§ 391. Earliest Conceiver not Entitled to Patent until he has Re duced to Practice. It must not be assumed from this indulgence manifested by the law to the diligent first conceiver that he can claim a patent before his own reduction to practice is complete. A eduction made by the subsequent inventor avails him nothing. It does not constitute a part of his inventive act nor ful possession and enjoyment of the public. The doctrine of estoppel, as enforced against a negligent inventor in favor of his rival, is thus neither an extension of nor a departure from the principles of Patent Law, but is a rule of universal application which may as appropriately be resorted to in controversies between the antagonistic claimants of an invention as in those which arise in reference to any other class of property. See further on this subject §§ 346 and notes, and 357 and note 3, ante. § 391. In Ackerman v. Archer (1879), 15 O. G. 562, Paine, Com.: (562) "The adjudications of the courts and of the Patent Office have established the principle that, as against a patent granted, an applicant claiming to be a prior inventor must either have first so reduced the invention to practice as to demonstrate its capability of use, or have first conceived the invention and with due diligence proceeded to so reduce the same to practice as to demonstrate its capability of use. If the device does not of itself afford evidence of its capability of use, but is of such a nature that proof of actual use, or some other proof ab extra, is necessary to demonstrate its capability of use, then the applicant must show that he has put the device to practical use or ascertained its capability of practical use. . . . (563) It is, of course, against the policy of the law to grant a second patent for the same invention, even to a prior inventor, before its capability of practical use has been demonstrated; but it is also against the policy of the law to grant a second patent to an applicant claiming to be the prior inventor, even after a patentee has shown the invention to be capable of use, unless that shall have been ascer tained and shown by the applicant himself." In Burgess v. Wetmore (1879), 16 O. G. 765, Paine, Com.: (766) “It is not enough in order to entitle an applicant to a patent that some one else has shown the practicability of the invention by reducing it to practice. . . . The law accords the patent to the later applicant, who connects by due diligence a prior conception, not with a reduction to practice by somebody else, but with a reduction to practice by himself or by his agent." In Crane v. Whitehead (1875), 7 O. G. 219, Thacher, Coin. : (219) "New the law, as construed by the courts, gives the right to an invention to him who first reduces it to practical form by embodying it in a machine in use, or at least ready for use, unless a prior inventor is at the time using due diligence in adapting and perfecting the same invention. But before this prior inventor can have any standing in court, he must be able to show that he has also perfected the invention and made it ready for use; until he has done this he cannot successfully challenge the right of his competitor to the invention which the latter has embodied in operative machinery." That drawings are not reduction as against subsequent inventors, see Pennsylvania Diamond Drill Co. v. Simpson (1886), 29 Fed. Rep. 288; Detroit can it serve him as a demonstration that his own idea of means is capable of practical application in the arts. He must have finished his inventive work, and have complied with every legal requirement as fully as if no other laborer but himself were in the field, or he cannot yet be regarded as entitled to the recompense of an inventor. Lubricator Co. v. Renchard (1881), 9 That the testimony of the prior conceiver does not constitute reduction, see Pennsylvania Diamond Drill Co. v. Simpson (1886), 29 Fed. Rep. 288. CHAPTER II. OF CO-OPERATING INVENTORS. § 392. "Co-operating Inventors" Defined. An operation or an instrument, as practically known and used in the arts, is often the result of the inventive skill of two or more persons, who have acted together in producing the invention. In such a case, if the idea of means expressed in the concrete invention is single, and has been developed by the united efforts of all the inventors, the invention is a joint invention, and those concerned in it are jointly entitled to the patent. But where the concrete art or instrument embodies. more than one idea of means, and each idea is the result of the inventive skill of different persons; or where the principal idea is due to one, while others have supplied such ancillary conceptions as render the invention more available; all the inventors whose creative genius has aided in producing the invention have interests which, as far as practicable, the law will recognize and protect. It is to these we have applied the title of Co-operating Inventors. § 393. Suggestions as to Reduction not Co-operative Invention. The co-operation here described has relation to the mental part of the inventive act alone. In reducing an idea of means to practice, an inventor has a right to avail himself of the constructive skill and ingenuity of others; and the suggestions which he may derive from them, and the improvements which he may adopt in consequence of these suggestions, belong to the embodiment of his invention and not to its essential character. Hence no notice is taken by the law either of these suggestions or their author. They are regarded as part of the service which the inventor bargains for with the conVOL 1.36 structor and for which he pays; and so far as any one can be protected in their exclusive use, they are covered by the patent he obtains.1 § 394. Suggestions as to Inseparable and Dependent Ideas of Means not Co-operative Invention. But as to those suggestions and improvements which owe their origin to the inventive skill of others than the principal inventor, the rule is different. The theory and spirit of the law secures to every one the fruit of his creative efforts, and permits no one except their author to appropriate them to his exclusive use. Practically, however, a strict adherence to this theory and spirit of the law is not always possible. Not every suggestion which involves an exercise of the inventive faculties is a complete idea of means, or even a complete step forward in the development of an existing idea, capable of substantive embodiment and patentable as a separate invention. While it may render the principal idea more useful to the public and more profitable to the inventor, it may be so dependent upon it and inseparable from it as to be inconceivable without it, even as a patentable improvement. Under such circumstances, its suggester has invented nothing which the law is able to protect, or which he himself is able to enjoy. The alternative is presented either to allow it to go unprotected, and open to the use of any one who has a right to the employment of the principal invention, or to treat it as an incident belonging to and following the principal, and thus the property of the principal inventor and covered by his patent. The latter is the rule adopted by the courts, as at once more just and more encouraging to inventors than the former;1 se § 393. 1 That suggestions to an inventor do not deprive him of the merit of the invention, unless they impart to him the complete idea of means, see Watson v. Belfield (1886), 26 Fed. Rep. 536; 35 O. G. 1112; Hall v. Johnson (1883), 23 O. G. 2411; Slemmers' Appeal (1868), 58 Pa. St. 155; Alden v. Dewey (1840), 1 Story, 336; 2 Robb, 17. See also § 84 and notes, ante. § 394. 1 In Collar Co. v. Van Deusen (1874), 23 Wall. 530, Clifford, J.: (563) 'Where a person has discovered a new and useful principle in a machine, manufacture, or composition of matter, he may employ other persons to assist in carrying out that principle, and if they, in the course of experiments arising from that employment, make discoveries ancillary to the plan and preconceived curing to the principal inventor all ancillary inventions made by his employees and assistants, whenever these are not sufficiently separable from the principal invention to be patentable by themselves. design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original principle, and they may be embodied in his patent as part of his invention. Doubt upon that subject cannot be entertained, but persons employed, as much as employers, are entitled to their own independent inventions; and if the suggestions communicated constitute the whole substance of the improvement the rule is otherwise, and the patent, if granted to the employer, is invalid, because the real invention or discovery belongs to the person who made the suggestions." 7 O. G. 919 (923). This case affords a very instructive view of the relations sometimes arising between an inventor and his employees, and of their respective positions before the law. Evans, the assignor of the plaintiffs, was a manufacturer, and claimed to be the inventor, of paper collars. He found great difficulty in making collars of the desired qualities for want of paper possessing certain characteristics, and employed various paper-makers to experiment toward the production of such a paper as he required. As they presented to him, from time to time, the fruits of their experiments, he pointed out to them the particulars in which their papers were still deficient but gave them no information as to the ingredients to be used, or the methods to be employed in arriving at the necessary results. It was held that he was neither the inventor of the paper finally produced, nor of the process by which it was made; that he had merely pointed out an end to be attained, not the means of its attainment, and was not entitled to appropriate the discoveries of the paper-makers as his own invention. In Agawam Co. v. Jordan (1868), 7 Wall. 583, Clifford, J.: (603) "Persons employed, as much as employers, are entitled to their own independent inventions, but where the employer has conceived the plan of an invention and is engaged in experiments to perfect it, no suggestions from an employee, not amounting to a new method or arrangement which in itself is a complete invention, is sufficient to deprive the employer of the exclusive property in the perfected improvement. But where the suggestions go to make up a complete and perfect machine, embracing the substance of all that is embodied in the patent subsequently issued to the party to whom the suggestions were made, the patent is invalid because the real invention or discovery belonged to another." To the same point see also Harrison v. Hogan (1880), 18 O. G. 921; Yost v. Powell (1877), 13 O. G. 122; Chase v. Witter (1876), 9 O. G. 593; De Sanno v. Ritchel (1876), 9 O. G. 792; Cogswell v. Burke (1872), 1 O. G. 380; Pennock v. Dialogue (1825), 4 Wash. 538; 1 Robb, 466. But that an improvement made by a user of the invention without the knowledge of the inventor cannot be claimed by the latter, see Berdan Fire Arms Mfg. Co. v. Remington (1873), 3 O. G. 688. That the inventor of a new device, adopting a suggestion as to the mode of making it, and procuring a patent to himself and the suggester as an assignee of a half-interest, is to be regarded as the true inventor of the device, see Fraser v. Gates (1885), 118 Ill. 99. |