PATENTS AND THE :71 :iThe examiner in making his report will draw the attention of the appli- cant to those documents which his search has disclosed which appear to him to affect the novelty of the claims. The examiner also makes a search to determine whether there are any prior applications which, although not published at the date of the application which is being examined, are patents of prior date, and these are cited on the ground which is known as "prior claiming." In the case of prior claiming we are only concerned with a conflict of claim, and provided that the exam- iner is satisfied that the claims are distinct he will withdraw his objec- tion. Similar considerations apply to prior publications referred to by the examiner, although he may re- quire the applicant to refer in his specification to the prior documents in order that the public may be made aware of the place of the applicant's invention in relation to what is already knowns. A N•w Pr•ov•s•oN There is also a new provision in the Patents Act, 1949, in Section 9, whereby the examiner may require reference to an earlier patent which is still in force if he is of the opinion that the applicant's invention cannot be carried out without substantial risk $f infringement of the claims of the earlier patent. This is designed to be a warning to any member of the public who may contemplate acquiring the patent or taking a licence under it. The examiner also may raise objections on various COSMETIC INDUSTRY other grounds, the most important of which is insufficient or unfair description. In this connection the examiner will draw attention to any passage which appears to him to be not clear, and he may also object that the claims are not fairly based on the description, that is to say, that the applicant is trying to claim more than he has invented. If the applicant or his agent and the examiner are unable to agree, then a hearing takes place before one of the senior officials of the Patent Office, who will give a decision, in writing if required, and this decision is subject to appeal to the Patents Appeal Tribunal, which consists of a judge with special experience in patent and other industrial property matters. After the examiner's objections, if any, have been removed, the applica- tion is accepted and a notification of that fact is inserted in the Official Journal of Patents. The next step is for the specification to be printed, and thereafter the application re- mains open to opposition by any interested party for a period of three months. GRou•r)s oF OPPOSiTiON There are various grounds of opposition, the most important of which are prior publication, prior claiming, insufficient or unfair de- scription, and what is generally know2• as 'qack of subject-matter." This last-mentioned ground of opposi- tion was introduced by the 1949 Act and is not open to the examiner during examination proceedings. Briefly, this ground of opposition 219

JOURNAL OF THE SOCIETY OF COSMETIC CHEMISTS may be explained as being an objec- tion that in view of what was already known or publicly used the applica- tion does not claim an invention in other words, there was no inven- tive act required to proceed from the known state of the art to the mono- poly claimed by the applicant. The Comptroller's power of refusal under this ground of opposition is, however, somewhat limited because the word- ing used in the Act in referring to this is "that the invention . . . is obvious and clearly does not involve any inventive step." This wording is very similar to the wording of the corresponding section of the Act dealing with the revocation of a patent by the High Court, but the opposition section contains the word "clearly," which is not present in Section 32 dealing with revocation by the High Court, so that the Comp- troller must be satisfied that there is no possible doubt that the inven- tion claimed is devoid of subject- matter. If there is no opposition or if the opposition is determined in fayour of the applicant, then on payment of the sealing fee the patent is granted and remains in force for a period of sixteen years from the date of filing of the complete specification, provided that the prescribed renewal fees are paid. •DEFENCE IN I)EPTH The presence if possible of a series of claims constituting several lines of defence has already been mentioned and the importance thereof will be realised when it is understood that in certain circumstances a court may give relief in respect of the infringement of valid claims in a specification even if some or all the other claims are invalid. The risk of one or more of the claims of a patent being held invalid is often considerable, bearing in mind that Section 32 of the Act, which deals with revocation by the High Court, sets forth no less than eleven grounds upon which a patent may be held to be invalid.. The principal grounds upon which a patent may be revoked by the High Court are lack of novelty, lack of invention over what is already known or used in the United Kingdom, prior claiming in a patent of earlier date, insufficiency of description, including a failure to describe the best method of carrying the invention into effect known to the applicant at the date of the complete specification, false suggestion or representation and lack of utility. Most of these grounds are self- explanatory, but the last two may perhaps require a little explanation. The objection of false suggestion or representation usually arises because the specification promises that cer- tain advantages or results may be obtained whilst, in fact, those advan- tages or results are not necessarily obtained by all embodiments falling within the claims, so that caution should be exercised in drafting the specification not to make exaggerated statements in these respects. The objection of lack of utility is a somewhat technical one and really amounts to a contention that one or 220