of the cases in the old law. (c) But if the articles were of different value or quality, and the original value not to be distinguished, the party injured takes the whole. It is for the party guilty of the fraud to distinguish his own property satisfactorily, or lose it. No court of justice is bound to make the discrimination for him. (d) 2

III. Of original acquisition by intellectual labor.

Another instance of property acquired by one's own act and power is that of literary property, consisting of maps, charts, writings, and books; and of mechanical inventions, consisting of useful machines or discoveries, produced by the joint result of intellectual and manual labor. As long as these are kept within the possession of the author, he has the same right to the exclusive enjoyment of them as of any other species of personal property; for they have proprietary marks, and are distinguishable property. But when they are circulated abroad, and published with the author's consent, they become common property, and subject to the free use of the community. It has been found necessary, however, for the promotion of the useful arts, and the encouragement of learning, that ingenious men should be stimulated to the most active exertion of the * 366 powers of genius, in the production of works useful to the country and instructive to mankind, by the hope of profit, as well as by the love of fame or a sense of duty. It is just that • they should enjoy the pecuniary profits resulting from mental as well as bodily labor. We have, accordingly, in imitation of the English and foreign jurisprudence, secured by law to authors and inventors, for a limited time, the right to the exclusive use and profit of their productions and discoveries. The jurisdiction of this subject is vested in the government of the United States, by that part of the constitution which declares (a) that Congress shall

(c) 15 Vesey, 442.

(d) Hart v. Ten Eyck, 2 Johns. Ch. 108. Sir William Scott, in the case of The Odin, 1 Rob. Adm. 248. Brackenridge v. Holland, 2 Black. (Ind.) 377. (a) Art. 1, sec. 8.

? See Hesseltine v. Stockwell, 30 Maine, 237; Bryant v. Ware, Ibid. 295; Dillingham v. Smith, Ibid. 370; Inglebright v. Hammond, 19 Ohio, 337; Dunning v. Stearns, 9 Barb. (N. Y.) 630; McKean v. Nagenblast, 2 Grant (Canada) 462.

have power" to promote the progress of science and useful arts, by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." This power was very properly confided to Congress, for the states could not separately make effectual provision for the case.

(1.) As to patent rights for inventions.

A patent, according to the definition of Mr. Phillips, (b) is a grant by the state of the exclusive privilege of making, using, and vending, and authorizing others to make, use, and vend, an invention.1

The first Act of Congress on this subject was passed April 10th, 1790; and it authorized the secretary of state, the secretary of war, and the attorney-general, or any two of them, to grant patents for such new inventions and discoveries as they should deem sufficiently useful and important. That Act extended equally to aliens, and the board exercised the power of refusing patents for want of novelty or utility. This Act was repealed, and a new Act passed on the 21st February, 1793. It confined patents to the citizens of the United States, and they were to be granted by the secretary of state, subject to the revision of the attorney-general. The act gave no power to the secretary of state to refuse a patent for want of novelty or usefulness, and the granting of the patent became a mere ministerial duty. The privilege of suing "out a patent was, by the Act of 17th April, 1800, extended to aliens of two years' residence in the United States. The Act of July 13th, 1832, only required the alien to be a resident at the time of the application, and to have declared his intention, according to law, to become a citizen.

But as every person was entitled to take out a patent, on complying with the prescribed terms, without any material inquiry, at least at the patent-office, respecting the usefulness and importance

(b) The Law of Patents for Inventions, p. 2. In 1847 was published at London, Hindmarch's "Treatise on the Law relating to Patent Privileges for the sole Use of Inventions."

1 In Kendall v. Winsor, 21 How. U. S. 328, the court said, that "the limited and temporary monopoly granted to inventors was never designed for their exclusive profit or advantage; the benefit to the public or community at large was another and doubtless the primary object in granting and securing that monopoly."

of the invention or improvement, a great many worthless and fraudulent patents were issued, and the value of the privilege was degraded, and in a great degree destroyed (e) It became necessary to give a new organization to the patent-office, and to elevate its character, and confer upon it more efficient power. This was done by the Act of Congress of July 4th, 1836, ch. 357, which repealed all former laws on this subject, and reënacted the patent system with essential improvements.

A patent-office is now attached to the department of state, and a commissioner of patents appointed. Applications for patents are to be made in writing to the commissioner, by any person having discovered or invented any new and useful art, machine, manufacture, (d) or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his discovery or invention thereof, and not at the time of his application for a patent in pub. lic use or on sale, with his consent or allowance, as the inventor or discoverer. (e) The applicant must deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in

(c) It was stated, in an able report made by a committee of the Senate of the United States, on the 28th April, 1836, (and who introduced a new bill on the subject,) that the whole number of patents issued at the patent-office, under the laws of the United States, up to March 31st, 1836, amounted to 9,731, being more than double the number issued either in England or France during that period.

(d) The English statute of James I. was confined to the word manufacture, and that, said Lord C. J. Abbott, in the case of the King v. Wheeler, (2 B. & Ald. 349,) has been generally understood to denote, either a thing made which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope; or to mean an engine or instrument, or some part thereof to be employed either in the making of some previously known article, or in some other useful purpose, as a stocking-frame, or a steam-engine for raising waters from mines. The French law extends to every invention or discovery, and in any kind of industry; and yet the practical construction of the English, French, and American law, in regard to the kinds of inventions that are patentable, is substantially the same.

(e) By the English law, if the invention had been already made public in England by a description contained in a work, whether written or printed, which had been publicly circulated, the patentee is not the first and true inventor, whether he borrowed his invention from such publication or not. The question will be, whether, upon the whole evidence, there has been such a publication as to make the description a part of the publie stock of information. If a single copy of a work had been kept in a depository in a state of obscurity, the inference would be different. Stead v. Williams, 7 Mann. & Gr. 818. S. C. 8 Scott (N. C.) 681. Househill Co. v. Neilson, 1 Wels. 718. The public use of an invention, so as to prevent it from being new, means a use in public,

*

full, clear, and exact terms, avoiding unnecessary prolixity, so as to enable any person skilled in the art or science to which it appertains, or is most nearly connected, to make, construct, compound, and use the same; and he must, in the case of a machine, fully explain the principle and the application of it, by which it may be distinguished from other inventions; and he must particularly specify the part, improvement, or combination, which he claims as his own invention or discovery. (f) He must *367 accompany the same with drawings and written references, where the nature of the case admits of drawings or specimens of ingredients, and of the composition of matter sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter. He must likewise furnish a model of his invention, in cases which admit of representation by model. The applicant, also, must make oath or affirmation that he believes he is the original and first inventor or discoveror of the art, machine, composition, or improvement for which he solicits a patent, and that he does not know or believe that the same was ever before known or used, and he must further state of what country he is a citizen.

On filing the application, description, and specification, the commissioner of patents is to examine the alleged new invention or discovery, and if it appears to him that the applicant was not the original and first inventor or discoverer thereof; or that any part of what he claims as such, had before been invented or discovered,

so as to come to the knowledge of others than the inventor. Carpenter v. Smith, 9 Mees. & W. 300, and in making a machine for a patent, if a workman hints improvements which are adopted, it will not destroy the patent in the hands of the employer. Allen v. Rawson, 1 Com. B. 551.

(ƒ) The principle of a machine, in reference to the patent law, means the modus operandi, or that which applies, modifies, or combines mechanical powers to produce a certain result, and so far a principle, if new in its application to a useful purpose, may be patentable.2 Story J., in Barrett v. Hall, 1 Mason, 470. Woodcock v. Parker, 1 Gallison, 438. Whittemore v. Cutter, Ibid. 478. Earle v. Sawyer, 4 Mason, 1. Lowell v. Lewis, 1 Mason, 187. Buller J., and Eyre C. J. in Boulton v. Bull, 2 H. Blacks. 486, 495. Smith v. Pearce, 2 McLean, 176. A new composition of known materials, or a new combination of existing machinery producing a new and useful result, may be patentable. Boville v. Moore, Dav. Pat. Cases, 361. Story J., in Moody v. Fiske, 2 Mason, 112. Lord Eldon, in Hill v. Thompson, 3 Meriv. 629, 630. Thompson J., in Reynolds v. Sheldon, C. C. U. S. for Connecticut, September, 1838.

2 But see Smith v. Ely, 5 McL. 9, per M'Lean J.; O'Reilly v. Morse, 15 How. U. S. 62.

or patented, or described in any printed publication in this or any foreign country; or that the description is defective and insufficient, he is to notify the same to the applicant, so as to enable him to remove the objections, if he be able. But if the same does not so appear to the commissioner, and it had not been previously in public use, or on sale with the applicant's consent, and he shall deem the same to be sufficiently useful and important, he is then to issue a patent, in the name of the United States to the applicant, his heirs, executors, administrators, or assigns, for the exclusive right of making, using, and vending the same for a term not exceeding fourteen years. The patent may, in special cases, and in the discretion of the board of commissioners, be renewed and extended to the further term of seven years. If the application be rejected and the applicant persists in his claim, he is to make his oath or affirmation anew; and if the specification and claim be not so modified as to remove the objection, the applicant may appeal to a board of three examiners, to be appointed by the secretary of state, and the commissioner of patents is to be governed by their decision.1

If the applicant be a citizen, or an alien of one year's residence, he is to pay to the treasury of the United States $30; and if a British subject, $500; and all other applicants, $300. The original and true inventor is not be deprived of the right to a patent for his invention, by reason of his having previously taken out letterspatent therefor in a foreign country, and the same having been published at any time within six months next preceding the filing of his specification and drawing. (a) The executors and adminis

(a) By Act of Congress of March 3d, 1839, ch. 88, sec. 6, this restriction was removed, and it was declared that no person is to be debarred from receiving a patent for any invention or discovery, by reason that the same was patented in a foreign country more than six months before, if the same has not been introduced into public and common use in the United States prior to the application. By the Acts of Congress of August 29th, 1843, ch. 263, and March 2, 1861, ch. 88, any citizen, or alien of one year's resi dence in the United States, and who has taken the oath of his intention to become a cit

1 An appeal now lies also to the chief justice, or any of the associate justices of the United States District Court for the District of Columbia. Stat. 1839, ch. 88. 1852, ch. 107.

2 Comparing this provision with sec. 8 of the Act of 1836, it will be seen that it does not warrant a patent to any one but the original inventor, and that the foreign patent referred to is one taken out by the applicant for a patent under the laws of the United States. That he procured the foreign patent more than six months before his application is not to be a bar to his right to a patent here.