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Scottish Court of Session Decisions |
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You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> Melville v. Cummings [1912] ScotLR 879 (11 July 1912) URL: http://www.bailii.org/scot/cases/ScotCS/1912/49SLR0879.html Cite as: [1912] SLR 879, [1912] ScotLR 879 |
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Page: 879↓
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The Patents and Designs Act 1907, sec. 94 (3), enacts—“Proceedings for revocation of a patent shall be in the form of an action of reduction at the instance of the Lord Advocate, or at the instance of a party having interest with his concurrence, which concurrence may be given on just cause shown only. …”
A civil engineer, a member of a firm of reinforced concrete contractors, having obtained the concurrence of the Lord Advocate, brought an action in his own name for reduction of a patent relating to concrete. He averred that his firm did a large business in reinforced concrete, and that his, “the pursuer's business,” was in danger of injury by the defender's threatening to take proceedings for infringement of the patent.
Held that the pursuer had, with the Lord Advocate's concurrence, a good title to sue in his own name.
Observed that the Court must decide the relevancy of the action, although the Lord Advocate had given his concurrence.
Opinion reserved as to whether the concurrence of the Lord Advocate was conclusive on the question of title to sue.
The Patents and Designs Act 1907 (7 Edw. VII, cap. 29) enacts—Section 25 (3)—“A petition for revocation of a patent may be presented—( a) by the Attorney-General or any person authorised by him.…” Section 94 (3)—“… [ quoted in rubric.] …”
Alexander Melville, civil engineer, of the firm of Melville & Dundas, reinforced concrete contractors and engineers, 30 George Square, Glasgow, pursuer, brought an action for reduction of a patent against Robert Augustus Cummings, of Pennsylvania, U.S.A., defender. The Lord Advocate granted his concurrence on 31st July, and the summons was signeted on 1st August 1911.
The pursuer averred, inter alia—“(Cond. 1) The pursuer is Alexander Melville, civil engineer, of the firm of Melville & Dundas, reinforced concrete contractors and engineers, 30 George Square, Glasgow, who do a large contracting business in reinforced concrete constructions.… (Cond. 2) The defender is patentee of the alleged invention described in the letters-patent mentioned in the summons.… [ In condescendence 3 the pursuer averred that the patent was invalid for the reasons therein set forth.] … (Cond. 4) The said patent protects a process of manufacture of reinforced concrete which is directly in the line of the pursuer's business. The pursuer understands that the defender is threatening proceedings against any parties infringing his alleged rights under the said patent, and as the pursuer's business in Scotland is in danger of being seriously affected thereby, the present action for the revocation thereof has been rendered necessary in the interests of the pursuer's said business.”
The defender pleaded, inter alia—“(2) The pursuer having no title or interest to sue, the action should be dismissed.”
On 14th December 1911 the Lord Ordinary ( Ormidale) sustained the second plea-in-law for the defender and dismissed the action.
Opinion.—“This is a short but an important point. I fail to see that the pursuer has set forth an interest and title, in respect that he has not stated that he is in any way carrying on a business which is affected by the existence of the patent.
He describes himself as a civil engineer, and the firm to which he belongs as reinforced concrete contractors and engineers, who do a large contracting business in reinforced concrete construction. He says nothing about his carrying on any individual business. If he means by ‘the pursuer's business’ in cond. 4, the business of his firm referred to in cond. 1, then I think it was for his firm to sue the action, and as I read the record I find it difficult to understand why the firm should not have been the pursuers. The matter might be made perfectly clear and definite by a very slight amendment. As the record stands, I cannot hold that the pursuer has set forth a relevant averment of title and interest.
Page: 880↓
I do not see how the Lord Advocate's concurrence can supersede the duty of the Court to deal with the record as laid before it.
I must sustain the second plea-in-law for the defender and dismiss the action.”
The pursuer reclaimed, and argued—The case should be remitted back to the Lord Ordinary for proof. The pursuer as an individual had a patrimonial interest which entitled him to sue, and the mere fact that his interest was that of a member of a firm could not disentitle him. Moreover, the Lord Advocate had granted his concurrence in terms of section 94 (3) of the Patents and Designs Act 1907 (7 Edw. VII, cap. 29), “on just cause shown,” which proved that the pursuer had at any rate a good primd facie title to sue. In England anyone whom the Attorney-General authorised to sue in terms of section 25 (3) ( a) of the Act had a good title—Terrell on Patents (5th ed.), p. 251; London County Council v. Attorney-General, [1902] AC 165—and the concurrence of the Lord Advocate in a Scots case must have the same effect as the authorisation of the Attorney-General in an English case. Lawrence v. Comptroller-General of Patents, 1910 S.C.. 683, 47 S.L.R. 524, was also referred to.
Argued for the defender and respondent—The Lord Ordinary was right in dismissing the case, for the pursuer had no title to sue. The Lord Advocate's function, in terms of section 94 (3) of the Patents and Designs Act 1907, was merely to concur if he thought that the pursuer had a probable cause— Gillespie v. Young, &c., July 20, 1861, 23 D. 1357 ( per Lord Justice-Clerk at p. 1362). It was not for the Lord Advocate to decide whether the pursuer had a good title. That was a question for the Court. Todd & Higginbotham v. O'Regan, July 15, 1859, 21 D. 1320, was also referred to. The pursuer had no title to sue as an individual, since it was his firm and not he himself that had the interest.
At advising—
But then it is said that he has no title to sue this action, because he has revealed the fact that he is a member of the firm of Melville & Dundas. I am unable to understand how it can be maintained that that fact defeats his title. To begin with, it is not said, nor is it averred by the defender—which he could have done if it had been true—that “Melville & Dundas” is anything more than the name of an established firm. It is quite possible that the pursuer is the only partner in it, but why as a civil engineer interested professionally in reinforced concrete construction he should be excluded from suing the defender for the purpose of having a patent set aside because he belongs to a firm which does work of the kind to which the patent relates, I cannot understand. I think he may be held to have a perfectly substantial interest to set aside the patent; and he has gone to the Lord Advocate and has got the concurrence of the Lord Advocate, which, it is quite certain, can now only be given on cause shown. I presume that means cause shown as regards having some probable cause to attack the patent, and, as regards having right to raise an action, if it is an action that can be stated relevantly.
I am not to go into the question of the absolute right of the Lord Advocate to deal with such a matter to the exclusion of the jurisdiction of this Court; but I am very clearly of opinion that if a party brought an action which upon the face of its own condescendence was irrelevant, it would not be an answer to say that the matter had been inquired into by the Lord Advocate, and therefore the Court must hold it relevant. I think we would be perfectly entitled, if a case was not relevant, to throw it out as irrelevant. All that the Lord Advocate has done, after investigation, which we must assume he has made, is to grant his concurrence, and thereby put the pursuer in the position of being able to repel any objection raised on the ground that he has not settled with the Crown upon the matter. It is quite plain that the object of the concurrence of the Lord Advocate is to protect the Crown against actions being raised for the suppression of patents which the Crown has granted, if there are not reasonable or ostensible grounds for doing so.
I do not think I need to go into the matter any further. It is not a sufficient ground for holding that the pursuer, an engineer, has not got a title to sue a party who has a patent relating to the engineering business in which he practises his profession, whether alone or along with others, that in point of fact he carries it on at present under the firm name of Melville & Dundas either alone or with others. I do not think it is even stateable that if he is a member of the firm, the firm only can sue. He is in the exercise of his rights as a citizen who, being an engineer, has an interest to prevent a patent standing which does or may interfere with him in his business, whether in partnership with others or as an individual. I cannot understand the idea that he is to be excluded from taking up that position because he happens to he a member of a firm. Without going deeper into the question of the duties of the Lord Advocate and the privilege of
Page: 881↓
Mr Maitland referred to the case of Gillespie v. Young ( 23 D. 1357) and to the observations made in it. What the Court decided there was that the Lord Advocate could not be held to have given his consent in terms of the Act. In terms of the Act the giving of his consent requires that he should have investigated the case. All that was done in that case apparently was that the party went formally with his summons in his hand to the chief clerk of the Lord Advocate, who wrote upon the summons—“Grants concurrence for Her Majesty's Advocate to the foregoing summons.” That was following the form used in many cases in which the concurrence of the Lord Advocate is a mere formal matter in order to put things in shape, as, for instance, in petitions for breaches of interdict. But the observations of Lord Justice-Clerk Inglis in that case are very important as regards concurrence in such a case as this. His Lordship said—“The defender says that is not such a concurrence as is contemplated by the Act of Parliament. It is a mere formal concurrence; it does not pretend to be anything else; it is just the ordinary formal concurrence granted by somebody holding a general authority from the Lord Advocate, but it is not the concurrence which the Lord Advocate is directed to give or with hold upon consideration of the matter. Again, the pursuer rejoins to this, the only question into which the Court can inquire is whether the concurrence of the Lord Advocate has been given. Whether he has given it upon just cause shown or not is a question with which the Court has nothing to do. That is a matter touching the proper discharge by the Lord Advocate of his official duty, for which he is not responsible to this Court, but only to the Queen and to Parliament.
“It appears to me that there is a fallacy in this reply. It is quite true that if the concurrence of the Lord Advocate has been given, and if the fact of that concurrence being given is authentically proved to your Lordships, you have nothing to do with the conduct of the Lord Advocate in the administration of his department of the Government. That is quite true. You cannot inquire whether just cause was shown to him, or what cause was shown to him, or whether he required any cause to be shown, because he might be so well acquainted with the subject as not to require any cause to be shown, or he might think he was so well acquainted with the subject and so completely master of the merits of this patent or its demerits that he did not require any cause to be shown to him. And he might be right or wrong. But with all that your Lordships have nothing to do. I think if the Lord Advocate's concurrence is given, and if there is authentic evidence of that concurrence being given before the Court, your Lordships can inquire no further.”
That is exactly the position in which we are as regards the concurrence of the Lord Advocate; we must assume that he made sufficient and satisfactory inquiry before he granted his concurrence. As I said before, if an irrelevant case was presented to us, the fact that the Lord Advocate concurred in it would not affect our decision, because we are bound to see that the proceedings which are brought before us in the form of a summons and condescendence are relevant; but as regards going behind the Lord Advocate and inquiring what he has done, that is out of the question, for the reasons expressed by the Lord Justice-Clerk in the case quoted.
Upon the whole matter, I am satisfied that no ground has been shown for sustaining the Lord Ordinary's judgment.
Page: 882↓
The Court recalled the interlocutor of the Lord Ordinary and remitted to him to allow a proof.
Counsel for Pursuer and Reclaimer— J. R. Christie. Agents— Davidson & Syme, W.S.
Counsel for Defender and Respondent— Murray, K.C.— Maitland. Agents— Macandrew, Wright, & Murray, W.S.
