CHAPTER IX. Divers Patents for the same Invention. The joining of Patent for a divers Inventions in the same Patent. part of an Invention. Sec. 1. Divers valid Patents cannot be taken out for the same thing. 2. Patent for a Combination, and for the separate Things combined. 3. Distinct Inventions cannot be joined in the same Patent. 4. Patent for a part of a Machine. Sec. I.-DIVERS VALID PATENTS CANNOT BE TAKEN OUT FOR THE SAME THING. Ir is a well settled doctrine, that divers valid patents cannot be taken out for the same invention, whether by the same or by different patentees. That different patentees cannot take independent valid patents for the same thing, follows from what has already been said on the subject of patents, in a preceding chapter, where it is stated that the invention must be new and original, and prior to any other invention of the same thing, in order to be the subject of a valid patent, which necessarily excludes the possibility of two valid patents for the same thing. It is also inconsistent with the character of a patent as an exclusive privilege. 991 This doctrine has been particularly laid down by Mr. Justice Story. He says, "I have very great doubts, whether, when a patent is once granted to any person for an invention, he can legally acquire any right under a subsequent patent for the same invention, unless his first patent be repealed for some original defect, so that it might truly be said to be a void patent." In a subsequent case the same judge says more positively, "An inventor can have but a single valid patent for his invention; and the first he obtains, while it remains unrepealed, is an estoppel to any future patent for the same invention founded upon the general patent act. If the patentee could successively take out, at different times, new patents for the same invention, he might perpetuate his exclusive right during a century, whereas the patent act confines this right to fourteen years from the date of the first patent. If such a proceeding could obtain countenance, it would completely destroy the whole consideration derived by the public for the grant of the patent, viz. the right to use the invention at the expiration of the term specified in the original grant."" The same judge says, that "a grant of a subsequent patent for an invention, is an estoppel to the patentee to set up any prior grant for the same in 1 Barrett v. Hall, 1 Mason, 473. * Odiorne v. the Amesbury Nail Factory, 2 Mason, 28. vention, which is inconsistent with the terms of the last grant." But it seems rather that the prior patent should be an estoppel to set up a subsequent one; for the latter, according to the above doctrine, would be void as long as the former should remain unrepealed; and the same learned judge so lays down the doctrine in the case just cited. "A joint patent may well be granted upon a joint invention. There is no difficulty in supposing, in point of fact, that a complicated invention may be the gradual result of the combined mental operations of two persons acting together pari passu, in the invention. And if this be true, then as neither of them could justly claim to be the sole inventor in such a case, it must follow, that the invention is joint, and that they are jointly entitled to a patent. And so are the express words of the act of 1793, c. 156, s. 1, which declares, that if any person or persons shall allege that he or they have invented, &c., a patent shall be granted to him or them for the invention."'5 On the principles above stated, the same person cannot, at the same time, be the joint and separate patentee of the same thing. "A joint patent for an invention," says Mr. Justice Story, "is utterly inconsistent with several patents for the same inven Barrett v. Hall, 1 Mason, 473. * Odiorne v. Amesbury Nail Factory, supra, p. 213. ⚫ Barrett v. Hall, 1 Mason, 472. tion by the same patentees. For it is impossible, that any person can be, at the same time, the joint and the sole inventor of the. same invention. If, therefore, each of the joint patentees obtain a several patent for the same invention, as his own exclusive invention, and afterwards, without surrendering the first patent, they obtain a joint patent for the same as a joint invention, either the former sole patents are void, or the joint patent is void. For, besides the apparent inconsistency of the patents, if all could be sustained, then a recovery upon the joint patent would be no bar to a suit upon the several patents; and the parties might obtain a double recompense for the same infringement. There is an additional reason which deserves great consideration; and that is, that if sole and joint patents could be sustained by the same parties for the same invention, they might be successively taken out, so that the term of the exclusive right might be prolonged for a great length of time, instead of being limited to fourteen years. 998 Sec. II. PATENT FOR A COMBINATION, AND FOR THE SEPARATE THINGS COMBINED. But an invention of a combination, and that of a part or the whole of the things combined, may be Barrett v. Hall, 1 Mason, 473. joined in the same patent." The reason is that, though they are separate inventions combined in one thing, and may therefore be joined in the same patent without violating the rule about to be stated on the joining of different inventions in one patent, yet the taking of a patent for the combination, after taking one for the separate parts, is not a double patent, or, in other words, is not the patenting, under the claim of the combination, the same thing which had before been claimed under the separate parts; for a machine may be the combination of a number of others, each of which, when invented, might have been the subject of a patent, and yet the combination of them might also, when first made, be the subject of a patent, and accordingly, if both the parts or some of them, and the combination, be invented by the same person, he may specify these distinctly in the same patent, or, if he invent them at different times, he may make the parts the subject of one or more patents, and then take a patent for the combination. Sec. III.-DISTINCT INVENTIONS CANNOT BE JOINED IN THE SAME PATENT. The doctrine is equally clear that different, distinct and independent inventions cannot be joined in the 7 Per Story, J., Moody v. Fiske, 2 Mason, 112. |