Scottish Court of Session Decisions

Upon 5th November 1887 Robert Chambers, shipbuilder, and William Liddell, agent, both of 2 Oswald Street, Glasgow, applied for and obtained a grant of letters-patent for “‘improvements in the construction of lifeboats,’ their invention being the combination in a boat, suitable for use as a lifeboat, of a lower part or shell or hull, constructed of iron, steel, or wood, or other material, and an upper part of a flexible material attached by its upper edge to the rail and by its lower edge to the shell or hull, the boat being by preference fitted with water-tight compartments, so that when not in use the upper part may be folded down, and when in use it may be raised by self-locking or self-supporting stays; also the use in such a boat of folding mechanism made of jointed stanchions and jointed stays for the purpose of enabling the upper flexible part to be raised or lowered, and fixed or retained in either position, and further, the employment of the upper rail with rowlocks all as described in the said letters-patent.”

The Lifeboat Company, Limited, 205 Hope Street, Glasgow, acquired right to the said letters-patent conform to assignations

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in their favour registered 13th September 1889, and in December 1889 brought an action in the Sheriff Court at Glasgow against Chambers Brothers and Company, boatbuilders, Dumbarton, to have them interdicted and restrained from infringing the said letters-patent.

The defenders pleaded, inter alia—“( 1) The invention described in the letters-patent and specification founded on was not novel at the date of the application for same, and was publicly known and used prior to said date.”

A proof was allowed, from which it appeared that a boat constructed on principles similar to those described in the specification of said patent, was publicly exhibited by Robert Chambers at Glasgow on the 2nd of September 1887 in the basin at the shipbuilding yard of Messrs D. & W. Henderson, shipbuilders, Glasgow, before a number of Board of Trade officials, shipowners, and others, and the construction of the boat was fully described in the Glasgow Daily Herald and North British Daily Mail, both published in Glasgow, in the issues of 1st September 1887. The boat was also exhibited and tried publicly at the Royal Albert Docks, London, on 15th September 1887 before a number of shipowners, &c., and a report of said trial along with a description of the boat appeared in the newspaper Invention of 24th September 1887. A description of the boat also appeared in the Lennox Herald, published in Dumbarton on 3rd September 1887. It also appeared that an exhibition had taken place at Portsmouth in October 1887, as described in the Lennox Herald of 15th October 1887.

The nature of these exhibitions is fully set forth in the note of the Sheriff-Principal.

Upon 17th April 1890 the Sheriff-Substitute ( Guthrie) repelled the defences, found that the defenders had infringed the pursuer's patent, and granted interdict as craved.

“ Note.—The pursuers—who are in right of Messrs Chambers and Liddell, the original patentees—claim to be patentees of an invention for constructing lifeboats in such a way as to allow of their being stowed on the deck of a sea-going ship in a limited space, and the method consists in the combination of a lower part or shell or hull, constructed of iron, steel, wood, or other material, and an upper part formed of a flexible material attached by its upper edge to a rail and by its lower edge to the shell or hull, as described and shown in drawings… .

The respondents plead that the letters-patent are void in respect (1) of prior publication. …

The prior publication, on which the pursuers found, consists of publications of accounts of the invention in the Glasgow Herald and other periodicals in connection with experimental trials made at Partick and London, and of the disclosure to the public made at those trials themselves. …

The question whether Robert Chambers excluded himself from the benefit of patenting his contrivance by the exhibitions made at Partick and London, is in my view a very narrow and delicate question, and it is only with difficulty that I am able to sustain the validity of the patent. I do so because I do not think that those who are assailing the patent have satisfactorily proved that all or any who witnessed the experiments or trials were thereby made so acquainted with the construction of the vessel that they could have built one similar. I confess, however, that I am doubtful of this fact, and that the trials, especially the double trials in Partick and London, are more like advertisements than experiments. Even so regarded, however, it may be admitted that an advertisement is not necessarily a disclosure to the public of the idea and method of carrying out a new invention. It is clear that the descriptions in the public prints do not disclose the nature of the invention in the sense necessary to defeat the patent.” …

The defenders appealed to the Sheriff ( Berry) who on 15th December 1890 pronounced the following interlocutor—“Recalls the interlocutor appealed against: Finds under reference to note that in November 1887, when the letters-patent founded on by the pursuers were applied for, the invention to which they relate had been published and made known in this country and was not novel; therefore finds that said letters-patent are invalid: Refuses the prayer of the petition: Assoilizes the defenders therefrom, and decerns, &c.

Note.—… The application for the patent was made on 5th November 1887. Various defences are stated on behalf of Chambers Brothers & Company. The only one with which I think it necessary to deal is that embodied in their first plea, that ‘the invention described in the letters-patent and specification founded on was not novel at the date of the application for same, and was publicly known and used prior to said date.’

In September 1887 the invention was not provisionally protected. On the 1st of that month a paragraph headed ‘New Patent Lifeboat’ appeared in the Glasgow Herald, giving a description of the boat with various particulars of its construction, and intimating that there was to be a trial of it in Glasgow on the following day. It was said, ‘The boat is 26 feet long, 7 feet wide, 3 feet 4 inches deep, with a displacement of 11 tons, and gives accommodation to 40 people. The depth of the boat is 14 inches, but above that is a canvas washboard fitted with galvanised iron stanchions and rails, and hinged to the gunwale of the boat. When lifted up perpendicular the washboard locks itself into position with self-acting stays.’ The notice goes on to give further details and concludes that ‘the new lifeboat merits inspection.’ The Lennox Herald, a newspaper published at Dumbarton, contains in its issue of 3rd September a description of the boat in the same terms as that in the Glasgow Herald. As intimated in the notice in the Glasgow Herald, a test, or (as several witnesses term it) an exhibition of the boat took place on

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2nd September in the slip dock of Messrs D. & W. Henderson, shipbuilders, at the mouth of the Kelvin, the boat having been brought up the Clyde for the purpose from Dumbarton, where it had been built. What purports to be a description of the trial or exhibition is given in the Glasgow Herald, of 3rd September. The proof shows that the boat was filled with about forty men from the shipyard, was rowed up and down the basin in presence of a number of spectators, and was rolled from side to side to test its stability; and also that full opportunity of examining it was given to all who were present. Mr Liddell says that invitations to various persons to witness the trial were given by Mr R. Chambers. Certainly no attempt was made to keep it secret. Among those present were officials of the Board of Trade and of the Admiralty, and gentlemen connected with or interested in shipbuilding. Several of them have been called as witnesses in the case, and among these Mr David White, a boatbuilder in Glasgow, who appeared as a witness for the pursuers, said, on cross-examination, that after he saw the boat on the Kelvin he would have had no difficulty in constructing one like it. He says, indeed, that he paid a second visit to Messrs Henderson's dock on the following day, and looked at the boat very particularly. But he seems to have done so without any special leave being asked for, and apparently without any obligation, express or implied, of secrecy. While the boat was in the dock there seems to have been nothing to prevent any of the workmen or officials in the yard from examining her and obtaining full particulars as to her construction. John M'Culloch, dock foreman, shipwright in Messrs Henderson's yard, says that the boat lay in the yard for one, if not two days, that they gave her some small repairs, and that while she was there everybody had an opportunity of examining her who cared to look at her. Subsequently the boat was removed to London, and there a second exhibition of a similar nature to that in the Kelvin took place in the Royal Albert Dock on 15th September, when different scientific men and representatives of the Board of Trade and the Admiralty were present. Mr Liddell gives as a reason for this public exhibition (as he terms it) in London, that ‘we thought it desirable to do so there, because it was in the centre of the kingdom, the centre where we could work from, the Board of Trade and the Admiralty being both in London, and their chief surveyors, and so on.’ An account of the exhibition, with a statement of the dimensions of the boat and other particulars, similar to those previously given in the Glasgow Herald, appears in the newspaper Invention of 24th September. Mr Cruickshank, a patent agent, who was examined for the defenders, says that from the description in Invention he could make a boat with collapsible sides, although it might not be similar to the model of the pursuers' boat. Evidence much to the same effect with reference to the information to be obtained from the description in the Glasgow Herald is given by Mr Mitchell, a shipbuilder in Glasgow, who was called as a witness for the pursuers. Such generally was the position in which the evidence as to publication of the invention prior to the application for a patent stood when the case was before the Sheriff-Substitute. It seems to me difficult to say that, as the case was then presented, there was not shown to have been such a publication as was sufficient to deprive the invention of novelty, and invalidate the patent subsequently obtained. In that view it was perhaps unnecessary to have further evidence taken. … On consideration I came to be of opinion that the additional evidence asked for ought to be allowed. … The additional evidence thus obtained confirmed the view I had already formed regarding the question of prior publication. Mr R. Chambers was referred to a newspaper paragraph in the Lennox Herald of 15th October 1887, professing to give an account of a ‘testing’ of the boat in the previous week in the Admiralty dockyard at Portsmouth, and he said that the account was, as far as he recollected, correct; the boat is stated to have been tested in presence of certain officials of the dockyard whose names are given. She was filled with forty men from the dockyard, was tried in various ways, and in some respects, as Mr R. Chambers puts it, the trial was more practical than the previous trials at Glasgow and London.

The conclusion to which a consideration of the evidence as a whole seems to me to point is, that there was such a publication of the invention prior to the application for a patent as to strike at the validity of the subsequent patent. So far from any attempt being made to keep the invention secret, pains were taken to exhibit it in different parts of the kingdom to persons whose approval and patronage were likely to be valuable. It also appears from the evidence that from the newspaper descriptions and the exhibitions which took place, persons moderately skilled in boatbuilding would have been able to make a practical use of the invention by constructing a collapsible boat similar to that for which a claim is made in the specification. In these circumstances the patent must, I think, be held to be invalid.”

The pursuers appealed to the Court of Session, and argued—No doubt the boat was exhibited to a few persons on three separate occasions for the purpose of testing it—on the last occasion before Government officials in the hands of trained men—but there was no such publication that an ordinary skilled workman could have made the boat after seeing it and reading the newspaper reports unless he had been employed, as in this case members of the defenders' firm had been, in the patentee's workshop. And no one who saw these exhibitions appeared to say he could have made it after seeing them. There had therefore been no such prior publication as was necessary to invalidate a patent. The newspaper accounts did not amount to publication to the world by description, and the exhibitions were not “user.” “No

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prior publication ought to invalidate a patent unless you could make the thing from the description”—see Jessel, M.R., p. 567, in Plimpton v. Malcolmson, 1876, L.R., 3 C.D. 531 (roller skates), following upon Neilson v. Betts, 1870, L.R., 5 H. of L. 1; Hill v. Evans, 1862, 4 De. G. F. & J. 288; Betts v. Menzies, 1862, Clark's H. of L. Cases 117; Stonor v. Todd, 1876, L.R., 4 C.D. 58; Lewis v. Marling. 1829, 1 Webster's Patent Cases 493. In re Adamson's Patent, April 19, 1856, 25 L.J. Ch. 456, there had been not merely testing but complete dedication to the public—contrast Bentley v. Fleming, 1844, 1 Carrington & Kirwan 587; Newall v. Elliot & Glass, 1858, 27 L.J.C.P. 337.

Argued for respondents — There had plainly been prior publication (1) by exhibitions and (2) by descriptions in the public press. These exhibitions had been public, and it was absurd to say that the boat required such frequent testing in different parts of the country. When the letters-patent were taken out there was nothing left to communicate to the public. It was unnecessary to say whether exhibition by itself was enough. Here people who saw it could make it, and here also there was full description in the newspapers— Pickard & Curry v. Prescott, July 9, 1890, 17 B. 1102. King, Brown, & Company v. Brush Electric Light Corporation Limited, July 18, 1890, 17 R. 1266—which was a much stronger case than the present, inasmuch as the article patented was far harder to make— Betts v. Neilson, 1868, L.R., 3 Ch. Ap. 431 (Lord Chelmsford); Hill v. Evans, 1862, 31 L.J. Chan. 457 (Lord Westbury p. 463); Carpenter v. Smith, 1841, Webster 530; Patterson v. Gas Light & Coke Company, 1877, L.R. 3 App. Cases 239; Croysdale v. Fisher (patent cases), 1884, 17; Philpott v. Hanbury (patent cases), 1885, 33 and 153; Blank v. Footman, Pretty, & Company (patent cases), 1888, 653; Harris v. Bothwell, 1887, L.R. 35 C.D. 416.

At advising—