THE LAW OF PATENTS. CHAPTER I. OF THE SUBJECT-MATTER FOR WHICH LETTERS-PATENT MAY BE GRANTED. §1. THE patent system of the United States, having grown up under a positive grant of authority in the Federal Constitution, is to be considered, in respect to the subjects of the exclusive privilege, with reference to that grant, and to the legislation which has been had under it. In England, the corresponding system has rested upon a proviso in the Statute of Monopolies, which excepted from the prohibitions of that act letters-patent granted by the crown for "the sole working or making of any manner of new manufactures, within this realm, to the first and true inventor or inventors of such manufactures, which others at the time of the making of such letters-patent and grants did not use, so they be not contrary to the law, nor mischievous to the state." § 2. The distinction thus established between those exclusive privileges which the crown may and those which it may not grant proceeds upon the principle, that a monopoly, in the prohibited sense, is a grant which restrains others from the exercise of a right or liberty which they had before the grant was made;1 whereas the exclusive privilege intended to be secured by letterspatent for an invention contemplates something in which other persons than the inventor had not, before his invention, a right to deal, or which they had not a right to use, because it did not exist. Other persons than the first inventor of a thing had the same right to invent it that he had; but as he has been the first to invent it, the patent system-proceeding upon the policy of en1 Sir E. Coke's definition of a monopoly, 3 Inst. 181, c. 85. couraging the exercise of inventive talent by securing to the inventor an original property, which, without protection, would have rested only upon a principle of natural justice - takes notice of the exclusive right of that first inventor, and makes it effectual by assuming that he who has first exercised the right of invention has bestowed something upon society which ought to procure for him thereafter, at least for a time, the exclusive right to make or use that thing. §3. This being the leading idea of the patent system, the executive and judicial departments of the English government had for a long time no other guide by which to distinguish the proper subjects of patents, which the crown could lawfully grant, excepting the description in the proviso of the Statute of Monopolies. Accordingly, the English system of patents for inventions has grown up under the constructions given to the term "manufactures." Taking into view the clear policy intended by the proviso of the statute, and the principle, that while the subject could not lawfully be restrained in the exercise of any right of trade which he possessed before a particular grant to another, yet that he might be lawfully restrained from the exercise of any trade in respect to a thing which did not previously exist, and which another had invented, the English judges had to consider what could be regarded as falling within the meaning of the term "new manufactures." The term itself, as well as the purpose of the statute, evidently contemplated something to be done or produced in matter, as distinguished from a philosophical or abstract principle. The subjects of patents which could be lawfully granted were to be "new manufactures," or "the working or making of new manufactures," invented by the grantee, and which "others," at the time of the grant, "did not use." Hence, it was apparent that something of a corporeal nature, something to be made, or at least the process of making something, or of producing some effect or result in matter, or the practical employment of art or skill, and not theoretical conceptions or abstract ideas, must constitute the subjects of the exclusive privileges which the crown was authorized to grant.1 § 4. But, subject to this restriction, the words " any manner of 1 See the comments on the statute, in The King v. Wheeler, 2 B. & Ald. 349, new manufactures," in the Statute of Monopolies, have received in construction a comprehensive import. According to the construction of the courts, the word "manufacture" is used in the statute in a literal and a figurative sense. It is used in a literal sense, because it clearly includes any species of new manufactured article, or tangible product of industry; or a new machine, the construction or production of which, as an arrangement of matter, is the result at which the inventor aims. But when it is extended to include the mode of producing an old or well-known substance, or an old and well-known effect upon matter, by a new method or process, it seems to be used in a sort of figurative sense; because, in such cases, it is the method or process of producing the thing or the effect that is new, and is the real subject of the invention; and the manufacture, or the result attained in matter, is then made to stand in the place of the new method or process of attaining it. § 5. Thus, "manufacture" has been defined to be "something made by the hand of man";1 and it has also been held to include the practice of making a thing, or of producing a result.2 As in 1 Per Lord Kenyon, in Hornblower v. Boulton, 8 T. R. 99. "It was admitted, at the argument at the bar, that the word 'manufacture,' in the statute, was of extensive signification; that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, and to new results of principles carried into practice. Let us pursue this admission. Under things made we may class, in the first place, new compositions of things, such as manufactures in the most ordinary sense of the word; secondly, all mechanical inventions, whether made to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making, we may class all new artificial manners of operating with the hand, or with instruments in common use, new processes in any art producing effects useful to the public. When the effect produced is some new substance or composition of things, it should seem that the privilege of the sole working or making ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which, though perhaps also new, will be only useful as producing the new substance. Upon this ground Dolland's patent was perhaps exceptionable, for that was for a method of producing a new object-glass, instead of being for the object-glass produced. If Dr. James's patent had been for his method for preparing his powders, instead of the powders themselves, that patent would have been exceptionable upon the same ground. When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating, with or without old mechanism, by which the effect is produced. To |