discussion and difficulty to determine to what extent an invention must be useful, to render it the subject of a patent. This will, as a matter of fact, depend upon the circumstances of each case. It must be to a certain degree beneficial to the community, and not injurious, or frivolous, or insignificant. (e) * The Act of Congress has described, in substance, the requisite * parts of a valid specification of the discovery; * 370 and yet the defects of the specification is one great source of a vexatious and perplexing litigation in our own, as well as in the English courts. The Act of Congress requires drawings, with written references, to be annexed to the specification, when the nature of the case admits of them; and when so annexed, they become part of the specification, and give certainty to the description, and may help and make good a specification which would otherwise be defective. (a) In the present improved state of the arts, it is often a question of intrinsic difficulty, especially in cases of the invention of minute additions to complicated machinery, to decide whether one machine operates upon the same principle as another, and whether that which is stated to be an improvement be really new and useful. (b) The material point of inquiry generally is, not whether the same elements of motion, and in some particulars the same manner of operation, and the same component parts are used, but whether the given effect be produced substantially by the same mode of operation, and the same combination of powers, in both machines. Mere colorable differences, or slight improvements, cannot shake the right of the original inventor. (c) If a machine produces several different effects by a particular construction of machinery, and those effects (e) Lowell v. Lewis, 1 Mason, 182. Bedford v. Hunt, Ibid. 302. Langdon v. De Groot, 1 Paine C. C. 203. Evans v. Eaton, 1 Peters C. C. 322. (a) Earle v. Sawyer, 4 Mason, 1. (b) The cases of Hill v. Thompson, 8 Taunt. 375, and Evans v. Eaton, 7 Wheaton, 356, may be selected as examples of the intricacy and subtlety of such investigations. Mr. Phillips terms the patent-law branch of our jurisprudence the metaphysics of the law. The heavy tax imposed in England on taking out a patent, and the difficulty of protecting and enforcing patent rights, and the distressing litigations which so frequently attend them, have contributed very much to lessen their value, and to repress the stimulus which patent privileges were intended to give to the cause of science. (c) It is laid down as a general rule, that where two machines are substantially the same, and operate in the same manner, to produce the same result, they must be in principle the same, though there be a formal variation. Washington J., in Gray v. James, See Dunbar v. Marden, 13 N. Hamp. 311. are produced the same way in another machine, and a new effect is added, the inventor of the latter cannot entitle himself to a patent for the whole machine. He is entitled to a patent for no more than his improvement. And if the inventor 371 of an improvement obtain a patent for the whole * machine, or mix up the new and the old discoveries together, or incorporate in his specification inventions neither novel nor his own; the patent being broader and more extensive than the invention, and claiming thereby things which are the property or the invention of others, is absolutely and totally void. (a) The invention * 1 Peters C. C. 398, and see the late English cases of The King v. Fussel, The King v. Lister, The King v. Daniell, and Brunton v. Hawkes, cited in Phillips on the Law of Patents, 128-133. (a) Brunton v. Hawkes, 4 B. & Ald. 540. Stanley v. Hewitt, Circuit Court U. S. for the Southern District of New York, November, 1835. Lowell v. Lewis, 1 Mason, 188. Moody v. Fiske, 2 Ibid. 112. The King v. Else, Dav. Pat. Cas. 144. 11 East, 109, n. S. C. Wyeth v. Stone, 1 Story C. C. 273. The American decisions upheld the patent in many cases in which it would be void under the English law, because in the American patents the specification can be resorted to for a construction of the title, and relieves the difficulty arising from the defective description in the patent. The specification is part of the patent. Story J., in 1 Mason, 477. Phillips on the Law of Patents, pp. 223-231. Nor is the French law as strict and severe on this point as the English, for if the specifications be too broad or defective, it does not vitiate the whole patent. It is only void pro tanto. Nor if the process claimed by the patentee fails in one point, does it fail in toto. M. Perpigna, in his treatise on the French patent law, boasts in these respects of the superiority of the French law. See his treatise at large, pp. 67-73, in vol. iv. of the Law Library, edited by Sergeant & Lowber, at Philadelphia, 1834. It is a clear and copious work, and well written in the English language, by the author, who is a "barrister in the royal court of Paris." He says he was induced to undertake the work in English at the solicitation of his English and American clients. Though a patent be too broad in its general terms, it may be limited by a disclaimer to anything before known or used, and by showing the thing intended to be patented. Whitney v. Emmett, Bald. C. C. U. S. 303.1 The English Act of 5 and 6 Wm. IV. ch. 83, allows the patentee to enter a disclaimer of any part of the title or specification, so as to save the loss of his patent. But the American Act of 1836 makes a more effectual provision, by allowing a surrender of the defective patent, and taking out a new one or the unexpired part of the term. So the Act of 3d March, 1837, ch. 34, secs. 7 and 9, declares that if the specification be too broad, and the patentee claims beyond his original invention, he may disclaim, by writing, duly attested and recorded, the excess in the specification, and such disclaimer shall be considered as part of the specification to the extent of his interest in the patent. And if the excessive specification did not arise from wilful default or fraud, the claim shall be good to the extent of the invention, if it be of a material and substantial part of the thing. 1 But the patentee must enter his disclaimer without unreasonable delay, and he shall not recover costs against a defendant unless he has entered a disclaimer before suit brought. Silsby v. Foote, 20 How. U. S. 378. must be substantially new in its structure and mode of operation, and the specification must point out the new improvement of the patentee, so as to show in what the improvement consists. (b) 2 If the patentee has made a combination which is new and useful, though the parts of the machine, when separate, and not in combination, were in common use before, he is entitled to his patent.3 The law has no regard to the process of mind by which the invention was accomplished, whether the discovery be by accident, or by sudden or by long and laborious thought. (c) The English decisions under their patent law are essentially the same. The Statute of Monopolies of 21 James I. ch. 3, contains the provision under which patents for the term of fourteen years for new and useful inventions are granted. It does not confine (b) Woodcock v. Parker, 1 Gallison, 438. Whittemore v. Cutter, Ibid. 478. Odiorne Winkley, 2 Ibid. 51. Lowell v. Lewis, 1 Mason, 182. Evans v. Eaton, 7 Wheaton, 356. Dixon v. Moyer, 4 Wash. C. C. 68. (c) Earle v. Sawyer, 4 Mason, 1. Walker v. Congreve, cited in Phillips on the Law of Patents, p. 127, from the Rep. of Arts, 2d series, vol. xxix. p. 311. 2 Hovey v. Stevens, 1 Wood. & M. 290. Buck v. Hermance, 1 Blatchf. C. C. 398. Le Roy v. Tatham, 14 How. U. S. 156. This case came before the Supreme Court a second time, and the second decision is reported in 22 How. U. S. 132, in entire accordance with the decision in 14 Howard. Silsby v. Foote, 14 How. U. S. 218. Hotchkiss v Greenwood, 11 How. U. S. 248. Rheem v. Holliday, 16 Penn. 347. Newton v. Vaucher, 11 E. L. & Eq. 589. McCormick v. Talcott, 20 How. U. S. 402. Tolson's Patent, 39 E. L. & Eq. 538. 3 Every element of a combination asserted to constitute a new invention must be maintained. A part cannot be abandoned as immaterial and the patent sustained for the residue. The combination as claimed is an entirety. Vance v. Campbell, 1 Black, 427. But a patent claiming a combination is not infringed by using one of the parts of the combination. McCormick v. Manny, 6 McL. 539. Byam v. Eddy, 24 Vermont, 666. See, however, Newton v. G. J. R. Co. 6 E. L. & Eq. 557; El. Tel. Co. v. Brett, 4 E. L. & Eq. 347. In Unwin v. Health, 32 E. L. & Eq. 45, it was held by the House of Lords, reversing the decision below, that the use of the elements of a chemical substance, instead of the substance itself, in a patented process, was not evidence of infringement. The production under a patented process, of an article secured by another patent, when the process has a different object, and the article secured is not produced as of value or for sale, does not work an infringement of the last-mentioned patent. Higgs v. Goodwin, 1 Ell., Bl. & El. 529. This statute remained the only one on the subject of patents until the year 1835, when the statute 5 & 6 Wm. IV. c. 83, was passed, making provision for the extension, renewal, and confirmation of letters patent on petition to the privy council. The process of obtaining a patent remained, however, excessively tedious, expensive, and uncertain, while the means of protecting the rights of patentees in the courts were quite inadequate. The subject of patent-law reform was taken up by Parliament in 1851, and an Act was passed substituting a board of commissioners for the complicated system of offices through which applications had previously been obliged to pass; giving the patentee protection from the time of the application, so that the benefit of the patent can no longer be lost by the secret escaping during the delay in issuing it, reducing the expenses and providing for the payment the privilege to British subjects. It applies to "the true and first inventor of any manner of new manufactures within the realm, which others at the time of granting the patent did not use; it has been decided that an importer is within the clause; and it has been deemed sufficient to entitle the party to a patent, that his invention was new in England, and that it was immaterial whether the patentee acquired the discovery by study or travel, or only introduced what was invented abroad. The policy of * 372 the law was equally answered in either case. (a) It is allowed in England, as it is with us, to take out a patent for an addition or improvement in any former invention or machine. (b) But the invention must be new and useful, and the specification intelligible, and it must accurately describe the invention; and if it covers more than is actually new and useful, it destroys the patent, even to the extent to which it might otherwise have been supported.1 A patent was declared void because it (a) Edgeberry v. Stephens, Salk. 447. Darcy v. Allin, Noy, 182, 183. Lewis v. Marling, 1 Lloyd & Wels. 28. 4 Carr. & Pa. 52. 10 Barn. & Cress. 22, S. C. If we were to judge from the language of the statute of James, and from the construction given to it by Lord Coke himself, 3 Inst. 184, (and he was chairman of the committee in the House of Commons which reported the bill,) the patentee himself must have been the true and first inventor; and there would seem to be no foundation for the opinion of Lord Holt, in Edgeberry v. Stephens. But the modern received doctrine is in conformity with the decision of Lord Holt. Sturz v. De la Rue, 5 Russell 322. And this is the sense of the English law, as understood by Mr. Justice Story, in Earle v. Sawyer, 4 Mason, 8; though it was admitted that the law in the United States was different, and required the patentee to be absolutely the first inventor of the machine, in its simple or in its combined character. But the Act of Congress of 1836, (as see supra,) does not make the patent void in all cases, though the thing patented, or some part thereof, had been before known or used in some foreign country. The severity of the former statute is somewhat mitigated by the last Act, which only requires the belief of the patentee that he was the first inventor or discoverer, and that no substantial part of the invention had before been patented or described in any printed publication. (b) Morris v. Branson, cited in 2 H. Blacks. 489. Boulton v. Bull, Ibid. 463. Hornblower v. Boulton, 8 Term Rep. 95. of the government fee in instalments at intervals of some years. A system of indexes was also introduced, the want of which had made it almost impossible for the inventor to ascertain whether any previous patent existed for the same thing. See Patent Law Amendment Act, 1852, 15 & 16 Vict. ch. 83; Coryton on Patents, Law Lib. vol. 90. 1 If there be no fraud, and the title be not inconsistent with the specification, it is not a fatal objection that the title is so general as to be capable of comprising a different invention. Cook v. Pearce, 8 Ad. & El. (N. S.) 1044. As to what degree of uncertainty or generality will render a patent void, see Hogg v Emerson, 6 How. U. S. 437. Stevens v. Keating, 2 Wels. Hurl. & Gord. 772. Hastings v. extended to a whole watch, when the invention was of a particular movement only. (c) The holder of a defective patent may surrender it to the department of state, and obtain a new one, which, being a continuation of the first, shall have relation to the emanation of the first, and the rights of the patentee shall be ascertained by the law under which the original application was made. (d) 2 In no case can a patentee, by taking out a new patent for the same invention, or by any other means, prolong his exclusive right beyond the limitation annexed to the first patent. (e) A patent-right is personal property, and is assignable; and the patented article may be seized and sold on execution. (ƒ) a In addition to the ordinary remedies by action, for violation of a patent-right, the party in possession will be protected in the (c) Hill v. Thompson, 8 Taunt. 375. 3 Meriv. 629. Blacks. 489. Brunton v. Hawkes, 4 B. & Ald. 540. Perry, 595. (d) Grant v. Raymond, 6 Peters U. S. 220. 2 Jessop's case, cited in 2 H. Minter v. Mower, 1 Neville & Shaw v. Cooper, 7 Ibid. 292. Sawin v. Guild, 1 Gallison, 495. Brown, 16 E. L. & Eq. 272. Holmes v. Railway Co. Ibid. 409. Tetley v. Easton, 22 Ibid. 321. Bush v. Fox, 26 Ibid. 464. Holliday v. Rheem, 18 Penn. 465. A patent should be construed favorably to the patentee. Goodyear v. R. R. 2 Wallace, Jr. 356. Winans v. Denmead, 15 How. U. S. 330. Kittle v. Merriam, 2 Curtis, C. C. 475. Allen v. Hunter, 6 McL. 303. As to what constitutes prior use, see Heath v. Smith, 25 E. L. & Eq. 165. ? The decision of the commissioner of patents, in respect to accepting the surrender of old patents and the granting of new ones, is not examinable by the U. S. courts. The patentee will not be permitted to make a surrender to the prejudice of the rights of his assignees. Woodworth v. Stone, 3 Story, C. C. 749. McBurney v. Goodyear, 11 Cush. 569. 3 The assignee of the whole or a part of a patent may sue for an infringement, according to his interest. Walton v. Lavater, 8 C. B. (N. S.) 162. Dunnicliff v. Mallet, 7 C. B. (N. S.) 209. Boyd v. McAlpin, infra. In one of tenants in common of a patent die, existing causes of action for infringement survive to the others. Smith v. London & N. W. R. 2 Ell. & Bl. 69. The licensee of a patentee, actually using the license, cannot defend himself against a payment stipulated by way of compensation for the user, by impeaching the novelty of the invention or the right of the patentee to be deemed the first inventor. Noton v. Brooks, 7 Hurl. & Nor. 499. ♦ But the patent right cannot be so seized and sold. Stevens v. Gladding, 17 How. U. S 447. 5 The sale of the product of a patented machine is not an infringement of the patent. If the vendor is in any way connected with the use of the machine, it would be otherwise. Boyd v. M'Alpin, 3 McLean, 427. The sale of the thing patented to an agent of the patentee is not, per se, an infringement; but, accompanied by other circumstances, it may be evidence of an infringement. Byam v. Bullard, 1 Curtis, C. C. 100. But, under ordinary circumstances, a sale of the patented article is an infringement, and that even when the article sold has been imported from abroad. Walton v. Lavater, 8 C. B. (N. S.) 162. The exclusive use |