the United States, where the law is satisfied if the invention was new at the time of its being made, the inventor, by making his invention known as soon as he has reduced it to practice, not only does not thereby incur any risk of losing the advantages of it, but rather makes them more secure to himself, by supplying himself with proof of the date of his in vention. The doctrine of the English courts, that the inventor, by disclosing his secret, and permitting the use of his invention before obtaining a patent, though without the intention of waiving his privilege, in fact forfeits his right to a patent, has been adopted in France in its full rigor, as appears from an adjudication of the Court of Errors, of February, 1806. In that case the inventors of a carding machine had disclosed their invention to the municipal administration of Orleans, who, at their request, had tested its utility by a public inspection and experiment, of which they had given a formal certificate to the inventors. The inventors had besides voluntarily permitted a manufacturer to use their machine to card with. It was adjudged that in thus giving publicity to their invention, they had voluntarily made it public property, and consequently, that the patent subsequently ob tained by them, though in other respects legal, was invalid."119 The inventors complained of this decision as being too rigorous, and contended that their intention to abandon their privilege ought not to be presumed, but, on the contrary, that their right ought to remain unimpaired, unless an intention to abandon it were clearly proved. But M. Renouard, in 1825, approves of the judgment, on the ground that it was immaterial to the public, whether it was the intention of the inventors to abandon their privilege, or retain it; that the only question was, whether publicity had been given to the invention, from whatever cause, for it was this publicity which gave the public the right, and consequently deprived the inventors of their privilege. He thinks, however, that the inventor has, in such case, an action against one who may have injured him by a piracy of his invention. The same author puts the case of a patent being taken out by the party who has pirated the secret, before the invention has been patented by the inventor, and is of opinion that, though the inventor is thereby despoiled of the privilege of taking out 119 Renouard, c. 5. s. 1, p. 170, cited by him from the General Jurisprudence of M. Dalloz, t. 2, p. 263. another patent, yet he has the right to be substituted in the patent taken out, for the party who has thus fraudulently obtained it. For in such case, he says, the public has obtained such possession of the invention as is inconsistent with his privilege. Neither the English law, nor our own, has any form of proceeding for such subrogation or substitution; but our law admits of the inventor's taking out a patent himself, and then procuring the one previously taken out to be cancelled, or treating it as null and void, and prosecuting the piratical party, and those claiming and using the right under him, for an infringement of his patent. 120 The case is otherwise if the invention has been described in some public work. The act of Congress is explicit upon this point. The sixth section of the act of 1793, in enumerating a number of defences in an action for the infringement of a patent, on the establishment of either of which, the court may declare the patent to be void, mentions, as one of these defences, proof that the invention was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee. The seventh 120 See Renouard, c. 8, s. 2, p. 313, 314. section of the act of 1836, c. 357, provides that a thing is not patentable "if it has been patented or described in any printed publication in this or any foreign country;" but by the eighth section of the same act, the inventor is not deprived of his right to take out a patent for his invention, "by reason of his having taken out letters patent therefor in a foreign country, and the same having been published at any time within six months preceding the filing of his specifications and drawings." If the invention be orally described by one, and another, upon the suggestion, reduces it to practice, the latter is not the inventor. But the mere fact of the invention having been orally described by one person to another, but never described in any published work, will not defeat the right of a subsequent original inventor, to a patent; that is, a subsequent inventor who derives 121 no advantage from such prior description. But it the thing has been described in some printed publication, otherwise than by reason of the inventor's having taken out a foreign patent within the six months previous to the filing of his specification, whether it has been reduced to practice or not, a patent can 121 That is, if not reduced to practice. See as to oral publication, Report of Committee of British House of Commons, 1829, p. 9, 10, 18, 19, 20, 74, 75, 76, 153. not, under the act of Congress, be subsequently taken out for it. In such case, the description belongs to the public, and any one person cannot, by reducing the thing to practice, deprive others of the advantage of the description. The law does not confine itself to the case of a party who may be proved to have availed himself of the published description; it enacts generally and absolutely that where a thing has been described in a "public work," it shall thereupon cease to be patentable. "It may be," says Chief Justice Marshall, "that the patentee had no knowledge of this previous description; still his patent is void; the law supposes he may have known it."122 And the same rule has, by construction, been incorporated into the English law, upon this subject.123 Upon these provisions the question may arise : What is a description? We have no decisions upon this question. M. Renouard remarks, that "it is not enough to defeat a patent that the thing has been mentioned in some public work, it must have been described; that is, the publication must give such an explanation of the thing, as may, in some degree, 122 Evans v. Eaton, 3 Wheat. 454. |