Lapas attēli
PDF
ePub

will accomplish the same end, he may unite them in one patent, as being distinct modes by which he contemplates the

the Court, that the Court were treating of a case, where each of the patented machines might singly have a distinct and appropriate use and purpose, unconnected with any common purpose, and therefore each was a different invention. In Moody v. Fiske, 2 Mason, 112, 119, the judge alluded still more closely to the distinction, and said: 'I wish it to be understood, in this opinion, that though several distinct improvements in one machine may be united in one patent; (yet) it does not follow, that several improvements in two different machines, having distinct and independent operations, can be so included; much less, that the same patent may be for a combination of different machines, and for distinct improvements in each.' It is perhaps impossible to use any general language in cases of this sort, standing almost upon the metaphysics of the law, without some danger of its being found susceptible of an interpretation beyond that which was then in the mind of the Court. The case intended to be put in each of these cases was of two different machines, each applicable to a distinct object and purpose, and not connected together for any common object or purpose. And, understood in this way, it seems to me, that no reasonable objection lies against the doctrine.

Construing, then, the present patent to be a patent for each machine, as a distinct and independent invention, but for the same common purpose, and auxiliary to the same common end, I do not perceive any just foundation for the objection made to it. If one patent may be taken for different and distinct improvements made in a single machine, which cannot well be doubted or denied, how is that case distinguishable in principle from the present? Here there are two machines, each of which is or may be justly auxiliary to produce the same general result, and each is applied to the same common purpose. Why, then, may not each be deemed a part or improvement of the same invention? Suppose the patentee had invented two distinct and different machines, each of which would accomplish the same end, why may he not unite both in one patent, and say, I deem each equally useful and equally new, but, under certain circumstances, the one may, in a given case, be preferable to the other? There is a clause in the Patent Acts, which requires that the inventor, in his specification or description of his invention, should "fully explain the principle and the several modes, in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions." Now, this would seem clearly to show that he might lawfully unite in one patent all the modes, in which he contemplated the application of his invention, and all the different sorts of

application of his invention, one of them being preferable in certain circumstances to the other, and vice versa. In this way the unity of the subject-matter is preserved; for the subject matter consists, in such a case, of the object to be accomplished, and of the several modes by which it may be accomplished.

§ 112. There is also another aspect in which what we have called the unity of a patent must be preserved. It is impossible that any invention should have been produced both as the separate invention of a party, and as the joint invention of the same party and another or others. It must have been either the separate and sole invention of the party, or the joint invention of the same party, acting with others. A joint invention may be a good subject-matter of a patent, for the statute supposes the case of a joint invention, and provides for it; but if an invention, which, in point of fact, was made by more than one person, is made the subject of a patent by any one of them, he cannot take the oath required by the statute,

machinery, or modifications of machinery, by which, or to which it might be applied; and if each were new, there would seem to be no just ground of objection to his patent, reaching them all. (Act of 1793, ch. 55, § 3; Act of 1836, ch. 357.) Afortiori, this rule would seem to be applicable, where each of the machines is but an improvement or invention conducing to the accomplishment of one and the same general end.

But let us take the case in another view, (of which it is certainly susceptible,) and consider the patent as a patent, not for each machine separately, but for them conjointly, or in the aggregate, as conducing to the same common end; if each machine is new, why may they not both be united in one patent, as distinct improvements? I profess not to see any good reason to the contrary. If they may be so united, and were both new, then, upon the principles established in Moody v. Fiske, (2 Mason's R. 112, 117, 118, 119,) it is not necessary, in order to maintain a suit, that there should be a violation of the patent throughout. It is sufficient if any one of the invented machines or improvements is wrongfully used; for that, pro tanto, violates the patent. In this view, therefore, the use of the cutter of the inventor, without any use of the saw, would be a sufficient ground to support the present bill, if it were not otherwise open to objection." See also Root v. Ball, 4 M'Lean, 177.

declaring himself to be the original and first inventor, or, if he does take it, his patent will be void. On the other hand, if his invention was the sole production of one party, a joint patent for it encounters the same objection. It is necessary, therefore, in all cases, that the subject-matter should be claimed as the sole invention of one party, if such is the fact, or as the joint invention of two or more parties, if it was invented by more than one.1

1 In Barrett v. Hall, 1 Mas. 447, 472, the reasons are thus stated: "In the first place, 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 Patent Act, (Act of 21st February, 1793, ch. 11, § 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.

In the next place, a joint patent cannot be sustained upon a sole invention of either of the patentees, for the Patent Act gives no right to a patent, except to the inventors, and requires an oath from the party, who claims a patent, that he is the true inventor.

In the next place, a joint patent for an invention is utterly inconsistent with several patents for the same invention 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. I am, therefore, clearly of opinion, that a grant of a subsequent patent for an invention is an estoppel to the patentee to set up any

§ 113. An inventor cannot have two subsisting valid patents, at the same time, for the same invention. The first patent, while it remains in full force and unrepealed, is an estoppel to any subsequent patent by the same person for the same invention.1

prior grant to the same invention, which is inconsistent with the terms of the last grant. And I have very great doubts, whether where 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 the next place, if several patents are taken out by several patentees for a several invention, and the same patentees afterwards take out a joint patent for the same as a joint invention, the parties are not absolutely estopped by the former patents from asserting the invention to be joint; but the former patents are very strong evidence against the joint invention. The reason of this doctrine is, not that estoppels are odious in the law, but that a party may innocently mistake, as to the extent of his own claims, and though a sole and joint invention, by the same persons of the same thing, cannot exist in fact, yet a party may suppose that he has invented, what in truth has been partly suggested by another mind."

1 Odiorne v. The Amesbury Nail Factory, 2 Mason, 28. Barrett v. Hall, 1 Mason, 447, 473.

[ocr errors]

CHAPTER IV.

THE PERSONS ENTITLED TO TAKE, RENEW, OR EXTEND PATENTS.

§ 114. We have seen that the person or persons entitled to receive a patent can only be the inventor or inventors of the thing proposed to be patented. Our statute does not admit of a patent for the introduction of an invention from abroad, however meritorious. The patentee must be the inventor, and the original and first inventor. But where the inventor has died before making application for a patent, the statute provides that the right of applying for and obtaining a patent shall devolve on his executor or administrator, in trust for his heirs or devisees, and that the oath or affirmation of original invention shall be varied accordingly.2

§ 115. As the statute is silent on the subject of citizenship, it follows, that an alien, who is the first and original inventor of any patentable subject, may apply for and obtain a patent, in the same manner as a citizen of the United States. The eighth section of the Act of 1836, c. 357, seems to contemplate the case of an application by an alien, by providing that the fact of a patent having been previously taken out in a foreign country, shall not debar the original and true inventor from a patent in the United States, where such foreign patent has not been taken out, and the invention published more than six months next before the filing of the specification and

1 Reed v. Cutter, 1 Story's R. 590, 596; Act of 1836, c. 357, § 6. 2 Act of 1836, c. 357, § 10.

[ocr errors]
« iepriekšējāTurpināt »