object of a great part of the legislation of every State to avoid. Rules are laid down, first by the legislators, and then as matters of construction and interpretation by the judges, that every one may know, to use Mr. Jefferson's expression, when his actions are lawful. But if a board may grant a patent when they deem the invention sufficiently useful or sufficiently important, or confirm one that is void by the law, where they are of opinion that there is some good reason for so doing, it is not in the power of an inventor to know whether he is entitled to a patent until this administrative board has exercised its discretion upon his application. The matter becomes one of solicitation, instead of being one of right, determined by definite rules.

Our patent laws, as do those of other countries, for the most part, treat the claim rather, as a matter of right, though the language imports a discretion to be exercised on the part of the administrative officers; for the law of 1793, said the secretary of state in the cases mentioned, may cause letters patent to be issued, and the act of 1836, adopts the same pharseology, substituting the commissioner of patents for the secretary of state. Neither act, says he, shall cause the letters patent to be issued. The phraseology of the sixth section of the British act of monopolies, taken in

connexion with the first, is equivalent. The phraseology of the French law is more absolute, and those of the other countries mentioned above follow more nearly the French law in this respect. The spirit of the administration of both the British, and our law has been, however, conformable to the phraseology of the French and other laws in this respect, or rather the latter laws have copied and followed the practical administration of the British and American laws. So that allowing room for the exception of extremely scandalous or trivial inventions, or palpably immoral and illegal ones, the applicant in practice, has been put upon the footing of a claimant of right, and not that of a mere solicitor of a favor.

Having considered the provisions for mere discretionary authority on this subject; we next come to a question of very great importance, and of not a little difficulty in legislation, in regard to the novelty and utility of the invention, and especially the sufficiency of the specification, which last is the subject with which we are here more particularly occupied. The question is, whether the law should submit these subjects to the preliminary decision of a board or tribunal, or leave the applicant, as the French law professedly does, and our law, and the British, as practically administered hitherto have done, to take out a patent for

any subject on whatever specification he may choose to make, upon his own responsibility, and at his own peril. We do not inquire here as to the exercise of a discretionary authority, but suppose the board of preliminary jurisdiction to investigate and adjudicate upon the subject precisely as a judicial tribunal does in the ordinary administration of justice, that is, according to the rules of the law.

23

This subject was one of those which occupied much of the attention of the committee of the British House of Commons, whose report has already been so frequently mentioned. A greater number of the persons examined by the committee, were in favor of the institution of such a tribunal, for the preliminary adjudication of all these points, though others were against it. Those in favor of it, referred to the French law as a precedent, whereas that law, as we have seen, is directly against it, as the French consultative board or committee merely recommend, and do not definitively decide any thing. The projectors of the British law of 1835, probably found some difficulty in constituting such a board, since they made no provision for it in that law.

28 Rep. p. 7. 15. 24. 27. 30. 38. 41. 42. 44. 46. 55. 56. 67. 68. 74. 76. 77. 80. 84. 98.

Such a board, invested with authority to make a preliminary definitive decision on the points of usefulness and novelty especially, is liable to very grave objections, since one party alone, the applicant, being before them, it is not usually possible to have such a full presentation of the case as is desirable in making a final decision, as it will depend on the members of the board itself to find the evidence against the claim, and any board or tribunal, however well constituted, is an unwieldy agent in collecting facts and precedents. Again, any board, proceeding ex parte, is open to the influence of favoritism. And then, in the early stages of an invention, there are much less means too of obtaining facts, bearing on the questions of its novelty or utility, than afterwards, when the thing has been in use and has become known. Again, there is very little probability of so much time and labor being bestowed upon the investigation, as in a case presented by opposing parties, spurred on by interest on each side, and excited by the contest. And it is another very material objection that the applicant is subjected to very great expense and trouble in the threshold, before he can. have fully ascertained whether his invention is worth pursuing. Notwithstanding these objections, the projectors of the act of congress of 1836, have attempted to form a tribunal of this description, by authorizing

the commissioner of patents to reject the application for a patent on various grounds of objection to the merits of the invention, as well as on account of defects in the specification; and in case of the applicant's still persisting in his claim, the matter is referred to a board of examiners appointed by the secretary of state, before whom the claimant appears with his reasons in favor of his claim, and the commissioner of patents is the opposing party, who, in effect, represents the public, as an alleged infringer does in an action for an infringement, after a patent is granted. This mode of proceeding puts the claim in as good a position as it can be placed in for a trial, in this stage of the invention, since the commissioner of patents is incited to make as strong an opposition as he can, in vindication of his rejection of the claim. But still, I cannot but think that the objections to such a system, entirely outweigh the reasons in its favor.

The case is not wholly similar as to the specification, since it can as well be settled at first as afterwards, whether it is intelligible and clear. The public is interested in having the specification full and clear, and the claim of the patentee precisely and definitely stated; and it can as well be decided whether they are so at the moment when the specification is drawn, as at any future period. And the objection to a decision on