ecutive officers to fix the time.

2

Though in one case

in England Mr. Justice Grose is reported to have said, that the specification was fairly to be considered a part of the patent itself, the cases are entirely otherwise, and it is well settled there that the patent is distinct from the specification, and controls it in construction, and that the patentee cannot cover any thing by the specification which is not covered by the patent, or draw from the specification any construction whereby to comprehend in the patent any thing which would not be comprehended without recurrence to the specification. No position is better settled in English jurisprudence, and yet Mr. Justice Le Blanc intimates, in one case1 that if the specification is too large the patent is so too; that is, if you look into the specification and find that the invention is broader than the patent, .or in other words that the inventor has taken out a patent for only a part of what he is entitled to, it is void. But this doctrine is certainly untenable in the English law. Under the English patents the specification generally limits the description in the patent, that is, it claims only a part of what is comprehended in the more general description in the patent.

28 T. R. 105.

3 Campion v. Benyon, 3 Brod. & Bing. 5. The King v. Wheeler, 2 B. & Ald. 345; Bainbridge v. Wigley, Rep. of Arts, Sec. Ser. Vol. 27, p. 127; Rex v. Metcalf, 2 Stark. N. P. C. 249; Cochrane v. Smethurst, 1 Stark. N. P. C. 205.

* Cochrane v. Smethurst, 1 Stark. 205.

In the United States, the doctrine is different on this subject, the specification being always drawn up before the patent is granted, and being referred to in the patent. It is well settled in our courts that it is a part of the patent, in the common form of which, the specification being annexed, is expressly referred to as "a part of these presents." Accordingly Mr. Justice Story says, "Under the patent laws of the United States, the specification forms a part of the patent, and may control the generality of its terms; in England the specification is separate from it."5

This diversity in the law in England and the United States, will be found to be of material importance in the construction of patents, and it will appear very clearly that, from the above circumstance, the jurisprudence in the United States is free from some of the embarrassments to which it is subject in England.

Both in English and American patents a title is necessarily given to the invention, whereby it is patented. The American patent act of 1793, s. 1, provides, that, on a petition for the purpose, the secretary of state may cause letters patent to be granted, giving a short description of said invention or discovery.” This short description is usually the title of the invention in the words of the patentee, either prefixed

* Barrett v. Hall, 1 Mason, 477; Whittemore v. Cutter, 1 Gallison's R. 437.

to his specification, or being the introductory part of it.. In American patents any defect in this title may be remedied by the specification. The accuracy in the title required by the English law, renders the choice of titles matter of the greatest difficulty, since, if the title is too narrow, the patentee either fails of securing the exclusive privilege entirely, or, at least, to the extent to which he is entitled to it, and, if it is too broad, the patent is void by reason of its covering too much. Many English patents have been defeated on this ground. The difficulty has been partly overcome by the allowing of great generality and indefiniteness in the description.

"Such," says Mr. Godson, "is the technical use that has for a long time been made of the word method in patents, that it is quite common for inventors to ask for a patent for a method of doing something, and then to set forth a description of some new substance or machine. It is a convenient way to avoid giving a title to the invention. And therefore it is now clearly established, that if the patentee claim a method, and yet in the specification describe some tangible matter, the grant is valid. In other words, though the patent is for something called a method, yet the real subject of the grant is either a substance, machine, improvement, or combination.'

996

• Godson on Patents, 88.

Thus Watt's patent for his improvement in the steam engine was for "a method of lessening the consumption of steam and fuel in steam engines," a description which would cover a large part of the improvements in steam engines and boilers invented from Watt's day to the present, and yet it was held to be a sufficient description and a valid patent, after much doubt and discussion," and the case has been a leading one on the subject to the present time.

But this liberality in the construction of the language used in the patent, has not always saved the patentee from the loss of his privilege; and indeed the courts have, in some instances, departed from the liberality that marked the final decision in Watt and Boulton's case, and adopted principles of construction upon which it would be very difficult, if not absolutely impracticable, to secure a patent right under the English law.

Bainbridge's patent, granted in 1807, for an improvement in the flageolet or English flute, by the addition of notes, in the plural, whereas only a note was added, was held to be void on account of the inaccuracy of this description in the title.*

So Lord Cochrane's patent for "a method or methods of more completely lighting cities, towns and villages," which consisted in an improved lamp, was

Boulton v. Bull, 2 H. Bl. 463.

Bainbridge v. Wigley, K. B. 1810. Rep. of Arts, Second Series, Vol. 18, p. 127.

held to be void on account of the generality of the title.9

So Metcalf's patent for "tapering brushes," was adjudged by Lord Ellenborough to be void on account of the inaccuracy of this description. It appeared, from the specification, that the improvement consisted in making the bristles of unequal length instead of their being of the same length, as they had been in former brushes. A tuft of such bristles compressed in the hand or between the fingers, would be in some sort tapering. The specification made it plain enough what was meant by tapering. But Lord Ellenborough ruled that the description in the patent was defective, and that the "difficulty arising from the grammatical consideration" could not be removed.10

So Wheeler's patent for "a new and improved method of drying and preparing malt," which consisted in a preparation of barley for the purpose of coloring beer, was held to be void on account of the supposed inaccuracy, in calling it malt."

Now in every one of these cases, if, as in American patents, the specification could have been resorted to for a construction of the title, the objections, on which the patents were declared void, would have disappeared.

⚫ Cochrane v. Smethurst, 1 Stark. 205; S. C. Rep. of Arts, Second Series, Vol. 27, p. 192; S. C. Gods. Pat. 104, n.

10 Rex v. Metcalf, 2 Stark. N. P. C. 249.

"1 The King v. Wheeler, 2 Barn, & Ald. 345,