:.?•. 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

JOURNAL OF THE SOCIETY OF COSMETIC CHEMISTS As already mentioned, the grounds of opposition were extended by the new Act and in particular the ground of lack of subject-matter was intro- duced into the opposition section, which again has generally been regarded as an improvement, because it enables worthless applications to be dealt with at the opposition stage comparatively cheaply, whereas pre- viously many such applications matured into patents and tended to be an obstruction to later workers, the procedure for having a patent declared invalid on the ground of lack of subject-matter being a High Court proceeding and usually very expensive. Another important provision is that the sections of the Act relating to amendment of the specification after acceptance have been made more liberal, and an inventor who has perhaps inadvertently claimed too much now finds it easier to amend his specification and to preserve the valuable part of his invention. Previously many objec- tions of a somewhat technical nature could be raised against applications for amendment, sometimes with very unfortunate consequences for the inventor. Nevertheless, the public is protected in that the inventor is not allowed to make his claims wider than they were before amendment in other words, any- thing which was not an infringement of the patent before amendment cannot be an infringement of the patent after amendment. The importance of a satisfactory provisional specification has already been mentioned and the importance of this document will be realised once it is understood that the pro- visional specification is in fact the foundation upon which the patentee builds his position. The importance of the provisional specification has been still further increased by virtue of the provisions in the 1949 Act relating to the priority date of a claim. Very briefly, these provide that each claim of the complete specification has either the date of the prov. isional specification or the date of the complete specification, depending upon whether the claim is fairly based on the provisional specification or only on the complete specification. Sometimes it is advisable to file one or more additional provisional specifications between the date of filing of the provisional specification and the date of filing of the complete specification, to disclose further developments, and in such a case one complete specification is filed in respect of the whole of the provisional specifications, and some of the claims may be accorded the priority of one of these additional provisional speci- fications. Some useful provisions were also incorporated in the Act with regard to Patents of Addition, and further- more the Comptroller has been given jurisdiction to adjudicate in disputes between employers and employees concerning the ownership of inven- tions. These provisions make it possible for these unfortunate dis- putes to be decided more cheaply than before, since it is no longer 222