CO885-8 — Page 120

349

PUBLIC RECORD OFFICE

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Reference :-

C.O. 885

8

ALLY WITHOUT PERMISSION OF THE

PUBLIC RECORD OFFICE, LONDON

BE REPRODUCED PHOTOGRAPHIC- COPYRIGHT PHOTOGRAPH-—NOT TO

Victoria.

New South Wales,

South Australia.

Western Australia.

Canada.

South

488

In Victoria the examiner is required to ascertain and report to the Commissioner of Patents whether, to the best of his knowledge, the invention which it is sought to patent is not novel or is already in the possession of the public, with the consent or allowance of the true and first inventor, und if he reports to this effect the Commissioner may refuse to proceed with the application, which refusal is subject to an appeal to the Law Officer.

In New South Wales and South Australia the provisions of the Acts as regards the duties of the examiner appear to cover an enquiry as to whether the applicant is the true and first inventor.

In Western Australia provision is made for examination as to interference between concurrent applications.

person

CAVEATS.

any

In Canada any intending applicant who has not perfected his invention, and is in fear of being despoiled of his idea, may file in the Patent Office a description of his invention so far, with or without plans at his own will; and the Commissioner, on payment of the prescribed fee, is required to cause the with the document, which is called a caveat, to be preserved in secrecy, exception of delivering copies of the same whenever required by the said applicant or by any judicial tribunal; but the secrecy of the document is to cease when the applicant obtains a patent for the invention. If application be made by any other for a patent for invention with which such caveat may in any respect interfere, the Commissioner is required to give notice by mail of such application to the person who has filed the caveat, and such last mentioned person must within three months from the date of mailing such notice, if he wishes to avail himself of his caveat, file his petition and take the other steps necessary on an application for a patent; and if in the opinion of the Commissioner the applications are conflicting, they will be referred to arbitration. Unless the person filing a caveat makes application within one year from the filing thereof for a patent the Commissioner is relieved from the obligation of giving notice, and the caveat then remains as a simple matter of proof as to novelty or priority of invention if required.

Very similar provisions as regards the filing of caveats and the sending Australia. of notices of any conflicting application to the person filing the caveat are

contained in the South Australian Patent Act.

Report of the Cornmis- sioners

by the United

States Govern- ment in 1898 on

As the above provisions relating to "Caveats" have been taken from the Patent Law of the United States, it may be of interest to the Colonial Premiers to know that the Commissioners appointed in 1898 to revise the statutes appointed relating to patents, trade and other marks, and trade and commercial names, on page 23 of their report say that they are clearly of opinion that the statute providing for the filing of caveats should be repealed. The reasons which have led them to this conclusion are set out in the following passage on page 22 of their Report, viz. :-" The very general opinion of those most familiar with patent practice, as expressed to us, is that the caveat is practically of no use “Caventa." st to inventors. Many attorneys of long experience in patent matters have "assured us that they always advise their clients not to file caveats. The "preparation of a cavest, if it be prepared with care and skill, involves con- "siderable expense, hardly less than the preparation of an application. The filing of a caveat necessarity implies the subsequent filing of an application, "with the result that the inventor is put to practically a double expense without

practical advantage.

5$

"If foreigners are permitted to file caveats, as it would seem must be done "if our citizens are permitted to do so, the result will be the introduction of a "class of avidange which has always been considered open to very serious olation, and has never been permitted to be introduced in any proceeding. the Patent Office, or before the courts in patent, matters-namely, " evidence of acts performed in a foreign country. If foreigners are permitted

46

489

to establish conception of an invention in a foreign country by filing a "caveat—and a caveat has practically no other effect than that of establishing "conception of the invention described therein on the date on which it was "filed-it would seem to be necessary to permit evidence to be introduced of "the reduction of the invention to practice, as by construction of a machine, "in the foreign country."

PROVISIONAL PROTECTION.

Such

No great differences exist in regard to Provisional Protection. differences as occur relate chiefly to the period of protection. In Newfoundland the nature of the protection, and in Cape Colony the character of the specification which must be filed with the application, are exceptional.

"

In Newfoundland every applicant for a patent is required with his petition New- to deliver into the office of the Colonial Secretary "a written description of his foundland. "invention, and of the manner of using or process of compounding the same," in accordance with detailed instructions contained in the Act; and after the expiration of one week, and until the expiration of six months from the date of the delivery of this description, the applicant has the like privileges and rights as if a patent had been sealed to him on the date of such delivery.

In New South Wales any person claiming to be the author or designer of New South any invention, or his agent or assignee, may obtain a certificate entitling him to Wales. provisional protection for his invention on payment of £2 and on depositing with the Minister of Justice a petition addressed to the Governor and a provisional specification in the prescribed form. This certificate is in force for 12 months, and becomes null and void if before the date of the expiration thereof its lawful holder fails to make application for a patent.

Victoria,

In Queensland, New Zealand, Victoria, Western Australia, and Tasmania, Queens- the law relating to provisional and complete specifications resembles that of the land, New United Kingdom (1) in leaving it to the option of the applicant whether his Zealand, application shall be accompanied with a provisional or a complete specification; Western (2) in the provisional protection which, after the acceptance of an application, Australia, is accorded to him during the period before the date of the application and the Tasmania. sealing of the Patent, which protection enables him to use and publish the invention during this interval without prejudice to the patent subsequently granted to him; and (3) in granting to him during the interval between the acceptance of the complete specification and the sealing of the patent or the expiration of the time for sealing, the like privileges and rights, as if a patent had been sealed to him at the date of such acceptance, subject to the qualification that he may not institute any proceeding for infringement unless and until a patent has been granted to him. In all these Colonies the normal time allowed This time may be for leaving the complete specification is nine months. extended, on payment of the prescribed fee, by three months in Queensland, and by one month in New Zealand, Victoria, Western Australia, and Tasmania.

In Natal every applicant has also the option of selecting whether he will Natal. deposit a provisional or a complete specification with his application. In either case his invention obtains provisional protection for six months from the date of the deposit; and if no complete specification is deposited within eight weeks at least before the expiration of the term of provisional protection, the application will be deemed to be abandoned. Extension of this time, for what appears to be an indefinite period at the discretion of the Attorney-General, is allowed. the true and first inventor, any If the specification is deposited in fraud patent granted to such inventor will not be invalidated by it, or by any use or publication of the invention during the term of provisional protection.

In Cape Colony a specification must be deposited with the application; Cape and the invention obtains similar provisional protection for six months, during Colony. which period, in case the title of the invention or the specification is too large or insufficient, the Attorney-General may before the grant of a patant allow or

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Page 120Page 121

350

PUBLE RECORD OFFICE

lubuibuituílu

Reference :-

C.O. 88,5

8

PUBLIC RECORD OFFICE, LONDON

BE REPRODUCED PHOTOGRAPHIC- ALLY, WITHOUT PERMISSION OF THET COPYRIGHT PHOTOGRAPH-NOT TO;

United Kingdom.

Canada.

New foundland.

New South Wales.

Queens- land.

New South Wiles, South

490

require the specification to be amended, or another and sufficient specification to be deposited, which will have the same force, effect, and operation as if it had been originally deposited in its amended state. The specification originally filed is required particularly to describe and ascertain the nature of the invention, and in what manner the same is to be performed.

OPPOSITION TO THE GRANT OF PATENTS.

(a) Grounds of Opposition.

In the United Kingdom and all the self-governing Colonies, except New- foundland, provision is made for opposition by persons interested to the grant of a patent. The grounds of opposition vary greatly, and in some of the Colonies include prior publication, prior user, or possession by the public, while in one Colony the grant of provisional protection may be opposed.

In the United Kingdom there are three grounds on which the grant of a patent may be opposed by persons interested: (a) that the applicant has obtained the patent from the opponent or from a person of whom the opponent is the legal representative; (b) that the invention has been patented in this country on an application of prior date; and (c) that the complete specification describes or claims in invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification.

In Canada the only cases in which the grant of a patent can be opposed by persons interested are apparently those of conflicting applications.

In Newfoundland there seems to be no machinery provided by which the grant of a patent can be opposed by persons interested.

In New South Wales, the Act and Patent Office Regulations, jointly, provide for the lodging of a protest against the issue of a patent, or of a certificate of provisional protection.

In Queensland the grant of a patent may be opposed by persons interested on any of the three grounds on which the grant of a patent can be opposed in the United Kingdom; and also on any of the following grounds, viz.: (d) that the invention is not novel; or (e) that it is already in the possession of the public with the consent or allowance of the inventor; or (ƒ) that it has been described in a book or other printed publication published in Queensland before the date of the application, or is otherwise in the possession of the public.

In New South Wales, South Australia, Tasmania, New Zealand, Cape Colony, and Natal there are apparently no limitations to the grounds of Australia, opposition,

Tasmania, New Zealand, Cape Colony, Natal. Victoria.

Western Australia.

In Victoria the grounds of opposition are (1) that the applicant has fraudulently or without the authority of the opponent obtained the invention from him or from a person of whom he is the legal representative or assignee; (2) that the invention has not been communicated to the applicant by the actual inventor, his legal representatives or assigns, if the actual inventor, his legal representatives or assigns, is or are not resident in Victoria; (3) that the invention has been patented in Victoria on an application of prior date; (4) want of novelty, or the invention having been already published or publicly used; and (5) that the complete specification describes or claime an invention other than that described, in the provisional specification, and that such other invention forms the subject of an "application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification.

In Western Australia a patent may be opposed on either of the first two grounds specified in the Patent Law of the United Kingdom, or (8) on the

491

ground of an examiner having reported to the Registrar that the specification appeared to him to comprise the same invention as is comprised in a specification bearing the same or a similar title, and accompanying a previous application.

(b) Hearing of Oppositions.

-

In the United Kingdom oppositions to the grant of patents are heard and United decided by the Comptroller-General of Patents, or his deputy, with an appeal Kingdom. from his decision to the Law Officer.

In Canada, conflicting applications are submitted to three skilled arbitrators, Cauada. two of whom are chosen by the applicants and the third by the Commissioner or his deputy. The decision or award of these, or any two of them, delivereil to the Commissioner in writing and subscribed by them, or any two of them, is final, as far as concerns the granting of the patent.

.

In Queensland and Western Australia, the Registrar of Patents, and in Queens- Victoria, the Commissioner of Patents hears and decides the opposition, subject, and, in all three cases, to an appeal to the Attorney-General or other Law Officer. Australia,

Western

Victoria.

In South Australia the Commissioner of Patents hears the opposition, and South his decision is final.

Australia,

In Tasmania the opposition is heard and decided by a Judge of the Tasmania. Supreme Court sitting in Chambers, with an appeal to the Supreme Court of Tasmania.

In New Zealand it is heard and decided by the Registrar of Patents, New subject to an appeal to the Supreme Court of New Zealand.

Zealand.

In Cape Colony and Natal objections to the grant of patents are heard by Cape the Attorney-General.

Colony, Natal.

DURATION OF PATENTS.

In the United Kingdom and in all the Colonies to which this memorandum relates, with the exception of Canada, the duration of a patent, unless it be extended in accordance with special statutory provisions, is limited to 14 years. In Canada it is 18 years. Extensions of these periods may, under special circumstances, be granted in the following Colonies, viz :-Cape Colony, Ñatal, Queensland, Victoria, Western Australia, Tasmania, and New Zealand, for period not exceeding 14 years; in Newfoundland and South Australia, for a period not exceeding seven years. In the majority of these cases the patentec can only obtain the extension when he can prove that he has been unable to obtain a due remuneration for the expense and labour of perfecting the invention, and that an exclusive right of using and vending the invention for a further period is necessary for his adequate remuneration. In Canada, Cape Colony, Natal, Newfoundland, and South Australia, the patent expires with the first foreign patent, an arrangement which is at variance with the new clause inserted in the International Convention by the Additional Act of the 14th of December, 1900, to which reference is made on page 16 of this memorandum.

PATENT FEES.

In the United Kingdom the fees charged by the State for a patent which will continue in force for four years from the date of the application, amount to £4. If the patentee desires his patent to continue in force after the expiration of the four years he must pay renewal fees of £5 for the fifth year, £6 for the sixth year, and so on to £14 for the fourteenth year. If a patent be kept in force for the full period of 14 years, the total patent fees will amount to £99. The patent fees charged in the Colonies are considerably lower than this. In New South Wales, fees amounting to £5 will keep the patent in force for the

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