Judgment.

machines which he has invented, and in his improvements on machines previously discovered.

In all cases where the claim is for an improvement on a machine, it will be incumbent on him to show the extent of his improvement, so that a person understanding the subject may comprehend distinctly in what it consists.

Some doubts have been entertained respecting the jurisdiction of the courts of the United States, as both the plaintiff and defendant are citizens of the same State. The fifth section of the act to promote the progress of useful arts, which gives to every patentee a right to sue in a Circuit Court of the United States, in case his right be violated, is repealed by the third section of the act of 1800, ch. 179, (xxv,) which gives the action in the Circuit Court of the United States, where a patent is granted "pursuant" to that act or to the act for the promotion of useful arts. This patent, it has been said, is granted not in pursuance of either of those acts, but in pursuance of the act "for the relief of Oliver Evans." But this court is of opinion that the act for the relief of Oliver Evans is ingrafted on the general act for the promotion of useful arts, and that the patent is issued in pursuance of both. The jurisdiction of the court is, therefore, sustained.

As the charge delivered in the Circuit Court to the jury differs in some respects from this opinion, the judgment rendered in that court is reversed and annulled, and the cause remanded to the Circuit Court, with directions to award a venire facias de novo, and to proceed therein according to law.

JUDGMENT REVERSED.

JUDGMENT. This cause came on to be heard on the transcript of the record of the Circuit Court for the District of Pennsylvania, and was argued by counsel. On consideration whereof, this court is of opinion that there is error in the proceedings of the said Circuit Court, in this: that the said court rejected testimony which ought to have been admitted; and, also, in this: that, in the charge delivered to the jury, the opinion is expressed that the patent on which this suit was instituted conveyed to Oliver Evans only an exclusive right to his improvement in manufacturing flour and meal, produced by the general combination of all his machinery, and not to his improvement in the several machines applied to that purpose; and, also, that the said Oliver Evans was not entitled to recover, if the hopper-boy, in his declaration mentioned, had been in use previous to his alleged discovery. Therefore, it is considered by this court that the judgment of the Circuit Court be reversed and annulled, and that the

The British Statute of Monopolies.

cause be remanded to the said Circuit Court, with directions to award a venire facias de novo.

NOTE ON THE PATENT LAWS.

(Appendix. 3 Wheaton, 655.)

The Patent Acts of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject. It may be useful, therefore, to collect together the cases which have been adjudged in England, with a view to illustrate the corresponding provisions of our own laws; and then bring in review the adjudications of the courts of the United States.

By the statute of 21 Jac. I., ch. 3, commonly called the Statute of Monopolies, it is enacted, (§ 1,) "That all monopolies, and all commissions, grants, licenses, charters, and letters patent heretofore made or granted, or hereafter to be made or granted, to any person or persons, bodies politic or corporate whatsoever, of or for the sole buying, selling, making, working, or using of any thing within this realm, or the dominion of Wales, or of any other monopolies, or of power, liberty, or faculty to dispense with any others, or to give license or toleration to do, use, or exercise any thing against the tenor or purport of any law or statute, or to give or make any warrant for any such dispensation, license, or toleration, to be had or made, or to agree or compound with any others for any penalty or forfeiture, limited by any statute, or of any grant or promise of the benefit, profit, or commodity of any forfeiture, penalty, or sum of money that is or shall be due by any statute, before judgment thereupon had; and all proclamations, inhibitions, straints, warrants of assistance, and all other matters and things whatsoever, any way tending to the instituting, erecting, strengthening, furthering, or countenancing the same, or any of them, are altogether contrary to the laws of the realm, and so are and shall be utterly void and of none effect, and in nowise to be put in use or execution." The sixth section, however, provides, “That any declaration before mentioned shall not extend to any letters patent, and grants of privilege, for the term of fourteen years, or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such letters patent and grants, shall not use, so as also they be not contrary to the law, nor mischievous to the State, by raising prices of commodities at home, or hurt of trade, or generally inconvenient; the said fourteen years to be accounted from the date of the first letters patent, or grant of such privilege hereafter to be made, but that the same shall be of such force as they should be if this act had never been made, and none other."

It is under this last section that patents for new and useful inventions are now granted in England; and by a proviso, or condition, always inserted in every patent, the patentee is bound particularly to describe and ascertain the nature of his invention, and in what manner the same is to be constructed or made, by an instrument in writing, under his hand and seal, and to cause the same to be enrolled in the Court of Chancery within a specified time. Harmer v. Playne, 11 East, 101; Boulton v. Bull, 2 H. Bl., 463; Hornblower v. Boulton, 8 T. R., 95; 2: Bl. Com., 407, note by Christian (7). This instrument is usually termed the speci

The British Patent Laws.

fication of the invention, and all such instruments are preserved in an office for public inspection.

Upon the construction of the British Patent Act, taken in connection with the conditions inserted in the letters patent, a great variety of decisions have been made. 1. As the statute contains no restriction confining the grants to British subjects, it is every-day practice to grant patents to foreigners, and no such patent has ever been brought into judicial doubt. 2. A patent can be granted only for a thing new; but it may be granted to the first inventor, if the invention be new in England, though the thing was practiced beyond sea before; for the statute speaks of new manufactures within this realm; so that if it be new here, it is within the statute, and whether learned by travel or study is the same thing. Edgeberry v. Stevens, 2 Salk., 447; Hawk. P. C., b. 1, ch. 79, aud see Noy, 182, 183. 3. The language of the statute is new manufacture; but the terms are used in an enlarged sense, as equivalent to new device or contrivance, and apply not only to things made, but to the practice of making. Under things made, we may class, in the first place, new compositions of things, such as manufactures in the 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, it would 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. When the effect produced is no new 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. Per EYRE, Ch. J., in Boulton v. Bull, 2 H. Bl., 463, 492, and LAWRENCE, J., in Hornblower v. Boulton, 8 T. R., 95, 106. A patent, therefore, under certain circumstances, may be good for a method as well as for an engine or machine. Ibid., and 8 T. R., 95, 106; Rex v. Cutler, 1 Starkie's N. P. R., 354. 4. A patent cannot be for a mere principle, properly so called; that is, for an elementary truth. But the word principle is often used in a more lax sense, to signify constituent parts, peculiar structure, or process; and in specifications it is generally used in this latter sense; and in this view, it may well be the subject of a patent. Ibid. 5. It was formerly considered that a patent could not be for an improvement; (3 Inst., 184;) but that opinion has been long since exploded, and it is now held that a patent may well be for a new improvement. Harmer v. Playne, 14 Ves., 130; Ex parte Fox, 1 Ves. & Beames, 67; Boulton v. Bull, 2 H. Bl., 463, 488; 8 T. R., 95 ; Bull. N. P., 77. 6. A patent must be of such manufacture or process as no other did, at the time of making the letters patent, use; for though it were newly invented, yet if any · other did use it at the time of making the letters patent, or grant of the privilege, it is declared void by the act. 3 Inst., 184. And in a very recent case of a patent for a new mode of making verdigris, one of the objections was that the invention was in public sale by the patentee, before the grant of the patent; and GIBBS, Ch. J., on that occasion said: "With respect to this objection, the question is somewhat new. Some things are obvious as soon as they are made public; of others, the scientific world may possess itself by analysis; some inventions almost baffle discovery. But to entitle a man to a patent, the invention must be new to the world. The public sale of that which is afterwards made the subject of a

The British Patent Laws.

patent, though sold by the inventor only, makes the patent void. It is in evidence that a great quantity was sold in the course of four months, before the patent was obtained." And if the jury were satisfied of that fact. his lordship added "that he thought the patent void." Wood v. Zimmer, 1 Holt's N. P. Rep., 58. 7. The invention must not only be new, but useful; for if it be contrary to law, or mischievous, or hurtful to trade, or generally inconvenient, it is, by the terms of the statute, void. 8 Inst., 184. 8. A patent can legally be granted only to the first and true inventor; for such are the descriptive terms of the statute. 3 Inst., 184. But if the original inventor has confined the invention to his closet, and the public be not acquainted with it, a second inventor, who makes it public, is entitled to a patent. Boulton v. Bull, 2 H. Bl., 463, and Dolland's patent, cited 2 H. Bl., 470, 487. 9. The patent must not be more extensive than the invention; therefore, if the invention consist in an addition or improvement only, and the patent is for the whole machine or manufacture, it is void. Buller's N. P., 76; Boulton v. Bull, 2 H. Bl., 463, and cases there cited; The King v. Else, 11 East, 109, note; Harmer v. Playne, 11 East, 101; S. C., 14 Ves., 180. Therefore, where a patent was for the exclusive liberty of making lace composed of silk and cotton thread mixed, not of any particular mode of making it, and it was proved that silk and cotton thread were before mixed on the same frame for lace, in some mode or other, though not like the plaintiff's, the patent was held void, as being more extensive than the invention. The King v. Else, 11 East, 109, note. A person may obtain a patent for a machine, consisting of an entirely new combination of parts, although the parts may have been separately used in former machines; and the patent may correctly set out the whole as the invention of the patentee. But if a combination of a certain number of those parts have previously existed, up to a certain point, in former machines, the patentee merely adding other combinations, the patent should comprehend such improvements only. Bovill v. Moore, 2 Marshall's R., 211. 10. If a person has invented an improvement upon an existing patented machine, he is entitled to a patent for his improvement; but he cannot use the original machine until the patent for it has expired. Ex parte Fox, 1 Ves. & Beames R., 67. 11. Although the specification is not annexed to a patent in England, and the patent contains a concise description only of the invention, yet as there is a proviso in the patent requiring the enrollment of a specification in chancery, within a specified time, and in default making the patent void, the patent is always construed in connection with the specification, and the latter is deemed a part of the patent, at least for the purpose of ascertaining the nature and extent of the invention claimed by the patentee. Boulton v. Bull, 2 H. Bl., 463; Hornblower v. Boulton, 8 T. R., 95. 12. Care should be taken that the specification comports with the patent; for otherwise it will not sustain the grant. For where a patent was obtained for an improved mode of lighting cities, it was held by LE BLANC, J., that it was not supported by a specification, describing an improved lamp. The patent ought to have been for an improved street lamp. Lord Cochrane v. Smethurst, 1 Starkie's N. P. R., 205. No technical words, however, are necessary to explain the subject of a patent; but the court will construe the terms of the patent, and of the specification, in a liberal manner, and give them such a meaning as best comports with the apparent intention of the patentee. Hornblower v. Boulton, 8 T. R., 95; Boulton v. Bull, 2 H. Bl., 463. Therefore, where the patent was "for a method of lessening the consumption of steam and fuel in fire-engines," one objection was, that the patent was for a philosophical principle only, neither organized nor capable of being organized, whereas it ought to have been for a formed machine; a second objection was, that if it was a patent for a formed machine, it was for

The British Patent Laws.

the whole machine, when the invention was only an improvement or addition to an existing machine. But the Court of King's Bench, on examining the specification, were of opinion that both of the objections were unfounded, although the terms of the specification were so doubtful and obscure as to have produced a division of opinion in the Court of Common Pleas. Hornblower v. Boulton, 8 T. R., 95; Boulton v. Bull, 2 H. Bl., 463. Both of these cases were very elaborately discussed, and contain more learning on the subject of patents than can be found in any other adjudication, and are, therefore, deserving of the most accurate attention of every lawyer. In both of them, all the judges agreed that a mere mistake in terms, or in the correct sense of words, would not vitiate a patent, if the court could give a reasonable construction to the whole specification. Mr. Justice HEATH said: "When a mode of doing a thing is referred to something permanent, it is properly termed an engine; when to something fugitive, a method.” ** If method and machinery had been used by the patentee as couvertible terms, and the same consequences would result from both, it might be too strong to say that the inventor should lose the benefit of his patent by the misapplication of this term. "Method is a principle reduced to practice; it is, in the present instance, the general application of a principle to an old machine." "A patent for an improvement of a machine, and a patent for an improved machine, are in substance the same. The specification would serve for both patents; the new organization of parts is the same in both." Mr. Justice ROOKE said: “A newly-invented method conveys to my understanding the idea of a new mode of construction. I think those words are tantamount to fire-engines of a newly-invented construction; at least, I think they will bear this meaning, if they do not necessarily exclude every other. The specification shows that this was the meaning of the words as used by the patentee, for he has specified a new and particular mode of constructing fire-engines. It seems, therefore, but reasonable, that if he sets forth his improvement intelligibly, his specification should be supported, though he professes only to set forth the principle." Mr. Justice BULLER said: “The method and mode of doing a thing are the same; and I think it is impossible to support a patent for a method only, without having carried it into effect and produced some new substance." "When the thing is done or produced, then it becomes the manufacture which is the proper subject of a patent." The remarks of Lord Chief Justice AYRE have been already stated. He, however, considered the patent not to be for a fire-engine, but in effect for a manner of working a fire-engine so as to lessen the consumption of steam; and he added: "The specification calls a method of lessening the consumption of steam in fire-engines a principle, which it is not; the act [of Parliament] calls it an engine, which, perhaps, also, it is not; but both the specification and statute are referable to the same thing, and when they are taken with their correlative are perfectly intelligible." "A narrower ground was taken in the argument, which was to expound the word engine in the body of this act, [meaning the special act of Parliament for this patent,] in opposition to the title of it, to mean a method; and I am ready to say I would resort to that ground, if necessary, in order to support the patent, ut res magis valeat quam pereat.” In the King's Bench, Mr. Justice LAWRENCE observed: "Engine and method mean the same thing, and may be the subject of a patent. Method, properly speaking, is only placing several things, and performing several operations, in the most convenient order; but it may signify contrivance, or device; so may an engine; and, therefore, I think it may answer the word method. So, principle may mean an elementary truth; but it may also mean constituent parts." 13. The patent being granted upon condition that the invention is new (at least in England) and useful, and also that the patentee shall deliver and