CHAPTER XV.

Property in Patents and in Unpatented Secrets.

THE interest of a patentee in his patent is a species of personal property, created by grant under the authority of the State, and one that could not exist without a positive law for its support. It is true that an invention that could be used in secret, without an exposure of the process by the exhibition of the products, might be retained and its advantages enjoyed by the inventor, independently of a law for its protection. But the patent law does not deprive the inventor of any advantage of this description. He may still, notwithstanding the law, guard his secret and enjoy its advantages as he might have done before the law was enacted. He is not required to make and publish his specification. But then it would not be a property; it would, after all, be only his secret.1

It is obviously impossible for an inventor to avail himself of the advantages of his improvement in this way in regard to most inventions, and it is very difficult to do it in any case. The process will sooner or later be divulged by the persons he employs, or

1 Godson, p. 171.

2

will be liable to be detected in the results or products. The improvement made in the art of bleaching, mentioned in Tenant's case, was practised six years before the patent was applied for. In other cases an inventor might expect to carry on his manufacture in secret for a still longer period. Dr. Swainson kept the secret of making his vegetable syrup for more than thirty years. In the few instances, however, in which there would be any chance of keeping the secret, there would be the constant inconvenience of the risk of detection and the consequent loss of the advantages of the discovery. Accordingly very few inventors decline the terms proposed by the patent laws for a temporary monopoly, as the price of the full disclosure of their discoveries, with the expectation of being able to reap the advantages of them for a longer period than that allowed by the statute by carrying on a secret manufacture.

There have been instances of suits and applications for injunctions, to protect inventors in the advantages of unpatented inventions, but without success. These proceedings have generally related to medicines. A bill for an injunction and an account was filed against a manufacturer and vendor of Swainson's vegetable syrup. The bill stated that

Dav. Pat. Cas. 429.

Isaac Swainson was, for more than thirty years before his death, the sole proprietor of the secret or recipe for preparing the medicine called Velno's Vegetable Syrup, which he had purchased for £6000, and by his will had bequeathed to the plaintiff, who, since his decease, had continued to make the same preparation as specified by the recipe, and made great profit; and would have made much greater, if the defendant had not imposed on the public a spurious composition under the same name, which his advertisements stated to be the same in composition and quality as that made by Swainson and the plaintiff. The bill prayed an account and injunction, &c. The defendant demurred generally. Sir Thomas Plummer, V. C. "This bill proceeds upon an erroneous notion of exclusive property now subsisting in this medicine, which Swainson having purchased, had a right to dispose of by his will, and, as it is contended, to give the plaintiff the exclusive right of sale of. If this claim of monopoly can be maintained, without any limitation of time, it is a much better right, than that of a patentee; but the violation of right with which the defendant is charged, does not fall within the cases in which the court has restrained a fraudulent attempt by one man to invade another's property; to appropriate the benefit of a valuable interest in the nature of good-will, consisting in the character of his trade or production, established by individual merit; the other representing

himself to be the same person, and his trade or production the same, as in Hogg v. Kirby, combining imposition on the public with injury to the individual. This is not that sort of case. The observation is correct, that the bill, stating the defendant's medicine to be spurious, asserts it not to be the same as the plaintiff's. The defendant does not hold himself out as the representative of Swainson, setting up a right in that character to the medicines purchased by him; but merely represents that he sells, not the plaintiff's medicine, but one of as good a quality. He is perfectly at liberty to do so. If any exclusive right in this medicine ever existed, it has long expired. The demurrer must be allowed."

Another case occurred, in regard to Dr. James's pills, before Lord Eldon. From the bill in the court of chancery, in 1817, it appeared that by certain articles of agreement between Dr. James, the inventor and proprietor of certain pills for the gout, rheumatism, &c. and Newbery, the plaintiff's deceased father, it was agreed that James should prepare the aforesaid pills, and sell and deliver them to Newbery at a certain rate, to supply his customers, and that James should not sell any of such medicines to any other person, except in the course of his private practice. Newebry was also to be

1 8 Vesey, 215.

✦ Canham v. Jones, 2 Ves. & B. 218.

instructed in the secret of preparing the pills, but it was not to be disclosed by him except to his representatives after his death. It also appeared that letters patent had been granted, in 1747, to James for the exercise of his invention, and that James had assigned to Newbery, his executors, &c. one moiety of the invention during the term of fourteen years. The agreement contained in the articles was to be continued so long as either of the parties, their executors, &c. or any or either of them, should desire. Newbery bequeathed to the plaintiff all his interest in the preparing and vending the medicines. The defendants had succeeded to the rights of James, who died in 1776. The bill prayed a specific performance of the agreement, and an injunction to restrain the defendants from disclosing the secret of preparing the medicines except to the persons mentioned in the agreement. An injunction was granted only as to the sale of the medicines, expressly without prejudice to any question that might be made as to the possibility of sustaining such an injunction. On a motion to dissolve the injunction, Lord Eldon said, "that the difficulty in such a case was, how to decree the specific performance of the agreement. Either it was a secret, or it was none. If a secret, what means did the court possess, of interfering so as to enforce its own orders? If none, there was no ground for interfering. In this case, the medicines in question were the subject of a patent which had