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that "whenever the defendant relies, in his defence, on the fact of a previous invention, knowledge or use of the thing patented, he shall state in his notice the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing and where the same had been used." This notice enables the plaintiff to obtain counter evidence.

33

The novelty of an invention does not, as we have seen, depend merely upon the conception of it; for it is not considered to be an invention until it has been reduced to practice, and it is a sufficient ground of defence that it was not first reduced to practice by the patentee, or that another had reduced it to practice before the patentee, as in the case of a bleaching process which was proved to have been practised by another six years before the patentee took out his patent.34 And accordingly, conversely, it is no defence that another was the prior inventor, if he did not reduce the invention to use; or, under the act of Congress of 1836, s. 15, if such other was not using due diligence in adapting and perfecting it. And evidence that the plaintiff's patent was for an invention made by a journeyman in his shop, with his consent, was held by Mr. Justice Washington not to be proof that the patent was surreptitiously

33 Woodcock v. Parker et al. 1 Gall. R. 436.

34 Tenant's case, Dav. Pat. Cas. 429.

35 Pennock and Sellers v. Dialogue, 4 Wash. C. C. R. 538.

But such

obtained for the invention of another.36 evidence is doubtless a good defence against a claim for damages for an infringement.

According to Lord Eldon's suggestion in one case, it is to no purpose for the defendant to prove a prior invention by another, for he says, in case of concurrent applications, "I can see no other mode of deciding than by awarding the patent to him who runs the quickest through the process." But in the United States a prior invention by any one in the United States is a good defence, if such other is using due diligence to obtain a patent; but by the law of 1836, s. 1, proof of a prior invention in any foreign country where the invention has not been patented nor described in any public work, is not a good defence.

It is not a ground of defence that the patentee availed himself of the suggestions of another, unless they go to an essential part of the invention.38 is a good defence that the invention itself was pre

So it

36 Dixon v. Mayor, 4 Wash. C. C. R. 68.

* Dyer ex parte, Rep. of Committee of House of Com. 1829, App. B. p. 197, Mr. Farey's Papers; and see Forsyth v. Reviere, Chit. Praer. of the Cr. 182. Under the French law, priority is determined by the date of the deposit of the specification. Rep. of Comm. of House of Com. 1829, p. 231.

38 Pennock and Sellers v. Dialogue, 4 Wash. C. C. R. 578. In this case the doctrine on the effect of a suggestion by another is laid down in stronger terms than stated above in the text; but I apprehend that the inventor cannot claim a patent for any thing suggested by another, further than is stated in the text.

viously known, and was only used by the patentee to yield a product from a different material; this is, in one sense, a new result, but it is not a good defence to show that it merely produced a new result, if by result be meant mode of operation or difference of process.40 M. Perpigna11 considers new proportions and a new result a good subject of a patent in France; but this ought to depend on the proportions being a material part of the process, for these may constitute the principle of the invention. 43

42

So the defendant may prove in defence a subsequent patent by the same patentee, either solely or jointly with another, for the whole or a part of the same invention.

Where a patent was taken out for five things, and subsequently by the same patentee and another for three of them, Mr. Justice Washington seemed to think the second patent a disclaimer of the first, so that the patentee could not recover for an infringement of it.44 He supposes no surrender to have been made of the first; and so the position is that a

39 Supra, Ch. VII. s. VII.; Perpigna, p. 30.

40 Pennock and Sellers v. Dialogue, 4 Wash. C. C. R. 438.

41 Published in the Law Library, p. 29; English translation, p. 183.

42 See supra, p. 134, Ch. VII. s. XII.

43 Rep. of Comm. of House of Com. 1829 732.

" p.

44 Treadwell and Watson v. Bladen, 4 Wash. C. C. R. 709. - .

second patent for the same or a part of the same thing extinguishes the first.45

46

It has been said that different inventions cannot be joined in the same patent, and if so, their being so joined will be ground of defence on the face of the patent itself.

So it is a decisive objection that the invention is unlawful" or pernicious.

48

It is a good ground of defence that the alleged invention is too slight a change to be the subject for a patent, as where by the former practice a roll of cloth was dipped in hot water, and this was the immersing it in steam. But a substitution of gas flame for that of charcoal or paper was held a good subject for a patent. By Hall's patent, cotton fibres were singed from lace by carrying a gas flame by a current of air through the lace. Lace had previously been singed by the flames of charcoal or paper, the lace being stretched on a board or boot. The invention consisted in applying gas flame, in carrying the flame in a current of air, and in passing it through instead of over the lace. Abbott C. J. ruled the invention to be sufficient.19

45 See Morris v. Huntington, 1 Paine's R. 348.

46 Moody v. Fiske, 2 Mason's R. 112.

47 Supra, Ch. VII. s. XII. p. 128.

48 The King v. Russell, Rep. of Committee of House of Commons, 1829, p. 211.

49 Hall and Jervas v. Boot, Rep. of Com. of H. of Com. 1829, p. 208, App. Mr. Farey's Papers.

50

The patent is invalid where the patentee, although he may have proved himself to be the inventor, had abandoned his invention and dedicated it to the public before taking out his patent. It is immaterial how the invention came to the knowledge and use of the public, whether by consent of the inventor or by piracy; in either case, if he does not, in reasonable time, take out a patent, but, on the contrary, looks on and acquiesces in the use of his invention by the public, his patent subsequently taken out is void. And he is presumed to acquiesce where he knows or might know of the public use.52 So if it was on sale with the allowance of the patentee before his application for the patent.5

51

The public use with the acquiescence of the inventor under a prior patent, does not avoid his second patent when the prior one has been surrendered.54

The use of a machine prior to the date of the patent having been proved, by the defendant, the plaintiff may show that it was by his license.

In an action for the infringement of a patent, in

50 See supra, Ch. VII. s. XIX. See also Pennock and Sellers v. Dialogue, 4 Wash. C. C. R. 544; Treadwell and Watson v. Bladen, 4 Wash. C. C. R. 708.

51 Shaw v. Cooper, 7 Pet. S. C. R. 292.

32 S. C. and see Whittemore v. Cutter, 1 Gall. R. 482. Act of 1836, c. 357, s. 6.

53 Act of Congress, 1836, c. 377 s. 15.

54 Morris v. Huntington, 1 Paine's R. 345; Shaw v. Cooper, 7 Wheat. 292; and see 4 Mason's R. 108; 4 Wash. C. C. R. 438, 703.

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