The British Patent Laws.

enrol in chancery a specification of his invention, it is necessary for the patentee to establish, by proof, when his invention is called in question in a suit, that he has complied with these conditions. If, therefore, the novelty or effect of the invention be disputed, the patentee must show in what his invention consists, and that he produced the effect proposed by the patent in the manner specified. Slight evidence of this, on his part, is sufficient; and it is then incumbent on the defendant to falsify the specification. Turner v. Winter, 1 T. R., 602. 14. In respect to specifications, (objections to which form the most common, and, indeed, usually the most fatal, defense to suits for infringements of patents,) several rules have been laid down. In the first place, a man, to entitle himself to the benefit of a patent of monopoly, must disclose his secret, and specify his invention in such a way that others of the same trade who are artists may be taught to do the thing for which the patent is granted, by following the directions of the specification, without any new invention or addition of their own. Rex v. Arkwright, Bull. N. P., 77. In the second place, he must so describe it that the public may, after the expiration of the term, have the use of the invention in as cheap and beneficial a way as the patentee himself uses it; and, therefore, if the specification describe many parts of an instrument, or machine, and the patentee uses • only a few of them, or does not state how they are to be put together or used, the patent is void. Rex v. Arkwright, Bull. N. P., 77; Harmer v. Playne, 11 East, 101. So, if the patentee could only make the article with two or three of the ingredients specified, and he has inserted others which will not answer the purpose, that will avoid the patent. So, if he makes the article with cheaper materials than those which he has enumerated, although the latter will answer the purpose, the patent is void. Turner v. Winter, 1 T. R., 602. In the third place, if the specification be, in any part of it, materially false or defective, or obscure and ambiguous, or give directions which tend to mislead the public, the patent is void. Rex v. Arkwright, Bull. N. P., 77; Turner v. Winter, 1 T. R., 602. Therefore, where, in a patent for trusses for ruptures, the patentee omitted what was very material for tempering the steel, which was rubbing it with tallow, Lord MANSFIELD held the patent, for want of it, void. Liardet v. Johnson, Bull. N. P., 76; S. C., cited 1 T. R., 602, 608, per BULLER, J. So, where a patent was for a new mode of making verdigris, and the specification omitted an ingredient (aquafortis, which, though not necessary to the composition for which the patent was claimed, was a more expeditious and beneficial mode of producing the same effects, and was as such used by the patentee, Lord Chief Justice GIBBS held the patent void. Wood v. Zimmer, 1 Holt's N. P. R., 58. So, if the specification direct an ingredient to be used which will not answer the purpose, or is never used by the patentee, the patent is void. Turner v. Winter, 1 T. R., 602. So, if the patentee says, in his specification, he can produce three things by one process, and he fails in any one, the patent is void. Turner v. Winter, 1 T. R., 602. So, if the specification direct the same thing to be produced several ways, or by several different ingredients, and any of them fail, the patent is void. Turner v. Winter, 1 T. R., 602. In the fourth place, if the invention be of an improvement only, it is indispensable that the patent should not be more broad than the invention, and the specification should be drawn up in terms which do not include anything but the improvement. Boulton v. Bull, 2 H. Bl., 463; Bull. N. P., 76; Bovill v. Moore, 2 Marsh. R., 211. And in the specification for such improvement, it is essential to point out precisely what is new and what is old; and it is not sufficient to give a general description of the construction of the instrument, without such distinction, although a plate be annexed containing detached and separate representations of the parts in which the improvement con

Patent Laws of the United States.

sists. Therefore, where a patent was "for certain improvements in the making of umbrellas and parasols," and the specification contained a minute description of the construction of them, partly including the usual mode of stitching the silk, and also certain improvements in the insertion of the stretches, &c., and throughout the whole specification no distinction was made between what was new and what was old, Lord ELLENBOROUGH said: "The patentee ought, in his specification, to inform the person who consults it what is new and what is old. He should say, my improvement consists in this, describing it by words if he can, or, if not, by reference to figures. But here the improvement is neither described in words nor figures, and it would not be in the wit of man, unless he were previously acquainted with the construction of the instrument, to say what was new and what was old. A person ought to be warned by the specification against the use of a particular invention." M'Farlane v. Price, 1 Starkie's N. P. R., 199. And it may be added, also, that the public have a right to purchase the improvement by itself, and not to be incumbered with other things, where the improvement is of the old machine. But where the patentee obtained a patent for a new machine, and afterwards another patent for improvements in the said machine, in which the grant of the former was recited, it was held, that a specification containing a full description of the whole machine so improved, but not distinguishing the new improved parts, or referring to the former specification, otherwise than as the second recited the first, was sufficient. Lord ELLENBOROUGH on that occasion said: "It may not be necessary, indeed, in stating a specification of a patent for an improvement, to state precisely all the former known parts of the machine, and then to apply to those the improvement; but on many occasions it may be sufficient to refer generally to them. As, in the instance of a common watch, it may be sufficient for the patentee to say, take a common watch, and add or alter such and such parts, describing them." Harmer v. Playne, 11 East, 101; S. C., 14 Ves., 130. The case, also, of Bovill v. Moore, already cited, (2 Marsh. R., 211,) affords very important instruction on this point. In the fifth place, if a patentee in his specification sum up the principle in which his invention consists, if this principle be not new, the patent cannot be supported, although it appear that the application of the principle, as described in the specification, be new; for the patentee, by such summing up, confines himself to the benefit only of the principle so stated. Rex v. Cutler, 1 Starkie's N. P. R., 354. 15. If a patent is void, the patentee cannot enforce performance of a covenant for the observance of the exclusive right, entered into by the covenantor in contemplation of the patent being good. Hayne v. Maltby, 3 T. R., 438. 16. The right of a patentee is assignable at law; and upon such an assignment the assignee has the exclusive right to maintain an action for any infringement of the patent. See Boulton v. Bull, 2 II. Bl., 463. 17. Where the patentee has assigned his patent, in an action by the assignee against the patentec, for an infringement of the patent, the latter will not be permitted to aver against his deed that the invention is not new. Oldham v. Langmead, cited 3 T. R., 439. 18. Where the patent is void, from any of the causes before stated, the party sued for an infringement may, under the general issue, avail himself of any such matter in his defense. 19. Or the patent itself may be repealed by a scire facias by the King, upon the ground of fraud or false suggestion. The mode of proceeding on scire facias may be seen in 2 Saunders's Rep., 72, Williams's note, (4,) § 4.

These are the principal doctrines established in the English courts, upon the subject of patents for new inventions. In respect to the adjudications under the Patent Laws of the United States, it is matter of regret that so few of them have been published; but the following are the leading provisions of the act, and the

Patent Laws of the United States.

principles which have been recognized as applicable to it. It may be convenient to follow the order of the Patent Act itself, and to arrange the decisions under the corresponding heads to which they properly belong.

The first Patent Act of the United States was passed in the year 1790, (act of the 10th of April, 1790, ch. 34,) and was repealed by another act passed in the year 1793; (act of the 21st of February, 1793, ch. 11;) and this last act, as amended by the act of 1800, (act of the 17th of April, 1800, ch. 25,) constitutes the present general Patent Law of the United States. 1. By the first section of the act of 1793, any citizen who has invented any new and useful art, machine, manufacture. or composition of matter, or any new and useful improvements therein, not known or used before the application, may, on application and petition to the Secretary of State, obtain a patent for the exclusive right and liberty of making, constructing, using, and vending to others to be used the said invention or discovery, upon complying with the regulations of the act; and the patent is required to recite the allegations and suggestions of the petition, and give a short description of the invention or discovery. The letters patent, previous to their being issued, are to be examined by the Attorney-General, and are by him to be certified to be conformable to law, and are then to be recorded in the office of the Secretary of State. The act of 1800, ch. 25, secs. 1, 2, extends this provision to aliens who have resided two years in the United States, and also to the legal representatives and devisees of a person entitled to a patent, who dies before it is obtained. The original inventor of a machine, who has reduced his invention first into practice, is entitled to a priority of the patent-right; and a subsequent inventor, although an original inventor, cannot sustain his claim, although he has obtained the first patent; for qui prior est in tempore, potior est in jure. Woodcock v. Parker, 1 Gallis. R., 438; Odiorne v. Winkley, 2 Gallis. R., 51. And, therefore, every subsequent patentee, although an original inventor, may be defeated of his patentright, upon proof of such prior invention put into actual use; (Bedford v. Hunt, 1 Mason's R.;) for then the invention cannot be considered as new. If an inventor make a gift of his invention to the public, and suffer it to go into general use, he cannot afterwards resume the invention and claim an exclusive right under a patent. Whittemore v. Cutter, 1 Gallis. R., 478. By useful invention, in the Patent Act, is meant an invention which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant. Bedford v. Hunt, 1 Mason's R.; Lowell v. Lewis, 1 Mason's R. It is not necessary to establish that it is in all cases superior to the modes now in use for the same purpose. Ibid. 2. By the second section, any person who shall have invented an improvement shall not be at liberty to use the original discovery, nor shall the original inventor be at liberty to use the improvement. And the simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery. See Odiorne v. Winkley, 2 Gallis. R., 51. If the inventor of an improvement obtain a patent for the whole machine, the patent, being more extensive than the invention, is void. Woodcock v. Parker, 1 Gallis, R., 439; Whittemore v. Cutter, 1 Gallis. R., 478; Odiorne v. Winkley, 2 Gallis. R., 51. 3. By the third section, every inventor, before he can obtain a patent, is required to swear that he is the true inventor or discoverer of the art, machine, or improvement for which he solicits a patent, and to deliver a written description of his invention, and of the manner of using or process of compounding it, in such full, clear, and exact terms as to distinguish the same from all other things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most clearly connected, to make, compound, and use the same.

And

Patent Laws of the United States.

in the case of any machine, he shall fully explain the principle, and the several modles in which he has contemplated the application of that principle, or character by which it may be distinguished from other inventions; and he is to accompany the whole with drawings and written references, where the nature of the case admits of drawings; or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is a composition of matter; which description, signed by himself and attested by two witnesses, is to be filed in the office of State; and the inventor is, moreover, to deliver a model of his machine, if the Secretary shall deem it necessary. The patentee must describe in his specification, with reasonable certainty, in what his invention consists; otherwise it will be void for ambiguity. If it be for an improvement in an existing machine, he must, in his specification, distinguish the new from the old, and confine his patent to such parts only as are new; for if both are mixed up together, and a patent is taken for the whole, it is void. Lowell v. Lewis, 1 Mason's R. The taking of the oath is directory to the party; but if, by mistake, the oath is not taken before the issuing of the patent, the patent is not thereby rendered void. Whittemore v. Cutter, 1 Gallis. R., 429. 4. By the fourth section, patentees may assign their rights, and, upon the assignment being recorded in the office of State, the assignee shall stand in the place of the original inventor, both as to right and responsibility, and so the assignees of assignees in any degree. Where the patentee has assigned an undivided moiety of his patent-right, the action for an infringement of the right should be in the joint names of the patentee and the assignee. Whittemore v. Cutter, 1 Gallis. R., 429. But an assignee of the patent-right, by an assignment excepting certain places, is not an assignee entitled to sue within the act. Tyler v. Tuel, 6 Cranch, 324. 5. The third section of the act of 1800 (which is a substitute for the fifth section of the act of 1793) declares that any person who, without the written consent of the patentee, &c., shall “make, devise, use, OR sell" (the words of the fifth section of the act of 1793 were "make, devise, AND use or sell ") the thing patented, shall forfeit three times the actual damages sustained by the patentee, &c., to be recovered by an action on the case in the Circuit Court of the United States having jurisdiction thereof. Upon this section, it has been held that the making of a patented machine, fit for use, and with a design to use it for profit, in violation of the patent-right, is, of itself, a breach of this section, for which an action lies; but where the making only, without a user, is proved, nominal damages only are to be given for the plaintiff. Whittemore v. Cutter, 1 Gallis, R., 429, 478. If a user is proved, the measure of damages is the value of the use during the time of the user. Ibid. But the act gives the plaintiff a right to his actual damages only, and not to a vindictive recompense, as in other cases of tort. Ibid. And neither the price of nor the expense of making a patented machine is a proper measure of damages in such case. Ibid. The sale of the materials of a patented machine by a sheriff, upon an execution against the owners, is not a sale which subjects the sheriff to an action under the third section of the act of 1800. Sawin v. Guild, 1 Gallis. R., 485. In an action on this section, the jury are to find the single damages, and the court are to treble them. Whittemore v. Cutter, 1 Gallis. R., 479. 6. The sixth section authorizes the defendant to plead the general issue, and give this act and any special matter in evidence, of which notice in writing may have been given to the plaintiff thirty days before trial, tending to prove (1) that the specification does not contain the whole truth relative to the discovery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear to have been for the purpose of deceiving the public; (2) or that the patented thing was not origin

Patent Laws of the United States.

ally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee; (3) or that he had surreptitiously obtained a patent for the discovery of another person,—in either of which cases, judgment shall be rendered for the defendant, with costs, and the patent shall be declared void. Besides the points decided in the principal case in the text, (Evans v. Eaton,) the following are deserving of notice. It is clear that this section does not include all the matters of defense which the defendant may be legally entitled to make; as, for instance, it does not include the case of the non-existence of the fact of infringement in any shape, the case of an assignment from the plaintiff, or a written license or purchase from the plaintiff, or that the patentee is an alien not entitled to a patent, which are clearly bars to the action upon the very terms of the act, as well as the general principles of law. Whittemore v. Cutter, 1 Gallis. R., 429, 435. So, if the specification do not describe the invention in clear and exact terms, so as to distinguish it from other inventions, but be so ambiguous and obscure that it cannot be with reasonable certainty ascertained for what the patent is taken, or what it includes, the patent is void for ambiguity, and the fact may be shown in his defense by the defendant. Lowell v. Lewis, 1 Mason's R. But if the invention is definitely described in the patent and specification so as to distinguish it from other inventions before known, the patent is good, although it does not describe the invention in such full, clear, and exact terms that a person skilled in the art or science of which it is a branch could construct or make the thing, unless such defective description or concealment was with intent to deceive the public. Whittemore v. Cutter, 1 Gallis. R., 429; Lowell v. Lewis, 1 Mason's R. In order to defeat a patent, it is not necessary to prove that the invention has previously been in general use, and generally known to the public. It is sufficient if it has been previously known to and put in use by other persons, however limited in extent the use or the knowledge of the invention may have been. Bedford v. Hunt, 1 Mason's R. 7. The seventh section applies only to the cases of patents under State authority, before the Constitution of the United States. 8. The eighth section applied only to applications then pending for patents under the Patent Act of 1890. 9. The ninth section directs that in cases of interfering applications for a patent for the same invention, the same may be referred to arbitrators, chosen by the applicants and the Secretary of State, whose award shall be final, "as far as respects the granting of the patent"; and if either of the applicants refuse to choose an arbitrator, the patent shall issue to the opposite party. It has been held that such an award is not conclusive in any other respect than as to the mere issuing of the patent; and that it decides nothing as to the right of invention, or other claims of either party, but that either party may contest, in a suit at law, the validity of the patent. Stearns v. Barrett, 1 Mason's R. 10. The tenth section provides that upon oath or affirmation being made before the district judge of the district where the patentee, his executors, &c., reside, that any patent was obtained “surreptitiously or upon false suggestion," (the words of the act of 1790 are “surreptitiously by or upon false suggestion,") the district judge may, if the matter appear sufficient, at any time within three years after the issuing of the patent, grant a rule that the patentee show cause why process should not issue against him to repeal the patent; and if sufficient cause be not shown, the rule shall be made absolute, and the judge shall order process to be issued against such patentee, &c., with costs of suit. And if no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by the court for the repeal of the patent; and if the plaintiff fails in his complaint, the defendant shall recover costs. It has been held that the pro