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wards be the inventor of such process or machine. In an action by a patentee, for an infringement of a patent for a bleaching liquor, a chemist deposed, that previously to the grant of the patent, he had had frequent conversations with the patentee, on the means of improving bleaching liquor, and that in one of them, he had suggested to the patentee, that he would probably obtain his end by keeping the lime water constantly agitated; and it appeared that this was indispensable in the process. Lord Ellenborough thereupon nonsuited the plaintiff, on the ground that it was not his invention.3 So in an action for an infringement of a patent for an improved method of making hats, a witness, who was one of the plaintiff's men, stated that he invented the improvement which was the subject of the patent, while employed in the workshop of the plaintiff. The plaintiff was thereupon nonsuited." Mr. Justice Bayley throws out the suggestion that if the witness had been employed by the plaintiff for the express purpose of devising improvements, the construction might have been otherwise.5 This was supposing an assignment of the invention, for it can make no difference in principle whether the consideration paid for the invention, be a specific price or a salary. This would not, how
3 Tenant's case, Dav. Patent Cas. 429.
4 Per Holroyd J. Barber v. Walduck, cited 1 Car & P. 558.
⚫ Bloxam v. Elsee, 1 Car. & P. 558. 1 R. & M. 187.
ever, make the employer the inventor, though the real inventor would thereby, lose the property in his invention. And this position is illustrated by another case, in which a head colorman, employed to mix colors for calico printing, had, during his service, kept a book in which were entered the processes for mixing the colors, many of which were of his own invention. Mr. Justice Chambre said, the master has a right to something beside the mere manual labor of the servant in the mixing of the colors; and though the servant invents them, yet they are to be used for his master's benefit, and he cannot carry on his trade without his book. And it was held accordingly that on discharging the colorman, his employer was entitled to retain the book and use the mixtures. This case does not give the right of taking out a patent to the employer, but it proceeds upon the doctrine that the inventor, being employed for the purpose of compounding these mixtures, and having entered them in the book, thereby lost his property in them as an invention. The case can, however, hardly be shaped into a general doctrine, it is a matter of construction of the particular circumstances, whether the inventor, by the nature of his employment, or by his contract, either assigns his invention to his employer, or at least divests himself of
• Makepeace v. Jackson, 4 Taunt. 770.
his own property in it. It is not only, not always the case; but, on the contrary, the inventor would most frequently retain his property; for most persons are employed to practise arts already known, not to invent new ones. We must limit the doctrine strictly to the case put by Mr. Justice Bayley, of the employment of a person for the purpose of superintending and directing the processes, and who uses them without reservation for the benefit of his employer.
Sec. IV. THE ORIGINAL INVENTOR.
To entitle a party to a patent he must not only be an inventor, but also the original inventor; that is, the first inventor who reduces the invention to practice. Though one exception to this rule is illustrated by the case of Dolland's patent for an improvement in reflecting telescopes, for Doctor Hall had first made the invention and reduced it to practice in his closet, and kept it secret, and yet Dolland's patent for the subsequent invention was held to be valid; for he was the original inventor of the improvement to all practical purposes, as far as the public was concerned." Mr. Justice Washington is said to have held, - in an action for an infringement of a patent, that it was no defence that the plaintiff was not the original projector of the improvement if the patent was taken
Dall. Pat. Cas. 170. 2 H. Bl. 469.
out with the knowledge and assent of the original projector, and not in fraud of his right. So the same judge is reported to have intimated, in another case, that where an invention was joint, and it was agreed by two (verbally) to take out a joint patent, and one, in violation of this agreement, took out the patent in his own name separately, he would be the trustee of the other to the amount of his moiety. It is not easy to reconcile this doctrine with the language of the statute requiring the patentee to make oath that he is the true inventor; and it seems to conflict with the doctrine laid down by Mr. Justice Story.10 Certainly if the terms original projector be used in their ordinary sense, and such projector communicates his project to another, this latter cannot be considered the original inventor.
The subject of the originality of the invention and also that of simultaneous inventions by different persons independently of each other, will be considered more particularly in treating of the novelty of inventions. It is sufficient to state generally, here, that where an inventor has applied for a patent, his claim will not be superseded by that of any other unless that other can show a previous invention. It will not be enough for him to show a simultaneous invention.
8 Dixon v. Mayor, C. C. of U. S. Penn. April, 1821. Coxe's Dig. 532. Reutgen v. Kanowrs & Grant, 1 Wash. C. C. R. 168.
10 Stearns v. Barrett, 1 Mason, 153; Barrett v. Hall, 1 Mason, 447.
Sec. V.-ASSIGNEE BY ASSIGNMENT ANTERIOR TO THE PATENT.
It was ruled by Mr. Justice Washington, in a case for an infringement of a patent, not to be a good defence to prove that another person was the inventor, if it appeared also in evidence that the patent was taken out by the plaintiff with the consent of that other." A short abstract of the point as above stated, is the only report of this case, from which it does not appear whether the point ruled was one merely of evidence, namely, that the consent of the person in question to the plaintiff's taking out the patent, rebutted the testimony that such other was the inventor; or, that another person might take out a patent in his own name for an invention not exclusively his own, with the consent of the real inventor, which would be equivalent to the patent being taken out by the assignee in case of an assignment before the patent is issued. The latter is the more obvious construction of the report as Mr. Coxe gives the case. And this doctrine is countenanced by an intimation of the same judge in another case.12 So in another case13 it is implied that the patent was taken
" Dixon v. Mayor, C. C. U. S. Penn. April, 1821. 531.
12 Reutgen v. Kanowrs & Grant, 1 Wash. C. C. R. 168. 13 Gray & Osgood v. James and others, 1 Pet. C. C. R. 481, 482.