Centenary of the enactment of the United Kingdom’s Patents and Designs Act 1907

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Centenary of the enactment of the United Kingdom’s Patents and Designs Act 1907 Stephen Adams Magister Ltd., Crown House, 231 Kings Road, Reading RG1 4LS, UK Abstract The UK Patents and Designs Act 1907 was especially significant in the historical development of the patent system in the UK. The article notes that the Act repealed all previous legislation, except the Statute of Monopolies of 1623. It introduced new provisions for adequacy of disclosure (e.g. the power to require samples in support of chemical patent applications), prior claiming, term extension in cases of proven inadequate remuneration, compulsory licences or revocation in cases of non-working in the UK, innocent infringe- ment, and Crown use. The author provides much information on the passage of the Bill that became this Act, including the politics and personalities associated with the Act and the problems giving rise to the changes. Ó 2007 Published by Elsevier Ltd. Keywords: UK; Patents Act 1907; Historical; Statute of Monopolies; Disclosure; Prior claiming; Compulsory licence; Term extension; Innocent infrin- gement; Crown use 1. Background to the Act The Victorian age in Britain saw perhaps more revision of patent law than the whole of the preceding two centu- ries, since the passage of the Statute of Monopolies in 1623 [1]. The United Kingdom Patent Office was created in 1852 [2], and the same law introduced a unitary patent system, abolishing separate titles for England, Scotland and Ireland. A further major revision came in 1883 [3] to coincide with the passage of the International Convention on the Protection of Industrial Property (the Paris Conven- tion), and allowing for the new concept of ‘foreign prior- ity’. Further revisions to British law came in 1885, 1886 and 1888. By the time Victoria’s son acceded to the throne as Edward VII in 1901, the system was slowly evolving into what we would recognise today as a modern patent system. Governments in the early Edwardian period seemed set to continue the Victorian trend, with further revisions of the law in both 1901 and 1902. A significant step towards modern practice came with the Patents Act 1902 [4], which introduced a requirement for a limited novelty search (although actual search work did not begin until after 1st January 1905, when that part of the Act came into effect). Novelty was defined as the preceding 50-year’s worth of UK patents, and this led to a need for a better search tool. A great deal of early work on organising (and indeed, num- bering) English patents back to 1617 had been carried out by Bennet Woodcroft, the splendidly-entitled Superinten- dent of Specifications and Indexes during the 1850s, but following the passage of the 1902 Act, work continued on preparing a full set of ‘abridgements’, consisting of extensive abstracts written by the patent examiners and classified according the UK classification system. By 1905, abridgements had been prepared and classified for the period from 1855 to 1900, and by 1907 the series was effectively complete. 2. Passage of the 1907 Act Hence, by the time the Patents and Designs Act 1907 [5] came into force on 1st January 1908, the stage was set for a modern British patents system with many of the basic 0172-2190/$ - see front matter Ó 2007 Published by Elsevier Ltd. doi:10.1016/j.wpi.2007.03.006 E-mail address: [email protected] www.elsevier.com/locate/worpatin World Patent Information 29 (2007) 363–368

Transcript of Centenary of the enactment of the United Kingdom’s Patents and Designs Act 1907

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www.elsevier.com/locate/worpatin

World Patent Information 29 (2007) 363–368

Centenary of the enactment of the United Kingdom’sPatents and Designs Act 1907

Stephen Adams

Magister Ltd., Crown House, 231 Kings Road, Reading RG1 4LS, UK

Abstract

The UK Patents and Designs Act 1907 was especially significant in the historical development of the patent system in the UK. Thearticle notes that the Act repealed all previous legislation, except the Statute of Monopolies of 1623. It introduced new provisions foradequacy of disclosure (e.g. the power to require samples in support of chemical patent applications), prior claiming, term extensionin cases of proven inadequate remuneration, compulsory licences or revocation in cases of non-working in the UK, innocent infringe-ment, and Crown use. The author provides much information on the passage of the Bill that became this Act, including the politics andpersonalities associated with the Act and the problems giving rise to the changes.� 2007 Published by Elsevier Ltd.

Keywords: UK; Patents Act 1907; Historical; Statute of Monopolies; Disclosure; Prior claiming; Compulsory licence; Term extension; Innocent infrin-gement; Crown use

1. Background to the Act

The Victorian age in Britain saw perhaps more revisionof patent law than the whole of the preceding two centu-ries, since the passage of the Statute of Monopolies in1623 [1]. The United Kingdom Patent Office was createdin 1852 [2], and the same law introduced a unitary patentsystem, abolishing separate titles for England, Scotlandand Ireland. A further major revision came in 1883 [3] tocoincide with the passage of the International Conventionon the Protection of Industrial Property (the Paris Conven-tion), and allowing for the new concept of ‘foreign prior-ity’. Further revisions to British law came in 1885, 1886and 1888. By the time Victoria’s son acceded to the throneas Edward VII in 1901, the system was slowly evolving intowhat we would recognise today as a modern patent system.

Governments in the early Edwardian period seemed setto continue the Victorian trend, with further revisions ofthe law in both 1901 and 1902. A significant step towardsmodern practice came with the Patents Act 1902 [4], which

0172-2190/$ - see front matter � 2007 Published by Elsevier Ltd.

doi:10.1016/j.wpi.2007.03.006

E-mail address: [email protected]

introduced a requirement for a limited novelty search(although actual search work did not begin until after 1stJanuary 1905, when that part of the Act came into effect).Novelty was defined as the preceding 50-year’s worth ofUK patents, and this led to a need for a better search tool.A great deal of early work on organising (and indeed, num-bering) English patents back to 1617 had been carried outby Bennet Woodcroft, the splendidly-entitled Superinten-dent of Specifications and Indexes during the 1850s, butfollowing the passage of the 1902 Act, work continuedon preparing a full set of ‘abridgements’, consisting ofextensive abstracts written by the patent examiners andclassified according the UK classification system. By1905, abridgements had been prepared and classified forthe period from 1855 to 1900, and by 1907 the series waseffectively complete.

2. Passage of the 1907 Act

Hence, by the time the Patents and Designs Act 1907 [5]came into force on 1st January 1908, the stage was set for amodern British patents system with many of the basic

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features of today. The new Act was technically a consolida-tion Act, repealing all previous legislation apart from theStatute of Monopolies, and remained the primary legisla-tion until its replacement by the Patents Act 1949.Although not unique in the extent to which it modifiedthe previous law to address perceived deficiencies in theoperation of the patents system, it remains an importantstep on the road towards modern British law.

Compared with some recent intellectual property scru-tiny, the Bill which became the 1907 Act had a swift pas-sage. It was introduced in the House of Commons byDavid Lloyd George, the President of the Board of Trade,on 19th March 1907, and entered law by Royal Assent on28th August the same year.

Lloyd George had been a Member of Parliament since1890, for the Welsh constituency of Caernarvon Boroughs,and was to go on to a distinguished career in Parliament.He was well-respected as an industrial mediator duringhis time at the Board of Trade, and was promoted to Chan-cellor of the Exchequer (Finance Minister) in the firstAsquith administration of 1908. In this role, he introducedthe first national old-age pension scheme in 1909, and whenthe First World War broke out, he was largely responsiblefor putting British industry onto a war footing as Ministerof Munitions. When Asquith’s coalition collapsed, hebecame Prime Minister in 1916 and remained in that officeuntil 1922. Always a colourful character and a proudWelshman, he is said to have avoided interception of histelephone calls to certain military advisors during the FirstWorld War by the simple expedient of speaking in hisnative Welsh tongue, and certainly his eldest son Richard,posted on the Western Front, evaded censorship of his let-ters home by the same process.

The process of passing the consolidation Act was some-what tortuous. The first stage consisted of introducing aBill for a number of new legal measures, as amendmentsto the existing substantive law of 1883. This was concludedin the form of the Patents and Designs (Amendment) Act1907 [6], which entered into force on 1st January 1908.Simultaneously with the passage of this amending Bill, asecond Bill was passed through Parliament which repealedall previous legislation, including this latest Act, on thesame day (1st January 1908) and consolidated the wholebody of law into a new single Act, with consequent re-num-bering of the sections. The parallel track system makes fol-lowing the debates in the parliamentary record somethingof a tortuous path, as each time one Bill is amended, itforces an amendment upon its twin.

The principal motivations for new law are best seen inthe record of the introduction of the Bill by Lloyd George,and the House of Commons debate at Second Reading,approximately one month later, in April 1907.

The two issues which most exercised Lloyd George werethe abuse of chemical patents and unfair licence conditions.Of particular concern in relation to chemical patents wasthe behaviour of the rapidly-developing German syntheticdyestuffs companies. It was alleged that they were fre-

quently obtaining patents in the United Kingdom butdeliberately not working them. During the life of the pat-ent, they would build up their manufacturing expertise inother countries, where the product was not patented, andbe well placed to enter the United Kingdom and set up abusiness immediately upon expiry of the British patent.Competing British companies, which had been preventedby the patent from experimenting in the area, then foundthemselves several years behind in the experience necessaryto work the invention. In order to remedy this, a newregime requiring compulsory working (on pain of revoca-tion) was introduced by the new Bill. Around the time ofthe passage of the Bill, there was substantial discussionabout the impact of this provision, and not a little criticismlater [7,8]. To put the problem into context, the 1908 statis-tics of patent grants in the United Kingdom (derived fromthe Annual Report for 1909) showed that approximately46% of grants were to non-UK residents, of which the mostprominent were from the United States and Germany (32%of non-resident grants).

A related matter on chemical patents was the belief thatthey were being granted even when the invention was delib-erately described in ‘‘obscure and vague terms’’ (LloydGeorge, Ref. [9]). This was not just an issue of over-zealousgeneric disclosure, but concern that patents were beinggranted for processes which manifestly failed to yield theproducts claimed. Subsequent applicants who tried to filea patent in the same technical field often found consider-able difficulty in understanding the subject matter coveredby the earlier broad patent, which thus became a weaponto prevent all subsequent refinements. In his intervention,J.D. White, the Member of Parliament (M.P.) for Dum-bartonshire referred to these ‘paper anticipations’ [10], per-haps foreshadowing some of the later debate on Markushdisclosures, although Markush’s own patents would notbe granted for another decade or more. Althoughaddressed in the Act under s. 2(5), discussed below, a lateramendment in 1919 rendered the provision redundant, inthat it prohibited compound per se claims [11], which werenot reintroduced until 1949.

Lloyd George’s concern on licence conditions wasfounded on a notorious case affecting the British bootand shoe industry. An American syndicate had apparentlypatented an improvement in boot-manufacturing and, inthe course of licensing their patent to UK firms, hadimposed conditions prohibiting the use of any machineryother than their own production equipment for a periodof twenty years – at a time when the term of the patentwas only 14 years. The Bill thus sought to find a balancebetween the independence of commercial companies tomake contracts between themselves on whatever termscould be agreed, and the need to ensure that licencees ofpatents were not unfairly bound and unable to developincremental improvements of their own.

James Dundas White, M.P. for Dumbartonshire wasclearly an active and interested party in the passage of theBill, despite being a new arrival in the House of

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Commons, having been elected as a Liberal Member for thefirst time in the general election of 1906.1 As well as his con-tribution to the debate on disclosure, he took the unusualstep of introducing an amendment at Third Reading [12],which the Government accepted and subsequently becames. 33, addressing the ‘innocent infringer’ question. Mr.White’s earlier intervention during the Second Reading[13] provides a background case as to why he was concernedabout this particular aspect. He illustrated the problem ofproduct marking by noting that a bottle of ginger ale wasbeing legitimately marked ‘Patented’ under the existinglaw, when the technology related neither to the bottle norits contents, but a separate piece of machinery for aeratingthe drink. The new section of the Act provided that meremarking as ‘Patented’, in the absence of the number andyear of the patent, did not constitute adequate notice tothe public of the existence of the patent and hence providedan absolute defence against charges of infringement.

By the early 20th century, the United Kingdom hadalready passed through the industrial revolution and theconsequent explosion of patent specifications, and patentswere no longer regarded as a royal indulgence granted topliable courtiers. It is interesting to note that s. 29 of the1907 Act maintained a (relatively) new attitude towardsthe person of the Sovereign, and consequently of Crownuse, by stating that

‘‘a patent shall have to all intents the like effect asagainst His Majesty the King as it has against a subject.’’

This attitude, requiring right recompense to inventorsfor the national use of patented technology even in extremecircumstances, was underlined by the terms of reference tothe two Royal Commissions on Awards to Inventors heldafter World War I (Sargent Commission) and World WarII (the Cohen Commission).

3. The new provisions of the 1907 Act

3.1. Supporting disclosure; grounds for refusal of grant

The administration of patents by a unified United King-dom office was established in 1852, but it was not until the1907 Act that the Office was authorised to appoint aComptroller-General; previously the chief executive hadtechnically been the Clerk to the Commissioners of Pat-ents.2 One characteristic of the new Act was the way in

1 The then-junior Member for Sedgefield, one Tony Blair, came to theattention of the intellectual property community in a similar fashion, forhis grasp of issues during the Standing Committee discussions on whatbecame the Copyright, Designs and Patents Act 1988. However, J.D.White only served for one Parliament, until 1910.

2 ‘Commissioners’ is in the plural because, at this time, letters patentwere still issued for many more reasons than simply records of invention,and the senior legal officials of the United Kingdom were each aCommissioner of Patents in their own right, including the Lord Chancel-lor, the Master of the Rolls, Attorney-General for England and Solicitor-General for England, plus their counterparts in Scotland and Ireland.

which it gave substantial new powers to the Patent Office,in the person of the Comptroller, rather than leaving allmatters relating to patentability in the hands of the Courts.This was highly controversial at the time.

Up until 1907, the Patent Office had in effect no powersto refuse the grant of a patent – the best that they could dowas to insist that the applicant amended their patent and/or cited in their own specification any prior art which hadbeen identified under the 1905 search requirements. Patentswere effectively granted without any presumption of valid-ity. Two new powers were brought in by the 1907 Act, oneaimed at chemical inventions and the other applicableacross all subject matter.

Firstly, under the new Act, Section 2(5) states that:

‘‘Where the invention. . .is a chemical invention, suchtypical samples and specimens as may be prescribedshall. . .be furnished before the acceptance of the com-plete specification.’’

This gave the Comptroller the discretion to requireadditional proof from chemical applicants, that their syn-thetic method actually worked and produced the com-pounds claimed. Failure to provide samples wouldprevent the grant of the patent. In a commentary on thenew law, Frost (Ref. [14], p. 13) refers to this as beingdesigned to ‘‘prevent the grant of ‘prophetic’ chemistry’’by enabling the Comptroller ‘‘to be satisfied that thealleged invention will really produce the chemical bodiesstated.’’ Much was made during the parliamentary debatesconcerning the burden that this would place upon appli-cants, but the Government stood firm on the issue,although it was noted that the power remained at the dis-cretion of the Comptroller and would not be automaticallyinvoked for all applications.

Secondly, the search requirements from the 1902 Actwere reiterated at s. 7 of the new Act, but s. 1(2) of the ear-lier Act was expanded at s. 7(4) to give the Comptroller anew power to refuse grant to cases in which the inventionhad previously been

‘‘wholly and specifically claimed in specifications towhich his search had extended.’’

Unlike the s. 2(5) powers, this relates to all applications,not just chemical ones. The words ‘specifically claimed’ areto be taken literally – prior disclosure in the body of a pat-ent specification remained grounds under which the PatentOffice could require amendment of an application, but onlysubject matter which had been previously claimed could beused under this section of the Act to refuse grant. This pro-vision gave a new importance to the patentability search.As noted above, the Patent Office search was limited tothe previous 50 years of UK patents only. This change inprocedure was a first move towards the Patent Office mak-ing decisions on patentability, which had previously beenthe sole domain of the Courts. As might be expected, it

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3 Frost [14] cites the legal maxim of cujus est dare, ejus est disponere (Hewho gives anything, can also direct how the gift is to be used) in support ofthis view.

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was widely criticised by the House of Lords and the judi-ciary, who did not feel that such decisions should be inthe hands of a mere government functionary. The Marquisof Salisbury (himself a former Prime Minister) noted [15]that a number of eminent scientists, including Lord Kelvin,were opposed to the change and had been moved to thatultimate British sanction, sending a letter to The Times.

In the course of modifying the section on examination,the Patent Office was also empowered to require that anapplication be divided, leading to perhaps the first compli-cation in what came to be known as a patent family.

3.2. Term extension

Until the 1907 Act, the only way in which extensionscould be obtained was by a private Act of parliament,which perhaps takes the idea of sui generis somewhat toan extreme. The chances of success were as much depen-dent upon patronage and effective lobbying technique asthey were upon the merits of the case.

The new Act, at s. 18, allowed for term extension incases of inadequate remuneration, subject in some casesto restrictions on scope – this is remarkably like someaspects of the present-day supplementary protection certif-icate system operated within the EU. Generally, petitionsfor term extension were not restricted to patents on certainsubject matter – any patent for which the holder couldshow lack of remuneration could in theory be grantedextension. In an effort to make the procedure less costly,the Act moved the proceedings from the Privy Council intothe High Court. Note that the Patent Office was notdirectly involved at this time in extension petitions. Theapplicant was still required to produce substantial evidenceof poor returns: at s. 18(4), it was stated that:

‘‘The Court. . .shall have regard to the nature and meritsof the invention in relation to the public, to the profitsmade by the patentee as such, and to all the circum-stances of the case. . .’’

which sounds like a recipe for extended court hearings andsubsequent high legal costs!

If the petitioner was successful, the normal extensionwas for 7 years, exceptionally for 14 (at a time when thenormal term remained at 14 years).

3.3. Compulsory licences and compulsory working

Perhaps the most controversial of the new Act’s provi-sions related to Sections 24–27. These provided for a con-tinuation of the right to apply for a compulsory licence,present in earlier Acts, but also for new grounds forrevocation.

The 1883 Act had first introduced the idea of compul-sory licences, but Frost [14] notes that only four applica-tions for these had been made up to 1907, and none atall under the later 1902 Act.

Section 24 of the Act provided for two criteria whichmust be fulfilled for compulsory licences to be granted;firstly, that the patent was not being worked in the UnitedKingdom, and that satisfactory explanations of the failureto do so were not forthcoming, and secondly that thedemand for the patented article in the United Kingdomwas not being met to an adequate extent and on reasonableterms. As expected, there was much discussion of whatconstituted ‘reasonable’. The Act tried to help by statingat s. 24(5)(b) that the reasonable requirements of the Brit-ish public were not being satisfied:

‘‘if any trade or industry in the United Kingdom isunfairly prejudiced by the conditions attached by a pat-entee. . .to the purchase, hire, or use of the patented arti-cle or to the using or working of the patented process.’’

However, such a criterion is highly subjective, and apaper from the 1930s [16] noted that

‘‘The Board of Trade originally, then subsequently theJudicial Committee of the Privy Council, and now theComptroller of the Patent Office (subject to appeal tothe Courts) have in consequence had thrown upon themthe duty of deciding, in cases in which the law confers amonopoly upon an inventor in order that by restrictingthe use of his invention he may derive an income,whether the output is ‘adequate’ and the terms‘reasonable’.’’

and commented wryly ‘‘Possibly those responsible for thisformula might be satisfied if the assessor contrived to in-duce both the full competitive output and the maximummonopoly profit at the same time.’’

This was another example of powers moving away fromthe Courts and into the hands of the Patent Office itself, atleast in the first instance. Much was made of the ‘free-trade’credentials of the Liberal government in introducing thisprovision into the bill – the proposal was seen as a hiddenrestriction on free trade, and it was argued that a patenteeshould have the right to introduce any provision, howeverrestrictive, into licence agreements entered into for theworking of their patent.3 However, the plight of the North-amptonshire boot manufacturers, cited by Lloyd George ina number of his interventions during the passage of the Bill,was clearly a major motivation in this part of thelegislation.

Further specific matters relating to licences were intro-duced in s. 38, which limited the control which a patentowner could exert through licence conditions. This sectionmade it unlawful for a patent owner to insert conditionsinto any licence agreement which would prohibit thelicence holder from using articles supplied by a third party.

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It also prevented the patent holder from requiring thelicence holder to purchase any additional unpatented mate-rials, required for the working of the invention, from thepatent holder.

The wholly new provision came in s. 27 of the Act,which allowed that, dating from four years after grant,any person could apply to the Comptroller for the revoca-tion of a patent on the ground that the patented article orprocess was manufactured or carried on exclusively ormainly outside the United Kingdom. Unlike some otherprovisions, this section was applicable to all patents inforce, not just those granted after 1908. The insertion ofthis section – aimed largely at the alleged abuse of dyestuffpatents by German industry – resulted in the establishmentof many factories in the United Kingdom; indeed, in thecourse of research for this paper, the author located a web-site on the history of Wigan, which proudly lists the factthat on 10th December 1908, a conference was held in thattown ‘‘for the purpose of ascertaining suitable sites for newindustries in view of the Patents and Designs Act 1907’’[17]. A report in The Times from early 1908 [18] reinforcesthis view that the new law had the effect desired by nationalChambers of Commerce, and that foreign patent ownerswere beginning to make preparations to work their inven-tions within the United Kingdom. However, a contraryopinion was voiced in a special article by ‘‘An EngineeringCorrespondent’’ in the same newspaper a few days later[19] who stated that these facts did not ‘‘prove much’’and that tax and fiscal barriers, together with local skillshortages, would still prove barriers to the expansion ofthe British chemical industry. The author notes that theattempt to ‘‘enforce the growth of such industries in thiscountry is to be encouraged, even though the foreignermay have to be planted here to carry them out’’.

3.4. ‘Innocent infringer’ provisions

As noted above, the motivation for s. 33, which wasintroduced into the Bill relatively late in the parliamentaryprocedure, was to provide a defence against claims ofinfringement based on product marking. There was vigor-ous discussion of this in Parliament, and one concessionwas that the provision was not made retro-active i.e. it onlyapplied to patents obtained after 1st January 1908. In seek-ing to provide the necessary protection, the section wasframed in the following terms:

‘‘A patentee shall not be entitled to recover any damagesin respect of any infringement. . .from any defendantwho proves that at the date of the infringement he wasnot aware. . .of the existence of the patent.’’

This clause was modified such that the public was notdeemed to have been notified of the existence of the patentby product marking, unless such marking included boththe year and number of the patent. This provision is clearlydrawn from the example cited in Parliament by J.D. White

[10]. Nonetheless, it remained an extraordinarily widedefence, and one which could probably not be relied uponin the present day, with the proliferation of the internet andaccess to patent information. Frost (Ref. [14], p. 56) com-ments that ‘‘ignorance, coupled with absence of reasonablemeans of knowledge, is a complete defence to the claim forpayment of damages’’ under this new section.

As a side issue, one wonders just how influential bottlesof carbonated drink can be in the corridors of power – thepresent author recalls that a seminal case on negligence andproduct liability in Britain [20] is otherwise known as ‘thesnail in the ginger beer bottle’.

3.5. Miscellaneous provisions

The requirements for national security clearance of pat-ent applications were introduced by this Act, and are stillrequired today, although the related limitation on Britishnationals filing abroad first was greatly reduced by the Pat-ents Act 2004. In terms of its geographic scope, the 1907Act departed from the practice of the earlier 1852 law,and was not automatically extended to the ChannelIslands, although the Isle of Man was included.

Once the passage of the Bill was completed and it hadentered into force, the United Kingdom was left with anew Act, having repealed almost all previous legislationand consolidating it into a new definitive text. However,the ancient heritage of the British patent system remainedwithin the new legislation, at s. 93, containing the definitions.The word ‘invention’ is defined in the following terms:

‘‘‘Invention’ means any manner of new manufacture thesubject of letters patent and grant of privilege within sec-tion six of the Statute of Monopolies (that is, the Act ofthe twenty-first year of the reign of King James the First,chapter three, intituled ‘An Act concerning monopoliesand dispensation with penal laws and the forfeiturethereof’) and includes an alleged invention.’’

4. Conclusions

It has been estimated by contemporary authors such asFrost [14] that about 98% of the new Act was old law, andthat only 2% introduced new powers. However, that smallpercentage resulted in a significant shift in responsibilityaway from the Courts and into the remit of the Patent Officeitself.

In some senses, the 1907 Act is clearly a creature of itstime. The 1911 edition of Encyclopaedia Britannica assuresus that the Act ‘‘requires an application to be made in aprescribed form (the forms and stamps are on sale at all

postal money order offices in the United Kingdom), and leftat or sent by post to the patent office in the prescribed man-ner.’’ One wonders what the reaction of the typical ruralsub-postmaster would be, if approached to provide suchdocuments today!

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However, it has also carried over its impact to the pres-ent. The definition of protectable subject matter in the 1907Act, itself based largely on the 1883 legislation, was perpet-uated through a 1926 Patent Office ruling [21], whichremained for many years a fundamental basis for distin-guishing between patentable aspects of board games (suchas the board and movable pieces) and a ‘‘scheme, rule ormethod for. . .playing a game or doing business’’ which isinherently non-patentable under current legislation [22].The 1926 Ruling has been used by patent applicants toargue that it is not necessary to prove a ‘technical effect’in order to obtain patents on computer-based games, orfor other computer-implemented inventions. It was notuntil nearly a century afterwards, in a Patents Court judge-ment of November 2005 [23], that this legacy from 1907was set aside.

References

[1] 21 Jac. 1, c. 3.

[2] Patent Law Amendment Act 1852, 15&16 Vict., c. 83.

[3] Patents, Designs and Trade Marks Act 1883, 46&47 Vict., c. 57.

[4] Patents Act 1902, 2 Edw. 7, c. 34.

[5] Patents and Designs Act 1907, 7 Edw. 7, c. 29.

[6] 7 Edw. 7, c. 28.

[7] Schuster George. The Patents and Designs Act 1907. Economic J

1909;19:538–51.

[8] Hardingham CGM, Lunge E. The Patents and Designs Act 1907

(Correspondence). The Times, 13th May 1908, p. 3, col. D–E.

[9] Hansard (Commons), 19th March 1907, col. 685.

[10] Hansard (Commons), 17th April 1907, col. 1030.

[11] Patents & Designs Act 1919 (9&10 Geo 5, c. 80), section 11

introduced a new section 38A into the 1907 Act.

[12] Hansard (Commons), 9th August 1907, col. 649.

[13] Hansard (Commons), 17th April 1907, col. 1034.

[14] Frost R. The Patents and Designs Act 1907, 7 Edw. 7, ch. 29 with an

appendix of the Rules, etc. London: Stevens & Haynes; 1908.

[15] Hansard (Lords), 20th August 1907, col. 426.

[16] Plant Arnold. The economic theory concerning patents for inven-

tions. Economica 1934;1:30–51.

[17] Anon. <http://wiganworld.co.uk/stuff/chronology7.php?opt=chrono

&yr=1908>.

[18] Anon. Report from Birmingham Chamber of Commerce, The Times,

17th April 1908, p. 2 col. D.

[19] Engineering Correspondent. The Patents and Designs Act. The

Times, 22nd April 1908, p. 13 col. B–C.

[20] Donoghue v Stephenson [1932] AC 562, HL(Sc).

[21] Official Ruling 1926(A) [1926] 43 RPC, Appendix p. (i).

[22] Patents Act 1977. s. 1(2).

[23] Shopalotto.com Limited’s Patent Application [2005] EWHC 2416

(Pat).

Stephen Adams is founder and managing directorof Magister Ltd., an information and trainingconsultancy specialising in patents documenta-tion. He trained as a chemist at the University ofBristol, UK, followed by a Masters degree inInformation Science at City University, London.He has worked in technical information since1981, latterly with Zeneca Agrochemicals (nowSyngenta) as their principal patent searcher until1997. He has also been the editor of ‘‘Interna-tional Packaging Abstracts’’, a technical searcher

in the Ministry of Agriculture, Fisheries & Food in the UK, and Chair ofthe Patent and Trade Mark Group.