tions, and, where delay is unavoidable, and application must be made for extension, the reasons for asking same should be fully stated:

DECISION RENDERED BY THE PATENT Office (Appeal Department B) on 17TH OF DECEMBER, 1903, "Z. 35704:"

Applicant has no legal right to demand the grant of an extension of a term for which he has applied: on the contrary, the Patent Office has discretionary power to grant such an extension.

A term shall only be extended if sufficient reasons are assigned. Further extension of a term may be denied, although the term for which extension is desired has not been expressly designated as "last term." ""*

It appears that a term needs only to be expressly designated as "last term" when the Application Department is no longer disposed to grant any further term, no matter what sufficient reasons may be presented in support of the respective petition for extension of time.†

Reasons:

On 19th of November, 1901, an application for a patent was filed by Leopold Sch. in W. under “P. A. Z. 21601 of 1901" for an "Adjustable Bunsen Burner for Acetylene Incandescent Light," with five claims covering the features to be protected.

In the preliminary official action of February 5th, 1902, "P. A. Z. 21601" the merit of patentability was denied to the invention described in the above application, and a number of reference-patents were cited as conflicting with the novelty of applicant's device.

After repeated extensions of time, new claims were filed by applicant on 17th of June, 1902.

In a preliminary official action of October 9th, 1902, “Z. 14648,” attention is called to the first preliminary official letter, it being held that the objections contained in the latter have not been removed by the argument presented in applicant's reply and that, further, all the essential features of the invention characterized in the new claims, which were filed, are already anticipated in the cited British patents No. 17646 of 1901 and No. 12521 of 1901; the fact that in the drawing the proportions of dimension differ somewhat from those represented in the first British reference-patent is of no consequence, as said drawing can only be considered as constituting an example representing a form of executing the subjectmatter of the invention in question. Furthermore the British patents No. 14995 of 1899 and No. 10497 of 1894 (Fig. 4) are also cited on the ground that they contain illustrations of Bunsen tubes considered to be exactly identical with the subjectmatter of the application in question, and finally British patents No. 8275 of 1901 and No. 12956 of 1901 and United States patent No. 681052 are referred to in view of the fact that they show the mode of securing the screen between hood and Bunsen tube.

The term of one month allowed for filing a reply to this official action having been extended from November 17th, 1902, pursuant to applicant's request, a further petition for an extension of time was filed within the open term without stating any reason in support of such petition filed for an enlargement of time. In the deci

*See decision of the Patent Office (Appeal Department B) of June 24th, 1902, "Z. 15695," Austrian Patent Journal, 1903, V year, p. 520.

+ See, however, decision of the Patent Office (Appeal Department A) of February 21st, 1904, “Z. 4,961," Austrian Patent Journal, 1904, VI year, p. 216.

If it is held that no further extension can be obtained for a term allowed by the Patent Office to a party in order to enable the latter to take some action, such decision holds good only with the reserve that any further application for an extension of time would be inadmissible without weighty * reasons (para

graph 8, division 2, rder of Business).

**

sion rendered on appeal December 20th, 1902, "Z. 30731," this petition for an extension has been denied by Application Department V for want of any reason which might be worthy of consideration, and in view of the evidence presented in the preliminary official action of October 9th, 1902, "Z. 14648," the subject-matter of this application was at the same time rejected by the Department on the ground of want of novelty.

The appeal is directed, in the first place, against the reasons on the ground of which the application has been rejected, it being alleged that these reasons can not be sustained in view of the amendment of June 17th, 1902. Applicant makes also a request to the effect that a term be appointed for holding oral proceedings so that he may be able to demonstrate burners of his own construction and those described in the cited reference-patents in order to prove the differences which have already been shown in his reply of June 17th, 1902.

In the second place appellant opposes the Department's refusal to allow his petition for an extension of that term granted to him for preparing a reply to the preliminary official action of October 9th, 1902, "Z. 14648," and he complains of the fact that, in the present case, it has not been considered necessary at all to designate the term allowed to him until December 17th, 1902, expressly as "last term" so that he considers himself therefore justified in expecting a further additional term.

Neither of the above named allegations having been sustained, the appeal had to be rejected.

In rendering this decision, as far as it refers to the refusal of the petition for a new term, the following considerations have determined the Appeal Department to decide upon taking such action:

If, according to paragraph 55, the application is not in accordance with the prescribed requirements, applicant is asked by the officer of the Application Department, to whom the case in question has been referred, to correct the defects within a stated term. After a reply given in due time or after the lapse of the stated term without reply the Application Department decides on the application according to the facts of the case.

This term must be considered as constituting an official term within the meaning of paragraph 8 of the Order of Business of the Imperial and Royal Patent Office (Decree of the Ministry of Commerce of September, 1898, "R. G. Bl. No. 159,") and, therefore, it can be "extended according to the requirements and the circumstances of each individual case." There exists no law according to the provisions of which the party who presents a petition for the grant of a term would have the right to claim, by all means, the extension of a term granted to him, on the contrary, the Patent Office has discretionary power to grant such a term. In order to obtain a uniform order of procedure respecting the extension of terms and in pursuance of the right "to formulate rules as to the procedure to be followed by the members of the Application Department" granted to him in the last division of paragraph 55 of the Patent Laws, the President of the Patent Office has prescribed regulations in different orders and publications which were promulgated through the medium of the "Austrian Patent Journal" and have therefore been taken cognizance of also by the public at large and, above all, by patent attorneys.

In the publication issued by the President of the Patent Office on April 24th, 1899, "Z, 215/präs," (Austrian Patent Journal, 1899, p. 197) the following rule is laid down: "An extension of the terms allowed to applicants in the course of the preliminary examination procedure for preparing their replies can only be granted on a petition filed during an open term if there exist very important reasons and even then it can only be allowed to the extent which is absolutely necessary.

The same rule is included in the order promulgated by the President of the Patent Office on the 2d of October, 1899, "Z, 411/präs., (Austrian Patent Journal, 1899, p. 497).

* *

* * 29

Similar provisions are also contained among the rules for patent attorneys laid down by the President of the Patent Office in circular letters, for example in that of October 6th, 1902, "Z. 599/präs.," article 3: "In the petitions for the grant of a term, for which sufficient reasons must always be assigned, is (Austrian Patent Journal, year IV ex 1902, p. 841), and that of March 31st, 1903, “Z. 142/präs., article 20: "Respecting petitions for extension, I must insist also hereafter upon the demand that sufficient reasons be assigned for them" (Austrian Patent Journal, 1903, p. 306).

Appellant admits expressly that in the present case no reasons at all have been assigned in applicant's petition for an extension of the term "de präs., 17th December, 1902, Z. 30791," a request having been merely filed to the effect that further extension of time be allowed to January 17th, 1903, inclusive. The Application Department had therefore the right to deny the latter petition for extension of time solely for this reason, irrespective of the fact that, according to the circumstances, the petition granted until December 17th should have been entirely sufficient.

As regards appellant's further allegation that no "last term" has been allowed to him by the Application Department and that he had, therefore, the right to expect a further additional extension of time, it must be observed that the Application Department is bound to order a "last term" only in those cases where the Department is no longer disposed to allow to applicant a further additional term, even though the reasons assigned in support of the respective petition for extension might be entirely sufficient.

However, if the Application Department denied, with full right, the petition for extension filed by applicant, it became the Department's duty to decide on the application in question according to the facts of the case.

That this decision, rejecting the subject-matter of the application in question for want of novelty, was the only one which the Department could render is proved by the reasons assigned in the appealed decision, respectively in the preliminary official action of October 9th, 1902, “P. A. Z. 14648-02,” referred to in the latter, these reasons having been fully sustained by the Appeal Department.

Applicant's petition to the effect that he be summoned to be present at the proceedings and to produce burners of his system and of the constructions which have been cited as anticipating his device in order to demonstrate the differences which, according to his allegation, distinguish these burners, has also been denied by the Appeal Department on the ground that the intended demonstration is entirely superfluous. In fact, the existence of such differences has not been doubted either by the Application Department or by the Appeal Department, however the merit of possessing the incidents of patenable novelty has been denied to them.

Switzerland.

Patents.

The balloting of March 19 last resulted in the approval by the nation of the change in the Constitution which will make possible the proposed revision of the Patent Law. The new provisions are not likely to become effective before 1906.

Australian Commonwealth.

PATENTS.-Conversion of State Patents.

An official statement has now been made by the Commissioner as to the practice that will be followed in this regard. A number of the points contended for appear to have been gained, while others are not dealt with. We are indebted to several of our Australian friends for this information. For earlier phases of the matter see PATENT AND TRADE-MARK REVIEW, pages 1013, 1047 and 1079. The following is the text of the notice:

APPLICATIONS FOR PATENTS UNDER SECTION 7 OF THE "PATENTS ACT 1903."

(The Australian Official Journal of Patents, March 21, 1905.)

With a view to removing any doubts which may exist in the minds of Applicants or Patent Attorneys as to what may constitute the basis of an application for Letters Patent under Section 7 of the Patents Act 1903, and the manner in which such application should be made, it is hereby notified that a State patentee may found his application for a Patent on any State Patent or Patents in force at the time of making application for the Commonwealth Patent. The application must be made by the actual holder of the State Patent, whether he is the person to whom such State Patent was originally granted, or one who holds it by purchase or assignment. If the holder is not the original patentee, he must, when submitting the application, furnish proof that the right to such Patent has been duly assigned to him, because the law recognises the original patentee as alone entitled to make application, and the applicant without an assignment would have no locus standi under the section. The specification accompanying the application must embrace only the substance of the State Patent, the incorporation of anything beyond it being quite opposed to the spirit of the section. The extension, to the Commonwealth, of a State Patent must be the extension of the identical invention. Any improvements must be made the subject of a separate application.

With regard to the form of grant to be issued in respect to such applications, the fact of a State patentee holding one or more State Patents for the same invention will not of itself afford a ground for excepting from the Commonwealth grant the States in which patents had been granted for the invention prior to the date of the Commonwealth application.

State patentees who resolve to surrender their State Patents may do so at any time after the grant of the Commonwealth Patent, and such surrender must be made by deed.

March 20th, 1905.

GEORGE TOWNSEND,

Commissioner of Patents.

Portugal.

Patents and Trade Marks.

A decree, dated March 16, 1905, modifying the existing laws will come into force June 1, 1905.

The decree was published in the "Diario do Governo" (Official Gazette) of April 1, 1905. We shall publish in a later issue a digest of the provisions of the

enactment.

Australian Commonwealth-New Zealand.

PATENTS.-Intercolonial Arrangements.

An arrangement was entered into between the Commonwealth and New Zealand which took effect April 1, 1905, and which allows priority in each colony from the date of filing in the other colony provided that application is filed within twelve months after such date. Application must be accompanied by complete specification.

Victoria.

PATENTS.-Application Under Victorian Act, Section 56.

We are in receipt of an interesting memorandum from Mr. Fred Walsh, of Sydney, with relation to an application presented under the Victorian act since the Commonwealth law came into force, and which on reference to the AttorneyGeneral, Sir Joseph Symon, was received and considered.

There had been publication, which made it desirable to take advantage of the provisions of Section 56 of the Victorian act allowing 12 months after applying elsewhere, and Section 8 of the Commonwealth Act, permitting applications for State patents pursuant to an acquired right, was invoked, application being based on a British application filed within the 12 months next preceding the Victorian application. After obtaining Victorian Patent it was proposed to extend same to the Commonwealth.

This right cannot survive as to further applications after May 31, 1905—one year after the commencement of the Commonwealth Act, but if the case be of little value as a precedent, it is certainly interesting and instructive:

France.

List of Colonies.

(Translation from La Propriete Industrielle March 31, 1905.)

The following is a complete list of the French colonies, received from the National Office of Industrial Property:

French West Africa (Senegal, French Guinea, Ivory Coast, Dahomey, Upper Senegal and Niger). French Kongo, Madagascar and dependencies. Mayotta and Comoro, Réunion, French Coast of Somali. Indo-China (Cochin China, Cambodia, Anam, Tongking). French Indian Establishment. New Caledonia. French Establishment of Oceanica. Guadeloupe. Martinique. St. Pierre and Miquelon. French Guiana.

Great Britain.

TRADE MARKS.-Important Decision.

A very important and hard fought case has just been brought to a conclusion by the decision of the House of Lords.

The action was for "passing off" and was brought by Weingarten Bros., an American firm, against the English house of Charles Bayer & Co.