Institute of Patent Agents v Lockwood

JurisdictionEngland & Wales
Judgment Date11 June 1894
Date11 June 1894
Docket NumberNo. 11.
CourtHouse of Lords
House of Lords

Ld. Chancellor (Herschell), Lord Watson, Lord Morris, Lord Russell of Killowen.

No. 11.
Institute of Patent-Agents

Statute—Rules—Ultra vires—Board of Trade—Jurisdiction—Title to sue—Patents, Designs, and Trade-Marks Acts, 1883 (46 and 47 Vict. c. 57), sec. 101, and 1888 (51 and 52 Vict. c. 50), sec. 1—Register of Patent-Agents' Rules, 1889.

The Patents, Designs, and Trade-Marks Act, 1883 (section 101), gave power to the Board of Trade ‘to make such general rules … as they think expedient, subject to the provisions of this Act, for regulating the practice of registration under this Act. … (3) General rules may be made under this section at any time after the passing of this Act, … and shall, subject as hereinafter mentioned, be of the same effect as if they were contained in this Act, and shall be judicially noticed.’ (4) Rules to be laid before both Houses of Parliament, ‘(5) Either House of Parliament may within forty days of the rules being laid before it annul such rules or any of them without prejudice to the validity of anything done under the rules in the meantime.’

The Patents, Designs, and Trade-Marks Act, 1888 (incorporated with the principal Act of 1883 by section 27), enacted, section 1, that ‘after 1st July 1889 a person shall not be entitled to describe himself as a patent-agent … unless he is registered as a patent-agent in pursuance of this Act.’ Subsec. (2) ‘The Board of Trade shall … make such general rules as are in the opinion of the Board required for giving effect to this section, and the provisions of section 101 of the principal Act shall apply to all rules so made as if they were made in pursuance of that section.’ By subsection (3) it was provided ‘that every person who proves, to the satisfaction of the Board of Trade, that prior to the passing of this Act he had been bona fide practising as a patent-agent, shall be entitled to be registered as a patent-agent in pursuance of this Act. (4) If any person knowingly describes himself as a patent-agent in contravention of this section, he shall be liable, on summary conviction, to a fine not exceeding £20.’

The Board of Trade made certain rules known as the ‘Register of Patent-Agents' Rules, 1889,’ which were laid before Parliament, and were not annulled. They provided a mode by which a patent-agent practising before the Act should be entered in the register of patent-agents on proving to the satisfaction of the Board of Trade that he had bona fide practised before the Act. They also provided for the payment of a fee of £5, 5s. on being entered on the register, and of an annual fee of £3, 3s. by all patent-agents on the register, and for erasure of the name from the register if these were not duly paid. These fees were employed for the purpose of keeping up a chartered institute of patent-agents incorporated by royal charter of 1891, and of providing and maintaining its library.

L., a patent-agent who had practised before 1888, and had been registered as a patent-agent, declined to pay those annual fees, maintaining that he had a statutory right to design himself as a patent-agent, and to practise as such. His name was thereupon removed from the register. In an action at the instance of the institute, and of three registered patent-agents against L. concluding for declarator that the defender was not entitled to describe himself as a patent-agent so long as he was not registered, and for interdict against him so describing himself, the Second Division assoilzied the defender on the ground that the rules imposing fees upon the defender were ultra vires of the Board of Trade, since they imposed, without statutory authority, a tax upon the defender as a condition of his statutory right to be on the register.

In an appeal the House recalled the judgment of absolvitor, and dismissed the action as incompetent on the ground that the statute in making the use of the designation ‘patent-agent’ by a person not registered a criminal offence and subjecting the person so using it to a penalty did not confer any civil right upon other persons to prevent him using it.

Opinions that the rules were intra vires of the Board of Trade.

Opinions (per the Lord Chancellor, Lord Watson, and Lord Russell of Kill-owen) that by section 101 of the Act of 1883 the rules formed part of the statute, and that it was not competent for any Court of law to entertain any question as to their validity.

Opinion (per Lord Morris) that the rules had only statutory effect in so far as they were made ‘for giving effect’ to section 1 of the Act of 1888, and that the question whether they were so might competently be raised in and determined by a Court of law.

(In the Court of Session, 26th January 1893, 20 R. 315.)

The pursuers appealed.

Lord Chancellor.—In this case the summons of the present appellants claims a declaration that the defender was not registered as a patent-agent in pursuance of the Patents, Designs, and Trade-Marks Act, 1888, and was not entitled to describe himself as a patent-agent; and, in the second place, that the defender ought and should be interdicted, prohibited, and discharged from describing himself as a patent-agent. The pursuers in the action were the Institute of Patent-Agents and three registered patent-agents practising in Glasgow. An interdict in the terms concluded for by the summons was granted by Lord Low, the Lord Ordinary, who came to the conclusion that the defender had held himself out as a patent-agent when not registered, and that he was therefore liable to be interdicted in the manner prayed.

When the case came before the Second Division of the Inner-House they recalled the interdict. They came to the conclusion that although the defender was not registered as a patent-agent, and had been holding himself out as such without being registered, his name had been improperly removed from the register by the Institute of Patent-Agents or the registrar appointed, and, consequently, that although not registered, he could not be treated as. having committed an offence by so holding himself out. The majority of the learned Judges came to the conclusion that the rule under which the registrar had purported to erase his name was invalid, being ultra vires although duly made by the Board of Trade with the formalities and in the manner prescribed by the Act. They came to this conclusion on somewhat different grounds, to which I shall have to call attention in a moment. I will first state to your Lordships what are the statutory provisions, and what are the rules made under them.

Provisions relating to the registration of Patent-Agents were first made in the year 1888 by the 1st section of the Patents, Designs, and Trade-Marks Act of that year, which provided that after the 1st of July 1889 a person should not be entitled to describe himself as a patent-agent unless registered as such in pursuance of the Act; and, next, that the Board of Trade should as soon as might be after the passing of the Act, and might from time to time, make such rules as were, in the opinion of the Board of Trade, required for giving effect to the section. It contains a further provision, which I shall have occasion to call attention to hereafter. It also provides that,—‘If any person knowingly describes himself as a patent-agent in contravention of this section, he shall be liable, on summary conviction, to a fine not exceeding twenty pounds.’

It will be observed that the enactment does not provide for the manner in which the register is to be formed, who is to be the registrar, the formalities requisite for registration, or any particulars in relation to it, but leaves it to the Board of Trade to make such general rules as in their opinion are required for giving effect to the section; the effect, of course, intended by the Legislature being the establishing a complete system of registration for patent-agents. The Board of Trade accordingly made a number of rules, and amongst them a rule requiring a certain fee to be paid on first registration, and an annual fee of three guineas so long as the person continued on the register, and providing further that nonpayment of the prescribed fees should be a ground for erasing the name from the register.

The Lord Ordinary considered that those rules were intra vires. The majority of the Inner-House appear to have thought that no rules with reference to fees could be intra vires, inasmuch as the power to impose fees was not expressly conferred. Lord Rutherfurd Clark, I gather, dissented from that view, and concurred with the Lord Ordinary in thinking that some fees might be properly imposed by rules. He said,—‘It is quite possible that fees may be exacted for the maintenance of the register, but the fees which are fixed by the rules are plainly in excess of what is required for that purpose, and it is equally plain that they were not imposed in order to carry that purpose into effect.’ I am unable to see upon the record any foundation for that conclusion. It seems to be suggested that there was an admission that they were larger than would be required for such a purpose, but no such admission has been made at the bar, nor does it appear on the record, and I cannot but think that there was some misapprehension as to there being an admission going to that extent.

I confess that it seems to me, if there were any power to impose fees at all, very difficult indeed to arrive at the conclusion, when the Board of Trade have sanctioned a particular fee, that it is within the province of a Court of law to canvass their conclusion, and to determine what is the legitimate amount at which the fee may be fixed. Such a department as the Board of Trade is very much more competent to determine a question of that description than Judges can possibly be, and it would be, I think, not an improvement upon any scheme of legislation which gave power to fix fees if those fees...

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