VOL. III.

No. 6.

In connection with any attempt that may be made to establish an International Patent Law or to extend the protection given to inventors by means of treaties, it becomes a matter of the first importance to have clearly understood what constitutes a patentable subject matter.

The subject is one that from its very nature should be the same in every country if it should ever come to be thoroughly understood.

It will be our aim to show that the doctrine laid down by the courts of this country in recent years upon this subject are not as sound and salutary as that which prevailed in former days and that if tests of international application are to be adopted, they should not be borrowed from the existing jurisprudence of this country without essential modification.

We will endeavor to exhibit the present state of the law upon this subject as laid down by the Supreme Court of the United

States, by a review of a few leading cases. As the Supreme Court will soon practically relinquish its jurisdiction in patent cases and leave the law to be moulded by the nine new Circuit Courts of Appeals, it is important for the American lawyer to know what is the doctrine that the Supreme Court has left us, as it is not likely that the new tribunals will ever consider themselves authorized to disturb it however much they might be inclined to do so.

THE ORIGIN OF THE PATENT LAW IN ENGLAND.

At common law an inventor had no right to prevent others from copying his invention. If, after years of thought, experiment, and toil, and at great expense, he constructed a new and useful machine, any one who wished could avail himself of the results of his labors and experience, and enter upon the business of producing similar machines. The tendency

of this state of the law was to encourage secrecy as to manufacturing methods.

From an early day the English. crown claimed the prerogative of granting monopolies by Letters Patent, whereby special privileges, such as the right of supplying particular commodities to the king's subjects, were granted to individuals to the exclusion of all others. The oppression thus produced led to the enactment of the statute 21 Jac. 1, c. 3, by which monopolies were declared to be illegal and void. The statute contained a proviso which excepted from its prohibitions letters patent granted by the Crown for "the sole working or making of any manner of new manufactures within this realm to the first and true inventor or inventors of such manufactures, which others at the time of the making of such Letters Patent and grants did not use, so they be not contrary to the law and misIchievous to the State."

Webster in his work on the English Law of Patents (1841), speaking of the word "manufactures" used in this statute, says:

"The various attempts made to suggest other terms and to classify all the subject matters of letters patent show the inadequacy of language to express all the minute distinctions that present themselves, and afford some color of truth for the sentiment of M. Renouard, that this branch of jurisprudence may be aptly denominated 'the metaphysics of the law.' The difficulty which undoubtedly exists arises in a great measure from the fact of the arts and manufactures of a country being in a continual state of progression, whereby objects of skill never before contemplated suddenly present themselves, and changes most minute constitute the whole difference

between a useful and a useless invention."

PATENT LAW UNDER THE CONSTITUTION AND LAWS OF THE UNITED STATES. The Constitution of the United States provided (Art. I., Sec. 8) that Congress shall have power "to promote the progress of science and useful arts by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries."

It is in pursuance of this authority that the several patent acts have been passed by Congress. The subject is now regulated by the U. S. Rev. Statutes, §§ 48834928.

It is provided by § 4886 of the Revised Statutes of the United States that:

"Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor."

It will be observed that by the English statute the subject matter of a patent must be a new manufacture, while under our statute the subject matter is any "new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof." The meaning of the term "new manufacture" has in former years been the subject of much dis

cussion in the English courts, and the English system of patents for inventions has depended upon the construction given to that term. It is obvious that the word "manufacture" may be used in different senses-it may mean something made by the hand of man, and it may also be used to designate the practice of making a thing or producing a result. The English courts have given a most comprehensive meaning to the term, so that, without dwelling upon the subject, it may be said that the word "manufacture" is held to include all that is designated in the American statute by the words "art, machine, manufacture or composition of matter, or any new and useful improvement thereof." According to our statute it is frequently necessary to distinguish between the several kinds of inventions mentioned in the statute.

In our statute the word "art" means substantially the same thing as process. The word "machine" has its ordinary popular meaning. The word "manufacture" has a much narrower meaning than it has under the English law, and means a product or thing made, while the term "composition of matter" also requires no particular definition. Medicinal compounds, artificial ivory and artificial stone would be instances of "compositions of matter."

INVENTION AND DISCOVERY.

It will be observed that the statute does not merely require that the subject matter of a patent should be new, but it must be invented or discovered. Invention implies the exercise of a creative faculty in the mind, as distinguished from the exercise of the judgment supposed to be possessed by persons skilled in the particular art to

which the subject matter relates. By far the greater portion of patents are granted for inventions, and not for discoveries. Some writers and judges maintain that for the purposes of the law "invention" and "discovery" are synonymous terms. (Simonds on Patents, § 14; Walker on Patents, § 2.)

In Merwin's very instructive work, the words "invention" and "discovery" are considered to have different meanings, which are well contrasted. (Merwin on Patentability of Inventions, p. 2.) The author states that the word "invention" may signify (1) the mental act of inventing; (2) the thing invented; (3) the fact that an invention has been made; and (4) the faculty or quality of invention. And so of the word "discovery," except that it has not the fourth meaning.

He draws a distinction between inventions and discoveries in the objective, that is, the second, sense of those words. A discovery takes place where the patentee has found out a new principle, and has made some practical application thereof. In the case of a discovery it is not necessary to inquire into the mental process by which the patentee found out the principle. It is sufficient that it remained unknown until the patentee revealed it. The question as to whether the patentee was the person who first revealed it is a question of fact.

A good instance usually cited as one of a discovery is found in the well-known. English case of Neilson v. Harford, 1 Webster Patent Cases, 273. The patentee had discovered that a hot blast of air thrown into a furnace was more effective than the cold blast previously used. It had been supposed that the colder the blast the hotter the fire, because the fur

nace fires were observed to burn better in winter than in summer. In reality the fires burned better in winter because the air is drier then, not because it is colder. Neilson therefore discovered the law or truth that a hot blast is more effective than a cold blast in a furnace, and he described an apparatus for making use of this discovery by heating the air blast before it is directed into the furnace.

The mere principle itself is not patentable. It must be accompanied by an apparatus for making use of the discovery. The apparatus considered by itself may be so simple, and may be so well known, that, considered alone, it could not involve invention, and therefore could not be the subject matter of a patent; but a patent for the discovery of the principle and the use of this apparatus, however simple, for the purpose of carrying out the principle, forms a proper subject matter for a patent. The whole constitutes a process, or in the language of the statute, an art.

Another instructive case upon the subject is that of Colgate v. Western Union Telegraph Co., decided by Judge Blatchford in the Southern District of New York (15 Blatch. 365). That invention was a very simple one. It consisted in coating telegraph wire with gutta-percha. Wires had been coated with various substances from time immemorial, and the mere mode of coating could not involve an invention, nor could a coated wire possibly have been the subject of invention. But it appeared that the inventor had discovered the fact that gutta-percha was a very perfect non-conductor of electricity, and therefore that wires coated with that substance would be effectually

The claim is valid, even though a metallic wire covered with gutta-percha existed before the plaintiff's invention, if it was not known that gutta-percha was a non-conductor of electricity, and could be used to insulate the wire."

The telegraph wire insulated by guttapercha constituted a new manufacture.

It will not be found to be of great practical importance whether we adopt the view that there is a clear distinction between invention and discovery, or whether we adopt the opposite view, which is forcibly stated in Walker on Patents, § 2, as follows:

"The word 'discovery' does not have, either in the constitution or the statute, its broadest signification. It means invention in those documents, and in them it means nothing else. The 'discoveries' of inventors are inventions. The same man may invent a machine, and may discover an island or a law of nature. For doing the first of these things, the patent laws may reward him, because he is an inventor, in doing it; but those laws cannot reward him for doing either of the others, because he is not an inventor in doing either. The statute provides that patents may be granted for four classes of things. These are arts, machines, manufactures, and compositions of matter. None of these things can be originally made known by discovery, as our continent was. They are not found, but are created. They are results of original