CO885-(13-15) — Page 688

PUBLIC RECORD OFFICE

Reference :-

minimum C.O. 885

14 PUBLIC RECORD OFFICE, LONDON

ALLY WITHOUT PERMISSION OF THE BE REPRODUCED PHOTOGRAPHIC- COPYRIGHT PHOTOGRAPH-NOT TO

Two questions, therefore, arise:--

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(1) Whether it is within Marconi's patent if that patent is a good one, and (2) Whether, if it contains any novelty, it can itself be made the subject of a patent?

Upon the first question it is suggested that, in the following points, Herr Schaefer's system differs from that of Marconi:-

(1)The special apparatus introduced by Herr Schaefer, namely, the cut looking- glass, which replaces Marconi's tube containing powder or filings, is in its normal condition a conductor, whereas Marconi's tube is in its normal condition a non- conductor.

(2) Herr Schaefer's looking-glass, under the action of electricity produced by the Hertzian waves, becomes a non-conductor, whereas Marconi's tube of powder or filings under a similar stimulus becomes a conductor.

(3) Marconi's, tube, when a conductor, has to be de-cohered by means of mechanical vibration or magnetic influence, whereas Herr Schaefer's looking-glass resumes its normal condition without external stimulus.

On the other hand, it is to be noticed that Claim 1 of Marconi's complete specifi- cation of 1897 is very wide in its terms, extending to:-

"The method of transmitting signals by means of electrical impulses to a receiver having a sensitive tube or other sensitive form of imperfect contact capable of being restored with certainty and regularity to its normal condition substantially as described."

Claims 2 and 3 are also wide in their language.

Upon the second question, namely, whether, assuming Herr Schaefer's apparatus to be outside Marconi's patent, it can itself become the subject of a patent, attention is drawn to the recent report of the Assistant Engineer and Electrician of the Post Office 'which accompanies these papers. Mr. Gavey suggests that the principle of Herr Schaefer's receiver-a conductor (consisting of the amalgam in the back of a looking-glass across which a cut is made) which becomes a non-conductor when impinged upon by Hertzian waves-was published by Herr Neugschwender in Wiede- man's "Annalen" (a journal regularly taken in by the Institution of Civil Engineers and the Institution of Electrical Engineers and the Post Office) of the 14th February, 1899. This communication of Herr Neugschwender was summarized in the Electrician" of 3rd March, 1899, and was the subject of a letter from Dr. Oliver Lodge in the " Electrician" of the 17th March. Herr Schaefer did not apply for his Patent (the Specification of which is not yet published) till the 20th March last.

The Law Officers are requested to advise :-

(1) Whether, in their opinion, Signor Marconi's apparatus, as now used, is the subject of any valid patent, owned by the Wireless Telegraph Company?

(2) Whether, in this event, the apparatus introduced by Herr Schaefer would,

or would not be held to be an infringement of Marconi's patent?

(3) Assuming the Schaefer system not to be within Marconi's patent, can it be the subject of a valid patent, having regard to the evidence of prior publication referred to above?

OPINION.

Upon the information before us we are not prepared to say that a claim for the combination described in Claims 15 and 16 of the Patent No. 12039 of 1896 is invalid. Some of the claims in that Specification appear to be too wide, but this defect could be cured by disclaimer.

Before expressing a final opinion as to the validity of Claims 15 and 16 or of any of the claims of the Marconi patent, we should require to have a detailed report of some competent electricians dealing with the specific claims, and stating the extent to which each or any of them are anticipated. We do not think that the objection raised by Sir William Preece, that Claims 15 and 16 are outside the Provisional Speci- fication, could be successfully maintained.

2. Assuming the claim to the combination described in Claims 15 and 16 of Marconi's patent to be valid, the question whether Schaefer's apparatus would be held to be an infringement depends upon whether the mirror or looking-glass apparatus is an electrical equivalent for the coherer or imperfect contact described in Claim 15.

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It is always difficult to express a confident opinion upon such a point until one is able to form a judgment as to the weight of the whole evidence.

But as far as we can judge looking to the fact that the function of the coherer is to alter the resistance in the relay circuit we think that it would be held that Schaefer's arrangement was only an improvement upon Marconi and that assuming Marconi's combination to be new the allegation of infringement could not be resisted upon the ground of the difference between the two sets of apparatus. We think Schaefer's apparatus might be the subject of a valid patent as an improvement upon Marconi, even though it should turn out that it could not be worked without licence from the owners of the Marconi patents.

Law Officers' Department,

December 19, 1899.

RICHARD E. WEBSTER. ROBERT B. FINLAY.

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