wholly and spe cifically claimed in specifications to which his search had extended. If it is wholly or partly so claimed or described, he may require a reference to be made to the prior specification. Opportunities of amendment are, however, given to an applicant. When a complete specification has been accepted, the acceptance is advertised, and the specification is open to inspection, and the grant may be opposed on certain grounds, some of which are personal to the opponent.