STATUTE OF FRAUDS-continued.

2. A contract where performance is to run through a term of years, but which, by its tenor, may be defeated at any time before the expiration of the term-ex. gr., a contract to pay for a right to use an invention, on a certain boat, so much a year during the term of a patent having twelve years yet to run, "if the said boat should so long last," is within the clause of the British statute of frauds, in force in the District of Columbia, providing that "no suit shall be brought to charge any person upon any agreement that was not to be performed in one year, unless there was some memorandum or note in writing of the agreement." Ibid., 155,

SUBJECT-MATTER OF PATENTS.

Semble, that an improvement in the plan of constructing a jail is not a subject of patent within the Patent Acts of 1836 or 1842. Jacobs v. Baker, 174.

SUBSTITUTION OF MATERIAL.

1. The mere change in an instrument or machine of one material into another-as of wood, or of wood strengthened with iron, into iron alone—is not “invention” in the sense of the Patent Acts, and therefore is not the subject of a patent; the purpose and means of accomplishment, and form and mode of operation of each instrument the new as of the old-being each and all the same. The mere fact that the new instrument is a better one than the old one-requiring less repair, and having greater solidity than the old one, does not alter the case. It does not bring the case out of the category of more or less excellence of construction. Hicks v. Kelsey, 472.

2. In Crane v. Price, Webster's Patent Cases, it is true, the use of anthracite instead of bituminous coal with a hot-blast in smelting iron ore was held to be a good invention, inasmuch as it produced a better article of iron at a less expense. But that was a process of manufacture, and in such process a different article replacing another article in the combination often produces different results. The latter case is more analogous to the cases of compositions of matter than it is to those of machinery; and in compositions of matter a different ingredient changes the identity of the compound, whereas an iron bar in the place of a wooden one, and subserving the same purpose, does not change the identity of the machine. Ibid., 475.

SUGGESTIONS.

See COMBINATION; EQUIVALENT.

1. Where a master workman, employing other people in his service, has conceived the plan of an invention and is engaged in experiments to perfect it, no suggestions from a person employed by him, not amounting to a new method or arrangement which in itself is a complete invention, is sufficient to deprive the employer of the exclusive property in the perfected improvement. Agawam Co. v. Jordan, 187.

2. No one is entitled to a patent for that which he did not invent, unless he can show a legal title to the same from the inventor, or by operation of law; but where a person has discovered an improved principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original improved principle, and may be embodied in his patent as part of his invention. Agawam Company v. Jordan, 201.

3. Suggestions from another made during the progress of such experiments, in order that they may be sufficient to defeat a patent subsequently issued, must have

SUGGESTIONS-continued.

embraced the plan of the improvement, and must have furnished such information to the person to whom the communication was made that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put the improvement in successful operation. Ibid., 202.

4. Persons employed, as much as employers, are entitled to their own indenpedent inventions; but where the employer has conceived the plan of an invention, and is engaged in experiments to perfect it, no suggestions from an employee, not amounting to a new method or arrangement, which in itself is a complete invention, is sufficient to deprive the employer of the exclusive property in the perfected improvement. But where the suggestions go to make up a complete and perfect machine, embracing the substance of all that is embodied in the patent subsequently issued to the party to whom the suggestions were made, the patent is invalid because the real invention or discovery belonged to another. Ibid.

TRADE MARK.

1. To entitle a name to equitable protection as a trade mark, the right to its use must be exclusive, and not one which others may employ with as much truth as those who use it; and this is so although the use by a second producer, in describing truthfully his product, of a name or a combination of words already in use by another, may have the effect of causing the public to mistake as to the origin or ownership of the product. Purchasers, though mistaken, are not in such a case deceived by false representations, and equity will not enjoin against telling the truth. Canal Company v. Clark, 352.

2. Hence no one can apply the name of a district of country to a well-known article of commerce, and obtain thereby such an exclusive right to the application as to prevent others inhabiting the district, or dealing in similar articles coming from the district, from truthfully using the same designation. Ibid.

3. Accordingly, where the coal of one person who early and long mined coal in a valley of Pennsylvania known as the Lackawanna valley had been designated and become known as "Lackawanna coal: " Held, that miners who came in afterwards and mined in another part of the same valley, could not be enjoined against calling their coal "Lackawanna coal," it being in fact in its generic character properly so designated, although more properly described when specifically spoken of as "Scranton coal" or "Pittston coal," and when specifically spoken of usually so called. Ibid., 353.

4. Property in a trade mark, or rather in the use of a trade mark or name, has very little analogy to that which exists in copyrights, or in patents for inventions. Words in common use, with some exceptions, may be adopted, if at the time of their adoption they were not employed to designate the same or like articles of production. Ibid,, 361.

5. The office of a trade mark is to point out distinctly the origin or ownership of the article to which it is affixed-or, in other words, to give notice who was the producer. This may in many cases be done by a name, a mark, or a device well known but not previously applied to the same article. Ibid.

6. The trade mark must, either by itself or by association, point distinctly to the origin or ownership of the article to which it is applied. Ibid.

7. No one can claim protection for the exclusive use of a trade mark or trade name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Ibid., 362. 8 Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protection. Ibid.

TRADE MARK-continued.

9. The same reasons which forbid the exclusive appropriation of generic names, or of those merely descriptive of the article manufactured, and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names designating districts of country. Ibid.

10. The cases of Brooklyn White Lead Company v. Masury, Alvord v. Newman, McAndrews v. Bassett, and Seixo v. Provezende commented on and distinguished. Ibid., 363, 364.

TRUSTEE.

See ADMINISTRATOR, 3.

USE OF PATENTED INVENTIONS BY THE UNITED STATES.

If an officer in the military service, not specially employed to make experiments with a view to suggest improvements, devises a new and valuable improvement in arms, tents, or any other kind of war material, he is entitled to the benefit of it, and to letters patent for the improvement from the United States, equally with any other citizen not engaged in such service; and the government cannot, after the patent is issued, make use of the improvement, any more than a private individual, without license of the inventor or making compensation to him. United States v. Burns, 349.

UTILITY.

See AGREEMENT, 8, 9, 10.

1. Utility in the sense of the Patent Law does not require such general utility as to supersede all other inventions that can accomplish the same object. Seymour v. Osborne, 292.

2. Utility in most cases is a question of fact, as it usually depends upon the evidence resulting from actual experiment. Mitchell v. Tilghman, 476.

3. The utility of an invention may be impeached when it appears that it is not capable of being used to effect the object proposed. Ibid.

4. An invention which constantly exposes the operator to the loss of his life or to great bodily harm cannot be regarded as useful within the meaning of the Patent Law. Ibid.