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CHAPTER VII.

PRIOR INVENTION.

When

ECTION 61, paragraph second, of the act of July 8, 1870, makes it a good defense against an action on a patent, brought by a patentee, "that he had surrep"titiously or unjustly obtained the patent for that which was, in fact, invented by another, who was using reason"able diligence in adapting and perfecting the same.” Prior invention is a different thing from prior use. the latter defense is set up, it is of no especial consequence whether the inventor of the prior thing was intending to get a patent therefor or not; while, in setting up the former, it is material that the prior inventor intended to get a patent. Again, in setting up the defense of prior use, it is necessary to show that the prior device was reduced to practice, put into actual operation and use,—and, on principle, this use should be one accessible to the public; while, in setting up the defense of prior invention, it is not necessary that the invention should have ever been perfected or put in practice, or into actual use at all. We shall see, in this chapter, that the first, strongest, and best title to a patent is that of an inventor making a prior conception of the invention in point of time, and then exercising due diligence afterward in perfecting and adapting it, and putting it in practice; and that this title will prevail against a subsequent inventor who has obtained a patent. One judge, at least, has distinctly stated a difference between prior invention and prior use. He said: "Here the

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"reliance is not on prior use; therefore, it is of no consequence whether it (the invention) is abandoned or not, "but whether it was the prior invention."

The question of prior invention comes up for discussion before the Patent Office much oftener than in the United States courts. This topic is a comparatively rare one in the courts, but it comes up constantly before the Patent Office in the proceedings technically known as "interferences," which are proceedings instituted for the purpose of determining the question of priority of invention between two or more parties claiming the same patentable subjectAn interference is declared,

matter.

FIRST, When two or more parties have applications pending before the Office at the same time, and their respective claims conflict in whole or in part. When two or more applications are pending at the same time, in each of which a like patentable invention is shown or described, but not specifically claimed in all of them.

SECOND,When an applicant, having been rejected. upon an unexpired patent, claims to have made the invention before the patentee.

THIRD, - When an applicant for a reissue embraces in his amended claim any new or additional description of his invention, or enlarges his claim, or makes a new one, and thereby includes therein anything which has been claimed or shown in any patent granted subsequent to the date of his original application, or in any pending application; provided there is reason to suppose that such subsequent applicant or patentee may be the first in

ventor.

1 Colt vs. Massachusetts Arms Co., 1 Fisher's Pat. Cases, 116.

The fact that one of the parties has already obtained a patent, does not prevent an interference; for, although the Commissioner has no power to cancel a patent already issued, he may, if he finds that another person was the prior inventor, give him a patent also, and thus place both parties on an equal footing before the courts and the public.

The cases in the courts which have distinctively touched upon the topic of prior invention are so few in number, that we can, perhaps, treat the topic in no better manner than to cite these decisions, or at least the greater part of them, chronologically, and then deduce certain rules therefrom.

In the case of Reed vs. Cutter (vol. i. Story, p. 590), tried in October, 1841, Judge Story said (p. 599): "In a

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race of diligence between two independent inventors, he "who first reduces his invention to a fixed, positive, and 'practical form would seem to be entitled to a priority "of right to a patent therefor. The clause

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now

"under consideration seems to qualify that right, by pro'viding that, in such cases, he who invents first shall have "the prior right, if he is using reasonable diligence in 'adapting and perfecting the same, although the second "inventor has, in fact, first perfected the same, and re❝duced the same to practice in a positive form."'1

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The principles set forth in the case just cited were recognized and followed in the case of Colt vs. Massachusetts Arms Company (vol. i. Fisher's Patent Cases, p. 108), August, 1851, where two patents were in conflict. Judge Woodbury instructed the jury that they might go back and find who made the prior invention; he said (p. 120):

1 Woodcock vs. Parker, 1 Gal. 438.

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"The date of the invention is the date of the discovery involved, and the attempt to embody that in some ma"chine not the date of perfecting the instrument.

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"If the invention was made-if it was set forth in a "machine which would and did discharge a fire,- that is "all which is necessary to constitute the invention.”

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In the case of Ransom vs. The Mayor of New-York (vol. i. Fisher's Patent Cases, p. 252), December, 1856, Judge Hall said (p. 272): "If the plaintiffs did not use reason"able diligence to perfect the invention patented, after the "idea of it was conceived, and in the meantime other persons not only conceived the idea, but perfected the "invention, and practically applied it to public use, before "the invention of the plaintiffs had been so far perfected "that it could be applied to practical use, the plaintiffs' "patent is void, because they were not the first and original "inventors of the thing patented."

In the case of Johnson vs. Root (vol. i. Fisher's Patent Cases, p. 351), October, 1858, Judge Sprague said (p. 369): "If, gentlemen, the invention was perfected, -if Mr. "Johnson used reasonable diligence to perfect it, then "he had a right to have it incorporated into his patent, "and to supersede those who had intervened between his "first invention or discovery and his subsequent taking out "of his patent.

If he had not perfected it, and did not

use due diligence to carry it into effect, and in the mean"time, before he got his patent, somebody else had invented "and used, and incorporated into a useful, practical ma"chine, that mode of feeding, then he could not, by a 'subsequent patent, appropriate to himself what was em"braced in the former machine."

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The case of Ellithorpe vs. Robertson (vol. ii. Fisher's Patent Cases, p. 83), February, 1859, was an interference

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case carried to the United States court. Judge Ingersoll said (p. 85): "To defeat a patent which has been issued, it is not enough that some one, before the patentee, con"ceived the idea of effecting what the patentee accomplished. To constitute such a prior invention as will "avoid a patent that has been granted, it must be made to appear that some one, before the patentee, not only con"ceived the idea of doing what the patentee has done, but,

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also, that he reduced his idea to practice, and embodied "it in some practical and useful form. The idea must "have been carried into practical operation. The making "of drawings of conceived ideas is not such an embodi"ment of such conceived ideas into practical and useful 'form as will defeat a patent which has been granted.”

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In order to comprehend the exact force of the words just quoted, it must be taken into consideration, that the later applicant for the patent did not allege in his bill of complaint to the court that he had used reasonable diligence in adapting and perfecting his invention (see foot of page 86, etc.), so that this decision applies only where one party has a patent and the other can not show, in addition to prior conception on his part, that he used reasonable diligence in adapting and perfecting the invention.

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In Cox vs. Griggs (vol. ii. Fisher's Patent Cases, p. 174), April, 1861, Judge Drummond said (p. 176): "It is the right and privilege of a party, when an idea enters his "mind in the essential form of invention,—inasmuch as "most inventions are the result of experiment, trial, and effort, and few of them are worked out by mere will, "to perfect, by experiment and reasonable diligence, his original idea, so as not to be deprived of the fruit of his "skill and labor, by a prior patent, if he is the first "inventor."