Sec. XIII.-LEGALITY.

An invention, to be patentable, must not only be new, but lawful. The sixth section of the English statute of monopolies, permits the monopolies of new manufactures, "so they be not contrary to the law." The acts of Congress on this subject, have contained no similar provision; nor was any such necessary in the act of Parliament, since it would be implied, though it were not expressed. The construction put upon the acts of Congress by the American courts in this respect, is the same as that put upon the act of Parliament by the English courts.

A very ingenious instrument is said to have been invented by a London pickpocket to facilitate the practice of his art, of which he made the first experiment, and successfully, upon the artist by whom it was manufactured. There needs no express exception, to prevent such an instrument from being patentable, since it would be quite absurd to encourage and reward by one law the art of violating another. So a chemical composition for poisoning people without danger of detection, would not be the subject of a monopoly under the patent law. This is in pursuance of a universal principle of jurisprudence. It is

the principle of construction of the French patent law, which contains no express exception of unlawful industry. "It would," says M. Renouard," "be preposterous to guaranty to a man the exclusive right of doing what the law would punish when done."

Sec. XIV.-USEFULNESS.

By the sixth section of the English statute of monopolies it is provided that, in order to exempt a manufacture from the general prohibition of monopolies, it must be one that is "not mischievous to the State by raising the price of commodities at home, or hurt of trade, or generally inconvenient." The only part of the act of Congress of 1793, and that of July 4th, 1836, in this respect, is simply the epithet useful, the provision of the first section of the former, and the third of the latter, being, that if any one shall allege that he has invented a useful art, machine, manufacture or composition of matter, he may apply for a patent. Mr. Godson says, in regard to the requisite usefulness, that "if the article that is produced by the machine be old, it must be furnished to the public at a much cheaper rate. The community must receive

82 P. 167. c. 5. s. 12.

some benefit from the invention; and when it is not a new article which is introduced, the old one must, in some respect, be rendered a better commodity for trade."83

In some of the earlier cases in Pennsylvania and Massachusetts for infringements of patents, the defendants, putting the same construction upon the act of Congress as that put upon the English statute of monopolies by Mr. Godson, and by some of the English judges, set up the defence that the machine, for the infringement of which the action was brought, was not a useful one, as it was no improvement on the methods previously in use for the same manufacture, and accordingly that it did not come within the description of inventions for which a patent was authorized." On this ground of defence the decisions of Mr. Justice Story are very full and explicit. He says, "By useful invention, in the statute 1793, c. 156, is meant such a one as may be applied to some beneficial use in society, in contradistinction to an invention which is injurious to the morals, the health, or the good order of society. It is not necessary to

83 Treatise on Patents, p. 70, 71. See Manton v. Manton, Davis's Pat. Cas. 349; Lewis v. Davis, 3 Car. & P. 502. See also remarks of Abbott C. J., 2 B. & Adol. 349.

84 Gray & Osgood v. James and others, 1 Pet. C. C. R. 480, 481,

establish, that the invention is of such general utility as to supersede all other inventions now in practice to accomplish the same purpose. It is sufficient that it has no noxious or mischievous tendency, that it may be applied to practical uses, and that so far as it is applied it is salutary. If its practical utility be very limited, it will follow, that it will be of little or no profit to the inventor, and if it be trifling, it will sink into utter neglect. The law, however, does not look to the degree of utility; it simply requires, that it shall be capable of use, and that the use is such as sound morals and policy do not discountenance or prohibit."'85

In an action for an infringement of a patent for an improvement in the construction of pumps, the same judge said, "that it was contended by the defendant that it was necessary for the plaintiff to prove, that his invention is of general utility; so that in fact, for the ordinary purposes of life, it must supersede the pumps in common use; in short, that it must be for the public, a better pump than the common pump; and that unless the plaintiff can establish this position, the law will not give him the benefit of a patent, even though in some peculiar cases his invention might be

85 Bedford v. Hunt, 1 Mason, 302.

applied with advantage. I do not so understand the law. The St. 1793, c. 156, uses the phrase useful invention merely incidentally; it occurs only in the first section, and there it seems merely descriptive of the subject matter of the application, or of the conviction of the applicant. Neither the oath required by the second section, nor the special matter of defence allowed to be given in evidence by the sixth section of the act contains any such qualification or reference to general utility, to establish the validity of the patent. Nor is it alluded to in the tenth section as a cause for which the patent may be vacated. To be sure, all the matters of defence or of objection to the patent are not enumerated in these sections;86 but if such a one as that now contended for, had been intended, it is scarcely possible to account for its omission. In my judgment the argument is utterly without foundation. All that the law requires is, that the invention should not be frivolous, or injurious to the well-being, good policy, or sound morals of society. The word useful, therefore, is incorporated into the act in contradistinction to mischievous, or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassina

86 Whittemore v. Cutter, 1 Gallison, 429, 435.