69

subsequent discoveries and improvements, down to the time of specifying. In the United States, as the specification is drawn up before the patent is made out, the above rule is not applicable.70

Sec. IX.-REFERENCE IN THE SPECIFICATION TO DRAWINGS.

The third section of the act of Congress of 1793, after prescribing the requisites of the specification, provides that the inventor shall accompany it "with drawings and written references, where the nature of the case admits of drawings." The act of 1836, s. 6, contains the same provision, correcting the phraseology merely by saying "drawing or drawings," which does

not alter the construction.

69 Crossley v. Beverly, 9 Barn. & Cress. 63. In stating this doctrine, Lord Tenterden remarks that time is given for enrolling the specification, for the purpose of allowing the inventor an opportunity to perfect his invention,

70Near the end of the reign of Queen Anne, it became the custom to insert a proviso into all patents to require the patentee to execute a complete specification of the invention for which the patent was granted, and also to enroll the same in the court of chancery within a specified time. Before that time the patentee was not called upon for any specification." Mr. Savery's patent of 1698, for some kind of fire engine, had no such clause. Rep. of Com. of House of Com. 1829, App. p. 170. Mr. Farey's Papers,

The drawings are a part of the specification where they are referred to in it," "and may help and make good a specification which would otherwise be defective."72

The English and American jurisprudence coincide in this doctrine. Where it was, in 1825, objected to a specification that there was some little obscurity in it, and that it contained French terms, Abbott C. J. said, that "the inventor of a machine was not tied down to make such a specification, as, by words only, would enable a skilful mechanic to make the machine, but he is to be allowed to call in aid the drawings which he annexes to the specification; and if, by a comparison of the words and the drawings, the one will explain the other sufficiently to enable a skilful mechanic to perform the work, such a specification is sufficient."'73

So in a previous trial, in 1820, on Brunton's patent for chain cable's anchors and windlasses, where it was objected that the dimensions of the stay of the link were not described in words, Abbott C. J. said to the jury, "If a drawing or figure will enable a workman

71 Earle v. Sawyer, 4 Mass. R. 1. See supra c. 10.

72 Kent's Com. v. 2, p. 270.

73 Bloxam v. Elsee, 1 Carr. & P. 558.

of competent skill to construct the improvement, it is as good as any written description."74

So Lord Ellenborough, in 1816, said to the jury on the subject of distinguishing what was claimed; "The inventor should say, 'My improvement consists in this,' describing it in words if he can, if not, by reference to figures.""

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Lord Eldon says, the inventor may, if he chooses, annex to his specification a picture or model descriptive of it; but then, he adds, "his specification must be in itself sufficient, or I apprehend it will be bad." If by this be meant that the description in words must be such as to give an adequate knowledge of the invention without recurrence to the drawings, it is inconsistent with the other decisions. If it be meant that notwithstanding the annexing of drawings, a specification must be given in words as accurate and intelligible as the subject admits of, or, in other words, that the drawings cannot be a substitute for a specification, it is no doubt correct.

"The st. 1793, c. 156, § 3, requires that the inventor shall deliver a written description of his in

74 Brunton v. Hawkes and another. Rep. of Comm. of House of Com. 1829, p. 206; App. Mr. Farey's notes.

75 Macfarlane v. Price, 1 Stark. R. 199.

76 Fox ex parte, 1 Ves. & B. 67.

vention, &c.; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings,' &c. This is an explicit direction to annex drawings, where the nature of the case admits of them, with written references; and when so annexed, they become part of the written description required by the act. pensable to distinguish the thing patented from other things before known. Surely then the act could not intend studiously to exclude them as part of the written description. That would be to require the end and deny the means."

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They may be indis

It was held by the King's Bench, in England, that a specification in a former patent might be referred to in a subsequent one, so as to be made a part of it.78

But specimens and models, deposited in the patent office, cannot be resorted to for the purpose of supplying any defect in the specification.

Sec. X.-CONSEQUENCES OF A DEFECT IN THE SPE

CIFICATION.

Before the British act of 5 and 6 Wm. IV. c. 83, (1835,) the consequence of a defect in the specifica

77 Per. Story J., Earle v. Sawyer, 4 Mason R. 9.

78 Harmar v. Playne, 10 East, 101.

Sec. X.] Consequences of Defect in Specification. 295 tion, in England, was an absolute loss of the privilege of the patent right. By the first section of that act, the patentee or his assignee "may, with the leave of the attorney or solicitor general, enter a disclaimer of any part of either the title of the invention or of the specification, stating the reason for such disclaimer, or may, with such leave, enter a memorandum of any alteration in the said title or specification, not being such disclaimer, or such alteration as shall extend the exclusive right granted by the patent ;" and such disclaimer or memorandum is thereafter to be considered a part of the title or specification.79

By the fifth section of the act of Congress of 1832, it is enacted that "whenever any patent shall be invalid or inoperative, by reason that any of the terms and conditions prescribed in the third section in the said act (of 1793) have not, by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the said inventor, it shall be lawful for the secretary of state, upon the surrender to him of such patent, to cause a new one to be granted to the said inventor, for the

79 This act was introduced by Lord Brougham, and is the result of the examinations made by the committee of the House of Commons, in 1829, and remedies some of the most material defects of the English law as it stood before.