"Pits v. Hall, 2 Blatchf. 234; Allen v. Rawson, 1 Man. G. & F. 574; Alden v. Dewey, 1 Storey, 336; Minters Pat. 1 Web. P. C. 132; Curt. Pat. 99; Reed v. Cutter, 1 Story, 599.

"No one is entitled to a patent for that which he did not invent unless he can show a legal title to the same from the inventor or by operation of law; but when a person has discovered an improved principle in a machine, manufacture or composition of matter, and employs other persons to assist him in carrying out the principle, and they in the course of experiments arising from that employment make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original improved principle, and may be embodied in his patent as a part of his invention.

Agawam v. Jordan, 74 U.S. 583; 19 L. Ed. 177. 66 A manufacturing corporation which has employed a skilled workman, for stated compensation, to take charge of its works, and to devote his time and services to devising and making improvements in articles there manufactured, is not entitled to a conveyance of patents obtained for inventions made by him while so employed, in the absence of express agreement to that effect. Dalzell v. Deuber, 149 U. S. 315; 37 L. Ed. 749, 13 S. Ct. 886; Hapgood v. Hewett, 119 U. S. 226.

That an agreement by an employee to keep forever secret for the benefit of employer any invention or discovery he may make during the term

of his employment, is not unconscionable, see Thibodeau v. Hildreth, 124 Fed. 892; 60 C. C. A. 78.

We do not think that the defendant is estopped by reason of the relation of the parties and his own conduct, to deny such equitable title in complainant. Both must rest upon the same basis of fact and law. Whether the complainant would have been justified in claiming what is called a shop right or a right to a license, irrevocable or otherwise, is not the question raised by its bill. The claim is for the whole an exclusive title, and the demand for a legal assignment of the same. -Pressed Steel v. Hansen, 137 Fed. 403; 71 C. C. A. 207.

"Article 369.-Miscellaneous Rulings. Suggestions from another, made during the progress of experiments, in order that they may be sufficient to defeat a patent subsequently issued, must have embraced the plan of improvement and must have furnished such information to whom the communication was made that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put the improvement in successfull operation.

Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 66 This evidence brings the case clearly within the terms of the decision of McClurg v. Kingsland, 1 How. 202, where it was declared that if a person employed in the manufactory of another, while receiving wages, makes experiments at the expense and in the manufactory of the employer, has his

wages increased in consequence of the useful result of experiment, makes the article invented, and permits his employer to use it, no compensation for its use being paid or demanded, and then obtains a patent for it, the patent is invalid and void.

(6 And as the employer could defend himself on the ground of public use, so could a third person. 66 And the fact that the employer just before application purchased an interest in the patent to be granted does not avoid the fact of public use by him. Worley v. Loker, 104 U. S. 340; 26

L. Ed. 821.

66 Pardy was a mechanic and patent solicitor. Hooker employed him to get up a machine and gave Pardy his own ideas as to how the desired result could be accomplished. The agreement was that Hooker was to pay all cost of the work and pay Pardy for his services, and was to own and control the patent that should be issued covering the machine. Hooker paid all the cost of the machines and paid Pardy in full. We are of opinion that such suit (for infringement) cannot be sustained, in view of the distinct agreement between Hooker and Pardy. We are of the opinion, however, that the court below was, in view of the evidence, in error in adjudging Pardy was not the inventor of the machine patented. Hooker knew, or must be held to have known, that such patent could not have been issued except upon the oath that Pardy was the inventor. Hooker did not himself apply for such patent, and there is nothing to indicate

that he ever contemplated doing so. It is true, as has been said, that he gave Pardy his own ideas and employed him to get up such a machine as he (Hooker) desired. But the accomplishment of the desired end was evidently left to Pardy. The court should not have adjudged the patent to be void, or that Pardy was not the inventor. Pardy v. Hooker, 148 Fed. 631; 78 C. C. A. 403."

I am indebted to all of these foregoing concise rulings with references to "The Fixed Law of Patents," second edition, by William Macomber, Lecturer on Law of Patents in Cornell University College of Law.

One of the practices for stimulating inquiry in the research laboratories of a great and progressive American industry today is to have definite agreements and understandings with the research workers as to inventions and daily conferences of the research workers in the various laboratories and construction departments of the plant. Each week certain problems form the basis of a more general and formal meeting, with all of the laboratory workers together, the technical men in other than laboratory phases, and with the chairman present, acting as the director of the conference. Thus a happy and amicable research family may be established and run and the problems viewed and attacked from many angles.

CHAPTER VIII

The Making and Protecting of Inventions

HE usefulness and often brilliance of inventions springing from Yankee mental activity cannot be denied, and should not be discounted, yet on the other hand, as has been pointed out by others in the preface, and in previous chapters of this little book, thousands of misguided inventors apply for patents every month, and spend their hundreds, and often thousands of dollars, and months, and often years, upon old or worthless conceptions.

I hope very sincerely that I may in the following pages, through telling what I know from long experience in this field, add at least a tiny mite toward preventing future disappointments, and in raising inventive efficiency, if I may use such a term.

There are tens of thousands of actual patents taken out annually that are absolutely of no value, either because the history of the activity in this line," the prior art," as it is technically called, makes them void, or because they are necessarily narrow in the language of their claims, covering only unimportant detail portions of an old and previously patented device.

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