If, notwithstanding this warning, he persists in his demand, the patent must be granted to him, but he runs the risk of its validity, and takes upon himself the consequences;" in illustration of which he instances Raymond's application for a patent for paddle-wheels fixed at the stern of a steamboat, which the minister, on the suggestion of the consultative committee, advised him to withdraw. He however took out his patent, which was, after divers decisions, in the lower courts, finally repealed by the court of ultimate jurisdiction, on the ground that such paddles had been described in a work published in the United States.2

22

The British patent act of 1835, affords an instance of discretionary authority in the king, by the advise of his council, to confirm a patent for a thing, of which the patentee, at the time of taking out his patent, thought himself the original inventor, though it may appear subsequently, that the thing was, at the time of taking out the patent, known, and used by others. This is a legislative act, to which the British parliament was driven by the doctrine of the English law, that if any one pirates and publishes a new invention, and reduces it to practice, before the patent of the inventor passes the great seal, though he is not chargeable with any

* Perpigna on Patents, Eng. Ed. Paris, 1832, p. 53. 54. 55.

negligence, he yet loses his right to a patent. This is a radical defect in the British law, to compensate for which parliament resorts to a very objectionable remedy, in conferring upon the king, under the advise of his council, a discretionary authority, instead of removing the defect itself, by testing the originality of the alleged invention, by a reference to what was known and used at the time when the invention was made, and not at that of sealing the patent.

Such is the experience, and such are the enactments, on the subject of the preliminary exercise of a discretionary authority in granting patents. It is that the act of congress of April 10, 1790, did not profess to refer it to the mere discretion of the board of patents whether to grant patents. It authorized them to cause patents to be granted for inventions, which they might consider sufficiently useful and important. But it is evident that by such a vague limitation of the exercise of the authority, it was, in effect, a matter of discretion with the board.

Now, it will readily occur, that this discretionary authority, whereby the functionaries of the government are empowered to act, as they may think expedient, is precisely the most unsatisfactory, the most odious, and most liable to abuse, that can be granted. It is that exercise of authority, which it is the especial

object of a great part of the legislation of every State to avoid. Rules are laid down, first by the legislators, and then as matters of construction and interpretation by the judges, that every one may know, to use Mr. Jefferson's expression, when his actions are lawful. But if a board may grant a patent when they deem the invention sufficiently useful or sufficiently important, or confirm one that is void by the law, where they are of opinion that there is some good reason for so doing, it is not in the power of an inventor to know whether he is entitled to a patent until this administrative board has exercised its discretion upon his application. The matter becomes one of solicitation, instead of being one of right, determined by definite rules.

Our patent laws, as do those of other countries, for the most part, treat the claim rather, as a matter of right, though the language imports a discretion to be exercised on the part of the administrative officers; for the law of 1793, said the secretary of state in the cases mentioned, may cause letters patent to be issued, and the act of 1836, adopts the same pharseology, substituting the commissioner of patents for the secretary of state.

Neither act, says he, shall cause the letters patent to be issued. The phraseology of the sixth section of the British act of monopolies, taken in

connexion with the first, is equivalent. The phraseology of the French law is more absolute, and those of the other countries mentioned above follow more nearly the French law in this respect. The spirit of the administration of both the British, and our law has been, however, conformable to the phraseology of the French and other laws in this respect, or rather the latter laws have copied and followed the practical administration of the British and American laws. So that allowing room for the exception of extremely scandalous or trivial inventions, or palpably immoral and illegal ones, the applicant in practice, has been put upon the footing of a claimant of right, and not that of a mere solicitor of a favor.

Having considered the provisions for mere discretionary authority on this subject; we next come to a question of very great importance, and of not a little difficulty in legislation, in regard to the novelty and utility of the invention, and especially the sufficiency of the specification, which last is the subject with which we are here more particularly occupied. The question is, whether the law should submit these subjects to the preliminary decision of a board or tribunal, or leave the applicant, as the French law professedly does, and our law, and the British, as practically administered hitherto have done, to take out a patent for

any subject on whatever specification he may choose to make, upon his own responsibility, and at his own peril. We do not inquire here as to the exercise of a discretionary authority, but suppose the board of preliminary jurisdiction to investigate and adjudicate upon the subject precisely as a judicial tribunal does in the ordinary administration of justice, that is, according to the rules of the law.

This subject was one of those which occupied much of the attention of the committee of the British House of Commons, whose report has already been so frequently mentioned. A greater number of the persons examined by the committee, were in favor of the institution of such a tribunal, for the preliminary adjudication of all these points, though others were against it." Those in favor of it, referred to the French law as a precedent, whereas that law, as we have seen, is directly against it, as the French consultative board or committee merely recommend, and do not definitively decide any thing. The projectors of the British law of 1835, probably found some difficulty in constituting such a board, since they made no provision for it in that law.

23 Rep. p. 7. 15. 24. 27. 30. 38. 41. 42. 44. 46. 55. 56. 67. 68. 74. 76. 77. 80. 84. 98.