Scope. This is practically co-extensive with the
whole field of civil litigation. It is difficult to conceive
a type of case in which chemical evidence could not
possibly have a place.
Breach of Contract, Such breach may consist in
the supply of goods which are not of the nature of
those specified in the contract. An interesting case
arising out of such alleged breach is that of Kynochs,
Ltd. v. The King, " Times," 26th., 27th., 28th. Novem-
ber, and 21st. December, 1908. This was a petition
of right by Kynochs, Ltd., to enforce a claim for the
price of cordite supplied to the War Office. The War
Department had rejected the cordite on the ground
that it contained a foreign and unauthorised ingredient,
namely, perchloride of mercury, the effect of which
was to mask certain tests which were applied by the
War Office in order to ascertain the keeping qualities
or stability of the cordite. In reply, Kynochs, Ltd.,
admitted the presence of perchloride of mercury, but
alleged that the quantity was so infinitesimal as not
to prevent the cordite supplied being in compliance
with the terms of the contract.
On behalf of the Crown, chemical evidence was
given to the effect that it was the practice in testing
cordite to subject it to a temperature of 108 F., and
note the length of time which elapsed before gaseous
fumes of oxides of nitrogen were evolved. In order
to detect the presence of these, a test paper was used
containing potassium iodide and starch. The nitrous
fumes on liberation turned the test paper blue. Pro-
vided the cordite stood this test for 30 minutes, it was
passed as satisfactory. If mercuric chloride is added
to cordite, the apparent stability of the substance is
materially increased. Dupre deposed that he had
experimented with one part in 200,000, and that had
prolonged the time before nitrous fumes were evolved
in the heat test from 20 to 60 minutes. On behalf of
the suppliants it was asserted that the quantity of
mercuric chloride added by Kynochs would not affect
the heat test, there being only an infinitesimal trace
of mercuric chloride left in the cordite. The witness
admitted on cross-examination that the presence of an
unknown quantity of mercuric chloride in the cordite
would render the heat test an unreliable test. It was
admitted that the mercuric chloride had been de-
liberately added by the manufacturers, but only for
the purposes of a steriliser. It was in fact dissolved
in acetone, that being one of the ingredients used in
the manufacture of cordite. PICKFORD, J., in the course
of his judgment said, "the whole of the ingredients and materials were to be
of the description, and must comply with the tests
laid down in the specifications in the appendices. . . .
It was necessary to read the specification of acetone,
because the mercuric chloride found its way into
the cordite through its presence in the acetone.
. . . The specification was: The liquid is to be
genuine acetone and must contain no other ingredients
except small quantity of substances which are normal
by-products of the manufacture of acetone. . . . Mr.
Helcke became the manager [of Kynochs] and was
directed to put in, and did put in, 25 grains per 160
Ibs. of cordite, that was one part to 50,000 parts of
cordite. ... It was said that a very large proportion
of that would be given off in the working, and that,
therefore, the amount left would be infinitesimal. . . .
The evidence given on behalf of Kynochs was that this
small quantity could not possibly affect the heat test.
. . . The War Office was entitled to say, 'This
mercuric chloride does affect the heat test, and we are
not certain how much does affect the test, and
there is no method for ascertaining the exact quantity
actually present, and we are not going to be put to the
trouble and expense of carrying out experiments to find
out. . . .' The War Office were justified in rejecting
the deliveries."
There was in this case no dispute as to the actual
addition of the mercury chloride, and although the
suppliants contended that such addition did not in fact
affect the heat test, yet they were constrained to admit
that the presence of an unknown quantity of that sub-
stance rendered the heat test uncertain. The War
office specification laid down most specifically the exact
conditions of purity required in the case of the acetone
and also the other ingredients. It is difficult to see
how the addition of a foreign ingredient could in
any way be sustained.
Libel. Even in such an unlikely branch of the law
as that of libel, important chemical questions may arise.
An interesting example is that of Tucker v. Hayes &
Finch, which was heard by DARLING, J., on the 13th.
October, 1908, and following days. By the rubric of
the Roman Catholic Church, wax candles for altar pur-
poses must contain a certain percentage of wax.
Allegations were made that a certain firm's candles did
not contain the required quantity. Proof by analytic
methods was put in. One eminent chemist had
analysed the candles, and certified that the quantity of
wax contained was sufficient to satisfy the rubric. The
other side asserted that it was not possible by analysis
to make anything like an accurate determination, in
fact, that for the purpose analysis was actually useless.
The analyst admitted that two years ago he could not
have made the analysis, and did not know of any other
analyst who could make the same analysis. Other
eminent chemists were prepared to act as compurgators
of the analyst ; they had made up a difficult mixture
and submitted it to him ; they found that he analysed
the mixture correctly.
This evidence was objected to on the ground of being
inadmissible. The point was reserved in order to see
whether the line of procedure of the other side
necessitated its being used. The case was finally
decided on other points of issue ; but it is interesting
as raising the question of the competency of analysis
(not analyst}. The question comes apparently within
Article 50, p. 62 of Stephen on Evidence, 5th Ed. " Facts
bearing upon opinions of experts. Facts, not otherwise
relevant, have in some cases been permitted to be proved,
as supporting or being inconsistent with the opinions of
experts." To this there is a footnote " I have altered
the wording of this article so as to make it less absolute
than it was in earlier additions. The admission of such
evidence is rare and exceptional, and must obviously
be kept within narrow limits."
This case may be regarded as an echo of the old battle
between exact methods of science and the claims of
" rule of thumb," a battle that science has succeeded in
winning all along the line.
Injurious Food. Apart from adulteration, food
may be injurious by reason of the development of
harmful substances as the result of decomposition.
For example, pork has from time to time caused illness.
Ptomaines may have formed in the food. Chemical
evidence may be advanced in proof of their presence or
absence.
Nuisance. This is much more specifically in the
domain of chemistry. The nuisance may be of a chemical
nature, e.g., smoke from chemical works, pollution of
water supply with chemical waste, etc. For example,
St. Helens Smelting Company v. Tipping (11, H.L.C.,
642 [1865]). In this case Z had chemical works near
A's land, the fumes from which kill or stunt vegetation
on A's land and reduce its selling value. Held*
whether the land is or is not rendered less wholesome
for human habitation, Z has wronged A.
From the case, the MASTER OF THE BOLLS laid down
this principle where the plaintiff was seeking to
interfere with a great work carried on in the normal
and usual manner, the plaintiff must show " visible "
damage.
Salvin v. North Brancepeth Coal Co. (1874), L.R., 9, Ch.
705. JAMES, L. J., commenting on the previous case,
said, " As I understand the proposition, it amounts to
this, that, although when you once establish the fact
of actual substantial damage, it is quite right and
legitimate to have recourse to scientific evidence as to
the causes of that damage, still, if you are obliged to
start with scientific evidence, such as the microscope
of the naturalist, or the tests of the chemist, for the
purposes of establishing the damage itself, that
evidence will not suffice. The damage must be such
as can be shown by a plain witness to a plain common
juryman."
Quaere. But if the damage, though substantial, can
only be established by chemical tests ? For example,
the pollution of water supply ; the polluting substance
may render water most injurious to health, and yet
not be perceptible to the eye, or any other sense of the
" plain witness." Chemical evidence must then be
admissible.
There are certain types of cases in which chemical
evidence is frequently necessary.
The object of these actions is to prevent one man
selling his goods as and for those of another. He
may not ordinarily do this by using the name of the
first vendor's goods, or one so closely resembling it as
to be calculated to deceive. The following is an
Exception to this rule. In the case of the thing sold
being a secret preparation, another person who dis-
covers the mode of manufacture may sell the same
preparation under the same name. This follows from
the decision in the well-known Angostura Bitters
Case, Siegert v. Findlater (7, C.D. 801, 1878). Siegert
made a fluid according to a secret recipe, which
became known as " Angostura Bitters." Meinhard,
the defendant's maker, made a different bitter, also
from a secret recipe, which he also sold under the
name of "Angostura Bitters." It was sought to
restrain the latter by injunction. In course of judg-
ment, FRY, J., said, " The two [bitters] are perfectly
distinguishable, both in colour and taste. I cannot
say that Meinhard may not, if he can, make a bitter
identical with the Plaintiffs, and if he does so, I
cannot prevent him from selling it as " Angostura
Bitters." It is to be observed that the person who
produces a new article, and is the sole maker of it, has
the greatest difficulty (if it is not an impossibility) in
claiming the name of that article, there is nothing to
distinguish it from."
What constitutes identity ? The judge referred to
secret recipes for each. No doubt if one person lawfully
obtained possession of another's secret recipe, he would
be entitled to make and sell the identical article thus
made, by the same name. But short of obtaining the
recipe, how else could identity be established ? If
the articles were so similar in colour, taste, odour, and
consistency, that a skilled person could detect no
difference by the application of any of the senses, the
Courts would probably hold them to be identical.
Chemical analysis would go to show identity in
chemical composition, but there would have also to
be identity in physical characteristics. If samples of
the two are shown to vary slightly by analysis, in
reply it should be shown, also by analysis, that even
when made from the same recipe, the ingredients
differ from time to time sufficiently in composition to
account for the differences in analysis. A useful case
for comparison is the " Yorkshire Relish Case."
Powell v. Birmingham Vinegar Brewery Co., 12,
R.P.C. 496. Here, Powell, trading as Goodall, Back-
house & Co., made a sauce which he called Yorkshire
Eelish, from a secret recipe. Subsequently, the
Birmingham Vinegar Brewery Co. also put up a
sauce which they termed Yorkshire Relish. Powell
applied for an injunction to restrain the defendants
from such use of the words Yorkshire Kelish. At
the trial of the action the plaintiff called three
chemical witnesses, Allen, Hehner, and Stevenson.
All deposed that the plaintiff's and defendant's
sauces were not made from the same recipes.
Further, they each alleged facts on which that
conclusion was based, e.g., differences in smell, taste,
bulk of sediment and saltiness of taste. Hehner said
that different samples of the plaintiff's sauce were un-
doubtedly made from the same recipe. The defendants
called three chemical witnesses, Attfield, Salamon, and
Luff. Attfield deposed that with food the sauces were
indistinguishable, without food there was a slight
difference ; they were practically identical. The
defendant's sauce was somewhat weaker in fullness and
body. Salamon said the differences were very slight,
" ( in many other sauces the variations in the same sauce
were much greater." The defendants' increased bulk of
deposit was due to finer grinding ; " the difference be-
tween the two sauces was a pinch of salt." Luff said
the taste was remarkably alike ; with food they were
indistinguishable, plaintiff's sauce was hotter and more
pungent, but the differences were very slight, the sauces
were substantially identical, but not absolutely, as his
own figures showed differences.
STIRLING, J., in course of judgment said in dealing
with the chemical evidence, " There are certain differ-
ences in the chemical composition of the two sauces.
. . . Mr. Salamon . . . says this, 'I should say the
difference between the two sauces is a pinch of salt ' >:
(that is to say in each bottle) if this were added, all the
other analytic data would fall into line, by which I
understand him to say that the ingredients, as appear-
ing by analysis, would seem to be very much the same.
It is, to be observed, however, that even if the chemical
elements ascertained by analysis were identical, it
would not necessarily follow that the two sauces were
compounded in the same way. . . . Mr. Salamon also
said that he did not think any one would distinguish
the two sauces in use ; they were a wonderful match.
Dr. Luff . . . admitted that it would be possible to
produce more sauces than one, giving the same results
of analysis, and yet made of different materials. . . .
On the evidence of these three witnesses alone, ... I
should be of opinion that the true inference was that
the composition of the two sauces was not the same,
but that they closely resembled one another in taste.
. . . By sending their sauce into the market under the
name of Yorkshire Eelish, the defendants, in my
opinion, represent to the public that it is the same
article as that hitherto procured under that name. On
the evidence to which I have just referred, is this the
simple truth ? My answer is, No ; the assertion goes
beyond the .simple truth. On the evidence to which
I have referred, it might be right to describe the
defendants' sauce as a " wonderful match " to York-
shire Eelish, "but not simply as Yorkshire Kelish."
The case went to the Court of Appeal and finally to
the House of Lords. In the course of the judgment
of the highest tribunal, the law on the difference
between similarity and identity is clearly expounded
by LORD DAVEY, who quoted with approval the
following passage from the previous judgment by
KAY, L. J. (13. R. P. C., 275)
"The defendants made a sauce which, it is said,
closely resembles that of the plaintiff in appearance,
in chemical ingredients, and in flavour, and it is
described by one of the chemical experts who have
given evidence as a " wonderful match." But as the
defendants do not know the recipe of the plaintiff, nor
the manner in which the ingredients are compounded,
it is impossible to say that the two sauces are the
same. The defendants are, therefore, selling a different
sauce by a name which, by itself, would be calculated
to induce purchasers to believe that it is the plaintiffs
sauce."
The judgment is a strong one, but probably qualified
in the mind of the noble lord by the differences before
mentioned, i.e., close resemblance, but not identity.
But quaere, the sauces being identical in appearance,
chemical ingredients, flavour, and all distinguishing
characteristics of the finished sauces, is it impossible
to say the sauces are the same ? The chemist and
gourmet will both say the two sauces are the same.
The law, as stated by STIRLING, J., seems to imply the
necessity of being compounded in the same way, and
KAY, L. J. & LORD DAVEY also attach importance to
the manner in which compounded. It is submitted
that granted absolute identity in the finished product
a different case arises ; the judges in the actual case
quoted were guided in their minds by the absence
of identity, and felt that that may be accounted for
by the method of compounding as well as by differences
of composition. It may fairly be claimed that a
person setting out to discover the secret of a secret
preparation, who has succeeded in making the
identical preparation, has discovered the secret and
the essential recipe.
To be of value, chemical evidence must establish
chemical identity ; it should go to show that differences
of compounding would not affect the nature or char-
acter of the products, and should be accompanied by
evidence of identity in all other characteristics. It is
submitted, therefore, that had the defendants produced
an identical article they would have been entitled to
call it by the same name. In preparations such as
Angostura Bitters and Yorkshire Eelish the line of
distinction between identity and a perfect or even
excellent match must be a very fine one.
Iron Ox Remedy Co. v. Co-operative Wholesale Society,
(24. K. P. C., 425). The plaintiff sold " Iron Ox "
Tablets, and sought to restrain the defendants from
selling "Iron Oxide" Tablets. The defendants'
tablets contained iron oxide which was practically
useless as a drug, and also other and useful drugs.
The iron oxide was put in with the avowed intention
of facilitating competition with Iron Ox Tablets which,
however, contained no iron oxide. The defendants
contended that iron oxide was in popular demand as a
medicine, and that they were entitled to supply this
demand in the way they did. In the course of his judg-
ment, PARKER, J., in reviewing the evidence, said, " The
defendants contend . . . that when the public ask for
iron-ox tablets . . . they are really asking for nothing
more or less than a particular well-known drug. It
may be, they say, that the . . . demand for iron oxide
has been of recent years largely increased by the
advertisements of the iron-ox tablets . . . there is,
they say, this undoubted demand for iron oxide, and
the iron oxide tablets which we are putting on the
market is a legitimate effort to meet a legitimate
demand, and that being the case it is impossible to
restrain us from using the term " Iron Oxide." Now
if the allegations of fact on which that argument of
the defendants rests are established, I am rather
inclined to think that the contention would be a
sound one. . . . After carefully considering the evid-
ence, I think there is no real evidence pointing to the
conclusion that when the public ask for iron-ox
tablets, they are asking for, or think they are getting
the drug iron oxide in tablet form." The judgment
is instructive as indicating a case in which chemical
evidence of chemical constitution of two preparations
was of importance to the plaintiffs. Valuable evidence,
in reply, on the part of the defence would have been
such as to show what the public required when asking
for iron oxide tablets ; this was lacking.
GENERAL NATURE OF PATENTS.
Letters Patent. Subject to the fulfilment of
certain conditions, the Crown is prepared by Letters-
Patent to protect an inventor for a period of fourteen
years in the monopoly of a new manufacture within
the realm. The most important of these conditions
are that the invention must be new and must be
useful. Further, the Letters Patent are granted only
in consideration of a full disclosure of the invention
by the applicant without any reservation whatever,
so that the public may, on the expiration of the term
of monopoly, reap the full and complete advantages,
of the invention. If the inventor omits to fulfil any
part of his bargain, the consideration required by the
Crown fails and the grant is void.
What may be Patented. Patents are granted for
the working or making of any manner of new manu-
factures within the realm, provided such manufactures
are not contrary to the laws nor mischievous to the
State. (This evidently includes chemical manufactures.)
That which may be patented, or, in other words, is
sufficient subject-matter, is " any manner of new
manufacture." The word "manufacture" may be
used in two senses, meaning either (1) the operation
by which raw material is converted into a finished
article, or (2) the finished article itself. The phrase
"working a new manufacture" applies to the first
sense, and include what are generally defined as
" process patents " ; and " making a new manufacture "
refers to the finished article. Therefore, given an
article already known as, say, carbonate of soda, any
new and improved process of manufacturing the same
may be patented. Or if the article is itself previously
unknown as, for example, ionone (the synthetic
violet perfume) then the patent applies to the article
itself, and is often termed a " product patent." The
exact scope or ambit of these requires to be clearly
defined. In the case of a process patent, where the
product is old and well known, the patent protects the
particular process from being used or colourably
imitated. But another patent may be obtained for a
different and new process of manufacturing the same
product. When the actual product is itself new, the
protection is more far-reaching. Thus EYRE, C. J.,
said : When the effect produced is some new sub-
stance or composition of things the patent ought to
be for such new substance or composition without
regard to the mechanism or process by which it is
produced (Boulton v. Bull, 1795, Dav. P.O. 208).
The new product, in whatever way produced, is thus
protected; the tendency of more recent decisions is,
however, somewhat to restrict this, and apparently
when it is possible for the new product to be pro-
duced by some method totally distinct from that
described by the patentee, he is not protected against
such other absolutely new and different mode of
manufacture. The Courts scrutinise very closely and
somewhat suspiciously any such alleged different
methods of producing the patented new product.
It will be readily understood that an exact definition
of what is patentable is practically impossible, but the
necessity of its having to be a manufacture precludes
the patenting of what is simply a discovery, that
cannot be regarded as a new art. For example,
although the invention of a new surgical operation may
be a marvel of genius, it is not a new manufacture
and cannot be made the subject of a patent.
As a guide in deciding whether or not any parti-
cular invention can be patented the following para-
graphs a to h) will be found of great use. Frost,
in his standard treatise on Patent Law and Practice,
states that all patents which hitherto have been
upheld may be classed under one or more of the
following heads :
(a) New or old methods of applying- new
principles. An abstract principle cannot be patented,
but provided the principle be new, any method of
application, whether new or old, may form the subject-
matter of a patent. Ari example is found in Neilson
v. Harford (1843, 1. W.P.C. 673), in which a patent for
the new principle of applying the hot-air blast instead
of cold-air blast to the smelting of iron was upheld.
On crystallisation having been first discovered a
method of its application to the purification of
chemicals would be an invention of this class.
(fc) New methods of applying old principles.
As a method of finishing hosiery goods the application
of a heated iron surface was old. The new method
of applying the old principle by using a steam-heated
flat-iron box was patentable, but this did not prevent
a separate patent being obtained for finishing by
means of a steam-heating iron roller, that being
another method of applying the same principle.
Crystallisation being old, its application to the
purification of chemicals would be an example.
(c) New contrivances applied to new objects or
purposes. At the time when compressed tablets of
drugs were first introduced, any new contrivance for
making the same would fall within this group. Patents
for new drugs or other products will usually come
within this category.
(d) New contrivances applied to old objects or
purposes. A new machine for making pills, which
are old, would belong to this type of invention.
(e) New combinations of new or old, or partly
new and partly old, parts, which result either
in the production of a material object or pro-
cess. These are what are called "combination patents.''
If a new combination is made of two things which are
quite old and well known, and such combination is
useful and novel whether as a process or product, it
may be patented. As an example the combination of
two flat wicks parallel to each other in an oil lamp has
been held sufficient to warrant the grant of a patent.
(f) New methods, involving: the exercise of
invention, of applying- old things OF processes.
The question of invention is of great importance here,
and unless shown to have been exercised there is no
patentable matter. A patent for making salicylic acid
by a known process was held good because before the
patentee no one had ever taught the world how to
make out of such abundant things as sodium carbonate,
carbolic acid, carbon dioxide, and hydrochloric acid, the
comparatively scarce and expensive salicylic acid. No
one had before enunciated the simple chemical fact that
the success of the process depended on perfect drying
of the sodium carbonate (Von Heyden v.Neustadt, 1880,
L.R. 14, Ch.D. 230). On the other hand, a patent in
which was claimed " the use of solid napthaline, pre-
pared in the form of sticks, rods, or pellets, for the
enrichment of combustible gas " was held to be invalid.
It was proved that liquid napthaliae had been before
used for the same purpose, and that before the date of
the patent solid napthaline was a well known article of
commerce (Albo-Carbon Light Co. v. Kidd, 1887, 4,
K.P.C. 535). New methods of preparing chemicals will
belong to this class.
(g) Improvements on known methods, processes
or combinations consisting in the addition to,
the omission from, or the re-arrangement of,
Old parts. This definition is self explanatory, but
attention may be specially directed to the fact that the
simplification of a complicated machine or process by
the omission of parts found unnecessary is subject-
matter for a patent. Improvements in machines, pro-
cesses, and products belong to this group. Improvement
in products may consist of a better yield, better
quality, or cheaper production, or even a useful choice
of methods of production.
(h) Applications, with ingenuity, of materials,
processes, OP thing's previously unapplied to use-
ful purposes to some one or more specific useful
purpose or purposes. Under this heading fall in-
ventions for the utilisation of by-products and waste
materials generally.
Grant of Letters Patent. The control of the
granting of Letters Patent is entrusted to the Board of
Trade, and the general management of the Department
is vested in an officer known as the Comptroller-General
of Patents. The law relating to patents is now em-
bodied in a consolidating Act, passed in 1907, and
entitled " The Patents and Designs Act, 1907."
Stated very shortly, the inventor has to file an
application for his patent, which must be accompanied
by a full description of the invention in a document
termed the specification. The applicant has the option
of either sending in one complete specification ; or, if he
wishes, two specifications known respectively as the
provisional specification, and the final or complete specifi-
cation. The first need only generally indicate the nature
of invention, and is forwarded in order to obtain pro-
visional protection. The complete specification must
accurately describe and claim what is regarded as the
invention. Obviously the same invention must be
described in each specification. The documents are
examined, and, if found in order, the patent is granted
on the payment of the specified fees.
Samples in case of Chemical Invention. In
Section 2, s.s. 5, it is enacted that :
When the invention in respect of which an appli-
cation is made is a chemical invention, such typical
samples and specimens as may be prescribed shall, if
in any particular case the Comptroller considers it
desirable so to require, be furnished before the
acceptance of the complete specification.
In his report for the year 1907, the Comptroller-
General of Patents makes the following comment on
this section of the new Act :
"With the object of checking applications for
speculative patents for alleged inventions based only
on chemical theories, and not submitted to the test
of experiment, Section 2 (5) has provided that where
the invention in respect of which an application for
a patent is made is a chemical invention, such typical
samples and specimens as may be prescribed shall,
if in any particular case the Comptroller considers it
desirable, be furnished before the acceptance of the
complete specification."
This is one of the most important alterations made
by the Act of 1907, the object being to pin down the
inventor to his exact invention and no more. For
example, suppose that before sulphates were known
some inventor had discovered how to make sodium
sulphate, he might claim as his invention the manu-
facture of not only sodium sulphate but also of the
sulphates of other metals or groups of metals indicated
by him. Although his invention was only sodium
sulphate, he would have thus ''pegged out" as his
territory the whole of the other sulphates, although
they were an unknown land which he had not as yet
even " prospected." Under the present Act, if he
wishes to establish his title to the wider territory, he
must, when required by the Comptroller, " effectively
occupy " it by making and submitting typical speci-
mens of the sulphates he wishes to claim. Much
controversy has ranged round this particular enact-
ment ; it must be left to experience to show its effect
in actual working.
In some form or other, chemical evidence as to
identity will no doubt be utilised in dealing with
these samples.
POWERS OF COMPTROLLER.
Very wide powers are, by the Act, granted to the
Comptroller-General. Among other things he
1. Hears and decides any Opposition to a Patent.
Any person may oppose the grant of a patent on
the following grounds, S. 11 :
(a) "That the applicant obtained the invention
from him, or from a person of whom he is the legal
representative; or
(6) That the invention has been claimed in any
complete specification for a British patent which is
or will be of prior date to the patent the grant of
which is opposed, other than a specification de-
posited pursuant to an application made more than
fifty years before the date of the application for
such last-mentioned patent ; or
(c) That the nature of the invention or the
manner in which it is to be performed is not
sufficiently or fairly described and ascertained in
the complete specification; or
(d) That the complete specification describes or
claims 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,
but on no other ground."
The grounds of opposition are strictly limited, and
clearly set forth. The fifty years' limit obviates the
necessity of going further back than that period in
the search for any previous specification in which the
same invention may have been claimed.
2. May revoke Patents on certain grounds.
The Comptroller has power to hear and decide
applications for revocation, S. 26 :
"Any person who would have been entitled to
oppose the grant of a patent, or is the successor in
interest of a person who was so entitled, may,
within two years from the date of the patent, in
the prescribed manner apply to the comptroller for
an order revoking the patent on any one or more
of the grounds on which the grant of the patent
might have been opposed ;
Provided that when an action for infringement
or proceedings for the revocation of the patent are
pending in any court, an application under this
section shall not be made except with the leave of
the court."
By this section very considerable extension is made
of the functions of the Comptroller, who may hear
and decide applications for revocation made on certain
grounds. The Courts and the Comptroller, both,
have now therefore jurisdiction in matters of revoca-
tion. The object of this section of the new Act is to
provide a less expensive tribunal for the hearing of
the simpler revocation proceedings.
3. May hear evidence, S. 77 :
" Subject to rules under this Act in any proceeding
under this Act before the comptroller, the evidence
shall be given by statutory declaration in the
absence of directions to the contrary; but in any
case in which the comptroller thinks it right to
do so, he may take evidence viva voce in lieu of or
in addition to evidence by declaration, or allow any
declarant to be cross-examined on his declaration."
Merits of Patent. On the general merits of a
Patent, the Comptroller's function is to decide whether
the same invention has been the subject of any previous
British patent during the preceding fifty years; and
whether the subject matter is properly described ; and
whether in a certain event there is disconformity
between the provisional and complete specifications.
The Law affords Remedies both to and against
the Patentee. The patentee is entitled to protect
himself by an action of infringement against any
invasion of his exclusive rights.
On any unauthorised person having taken some
substantial portion of a patented invention and applied
it in any way to his own use or benefit, the patentee
has grounds for an action of infringement. The in-
fringement may consist in using a patented process or
making a patented article either for one's own benefit
or for disposal to others.
In cases where a patent is bad through lack of the
essential elements of validity, or has been obtained in
derogation of the lawful rights of others, the persons
so prejudiced have a good defence in an action of in-
fringement, and may also present a petition for revocation
of the patent to the Court.
A person prejudiced by the existence of a patent
which he believes can be demonstrated to be invalid,
may, if he wishes, disregard the patent altogether and
proceed with the manufacture which is ostensibly
patented. If infringement proceedings be instituted
against him, a defence in which he succeeds in showing
the patent to be bad will be successful. In the same
action, he may by counterclaim obtain the revocation
of the patent.
There are cases, however, where some other course is
desirable ; a manufacturer may not wish to run the
risks of an action of infringement, but would prefer to
know that the coast was clear before attempting to
make use of what is the subject-matter of the patent in
question. His appropriate remedy in that case is a
petition for revocation, which may be presented to the
Court. It is not every member of the public who is
entitled to present this petition, but only those who
have had certain denned rights invaded, or who may
on the general merits of their case succeed in obtaining
the authority of the Attorney-General for the pre-
sentation of their petition. The grounds for revocation
having been proved to the satisfaction of the Court, an
order for revocation is made. The effect is that the
letters patent conveying the grant are recalled, and the
patent is no longer in existence.
Action of Infringement The plaintiff must deliver
as a part of his Pleadings, a document called "Particulars
of Breaches." In this he must give an instance or
instances of the infringements on which he relies. In
defence, the defendant must deliver " Particulars of
Objections." He may allege (1) that he has not in-
fringed the plaintiff's patent ; (2) the patent is invalid,
because, inter alia, the alleged invention is not new,
and/or not useful.
Petition for Revocation. The Petitioner must
deliver " Particulars of Objections," which are broadly
similar in character to those in the defence to infringe-
ment actions. The respondent rebuts these, and essays
to prove the validity of his patent.
Chemical Evidence. In chemical patent actions,
the chemical questions arising almost all resolve them-
selves into that of identity between two or more
processes or products, or that an alleged invention is
not useful.
In infringement, the plaintiff says " your process is
the same as my patented process." The defendant
replies " My process is different from your patented
process, therefore there is no infringement. Your
patented process is identical with an older process,
and therefore is not new."
In revocation, the petitioner says, "Your patented
process is identical with an older process, therefore the
patent is invalid. Further it is not useful." The
respondent in reply says, " The two processes are
different. My patented process is useful."
In the chemical proof of such matters, new problems
are introduced. There are not only matters of analysis,
but also of the nature and history of the development
of chemical processes and manufactures.
ILLUSTRATIVE CASES.
The following cases have been selected because of
the interesting nature of the chemical problems involved,
and because important principles of patent law have
been laid down in the various judgments. The figures
in brackets (1), refer to notes at the end of each case.
Badische Anilin und Soda Fabrik v. Levinstein (24,
Ch. D., 1883, 156 ; 2, E.P.C., 73; 4, E.P.C., 449). The
plaintiffs were owners of a patent for producing dyes
called sulpho-acids of oxyazo-naphthaline. Four
processes were described in the specification ; the
defendant was alleged to have infringed the third
process. The defendant denied the validity of the
patent and any infringement ; he further alleged prior
publication. Held in Ch. D. y PEARSON, J., that the
patent was valid ; the defendant had infringed as
he liad employed the same processes and the same
materials to produce the same results.
The Court of Appeal reversed this decision by a
majority of judges, BOWEN, L. J., and FRY, L. J. ;
BAGGALAY, L. J., dissenting. Held, the specification
was insufficient, and the defendant's process was an
infringement.
The House of Lords reversed the judgment of the
Court of Appeal, and restored the order of PEARSON, J.
Judgment of PEAKSON, J. The following are extracts
from, and a condensation of the judgment: The
plaintiffs complain that the defendant made dyes
according to the processes described in the patent.
The defendant answers the patent is void, and even if
a good patent, he, as a manufacturer, has invented
and used a " secret process substantially different from
the processes described in the patent, and has therefore
not infringed the patent. . . . The real subject of
this patent is [the production of] sulpho-acids of
oxyazo-naphthaline, and . . . unless the patent prac-
tically shews how [these] are to be obtained, the
patent is not a good patent." In the first process,
" ' naphthylamine ' is mentioned as an ingredient; to
this the objection is taken that there are now two
naphthylarnines, known respectively as the alpha-
and beta- varieties. The general name includes the
both, and if it included beta-naphthylamine, the whole
patent was bad because either it went too far or did
not sufficiently describe." The learned judge then
proceeded to decide " that the word naphthylamine in
the patent means that which was generally known in
the year 1878 as naphthylamine, namely, what is now
described as alpha-naphthylamine. . . . Down to the
year 1880 beta-naphthylamine was an article only
used in the laboratory, . . . which was not commonly
known . . . and certainly for all commercial purposes
. . . hardly existed. ... I am satisfied that at the
date of the patent, . . . any person ordering naphthy-
lamine simply, would have been supplied with the old
naphthylamine. ... It would be improper to come
to the conclusion that any naphthylamine was meant
in this patent except that which was known simply
as naphthylamine, that is, that which is now properly
described as alpha-naphthylamine." (1) A part of
the process of manufacture consisted of treatment
with fuming sulphuric acid, containing about 80 per
cent, of sulphur trioxide. It was said that this acid
was so strong that the greater part of the raw
material, oxyazo-naphthaline, would in course of
manufacture be charred if not actually burnt. " There
was a great deal of conflicting evidence upon this
subject." As a result, the learned judge directed Pro-
fessor, now Sir Henry, Eoscoe, to make an independent
report to the Court. The Order of the Court is given
in 2, R.P.C., 77. It directs a copy of the specification
to be forwarded, and requests Eoscoe to perform
certain experiments which consisted of manufacturing
the dyes according to the instructions of the specifica-
tion. It further requests him to test carefully all the
materials he employs, and to see that he has no
communication with any of the parties to the action ;
but one chemist representing either party was per-
mitted to be present.
Eoscoe then reported the results of his experiments ;
with regard to the use of fuming sulphuric acid he
said, " I now proceeded to try the process . . . with a
sulphuric acid containing 80 per cent, of sulphur
trioxide. I did not find it either dangerous or im-
possible to follow implicitly the directions as there
given . . . [details of the experiments here follow]
and therefore I conclude from the above experiments
that . . . the process involving the use of 80 per cent,
acid is superior to the others. I am also of opinion
that this process can be carried out without danger,
provided that proper appliances are made use of."
(2) Commenting on Roscoe's Keport, PEARSON, J.,
continues, " With ordinary care chemists properly
instructed could as easily perform this third process
as they could perform the first process."
" Levinstein ... set up by his defence that he had
a secret process. Of course the question as to whether
or not that secret prbcess is a process which is within
the terms of the patent is what I shall have to con-
sider. . . . [To state to the public his secret] might
do him irreparable mischief. ... I heard Mr.
Levinstein's description of that secret process with
closed doors, no persons being present except the
parties and their scientific assistants. (3).
On the principles of deciding the question of in-
fringement, the learned judge said, " One is this, that
in these chemical cases where a patentee has made
some discovery in chemistry, any person may after-
wards use for the same purpose chemical equivalents
which were not known to be chemical equivalents at
the time the patent was taken out. (Example,
Unwin v. Heath, 2, Web. P.O. 302.) And I fully
agree with the doctrine which has been repeatedly
laid down .... that though the use of a chemical or
mechanical substitute which is a known equivalent to
the thing pointed out by the specification, and claimed
as the invention, amounts to an infringement of the
patent ; yet if the equivalent were not known to be
so at the time of the patent and specification, the use
of it is no infringement " (4).
A second principle, no less important than that, is
this, that where a patent is taken out for a process
for arriving at a known result (I mean a result known
before the patent is taken out for the process sim-
pliciter), any other person may take out a patent for
another process, or may use another process without
taking out a patent, without any infringement of the
process just taken out. But when a patent is taken
out for a new result not known before, and there is
one process described in the patent which is effectual
for the purpose of arriving at that new result at the
time when the patent is taken out, the patentee is
entitled to protection against all other processes for
the same result" (5) I really have to consider
whether Mr. Levinstein's secret process comes under
the first principle a new discovery of a chemical
equivalent, or whether it comes under the second
principle whether it is simply a discovery of a
new process, if it be a discovery at all, to pro-
duce the same result which is patented by the
patent Levinstein .... does not use fuming
sulphuric acid, but .... a known chemical equivalent
to it .... the process he has used is a process which
is [superior in almost every way] to the process
mentioned in the patent. It is said that that is
entirely a new discovery of Mr. Levinstein's ....
I do not entertain a doubt that [it is] a chemical
operation .... known to be equivalent at the time
the patent was taken out ... in what he has done
he has simply by experiment and pursuing courses
well known in chemistry adapted to this particular
. . . . process, processes which have been used for
other subject-matters, although it had not been found,
possiby because it was not wanted, that they were
capable of being used with regard to [this process]
.... The processes employed by Mr. Levinstein are
processes deserving of great praise; but they are
simply processes which produce exactly the same
results from the same materials which are produced
by [sic. evidently, used in] this patent. The same
object is pursued, the same materials are employed,
the same result is attained. I cannot do otherwise
than come to the conclusion that those are merely
processes, that they are not a new invention differing
from the patent, but are in reality the manufacture
of the sulpho acids of oxyazo-naphthylamine by a
process differing in some respects from the process
employed according to the patent " (6). Issue decided
in favour of the plaintiff.
(1). An important principle is here laid down.
Chemical names must be taken to signify that which
they meant at the date of the patent, and not what they
meant at some time after.
(2). This was the first case of a referee being
appointed in such matters as these by the Court.
The process of manufacture was stated to be sufficiently
described. Eoscoe's report should be read in extenso
as an example of what such a report should be.
(3). Levinstein's process being of the nature of a
secret, an important concession was made by the
Court for his protection.
(4). Doctrine of Chemical Equivalents. The meaning
of this term is not the same as that in pure chemistry.
It means rather a substitute which may be used to
replace another substance in a process of manufacture.
If the equivalent is well known, its use is an
infringement. If it is a new invention, there is no
infringement.
(5). Here is shown the distinction between a " master
patent," in which is embodied an entirely new in-
vention, as against a mere " process patent/' in which
the invention is for a new process for the manufacture
of a known product.
(6). The judgment indicates very clearly the line of
distinction drawn between known equivalents and a
sufficiently new departure to be regarded itself as an
invention. The particular instance is evidently very
closely on the border line.
Chemical Evidence. Almost every word of the
judgment is pregnant with suggestions to the chemist
and the advocate. They indicate the mental attitude
of the judge toward chemical problems of this kind.
In every action the chemical evidence forthcoming
must be that which shall answer the questions the
judge is likely to ask himself. The plaintiff's evidence
would go to show that the infringing process was a
known chemical equivalent, and that the patent was
for a new result. The defendant's evidence should
prove that his process was not an equivalent, but a
newly invented process, and that the patent was a
process one, and not for a new result.
Identity of Products is a matter of analysis, and
is subject to precautions of the same kind as have been
previously explained.
Identity of Processes is a somewhat larger matter.
Those under investigation . should be compared under
the precise conditions set down in the specification.
If the experiments are made on the laboratory scale it
should be carefully considered whether any effects can
arise from the differences in quantities operated on.
The witness should be prepared with experiments,
or reasons for the opinions advanced. If possible,
laboratory experiments should be confirmed by experi-
ments on the actual manufacturing scale.
No Prevision in Chemistry. A doctrine now widely
held, and frequently insisted on is that "there is no
prevision in chemistry." Substances may apparently,
and theoretically, be equivalents for each other, and yet,
when tried the presumed equivalent may produce results
altogether different from those which were expected.
The application of this principle very considerably
narrows the doctrine of equivalents, and to the same
extent widens the scope of what may be new invention
Insufficiency of Description. One of the points at
issue in this action was whether or not the invention
was sufficiently described in the specification. The
kind of description necessary is laid down in the
following proposition by Frost : " The complete speci-
fication must be intelligible to ordinary workmen
possessing the ordinary skill and knowledge of that
branch of the useful arts to which the invention relates."
Commenting on this Frost says " it is apt to lead to
great confusion if it be not clearly borne in mind that
the ' ordinary workman ' is to be regarded as a person
of very different knowledge and skill according to the
nature of the field of invention with which the patentee
in a particular case is dealing . . . . e.g., if the
invention relates to the production of a chemical
product by a process or series of processes to the
understanding of which a knowledge of the most recent
developments of chemical theories, and ascertaining
facts is indispensible, then the 'ordinary workman*
becomes a highly trained chemist, who may be properly
called upon to bring his special knowledge of the
particular branch to which the invention relates into
play, for the purpose of giving minute directions to his
less skilful subordinates, so as to enable them to
perform the operations necessary to the carrying out of
the process, which they by their lack of knowledge may
not be able to fully appreciate."
In chemical cases the "ordinary workman" is fre-
quently impersonated in the witness-box by chemists
of the very highest eminence. But great minds view
their own powers with the most profound humility, and
never is this more strikingly manifested than when
such eminent chemist is testifying to the insufficiency
of description in a specification. Functioning as an
" ordinary workman," he is quite unable to understand
that which is perfectly simple and plain to equally great
intellects ; also functioning as " ordinary workmen "
on behalf of the other side.
Nobel v. Anderson, 11, K.P.C., 115. The plaintiffs
were assignees of a patent for " Improvements in the
manufacture of Explosives," one claim was for the
manufacture from nitro-glycerin and soluble nitro-
cellulose, of a horny explosive compound. The de-
fendants made a smokless powder called "cordite,"
from nitro-glycerin and insoluble nitro-cellulose. There
was a conflict of chemical testimony as to what were
known at the date of the patent as soluble and
insoluble kinds. Held, the plaintiff's claim was con-
fined to a powder made from soluble nitro-cellulose.
The defendant's interpretation of soluble was correct,
the patent was valid, and the defendant had not
infringed."
(A conflict of chemical testimony is no unfamiliar
thing in almost every chemical patent case).
The plaintiff's chemical witnesses included Odling,
Koscoe, Tatlock, and others ; the defendant's Dewar,
Abel, Lunge, Dupre, Armstrong, Frankland, Crookes,
Bramwell, and others.
KOMER, J., in the course of his judgment, said, " At
the date of this patent mtro-cellulose consisted of two
well-known and distinct kinds the soluble and the
insoluble Speaking generally the first was
soluble and the second was insoluble in ether-alcohol.
.... Turning to the plaintiff's specification, his claim
at the end is limited to soluble, nitro-cellulose. More-
over, in one part of his specification he refers to the
use of certain facilitating solvents, while all of these
are solvents for the soluble kind, some of them are
not solvents for the insoluble kind of nitro-cellulose.
.... The plaintiff has therefore confined his claim to
the manufacture from the soluble nitro-cellulose,
and in his opinion he has selected the soluble as
distinguished from, and in a sense as opposed to, the
insoluble The patentee might well shrink from
trying to use the highly explosive gun cotton [in-
soluble] instead of the comparatively safe collodion
cotton [soluble] One chemical problem he solved,
and he has obtained all the advantage appertaining
thereto which he can legitimately claim. A further
and distinct problem he left unsolved, and he ought
not to be allowed to take away from the person or
persons who ultimately solved it the benefit of their
success Cordite is made according to a patented
invention of Dewar and Abel .... they have solved
the problem .... how to make a good powder out of
insoluble nitro-cellulose and nitro-glycerin The
insoluble cannot be regarded as in any true sense the
equivalent of the soluble nitro-cellulose There
is no infringement, and the action fails."
The chemical evidence required in this and analo-
gous cases is again suggested by the problems considered
by the learned judge. The case differs from the Badische
case, inasmuch as here it is held that there was no
chemical equivalent, but a new process, and not a
general or master patent, but one which specifically
excluded from the invention patented, that which
constituted the alleged infringement.
Monnet v. Beck, 14, R.P.O., 777. This was an action
for the infringement of a patent for the manufacture
of new dyes. The defendant denied any infringement,
and alleged that the patent was invalid, because the
specification was insufficient, the invention of no
utility, and had been anticipated. It was Held, inter
alia, the plaintiff claimed the invention of a new
metallic salt .... that this was an impossible product
and not a valid claim, as the plaintiff was either
claiming an impossible process, or a process he had
not described. The action was dismissed with costs.
The case is interesting from the nature of the
chemical evidence called. Passmore gave evidence of
the chemical constitution of organic bodies, and ex-
hibited the graphic formulae of same. These included
di-methyl-meta-amido- phenol -phthalein. It was
generally submitted on behalf of the patentee that he
had made a mistake in his chemical theories only.
Dewar, for the defence, stated that he had experi-
mented, following the specification, and had been
unable to make any potassium salt as described.
Owing to the " extraordinary conflict of evidence,"
counsel for the plaintiff asked for a reference to a
competent referee. The application was not acceded to.
WILLS, J., in course of judgment, said, quoting the
specification, "The object of this invention is the
manufacture of new dyes called ' anisolines ' from the
rhodamines. There is then given a formula for the
salts form by a particular rhodamine with mono-
valent metals This metallic salt, which beyond
all doubt is the starting point from which the process
claimed sets out, is not only non-existent, but im-
possible. With a profound and implicit trust
apparently in symbols which I do not profess to
understand, Monnet assumed that the first stage
of the process described led him to the starting point
of his claim, and gave him a potassium salt. The very
simplest experiment would have shown him that it
did not exist in fact, and it is now conceded that it
is an impossible product When Monnet says,
" I claim the method of obtaining anisolines by sub-
stitututing for the metal of rhodamine salts an
alcoholic radical, he was proposing to substitute an
alcoholic radical in a non-existing and impossible
chemical combination. W T hat he had really got was
the rhodamine base of the hydrochlorate of rhodamine
with which he set out. It seems to me that, looking
at what it is that he claims in the most unmistake-
able language, this cannot be a good claim. Chemical
reactions are surely as much a part of a chemical
process as the admission of steam into a cylinder ....
would be part of a mechanical process. If there is
one thing more than another which is insisted upon
in the patent as of its essence, it is the chemical re-
action or group of reactions, which constitute a
substitution for an impossible thing.
It is said on the other hand, ' This is only a mistake
of theory. The patentee describes his process. He
arrives at a rhodamine base which he calls a salt, but
he only makes that substance the starting point of a
fresh process, which works out the desired result
The argument is taking, but I do not think it is sound.
.... But it seems to me that Monnet has throughout
his specification, and still more in his claims, driven the
error so deep down into the process claimed that it is
impossible to adopt the "benevolent" style of con-
struction contended for on his behalf. The mere
process down to .... the formation of the
anisoline .... save for the supposed formation of
the potassium salt .... was not new .... it
was necessary (so far as process was concerned) to find
something new before .... [the] time the anisolation
was complete, under which circumstances one can
understand the importance, from Monnet's point of
view, of giving a new character to his process by
making the most of the use of the metallic salt which
he thought he had invented. Accordingly he makes
that metallic salt, it seems to me as to process, the very
pivot of his invention It seems to me that
you may put it in two ways, either of which is fatal to
the patent. It may be said, "You are claiming an
impossible process," which cannot be the subject of a
patent, or if it be urged that Monnet's specification,
apart from the claim, does not really describe a process
depending upon a metallic salt, then, " You are claiming
a process which is not the one you have described,
which is equally fatal." The deductions are made clear
in the last sentence of the judgment.
Chemical Evidence. This may be directed to
theories of chemical constitution impossibility of
process- and inaccuracy of description.
PARLIAMENTARY COMMITTEES.
During the consideration of private bills by Parlia-
mentary Committees, chemical questions not infre-
quently arise, e.g., one local authority may be
promoting a scheme for the disposal of sewage, another
may oppose on the ground that it will cause pollution
of their water supply.
Chemical evidence may be given on both sides.
The general principles are the same as elsewhere.
Principal point of difference. These Committees
are composed of business men rather than lawyers,
and in consequence the rules of evidence may be
somewhat relaxed. Matters may be admitted that
more strictly legal procedure would reject. Each side
will, therefore, be ready to fully avail itself of any
such opportunities thus afforded.
