tion, is not a patentable invention. But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very material to the interest of the patentee, but of no importance to the public. If it be not extensively useful it will silently sink into contempt and disregard."87

Mr. Justice Story hints, upon this kind of defence, in a case of infringement, that it, in some cases, reduced the defendant to a dilemma, since if he had not used the invention, there was no occasion to resort to this defence; if he had, the averment that it was useless came with an ill grace from him, since it was contradicted by his practice. This ground of defence accordingly does not appear very frequently in the reports. It does, however, sometimes appear and is recognised as a valid objection to a patent.

88

It was held in England, that in an action for the infringement of an improvement, the inutility of the original invention, could not be given in evidence in defence, or in other words, though the original invention was not useful, the improvement might be so, for

87 Lowell v. Lewis, 1 Mason, 182; and see also Earle v. Sawyer, 4 Mason, 6.

88 Lowell v. Lewis, 1 Mason, 186.

it might remedy some defect in the original invention, or remove some objection to it.89

So Mr. Justice Washington ruled, that taking this requisite in the strongest sense, still a machine might be considered useful within the act of Congress, if, by an improvement, it was capable of being advantageously put into operation. "It is not," he remarked, “the intrinsic value of the thing itself, but its capacity to be converted into something which may be useful, that gives it value. Admit, for the sake of argument, that Perkins's machine, (the one infringed upon), in the form in which it came from his hands, was so far inferior to the nail machines then in use as to deprive it of all intrinsic value; yet if another person can superadd to that invention something which will remove all its defects, and render it useful, it immediately becomes valuable, not on account of its own qualities, but because of its capacity to receive the improvement, and with its aid to become useful. The original discovery and the improvement become articles of traffic between the two discoverers as soon as the improvement was made which it was their mutual object to give value to."

89 Lewis v. Davies, 3 Car. & P. 502.

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

But in the more restrained sense, according to the construction of Mr. Justice Story, which is now universally adopted in the United States, the improvement on an invention that is not useful, or in other words, that is pernicious, or in the words of the English statute of monopolies, "mischievous to the state or generally inconvenient," cannot be useful, unless it diverts the invention into a different channel clear of the objection; and in this restrained sense the invention cannot be considered useful according to the doctrine of Mr. Justice Washington in the above case, on the ground that it is capable of being rendered so by an improvement.

The requisite of usefulness has been sometimes contrasted with frivolousness," and the multiplicity of patents for trivial subjects has been occasionally deprecated by judges." An invention may be slight and trivial as being so obvious and apparent that it cannot be considered a discovery, or it may be trivial or frivolous in respect to its effect upon industry and production. A defect in the first sense renders the patent void as being for a subject that is not an invention. But an invention of a very slender character in

91 Kent's Com. Vol. 2, p. 368, n. Lowell v. Lewis, supra, 156. 92 Thompson v. Haight, U. S. Law Journal, Vol. 1, p. 563.

the latter sense is still the subject of a patent, since it is not the province of the court to go into the question of the extent or degree of usefulness. It is enough that the invention is useful; how useful it

93

may be is immaterial. The inutility of an alleged invention was one of the grounds of decision against a patent in a case that came before Mr. Justice Livingston in the Circuit Court of the United States in New York, on a specification for "an improvement in folding the thread and floss cotton into skeins or hanks of a convenient quantity for retailing, with a sealed wrapper round the same, and a label containing the number and description of the article." The cotton thus folded was imported from the factory of Holt, in England. The article itself underwent no change, and the whole of the improvement consisted in putting up skeins of it, perhaps of the same size in which they were imported, decorated with a label and wrapper; thus rendering their appearance somewhat more attractive, insomuch that it sold at a price twenty-five per cent. higher than before it was so put up. When stripped of these appendages, which it must be before using it, the cotton was no better in

93 Lowell v. Lewis, supra, 156.

any respect than when put up by Holt. Mr. Justice Livingston said, "Now that such a contrivance-for with what propriety can it be termed a useful art within the meaning of the constitution ?-may be beneficial to a patentee, if he can exclude from the market all other retailers of the very same article, will not be denied; and if to protect the interest of a patentee, however frivolous, useless or deceptive his invention may be, were the sole object of the law, it must be admitted that the plaintiff has made out a satisfactory title to his patent. But if the utility of an invention is to be tested by the advantages which the public are to derive from it, it is not perceived how this part of his title is in any way whatever established. Is any thing done to alter the texture of the cotton, or to render it better or more portable or more convenient for use? Nothing of this kind is pretended." On these grounds, and especially as the court thought that the patentee held out a false appearance and imposed upon purchasers, the patent was held to be void.94

An invention, to entitle the inventor to a patent, "must," says Mr. Chancellor Kent, "be, to a certain

94 Langdon v. De Groot, 1 Paine R. 203.