IN THE MATTER OF THE PATENTS OF MASCHINENFABRIK AUGSBURG-NÜRNBERG A.G.

193 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. Vol. XLVII.] JUNE 12TH. 1930. [No.7. IN THE HIGH OOURT OF JUSTICE-OHANCERY DIVISION. Before Mr. JUSTICE LUXMOORE. April 19th, June 2l8th, October 29th and 31st, N ovember 1st, 4th, 5,th,6th and 7th, 1929. 5 IN THE MAT'I'ER OF THE PATENTS OF MASCHINENFABRIK AUGSBURG-NURNBERG A.G. Patents-Petition for the extension of the terms of a Patent and two Patents of Addition-Leave to lodge notice of opposition. out. of t.ime-r-Leaue to present second Petition for the extension of the terms of two [urther Patents of Add.itioe» -Some of several Petitioners withdrawing-Terrns-Whether Patents of Ad10 dition can be extended-llferit-Projits on foreign Patents-Accounts-Accounts unsatisfactory-L'ack of diligence in exploiting inoention-i-Petitions diemissed -r-Coets-r-Patente and Designs Acts 1907 and 1919, Sections 18, 19 and 93. J. Le B. urere the assiqnees of five Patents granted under the International Convention to M.A.N. The firet Patent uiae granted in respect of an invention 15 of "Improvements in and relating to Gas Holders." The object was to overcome the dieadoamtaqes found in practice in the earlier type of gas holder. The four later Patente were Patents of Addition to the first Patent. The M.A.N. ioas a German Uorn/panq), aaui oW'ing to the War the Patents were uested. in the Custodian of Enemy Pr ope rty, and after the conclusion of the frlar were, 20 subject to conditione, reueeted in the M.A.N. In 1921 the M.A.N. entered into negotiation with certain. English firms with a view to the exploitation of the Patents, but these neqotiat.ions fell through, and lin 1925 the M.A.N. assianed the Patents to J. Le B. On the 12t,h of March, 1929, J. Le B., W. G. C., urho were J. Lie B.'s licensees, and four sub-licensees presented a Petition for the 25 extension of the first three Patente. On the 19,th of April, 1929, D. G. applied. for an extension of time in w'hich to lodge Notice of Up-position. on the ground that their professional adviser had a,t the material dates been absent from England on professional business, and consequently had not seen the advertisements. The AppZicat1:on was opposed 30 on the grounds that there uias no precedent for such an application, and that it might have the effect of increasing the Petitioners' costs. R 194 No.7.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLVII. In the Matter of the Patents of Maschinenfabrik Augsburg-Nilrnberg A.G. Held, that under the circumsta..n ces leave to oppose ebould be given. question of costs uxis reserved. The In the M,a,tter of Hopkinson's Patent, (1896) 13 R,.P.C. 114, distinguished. On the 28th of J 11Ine, 1929, the Petitioners applied for leave to present a Petition out 01/ time for the extension of the fourth and. fifth Patents and asked 5 that the appointed day might be fixed shortly before the hearing of the first Pet~tion so that both Pet.ition« could be heard together. Leaue to present the Petition was given, but the second part of the Applacatdon. was refu-sed. Subsequently a Consent Order was made directing both Petitions to be heard 10 together. TVhen the Petitions carne on for hearing those Petitioners urho were sub; Leave urae granted on terms as' to costs. Licensees asked leave to withdraw from the Petition. The opposition was based (inter al ia) on the grounds that neither the origi1nal 15 inventor nor theM.A.N. were before the Court ; that the profits earned under corresponding foreian. Patents ought to have been disclosed; that the profits made by the M.A.N. had not been discloeed; that J. Le B.'s accounts were based p'urely on estimate ; that the Petitioners had been adequately remunerated ; that proper efforts to exploit the Patents had not been made; that the Patense 20 were neither merito rioue nor new, and 'were wanting in sub jcct-mat.ter ; that the Pet-itioners had had no int ereet in the Patents until 1925; that there ioas no jurisdiction to extend patents of addition. Held, that patents of addition are within the definition ofapatent en. Section 93; that, notw·ithstanding Section. 19, Section 18 ap-plies to patents of 25 addition, which can be extended, but not for a period exceediruj the term. of extension of the main patent; that; in considering whether an extension should be granted, the merits of each patent muet be considered individ'llally)· and that in'ventiveingenruity is material, but that detailed evidence as to validity is umnecessaru; ·tha,t the main Patera and one Patent of addition were of sufficient 30 merit to j.ust'ify the grant of an extension; but that the Iremaining Patents C01.JeTed trivial matters and fell short of the necessary standard of public utility; that it is necessary to consider not only the profits made by a petitioner assiqnee, but also the profits made by the original inventor and all s1fbseguent holders of a patent; that i.n considering all the circumstances of the case thevprofits on 35 corresponding foreiqn. Patents ought to be taken into consideration; and that it was possible that M.A.N. had made profits in connection with such Patents, and that the absence of information as to such profits was fatal to the Peti- 195 Vol. XLVII.] REPORTS OF PAT'ENT', DESIGN, AND TRADE MARK CASES. [No.7. In the 11latter of the Patents of Maschinenfabrik Aug'sburg-Nilrnberg A.G. tioners, and that i,t was imanateriai that the foreign Patenteurere not vested in the Petitioners; tha.t M.A.N. had not shown sufficient diligence in, the exploitation of the Patents to entitle them, to an extension, and that the Petitions 11~U8t be diemissed, The Petitioners were ordered to pay the Opponents' costs. 5 In the Matter of Trantom's Patent, (1917) 34 R,.P.O. 2:8, In the M,att,er of Johnson's Patent, (1908) 2:5 R.P.O. 542:, In the Matter of Newton's Patent, (1884) 1 R.P.O. 1, In the Matter of Peach's Patent, (1903) 19 R.P.O. 65, folloured . .J faschinenfabrik Augsbwrg-Nilrnberg A.G. (hereinafter called" the Ai.A.N.") were the Grantors of the following Letters Patent all granted under the 10 International Oonvention :-No. 16,184 of 1914, dated the 4th of September, 1913, granted in respect of an .invention of "Improv'ements in' and rel atd ng to Gas Holders," No, 16,472 of 1914, dated th'81 25th of October, 1913, granted in respect of an invention of "Improv,e"ments in and rel at ing to the Erection of Gas Holders with Domed-shaped 15 "Closing Members " and No. 16,473 of 1914, dated the 2:nd of February, 1914, granted in respect of " Improvements lin and rela.ting to Packing a.nd Sealing "Means for Gas Holders having a Disc-shaped Closing Member on Orown." The two later Patent.s were Patents of Addition to No 16,184 of 1914. The following is an extract from the Complete Specification of Patent 20 No. 1:6,184 of 1914 : - "This invention relates to an improved gas holder having a disc-shaped " closing member or crown and a liquid seal. "The form of sealing used almost iexclusively hit (...truncated)