IN THE MATTER OF THE PATENT (NO. 141,047) OF WESTERN ELECTRIC CO. LD.

155 REPORTS OF PA1TMT, DESIGN, AND TRADE MARK CASES. Vol. XLVIII.] MARCH 25TH, 1931. [No.5. IN THE HIGH OOURT OF JUSTICF}-CHANCERY DIVISION. Before MR. JUSTICE LUXMOORE. June 2nd, 19th, and 24th, 1930. IN T'RE MATrE:R OF THE PATENT (No. 141,047) OF WESTERN ELECTRIC Co. LD. 5 Patent-AppZication by Originating Summons for an extension of the term of the Patent-Patent obtained 'Under Convention Applicatiorv-Application made under Temporary Rules at a date subsequent to the War-" Patentee as " such "-Application granted-Paten,ts and Designs Acts, 1907 and 1919, Sections 13, 18 (6), 91 and 9'3. A Patent. uias granted to W. E. Co. Ld. on a Convention Ap-plication made under the Temporary Iiules in March, 19'20. The convention date of the Patent was May, 1914. S. T. & ,0. Ld. (formerly W. E. ,00. Ld.) ap-plied by Origination Summons for an extension of the term of the Patent. A question 'was raised as to whether, there having been no patent actually in being du,ri'ng 15 the WaT, the Application could be entertained. 10 Held, that the object for which the discretion under Sub-section (6) was given required that the urorde of the Sub-section should, if possible, be construed generously; that the words " patentee as such" as used in the Patents, Designs and Trade Marks Act 1883 and in Section 18, sub-section (4) of the 20 Act of 1907 had always been considered as m,eaning successive patentees, and the remumerabiori to be' brought into account was the remuneration for the inve:ntion itself and WIQ;S not restricted to that earned under the Patent; that the definition of " the' patentee" in Section 93 had the effect of constituting an a,pplicant under a Conoenbion. Application, 'if he obtained a grant, patentee 25 as from the Convention Date; that under Section 13 a patetit nohen: granted was retrospective so far as ownership was concerned; that therefore the phrase " patentee as such" in sub-sectioti (6) of Section 18 covered, not only persons uiho uiere oumers of a, patent granted during or prior to the War, but also persons entitled to apply for a patent which, when' granted, would bear a date 30 anterior to or dur1.:ng the War period, but. that in such cases an applicant N 156 No.5.] REPORTS 'OF· PATENT,. DESIGN, AND TRADE MARK CASES,. [Vol. XLVIII. In the Matter of the Pa,~ent (No. 141,047) of Western Electric Co. u: jor an extension must sa,tisjy the Cot;urt that the delay in making the applicat·ion was due to circumstances a,rising out of theWar and not to' other considerations; that the delay i'n the present case was due to the .A. pplicant Cornpany having been engaged on Gouernmene service; and that an extension oj jour and a half years should be granted. 5 Letters Patent, No. 141,047, dated the 18th of May, 1914, were granted to Western Electric Co. Ld., Assignees of Edwin Henry Colpitts, of New Jersey, United States of America, on a Convention Application dated the 30th of March, 1920, in respect of an invention of "Improvements relating to " Signalling by High-frequency Ourrents, as in Wireless Telephony." On 10 the 15th of November, 1929, Standard Telephones and Cables Ld, (formerly called Western Electric Co. Ld.) applied by Originating Summons for an extension of the term of the Patent. An affidavit in support of the Summons was made by Edwa.rd Stanley Byng (Managing Director of the Applicant ,Oampany) from which it appeared 15 '(inter alia) that the inventor E. H. Colpitts was an employee of the Western .Electric Comrpany of Ohicago, which company was entitled under the terms of the employment of E. H. Colpitts to the benefit of his inventions including the invention the subject of the Application; that the business of the .Western Electric Company of Ohicago outside the United States of America was con- 20 ducted by means of subsidiary companies, and that the Western Electric (."'0. Ld. had until. 19'25 been one of such subsidiary companies, and that, in accordance with the practice of the American Oompany, the patented invention had in May, 1914, been communicated to the Western Electric Uo, Ld: who had applied for the Patent; that in 1925 the name of the W estern Electric 25 00. Ld. had changed its name to Standard Telephones and Cables Ld.; that the patented invention was one of considerable importance; that within a few weeks of the outbreak of war the Applicant Oompany had commenced to manufacture munitions; that on the 7th of September, 1915, the Applicant Company had become a controlled establishment, and that from that date 30 until December, 1918, the only work that had been carried out in connection with telephones (other than munition work) had been such as had been regarded by the Government as essential for the maintenance of installations then existing or under construction; that on the 5th of November, 1919, the Applicant Company had ceased to be a controlled establishment, hut that owing to the 35 disorganisation of the Company's staff and plant caused by their employment on munition work, normal development could not be resumed jiill 1920. 'I'he Summons came before the Court on the 2nd of June, 1930, and was adjourned in order that the effect of the lapse of time between the date of the Patent and the date of the application might be considered. 40 The Summons agwin came before the Court on the 19th of June" 1930. J. Whitehead K.C. and D. H .. Corsellie (instructed by Brietoios Cooke and Garpmael) appeared for the Applicants ; Stafford Crossman (instructed by the l?olic1;tor to the Board of Trade) appeared for the Comptroller-General. Whitehead K.C.~ for the Applicants.-The Patent was obtained under the 45 Convention. The Convention date of the Patent is the 18th of May, 1914, and the date of the .application for the Patent under the Convention is the 157 Vol. XLVIII.] :nEPORTS OF PATENT, D:&SIGN, AND TRADf; )lARK CASES. [No.5. In the Matter of the Patent (No. 141,047) of Western Electric Go. L,d:_ 30th ·of March, 1920. The Application was made under the Rules made under the Patents, Designs and Trade Marks (Temporary Rules) Act, 1914. When the Summons was previously before the Court it was said that looking at Bubsection (6), and bearing in mind the dates, it looked as if there was prima ~ facie a fundamental difficulty in the ~ay of the Appldcante. I submit that it is nec;essary here to bear in mind two things, namely, the priority rights of an applicant, for a patent and the monopoly rlights of a patentee, i.e., an applicant may begin to exploit his invention on the date when his application is acoepted, but he does not obtain his full rights as patentee until a 10 patent ds granted. 'I'he words in sub-section (6) which cause the difficulty are tc patentee as such." These words occur in Section 25 (4) of the Act of 1883 and are repeated in sub-section (4) of the present Section 18, and have, always received the same construction. The same words cannot be given different meanings in the same Se,ction.The Applicants have to (...truncated)