Book Review: New life and vigour at Terrell?

Book reviewed: Terrell on the Law of Patents, 17th edition. Richard Miller QC, Guy Burkill QC, Judge Colin Birss QC and Douglas Campbell, Sweet & Maxwell, 2010 ISBN: 9781847039033, Hard cover, 1238 pp. + xc Price: £325

Reviewer: Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, England)

I must confess to having indulged in a certain amount of hyperbole when I wrote in a previous issue of this Journal that the editors of Terrell on the Law of Patents, then in its 16th edition, could ‘trace their succession back in line unbroken to … the first edition of 1884’(1). There have in fact been two successive editorial dynasties, the first having been founded by the eponymous Thomas Terrell QC in 1884 and the second by KE Shelley KC in the 1950s.

The life of Thomas Terrell himself makes surprisingly lively reading for those who have known only the recent generation of editors (2). Born in Paris in 1852, Thomas Terrell may originally have intended to follow a career as a chemist or mining engineer,(3) but took to journalism instead, a role which he briefly revisited when he attended the second court-martial of Captain Alfred Dreyfus in 1899.4 On being called to the bar in 1879 he joined Gray's Inn, and was subsequently made a QC (1895), a Bencher (1896), and Treasurer (1904). His early practice was varied, and if he seems to have found his natural milieu in the divorce courts, most notably as counsel for the plaintiff in the final act of the long-running cause célèbre known as Wiedemann v Walpole,(5) then it is perhaps coincidental that matrimonial relations of the conventional kind were somewhat of a rarity in the Terrell household. It was said of Thomas Terrell and his father that ‘both made unhappy marriages in their twenties, both engaged lustfully in haphazard womanising and both, in their forties, became passionately involved with a mistress’.(6) He was also a published novelist,(7) and the inventor of an improved gas-mantle.(8)

Patna High Court

Thomas Terrell was succeeded by his second son Sir Courtney Terrell, who was Chief Justice of the Patna High Court from 1928 until his death in 1938, and between them they edited six of the first seven editions, with an interregnum for the 3rd edition of 1895, and another for the 8th edition of 1934. A memoir of Sir Courtney Terrell, by the latter's son, Richard Terrell, provides some additional insights into the life and character of the biographer's grandfather. Thomas Terrell was the offspring of a liaison between Thomas Hull Terrell, an ostensibly respectable barrister (and future county court judge) and his ward Elizabeth Spry, who had been entrusted to his care when her father, an Indian Army officer, left England to join his regiment in Madras. He died en route. In 1852 Elizabeth, by now pregnant, was bundled off to Paris where she gave birth to Thomas fils. The boy grew up speaking French, and professing a characteristically Gallic brand of politics: revolutionary, egalitarian, democratic, and anti-clerical.(9) His novel Lady Delmar allowed him to display his leanings towards the avowedly Marxist values of the Social Democratic Federation,(10) but it was as a Gladstonian Liberal (of the Radical wing of the party) that he unsuccessfully contested four general elections.

With Sir Courtney Terrell, the family succession came to an end, and after a decently prolonged interval, a second (unrelated) dynasty was founded by KE Shelley KC with the 9th edition in 1951. Terrell has continued to be edited in the same chambers ever since—its successive editions serving as a rite of passage for junior barristers eager to demonstrate their worthiness to ascend the silken ladder at 3 New Square, or 6 Pump Court before it. For the rest of us, the same successive editions have seemed (at times) to have offered little more than a handsome and expensive binding for the text of the Patents Act of the day. Readers of past editions will recall countless occasions on which counsel would say: ‘My Lord will find section X of the Act at page Y of Terrell’, with the clear implication that if My Lord were perverse enough to look for section X anywhere else, even in the Queen's Printer's copy, then the text would very probably turn out to be corrupt, if not altogether spurious.

So much for the past. The commentary has been greatly extended for the present edition, and the appendices cut back accordingly. More importantly, the editors seem to have been asking themselves some fundamental questions about what Terrell is really for. The winds of change have made their presence felt, and just as Great Britain has found itself bereft of the Empire which Sir Courtney Terrell served as a judge, so the editors of Terrell must have had cause to wonder about their own future role and relevance. In its own dignified fashion, Terrell has been adjusting itself to the new ways since the 13th edition of 1982, but the need to adapt to a new environment has intensified, as the Preface candidly acknowledges:

While the principal focus [of Terrell] remains the law as practised and applied in the courts of this country, there is an ever-increasing willingness on the part of our courts to follow the decisions of the Boards of Appeal of the EPO and, where appropriate, we have cited settled jurisprudence from that source.

With this promise in mind, it may come as something of a surprise that the table of Board of Appeal decisions in Terrell actually occupies no more than two facing pages, compared to nearly 45 pages tabulating the decisions of the UK courts. Butterworths’ Modern Law of Patents,(11) in comparison, takes all of 20 pages to list the Munich case law. The Boards of Appeal, however, can at least consider themselves generously served by Terrell in comparison to the dearth of cases from other common law jurisdictions. The commentary itself remains as firmly centred on the English case law as ever.

Might it therefore be suggested of Thomas Terrell's distant successors that their performance fails to match up to their promises? In his lifetime, Terrell himself unsuccessfully defended Frederick Roe and his notorious Carbolic Smoke Ball Company.(12) He later (but with equal lack of success) prosecuted the fraudulent Cornelius Bennett Harness, the promoter and managing director of the Medical Battery Company, of Oxford Street, London W1. The latter's ‘electropathic belts and corsets’, though patented in the UK and USA,(13) and advertised as being ‘scientifically constructed … for new life and vigour’,(14) were therapeutically useless, as Terrell's client, an ‘aged and decrepit’ retired Indian Army Colonel living in Margate, discovered to his cost.(15) Of the Colonel's unrelieved affliction, delicately referred to as a ‘weakness of the loins’, suffice it to say that nothing of the sort seems to have troubled Terrell, who continued to be productive in that department well into the twentieth century. He married his French mistress, Clementine Bouriel, shortly after the death of his wife Emma in 1924, thereby legitimating the seven offspring from that side of his family, to which should be added the three more regularly accounted for by his first marriage.

As always with patent claims, not to mention advertisements proffering dubious ‘guarantees’, for even more dubious ‘miracle cures’, it is important to pay attention to the precise wording: in this case ‘practised and applied’, ‘in the courts of this country’, ‘where appropriate’, ‘settled jurisprudence’. Terrell is not just unapologetically Anglo-centric, it is almost entirely court-centred. Unlike The Modern Law of Patents, in particular, Terrell has no pretensions as a source of reference for patent office practitioners (whether in Newport or Munich), and the Munich case law is expressly included for its relevance to UK law and practice, rather than for its intrinsic importance. Does all this mean that Terrell's editors have failed to deliver on what they promised? I think not, since Terrell holds up a faithful mirror to what has been the policy of the Patents Court since the days of Falconer and Aldous JJ, both editors of Terrell themselves. They (and Terrell) have done their best to see that English law has marched to the same tune as European law, but not to the extent of slavishly following in anyone else's footsteps.

It also follows that topics which are of high importance in examination, but of relatively low importance post-grant (such as office procedure, added matter, impermissible amendment, clarity, and fair basis of claims) are dealt with rather briefly, and attention is concentrated on issues which tend to dominate English patent litigation. This is not to say that any of the former are completely ignored, but they are not really part of Terrell's intended franchise. Practitioners whose interest in patents is non-contentious will also find that Terrell has relatively little to offer beyond a new chapter on Entitlement, where there has been a minor surge of decided cases. In all these respects, Terrell is much less wide-ranging than The Modern Law of Patents, and sticks more closely to the needs and interests of UK patent litigators.

The comparison with The Modern Law of Patents is most clearly in Terrell's favour when one comes to its chapters on claim interpretation, infringement, and the skilled person, as the wearer of the new-found unisex mantle has now become. The attributes of this surprisingly elusive character are absolutely fundamental (sorry) not only to claim interpretation (and therefore to both novelty and infringement), but also to obviousness, and even to insufficiency, so it makes eminent sense to devote a whole separate chapter to them, which the new edition of Terrell does very successfully.

When it comes to claim interpretation and infringement, Terrell gives more generous measure than The Modern Law of Patents, since the latter is disadvantaged by the negligible amount of EPC case law in point, and the very limited relevance of what little there is outside examination and opposition proceedings. Article 69 is equally applicable in Munich as in London, of course, but it is one measure of the difference between office practice and litigation that claim interpretation is often the determinative factor in the latter, whereas it is hardly ever so much as a side-issue in the former. Likewise, The Modern Law of Patents seems rather too willing to assume that Kirin-Amgen(16) has obliterated the legacy of Catnic(17) and Improver(18) from our law, whereas Terrell contains a much fuller treatment of the Catnic (and even pre-Catnic) case law in all its variants. For the time being, at least, this is surely the safer option, and probably the correct one, since whatever the merits or demerits of purposive construction in the mould of Catnic and Improver, the latter do at least represent a very necessary attempt to provide a structured and accessible way of applying Article 69 EPC and its Protocol to the facts of individual cases.

The new chapter on the skilled person apart, the present edition has added entirely new chapters on Supplementary Protection Certificates, Entitlement, and Declarations. Likewise, the principal grounds of invalidity (novelty, obviousness, and insufficiency) have been disaggregated from the former single chapter on grounds of revocation, and given individual chapters of their own. Another sensible decision has resulted in the former treatment of stamp duty and income tax being omitted, though the table of contents continues to promise otherwise in the title of Chapter 23.

If Thomas Terrell's marital unorthodoxy, political radicalism, and religious scepticism barred him from promotion to the very highest reaches of the legal profession, then I can hardly imagine that he was very much bothered. On one version of events, he could have been a judge for the asking, but turned the opportunity down. According to his grandson Richard: ‘Tom [Terrell] had been a drinking companion of [Lord] Birkenhead and there is a story of how, one moonlit night in Pall Mall, Birkenhead put his arm round Tom's shoulders and said, “Tom, I'm going to make you a judge.”’ Terrell, who must have been approaching 70 at the time, is supposed to have declined, both on an account of his age, and because of his irregular family arrangements.(19)

Be that as it may, Thomas Terrell's life story is surely one which most of us would be more than happy to contemplate in old age, with feelings of contentment verging on complacency, and complacency verging on conceitedness. Even the most trivial of his documented achievements—that of winning a silver cup for riding a penny-farthing bicycle from London to Brighton(20)—is suitably memorable. I very much doubt if he would have swapped destinies with Sir Douglas Falconer,(21) for example, though he might have been tempted by the prospect of changing places with Sir John Mortimer. How does he deserve to be remembered? For want of anything better, I append my own belated and inadequate attempt at a suitable epitaph:

THOMAS TERRELL KC (1852–1928), BARRISTER.
JOURNALIST, NOVELIST, SATIRIST, JURIST AND AMORIST.
INVENTOR OF A PATENT GAS MANTLE.
TRULY A MAN SKILLED IN EVERY KIND OF ART.
EXEGI MONUMENTUM AERE PERENNIUS.(22)

It is hardly Thomas Terrell's fault that the most illuminating of his monuments should have been as delicate as a fairy's mantle, and as evanescent as the use of gas for domestic illumination, nor that the most durable should have turned out to be more leaden than brazen.


Footnotes

1 CM Wadlow, ‘Butterworths’ Book of Sand’ (2011) JIPLP 194.

2 For an obituary of Thomas Terrell (1852–1928) see The Times (Monday, 30 April 1928) p 19. Further information from Richard Terrell, The Chief Justice: A Portrait from the Raj (Michael Russell, Salisbury 1979), (1928) 3 Greya (Michaelmas Term) 8, www.balean.net/terrell.html, and miscellaneous sources.

3 Details of Terrell's education vary. According to The Times, above n 2, he obtained a first class degree from the Ecole des Mines, and intended to practise as a mining engineer. However, a potted biography published by the same newspaper in 1892 states that he was educated at Berkhampstead Grammar School and at the Royal College of Chemistry, and intended to pursue a career as an analytical chemist: The Times, (Wednesday, 6 July 1892) 13. Yet another version has him attending the Jewish School at Ramsgate: The Western Mail (Saturday, 1 July 1893). (The Welsh connection is that Terrell practised on the South Wales Circuit.)

4 In which capacity the New York Times described him as ‘One of the leading jurists in England’ New York Times (20 August 1899).

5 Wiedemann v Walpole [1891] 2 QB 534 (CA). There were three trials in all, arising from a promise of marriage supposedly made by the Hon. Robert Horace Walpole, heir to the Earldom of Orford, to Valerie Wiedemann, a German governess whom he seduced and impregnated in Constantinople. Fräulein Wiedemann pursued the Hon. Arthur back to England, where she continued to importune him after his marriage to an American railway heiress. For the third and final trial, see The Times (Tuesday, 16 June 1891) 3, and for the appeal which ended the litigation see The Times (Thursday, 30 July 1891) 3.

6 Terrell, The Chief Justice (1979), at 17. Sir Courtney Terrell, the Chief Justice of the book's title, continued the family tradition by setting up house in India with his estranged wife's elder sister.

7 Lady Delmar (1891, with Miss TL White); The City of the Just (1892); A Woman of Heart (1893). The City of the Just was avowedly written to warn the public against City frauds, ‘bucket shops’, and bogus speculative companies, but The Times acidly observed that ‘such interest as it attracted was chiefly due to the satirical exposure of the foibles of the Judges, which probably did not improve the (never very cordial) relations existing between Terrell and the Bench’. The Times, n 2, above.

8 No 4324 of 1895.

9 Terrell, The Chief Justice (1979), at pages 30 (parentage) and 19 (political and religious opinions).

10 ‘[T]he chief characteristic of this work lies in its exposition of Social Democratic theories … [I]t tells a story of a woman's weakness and a man's treachery, the man, an aristocrat, being thoroughly villainous, while virtue appears to be looked upon as the peculiar attribute of the less favoured classes.’ The Morning Post (London, Wednesday, 4 March 1891) 2.

11 Ashley Roughton, Phillip Johnson and Trevor Cook (eds), The Modern Law of Patents (2nd edn, OUP, Oxford 2010).

12 In Carlill v The Carbolic Smoke Ball Company [1892] 2 QB 484, affirmed [1893] 1 QB 256 (CA). Terrell was junior counsel on the appeal.

13 Patent number 4,881 of 13 October 1883 in the UK; number 380,568 of 3 April 1886 in the US.

14 For an example of an advertisement, see www.wellcomecollection.org/full-image.aspx?page=961&image=electricity-based-therapy.

15 A Brian Simpson, Leading Cases in the Common Law (OUP, Oxford 1995) at 286. See also The Times, (Thursday, 23 November 1893) 11; (Thursday, 1 February 1894) 8. The company failed, and was wound up shortly afterwards: Re Medical Battery Company [1894] 1 Ch 444. A doctor, Joseph Richard Leeson, who had lent his name and assistance to Harness, was struck off for ‘infamous conduct’: Leeson v General Council of Medical Education and Registration (1890) LR 43 ChD 366, CA.

16 Kirin-Amgen Inc v Transkaryotic Therapies Inc [2004] UKHL 46; [2005] RPC 9 (HL).

17 Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (HL).

18 Improver Corp v Remington Consumer Products Ltd [1990] FSR 181, Pat Ct.

19 Terrell, The Chief Justice (1979) at 32. No date is given but the event, if it ever took place at all, must have occurred while Birkenhead (FE Smith) was Lord Chancellor, between 1919 and 1922.

20 Terrell, The Chief Justice (1979) at 16. The occasion is not stated.

21 Obituary, The Times (26 February 2008).

22 ‘I have erected a monument more lasting than bronze.’ Horace, Odes Bk 3, no 30, l. 1.