Page images
PDF
EPUB

HARDOON v. BELILIOS.

In

indemnity cannot extend beyond the trust estate that is, beyond the respective interests of his cestuis que trust. this case their Lordships have only to deal with a person sui juris beneficially entitled to shares which he cannot disclaim. The obligation of such a person to indemnify his trustee against calls upon them appears to their Lordships indisputable in a Court of equity, unless of course there is some contract or other circumstance which excludes such obligation. Here there is none. Whether the plaintiff in this case could sue Benjamin & Kelly on any promise by them to indemnify him need not be discussed. Such a right, if it exists, in no way affects the obligation of the defendant as the plaintiff's cestui que trust. But it is obvious that any payment to the plaintiff by Benjamin & Kelly or by the defendant in respect of the calls would reduce the amount which the plaintiff could recover from the defendant or from them as the case might be.

For these reasons their Lordships will advise her Majesty to allow the appeal, and to reverse the judgments appealed from with costs; and the defendant will pay the costs of this appeal.

Owing to the judgment appealed from being a judgment of nonsuit only, their Lordships are unable to advise her Majesty to order judgment to be entered for the plaintiff with costs. The defendant is entitled to a new trial at the risk of costs. But how in the face of his own books and conduct he can reasonably hope for ultimate success, their Lordships are at a loss to conceive. If, however, he insists on his strict rights, he is entitled to have the action remitted to Hong Kong for re-trial; and their Lordships will humbly so advise her Majesty.

Solicitors-Harwood & Stephenson, for appellant; Sharpe, Parker, Pritchards, Barham & Lawford, for respondent.

[Reported by J. Eyre Thompson, Esq., Barrister-at-Law.

[blocks in formation]

Patent-Colonial Registration of British or Foreign Patent-Prior Publication or User-Amendment of Specification-Renewal Fees-West Australian Patent Act, 1888 (52 Vict. No. 5), ss. 49 and 23.

Section 49 of the West Australian Patent Act, 1888, which provides that registration of a British or foreign patent in the mode prescribed shall have the effect of the grant of original letters patent, merely affords a machinery for the protection of patents so registered, but is subject to all the incidents and conditions applicable to letters patent. Thus common knowledge, user, or publication outside the colony subsequent to the date of the original patent, but prior to the registration, avoids the registration, except so far as they may be grounds of objection applicable to the original letters patent.

The renewal fees charged by the Second Schedule of the Act on letters patent are not payable in respect of the letters of registration.

The recording by the Registrar of Patents in the colony of an amendment of a British specification has not the effect of an amendment of the specification in letters of registration of the British patent.

Appeal and cross-appeal from an interlocutory judgment, dated September 19, 1899, of the Supreme Court of Western Australia upon a special Case.

On April 17, 1889, British letters patent No. 14,174 of 1887 were registered in Western Australia, and in respect. thereof letters of registration No. 189 were granted in the colony under the Patent Act, 1888 (52 Vict. No. 5), and became vested in the appellants.

The specification of the British patent was on August 20, 1895, amended in the United Kingdom, and according to the appellants a like amendment was effected in the letters of registration in the colony on December 21, 1895.

The appellants brought an action for infringement against the respondents, to which the defences were that the letters

*Coram, Lord Hobhouse, Lord Davey, and Lord Robertson.

AUSTRALIAN GOLD RECOVERY Co. v. LAKE VIEW CONSOLS. of registration, not having been validly amended, had lapsed, and were invalid by reason of prior publication.

The questions raised and the statutory enactments applicable sufficiently appear in the judgment.

Moulton, Q.C., Bousfield, Q.C., J. W. Gordon, and A. J. Walter, for the appellants. -Letters of registration once granted in the colony cannot be impeached except for some defect or the non fulfilment of some condition in the letters themselves. The validity of the British patent is a question over which the colonial tribunals have no jurisdiction, and no objection applicable to the original patent is available to impugn the letters of registration. The grant of the British patent is conclusive of the title of the appellan's to be regarded in the colony as the first inventors, and no later publication or user can amount to anticipation of the invention; and the grant of the colonial letters is equally conclusive and equivalent to grant of letters patent in the colony itself.

Neville, Q.C., Haldane, Q.C., and B. C. Molloy, for the respondents.-The letters of registration cannot enjoy an immunity in the colony greater than that enjoyed by the original patent in the country of its birth. Anything which will invalidate the original will equally invalidate the copy. Novelty is an essential quality alike of letters of registration as of letters patent. The effect of section 49 of the Act is to enable the holder of a valid, but not of an invalid, patent to register with as little formality or delay as possible. Thus prior publication of a German specification in the German language was held fatal to the grant of an English patent for a like invention-Harris v Rothwell [1887].1 See also Bush v. Fox [1856].2 As to the crossappeal, upon the true construction of the colonial statute, renewal fees, in addition to the initial fees, are payable on letters of registration; and as they have not been paid, the letters have lapsed. No leave to amend was either asked or obtained. The mere record of an amendment made is ineffectual.

(1) 56 L. J. Ch. 459; 35 Ch. D. 416.
(2) 25 L. J. Ex. 251; 5 H.L. C. 707.

Bousfield, Q.C., in reply.-No renewal fees were payable, and all that was due for fees was paid. As the amendment was in fact made by the Registrar, though there may have been irregularity, it cannot now be impugned.

LORD DAVEY delivered the judgment of their Lordships:

The appeals in this case are from an interlocutory judgment of the Supreme Court of Western Australia dated September 19, 1899, and given on a special Case stated in an action in which the appellants in the principal appeal (the Australian Gold Recovery Co., Lim.) were plaintiffs, and the respondents in the principal appeal and appellants in the cross-appeal (the Lake View Consols, Lim.) were defendants. The object of

the action was to restrain the Lake View Consols by injunction from infringing. certain letters of registration having the force of a patent, belonging to the Australian Gold Co. Eight questions were asked by the special Case, of which the first four were decided in favour of the Australian Gold Co. and the last four in favour of the Lake View Consols.

The most important question is the one numbered 6. The answer to it turns on the true construction and effect of section 49 of the West Australian Patent Act, 1888, by which holders of patents obtained in Great Britain or any other country are enabled to obtain letters of registration in the colony. The Australian Gold Co., being the holders of a British patent No. 14,174 of 1887, have obtained letters of registration in respect thereof upon which they are suing. The question is:

"Whether any common knowledge, prior user or prior publication in Western Australia, subsequent to the date of the Letters Patent No. 14,174 of 1887, can affect the plaintiffs' said Letters of Registration No. 189?"

The Court has decided this question in the affirmative-the Australian Gold Co. say, wrongly.

Section 49 of the Act of 1888 is as follows:

"No person shall receive a patent or an instrument in the nature of letters

AUSTRALIAN GOLD RECOVERY Co. v. LAKE VIEW CONSOLS.

patent under this Act for an invention or discovery which has been previously patented in Great Britain or any other country, but it shall be lawful for the Governor in his discretion, on the application of any person being the holder or assignee of any patent granted or issued in Great Britain or any other country for any new discovery or invention, and upon such proof as the Governor may deem sufficient, that such person is the bona fide holder or assignee of the said patent, and that the same is in full force, and upon payment to the Colonial Treasurer of the sum of fifteen pounds, to grant letters of registration under the seal of Western Australia to the holder of such patent as aforesaid or his assignee, and such letters of registration shall be deposited in the Patent Office and shall be deemed to be letters patent issued under this Act for such invention or improvement, and shall have the same force and effect as letters patent issued thereunder; and shall inure to the benefit of the holder during the continuance of the original patent in the country in which it was issued or granted, and no longer, and all the provisions of this Act shall apply to such letters of registration in the same way mutatis mutandis, and as fully as to letters patent or an instrument in the nature of letters patent issued under this Act."

There is no form of letters of registration scheduled to this Act. There is a form of patent which is substantially the same as the form scheduled to the British Act of 1883. The letters of registration in the present case are obviously based on the form of patent which the draftsman has adapted to the purpose, but not always with great skill. In the defeasance clause it is provided that if it shall be made to appear, &c., "that the said invention is not a new invention as to the public use and exercise thereof," the letters shall be void. An argument was founded on these words to the effect that as the letters were expressly made void by prior user, but nothing was said as to prior publication, it was not intended that prior publication should avoid letters of registration. Their Lordships think that the words "public use and exercise'

[ocr errors]

mean use and exercise within the colony. The words must clearly have some limitation, and in a colonial document they must mean what they would mean if used in letters patent granted in the colony. The argument, however, fails, because exactly the same argument might be used of every English patent. The defeasance clause says nothing about prior publication-yet all the world knows that patents may be avoided by proof of prior publication. Moreover, it should be observed that the letters of registration are also made void "if this grant is contrary to law," which raises the whole question. But their Lordships think that no assistance can be derived from the language of the letters themselves which is not statutory under the Act of 1888, and the answer to the question must be determined on the language of the Act.

Learned counsel argued that the effect of the section was merely to extend the foreign patent to the colony, and to give the holder of the foreign patent the same rights in the colony as he possessed in the country of origin, and that the letters of registration must stand or fall with the patent, or (in other words) they could not be impeached on any ground which would not be equally fatal to the patent in its own country. They, therefore, denied that prior publication or even prior user in the colony after the date of the patent affected the letters of registration, though they were disposed, if possible, to draw a distinction between prior user and prior publication. In the opinion of their Lordships no such distinction can be made. If prior publication is innocuous, prior user must be equally so under the Act.

The Act says that the letters of registration shall be deemed to be letters patent issued under the Act-that is, to be a colonial patent-and that all the provisions of the Act shall apply to the letters of registration as fully as to letters patent issued under the Act. Their Lordships are of opinion that the effect of these words is to attach to letters of registration all the statutory incidents of letters patent, and to bring in all the statutory provisions subsequent to the granting of a patent. Now one of these provisions is

and 8 seem to have been asked under some misapprehension. It is perfectly immaterial whether Siemens' patent was good or bad, if it is merely relied on as a prior publication of the invention protected by the letters of registration.

The consequence, therefore, is that the principal appeal of the Australian Gold Recovery Co. ought to be dismissed, and their Lordships will humbly advise her Majesty accordingly.

AUSTRALIAN GOLD RECOVERY Co. v. LAKE VIEW CONSOLS. contained in the 31st section. Subsection 2 of that section provides that revocation of a patent may be obtained on petition to the Court, and sub-section 3 that every ground on which a patent might at the commencement of the Act be repealed by scire facias shall be available by way of defence to an action for infringement, and shall also be a ground of revocation. It cannot be and was not disputed that prior publication or user was a ground on which a patent might be repealed by scire facias. But their Lordships would prefer to put this case on a broader ground. By the provisions of the 49th section the governor is empowered to grant a monopoly within the colony in some manufacture or process to the grantee of the letters of registration. It is contrary to the common law of this country (which the Australian settlers carried with them) as well as to the Statute of Monopolies, for the Crown to grant a monopoly to any person of any known manufacture. The Statute of Monopolies has been held to be only declaratory of the common law. Two reasons have been assigned for this rule of law-first, that a man cannot lawfully be deprived of the right to use a known art or trade; and secondly, because, if an invention is known, the public can receive no consideration from the patentee for the grant of the sole right of exercising it. No doubt the Legislature may overrule the common law and authorise the grant of a monopoly of the exercise of a known manufacture. But their Lordships think that such an intention would have to be very clearly expressed, and no implication having an effect so injurious to the subject ought to be made without express words of enactment.

Their Lordships think that the provisions of section 49 merely afford a machinery by which the holder of a foreign patent may obtain protection for his invention within the colony, without the formalities and delay necessary on an application for a patent, but subject to all the incidents and conditions to which letters patent would be subject. They therefore agree with the Court below.

Questions 5, 7, and 8 were not pressed by learned counsel. Indeed, questions 7

VOL. 70.-P.C.

To turn now to questions 1, 2, 3, 4, which form the subject of the cross-appeal. Questions 1 and 2 may be taken together, and the point raised is whether the renewal fees charged by the second schedule of the Act on letters patent are payable in respect of the letters of registration. Their Lordships have had some difficulty in coming to a satisfactory conclusion on this point. There are considerations which tend both ways. On the one hand, attention is called to the enactment that the provisions of the Act are applicable mutatis mutandis to letters of registration. Why not therefore apply section 29 and the schedule referred to in it? Some of the items in schedule 2 certainly would apply to letters of registration, and there is no reason (it is said) for excluding the payment of the fees to be paid on every patent at the expiration of four years and seven years from its date. On the other hand, it is pointed out that a fee of 15%., exceeding the aggregate fees payable on the application for a patent, is payable on application for letters of registration; and further, that as letters of registration last only so long as the patent on which they are founded, the periods or epochs in the life of the one are or may be quite different from those in the life of the other. It is argued that the fees payable on renewals should be regarded as fixed with reference to the scale of fees payable on and consequent on application which do not apply to letters of registration. The learned Judges have answered the first question in the negative, and their Lordships are not prepared to say they are wrong.

The third question is whether under the circumstances set out in the special Case the specification deposited with the application for letters of registration was,

D

AUSTRALIAN GOLD RECOVERY Co. v. LAKE VIEW CONSOLS.

as against the defendants in the action, duly amended. These circumstances were shortly as follows: The specification of the British patent was amended. On October 15, 1895, the agent of the holder of the letters of registration by letter requested the Registrar of Patents in the colony "to record the amendment of the British Specification." Without issuing any advertisements or any further proceeding, the Registrar recorded the amendment in his office. But more than a year afterwards the Registrar published notice in the Government Gazette that the complete specification had been amended, and at the same time invited any persons intending to oppose "the said application

for amendment" to come in within one calendar month from the date thereof. What the intention of this remarkable document was it is hard to say.

Their Lordships think that the provisions of section 23 of the Act as to "Amendment of Specification" are made applicable by section 49 to letters of registration, and that mutatis mutandis the specification deposited with the application for and referred to in the letters of registration is the "specification" within the meaning of section 23. The request contained in the letter of October 15, 1895, was in no sense an application for leave to amend, but was what it purported to be, and what the Registrar understood it to be-namely, a request to him to record an amendment already made. The Registrar did not exercise any judgment in the matter, but appears simply to have recorded it. The counsel for the Australian Gold Co. supported the Registrar's view, and in the alternative argued that it was a casus omissus in the Act, and fell within the Patent Office regulations respecting the amendment of any document for which no special provision is made. Their Lordships cannot agree with this suggestion, and they think that there ought to have been but there was not an application to the Registrar in the colony for leave to amend the specification. Persons in the colony had no opportunity and probably no locus standi to oppose the amendment of the specification in London, and considerations might apply to the grant of leave to

amend in the colony different from those which could be brought before the Comptroller in London. The learned Judges in the Court below seem to have been of the same opinion, but they thought they were bound by certain decisions in England that the propriety or regularity of the leave to amend cannot be controverted in a subsequent action for infringement of the patent. But those cases have no application to a case like the present one, in which leave to amend has neither been asked for nor granted, but the Registrar has simply recorded the amendment without any jurisdiction to do so. Their Lordships therefore will humbly advise her Majesty that the order so far as relates to the answer to the third question be reversed, and that that question should be answered in the negative.

The fourth question answers itself. To make it consistent, however, with the answer to question 5 it will be better to add to the answer as it stands the words,

except so far as they may be grounds of objection applicable to the Letters Patent No. 14,174." They will, therefore, humbly advise her Majesty that the answer to the fourth question be varied in this manner.

The result is that the principal appeal wholly fails and the appellants should pay the cost of it; and that the appellants in the cross-appeal have partly failed and partly succeeded, and should have no costs of their appeal. The costs in the Court below were reserved, so nothing need be said about them.

Solicitors-Davidson & Morriss, for appellants;
Burchells & Co., for respondents.

[Reported by J. Eyre Thompson, Esq., Barrister-at-Law.

« EelmineJätka »