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provement is usually for a part of an entire thing, and often at least, if not most frequently, for something, that cannot be used separately to any practical purpose. It is not necessary, then, that the subject of the patent or exclusive right should be capable of an independent separate use. But suppose the case of two persons, independently of each other, inventing the parts of a new machine, are they entitled to separate patents? Mr. Justice Story says, "if two persons invent several parts of a machine capable of a distinct use, then those parts might be considered as separate inventions, for which such inventor might perhaps be entitled to a separate patent."'15

This qualification that the inventions should be capable of a separate use, seems to present a pretty clear case of a right to separate patents. But if the parts belong essentially together, and are useless when separate, this is a plain case of joint invention; though the inventors may have had no communication with each other; and so a case in which separate patents cannot be taken out.

15 Stearns v. Barrett, 1 Mason, 153.

CHAPTER X.

Construction

Title of the Patent. Form. Difference in Form between English and American Patents. of Patents.

HAVING Considered what subjects of invention and discovery are patentable, and what party is entitled to a patent, and what things may be joined or separated, we come now to the inquiry, as to the mode of taking out a patent, and what steps and forms are necessary in order to secure the exclusive privilege granted by the patent acts. The principal subjects to be considered in this connexion, are the specification, the drawings, models, and specimens, the oath of the inventor, the petition, the payment of the tax or fee, the reference to arbitration in case of interfering claims, the letter patent, and the examination of the letter by the attorney general, and his certificate. It is proposed to notice here the different modes of granting patents in England and the United States, and as consequent upon this difference, a diversity in the rules of construction of patents. Unless this diversity is first noticed and kept in view, there will be some confusion and obscurity between the English and American cases on the subject of the specification.

The form of American patents is prescribed by the act of Congress of 1793, s. 1, which provides, among other things, that on a petition for the purpose, the secretary may cause letters patent to be granted, "reciting the allegations and suggestions of the said petition." Mr. Justice Washington ruled that a compliance with this requisition is material. In an action for an infringement of Evans's patent for the Hopperboy, it was objected that the patent did not recite the allegations and suggestions of the petition. Washington J. "If the allegations and suggestions of the petition are substantially recited, it will be sufficient. But in this case they are not." He said the patent gave no description of the hopperboy and its use, and the manner in which it worked. The petition gave a minute and full description of it, which ought to have been substantially recited. The English law contains no similar express provision, but the practice is to recite the allegations of the petition, and the provision of the American statute in this respect, is, no doubt, borrowed from the English practice.

In England the patent is granted before the specification is made, a certain time being allowed by the patent for enrolling the specification, varying from two to six months or longer, according to the circumstances, it being left to the discretion of the ex

1 Evans v. Chambers, 2 Wash. C. C. R. 125.

3

ecutive officers to fix the time. Though in one case in England Mr. Justice Grose is reported to have said, that the specification was fairly to be considered a part of the patent itself, the cases are entirely otherwise, and it is well settled there that the patent is distinct from the specification, and controls it in construction, and that the patentee cannot cover any thing by the specification which is not covered by the patent, or draw from the specification any construction whereby to comprehend in the patent any thing which would not be comprehended without recurrence to the specification. No position is better settled in English jurisprudence, and yet Mr. Justice Le Blanc intimates, in one case that if the specification is too large the patent is so too; that is, if you look into the specification and find that the invention is broader than the patent, or in other words that the inventor has taken out a patent for only a part of what he is entitled to, it is void. But this doctrine is certainly untenable in the English law. Under the English patents the specification generally limits the description in the patent, that is, it claims only a part of what is comprehended in the more general description in the patent.

28 T. R. 105.

* Campion v. Benyon, 3 Brod. & Bing. 5. The King v. Wheeler, 2 B. & Ald. 345; Bainbridge v. Wigley, Rep. of Arts, Sec. Ser. Vol. 27, p. 127; Rex v. Metcalf, 2 Stark. N. P. C. 249; Cochrane v. Smethurst, 1 Stark. N. P. C. 205.

⚫ Cochrane v. Smethurst, 1 Stark. 205.

In the United States, the doctrine is different on this subject, the specification being always drawn up before the patent is granted, and being referred to in the patent. It is well settled in our courts that it is a part of the patent, in the common form of which, the specification being annexed, is expressly referred to as "a part of these presents." Accordingly Mr. Justice Story says, "Under the patent laws of the United States, the specification forms a part of the patent, and may control the generality of its terms; in England the specification is separate from it."5

This diversity in the law in England and the United States, will be found to be of material importance in the construction of patents, and it will appear very clearly that, from the above circumstance, the jurisprudence in the United States is free from some of the embarrassments to which it is subject in England.

Both in English and American patents a title is necessarily given to the invention, whereby it is patented. The American patent act of 1793, s. 1, provides, that, on a petition for the purpose, the secretary of state may cause letters patent to be granted, “giving a short description of said invention or discovery." This short description is usually the title of the invention in the words of the patentee, either prefixed

› Barrett v. Hall, 1 Mason, 477; Whittemore v. Cutter, 1 Gallison's R. 437.

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