existence of the machine, or communication with the first inventor. It is not necessary to consider, whether, if the first inventor should wholly abandon his invention, and never reduce it to practice, so as to produce useful effects; a second inventor might not be entitled to the benefit of the statute patent: because here there is not the slightest evidence of such abandonment. Parker is ed to have put his machine is operation: it produced useful effects; and he followed his invention, by obtaining a patent from the department of state.

prov

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It is likewise asserted by Story J. in the case of Odiorne vs. Winkley, that "The original inventor of a machine, is exclusively entitled to a patent for it. If another person invent an improvement on such machine, he can entitle himself to a patent for such improvement only; and does not thereby acquire a right to patent and use the original machine: and if he does procure a patent for the whole of such a machine, with the improvement, and not for the improvement only; his patent is too broad, and therefore void."*

The following decision, goes far to secure the right of the original inventor, in certain

* 13. Gal. 53.

cases; to inventions known and used, even before application for a patent.†

Evans brought an action on the case against Weiss, for a violation of the plaintiff's patent right, which came up on the following case agreed.

The plaintiff, being the inventor of the improvements in the manufacture of flour, hereafter mentioned, and the patent right for the same, heretofore obtained, having been deelared by the Court void in the action of Evans against Chambers; and the time for which the said patent was granted having also run out, an act of Congress, entitled "An act for the relief of Oliver Evans," was passed on the 21st of January, 1808, notice whereof was given to the defendant in February last.

On the 7th of May, 1802, during the continuance of the former patent, the defendant purchased of the plaintiff a right to use the

+ There is a difference between our statute and that of Great Britain on this subject. In England, if the invention has been put in use before the patent is obtained, it is void. But our act does not, like the English statute, refer to the time of the grant of letters patent, but to the time of the invention. See 6th Section. The terms of the first section, ought to be construed with reference, and in subordination to the 6thsection.

said improvement at his mill on Wissahicon creek, in Philadelphia county, in this district, for one wheel and pair of stones; but prior to the passing of said act of Congress, he had applied and used, and continued to apply and use the same improvements for two wheels, and two pair of stones, in the same mill. The questions submitted are, whether the defendant is liable for damages for the use of the said improvements in application to this second wheel and pair of stones, since the act of the 22d of Januay, 1808, and whether, if so, he is liable before notice from the plaintiff. If the opinions of the court be in favor of the plaintiff, judgment to be entered generally, and amount to be afterwards adjusted by the attornies.

Judge Washington delivered the opinion of the Court, as follows: It is contended by the plaintiff that the defendant is liable for using the plaintiffs improvements in application to the second wheel and pair of stones, since the 22d day of Jan. 1808, or at all events, since the time when the defendant received notice of the plaintiff's patent; because the proviso in the act passed the 21st January, 1808, for the relief of Oliver Evans, extends only to cases of improvements erected for use,

or used prior to the passing of said law, and does not protect the defendant from damages, for using, after issuing of the patent under this law, an improvement erected prior thereto.

On the other side, it is insisted that such a construction would render this an ex post facto law, and consequently repugnant to the constitution. To avoid which, it should be so construed as to connect with the use of the improvement the erection of it subsequent to the grant of the patent.

Although the court at the last term, and

upon

the first argument, felt strongly inclined to give the construction contended for by the defendant; yet, upon further reflection, we are satisfied that we should do a violence to the words, which no rule of construction should warrant.

The words of that proviso are, "that no person who shall have used the said improvement, or have erected the same for use before the issuing of the said patent, shall be liable to damage therefor." That is, shall be liable for having erected, or for having used the improvement at any time

prior to the patent, but with respect to the use of it after the issuing of the patent, no protection whatever is afforded against the claim for damages under this law.

The next inquiry is, does the general law give to the plaintiff a right of recovering against a person who erected a machine prior to the issuing of the patent to the first inventor of it, and who afterwards made use of the

same.

The act of the 17th of April 1800, which as to this point is the only law in force, declares, that "if any person, without permission from the inventor, shall make, devise, use, or sell, the thing, whereof the exclusive right is secured to the patentee, he shall pay three times the damage sustained by the patentee, to be ascertained by a jury." Now, whatever doubts might have existed as to the meaning of the words "devise and use," in the 5th section of the act, of the 21st of February, 1793, thus connecting the using with the devising of the improvement, there can be none under the third section of the act of 1800, which repeals the whole of the 5th section of the old law.

It is plain that the using of an improvement invented by another, and secured by