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 Copyright © 2018
Carolina Academic Press, LLC
All Rights Reserved

ISBN: 978-1-5310-0068-4
eISBN: 978-1-53100-069-1

Library of Congress Cataloging-in-Publication Data

Names: Landers, Amy L., author.

Title: Understanding patent law / Amy L. Landers.
Description: Third edition. | Durham, North Carolina : Carolina
Academic Press, LLC, [2018] | Series: Understanding series |
Includes bibliographical references and index.
Identifiers: LCCN 2017046268 | ISBN 9781531000684 (alk. paper)
Subjects: LCSH: Patent laws and legislation--United States.
Classification: LCC KF3114 .L36 2018 | DDC 346.7304/86--dc23
LC record available at https://lccn.loc.gov/2017046268

Carolina Academic Press, LLC

700 Kent Street
Durham, North Carolina 27701
Telephone (919) 489-7486
Fax (919) 493-5668
www.cap-press.com

Printed in the United States of America

8
Contents

Preface
Frequent Citations and Abbreviations
Chapter 1 · Introduction to the Patent System
§ 1.01 Introduction
§ 1.02 History of the U.S. Patent System
[A] The British Patent System and the Statute of Monopolies
[B] U.S. Constitutional Basis: Adoption of the Promotion
Clause
[C] Congressional Adoption of the Patent System
§ 1.03 Current Law: The America Invents Act of 2011
§ 1.04 The Patent System's Theoretical Foundations
[A] Patent Law's Legislative Foundation
[B] Patents as an Appropriation Mechanism
[C] Patents as an Incentive System
§ 1.05 What is the Patent Right to Exclude?
§ 1.06 How Are Patents Used?
§ 1.07 Conclusion
Chapter 2 · The U.S. Patent & Trademark Office and the Application
Process
§ 2.01 Introduction
§ 2.02 Patent Applications: Pre-Filing Considerations
§ 2.03 The Patent Application
[A] Provisional Utility Patent Applications
[B] Non-provisional Utility Patent Applications
[C] Some Details: A Closer Look at a Patent Specification
§ 2.04 Patent Prosecution
[A] Patent Application Secrecy and Publication
§ 2.05 Examination Procedures
[A] Intake and Examination
[B] Final Office Actions
[C] Continuations
[D] Third Party Communication with the PTO
§ 2.06 International Considerations

9
 [A] The Patent Prosecution Highway: Work Sharing
[B] Paris Convention Priority
§ 2.07 Conclusion
Chapter 3 · Post-Grant Administrative Proceedings
§ 3.01 Introduction
§ 3.02 Re-Issue
[A] Background to Reissue Proceedings
[B] Defining “Error” for Purposes of Reissue
[C] Limitations on Reissue
§ 3.03 Continuity of Reissued Claims and the Doctrine of Intervening
Rights
§ 3.04 Certificate of Correction of Mistake
§ 3.05 Reexamination
[A] Generally
[B] Ex Parte Reexamination
[C] The Former Inter Partes Reexam
§ 3.06 Post-Grant Review
§ 3.07 Inter Partes Review
§ 3.08 Supplemental Examination
§ 3.09 Transitional Program for Covered Business Method Patent
Review
§ 3.10 Priority of Inventorship
§ 3.11 Conclusion
Chapter 4 · Claims
§ 4.01 Background
§ 4.02 What Is a Claim Limitation?
§ 4.03 The Anatomy of a Claim
[A] The Preamble
[B] The Transition
[C] The Body of the Claim
§ 4.04 Types of Claims
[A] Independent Claims, Dependent Claims and Multiple
Dependent Claims
[B] Apparatus Claims
[C] Process and Method Claims
[D] Product-By-Process Claims
[E] Composition Claims
[F] Combination Claims
[G] Means Plus Function Claims

10
 [H] Markush Claims
[I] Jepson Claims
§ 4.05 Conclusion
Chapter 5 · Patent Types
§ 5.01 Introduction
§ 5.02 Utility Patents
§ 5.03 Design Patents
§ 5.04 Plant Patents
§ 5.05 Plant Variety Protection Certificate
§ 5.06 Conclusion
Chapter 6 · Adjudication of Patent Disputes
§ 6.01 Introduction
§ 6.02 Litigation in the U.S. District Courts
[A] Subject Matter Jurisdiction
[B] Standing to Sue for Infringement
[C] Pre-Filing Investigation and Pleading
[D] Declaratory Judgment Jurisdiction
[E] Personal Jurisdiction and Venue
§ 6.03 The U.S. Court of Appeals for the Federal Circuit
[A] Background of the Federal Circuit Court of Appeals
[B] The Jurisdiction of the Federal Circuit
§ 6.04 Patent Litigation and the International Trade Commission
§ 6.05 Conclusion
Chapter 7 · Overview: The Disclosure Requirements of § 112
§ 7.01 Introduction
§ 7.02 History and Policy of Patent Disclosure
§ 7.03 Assessing the Adequacy of the Disclosure Requirements
§ 7.04 Conclusion
Chapter 8 · Enablement
§ 8.01 Introduction
§ 8.02 The Enablement Analysis
[A] Generally
[B] The Historic Perspective: O’Reilly v. Morse
[C] Edison's Light Bulb: Consolidated Electric Light Co. v.
McKeesport Light
[D] Comparison: Bell's Telephone Patent
§ 8.03 Enablement and Claim Scope
§ 8.04 Undue Experimentation and the Wands Factors

11
§ 8.05 Enablement, Priority and Timing
[A] The Relevant State of the Art
[B] Enablement and Priority
§ 8.06 Enablement and Utility
§ 8.07 Economic Considerations
§ 8.08 Conclusion
Chapter 9 · Written Description
§ 9.01 Introduction
§ 9.02 Applicability
§ 9.03 Ariad: The Current Legal Standard
§ 9.04 One Application of the Possession Test
§ 9.05 Continuations: Benefit of an Earlier Filing Date
§ 9.06 Applying the Standard to Nascent Technologies
§ 9.07 Comparison: Written Description and Enablement
§ 9.08 Conclusion
Chapter 10 · Definiteness
§ 10.01 Introduction
§ 10.02 Particularly Pointing Out and Distinctly Claiming
[A] Evolution of the Standard: The U.S. Supreme Court's
Nautilus v. Biosig Instruments
[B] More about Objective Anchors
§ 10.03 Means Plus Function Claims
§ 10.04 “Applicant Regards:” The Inventor's Definition
§ 10.05 Remedy: Should an Indefinite Claim Be Invalidated?
§ 10.06 Conclusion
Chapter 11 · Best Mode
§ 11.01 Overview
§ 11.02 The Best Mode Standard
§ 11.03 Application of the Best Mode Standard
[A] First Prong: The Inventor's Subjective Intent
[B] Second Prong: Objective Examination of the Patent
Disclosure
§ 11.04 Impact of a Best Mode Violation
§ 11.05 Conclusion
Chapter 12 · Overview of § 102
§ 12.01 Introduction
§ 12.02 Key Principles Relevant to § 102
§ 12.03 The Pre-AIA (1952) Version of § 102

12
§ 12.04 The America Invents Act (AIA) and Section 102
[A] The Prior Art and the First to File System
[B] Exceptions to the Prior Art and the First to File System
§ 12.05 Section 102's “Strict Identity” Requirement
§ 12.06 Inherency
[A] Defining Inherency
[B] Inherency and “New Use” Patents
§ 12.07 The AIA: Tax Strategies
§ 12.08 Conclusion
Chapter 13 · Public Knowledge and Use as Prior Art
§ 13.01 Introduction
§ 13.02 Territoriality Restrictions: “Known” or “Used”
§ 13.03 Prior Knowledge
[A] Prior Knowledge Must Be “Publicly Known”
[B] Knowledge Must Be Enabling
§ 13.04 Prior Use
[A] What is a “Public Use”?
§ 13.05 “Public Use” of a Secret Process
§ 13.06 Private Uses
§ 13.07 The Experimental Use Exception
§ 13.08 Corroboration: Proving Prior Knowledge and Use
§ 13.09 Conclusion
Chapter 14 · Patents, Printed Publications and Information “Otherwise
Available to the Public”
§ 14.01 Introduction
§ 14.02 Printed Publications
[A] Background: What is a “Printed Publication” under § 102?
[B] “Printed Publications” and Public Accessibility
[C] Development of the “Public Accessibility” Standard
§ 14.03 The Current Standard: In re Klopfenstein
§ 14.04 The AIA's “Otherwise Available to the Public”
§ 14.05 Prior Patents Under §§ 102(a) and (b)
§ 14.06 Conclusion
Chapter 15 · Prior Sales And Offers For Sale
§ 15.01 Introduction
§ 15.02 Defining an “Offer for Sale” or “Sale”
§ 15.03 Licenses and On-Sale Activity
§ 15.04 The “Ready for Patenting” Standard

13
§ 15.05 The U.S. Supreme Court's Pfaff v. Wells Electronics, Inc.
§ 15.06 More on the Pfaff “Ready for Patenting” Standard
§ 15.07 The On-Sale Bar Under the AIA
§ 15.08 Conclusion
Chapter 16 · Abandonment and the Pre-AIA § 102(c)
§ 16.01 Introduction
§ 16.02 Historic Background of the Abandonment Doctrine
§ 16.03 Patentee Delay
§ 16.04 Abandoned Invention vs. Abandoned Application
§ 16.05 Disclosed But Unclaimed Subject Matter
§ 16.06 Conclusion
Chapter 17 · Prior Patents
§ 17.01 Introduction
§ 17.02 Operation of the Pre-AIA 35 U.S.C. § 102(d)
§ 17.03 Identifying Prior Art that is “Patented”
§ 17.04 Claim Scope and Validity of the Foreign Patent
§ 17.05 When Is a Foreign Invention “Patented”?
§ 17.06 Distinction between § 102(d) and the “Patented” Provisions of
§§ 102(a) and (b)
§ 17.07 Conclusion
Chapter 18 · Earlier-Filed Patents and Applications: The Pre-AIA §
102(e)
§ 18.01 Introduction
§ 18.02 U.S. Patent Applications
[A] Origins of U.S. Patents as Prior Art
[B] In re Hilmer: Prior U.S. Patents and Foreign Filings
§ 18.03 Patent Applications Filed Under the Patent Cooperation Treaty
§ 18.04 Published Patent Applications
§ 18.05 Conclusion
Chapter 19 · 35 U.S.C. § 102(f) Derivation and Inventorship
§ 19.01 Introduction
§ 19.02 What Is “Derivation”?
[A] The Legal Standard for Derivation under 35 U.S.C. § 102(f)
[B] Application of § 102(f)'s Two-Prong Test
§ 19.03 Derivation and Inventorship
[A] Who Is an Inventor under the Patent Act?
[B] Joint Inventors
§ 19.04 Failure to Name Correct Inventor: Consequences

14
§ 19.05 Conclusion
Chapter 20 · Section 102(g): The First to Invent System
§ 20.01 Introduction
§ 20.02 Structure and Operation
§ 20.03 Conception and Reduction to Practice
[A] Conception
[B] Inventor Recognition and Appreciation of the Invention
[C] Knowledge of Utility is Not Required
[D] Conception's Corroboration Requirement
§ 20.04 Reduction to Practice
[A] Actual Reduction to Practice
[B] Reduction to Practice: All Elements Requirement
[C] Reduction to Practice: Operation
[D] Inventor's Appreciation and Recognition of the Invention's
Utility
[E] Constructive Reduction to Practice
§ 20.05 Simultaneous Conception and Reduction to Practice
§ 20.06 Priority Rules under § 102(g)
[A] General Priority Rule
[B] Diligence and the First to Conceive
§ 20.07 “Abandoned, Suppressed or Concealed”
[A] Overview
[B] Intentional Conduct
[C] Patentee Delay
[D] Patentee's Resumed Activity
§ 20.08 Conclusion
Chapter 21 · Nonobviousness
§ 21.01 Introduction
§ 21.02 The Origins Of The Nonobviousness Requirement
[A] Patentability Standards Prior § 103
[B] The Secondary Considerations
[C] The Former “Flash of Creative Genius” Standard
§ 21.03 The Analytic Framework: Graham v. John Deere
§ 21.04 How Is Prior Art Used Under § 103?
§ 21.05 Background: Combining Multiple References
§ 21.06 Current Law: KSR Int'l Co. v. Teleflex Inc.
§ 21.07 KSR's Progeny: Application of the Standard
[A] Ordinary Skill and Common Sense
[B] Post-KSR: Motivation to Combine and Obvious to Try

15
§ 21.08 Determining The Scope and Content of the Prior Art
[A] What Is “Prior Art” Under § 103?
[B] A Reference Must Constitute Analogous Art
§ 21.09 Secondary Considerations of Nonobviousness
§ 21.10 Conclusion
Chapter 22 · Utility
§ 22.01 Introduction
§ 22.02 Operable Utility
§ 22.03 Specific or Practical Utility
[A] The Historical Context for the Modern Utility Standard
[B] U.S. Supreme Court Sets § 101's Utility Standard: Brenner
v. Manson
[C] Subsequent Development of the Brenner Utility Standard
§ 22.04 Moral Utility
§ 22.05 Some Economic Considerations Relating to the Utility
Requirement
§ 22.06 Conclusion
Chapter 23 · Statutory Subject Matter
§ 23.01 Introduction
§ 23.02 Section 101's Statutory Classifications
§ 23.03 Products of Nature and Natural Phenomenon
[A] Historic Background
[B] The Supreme Court's Diamond v. Chakrabarty
§ 23.04 Products of Nature: Association for Molecular Pathology v.
Myriad Genetics, Inc.
§ 23.05 Natural Phenomena: Mayo Collaborative Services v. Prometheus
§ 23.06 The Abstract Subject Matter Exclusion
§ 23.07 Background to the Abstract Subject Exclusion: Software
[A] Gottschalk v. Benson
[B] Parker v. Flook
[C] Diamond v. Diehr
§ 23.08 Abstract Subject Matter and Bilski v. Kappos
§ 23.09 Alice v. CLS Bank International
§ 23.10 Software Claims after Alice
§ 23.11 Bright Line Exceptions
§ 23.12 Conclusion: An Analytic Framework for Statutory Subject
Matter
Chapter 24 · Claim Construction: Procedural Considerations
§ 24.01 Introduction

16
§ 24.02 Comparison: Claim Interpretation at the U.S. PTO and in the
Courts
§ 24.03 Claim Construction Procedures in the Courts
[A] Former Law: Claim Construction Procedures
[B] Current Law: Markman v. Westview Instruments, Inc.
§ 24.04 Markman Procedures in the Federal District Courts
§ 24.05 The Appellate Standard of Review
§ 24.06 Claim Construction and the Accused Device
§ 24.07 Conclusion
Chapter 25 · The Substantive Interpretation of Patent Claims
§ 25.01 Introduction
§ 25.02 History: Former Approaches to Claim Construction
§ 25.03 Current Approach: The Federal Circuit's Phillips v. AWH
[A] The Phillips Claim Construction Methodology
[B] Application of the Phillips Claim Construction
Methodology
§ 25.04 A Closer Look at the Interaction of the Specification and Claim
Terms
[A] Putting a Claim Construction Analysis Together
[B] Disclaimer of Subject Matter: SciMed
§ 25.05 Claim Construction and Validity
§ 25.06 Canons of Claim Construction
[A] The Doctrine of Claim Differentiation
[B] Construction of Terms in the Preamble
[C] Additional Canons of Claim Construction
§ 25.07 Conclusion
Chapter 26 · An Introduction to Patent Infringement
§ 26.01 Introduction
§ 26.02 Violation of the Provisional Right
§ 26.03 Overview of Infringement Theories
[A] Direct and Indirect Infringement
[B] Literal Infringement and Infringement under the Doctrine
of Equivalents
§ 26.04 Conclusion
Chapter 27 · Direct Infringement
§ 27.01 Introduction
§ 27.02 Type of Claims and Direct Infringement
[A] Product, Device and Apparatus Claims
[B] Process and Method Claims

17
§ 27.03 Acts That Constitute Infringement under § 271(A)
[A] “Makes”
[B] “Uses”
[C] “Offers to Sell”
[D] “Sells”
[E] “Imports into the U.S.”
§ 27.04 The Problem of Divided Infringement
§ 27.05 Conclusion
Chapter 28 · Prior Use Rights
§ 28.01 Introduction
§ 28.02 Implementing the Prior Use Rights under the AIA
[A] Prior Law
§ 28.03 Prior Use Rights under the AIA
[A] Subject Matter Scope
[B] Who is a Prior User?
[C] Effect of the Defense
[D] The University Exclusion
§ 28.04 Conclusion
Chapter 29 · Infringement Under the Doctrine of Equivalents
§ 29.01 Introduction
§ 29.02 Winans v. Denmead: The Historic Foundations of the Doctrine
of Equivalents
§ 29.03 The Development of the Current Doctrine of Equivalents:
Graver Tank & Mfg. Co. v. Linde Air Products Co.
§ 29.04 The U.S. Supreme Court's Refinement of the Doctrine of
Equivalents: Warner-Jenkinson Co. v. Hilton Davis Chemical Co.
[A] Factual Background of the Warner-Jenkinson Opinion
[B] Warner-Jenkinson's Affirmation of the Doctrine of
Equivalents
[C] Warner-Jenskinson and the Principle Prosecution History
Estoppel
[D] The Doctrine of Equivalents and After-Arising Technology
§ 29.05 Tests for Infringement in a Post-Warner-Jenkinson Era
§ 29.06 Putting the Doctrine Together: An Example of the Application of
the Warner-Jenkinson Standard
§ 29.07 The Reverse Doctrine of Equivalents
§ 29.08 Conclusion
Chapter 30 · Restrictions on the Doctrine of Equivalents
§ 30.01 Introduction

18
§ 30.02 Prosecution History Estoppel: The Festo Cases
[A] Overview of the Doctrine of Prosecution History Estoppel
[B] Festo: The Ground Rules of Prosecution History Estoppel
[C] Festo: The Federal Circuit's Refinement on Remand
[D] Putting the Festo Analysis Together: Application of the
Doctrine of Prosecution History Estoppel
§ 30.03 The Prior Art
§ 30.04 The Public Dedication Rule
§ 30.05 The All Elements Rule
§ 30.06 Conclusion
Chapter 31 · Infringement of Mean Plus Function Claim Terms
§ 31.01 Introduction
§ 31.02 Identifying a Means Plus Function Claim Term
§ 31.03 How to Perform Claim Construction of a Means Plus Function
Claim
§ 31.04 Literal Infringement Analysis for Means Plus Function Claims
[A] Literal Infringement of Means Plus Function Claims
[B] Literal Infringement and After-Arising Technologies
[C] Application of the Literal Infringement Standard for Claims
Governed by § 112(f): Al-Site Corp. v. VSI Int'l, Inc.
§ 31.05 The Doctrine of Equivalents
[A] Doctrine of Equivalents and Functional Claims
[B] Structure: A Comparison of Literal and Doctrine of
Equivalents Infringement
§ 31.06 Conclusion
Chapter 32 · Experimental Use
§ 32.01 Introduction
§ 32.02 Common Law Experimental Use
[A] The Origins of Common Law Experimental Use
[B] Current Standards: Common Law Experimental Use
§ 32.03 Statutory Experimental Use: 35 U.S.C. § 271(e)
[A] The Background and Structure of Statutory Experimental
Use
[B] Statutory Experimental Use and the FDA Approval Process
[C] The Supreme Court's Construction of Statutory
Experimental Use: Merck KGaA v. Integra Lifesciences I, Ltd.
[D] The Federal Circuit's Application of Merck
§ 32.04 Conclusion
Chapter 33 · Contributory Infringement

19
§ 33.01 Introduction
§ 33.02 Competition Policy Concerns
§ 33.03 “A Material Part of the Invention”
§ 33.04 Substantial Non-Infringing Uses
§ 33.05 Knowledge of Use for Infringement
§ 33.06 Direct Infringement by Another
§ 33.07 Conclusion
Chapter 34 · Active Inducement
§ 34.01 Introduction
§ 34.02 Intent to Induce Infrigement
§ 34.03 Conduct That Induces Infringement
§ 34.04 Conclusion
Chapter 35 · Extraterritorial Activity and Patent Infringement
§ 35.01 Introduction
§ 35.02 Section 271(a) and Extraterrotorial Activity
[A] Infringing Uses: NTP, Inc. v. Research in Motion, Ltd.
[B] The Locus of an Infringing Offer to Sell and Infringing
Sales
[C] Activity Directed to the U.S.
§ 35.03 Exporting Components from the U.S.
[A] Section 271(a) “Makes” and Extraterritorial Activity
[B] The Enactment of Section 271(f): Closing the Deepsouth
Loophole
§ 35.04 Interpretation of Section 271(f): What is a “Component of a
Patented Invention”?
[A] Designs and Plans
[B] Software: § 271(f) and Microsoft v. AT&T
[C] Method Claims and Section 271(f)
§ 35.05 Section 271(g) and Importation
[A] The Enactment of Section 271(g)
[B] The Operation of Section 271(g)
§ 35.06 The U.S. International Trade Commission
[A] The Jurisdiction of the International Trade Commission
[B] The International Trade Commission Process
[C] Section 271(g) and Patent Infringement in the International
Trade Commission
§ 35.07 Conclusion
Chapter 36 · Inequitable Conduct and the Duty to Disclose
§ 36.01 Introduction

20
§ 36.02 Inequitable Conduct: History and Policy
[A] Origins in Equity
[B] Development of Inequitable Conduct
§ 36.03 The Current Standard for Inequitable Conduct
[A] Therasense: Intent to Deceive
[B] A Closer Examination of the Materiality Standard
[C] Application of the Therasense Standard
§ 36.04 Supplemental Examination and Inequitable Conduct
§ 36.05 Conclusion
Chapter 37 · Patent Misuse
§ 37.01 Introduction
§ 37.02 The Origins of the Patent Misuse Doctrine
[A] Early Common Law Roots
[B] The Mercoid Cases: Patent Misuse and Contributory
Infringement
§ 37.03 The 1952 Patent Act: Dawson Chemical v. Rohm & Haas
§ 37.04 The 1988 Amendments: Refusals to License and Market Power
§ 37.05 Temporal Scope of a Patent License
§ 37.06 Tying and Patent Pools
§ 37.07 Conclusion
Chapter 38 · Patents and Antitrust Law
§ 38.01 Introduction
§ 38.02 Whether Patents Are Monopolies
§ 38.03 Tying Claims
[A] Terminology: Tying, Per Se Illegality and the Rule of
Reason
[B] The Evolving Jurisprudence of Patent Tying Cases
[C] Patent Tying: Monsanto Co. v. McFarling
§ 38.04 Reverse Payment Settlements
§ 38.05 Unilateral Refusals to License a Patent
§ 38.06 Patent Infringement Litigation and the Sham Litigation
Exception
[A] Anticompetitive Patent Infringement Litigation:
Handgards, Inc. v. Ethicon, Inc.
[B] The First Amendment and Noerr-Pennington Immunity
[C] The Sham Exception to Noerr-Pennington Immunity
§ 38.07 Fraudulent Procurement of a Patent: Walker Process Claims
§ 38.08 Conclusion
Chapter 39 · Exhaustion and the First Sale Doctrine

21
§ 39.01 Introduction
§ 39.02 First Sale and Exhaustion
§ 39.03 The Nature of the Patented Product
§ 39.04 The Doctrine of Repair/Reconstruction
[A] The Analytic Framework
[B] The Sequential Replacement of Parts
§ 39.05 Replacements “Akin to Repair”
§ 39.06 Conclusion
Chapter 40 · Prosecution Laches
§ 40.01 Introduction
§ 40.02 The Historic Foundations of Prosecution Laches
§ 40.03 The Current Standard
[A] Delay
[B] Prejudice
§ 40.04 Conclusion
Chapter 41 · Remedies for Patent Infringement
§ 41.01 Introduction
§ 41.02 Injunctive Relief
[A] Permanent Injunctive Relief
[B] The Current Standard: eBay v. MercExchange
[C] Application of the eBay Standard
[D] Compensation for Ongoing Infringement
§ 41.03 Preliminary Injunctions
§ 41.04 Monetary Relief: Statutory Background
§ 41.05 Monetary Relief: Lost Profits
[A] The Panduit Test: Proof of a Causal Relationship to
Infringement
[B] Spotlight on the Second Panduit Factor: Availability of
Non-Infringing Alternatives
[C] Lost Profits: Price Erosion
[D] Market Share Calculation of Lost Profits
§ 41.06 Monetary Relief: Reasonable Royalty
[A]Established Royalty
[B] The Analytic Approach
[C] The Hypothetical Negotiation
§ 41.07 Montetary Relief: Additional Considerations
[A] Apportionment and the Entire Market Value Rule
[B] Patentee Delay and the Ability to Recover Monetary Relief
[C] Actual and Constructive Notice/Marking

22
§ 41.08 Willful Infringement and Exceptional Cases
§ 41.09 Prejudgement Interest
§ 41.10 Design Patent Infringement
§ 41.11 Conclusion
Chapter 42 · International Treaties and The Globalization of Patents
§ 42.01 Introduction
§ 42.02 The Paris Convention of 1883
§ 42.03 The Patent Cooperation Treaty
§ 42.04 The European Patent Convention
§ 42.05 The Proposed European Unitary Patent System
§ 42.06 The World Trade Organization and the TRIPS Agreement
§ 42.07 Conclusion
Glossary
Table of Cases
Index

23
Preface

Patent law is an important, fascinating and rapidly changing field. This

book was written for all who need to understand these recent changes, as
well as for students in intellectual property courses. For those engaged in
international practice, this work sheds helpful light on the key doctrines
and theories underlying U.S. patent law.
Much has changed since the last edition was published in 2012. Several
mainstay doctrines are now historical background. Because of these
changes, several chapters have been almost entirely re-written. Others
weave together numerous subtle yet still profound shifts in the law,
reflecting theoretical changes. The Supreme Court has forged ahead with
new, key decisions. All of the Court's decisions in patent law have been
included in this edition. These include the patentable subject matter cases,
Alice v. CLS Bank, Mayo Collaborative Services v. Biosig and the
Association for Molecular Pathology v. Myriad Genetics, Inc., which
changed the course of patentability. The Supreme Court's Impression
Products, Inc. v. Lexmark shifted the foundation of exhaustion from an
intent-based doctrine into a fundamental limitation on the patent right.
Patent litigation has shifted due to the Court's Gunn v. Minton and T.J.
Heartland v. Kraft Foods. The remedies chapter adds four new ground-
breaking Supreme Court decisions, including Octane Fitness, LLC v.
ICON Health & Fitness, Inc. on willfulness relief and Samsung
Electronics Co. v. Apple Inc. on monetary damages for design patent
infringement. The Court's new standards for assessing the sufficiency of
claims from Nautilis v. Biosig is reviewed, as well as the appellate review
of the construction of claims in Teva Pharmaceuticals USA, Inc. v.
Sandoz, Inc.
In the meantime, the Federal Circuit has been active. Changes in the
application of the disclosure standards have reigned in broad claim
boundaries. Williamson v. Citrix Online, has become critical to
understanding claim construction. Limelight v. Akami has assisted in the
field's understanding of divided infringement. The America Invents Act,
newly enacted when the last edition of this book was published, has now
been subject to some significant interpretative guidance. In addition to
doctrinal developments in dozens of areas, the Federal Circuit has applied
and elucidated the Supreme Court's most recent rulings.

24
 For those who are encountering patent law, one word of advice:
Patience. Reading the rules, cases and statutes can be intellectually
challenging. The terminology, history and science described in these
authorities is complex. This book is intended to provide a helpful roadmap
to the history, current law and underlying theory. Additionally, the
technology in the major cases is described in easy-to-understand language
so that the legal principles can be more readily understood.

25
Another Random Scribd Document
with Unrelated Content
time the sum of £75 was ordered to be paid to Messrs. Reeve, Elph,
and Cleveland, the trustees appointed by the feoffees of the town
land, as the piece of the site for the chapel; and the further sum of
£10, being the charge of the Solicitor of the Treasury, relative to the
conveyance.
On Monday, August the 6th, 1832, the first stone of the new chapel
was laid in the presence of a vast concourse of the inhabitants and
visitors. The committee, the contractor, and architect, met at the
vicarage-house, whence they proceeded to the ground. Two
hundred and forty children—the Sunday and endowed schools
belonging to the established church—had also been brought
together. After an explanation of the object of the meeting, the
Vicar laid the first stone, in which was deposited a piece of money,
of the coinage of William IV., and a plate engraven as follows:

LOWESTOFT.
THE FIRST STONE OF THIS
CHAPEL,
TO BE CALLED BY THE NAME OF
SAINT PETER,
AND ERECTED
BY SUBSCRIPTIONS AND VOLUNTARY
CONTRIBUTIONS, WITH THE AID OF THE
INCORPORATED SOCIETY FOR
BUILDING AND ENLARGING CHURCHES,
WAS LAID ON THE 6TH DAY OF AUGUST,
IN THE 3RD YEAR OF THE REIGN OF HIS
MOST GRACIOUS MAJESTY,
WILLIAM THE FOURTH;
1832;
BY THE
REV. FRANCIS CUNNINGHAM, M.A., VICAR.

JOHN BROWN, ARCHITECT.

After this the Vicar offered up a prayer composed for the occasion,
and the whole assembly sang the 100th Psalm. On the 15th of
August, 1833, Dr. Charles Sumner, Lord Bishop of Winchester, under
a commission given to him by the Bishop of this diocese, proceeded
to the act of consecration. Prayers were read by the Vicar, and the
sermon preached by the Bishop; the text being taken from the
122nd Psalm, and 7th verse.
The subject of the Prelate’s sermon was the Peace attendant upon a
knowledge of the truths of the Gospel:—that Peace beautifully
promoted by the various services of our church, and an application
as to the possession of this Peace on the part of those present. A
collection was made after the sermon of £56 13s. 6d. On Sunday
August the 25th, the Sacrament of the Lord’s Supper was
administered for the first time at the communion table to 140
persons.
On the 15th of October following, a certificate was forwarded to the
Secretary of the Incorporated Society, informing him, that the chapel
had been completed in the substantial and workmanlike manner, and
was capable of accommodating 1215 persons, including 900 free
sittings. In consequence of subsequent arrangements, these sitting
have been increased to 1263; of which 939 are free.
It appears that upon the completion of the work, and the putting up
of a bell, weighing about 6 cwt., a sum of £196 6s. 5d. was required
for the payment of all the bills and expenses, which the vicar
generously consented to advance by way of loan. Of this debt £140
18s. 9d. were repaid; so that the final deficit paid by Mr.
Cunningham was £55 7s. 8d. It should be recorded, that an offer
was made by Mr. Robert Allen, an inhabitant of Lowestoft, to present
to the chapel, glass for the east window, painted by himself at the
advanced age of eighty-seven, representing the king’s arms, &c. But
on consulting the architect, it was judged that this glass was not in
character with the design of the building, and that, therefore, plain
glass would be adopted to prevent the glare to which, otherwise, the
congregation would be exposed. A copy of the original faculty for
erecting this edifice is deposited in the chest of Lowestoft, and the
opinion of Dr. Lushington and Mr. Kitson, respecting the faculty pews
are in the hands of the Vicar; from whose careful and well-arranged
minutes of the proceedings adopted throughout the whole business,
the preceding remarks have been extracted.
Among the notes attached to these records, it stated that “the
proposition is to build a chapel in a parish, where there is a parish
church, but so distantly situated from the town, as, under any
circumstances, to be of no use, and occasionally insufficient.” The
particulars are as follows:

The parish church of Lowestoft was placed upwards of 500

years since in its present situation, under the impression as it is
supposed, that if nearer to the sea, it might, at no great length
of time, be destroyed by its encroachments. But the sea,
instead of advancing, has continued to recede, and now a new
town has sprung up on the beach, and the church is left, even
in fine weather, out of the reach of a considerable part of the
population. In the inclement weather to which so frequently the
easternmost point of England is exposed, the church is not
opened, and it would be highly inexpedient to hold an evening
service in it, at any time. In order to meet the actual
necessities of the place, part of a town house has been used by
a license of Bishop Parkhurst, as a chapel, since the year 1572,
on occasions, ‘hiberno præsertim tempore,’ according to the
original document—when the people cannot without great
inconvenience get to church. But this expedient is found
insufficient. The chapel will hold between three and four
hundred persons, but it is usually so filled, that when it is used,
numbers do not attempt to go at all; and many who at all
events, will attend a public service, are driven to the Dissenting
Meeting Houses. Some peculiar circumstances, connected with
the town, make a new provision for public worship absolutely
necessary. In the bathing season the church is not sufficiently
 large for the congregation, and then it would be expedient, if
circumstances permitted, to open a second place of worship.
Moreover, a harbour, for which the Government is about to grant
a loan of £50,000, will, at no distant period, be opened; and
Lowestoft, in the course of a short time, will become a
commencing point to a navigation, which is likely to extend
through a large part of Suffolk and Norfolk. For the persons
attendant upon this harbour the church is most inconveniently
situated.

In a notice of the new chapel, printed in the provincial journals at

the time of its foundation, its architecture was said to be in the style
of the Temple Church at London. Wherein the similitude consists,
the writer is unable to determine; unless, indeed, the presence of
long narrow windows, unaccompanied by the charming proportions
and graceful decorations of the proud Crusaders’ church, be alone
able to constitute its resemblance.
 SECTION XIII.

In a Hand-book to Lowestoft, published by Mr. Thos. Crowe, in 1853,

is the following:

Lowestoft is, happily for the peace and cordiality of its people,
neither a parliamentary Borough nor a corporate town: so that
political and party feuds in no degree embitter the charities of
private life. These are advantages of which its inhabitants are
fully sensible; and if they are disposed to forget them, they are
abundantly admonished by the example of a town nine miles to
their north, which is a prey to the dissensions Lowestoft is so
luckily a stranger to. Another reason for the complete absence
of those quarrels and bickerings which are usually found in
country towns, is the fact, that the inhabitants of this parish are
not called upon to pay church-rates, the lands belonging to the
church being amply sufficient to keep it in repair. Many of these
unseemly disagreements common in other and less fortunate
localities are thus avoided. The Vicar, however, makes a claim
for a tithe of fish—about half a guinea on the return of each
boat; but with his well-known good nature he has only taken
this step pro formâ, his unbounded charity and benevolence
being one of the “great facts” of the locality. Amongst the other
immunities and privileges enjoyed by the inhabitants may be
mentioned exemption from payment of toll, service upon juries,
&c., granted them by charter of Henry VI., in 1442, and
confirmed by Elizabeth and Charles I.
Adjoining the pier is the Royal Hotel, forming the
commencement of one of the finest of terraces, which strikes
the attention of the traveller from its elegance and architectural
beauty, as the reader will have no great difficulty in discerning
through the aid of the artist.
This superb establishment, the Royal, having been recently
erected, with an entire disregard to expense, and under the
ablest supervision in every department, comprises all the latest
improvements in the cellerage, batterie de cuisine, and
dormitories; while the coffee and dining rooms and suites of
private apartments are most admirably adapted for their
respective uses, combining in singular perfection all the
desirable characteristics of a first-class hotel and family
mansion, without the least encroachment of the one upon the
province of the other. The house comprises within itself almost
every comfort that can be needed by the valetudinarian, or
desired by the luxurious pleasure-seeker. Situate on the very
edge of the sea, and the tide receding but very few feet during
the day, out of door bathing is nearly at all times practicable at
will, the neighbourhood being in every way favourable for it;
while salt water baths, at every temperature, are within doors,
as well as all the ablutionary appliances available under
Mahmoud at Brighton, or the most eminent professors of human
detergency at Scarborough or elsewhere. A billiard room of
noble dimensions, a large conservatory, partly filled with exotics,
and partly with native plants, chiefly indigenous to the
horticulture of East Anglia (a district peculiarly rich in this
respect), and a well supplied news room, offer potent antidotes
to ennui. If with these accessories, added to the auxiliaries of a
most recerché refectory, the attendance being at once
unobtrusive and assiduous, and everything which the
experience of a long skilled and discerning maitre de hotel can
suggest for the regalement of his guests, a sojourner at the
Royal Hotel, Lowestoft, do not discover a true specific against
the blue devils, he must belong to the category of Sir Charles
Coldstream’s hypochondriacs in Used Up, who could find neither
tranquillity in a domestic Elyseum, nor excitement in the crater
of Vesuvius. Perhaps it may be supposed that the agremens we
speak of are materially qualified by the undue “inflammation of
one’s weekly bills.” But not so. The pecuniary administration at
the Royal is conducted as nearly as possible on the model of the
most approved Metropolitan Clubs, combining the maximum of
service with the minimum of charge compatible with the high
character of the house and the completeness of its
appointments. The present proprietor, Mr Samuel Howett,
possesses peculiar facilities for conducting it with advantages on
this score denied to any other person. As owner for several
years of the Royal at Norwich—one of the finest establishments
of the kind in England, as the Festival visitors can testify, and as
is demonstrated by the constant patronage of the officers of the
troops stationed in that city—he has had large local experience
of the district, enjoying the respect of many of the resident
families, and well known for his business habits, urbanity of
manner, and liberal-handed management of all public banquets
or private entertainments committed to his supervision. With
such a commissariat for head-quarters, as the Royal at Norwich,
the Royal at Lowestoft becomes, in his hands, adequate to
almost any exigency that can arise, especially as, since last
Autumn, its former great capacity for accommodation has been
very considerably extended. The view in our illustration is on
too small a scale, and is taken from too remote a point to give
an adequate idea of the extent or peculiarly commanding
position of the Royal; but still it will serve to show that it is a
sumptuous-looking pile externally, and we can assure the reader
that its interior is of fully corresponding excellence in every
possible respect. Another story has recently been added to the
original building, and an entirely new wing erected, affording a
large number of additional bed-rooms, sitting-rooms, and other
appliances of comfort and luxury, all of which are furnished and
adorned with unusual taste and elegance. The pictorial
establishments will especially attract the attention of the
artistical. The accommodation for guests now so ample,
however large their number, and the servants’ department so
well ordered and efficient, that there is no over-crowding,
confusion, or inattention. In securing order, regularity,
quietness, and promptitude on the part of his domestics, Mr.
Howett has proved himself an admirable tactician, and has
made his hotel a model of comfort in these important respects.
When full of guests it has more the air of a private mansion
than an hotel. All conveniences for visitors of rank, such as
carriages and horses, &c., are provided in great variety and
abundance, the extensive and handsome mews being a very
noticeable feature of the Royal. Amongst the recent
improvements we may add, that the restaurant has been
enlarged and redecorated. Public banquets, or private dinner
parties, must be large indeed, if stinted for space in this noble
apartment. Connoisseurs assure that for extent, variety,
excellent taste in selection, and samples of the choicest vintage,
Mr. Howett’s wine cellars are unequalled in this part of the
kingdom.
The establishment is conducted on the convenient principal of
furnishing the guests with the ordinary scale of charges, which
Mr. H. forwards on application to any gentlemen wishing to visit
his hotel. The applicant must be fastidious in the extreme if he
finds any items in this scale to complain of. As evidence at once
of the salubrity of the climate, and of the suitability of the Royal
Hotel for the utmost requirements of its various frequenters, it
may be mentioned, that Earl Cardigan makes it his occasional
head-quarters, (bringing his beautiful Yacht, the famous
“Enchantress,”) and assembling around him a large circle of his
military and fashionable friends; and, on the other hand, the
Royal is often occupied by several eminent members of the
Society of Friends, to whom its quietude and methodical system
of management, no less than the seclusion and healthiness of
the locale, recommend it in preference to watering-places of
more eminent repute among the faculty. The increasing eclât of
the Annual Regatta, the number and value of the prizes, and the
celebrity of the Yachts that have assembled and competed on
occasion of the last Regatta or two, give promise that
henceforth the most “crack” Yachts and most prominent
members of the Royal Yacht Club will make an annual visit to
Lowestoft, and greatly enliven the season. From its proximity to
the harbour and sea, and other attractions, the “Royal” is the
favourite rendezvous of the Yacht owners and Regatta patrons,
and the most eminent sons of Neptune on their visit to
Lowestoft; and frequently, on other occasions, contains a large
and distinguished assemblage of rank and fashion.
We are thus particular in dwelling upon the Royal Hotel, not
only because it is one of the principal features in the beautiful
new town of Lowestoft, but because its character must
necessarily have a considerable influence upon those who may
contemplate visiting the place. Under the same admirable
management of Mr. Howett is the excellent secondary hotel at a
short distance, called the Harbour Inn, which is inferior to the
Royal only in the splendour of its fittings up; but in all its
substantials of comfort and convenience it is wholly impossible it
could be surpassed; and it may be recommended unhesitatingly
to those of less aristocratic pretensions than the usual inmates
of the Royal. In the Old Town, also, there are several inns of
great respectability and merit, extremely moderate in their
charges, and distinguished by a naìveté and heartiness of
manner in their proprietors and assistants that will astonish a
philosopher as being found at the terminus of a railway—
belonging, as those attributes do, rather to the primitive
hostelries of Addison and Goldsmith, than to the days of electric
telegraphs and Bradshaw’s Time Tables. In concluding this
portion of our subject, we may add, and in no town within our
experience are the lodgings, speaking generally, so good, so
economic, so unexceptionally conducted, as in Lowestoft—the
cost of all household necessaries and rural luxuries being
fabulously trifling compared with the tariff in other latitudes,
whether on the south-west, the north-west, or even on the
Welch coast.
The sanitary condition of Lowestoft is most satisfactory. Unlike
some neighbouring towns, there has been no occasion here for
the compulsory clauses of the “Health of Towns Bill.” A few
years ago, an admirable plan of systematic and thorough
drainage was adopted and carried out under the
superintendence of Messrs. Lucas, at a large expense,—the
situation and physical characteristics of the town affording
peculiar facilities for an effective scheme of sewerage. In
addition to this, a plan has been resolved on for thoroughly
draining the North Beach, and thereby preventing the possibility
of effluvium arising from “pulk holes” in the vicinity of the fish
houses.
Waterworks and Gasworks (at Kirtley), for supplying the south
end of the town, have been completed and in operation some
time; and, in the course of last year, a private bill received the
Royal assent, incorporating a company for supplying and
erecting, at the north part of Lowestoft, Waterworks, enlarged
Gasworks, new Market Place, Abattoirs, and other appropriate
adjuncts, at an expense of £20,000, to be raised by two
thousand £10 shares. These shares were immediately taken,
chiefly by the inhabitants and promoters of the undertaking,
which promises to be a very successful one, pecuniarily, and a
signal advantage to the town.
The new Waterworks are now in progress near the “Church
Lane” where the element, according to repute and chemical
analysis, is of excellent quality and unusual purity; and the
Market House, &c., is speedily to be erected near the present
Market square, and upon the new site now occupied by the
excellent Queen’s Head Hotel, and adjacent buildings.
To the new Waterworks Mr. Clemence’s recently-erected Soap
Factory, pretty near thereto, would seem an appropriate
appendage. If abundance and cheapness of soap and water will
secure cleanliness, the inhabitants of Lowestoft must not be
classed amongst the “great unwashed.”
The various comprehensive reports of the Directors of the
Harbour of the Shareholders show at a glance the progressively
improving nature of this locality, and the extent of the trade
carried on. They are all drawn up by the energetic and
accomplished Captain W. S. Andrews, for several years known
as the Captain of the Medway West India Mail Steamer, and
whose appointment here first as Harbour-master, and more
especially as Managing-director of the North of Europe Steam
Packet Company, has been a most important auxiliary in the
advancement of everything connected with Lowestoft, especially
all matters pertaining to the docks and shipping.
 SECTION XIV.
RECEPTION OF THE CHARTER OF
INCORPORATION.

Tuesday Afternoon, 22nd September, 1885, was the time appointed

for the official reception of the Charter of Incorporation. The Town
Hall was not sufficiently capacious to accommodate the large
number of townsmen who sought admission.
Chairs were ticketed for the following gentlemen, namely, to the
right of Major Seppings, the Mayor—Rev. T. A. Nash, James Peto,
Esq., Rev. J. F. Reeve, T. Lucas, Esq., E. K. Harvey, Esq., W. F.
Larkins, Esq., H. G. Woods, Esq. To the left of the Mayor—The Town
Clerk, Geo. Bush, Esq., Sims Reeve, Esq., G. Keen, Esq., W. Chater,
Esq., T. S. Allerton, Esq.
Amongst the Ladies were Mrs. Larkins, Mrs. Clubbe, Mrs. F.
Worthington, Mrs. J. Worthington, Mrs. F. Seago, Mrs. Warman, etc.
Amongst the gentlemen were Rev. Dr. English, Rev. J. Wright, Rev.
H. I. Wonfer, Col. H. Leathes, Messrs. T. R. Woods, W. R. Seago, W.
Youngman, B. M. Bradbeer, R. B. Nicholson, A. Lawrence, W. T. Balls,
B. Preston, F. Seago, F. Peskett, J. Hobson, W. Warman, J. L.
Clemence, A. Adams, H. Jefferies, R. B. Capps, S. Howett, R. W.
Saul, T. Hobson, T. W. Etheridge, T. H. Leggett, A. Stebbings, W. W.
Garnham, J. Swatman, W. Farrett.
The Mayor said: Ladies and Gentlemen, I regret that the capacity of
our Town Hall, is not sufficient for the number of townsmen who
seek admission. If we were to adjourn to the Market Place that
would be only sufficiently large. However, our proceedings will not
be very long. I will at once enter on the business before us. My
duty to-day is to receive the Charter of Incorporation, which our
Most Gracious Queen in Council Assembled has been pleased to
grant us. (Applause.)
Mr. Keen, (of the firm of Messrs. Keen, Rogers, & Co.,) then rose,
and was received with applause. He said: I have been honoured by
Her Majesty’s Privy Council, who have entrusted me with the duty of
conveying to its destination the Charter of Incorporation of the
Borough of Lowestoft. In parting with it I may be allowed to hope
as our native country has prospered and thriven under our Great
Charter, and as the various towns and boroughs have prospered
under their respective charters, so may the good town of Lowestoft
go on to more and more prosperity under this its own charter.
(Applause.) Ladies and Gentlemen, I am sure I am speaking the
sentiments of the whole Borough when I say I could not place the
charter in more worthy hands. (Renewed applause.)
The Mayor then received the black tin box containing the important
document. Having taken the Charter out of the box he handed it,
amid applause, to
The Town Clerk (Mr. J. E. Cook), who read the lengthy document.
BOROUGH OF LOWESTOFT.

CHARTER OF INCORPORATION.

VICTORIA, by the Grace of God, of the United Kingdom of Great

Britain and Ireland, Queen, Defender of the faith, to all to whom
these presents shall come, greeting.
Whereas by the Municipal Corporations Act, 1882, it was enacted that
if on the Petition to Us of the Inhabitant Householders of any Town
or Towns or District in England, or of any of those Inhabitants,
praying for the grant of a Charter of Corporation, we, by advice of
our Privy Council, should think fit by charter to create such Town,
Towns, or District, or any part thereof specified in the charter with or
without any adjoining place a Municipal Borough, and to incorporate
the inhabitants thereof, it should be lawful for us, by the charter to
extend to that Municipal Borough and the Inhabitants thereof so
incorporated the provisions of the Municipal Corporations Acts.
And it was further enacted that every Petition for a Charter under
the said Acts should be referred to a Committee of the Lords of our
Privy Council (in the said Act called the Committee of Council) and
that one month at least before the Petition should be taken into
consideration by the Committee of Council, notice thereof, and of the
time when it should be so taken into consideration, should be
published in the London Gazette, and otherwise in such manner as
the committee should direct for the purpose of making it known to
all persons interested.
And it was further enacted that where We by Charter should extend
the Municipal Corporations Acts to a Municipal Borough, it should be
lawful for us by the Charter to do all or any of the following things:—
(a) To fix the number of Councillors and to fix the number and
boundaries of the Wards (if any), and to assign the number of
Councillors to each Ward; and
(b) To fix the years, days, and times, for the retirement of the first
Aldermen and Councillors; and
(c) To fix such days, times, and places, and nominate such persons
to perform such duties and make such temporary modifications of
the Municipal Corporations Acts, as might appear to Us to be
necessary or proper for making those Acts applicable in the case of
the first constitution of a Municipal Borough.
And that the years, times and places fixed by the Charter, and the
persons nominated therein to perform any duties, should as
regarded the Borough named in the Charter be respectively
substituted in the Municipal Corporations Acts for the years, days,
times, places, officers, and persons therein mentioned and the
persons so nominated should have the like powers and be subject to
the like obligations and penalties as the officers and persons
mentioned in those Acts for whom they would be respectively
substituted:
And that subject to the provisions of the Charter authorised thereby
the Municipal Corporations Acts should on the Charter coming into
effect apply to the Municipal Borough to which they should be
extended by the Charter: and where the first Mayor, Aldermen, and
Councillors, or any of them should be named in the Charter should
apply as if they were elected under the Municipal Corporations Acts,
and where they should not be so named should apply to their first
election:
And whereas certain inhabitant householders of the District of the
Lowestoft Improvement Commissioners did in the month of January,
1885, petition Us for the grant of a Charter of Incorporation:
And whereas such petition was referred to a Committee of our Privy
Council, and one month at least before the same was taken into
consideration by the said committee, notice thereof and of the time
when the same was so to be taken into consideration was duly
published in the London Gazette and otherwise as directed by the
Committee:
And whereas our Privy Council have recommended Us to grant this
Charter of Incorporation:
We, therefore, as well by virtue of Our Royal Prerogative as in
pursuance of and in accordance with the Municipal Incorporations
Act, 1882, or any other Act or Acts and of all other powers and
authorities enabling Us in this behalf, by and with the advice of our
Privy Council, do hereby grant order and declare as follows:
(1.) The District of the Lowestoft Improvement Commissioners as
defined in the First Schedule to these presents is hereby created a
Municipal Borough by the name of the “Borough of Lowestoft.”
(2.) The inhabitants of the said District, and their successors, shall
be, and are hereby declared to be one body politic and corporate, by
the name of the Mayor, Aldermen, and Burgesses of the Borough of
Lowestoft, with perpetual succession and a Common Seal, and may
assume armorial bearings (which shall be duly enrolled in the
Herald’s College), and may take and hold such lands and
hereditaments as well without as within the Borough as may be
necessary for the site of the buildings and premises required for the
official purposes of the Corporation and other purposes of the
Municipal Corporations Acts, not exceeding in value the amount of
£2500 by the year.
(3.) The Mayor, Aldermen, and Burgesses of the said Borough shall
have the powers, authorities, immunities, and privileges usually
vested by law, in the Mayor, Aldermen, and Burgesses of a Municipal
Borough, and the provisions of the Municipal Corporations Acts shall
extend to the said Borough, and the inhabitants thereof incorporated
by this charter:
(4.) The number of the Councillors of the Borough shall be 24:
(5.) The Borough shall be divided into four Wards, with the names
and bounds specified in the First Schedule to these presents:
(6.) Each of the Wards shall elect six Councillors:
(7.) For the purpose of making the Municipal Corporations Act,
1882, applicable in the case of the first constitution of the Borough,
we do hereby, so far only as regards the first Burgess List, first
Burgess Roll, and first Election of Councillors, Mayor, Aldermen,
Town Clerk, and Treasurer for the Borough, fix and order as follows:
(a) The Town Hall in the Town of Lowestoft shall be the place at
which any list, notice, or document required to be affixed, on or near
the outer door of the Town Hall is to be affixed; and
(b) Both in relation to the matters aforesaid, and also in relation to
any such election as aforesaid, which it may be necessary to hold
before a valid election can be held under the Municipal Corporations
Election Act, 1882, Joseph Edward Cook, of Lowestoft; or in case of his
death, inability, refusal, or default, Thomas Simpson Allerton, of
Lowestoft, shall perform the duties of Town Clerk; and Simms Reeve,
of Norwich; or in case of his death, inability, refusal or default,
William Chater, of Lowestoft, shall perform the duties of the Mayor
and the assessors for revising the Burgess List, and the separate list
of persons qualified to be Councillors; and Henry Seppings, of
Lowestoft, or in case of his death, inability, refusal or default, George
Bush, of Lowestoft, shall perform the duties of the Mayor and
Aldermen respectively, as returning officer, and of the Mayor as
summoner of the first meeting of the Council, and of the Mayor or
Chairman of the Meeting for the election of the Mayor, Aldermen,
Town Clerk and Treasurer.
And the said persons shall be substituted in the Municipal
Corporations Act, 1882, for the said Town Clerk, Mayor, Assessors,
Aldermen, and Chairman, respectively, so far as relates to the
matters aforesaid: and
(c) The first meeting of the Council of the Borough shall be held on
the ninth day of November, 1885:
(d) The first Councillors shall be elected on the first day of
November, 1885, and the first Mayor and Aldermen on the ninth day
of November, 1885.
(8.) The years and days specified in the Second Schedule to these
presents shall be the years and days for the retirement of the first
Aldermen, and Councillors, who shall retire in the manner and at the
times therein designated.
(9.) Subject to these presents and the second schedule thereto the
provisions of the Municipal Corporations Act, 1882, shall apply to the
determination of the qualifications of the Burgesses, the making out,
signing, delivering, inspection, completion, publication,
commencement, and continuance of the first Burgess Lists and
Burgess Rolls, the claims, objections, and determinations with regard
to the first Burgess Lists or Rolls the holding adjournments and
decisions of the first Revision Courts, the nominations, elections and
continuance in office of the first Mayor, Aldermen, Councillors,
Auditors, and Assessors, the appointment and continuance in office
of the first Town Clerk and Treasurer, the first Meeting, and Quarterly
Meeting of the Town Council, and all matters and things touching
and concerning the above, and the dates and times in the said act
mentioned shall be the dates and times on, at, during within or for
which the matters aforesaid, and the various acts and things in
relation thereto shall take place, be done, be estimated or be
calculated.

FIRST SCHEDULE.
METES AND BOUNDS OF BOROUGH.

The Boundaries of the Borough are identical with those of the

District of the Lowestoft Improvement Commissioners, and comprise
the whole of the Parishes of Lowestoft with Kirkley, otherwise Kirtley,
in the County of Suffolk.

NAMES AND METES AND BOUNDS OF EACH WARD.

EAST WARD.
The East Ward comprises so much of the Borough as is bounded on
the North by the Borough Boundary, on the East by the German
Ocean, on the South by the Outer Harbour, and on the West by a
line commencing at a point in the Borough Boundary in the centre of
the Yarmouth Road, and proceeding thence in a South-Easterly
direction along the centre of the Yarmouth Road to the junction of
the same with Park Road, and thence in a Southerly direction along
the centre of Park Road and Albert Street to the junction of the last-
named street with Mariners’ Street, and thence in an Easterly
direction along the centre of Mariners’ Street to its junction with
High Street, and thence in a Southerly direction along the centre of
High Street and the London Road to the junction of the London Road
with Mills Road, and thence in a Westerly direction along the centre
of Mills Road to the junction of the same with Clapham Road, and
thence in a generally Southerly direction along the centre of
Clapham Road to its junction with Bevan street, and thence in a
South-Easterly direction along the centre of Bevan Street to its
junction with the London Road near the Suffolk Hotel, thence in a
Southerly direction along the London Road to the Harbour.
NORTH WARD.
The North Ward comprises so much of the Borough as is included
within a line commencing at a point in the Borough Boundary in the
centre of the Yarmouth Road, and proceeding thence in a South-
Easterly direction along the centre of the Yarmouth Road, to the
junction of the same with Park Road, and thence in a Southerly
direction along the centre of Park Road and Albert Street to the
junction of the last-named street with Mariners’ Street, and thence in
an Easterly direction along the centre of Mariners’ Street to its
junction with High Street, and thence in a Southerly direction along
the centre of High Street, and the London Road, to the junction of
the London Road with Mills Road, and thence in a Westerly direction
along the centre of Mills Road, Love Road, and Love Lane, to the
junction of Love Lane with Rotterdam Road, and thence in a
Northerly direction along the centre of Rotterdam Road, to its
junction with Beccles Road, and thence for a few feet along the
centre of the Beccles Road in a Westerly direction to a point exactly
opposite the footpath which leads in a Northerly direction towards
St. Margaret’s Church, and thence to and along the said footpath
and along the road or lane which forms a continuation of the said
footpath, and runs by and to the East of certain pits to the junction
of the said road or lane with the Oulton Road, just South of St.
Margaret’s Church, and thence in a Westerly direction along the
centre of the Oulton Road to the Borough Boundary, and thence,
first in a North-Westerly and Northerly direction and then in a
generally Easterly direction along the Borough Boundary to the point
of commencement before described.
WEST WARD.
The West Ward comprises so much of the Borough as is included
within a line commencing at a point in the Harbour under the bridge
over the same and proceeding thence in a Northerly direction to and
along the centre of the London Road to the junction of the same
with Bevan Street, and thence in a North-Westerly direction along
the centre of Bevan Street to its junction with Clapham Road, and
thence in a generally Northerly direction along the centre of Clapham
Road to the junction of the same with Mills Road, and thence in a
Westerly direction along the centre of Mills Road, Love Road, and
Love Lane, to the junction of Love Lane with Rotterdam Road, and
thence in a Northerly direction along the centre of Rotterdam Road
to its junction with the Beccles Road, and thence for a few feet
along the centre of Beccles Road, in a Westerly direction to a point
exactly opposite the footpath which leads in a Northerly direction
towards St. Margaret’s Church, and thence to and along the said
footpath and along the road or lane which forms a continuation of
the said footpath and runs by and to the East of certain pits to the
junction of the said road or lane with the Oulton Road, just south of
St. Margaret’s Church, and thence in a Westerly direction along the
centre of Oulton Road to the Borough Boundary, and thence, first in
a South-Westerly and Southerly direction and then in an Easterly
direction along the Borough Boundary to the point where the
boundaries of the three parishes of Lowestoft, Kirkley, and Carlton
Colville meet in Lake Lothing or the Inner Harbour, and thence in an
Easterly direction along the Inner Harbour to the point of
commencement before described.
SOUTH WARD.
The South Ward comprises so much of the Borough as is bounded
on the North by the Inner and Outer Harbour, on the East by the
German Ocean, and otherwise by the Borough Boundary.
SECOND SCHEDULE.

Persons to Retire. Date of

Retirement.
The one-third of the Councillors in each ward who 1st.
are elected by the smallest number of votes shall go November,
out of office on 1886.
The one-third of the Councillors in each ward who 1st.
are elected by the next smallest number of votes November,
shall go out of office on 1887.
The remaining one-third of the Councillors in each 1st.
ward shall go out of office on November,
1888.
The one-half of the Aldermen who first go out of 9th.
office shall be those who are elected by the smallest November,
number of votes, and shall go out of office on 1888.
The remaining one-half of the Aldermen shall go out 9th.
of office on November,
1891.

If any Councillors in any ward or any Aldermen have obtained an

equal number of votes, or have been elected without a poll, so that
it cannot be determined which of them has the smallest number of
votes, the Council of the Borough shall, at the first or second
quarterly meeting, and not later, by a majority of votes, or in case of
an equality of votes, by the Casting vote of the Chairman, determine
who are to go out of office at the times above specified respectively.
In return whereof we have caused these Our letters to be made
Patent.
Witness Ourself at Westminister, the 29th day of August, in the 49th
year of Our Reign. By Warrant under the Queen’s Sign Manual,
MUIR MACKENZIE.
Here follows the
Queen’s Sign Manual.
The Mayor said he had only one resolution to bring before the
meeting, and he would ask Mr. Thos. Lucas, a gentleman well-known
to all in former years, and one who was allied with the great
promoter of the prosperity of Lowestoft—Sir Morton Peto—to
propose it. The town owed very much to Sir Morton Peto and the
eminent firm of Messrs Lucas Bros., for its prosperity.
Mr. Thos. Lucas on rising was received with prolonged applause. He
said he had been requested by the Mayor to propose “That the
inhabitants of the Borough of Lowestoft in public meeting assembled
hereby desire to express their great gratification at the grant by Her
Most Gracious Majesty the Queen by and with the advice of her Privy
Council, of a Charter of Incorporation of Lowestoft with Kirkley; and
also their earnest hope that the Charter may tend to the
advancement, extension, and prosperity of the town.” This was, Mr.
Lucas said, a peculiarly interesting ceremony to him. In September,
thirty-one years ago, he entered Lowestoft with his friend Sir Morton
Peto, and, he ought to be able to say, “Sir” James Peto. (Hear,
hear.) The names of the gentlemen who were prominent in the
town then were Edwd. Leathes, F. Morse, H. G. Woods, Youngman
(father and son), the Gowings, Seago, Balls, Barnard, Howett, and
several others. This year happened to be the anniversary of the
introduction of the Improvement Act of 1854, and of the formation
of the Improvement Commissioners. On looking over the list who
formed that body in 1854–5, he noticed that eighteen of them were
no more, and not a single one of them was a member of that
Commission at the present time. There might be some persons who
knew Lowestoft thirty-one years ago, and if so, it was only those
who could properly appreciate the stride it had made. He knew