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tion by the same patentees. For it is impossible, that any person can be, at the same time, the joint and the sole inventor of the same invention. If, therefore, each of the joint patentees obtain a several patent for the same invention, as his own exclusive invention, and afterwards, without surrendering the first patent, they obtain a joint patent for the same as a joint invention, either the former sole
patents are void, or the joint patent is void. For, besides the apparent inconsistency of the patents, if all could be sustained, then a recovery upon the joint patent would be no bar to a suit upon the several patents; and the parties might obtain a double recompense for the same infringement. There is an additional reason which deserves great consideration; and that is, that if sole and joint patents could be sustained by the same parties for the same invention, they might be successively taken out, so that the term of the exclusive right might be prolonged for a great length of time, instead of being limited to fourteen years."
Sec. II.-PATENT FOR A COMBINATION, AND FOR THE
SEPARATE THINGS COMBINED.
But an invention of a combination, and that of a part or the whole of the things combined, may be
• Barrett v. Hall, 1 Mason, 473.
joined in the same patent.?' The reason is that, though they are separate inventions combined in one thing, and may therefore be joined in the same patent without violating the rule about to be stated on the joining of different inventions in one patent, yet the taking of a patent for the combination, after taking one for the separate parts, is not a double patent, or, in other words, is not the patenting, under the claim of the combination, the same thing which had before been claimed under the separate parts; for a machine may be the combination of a number of others, each of which, when invented, might have been the subject of a patent, and yet the combination of them might also, when first made, be the subject of a patent, and accordingly, if both the parts or some of them, and the combination, be invented by the same person, he may specify these distinctly in the same patent, or, if he invent them at different times, he may make the parts the subject of one or more patents, and then take a patent for the combination.
Sec. III.-DISTINCT INVENTIONS CANNOT BE JOINED
IN THE SAME PATENT.
The doctrine is equally clear that different, distinct and independent inventions cannot be joined in the
Per Story, J., Moody v. Fiske, 2 Mason, 112.
same patent. Mr. Chief Justice Marshall says, in giving the opinion of the court, “ Under the general patent law alone, a doubt may well arise, whether improvements on different machines could regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately, as well as a right to the exclusive use of those machines in combination." So Mr. Justice Story says, “ Though several distinct improvements in one machine may be united in one patent, it does not follow that several improvements in two different machines, having distinct and independent operations, can be so included. Much less that the same patent may be for a combination of different machines, and for distinct improvements in each."And in another case the same judge says, that “a patent under the general patent act, cannot embrace various distinct improvements or inventions; but in such case the party must take out separate patents. If the patentee has invented certain improved machines, which are capable of a distinct operation, and also has invented a combination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines; for the inventions are as
distinct, as if the subjects were entirely different.”:10 So Mr. Justice Wilde, of the Supreme Court of Massachusetts, was of opinion, where a joint patent for a reel and lap-frame was granted to two persons, that as these were distinct and separate inventions and machines, the joint patent was for that reason void; but that the parties might procure its repeal and obtain separate patents for each machine."
In regard to the case put by Mr. Justice Story, of joining the invention of an improvement of one machine in the same patent with an invention of a combination of the machine, so improved with others, I cannot but think they may be joined, where the improvement in the separate machine, and the combination, have the same object; for, suppose the combination to be of two machines, one of which is improved; the improvement is one addition, or modification, and the combining it with the other, is a second modification or addition. The case cannot easily be distinguished from divers improvements of the same machine, and that such divers improvements may be joined in one patent, there seems to be no ground to doubt.
A case decided in the English Court of King's Bench, presents a combination of things in the same patent, of very considerable diversity, though all the
10 Barrett v. Hall, 1 Mason, 475. 11 Stearns v. Barret, 1 Pick. 448.
different things were used in connexion, viz. an improvement in ships' anchors, cables, and windlasses.12 The objection was not made to this patent that it embraced distinct subjects of patents, so that on this point the case has only the feeble authority arising from the fact that the counsel did not raise the objection, and that the court did not, of its own motion, notice it.
Though the doctrine that divers inventions cannot be joined in the same patent, is, as we have seen, laid down pretty positively, the reasons are not given. We first look for the reason in the words of the statute, which are, if any one shall allege that he has invented any new art, machine, or manufacture, or any new improvement in any art, &c., being wholly in the singular number. But this fact cannot be of great weight, since the phraseology is the same in this respect, in regard to new machines or new improvements of old ones, and a construction whereby the joining of different improvements of the same machine in one patent should be excluded, would certainly be exceedingly strict, and in opposition to the general practice. The question may thus be fairly considered as left at large by the statutes.
M. Renouard says, on this subject, “one cannot combine in the same application divers principal subjects of a patent, as this would be a way of eluding
12 See Hill v. Thompson, 2 J. B. Moore, 424.