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

:.?•. PATENTS AND THE : ..•. more of the claims include inopera- tive embodiments. In this connec- ß tion care must be taken to distinguish :. between what is known as patent utility and commercial utility. It is :i: clear that in general not all embodi- ments of an invention will be equally advantageous and it is not necessary that every embodiment of the inven- tion should be commercially useful. However, every embodiment falling within the claims should work' that is to say, it should give the ß stated result, at any rate, to some extent. : THE PATENTS ACT, 1949 I now turn to the important- changes which were introduced by the Patents Act, 1949, and in particu- lar those which are of interest to your industry. The most important of these is probably the amendment which was made in the Act to permit new products to be claimed without any limitation as to their process of manufacture, as was the case under the old Act. The position now is that if an inventor invents a new compound he is entitled to a claim to the compound itself, so that during the life of his patent, provided that the claim is valid, he has a monopoly of the compound con- cerned. In making this amendment we followed the law in the U.S.A. and certain other countries, and I think it was generally agreed that the amendment represents a big step forward because very often the real invention resides in the discovery of the compound or, indeed, some- COSMETIC INDUSTRY tirnes in the recognition that the compound can be made, and is likely to have useful properties, rather than in the particular process for its manufacture, although, of course, this may also contain inventive steps. In many cases, however, a new chemical compound is made by a method which is well known for somewhat closely related compounds. Under the old law, if an inventor desired to obtain adequate protec- tion in those cases in wkich he invented an important new com- pound or compounds, he was often compelled to spend a very large amount of time and money investi- gating all the likely routes to the compound, and this often also in- volved him in considerable expense in obtaining a number of patents to protect the possible routes. Another interesting innovation which was introduced by the Patents Act, 1949, was the provision that the application could be filed by an assignee. Under the old law this was not possible except in certain special cases where the application was made under the International Convention, and expense and trouble arose in having the application assigned to the assignee after the application had been filed. The inventor, however, is not deprived of his scientific credit because, if the application is filed in the name of an assignee, when the compleie speci- fication is accepted and printed the name of the inventor is printed at the top of the specification, with an indication that the person named is in fact the inventor. 221