Argument for the plaintiffs in error.

The only case applicable to the one now before the court is Morris v. Huntington, 1 Paine, 348. That was decided in 1824. Its doctrine was materially changed by Pennock v. Dialogue. After all, that case only decides that a patent, while another is in existence, is void. The judge then goes on to say it may be surrendered.

It seems admitted that the new patent ought not to reach back so as to affect those who had already used the invention. But how can this distinction be made? Cited to this point, Brooke v. Clarke, 1 B. & A., 396, note.

The great and conclusive objection is this: the new patent is granted on the new application, and the invention had been public four years. This is fully settled in the case of Pennock v. Dialogue.

The second point is presented on the defendants' fourth plea. The court instructed the jury that the patent would not be void, unless the defective or imperfect specification arose from design or the purpose of deceiving the public.

This point presents two questions:

1. Whether the patent would be void or not for the reasons stated, the direction of the court was not pertinent to the issue. The parties were at issue on a question of fact; witnesses were examined, and counsel had summed up; but the court told the jury the issue was immaterial, and under this question the jury found a verdict for plaintiff.

It can require no argument to prove that this is an illegal direction. 2 Day's Reports, 519; 1 Starkie, 388; 9 Cranch, 339, 355.

2. If the question had legally arisen, the law was wrongly stated. It is insisted that the plea was a good bar. If the specification was defective, as set forth in the plea, the plaintiff could not recover, whether that defect arose from accident or design. The very words of the third section of the statute require this. There are certain conditions precedent to be complied with before an inventor can obtain a patent. This is one of them. The language of this section is emphatic and absolute; it could not be stronger. Courts may just as well dispense with the oath.

Suppose he omit to deliver any written specification whatever, can he afterwards say that omission was owing to inadvertence? Yet a defective specification, or bad specification, is no specification. The same law that requires a written specification, requires a full and accurate one. A defective one is no better than none at all. Suppose he omit to sign the specification, can that be cured?

A party is to describe his invention so as to answer two purposes: 1. To distinguish it from all other things before known. 2. To

Argument for the plaintiffs in error.

enable any person skilled in the art to make and use it. If he fail in either of these, he fails in a condition precedent.

This is all very clear, and there would be no doubt about it but for the sixth section. That section has been supposed to raise the doubt. This section, as has been observed by most judges, is inartfully drawn. It speaks of the right of the defendant to give this act in evidence in an action founded on the act itself. It is not grammatical. It seems borrowed from the law of 1791.

The first important remark is, that the preceding sections have described the whole extent of the patentee's right. This section has for its object the giving of immunities and protection to those who may be sued by patentees. Therefore, its object was not to enlarge the right of patentees. Second, most of its provisions are only affirmative, and the right existed before. The action being case, all the material defenses are competent. Third, it gives some matters as a defense not mentioned in the first act, such as license or abandonment to the public. Fourth, it does not repeat the same objections to specification.

It allows the defendant to prove three things as fatal defects in his specification: 1. That it does not contain the whole truth relative to the discovery, with intent to deceive the public. This provision may stand with the first section. 2. That it contains more than is necessary to produce the described effect, with intent to deceive the public. This may stand with the third section. 3. That the thing had been used or described in a public work. This may also stand. Now, the fraudulent intent is applied only to the first two. In these cases Congress may say that fraud shall be proved, because, even with these defects, it may be a patent, and a very useful patent.

It may be a valid patent, though the patentee take it but for part of his invention; yet if he fraudulently deceive the public, by keeping back part, it shall be void. So it may be a good and valuable patent, though it contain more than is necessary to produce the described effect. But if it be not so described as to be distinguished from other things before known, or so that skillful persons can use it, it is no patent, or of no use at all. These last objections go to its very existence, and are therefore made prerequisites. They are absolute conditions precedent.

But the main consideration yet is, that this sixth section has an object of its own. It looks not so much to the defense in its suits as to the judicial vacation of the patent. It does not look mainly to the defense of the suits, because it leaves out several known grounds of lefense: 1. License. 2. Abandonment to the public. 3. That the

Argument for the plaintiffs in error.

patent is broader than the invention. 4. That the machine is not well described. All these are defenses, and yet not mentioned here. The object of the sixth section is, like that of the tenth, to repeal for fraud proved. All this may stand without contradicting the third section, or doing violence to its language.

Indeed, Pennock v. Dialogue, 2 Peters, 1, has apparently decided this. The sixth section speaks of inventions known before the patentee's discovery. This does not contradict the third section-"known before application." The court has settled this, and it decides this case.

The plaintiff relied below on the following cases: Park v. Little and Wood, 3 Washington, 196, in April, 1813; Gray et al. v. James, 1 Peters, 401, 1817.

But it does not appear in this case whether the defendant was or was not proceeding with a view to vacate the patent. Most probably he was; for at that time such was the practice. This is rendered still more probable by a decision looking the other way, in 1820, by the same judge. Kneass v. Schuylkill Bank, 4 Wash. C. C. Rep., 13. This case is clearly for the plaintiffs in error.

The case of Whittemore v. Cutter, 1 Gallis., 419, decided in May, 1813, was probably a case to vacate; at any rate, the judges doubted, and would have divided if the case had turned on this point. The case of Lowell v. Lewis, 1 Mason, 193, in 1817, was probably a similar case; page 189 cited particularly.

How can the court dispense with the express words of the third section? Here they are put in the form of a special plea. Can they be disregarded? Suppose there be but one witness, though this is merely a formal requisite, can the court dispense with it?

Besides, why should the statute require a specification, unless it was to be full and accurate? For what purpose should an insufficient specification be enjoined? The court may as well say there shall be none. The statute says as imperatively what the specification shall contain, as that there shall be a specification at all. If an imperfect or defective specification does not render a patent void, what harm does it do to it? Let this question be answered.

Now, the patentee says his specification, in 1821, was defective not through fraud, but defective. But why was not that patent good, or this? If defective through fraud, he could not get another. It must be presumed to be defective through inadvertence. If so, what need of a new one?

Compare the two rules of law decided in this case together:

1. The judge held, that a party might surrender his patent and take a new one, when the specification in the first was defective through

Argument for the defendants in error.

mistake, and without fraud. 2. The court ruled, that though a specification be altogether defective, yet the patent is not void, unless such defect arise from design.

How can these things stand together? If the last proposition be true, all inquiry about the first is idle-unless the question be, whether a man having one good patent may surrender it and take out another good one for the same thing.

It is now matter of settled law, that if a patent be broader than the invention, it is void; and it is never inquired whether this arise from design or accident. In nine times out of ten, it arises from inadvertence. Now, on what principle is this? Not because the plaintiff's invention has not been invaded. It may have been exactly copied. It is because he has not rightly described what he claimed, and therefore his patent protects him in nothing. So, if a patent be for an improvement of an old machine, it must state the improvement accurately, and distinguish between what is old and what new. Finally, the English statute has always been construed the other way. Our sixth section is a substitute for the English scire facias.

Cited Davis's Patent Cases, 413; Godson, 124; Holroyd, 100, note. Cited, also, Dodson's Patents, 56; 1 Term Rep., 605; 1 Wash. C. C. Rep., 71; 3 Wash. C. C. Rep., 198; 1 Mason, 189, 190; 4 Ibid., 9, 10; 3 Wheat., 518; 2 Hen. Black., 478; 1 Ves. and Beames, 67; 8 Term Rep., 101; 2 Car. and Paine, 558, 565; 11 East, 107; 14 Ves., 131.

Mr. Ogden, for the defendants in error.

The first question is, whether the Secretary of State of the United States has a power by law to accept of the surrender of and to cancel a patent which had once been issued, and to grant a second patent for the same invention, with an amended specification, for the unexpired portion of the term of fourteen years which had been granted by the first patent?

Upon this question, there is not known a single case where the point has been expressly decided in the United States. The Patent Law is silent upon the subject; and the question must, then, be decided upon general principles.

A patent for a useful machine is a grant of the exclusive privilege of making and using the machine for a limited time. Now, it would seem that a grantee may surrender his grant. A man who has a privilege may surrender that privilege. If a man cancels his patent upon record, it amounts to a surrender of it.

The difficulty in question, if there be any, must be in the other branch of it. Has the Secretary of State the power, after the sur

Argument for the defendants in error.

render of one patent, to grant a new one for the same invention, with an amended specification for the unexpired portion of the term of fourteen years which had been granted by the first patent? Why should he not? When the first patent is cancelled, the invention is unprotected. If a useful one, why should not the inventor have the benefit of it?

He certainly never intended to abandon the benefit of it to the public. His first patent is evidence of that.

A specification requires to be drawn with great accuracy. Mechanics, by whom machines are usually invented, it cannot be supposed are capable of drawing a proper specification. Can it be supposed that the law ever intended to punish their ignorance, in drawing a very special legal paper, by a forfeiture of all the advantages of their

invention?

It is apprehended that the issuing a new patent in England, where there has been no sufficient specification to comply with the condition of the first patent, is pretty much a matter of course.

In the case Ex parte Beck, 1 Bro. Ch. Rep., 575, the Lord Chancellor says "that, perhaps, upon the petitioner's applying for a new patent, the officers might, under these circumstances, be induced to remit their fees, but that he could give no relief upon the present petition." Here the Lord Chancellor speaks of the issuing of a new patent as a matter of course.

In our Patent Law, the inventor must file his specification before he can procure his patent. In England, the patent contains upon its face a condition that if the patentee shall not make and file a specification within a limited time after the date of the patent, then the pat-. ent, and all the liberties and advantages under it, shall cease and be void,

One of the cases cited by the plaintiff in error shows that if the specification is not filed within the time mentioned in the patent, although the patent is void, a new one may be taken out by the inventor for the same invention.

This case, in principle, seems to support the proposition for which the defendant in error contends: that if a first patent is void for want of a specification, or for want of a sufficient specification, a new one may be issued for the same invention to the same inventor. In the case of Morris v. Huntington, 1 Paine's Rep. of Cases in the Second Circuit, 355, Mr. Justice Thompson says:

"I see no insuperable objection to entering a vacatur of the patent of record in the Department of State, if taken out inadvertently or by mistake. All the proceedings in that department on the subject