CHAPTER VII. INJUNCTIONS TO RESTRAIN THE INFRINGEMENT OF PATENTS. Chap. VII. SECTION 1.-PRINCIPLES ON WHICH THE COURT RESTRAINS THE INFRINGEMENT OF PATENTS. THE jurisdiction of the Court in restraining by interlocutory injunction the infringement of patent rights, is in aid of the legal right. The Court proceeds on the assumption that the person who makes the application has the legal right which he asserts, but needs the aid of the Court for the purpose of protecting his property from damage pending the trial of the legal right (a). It seems to have been formerly the opinion that a Court of equity would not interfere by injunction to protect a patent right, until the right had been established at law. Gradually, however, the Court of Chancery abandoned this position (b), and since the Judicature Act the question has ceased to be one of practical importance. But the reluctance of the Court of Chancery to interfere in cases of disputed patent right had its justification in reason as well as in the maxim of equity. We find accordingly that, while asserting its right to act independently of references to law, the Court of Chancery still continued to display its original caution in granting injunctions (c). Under the Patents Act, 1883, ss. 13, 15, a patentee cannot take proceedings in respect of infringements committed before (a) Bacon v. Jones, 4 M. & C. 436. (b) Universities of Oxford and Cambridge v. Richardson, 6 Yes. 689. (c) See post, p. 263. INJUNCTIONS TO RESTRAIN THE INFRINGEMENT OF PATENTS. the publication of his complete specification and until letters patent have actually been granted to him; and if any proceedings shall be taken in respect of an infringement committed after a failure to make any payment within the prescribed time, the Court may refuse to award damages in respect of such infringement (d). A patentee has frequently to consider how he ought to act when his patent is being infringed by several persons at the same time. A way out of the difficulties which such a case presents was suggested by Wood, V.-C., in Borill v. Crate (e): "After getting information of case after case of infringement, the patentee might select that which he thought the best in order to try the question fairly, and proceed in that case to obtain his interlocutory injunction. He might write at the same time to all the others who were in simili casu and say to them, Are you willing to take this as a notice to you that the present case is to determine yours? Otherwise I shall proceed against you by way of interlocutory injunction; and if you do not object on the ground of delay, I do not mean to file bills against all of you at once." A plaintiff is entitled to apply for an injunction and to have his costs as soon as his legal right is invaded, although unintentionally; and he is under no obligation to give the defendant any notice before commencing an action (f), or to discontinue proceedings on the defendant admitting and promising not to repeat the infringement (g). 247 Chap. VII. Where an account is claimed, all persons claiming any Who may sue. interest, legal or equitable, in the patent, ought to be made parties to the action, so that the infringing defendants may not be called upon to account twice. But where only an injunction and delivery up of infringing articles are claimed, one of several owners has a right to sue alone (li). (d) Sect. 17, sub-s. 4 (b). (e) 1 Eq. p. 391. This course was approved and the effect of it explained in North British Rubber Co. v. Gormully Co., 12 R. P. C. (f) Post, p. 272. (g) Losh v. Hague, 1 W. P. C. 200. (h) Bergmann v. Macmillan, 17 C. D. 423. Chap. VII. Sect. 1. Who may be sued. Where a patent has been mortgaged, the mortgagor may sue alone without joining his mortgagee as a party (i). So also if an invention can be severed into distinct portions the owner of one part may sue for infringement of that part (k). It seems that a mere licensee of a patent is not a person having an interest in the patent; he is only a person permitted to use the invention, and therefore he cannot sue for infringement, even where his licence is exclusive (1). But an exclusive licensee may maintain an action against his licensor where the latter acts in breach of the licence so given (m). A mere agent for sale cannot bring the action; whether a person is a mere agent or not depends upon the facts (n). A legal assignee of a patent may sue for its infringement (0), but before doing so he should be careful to complete his title by registration (p). So also may an equitable assignee (q). The action may also be brought by the assignee or trustee of a bankrupt (1). Where a patent is granted to two persons jointly, and one dies, it seems that the patent passes by survivorship, and the survivor can alone sue (s). Where a patent is vested in two persons as tenants in common, and one dies, actions for infringement committed before his death survive to the other, who is entitled at law to recover the whole damages (t). The actual infringer is the proper defendant. Thus where the infringement occurs in the course of work done under a contract, the contractor who carries out the work, and not the architect who indicates what is to be done, is the person who (i) Van Gelder v. Sowerby, &c., (1) Heap v. Hartley, 42 C. D. (m) Guyot v. Thomson, (1894) 3 Ch. 388. (n) Adams v. North British Railway Co., 29 L. T. 367. (0) Electric Telegraph Co. v. Brett, 20 L. J. C. P. 123. (p) Chollet v. Hoffman, 26 L. J. Q. B. 249. (q) Action Gesellschaft v. Temler, 16 R. P. C. 447. (r) Bloxam v. Elsee, 6 B. & C. 169. (s) National Co. v. Gibbs, (1899) 2 Ch. 289; but see S. C. 16 T. L. R. 348. (t) Smith v. L. & N. W. Railway Co., 2 El. & Bl. 69. ought to be sued (u). Custom House agents who arrange for the storing and transhipment in an English port of an article which infringes an English patent do not thereby make themselves liable as infringers (x). But carriers who bring infringing articles into England are liable, and may be restrained by injunction (). A person who merely prepares the materials from which the infringing article is made is not liable as an infringer (2). The directors of a company may be liable for acts of infringement committed by workmen employed in their service, even where such workmen have acted in disobedience to express orders. Although the master in whose employment the infringement is committed is the proper defendant, his servants by whom he has committed the breach of patent right are equally liable and may be joined as defendants, and it is no answer to say that they only conformed to the orders of their employer (a). Where an infringing manufacturer sells the patented article, both the manufacturer who makes, and the purchaser who uses the same are liable to the patentee, and may be joined as co-defendants in one action (b). But where a plaintiff company sued the makers of infringing articles, and on motion for an interlocutory injunction accepted an order under which the defendants paid certain sums into Court to represent royalties, and undertook to keep an account till the trial, it was held that no interlocutory injunction could be obtained against customers who had purchased the infringing articles from the defendants, to restrain them from using such articles (c). Although foreign subjects committing acts of infringement in the United Kingdom are liable to be sued therefor (d), the (u) Denley v. Blore, 38 London Journal, 224. (r) Nobel's Explosives Co. v. Jones, 8 App. Ca. 5. (y) Washburn Manufacturing Co. V. Cunard Co., 6 R. P. C. 403. (2) Townsend v. Haworth, 12 C. D. 831 n.; Savage v. Brindle, 13 R. P. C. 266. (a) Betts v. De Vitre, 3 Ch. 429; Adair v. Young, 12 C. D. 18; and see Sykes v. Howarth, 12 C. D. 826. (b) Proctor v. Bennis, 36 C. D. 740. (c) Pneumatic Tyre Co. v. Goodman, 13 R. P. C. 723. (d) Caldwell v. Vanelissengen, 9 Ha. 415. Chap. VII. Chap. VII. Pleading. Court has refused to allow property of a foreign sovereign which was an infringement of an English patent to be detained in this country against the will of that sovereign (e). The Court has no jurisdiction to restrain a foreigner abroad as regards transactions carried on by him in his own country. A foreigner who manufactures abroad and sends by post at their request to a firm in England articles which infringe an English patent does not himself infringe the patent, and is not liable to an injunction restraining infringement in an action by the owner of the English patent (ƒ). The form of statement of claim in an action for infringement given in the Appendix to the Rules of the Supreme Court (g) contains the following material allegations, viz.: the number, term, date and subject-matter of the plaintiff's patent, the plaintiff's interest therein, the fact of infringement by the defendant, and a claim for injunction and damages. It is not necessary to allege the novelty of the invention, since the allegation of the grant and the production of the letters patent throw upon the defendant the onus of disputing the novelty (h). Nor is it necessary to allege that the patentee has duly paid the instalments of stamp duties required to keep the patent alive (i), nor is any reference to the specification needed (k). The form prescribed by the Rules does not contain any allegation as to the validity of the patent. The statement of claim must, however, state such a case as will justify the Court in granting the injunction asked for (l). The plaintiff must deliver with his statement of claim, or by order of the Court at any subsequent time, particulars of the breaches complained of, and at the hearing no evidence can, except by leave of the Court, be admitted in proof of any alleged infringement of which particulars are not so delivered (m). If the plaintiff is claiming costs as between (e) Vavasseur v. Krupp, 9 Ch. 351. (f) Badische Anilin, &c. v. Basle 145. (k) Westhead v. Keene, 1 Beav. 289. (1) Curtis v. Cutts, 8 L. J. Ch. 184. (m) Patents Act, 1883, s. 29. |