Syllabus.

and unnecessary burden upon the record. This court has had occasion, in many cases, to express its regret on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the court, delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury.

2. It is no ground of reversal, that the court below omitted to give directions to the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. It is sufficient for us that the court has given no erroneous directions.

3. If either party considers any point presented by the evidence omitted in the charge of the court, it is competent for such party to require an opinion from the court upon that point. The court cannot be presumed to do more, in ordinary cases, than to express its opinion upon questions which the parties themselves have raised on the trial.

4. It has not been, and indeed it cannot be, denied that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus gone, cannot afterwards be resumed at his pleasure; for when gifts are once made to the public in this way they become absolute. The question which generally arises on trials is a question of fact, rather than of lawwhether the acts or acquiescence of the party furnish in the given case satisfactory proof of an abandonment or dedication of the invention to the public. 5. It is obvious that many of the provisions of our Patent Act are derived from the principles and practice which have prevailed in the construction of the law of England in relation to patents.

6. Where English statutes-such, for instance, as the statute of frauds and the statute of limitations-have been adopted into our own legislation, the known and settled construction of those statutes by courts of law has been considered as silently incorporated into the acts, or has been received with all the weight of authority. This is not the case with the English statute of monopolies, which contains an exception, on which the grants of patents for inventions have issued in that country. The language of that clause in the statute is not identical with the Patent Law of the United States; but the construction of it adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known, and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it.

7. The true meaning of the words of the Patent Law, "not known or used before the application," is, not known or used by the public before the application. 8. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should, for a long period of years, retain the monopoly, and make and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure, and then, and then only, when the danger of competition should force him to procure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.

9. If an invention is used by the public, with the consent of the inventor, at the time of his application for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is

Statement of the case.

not a use within the meaning of the statute, how can the court extract the case from its operation, and support a patent, when the suggestions of the patentee were not true, and the conditions on which alone the grant was authorized do not exist?

10. The true construction of the Patent Law is, that the first inventor cannot acquire a good title to a patent if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. This voluntary act, or acquiescence in the public sale or use, is an abandonment of his right; or, rather, creates a disability to comply with the terms and conditions of the law, on which alone the Secretary of State is authorized to grant him a patent.

THIS case was brought before the court on a writ of error to the Circuit Court for the Eastern District of Pennsylvania.

In that court, the plaintiffs in error had instituted their suit against the defendants, for an infringement of a patent-right, for "an improvement in the art of making tubes or hose for conveying air, water, and other fluids." The invention claimed by the patentees was in the mode of making the hose, so that the parts so joined together would be tight, and as capable of resisting the pressure as any other part of the machine.

The bill of exceptions which came up with the record contained the whole evidence given in the trial of the cause in the Circuit Court. The invention for which the patent-right was claimed was completed in 1811, and the letters patent were obtained in 1818. In this interval, upwards of thirteen thousand feet of hose, constructed according to the invention of the patentees, had been made and sold in the city of Philadelphia. One Samuel Jenkins, by the permission of, and under an agreement between the plaintiff's as to the price, had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the city of Philadelphia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence that the agreement between Jenkins and the plaintiff's in error was known to or concealed from the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent for the purpose of improving their invention, or that from 1811 to 1818 any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed before the jury that all the hose which had been made and sold to the public prior to their patent had been constructed and vended by Jenkins under their permission.

Upon the whole evidence in the case, the Circuit Court charged the jury:

Argument for the plaintiff.

"We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice, he abandons the inchoate right to the exclusive use of the invention to which a patent would have entitled him had it been applied for before such use. And we think it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured; and even if it be made public, but accompanied by an assertion of the inventor's claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the inventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public, and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention which is involved in the principle which we have laid down, but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict."

To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant.

Mr. Webster, for plaintiff in error, contended:

1. That the invention being of such a nature that the use of it, for the purpose of trying its utility and bringing it to perfection, must necessarily be open and public, the implication of a waiver or abandonment of the right, furnished by such public use, is rebutted by the circumstance that the article was made and sold only by one individual, and that individual was authorized and permitted so to do by the inventors.

2. That the use of an invention, however public, if it be by the permission and under the continual exclusive claim of the inventor, does not take away his right, except after an unreasonable lapse of time, or gross negligence in applying for a patent.

3. That the jury should have been instructed, that if they found

Argument for the plaintiff.

the riveted hose which was in use by the hose companies had been all made and sold by Jenkins, and by no one else, prior to the grant of the patent, and that he was permitted by the inventors under their agreement so to make and sell the same, that such use of the invention, not being adverse to their claim, did not take away their exclusive right, nor imply an abandonment of it to the public.

4. That if they found the hose had not been made or sold, prior to the grant of the patent, by any person but Jenkins, then the giving of permission to him, being in itself an assertion of claim, was not a dedication to the public; and that the public, by purchasing and using the hose thus made by the permission of the inventors, acquired no title to the invention; but, on the contrary, if the price paid included a premium for the invention, the public by so purchasing admitted the right of the inventors.

5. That, at any rate, there being no use by the public of this invention, it should have been left to the jury to say whether, under all the circumstances, considering the nature of the invention and the time necessary to perfect it, the plaintiffs have been guilty of negligence in not sooner applying for a patent.

Mr. Webster stated that the question to be decided by the court laid within a narrow compass. The defense set up was that the plaintiffs had suffered their invention to be used before their application for a patent, and had thus lost all right to the exclusive use of it.

The court, in this case, would be called upon to reverse the English decision relative to abandonments; for it was admitted that those cases had gone to the whole extent of the principles applied to this case in the Circuit Court. Those cases have decided that any public use of an invention, even for experiment, renders it no longer a new machine. In the courts of the United States a more just view had been taken of the rights of inventors. The laws of the United States were intended to protect those rights, and to confer benefits; while the provisions in the statute of England, under which patents are issued, are exceptions to the law prohibiting monopolies. Hence, the construction of the British statute had been exceedingly strait and narrow, and different from the more liberal interpretation of our laws.

By the decisions of our courts, there must be a voluntary abandonment or negligence, or unreasonable delay in obtaining letters patent, to destroy the right of the patentee. Goodyear v. Mathews, Paine's Rep., 300; Morris v. Huntington, Ibid., 348.

The exception to the charge of the court is, that the jury should have been instructed to decide, upon the evidence, whether the plaintiff meant to abandon his invention by the permission to Jenkins to

Argument for the defendant.

use it. Jenkins must be considered as the private agent of the inventors, and their agreement with him, under which he made the hose, is to be considered rather as an assertion of their exclusive right to the invention than a surrender of it. By omitting to leave to the jury this question of an intention to abandon, the case was erroneously withdrawn from them. The rights of the parties also entitled them to have the causes of their delay in patenting their invention inquired of by the jury. As the case is presented on the bill of exceptions, the court in their charge undertook to state the whole law of the subject-matter to the jury, and the omission to instruct them on any one point is error.

If, in this charge of the court, anything is omitted which was matter of law for the jury, it is misdirection.

In a case in Massachusetts, said to be reported in 4 Mason's Rep., it was left to the jury to decide whether seventeen years' delay could be accounted for.

Under the provisions of the laws of the United States, the right is created by the invention, and not by the patent. The court, therefore, may have misled the jury, in stating that the plaintiffs allowed the invention to be used. The thing invented was only permitted to be used.

The suggestion that, by adopting the language of the English statute, the cases decided in England upon that statute are adopted, may be answered by a reference to those cases. They have all arisen within a few years since the enactment of our law; and, except the dictum of Lord COKE in 2 Institute, the authorities are all of modern date.

If this court shall be of opinion that, as no instructions were particularly asked upon the questions raised here, the court below were not bound to notice them in the charge, and that the court did not undertake to decide the whole law, the plaintiff in error can make out no case here. But if this court shall consider the questions now submitted doubtful, as the rights of the plaintiffs may not have been fully investigated, by sending the case back to the Circuit Court a more full investigation of all the points involved in it may be made.

Mr. Sargeant, for the defendant, insisted:

1. That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if, at a time when no right is infringed, the public fairly acquire possession of it, the inventor cannot, by subsequently obtaining a patent, take it away.

2. That the inventor, by abstaining from getting a patent, encour