Another instance of a use, which will not expose the patentee to the consequences of this defence, is that suggested on more than one occasion by Mr. Justice Story, where the use has been permitted to others, for other limited purposes than those of experiment or completion, as from motives of neighborly kindness and the like. The test that is afforded by the case of Morgan v. Seaward, above cited, is applicable here also; namely, that the evidence excludes the supposition that the patentee had put the thing into public use, for the purpose of profit on it, as an invention." If a patentee could show clearly that he had allowed to others a limited use of his invention, not for his own profit, but for their accommodation, in a manner consistent with a clear intention to hold the exclusive privilege, and the invention had not got beyond his control, with his apparent acquiescence, he would not be within the mischief of this part of the statute. Of course, mere delay to take out a patent, unaccompanied by public use or sale of the thing, with the consent or allowance of the patentee, before his application, however long may be the interval between the completion of the thing and the application, will have no effect upon the patent.3 Mere delay has no other importance, than as it tends to show acquiescence in such public use as may have occurred, in the mean time; or to show that the acts of the inventor went beyond a use or permission to use, for the purpose of experiment, or other limited object.

§ 391 a. The very recent case of Kendall v. Winsor, is instructive, as affording a complete résumé of the rulings upon the various questions of abandonment, neglect to apply for letterspatent, piratical user, &c. The facts of the case are given in the opinion of Judge Daniel:

1 Mellus v. Silsbee, 4 Mas. 111; Wyeth v. Stone, 1 Story's R. 280, 281; Ryan v. Goodwin, 3 Sumner, 518.

2 Webs. Pat. Cas. 189, 193.

3

Ryan v. Goodwin, 3 Sumner, 519. In the case of Bentley v. Fleming, 1 Car. & Kirw. 587, 588, it was contended that, inasmuch as the machine in question was a complete workable machine for a long period before the letters-patent were taken out, it did not form the subject of a patent at all. Cresswell, J.: “ A man cannot enjoy his monopoly by procuring a patent, after having had the benefit of the sale of his invention. But you cannot contend, that if a man were to keep his invention shut up in his room for twenty years, that circumstance merely would deprive him of his right to obtain a patent for it."

4 21 How. 322.

"Upon the trial in the Circuit Court, in support of the defence, evidence was introduced tending to show that the plaintiff constructed a machine in substantial conformity with his specification as early as 1846, and that in 1849 he had several such machines in operation, on which he made harness to supply all such orders as he could obtain; that he continued to run these machines until he obtained these letters-patent; that he repeatedly declared to different persons that the machine was so complicated that he preferred not to take a patent, but to rely on the difficulty of imitating the machine and the secrecy in which he kept it. And the defendants also gave evidence tending to prove that the first of their machines was completed in the autumn of 1853, and the residue in the autumn of 1854, and that in the course of that fall the plaintiff had knowledge that the defendants had built or were building one or more machines like his invention, and did not interpose to prevent them. The plaintiff gave evidence tending to prove that the first machine built by him was never completed so as to operate; that his second machine was only partially successful, and improvements were made on it; that in 1849 he began four others, and completed them in that year, and made harness on them, which he sold when he could get orders; that they were subject to some practical difficulties, particularly as it respected the method of marking the harness and the liability of the bobbin to get out of the clutch; that he was employed in devising means to remedy these defects and did remedy them; that he also endeavored to simplify the machine by using only one ram-shaft; that he constantly intended to take letters-patent when he should have perfected the machine; that he applied to Mr. Keller for this purpose in February, 1853, but the model and specifications were not sent to Washington till November, 1854; that he kept the machines from the view of the public, allowed none of the hands employed in the mill to introduce persons to view them, and that the hands pledged themselves not to divulge the invention; that among the hands employed by the plaintiff was one Kendall Aldridge, who left plaintiff's employment in the autumn of 1852, and entered into an arrangement with the defendants to copy plaintiff's ma- / chine for them; and that it was by Aldridge, and under his superintendence, and by means of the knowledge which he had gained while in the plaintiff's employment, under a pledge of

secrecy, that the defendants' machines were built and put in operation; and that one of the defendants had procured drawings of the plaintiff's machine, and has taken out letters-patent for it in England. Each party controverted the facts thus sought to be proved by the other. . . . . The court set aside all those (defendants') prayers for instruction, and did instruct the jury as follows:

1. That if Aldridge, under a pledge of secrecy, obtained knowledge of the plaintiff's machine, and he had not abandoned it to

the public, and thereupon, at the instigation of the defendants, and with the knowledge, on their part, of the surreptitiousness of his acts, constructed machines for the defendants, they would not have the right to continue to use the same after the date of the plaintiff's letters-patent. But if the defendants had these machines constructed before the plaintiff's application for his letters-patent, under the belief authorized by him that he consented and allowed them so to do, then they might lawfully continue to use the same after the date of the plaintiff's letters-patent, and the plaintiff could not recover in this action. And that if the jury should find that the plaintiff's declaration and conduct were such as to justify the defendants in believing that he did not intend to take out letters-patent, but to rely on the difficulty of imitating his machine and the means he took to keep it secret, this would be a defence to the action. And they were further instructed, that to constitute such an abandonment to the public as would destroy the plaintiff's right to take a patent, in a case where it did not appear that any sale of the thing patented had been made, and there was no open public exhibition of the machine, the jury must find that he intended to give up and relinquish his right to take letterspatent. But if the plaintiff did intend not to take a patent, and manifested that intent by his declarations or conduct, and thereupon it was copied by the defendant, and so went into use, the plaintiff could not afterwards take a valid patent.' . . . .

....

".... Recurring now to the instruction from the judge at circuit in this case, we consider that instruction to be in strict conformity with the principles herein before propounded, and with the doctrines of this court, as declared in the case of Pennock v. Dialogue and Shaw v. Cooper. That instruction diminishes or excludes no proper ground upon which the conduct and intent of the plaintiff below, as evinced either by declarations or acts, or by omissions to

speak or act, and on which also the justice and integrity of the conduct of the defendants were to be examined and determined. It submitted the conduct and intentions of both plaintiff and defendants to the jury, as questions of fact to be decided by them, guided simply by such rules of law as had been settled with reference to issues like the one before them; and upon those questions of fact the jury have responded in favor of the plaintiff below, the defendant in error. The decision of the Circuit

Court is therefore affirmed, with costs."

§ 392. It now remains to be stated, how far this defence of a "prior public use or sale with the consent or allowance" of the patentee has been restricted or modified by subsequent legislation. Under this clause of the act of 1836, a use of the invention by a single person, or a sale of the thing invented to a single person, might, as we have seen, amount to a public use or sale, with the consent or allowance of the patentee. To remedy the inconvenience arising from this operation of the law, the act of 1839, § 7, provided" that every person or corporation, who las or shall have purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application, by the inventor or discoverer, for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter, so made or purchased, without liability therefor to the inventor, or any other person interested in such invention; and no patent shall be held to be invalid, by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent."

§ 393. This enactment enables a patentee to permit the use of his invention, by individuals, before his application, with more safety than he formerly could. Such use is not to invalidate the patent, except on proof of abandonment of the invention to the public, or that it had been continued for more than two years prior to the application for a patent. The question arises upon this provision, then, whether the particular purchase, sale, or prior use may of itself, under some circumstances, furnish proof of

abandonment to the public, or whether such an abandonment must be proved by other cases, and by other evidence dehors the particular purchase, sale, or prior use, that happens to be in question. The obvious construction of the act is, that a purchase, sale, or prior use, before the application for a patent, shall not invalidate it, unless it amounts to an abandonment to the public; a purchase, sale, or prior use shall not have this effect, per se, but, if connected with facts which show an abandonment to the public, or if it has been for more than two years prior to the application, it will have this effect.1 Thus, in the case of McClurg v. Kingsland, where the defendants used the invention for four months before. the application of the inventor for a patent, such use being in public, with the consent and allowance of the patentee, he being in their employ, and making a part of the apparatus by which the invention was to be applied, but receiving no compensation for the use of his invention, and not giving any notice to the defendants not to use his invention, until, on a misunderstanding upon another subject, he left their employment; the Supreme Court of the United States said that it would be no strained construction, under such circumstances, to hold that the patent, subsequently obtained, was void; although the decision merely went to the point that the acts of the patentee justified the presumption of a license to the defendants.2

§ 394. The words of the statute which thus authorizes a public use or sale by or to individuals, prior to the application for a patent, make the subject of such use or sale, "any newly invented machine, manufacture, or composition of matter"; and the purchaser is authorized to use, and vend to others to be used, "the specific machine, manufacture, or composition of matter," without liability to the inventor, &c.; and then the statute declares, that the patent shall still be valid, notwithstanding such prior use or sale, except on proof of the abandonment of "such invention " to the public, &c. It might admit of some doubt, upon this language, whether the invention of a method of manufacture, a process, or an art, or anything but a machine, a manufacture, or a composition of matter, is within the scope of the provision, and whether

1 See the comment of Mr. Justice Story on this statute, in Pierson v. The Eagle Screw Company, 3 Story's R. 402, 405, 407, cited ante.

2 1 How. 202, 208.