[*281

kinking, by means of the cone; and there is a cylinder on the outside, which prevents the coil from shifting in its place. The cable passes over a pulley above the *cone, and on to a break-wheel, round which it takes several turns, to obtain sufficient holding; and from the break-wheel it passes over the stern of the vessel on board which the cable or rope is placed: or, I use two or more break-wheels, the one behind the other. The cable or rope comes up from the hold of the vessel, and round the first break-wheel several times, then on to the second break-wheel, round which it also takes several turns. When the break is applied to the first wheel, it increases the friction on the second, and so on, according to the number of break-wheels used: or, I use two break-wheels coupled together either by spur-gear or cranks and connecting-rods: the cable in such case passes round only a part of the circumference of each. There are grooves in the wheels, which guide the cable or rope from one to the other, and prevent its getting foul; or a guide is used to push the cable from one side of the wheel to the other, so as always to keep one part from riding over another. The greatest difficulty in laying down submarine telegraph wires or cables hitherto has been to limit the speed in paying them out; arising from the necessity of the leading off part of the coil being kept clear of the others, by a great number of men handling it, to prevent its getting into kinks, or becoming entangled one part with another. This is remedied by coiling the wire or cable round a cone (or several cones, if required), so that the wire in being drawn off the coil is prevented from kinking by means of the cone. The apparatus I employ is shown in the accompanying drawings, which represent a section and plan. A., B., C., D., is the cone: it is formed of wood, or it may be of iron, so as to present an even surface on the outside, so that the wire, in passing round it, may not be caught by any projection. This cone is firmly fastened to the bottom of the vessel, and reaches at least as high as the top of the coil. Around the *cone is formed a cylinder or series of uprights m., strongly fastened to the bottom and deck, so as to prevent [*282 the coil of wire or cable which is coiled round the cone from shifting in its place. A strong iron ring or hoop is fastened outside the supports, to brace them together, at n. Over the cone is placed a pulley, one side of it being in a line with the axis of the cone.

"At a convenient distance between the cone and the stern of the vessel, is placed either one or two break-wheels, depending on the weight of wire or cable hanging over the stern, and the power of the breakwheel (which must be sufficient to prevent the cable from running out when the ship or vessel is passing over the greatest depth of water), so that by easing the break the wire may be payed out at the same speed, or nearly so, as the vessel is passing over the ground. I prefer the diameter of the break-wheel to be about eight or nine feet, and arranged in a frame-work, as shown in the drawing. The cable is carefully coiled round the cone in horizontal layers, beginning from the outside next the cylinder, and coiling towards the cone. When the space is filled up, the bight of the rope is taken to the outside of the coil at b, and another layer is coiled, and so on, until the whole length is coiled round the

cone.

"When the wire or cable is to be laid down, I place over the cone an apex or top, which is conoidal, as shown in the drawing, or conical, and

around this I suspend several rings of iron or other metal, by means of cords, so as to admit of adjustment at various heights over the cone, as at c. The use of these rings is, to prevent the bight of the rope from flying out when going at a rapid speed; and the combination of these parts of the apparatus prevents the wire or cable from running into kinks. The two rings nearest the coil are lowered, so as to be about six inches and a foot respectively above the coil as it is being payed out. *When the wire or cable is to be payed out, the end is led up *283] through the rings over the pulley and round the break-wheel; or, if two break-wheels are used, it is led round the first one several times to obtain adhesion, then round the second, and over the stern of the vessel to the shore, where it is made fast. The vessel then goes ahead, and the wire is drawn from the coil, sufficient friction being applied by the handle of the break-wheel or wheels to keep the wire or cable tight.

"Having thus described the nature of the apparatus I employ in laying down submarine electric wires, what I claim as my invention is,first, coiling the wire or cable round a cone,-second, the supports placed cylindrically outside the coil round the cone,-third, the use of the rings in combination with the cone, as described."

M. Smith, Q. C. (with whom was W. Stokes), for the plaintiff.-1. The arbitrator must be taken to have found that the cylinder used by the defendants is an infringement of the plaintiff's patent. The only question, therefore, on this part of the case, is, whether the use of "a cylinder having a domed or hemispherical top, and fastened to the bottom of the vessel, with an outside cylinder of vertical supports arranged in a circle, and also fixed to the vessel," could as a matter of law amount to an infringement. Now, the description of the plaintiff's invention in the specification is as follows:-"The cable or rope containing the insulating wire or wires is passed round a cone, or, if it is a long cable, round several cones, so that the cable in being drawn off the coil is prevented from kinking, by means of the cone: and there is a cylinder on the outside which prevents the coil from shifting in its place." There is no substantial difference between these two:*284] *the object and purpose and the effect of both are precisely the same: the substitution of the cylinder for the cone is a mere transparent mechanical equivalent. If this would be any evidence of infringement to go to a jury, the finding of the arbitrator upon this point is clearly correct.

2. The next question is, whether the patent is invalid because the provisional specification contains no description of or reference to the rings described and claimed in the specification. This depends upon the 6th section of the 15 & 16 Vict. c. 83, which provides that "every petition for the grant of letters patent for an invention, and the declaration required to accompany such petition, shall be left at the office of the commissioners, and there shall be left therewith a statement in writing, hereinafter called the provisional specification, signed by or on behalf of the applicant for letters patent, describing the nature of the said invention." It is not necessary that the provisional specification should point out all the matters of detail which are required in the full specification. It is enough if it agrees with it in the statement of the general nature and object of the invention: and, if there be a difference, that is no ground for avoiding the patent. [CROWDER, J.-Must not the pro

visional specification point out all the material parts of the invention ?] It is enough if sufficient be stated to bring all parties interested in the subject before the Attorney-General. And if, in the interval between the filing of the provisional and the complete specification, a more useful or convenient mode of carrying out the invention should present itself to the mind of the inventor, he is bound to specify according to the improved light which subsequent experience has thrown upon the subject. That has been done here. The inventor may, if he pleases, at once file a complete specification: s. 9. The prerogative of the crown as to *the grant of patents is wholly unaffected by the statute. The only provision for the avoidance of the patent is that contained [*285

in the 17th section, viz., for non-payment of stamp-duties at the periods prescribed. There is nothing to make it void because the provisional specification falls short of what it ought to contain, provided there be no fraud,-which is not found or suggested here.

3, 4. The third objection, that the letters patent were invalid, by reason of a publication during the operations in the Black Sea and the Argus respectively, or one of them, of a material part of the invention claimed, and the fourth,-that the letters patent were invalid, by reason of the use by the plaintiff prior to the date of the letters patent of the apparatus for which the letters patent were granted, in executing a contract for profit,-present substantially the same question. It is submitted that the use of the invention prior to the grant of the letters patent did not go beyond the fair and legitimate limits of experiment. The experiment at the plaintiff's works at Gateshead is disposed of by the observations of the arbitrator. In order to ascertain the utility and practicability of the invention, it was essential that experiments should be made at sea and in deep water, under the circumstances ordinarily attending the laying a submarine telegraph cable, with a vessel in motion, and under the action of the winds and waves, and of currents which might operate upon the machinery used for the purpose. The effect of these influences obviously could only be ascertained by the course adopted here. The utility of the invention could not be tested until the arrival of the vessel with the cable on board in the Black Sea. [CROWDER, J.-Was it put into use when the cable was transferred from the Black Sea, the vessel in which it was first placed, to the Argus ?] The *transfer from the one vessel to the other was merely the [*286 consequence of an accident: the cable was not "payed out." The rule upon this subject is well stated in the case of In re Adamson's Patent, 6 De Gex, M'N. & G. 420. There, a contractor for certain harbour works had in the progress of his undertaking invented an apparatus which greatly facilitated the works, but which could only be tested in a place accessible to the public. After having used the apparatus for four months in the progress of the works, he applied for a patent and it was held that such user amounted to a dedication to the public, and that he was not entitled to a patent. The Lord Chancellor (Cranworth) says: "The petitioner admits that he completed his invention in May, 1855, and that he used it publicly for upwards of four months before applying for the patent. No doubt, an experiment might have been made; and, if made bona fide only for the purpose of testing the merits of an invention, I do not think it would have amounted to a dedication to the public: but where, as in the present case, thousands

of persons had the opportunity of seeing the apparatus at work for a period of four months, during the carrying on of the petitioner's contract, and in the regular course of the undertaking, it is quite clear that no intention of applying for a patent originally existed; and, under such circumstances, and after the lapse of such a time, I must hold that there was a dedication to the public, and refuse the application." [CROWDER, J.-This invention was used in the carrying out of a contract.] But the contract had no reference to the invention. [CROWDER, J.Nor had it in the case cited.] In order to test the utility of the invention, it was necessary that an experiment upon a large scale should be made. The arbitrator has found that there was no possibility of making *287] a complete experiment on shore: and it is obvious that no *satisfactory experiment could be made even at sea, except in the performance of some contract. The laying down the cable in the Black Sea was not a public use of the invention within the meaning of the statute and the letters patent: Morgan v. Seward, 2 M. & W. 544, 559.† [CROWDER, J.-Does the arbitrator find here that what was done in the Black Sea was done merely for the purpose of experiment ?] He does not in terms find so; but that is the whole tendency of his finding: it is evident that in his judgment there was no publication.

Cleasby, contrà.-The inventor by his specification claims three things,-"first, coiling the wire or cable round a cone,"-secondly, "the supports placed cylindrically outside the coil round the cone,' thirdly, "the use of rings in combination with the cone as described." 1. In the first place, there has been no infringement. The claim distinctly points to a "cone" as an essential part of the invention. Any workman, looking at the specification, could not fail to understand from it that the material part of the plaintiff's invention is the cone: and if so, the use of a "cylinder" could be no infringement.

2. There is a fatal difference between the provisional and the complete specification. The 6th section of the 15 & 16 Vict. c. 83, requires the provisional specification to describe "the nature of the invention." That necessarily means the whole invention. The manner in which it is to be carried into effect (and the best manner known to the inventor) is to be disclosed by the complete specification. But both must describe the invention accurately and completely. Nothing can be described as "the invention," in the complete specification, which has not already been described in the provisional specification. The inventor may in *288] the *complete specification give additional information as to the manner of carrying it out; but he has no right to add a scintilla to the invention contained in the provisional specification. The 3d section of the act empowers the commissioners of patents to frame rules and regulations respecting the business of their office. One of the rules. made in 1852, in pursuance of that authority, is as follows:-"The provisional specification must state distinctly and intelligibly the whole nature of the invention, so that the law officer may be apprised of the improvement, and of the means by which it is to be carried into effect:" see Norman on Patents, p. 240. Here, the provisional specification confines itself to the cone, altogether omitting all mention of the "rings," which appear to form a most material part of the alleged improvement. [WILLES, J.-A form of letters patent is given in the schedule to the act. It recites the complete specification, if a complete

specification has been filed under s. 9, or, if no complete specification has been filed, it makes it a condition that that shall be done: but, in either case, there is no reference in the letters patent to the provisional specification, which seems to be a mere matter for the information of the law officer, and does not, as it seems, at all affect the validity of the patent. Unless you can make out that the provisional specification is conclusive as to what the invention is, there is nothing in this point.] It is not suggested that a mistake in describing the mode of carrying the invention into effect in the provisional specification, would affect the validity of the patent: but that the nature of the invention must be completely described. (a) In Croll v. Edge, 4 C. B. 479 (E. C. L. R. vol. 56), *a patent was held void by reason of a variance between [*289 the invention specified and that described in the title. In Hancock v. Noyes, 9 Exch. 388,† there is a pretty strong intimation of opinion on the part of the court that a patent would be held void under a plea of non concessit, where the specification embraces something beyond the invention for which the patent was granted. In Onions v. Crowley, 1 Macrory's Patent Cases 261, the plaintiff had taken out a patent for "improvements in the manufacture of certain parts of machinery used in spinning." The "deposit paper" lodged with the Attorney-General (for which the "provisional specification" is now substituted, and which was required to contain "an outline description of the invention"), began by describing the invention thus:-"This invention relates to certain parts of machinery used in spinning, which parts are known by the names of spindles and flyers. My improvements consist in casting such spindles and flyers from suitable moulds, instead of the mode now used for manufacturing such spindles and flyers, which present mode consists in making them all of iron forged and wrought:" and it concluded thus:-"I do not confine myself to the shape or size of flyer, but what I claim is the producing flyers of any shape and size by casting, after the principle above described." The specification described the invention thus:-"My invention has for its object the improvement of the manufacture of those parts of spinning machinery called flyers and pressers, and consists of combining the processes of casting and annealing in making such articles, in place of the means heretofore employed:" and it concluded, "I would have it understood that what I claim is, the manufacture of flyers and pressers for spinning machinery, by casting them as herein described, and then causing them to be annealed." It was left to the jury as a question of fact,

*whether the specification described the invention for which the [*290 patent was taken out: and the jury found that it did not.

3, 4. There was such a prior publication and user for profit of the invention in question as to invalidate the subsequent patent. The arbitrator finds that, in December, 1854, the plaintiff entered into a contract with government to lay down an electric telegraph communication between Varna and Balaklava, and Balaklava and Eupatoria. In the course of carrying that contract into effect, the invention was used; and thus it became public property. It may be that the experiments at the plaintiff's works at Gateshead did not amount to a publication: but (a) See upon this subject the evidence given by Mr. Carpmael and by the Master of the Rolls (Sir John Romilly) and the Solicitor-General (Sir W. Page Wood) before a committee of the House of Lords, in 1851. Report, pp. 60, 379.