Re report Stirling Newall, and George Elliot and Richard Attwood Glass

[269] in re egbert stirling newall, and george elliot and richard attwood glass. April 30th, 1858. [S. C. 27 L. J. C. P. 337; 4 Jur. N. S. 562. Applied, Pern, v. Bibby, 1866, L. K. 2 Ch. 133; United Telephone Company v. Harrison, 1882, 21 Ch. D. 745. See Moseley \. Victoria Rubber Company, 1887, 57 L. T. 143. Eeferred to, Siddell v. Yickers, 1888-90, 39 Ch. D. 98; 15 App. Gas. 496; Nuttall v. Hargreaves, [18921 1 Ch. 34.] The office of the provisional specification, under the 6th section of the 15 & 16 Viet, c. 83, is, only to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out, as in the complete specification under s. 9.-A. was the inventor of "improvements in apparatus employed in laying down submarine electric telegraph wires." In the provisional specification filed pursuant to the 6th section of the 15 & 16 Viet. c. 83, the invention was thus described,-"The cable or rope containing the insulated wire or wires is passed round a cone, so that the cable in being drawn off the coil is prevented from kinking by means of the cone, and there is a cylinder on the outside which prevents the coil from shifting in its place." In the complete specification, after describing the invention in the same terms, the inventor proceeded to say,-" When the wire or cable is to be laid down, I place over the cone an apex or top which is conoidal or conical, and around this I suspend several rings of iron or other metal by means of cords, so as to admit of adjustment at various heights over the cone. The use of these rings is, to prevent the bight of the rope from flying out when going at a rapid speed, and the combination of these parts :of the apparatus prevents the wire or cable from running into kinks:" and the claim at the end was thus,-" What I claim as my invention is,-first, coiling the wire or cable round a cone,-second, the supports placed cylindrically outside the coil round the cone,-third, the use of rings in combination with the cone as described :"-Held, that the validity of the patent was not affected by the omission of all mention of the metal rings in the provisional specification.-And held, that the substitution by B. of a cylinder having a domed or hemispherical top, for the cone or the cone with the conoidal apex in A.'s apparatus,-A.'s apparatus and B.'s being used for the same purpose, and in nearly the same manner,-was evidence, and strong evidence, of infringement.-A necessary and unavoidable disclosure of the invention to others, if made in the course of mere experiments, is not such a publication as will avoid the subsequent grant of a patent,-though the same disclosure, if made in the course of a profitable use of an invention previously ascertained to be useful, would be a publication: but an experiment performed in the presence of others,, which not only turns out to be successful, but actually beneficial in the particular instance, is not necessarily a publication, so as to constitute a gift of the invention to the world.-A. had invented an improved apparatus for laying down submarine telegraph wires; and, after some unsatisfactory and indecisive excluded; and, consequently, where the order was made on Saturday, a notice of appeal given on Monday was held sufficient. In Bmvlins, App., The Overseers of West, Derby, Besp., 2 C. B. 72, the last day for giving notices of claims under the Eegistration of Voters Act, 6 & 7 Viet. c. 18, falling on a Sunday, a notice of claim served upon the overseer on that day was held good. 1088 IN RE NEWALL AND ELLIOT 4 C. B. (N. S.)270. experiments at the works on shore, having entered into a contract with government for laying^down a telegraphic cable in the Black Sea (the mode of doing it being left to his discretion), fitted a vessel with his improved apparatus, and used it successfully on that occasion, and immediately afterwards took out a patent for the invention:-Held, that what was done in the Black Sea, having been done merely by way of experiment, though productive of profit to A., did not amount to a publication, so as to preclude him from afterwards obtaining the protection of a patent for his invention. By a memorandum of agreement made and entered into the 9th 'of July, 1856, between Eobert Stirling Newall, of Gateshead-on-Tyne, wire-rope and submarine-telegraph manufacturer and contractor, of the one [270] part, and George Elliot and Richard Attwood Glass, of East Greenwich, in the county of Kent, wire-rope and submarine-telegraph manufacturers and contractors, of the other part,-reciting that "whereas, on the 14th of May, 1855, the said E. S. Newall obtained letters-patent of that date to be granted to him for an invention under the title-of,'improvements In apparatus employed in laying down submarine electric telegraph wires,' and such letters-patent were duly sealed on the 3rd of August, 1855, the said invention being protected by a provisional specification left by the said E. S. Newall at the office of the commissioners of patents, with his petition, on the said 14th of May, 1855, and a specification thereof was duly filed on the 14th of November, 1855, pursuant to the proviso for that purpose contained in the said letters-patent: And whereas the said G. Elliot and E. A. Glass have lately shipped on board the ship :' Propontis' a certain apparatus to be employed in laying down submarine electric telegraph wires between Newfoundland and the opposite coast of North America, which is alleged by the said B. S. Newall to be an infringement of the said letters-patent, but which is denied by the said G. Elliot and E. A. Glass; and the said G. Elliot and E. A. Glass allege that the said letters-patent are illegal and void: And whereas the said E. S. Newall having filed a bill in the court of Chancery with a view to an injunction being obtained, proceedings in the said suit were abandoned only upon the said G. [271] Elliot and E. A. Glass agreeing to refer the whole matter to arbitration, as after provided:" It was witnessed, "that, in pursuance of the said agreement, the said R. S. Newall did thereby, for himself, his executors and administrators, promise and agree with and to the said G. Elliot and E. A. Glass, their executors and administrators, and the said G. Elliot and R. A. Glass, did, and each of them did thereby, for himself and their and his executors and administrators, promise and agree to and with the said E. S. Newall, his executors and administrators, in manner following, that is to say, that he the said E. S. Newall, his executors and administrators, and they the said G. Elliot and E. A. Glass, their executors and administrators, should and would on his and their respective parts, save as thereinafter appeared, abide by and well and truly observe and keep the award, order, arbitrament, and determination of T. W., Esq., barrister-at-law, of and concerning the matters aforesaid, so that the said arbitrator, &c., &c. : And it was agreed, that, in case the arbitrator should be of opinion that there had been an infringement of the patent by the said G._ Elliot and E. A. Glass, he should give the said E. S. Newall such compensation as he should think the said G. Elliot and E. A. Glass ought to pay for the use of the apparatus then on board the ' Propontis,' in laying down such submarine telegraph wires as aforesaid : And it was agreed that the arbitrator should, if required by either party, state a special case, so as to enable the parties to take the opinion of one of the superior courts of law on any point of law: And it was thereby further agreed and declared between and by the said parties thereto, that the costs and expenses of the said submission and reference, and of the award to be made in pursuance thereof, should abide the event," &c., &c. The arbitrator having taken upon himself the bur-[272]-then of the reference, and having duly weighed and considered the several allegations of the said parties, and also the proofs, vouchers, documents, and other matters which had been given in evidence before him, made and published his award in writing of and concerning the matters referred to him, in manner following, that is to say, -he did declare that the said letters-patent were not illegal or void; and he did further award and adjudge that the defendants had infringed the said letters-patent; and he did further award, order, and direct that the defendants pay to the plaintiff the sum of 501. as a compensation for the use of the said apparatus on board the " Propontis " in laying down 4 C. B. (N. S.) 273. IN RE NEWALL AND ELLIOT 1089 the said submarine-telegraph wire : And, in further pursuance of the said agreement of reference, being required by the parties respectively, he did state the following case for the purpose of enabling the parties to take the opinion of the court of Common Pleas on the points of law therein stated :- The plaintiff carries on business at Gateshead, and, in the course of such business, has made and laid down several submarine cables for telegraphic purposes. The defendants carry on business at East Greenwich, and, in the course of such business, have also made and laid down submarine cables for telegraphic purposes. The plaintiff, on the 15th of December, 1854, entered into a contract with the British Government to lay down a telegraphic submarine cable between Varna and Balaklava, and Balaklava and Eupatoria, in the...