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EXAMINATION OF APPLICATIONS 62. The examination section (section 10) of the Patents, Designs, and Trade-marks Act, 1921-22, came in for considerable discussion during the course of our sittings, and was the object of a great deal of criticism. The section reads as follows : 10. Investigation as to novelty and subject-matter.—(l) Where an application for a patent has been made and a complete specification has been left, and it appears to the Commissioner that the invention is not new, or is fry any other reason not a proper subject-matter for a patent, the applicant shall be informed thereof; and the applicant may, within such time as may be prescribed, amend his specification, and the amended specification shall be investigated in like manner as the original specification. (2) If the Commissioner is satisfied that the invention is not new, or that it is for any other reason not a proper subject-matter for a patent, he may, after hearing the applicant, if desirous of being heard, and unless the objection is removed by amending the specification to the satisfaction of the Commissioner, either — (a) Refuse to accept the specification ; or (b) Accept the specification on condition that a reference to such prior specifications as he thinksfit be made in the specification by way of notice to the public. (3) An appeal shall lie from the decision of the Commissioner under this section to the Court, 63. In the first place, it is to be observed that this section is, and always has been,, very different from the examination sections in the various British Patents Acts which have from time to time been in force. The principle upon which the British practice is based may briefly be said to be an examination of British specifications for fifty years past —which has now been extended to include other publications—and if, as a result of such examination, the Examiner considers that the invention is wholly or in part anticipated, the applicant is called upon to file an amended specification with a view to overcoming the official objections. If the Examiner is of the opinion that there is no material difference between the invention disclosed in the specification under examination and the prior art, he will refuse to accept the application, but otherwise, as is. usually the case, he will proceed on an adequate disclaimer of the prior art being inserted as a warning to the public. In certain cases he will call for a specific reference to one or more prior specifications to be inserted. " Specific reference " means that there must be an admission of the prior art by reference to the numbers of any prior patentsreferred to by the Examiner. 64. In other words, the main purpose of the examination in Great Britain is to investigate the novelty of the invention as opposed to considering the subject-matter of the invention. The difference between " novelty" and " subject-matter" is well expressed by Lindley, L.J., in Gadd and Mason v. Mayor of Manchester, (9 Reports of Patent Cases, p. 516 (Court of Appeal)), at p. 525 : In considering subject-matter, novelty is assumed; the question is whether, assuming the invention to be new, it is one for which a patent can be granted. In considering novelty, the invention is assumed to be one for which a patent can be granted if new, and the question is whether on that assumption it is new. 65. It is pertinent to observe here that an important addition to the Comptroller's powers of examining as to novelty has been made by section 15 of the 1949 Act which reads: — 15. (1) If at any time after the acceptance of the complete specification filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the comptroller, otherwise than in consequence of proceedings in opposition to the grant under the last foregoing section, that the invention, so far as claimed in any claim of the complete specification, has been published in the United Kingdom before the priority date of the claim—(a) In any specification filed in pursuance of an application for a patent made in the United Kingdom and dated within fifty years next before the date of filing of -the applicant's complete specification; or (b) In any other document (not being a document of any class described in subsection (1) of section fifty of this Act), the Comptroller may refuse to grant the patent unless within such time as may be prescribed the complete specification is amended to his satisfaction. (2) An appeal shall lie from any decision of the Comptroller under this section.

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