IN THE MATTER OF TWO APPLICATIONS FOR PATENTS BY EDWARD CARTER

403 . _ - - - - _ . _ - - - - - - - - - _...... _-----REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. Vol. XLIX.] OCTOBER 12TH, 1932. [No 11 The cases reported herein have not previously appeared in the Reports and are now included as being of general interest in connection with ]Jatent Office practice. Before THE ASSISTANT-OOMPTROLLER. July 5th, 1927. IN 5 THE MATTER OF Two ApPLICATIONS FOR PATENTS BY EDWARD OARTER. Applications made by a nominee of tke inventor.--Held that an Application to the true and first inventor w-as not a party is ooid, and that the irregularity cannot be cured by amendment. w1~ich Applications were made by Edward Carter for Letters Patent Nos. 6039 and The true and first inventor in each case was Sidney Edward Lofts. It was later requested 10 that the name of Lofts he joined with that of Carter as co-applicant, and that his. name he substituted for that of Carter as sole inventor. The parties were heard by the Aesisto.nt-Com.ptroller (Mr. H. C. Haycraft), acting for the Comptroller-General. It was pleaded that the irregularity was due to ignorance of the law and that there was no intent to deceive the Com.p15 troller. 11'621, dated respectively the 3rd of March and the 2nd of May, 1927. The Asslstant-Oomptrotler.c-vI'hc .Applicant, Edward Carter, applied for two Patents for closely allied inventions in his own name, declardng in each case that he was the true and first inventor. Application is now made to introduce the name of Sidney Edward Lofts in each 20 case as eo-applicant and to amend the statement of inventorship dn each cas-e by substituting the name of Mr. Lofts for that of Mr. Carter as sole inventor. Declarations have been filed by Mr. Lofts and Mr. Carter to the effect that Mr. Carter prepared the Applications in his own name at Mr. Lofts' request, both parties bemg unaware that a, Patent could not legally be granted to a 25 nominee of the actual .inventor. Mr. Carter has a financial interest in the dnvention and was thought to be the more qualified of the t~o to transact the business of obtaining the Patent. . The matter came before me on the issue whether the two Applications are wholly bad, or whether the irregularity can be cured by amendment. I have 30 heard Mr. Carter and Mr. Lofts and also the Agent who has been authorised to act for them since the irregular Applications were originally made. The case is rather a hard one, since it seems that the invention is of some value and, if the Applications are held to be void, the Applicants can obtain no 2 Q 404 No. 11.] REPORTS 9F PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIX. In the Matter of Two Applications for Patents by Edward Carter. prionity earlier than that of a third Application (No. 14228/27), which was filed on the 26th of May. Oertain disclosures of the invention were made to other persons between the 3rd of March and the 26th of May and it is at least doubtful whether a Patent bearing the latter date would be valid, unless it were restricted lin such a manner that the invention would be very inadequately protected. It is probable that, if the date of Application No. 11621/27, namely the 2nd of May, 1927, cannot be preserved, no effective protectio-n for the invention can be obtained. I am satisfied that the filing of these two Applications in Mr. Carter's name was due to ignorance of patent law and procedure and was done without intent to deceive the Comptroller or the public as to the origin of the invention. It is also in the Applicants' favour that, as soon as they sought professional aid and became aware of the irregularity in the two Applications, they took steps to inform the Comptroller fully as to the facts. Had they merely applied to add the name of Mr. Lofts as co-applicant wiithout amending the statement. of inventorship, the Applications would have proceeded without objection. But, although the case is a hard one, I am afraid that there is no course open to me but to hold that the two Applications in question are bad and cannot be cured by any sort of amendment. Oircumstances almost precisely .aimi lar occurred in a case which was submitted to the Law Officer in 1894, under the Section re-enacted in Section 74 of the Acts, for his Directions. In that case the Com-ptroller had considered the possibility of postdating the application to the date on which the facts were first disclosed to him, but Sir Charles Russell. held that the application by FitzGerald was not an application within the Statute, since the actual inventor, Aitken, was not'a;'ljaft'Y' to .it, and he held that it should herejected accordingly. The Law Officer's Direction given in that case is clearly binding upon me and I must refuse accordingly to allow the two Applications made by Mr. Carter to proceed. Before 10 15 20 25 THE ASSISTANT-OOMPTROLLER. February 9th, 1928. IN 5 THE MATTER OF AN ApPLICATION FOR A PATENT BY JAMES MORTON AND 30 Ornsas, Opposition to the grant of a Patent on ground (b) of Section 11 (1) of the Patents and Desiqn« Acts, 1907 to 1919. Applicants applied that the O,pposition be dismissed on the ground of non-compliance with Rule 42 of the Patents Rules, 1920, in that the Statement required by that Rule to accom.paau) the Notice of 35 Opposition did not so accompany it but was filed later.-Held that the Comptroller has power under Rule 111 to extend the time for filing a Statement under  (...truncated)