IN THE MATTER OF AN APPLICATION FOR A PATENT BY PETER VON KROGH

417 Vol. XLIX.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. In the Matter of an Appli~ation for a Patent by Peter Von Krogh. Before THE ASSISTANT-OOMPTROLLER. September 4th, 1929. IN THE MATTER OF AN ApPLICATION FOR A PATENT BY PETER VON KROGH. Application. for a Patent made in his own name by a .Norwegian subject 5 resident abroad, he being assignee of the invention from another Norwegian subject also resident abroad.-Question whether an assignee abroad can properly apply for a Patent in his own name except when applying on Patents Forni No. 1B* under the International Convention.-Held that such assignee can properly apply in his own name as inventor. 10 On the 5th of November, 1928, Peter von K roqh, a Norwegian subject applied in this country on Patents Form No. 1B* as assignee of Magnus Hope (also a Norwegian subject) claiming the date the 17th of December, 19'27, asa priority date under the International Oonvention. The claim to priority was subsequently relinquished, and a request was made to convert the Application into an ordin15 ary Application upon Patents Form No. 1 in the n~me of von Krogh as inventor. This request was afterwards replaced by a request that the Application be converted into an Application by a member of a firm of Patent Agents as communicatees of the invention, the reason given being that it was regarded as doubtful whether a Patent granted to von Krogh in his own name would be 20 valid, since H ope was the actual inventor. The matter was referred to the Assistant-Comptroller (Mr. H. C. Haycraft), acting for the Comptroller-General, for a ruling as to whether an Application for a Patent could properly be made in his own name (other than upon Patents Form 1B*) by a foreigner resident abroad to whom the invention had been 25 communicated by another foreigner also resident abroad, or whether in such a case the Application must be made in the name of the actual inventor, The Assistant-Comptroller.-The question that I have to decide in this case is a general question of considerable importance in relation to practice in the Patent Office. In its relation to the particular Application which is now before 30 me the question is almost an academic one, for although the Hearing was originally asked for on the issue as to whether a certain fee should be paid or not, the Agents who are acting for the Applicant, namely Messrs. Haseltine Lake & Co., are quite prepared to pay the fee, if I think it should be paid, and what they are really seeking is 'a decision upon certain general issues, which 35 lie behind the relatively unimportant question as to the payment of the fee. Peter von Krogh, a Norwegian subject, originally made this Application on Patents Form No. 1B*, as Assignee of Magnus Hope (also a Norwegian subject), and he claimed the date the 17th of December, 1927, as a priority date under 418 No. ]1.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIX. In the Matter 0/ an Application /01' a, Patent by Peter Von Krogh. the International Oonvention. The Examiner reported disconformity between the British and Norwegian Specifications and by a letter dated the 27th of March, 1929, the Applicant's Agents notified the Comptroller that the Applicant relinquished his priority claim and desired to amend the Application Form so a as to read in terms of Patents Form No.1 as an ordinary Application. In a subsequent letter, dated the 2nd of May, 1929, the Agents withdrew this request and asked to be allowed 'to convert the Application into an Application by a member of their firm as communicatee of the invention, using Patents Form No. IA. Their reason was that as Peter von Krogh was not the actual inventor, but, only an assignee of the inventor (Magnus Hope) he could not 10 properly make the declarat.ion on Patents Form No.1 whereby he would claim to be the true and first inventor of the invention; whereas, if Patents Form No. IA were used, the Application would be unexceptionable, since it would be made by an individual resident in this country to whom the invention had been communicated from abroad, and who would therefore be under British law the 1~ " inventor" by importation. .In reply to this letter Messrs. Haseltine Lake & ICO. were informed by letter dated the 21st of May, 1929, that in accordance with official practice the conversion into an Application on Form-IA would necessitate the filing of Patents Form No. 18, stamped thirty shillings, whereas conversion into an Application 20 on Form 1 could be made without fee. I need not in this decision concern myself with the propriety of a longestablished office practice wherehy certain" conversions" are made without fee and other "conversions" require the payment of the fee of thirty shillings. Although at one stage in the correspondence the necessity for paying this fee 25 was challenged, Mr. M ellersh-Lackson. informed me at the Hearing that he was quite willing to pay the fee, and in fact that is not the point which he asked me to decide. What is alleged by Messrs. Haseltine Lake & Co. is that the practice whereby the Patent Office allows and even invites Applicants to make use of Patents 30 Form No. 1 in such cases is a wrong practice which may imperil the validity of the Patent when granted. They say, and it is indeed beyond dispute, that the alternative course via Patents Form No. lA is unexceptionable, and there can be no doubt that an Application so made is perfectly valid in law; but they say that an Application made on Form No.1 is at least open to question, and the 35 Patent Office should therefore not merely allow Form No. lA to be used (with or without the extra fee) but should require that it be used in all such cases. It wouldyof course, be in perfect order for Magnus Hope, the actual inventor, to apply in this country on Patents Form NO.1, he being resident in Norway. But the alternatives thatT have to consider are these:-(I) that Mr. Mellersh... 40 Jackson should apply as a, communicatee in this country of Peter von K1'Ogh, resident abroad, and (2) that Peter von Krogh who was assignee of Magnus Hope, and is also resident in Norway, should apply directly oil Patents Form No.1, claiming to be the true and first inventor. 'I'he question at issue is therefore whether the principle of "invention by 45" importation" which is recognised in British law, covers the case of "inven" tion by introduction from abroad," that is to say whether the" importer" may be a person who though not the actual inventor or originator of the invention and not resident in England, sends the invention into this country. " Invention by importation" had in the past a very important significance, 50 A resident in this country (not necesarily a British Subject) while travelling 419 Vol. XLIX.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. In the J.1fatter of an Application for- a Patent by Peter Von Krogh. abroad learned some new art or manner of manufacture. He (...truncated)