this particular idea of means and were sustained by the Supreme Court. The eighth claim was broader, and amounted in reality to a claim of the natural principle or force of electro-magnetism for transmitting intelligible signals. It read "I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer." This claim the court rejected as invalid saying of it, "It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance. If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated less liable to get out of order-less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee. No one we suppose will maintain that Fulton could have taken out a patent for his invention of propelling vessels by steam, describing the process and machinery he used, and claimed under it the exclusive right to use the motive power of steam, however developed, for the purpose of propelling vessels. It can hardly be supposed that under such a patent he could have prevented the use of the improved machinery which sciencehas since introduced; although the motive power is steam, and the result is the propulsion of vessels. Neither could the man who first discovered that steam might, by a proper arrange

ment of machinery, be used as a motive power to grind corn or spin cotton, claim the right to the exclusive use of steam as a motive power for the purpose of producing such effects."42

42 In a sense this statement was dictum since it affected only the costs of the suit and not its merits. Leroy v. Tatham, 14 How. 156; Id. 22 How. 132, 136; Foote v. Silsby, 2 Blatch. 260. An opposite view is set out by Mr. Justice Nelson in his dissenting opinion in Leroy v. Tatham, 14 How. 156, 186. "I shall not pursue a reference to the authorities on this subject any further. The settled doctrine to be deduced from them, I think, is, that a person having discovered the application for the first time of a well-known law of nature, or well-known property of matter; by means of which a new result in the arts or in manufactures is produced, and has pointed out a mode by which it is produced, is entitled to a patent; and, if he has not tied himself down in the specification to the particular mode described, he is entitled to be protected against all modes by which the same result is produced, by an application of the same law of nature or property of matter. And a fortiori, if he has discovered the law of nature or property of matter, and applied it, is he entitled to the patent, and aforesaid protection. And why should not this be the law. The original conception-the novel idea in the one case, is the new application of the principle or property of matter, and the new product in the arts or manufactures in the other, in the discovery of the principle or property, and application, with like result. The mode or means are but incidental and flowing naturally from the original conception; and hence of inconsiderable merit. But, it is said, this is patenting a principle, or element of nature. The authorities to which I have referred, answer the objection. It was answered by Chief Justice Eyre, in the case of Watts's patent, in 1795, fiftyseven years ago; and more recently in still more explicit and authoritative terms. And what if the principle is incorporated in the invention, and the inventor protected in the enjoyment for the fourteen years. He is protected only in the enjoyment of the application for the special purpose and object to which it has been newly applied by his genius and skill. For every other purpose and end, the principle is free for all mankind to use. And, where it has been discovered, as well as applied to this one purpose, and open to the world as to every other, the ground of complaint is certainly not very obvious. Undoubtedly, within the range of the purpose and object for which the principle has been for the first time applied, piracies are interfered with during the fourteen years. But anybody may take it up and give to it any other application to the enlargement of the arts and of manufactures, without restriction. He is only debarred from the use of the new application for the limited time, which the genius of others has already invented and put into successful practice. The protection does not go beyond the thing which, for the first time, has been discovered and brought into practical use; and is no broader than that

PATENTS FOR THE MEANS OF UTILIZING A NATURAL PRINCIPLE have been consistently sustained; indeed it would be difficult to conceive of any mechanical contrivance whose effectuation of a given result, static or dynamic, did not make use of some "natural principle." The conception of a means of utilizing such a principle does, however, involve creation; the means is something which did not before exist, in the ordinary comprehension of existence, and such a concept is therefore within the intended protection of the patent laws.*3

The courts have experienced considerable difficulty, however, in distinguishing with certainty between the use of a principle, which is not patentable, and the means of utilizing it, which is patentable. The discovery of a new principle is held to entitle the discoverer to a wide range of protection in the means he devises to utilize it. He is secured not merely in the precise form of means he sets out in his patent but in all forms which are essentially similar. The principle itself thus becomes a part, at least, of the device, inasmuch as it is the real distinguishing feature of two otherwise similar devices. The result is that in a certain sense the principle is actually patented, as part of the entire device. The difficulty of differentiating between the patenting of a principle, by itself, and the patenting of a device which is distinguished from other devices only by the principle utilized in it, has created much confusion. That the principle may be an essential part of a patented device is sustained by many cases which, if the distinction between a principle by itself, and as part of a device,

extended to every other discoverer or inventor of a new art or manufacture. I ɔwn, I am incapable of comprehending the detriment to the improvements in the country that may flow from this sort of protection to inventors. To hold, in the case of inventions of this character, that the novelty must consist of the mode or means of the new application producing the new result, would be holding against the facts of the case, as no one can but see, that the original conception reaches far beyond these. It would be mistaking the skill of the mechanic for the genius of the inventor."

43 O'Reilly v. Morse, 15 How. 61; Neilson v. Harford, 1 Webs. Pat. Cases, 295. Tilghman v. Proctor, 102 U. S. 707, Leroy v. Tatham, 14 How. 551; Parker v. Hulme, I Fish. Pat. Cases 44, Fed. Cas. No. 10740.

L

be not clearly understood, seem to conflict with the rule that a principle can not be patented. The author suggests, though far from stating it as the accepted rule, that the fundamental difference between an unpatentable law of nature and one which is patentable as part of a concrete contrivance, be it "machine" or "process," is in the self-operative character of the law involved. If it is a principle which will produce the result automatically when merely given substance to operate on it is unpatentable. It is utilized to be sure, but not through the assistance of any means of utilization. [But a principle which produces the desired result only through physical manipulation of substances, and as a concomitant of that manipulation, not as a sequent to it, is patentable as part of the idea of means whereby the result is produced. Certainly the cases decided recently give credence to the proposition, that while a principle of nature may not be patented as a means and an end in itself, it may be patented as an integral part of an idea of means the substantive part of which, even as an entirety, is old.** That is to say, the principle alone could not be patented; neither could the substantive contrivance by itself be patented, for it is already well known; but the new combination, of unpatentable principle and old mechanical device, can itself be patented.

An excellent illustration of this is seen in the case of Leroy v. Tatham. Here the patentee had discovered

44 This is in exact accord also with the theory on which patents are economically justified, if the proposition of Mr. Taussig in "Money-Makers and Inventors" is correct. This proposition is that people will invent and make research to the full extent of their abilities of the creative instinct, and without the stimulation of a legal reward, but that the monopoly of a patent is necessary to induce capital to make inventions commercially practical. If this be so, no reward is necessary to stimulate research and discovery of the principles of nature, and, not being necessary, would not be justifiable. But a reward is necessary to invessigate the development of practical means of utilizing the discovered principle, and such a reward is offered by the patent statutes. On this theory, therefore, the fact that discovery of an important principle of nature is not patentable, but conception of a means by which that principle may be put to practical use is patentable, even though the material part of that means be already well known, is not a defect in the patent law, but a virtue.

45 14 How. 156. For the facts see Tatham v. Leroy, 2 Blatch. 474.

the principle that lead in a solid condition would reunite after separation, if heated under great pressure. He devised a method of utilizing this principle in the making of lead pipes, and claimed, as his invention, this particular device when used for such a purpose. Similar machines, on a lighter scale, had been used before this for other purposes such as the making of clay pipes and macaroni. The court in this case. confined him to the device as set forth, without considering its connection with a new principle, and held that evidence of other similar devices for other purposes, utilizing other principles, might be admitted to prove that the patentee's device was not new. But this same case came before the Supreme Court again, in equity, and a conflicting decision was reached. The court in the second case held that the device patented was not deprived of novelty by the existence of other machines similar to it, but smaller and intended for other purposes. The novelty of the patentee's device lay, it would appear, in the fact that it was used in combination with the new principle." The patentee's concept was the new combination of the old machine with the novel principle; clearly a new concept.

46

It can not therefore be correct to say broadly either that a principle of nature can not be patented or that it can be patented. Either statement results in confusion. It must be understood, before any statement is definite, in just what sense the terms are used.

"FUNCTION," "RESULT," "PRINCIPLE OF OPERATION, What has just been said in regard to a principle of nature ap

46 22 How. 132.

47 In Foote v. Silsby, 2 Blatch. 260, the court held, broadly that a patent might be granted for any means, old or new, of utilizing a newly discovered principle. Poillon v. Schmidt, 6 Blatch. 209; Tilghman v. Proctor, 102 U.S. 707. See also The Telephone Cases, 126 U.S. 1. The patent sustained in Minerals Separation Co. v. Hyde, 242 U. S. 261, seemed to be practically a patent for a principle, the means by which it might be utilized are so general. At any rate, the court of Appeals declared the patent invalid because the appreciable means used was so nearly identical with means long known. The Supreme Court reversed this, and held the patent valid because the difference from the known means, slight as it was, brought an entirely different principle into play.