invention, as where the cost of the article (sugar), to the production of which the invention related, was diminished 20 per cent., the term was extended, though the amount of discovery was small, and considerable profits had been realized by the patentee.(t) Where the invention is of small commercial value, an extension will be refused.(u) 29. The spirit and activity of the patentee in expending capital and using efforts to bring forward his invention, are material to be considered.(x) Where the invention had not got into use in consequence of disputes between the patentee and persons who had agreed to join him as partners in carrying out his invention, and the invention was not brought into operation till a short time before the expiration of the term, the committee refused to recommend an extension.(y) So where it had not got into use in consequence of a defect not cured till the tenth year of the term.(z) It is strong evidence against the utility of an invention, if from the time when the patent was granted until the time for applying for a prolongation of the term, the thing invented has never been brought into practical operation in any way calculated to promote the public service. The fact that the invention had been previously published in a foreign work, and that a knowledge of it might have been acquired by persons here, will be considered as diminishing the benefit reaped by the public from the invention.(a) 30. It is a general rule, that some explanation must be given if the invention has not been brought into use. As where a man has shown great ingenuity in an invention, but from want of adequate capital and means, has been unable to obtain a sufficient return. So if these difficulties have been increased by disputes with persons in partnership with the inventor in his patents.(b) (t) Derosne's patent, 4 E. F. Moore, 418. See Morgan's patent, Webst. P. C. 737. Soames's patent, Webst. P. C. 735. Patterson's patent, 13 Jur. 593; S. C. 6 E. F. Moore, 469. (y) Bell's patent, 10 Jur. 363. (z) Pinkus's patent, 12 Jur. 233, Pri. C. (a) Per Lords Campbell and Brougham, Soames's patent, Webst. P. C. 729. (b) Wright's patent, Webst. P. C. 576; Swaine's patent, Webst. P. C. 559; Downton's patent, Webst. P. C. 565. The difficulties of introducing the manufacture into public use in consequence of its novelty, are important to be considered.(c) As if the prejudices of workmen, or a combination of the trade against him, have impeded the patentee. (d) So if from its nature the invention is one not likely to come into immediate use, or if the explanation of its not being brought into use is, that it is intended for a particular class of persons, as government officers, who have not yet adopted it.(e) 31. Though, on account of combinations against the patentee, there seems no reasonable ground for supposing the extension will be beneficial, the Court will not refuse to extend the patent.(ƒ) 32. It must be shown that the inventor has not been duly rewarded in proportion to his merit. The patentee having made about £7,000 by an invention, proved to be of great value in flax-spinning, the patent was extended for three years.(g) A patent for a self-acting mule was extended for seven years, it having been proved that there was a loss on the whole, though the profits for the last three or four years of the patent had been at the rate of £5,000 a year.(h) Proof that nothing was made for seven or eight years is generally required. (i) 33. In estimating the profits of a monopoly, a fair manufacturer's profit on the capital employed must be deducted. (k) The expenses incurred in litigation may be deducted.(k) Losses by a fire, supposed to have been caused by incendiaries, have been taken into consideration in determining a question as to the extension of a patent for self-acting machinery.(1) (c) Stafford's patent, Webst. P. C. 563; Kollman's patent, Webst. P. C. 564. (d) Erard's patent, Webst. P. C. 557; Jones's patent, Webst. P. C. 577. (e) Southworth's patent, Webst. P. C. 486; Bates's patent, Webst. P. C. 739. Jones's patent, Webst. P. C. 577. Profits realized by the sale of articles for exportation must be included.(m) 34. Since the passing of stat. 14 & 15 Vict. cap. 99, s. 2, the patentee will be able to prove his own case in this respect, which he should do by the production of his books and accounts. Before the passing of this Act, it was decided that where the patentee had not sold any of his patent machines, and therefore had not kept any book, but had allowed a gas company to use his invention for the purpose of making it known, and the manager stated that the company had never paid anything for the use of it, the Court thought it sufficient prima facie evidence that no profits had been made.(n) 35. The Court will take into consideration the annoyance that the patentee has suffered from litigation.(0) 36. The Judicial Committee will not recommend an extension if the patentee has not enforced his rights, but has allowed infringements of his patent, and never effectually asserted his title at law. (p) Where a patentee, having obtained a patent for several inventions, some of which were not new, omitted to disclaim, and permitted persons to infringe the part of his invention which was new, till near the conclusion of the term of the patent, persons who had erected machinery, relying on his acquiescence, opposed the extension; and the Court, taking his remissness into consideration, refused it.(g) 37. The extension of the term of a patent for an improved method of printing in colours, by the combination of copperplate printing and wood engraving, was opposed by the apprentices of the patentee, on the ground that they had served their time upon the expectation that on the expiration of the original patent, they would be able to exercise the trade taught them by the patentee; but as it appeared that they had been instructed, and could earn fair wages as woodengravers, the Judicial Committee recommended the extension of the patent without any condition.(r) (m) Hardy's patent, 13 Jur. 177; 6 E. F. Moo. 441, S. C. Whitehouse's patent, Webst. P. C. 477. (g) Simister's patent, Webst. P. C. 721. 38. Since the coming into operation of the Patent Law Amendment Act, 1852, her Majesty's order in council is a sufficient warrant for the insertion, in new letters patent, of any restrictions, conditions, and provisions mentioned in the order. (s) Before the passing of this Act, it had been frequently the practice for the Judicial Committee to impose terms as conditions of the renewal of a patent, but the discretion of the Crown was not in any manner fettered by such recommendation. The Judicial Committee, under stat. 5 & 6 Wm. 4, cap. 83, had to report merely as to matters between the public and the party applying.(t) The patentee of an invention, an improved railway axle, which was of great merit and great importance to the public, after having made great efforts to bring his invention into use, had lost money by it. He afterwards assigned his patent, and the assignees spent a considerable sum in establishing a plant and works, but had lately made large profits. The patentee and the assignees having applied for an extension, the Judicial Committee postponed recommending an extension till one-half of the profit of the patent, during the extended term, should have been secured to the patentee. They then recommended an extension subject to a condition, that the price of the axles should not be raised.(u) In Whitehouse's patent an extension was granted to the assignee; the Judicial Committee recommended, that the term should be extended, on the assignee securing an annuity to the patentee during such extended term. The new patent contained a proviso, that the patent should be void if the annuity was not secured.(x) In the case of Pettit Smith's patent, an extension of letters patent was granted upon condition that the commissioners for executing the office of Lord High Admiral should have the right of using the invention for the service of her Majesty without any license from the patentee.(y) Though a person who has obtained a patent cannot be put under any terms as to the manner in which he shall exercise Stat. 15 & 16 Vict. cap. 83, s. 40. Hardy's patent, 13 Jurist, 177, Pri. C.; 6 E. F. Moo. 441, S. C. (y) In re Pettit Smith's patent, 7 E. F. Moo. 133. his invention, in Whytock's case, a patentee having refused to grant a license to a particular person, the Judicial Committee made it a condition of the prolongation, that a license should be granted.(*) SECTION IV.-PRACTICE ON HEARING BEFORE THE JUDICIAL COMMITTEE, ETC.-NEW PATENT. 39. The Judicial Committee have power to examine witnesses, or direct depositions to be taken in writing by the registrar. (a) The attendance of witnesses, and the production of deeds, evidences, and writings, may be compelled by a subpoena, to be issued by the president for the time being.(b) The Judicial Committee may appoint one or other of the clerks of the Privy Council to take any formal proofs. (c) They may direct the examination of witnesses on interrogatories either at home or abroad, under the powers of 13 Geo. 3, cap. 63, and 1 Wm. 4, cap. 22.(d) Parties may have copies of all papers lodged in respect of any application for the confirmation or prolongation of a patent at their own expense. (e) 40. The Judicial Committee will hear the Attorney-General or other counsel on behalf of the Crown against granting any application for the confirmation or prolongation of a patent, in case it shall be thought fit to oppose the same on such behalf.(f) In cases of unopposed applications, the Attorney-General attends and watches the case of the petitioners. He represents the Government, and the public generally.(g) The rule respecting the number of counsel entitled to be heard, is the same in the Privy Council as in the House of Lords,-two only on either side. Two counsel only will be heard to oppose the petition, unless the parties have independent and Whytock's patent, 28 Newt. Lond. Journ. 449. Stat. 3 & 4 Wm. 4, cap. 41, ss. 7, 9. Stat. 3 & 4 Wm. 4, cap. 41, s. 9. (c) Stat. 7 & 8 Vict. cap. 69, s. 8. (d) Stat. 3 & 4 Wm. 4, cap. 41, s. 14. (e) Rules Pri. C. rule 7. (f) Rules Pri. C. December, 1835 n. (g) Webst. P. C. 557, n.; Pettit Smith's patent, 7 E. F. Moo. 133; Downton's patent, Webst. P. C. 567. |