patented, the same shall not be void on account of the invention or discovery, or any part thereof, having been before known or used in any foreign country; it not appearing that the same or any substantial part thereof had before been patented, or described in any printed publication."

§ 99. These provisions are not very skilfully framed, but when collated, they leave the rights of an original inventor in the following position that an inventor who does not consciously borrow from a foreign discovery, that is, who believes himself to be the first inventor or discoverer of the thing patented, can only be deprived of the benefit of his patent, by showing that the thing had been before patented, or described in some printed publication. It will not be enough to show that the thing had been known or used in a foreign country, if it had not been patented, or described in a printed publication. Thus, while the statute still continues the presumption that the patentee has seen the prior description contained in a printed publication, and makes that presumption, conclusive, it relieves an original inventor from the same presumption, arising out of the mere previous knowledge or use of the thing in a foreign country where it had not been patented or described; and if he can take the oath that he discovered or invented the thing, he will not be debarred of his patent, by a prior invention or discovery and use of the thing in a foreign country. The meaning and operation of the terms "patented and "described in some printed publication" will be considered hereafter in connection with the subject of Defences.

§ 100. We now come to consider the next clause in the 13th section of the act of 1836, which imposes a further condition upon the grant of a valid patent. We have seen that the subject-matter must be new, and that there is superadded, the condition that it was not known or used by others before the applicant's discovery or invention of it; to which the statute adds, " and not at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer." 2 The obvious mean

1 Upon the former law the Supreme Court of the United States said: "It may be that the patentee had no knowledge of this previous use or previous description; still his patent is void; the law supposes he may have known it." Evans v. Eaton, 3 Wheat. 454.

Act of 1836, § 6.

ing and effect of this clause establish a distinction between an abandonment or dedication of an invention to the public before a patent has been obtained, and an abandonment of the patent right after it has been obtained.

§ 101. The terms of this clause recognize the principle that, although the applicant or patentee may be an original and the first inventor, yet that he may have so conducted, before applying for a patent, as to have lost the right to obtain one. That an inventor could lose his right to a patent by an abandonment or dedication of his invention to the public, was held by the Supreme Court of the United States, under the Patent Act of February 21, 1793, which made it necessary to a valid patent that the invention should be one "not known or used before the application." It was considered by the court that these words could not mean that the thing invented was not known or used before the application by the inventor himself, since he must possess the knowledge and practise the use of his invention, in order to test its value. The words, to have any rational interpretation, must mean, not known or used by others, before the application. But it was further considered by the court in this case, that the clause "not known or used before the application," after receiving by construction the insertion of the words" by others," were to be considered as intended for a requirement that the applicant for a patent should be the first inventor, and not as a substantive enactment of the doctrine of abandonment or dedication by the first inventor, and before he had applied for a patent. Still, it was held, that, without any enactment or statute declaration to this effect, if the first inventor should put his invention into public use or sell it for public use before applying for a patent, he would create another bar to his claim for a patent, distinct from the question of priority of invention; because his voluntary acquiescence in the public use of his invention would create a disability to comply with the conditions on which alone the proper department of the government was authorized to grant the patent.1

§ 102. This construction of the statute of 1793 was not, it must be perceived, entirely consistent; for it did not distinctly rest the doctrine of voluntary abandonment upon general principles, aside from the statute provision, but sought to bring the case of such a 1 Pennock v. Dialogue, 2 Peters, 1-24.

dedication within the terms of a clause which were admitted to have been designed to establish the requirement of first invention. This ambiguity led to the incorporation into the act of 1836 of the further condition, that the discovery or invention was "not, at the time of his application for a patent, in public use or on sale, with his consent or allowance as the inventor or discoverer." The intent of this provision was to cause a public use or sale of the invention in any one instance, if consented to or allowed by the inventor, before his application for a patent, to be a bar to his obtaining a valid patent, and also to recognize such a bar where there had been a general abandonment or dedication to the public.1 Under this statute, therefore, an invention might be allowed to be in public use by the inventor in two modes. He might allow of its use in public by an individual or individuals, or he might allow the whole public to use it, by having abandoned or dedicated his invention to the public before his application. In either case his patent would be void. But by the act of 1839, § 7, this inconvenience was so far remedied as to confine the forfeiture of the right, in cases of individual use with the permission of the inventor, to such use prior to the two years preceding the application for the patent. This new provision was as follows: "That every person or corporation who has, 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 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." 2

§ 103. This enactment relieved the patentee from the effect of the former laws, and the construction that had been put upon

1 McClurg v. Kingsland, 1 Howard, 202; Ryan v. Goodwin, 3 Sumner, 514. The words, "any newly invented machine, manufacture, or composition of matter," in this statute, have the same meaning as "invention," or "thing patented." McClurg v. Kingsland, ut supra.

them by the courts, and put the person who, by the consent and allowance of the inventor, had had a prior use of the invention, on the same footing as if he had a special license from the inventor to use his invention; and at the same time the patent is valid after it is issued, against all persons except such licensee, who will continue to have the right to use the invention.1 Inventors may now, therefore, permit the use of their inventions, by individuals, for a period of two years, prior to the application for a patent, and still obtain a valid patent notwithstanding such use.. But if the use thus allowed extends over a period of more than two years prior to the application, or if it amounts to an abandonment of the invention to the public, whether for a longer or a shorter period, the patent will be invalid.

§ 104. But to entitle a person to claim the benefit of this statute as a licensee by operation of law, he must be a person who is a purchaser or who has used the patented invention before the patent was issued, by a license or grant or by the consent of the inventor, and not be a purchaser under a mere wrong-doer. What will amount to such a license, grant, or consent is well shown in a case where a person employed in the manufactory of another, while receiving wages, made experiments at the expense and in the manufactory of his employer, had his wages increased in consequence of the useful result of the experiment, made the article invented and permitted his employer to use it, no compensation for its use being paid or demanded, and then obtained a patent; it was held, that such an unmolested and notorious use of the invention prior to the application for a patent brought the case within the provisions of the statute.

§ 105. The remaining quality essential to a patentable invention is, that it shall be "useful." Care must be taken, however, to discriminate between what may be called the positive utility of an invention, which is made by the statute a mere description of the class of inventions which can be the subjects of valid patents, and that comparative or relative utility which is sometimes applied as one of the tests of novelty, or of substantial difference of structure or mode of operation. We have already seen in what manner this test of comparative utility may be applied to distinguish

1 McClurg v. Kingsland, ut supra.

one invention from another.1 But this is not the usefulness which the statute contemplates when it describes the subject for which a patent may be granted as a "new and useful invention." Nor must this utility be confounded with the inquiry whether some part of a thing claimed or described in a specification as essential to produce the effect intended is or is not useless to that end. This is an inquiry into the question of whether the patent is void for a false suggestion, or as calculated to mislead the public.

§ 106. But when it is said that an invention, to be the subject of a patent, must be "useful," the term must be construed with reference to the known policy of the law in granting patents for inventions. It cannot be supposed that inventions injurious to the welfare of society are within that policy. But what is not injurious or mischievous to society may be capable of some beneficial use; and when this is the case, that is to say, when the invention is not absolutely frivolous or insignificant, the law takes no notice of the degree of its utility, whether it be larger or smaller as compared with other things of the same class. "By useful invention, in the statute, is meant such a one as may be applied to some use beneficial to society in contradistinction to an invention which is injurious to the morals, the health, or the good order of society. It is not necessary to establish, that the invention is of such general utility as to supersede all other inventions now in practice to accomplish the same purpose. It is sufficient that it has no noxious or mischievous tendency, that it may be applied to practical uses, and that so far as it is applied it is salutary. If its practical utility be very limited, it will follow that it will be of little or no profit to the inventor; and if it be trifling, it will sink into utter neglect. The law, however, does not look to the degree of utility: it simply requires that it shall be capable of use, and that the use is such as sound morals and policy do not discountenance or prohibit." 2

2 Per Story, J., in Bedford v. Hunt, 1 Mason, 301, 303. See also Lowell v. Lewis, Ibid. 186; Kneass v. The Bank, 4 Wash. 9; Many v. Jagger, 1 Blatch. 372; McCormick v. Seymour, 2 Blatch. 240; Wilbur v. Beecher, 2 Blatch. 132; Foote v. Silsby, 2 Blatch. 260.