§ 39. With regard to the second question which arises under our statute, upon the clauses which provide against the prior use and knowledge of the thing, it may perhaps be considered that those provisions are cumulative upon the previous requisition that the patentee shall be the first inventor. The statute requires that the patentee shall make oath that he verily believes himself to be the original and first inventor, and that he does not know or believe, that the thing, art, machine, composition, or improvement was ever before known or used;1 and it provides that the negative of these propositions may be proved in defence against the patent. In the case supposed, that of an art long lost, but of which specimens of the manufacture can be proved to be or to have been in existence, the patent of a subsequent discoverer of an art of making the same or a similar thing, would be prima facie evidence that he is the first discover of his particular process of making the thing. The negative is then to be shown in defence; and whether this can be shown by merely producing the thing, without showing the process by which it was formerly made, depends upon the force to be given to the words "use and knowledge." If those words mean merely that the prior use of the thing itself, or the

1 Act of 1836, § 6.

2 Ibid. § 15.

add to his patent, on the the way of hearing of the

3 The only evidence which the plaintiff can issue of novelty, is that of persons who were in invention not having heard of it before. Upon this point, Sir N. C. Tindall, C. J., said: "You cannot prove a negative strictly. You can only do so by exhausting the affirmative instances of it, by calling persons who have never heard of it or seen it, and the more those persons are in the way of hearing of it or seeing it, if it had existed, the stronger is that exhausting evidence, if I may so call it, in its effect and value with the jury." Cornish v. Keene, Webs. Pat. Cas. 509. In Washburn v. Gould, 3 Story's R. 122, 142, Mr. Justice Story instructed the jury upon the question of invention, that it was for the defendant to show beyond a reasonable doubt that there was a prior invention to the plaintiff's, because the plaintiff has a right to rest upon his patent for his invention till its validity is overthrown. If there was a reasonable doubt as to the priority of invention, the plaintiff was entitled to the benefit of that doubt.

prior knowledge of its existence, is, in all cases, an answer to the allegation of the patentee, that he is the first inventor or discoverer, without showing that his process is the same as that by which the thing was formerly produced, then, there is no occasion to inquire further. But if, on the contrary, those words are to be taken with reference to the character of the subject-matter, in each case, then it is apparent that there may be cases where, as in such arts as those above referred to, the invention or discovery is not, strictly speaking, the thing itself, but a process of making that thing. The words of the statute must be taken with separate application to each of the subjects recited as the proper subject-matters of a patent. The language is, that "he is the original and first inventor of the art, machine, composition, &c., and that he does not know or believe that the same was ever before known or used;"1 and in the subsequent clause, the "thing patented" is declared to be subject to the defence, that the patentee was not "the original and first inventor or discoverer" or that "it" had been described in some public work, or had been in public use.2 The "thing patented" is the antecedent of it," and in the case of an art, this may be, not the product itself, but the process of producing it; and where it cannot be shown that the process invented by the patentee has been "known" or "used" before, the mere production in evidence of a similar manufacture, produced at a former period by an unknown art, does not negative the allegation, that the patentee invented or discovered the art by which he has produced that manufacture.3

§ 40. In England the courts have so construed the expres sion, "first inventor," as to admit of a valid patent in a variety of cases, where the patentee was not absolutely the first person to make or discover the thing; as where it had been made previously by another person who had concealed

1 § 6.

2

$15.

3 See a learned note on the bearing of the English statute on this question, by Mr. Webster, Pat. Cas. 718, 719, 720.

it from every one else;1 and generally, in England, the question whether the patentee is the true and first inventor or not, depends on whether he borrowed the invention from a source open to the public.2 And since the first edition of this work was published, a decision has been made in the Supreme Court of the United States, which adopts a similar construction, for our statute. A person had made and used an article similar to the one which was afterwards patented, but had not made his discovery public, using it simply for his own private purpose, and without having tested it so as to discover its usefulness; and it had then been finally forgotten and abandoned: it was held that under such circumstances, the patentee was to be regarded as the "first inventor." 3

1 Dolland's Case, 2 H. Blackst. 470, 487. Davies's Pat. Cas. 172.

2 Walton e. Potter, Webs. Pat. Cas. 592.

3 Gayler v. Wilder, 10 Howard, 477. In this case, Mr. Ch. Justice Taney delivering the opinion of a majority of the Court, said: "It appears that James Conner, who carried on the business of a stereotype founder in the city of New York, made a safe for his own use, between the years 1829 and 1832, for the protection of his papers against fire; and continued to use it until 1838, when it passed into other hands. It was kept in his countingroom and known to the persons engaged in the foundry; and after it passed out of his hands, he used others of a different construction.

It does not appear what became of this safe afterwards. And there is nothing in the testimony from which it can be inferred that its mode of construction was known to the person into whose possession it fell, or that any value was attached to it as a place of security for papers against fire; or that it was ever used for that purpose.

Upon these facts the court instructed the jury, that if Conner had not made his discovery public, but had used it simply for his own private purpose, and it had been finally forgotten or abandoned, such a discovery and use would be no obstacle to the taking out of a patent by Fitzgerald or those claiming under him, if he be an original, though not the first, inventor or discoverer.'

The instruction assumes that the jury might find from the evidence that Conner's safe was substantially the same with that of Fitzgerald, and also prior in time. And if the fact was so, the question then was, whether the patentee was the original and first inventor or discoverer,' within the meaning of the act of Congress.

The act of 1836, ch. 357, § 6, authorizes a patent where the party has dis

§ 41. We have already seen, that there are two issues, with respect to novelty; one, whether the patentee is the first in

covered or invented a new and useful improvement, 'not known or used by others before his discovery or invention.' And the 15th section provides that, if it appears on the trial of an action brought for the infringement of a patent that the patentee was not the original and first inventor or discoverer of the thing patented,' the verdict shall be for the defendant.

Upon a literal construction of these particular words, the patentee in this case certainly was not the original and first inventor or discoverer, if the Conner safe was the same with his, and preceded his discovery.

But we do not think that this construction would carry into effect the intention of the legislature. It is not by detached words and phrases that a statute ought to be expounded. The whole act must be taken together, and a fair interpretation given to it, neither extending nor restricting it beyond the legitimate import of its language, and its obvious policy and object. And in the 15th section, after making the provision above mentioned, there is a further provision, that, if it shall appear that the patentee at the time of his application for the patent believed himself to be the first inventor, the patent shall not be void on account of the invention or discovery having been known or used in any foreign country, it not appearing that it had been before patented or described in any printed publication.

In the case thus provided for, the party who invents is not, strictly speaking, the first and original inventor. The law assumes that the improvement may have been known and used before his discovery. Yet his patent is valid if he discovered it by the efforts of his own genius, and believed himself to be the original inventor. The clause in question qualifies the words before used, and shows that by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public. If the foreign invention had been printed or patented, it was already given to the world and open to the people of this country, as well as of others, upon reasonable inquiry. They would, therefore, derive no advantage from the invention here. It would confer no benefit upon the community, and the inventor therefore is not considered to be entitled to the reward. But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the people of this country be unable to profit by it. The means of obtaining knowledge would not be within their reach; and, as far as their interest is concerned, it would be the same thing as if the improvement had never been discovered. It is the inventor here that brings it to them, and places it in their possession. And as he does this by the effort of his own genius, the law regards him as the first and original inventor, and protects his patent, although the improvement had in fact been invented before, and used by others.

ventor; the other, whether the invention, at the time of his application, be new as to public use and exercise. These

So, too, as to the lost arts. It is well known that centuries ago discoveries were made in certain arts, the fruits of which have come down to us, but the means by which the work was accomplished are at this day unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if any one now discovered an art thus lost, and it was a useful improvement, that, upon a fair construction of the act of Congress, he would be entitled to a patent. Yet he would not literally be the first and original inventor. But he would be the first to confer on the public the benefit of the invention. He would discover what is unknown, and communicate knowledge which the public had not the means of obtaining without his invention.

Upon the same principle and upon the same rule of construction, we think that Fitzgerald must be regarded as the first and original inventor of the safe in question. The case as to this point admits, that, although Conner's safe had been kept and used for years, yet no test had been applied to it, and its capacity for resisting heat was not known; there was no evidence to show that any particular value was attached to it after it passed from his possession, or that it was ever afterwards used as a place of security for papers; and it appeared that he himself did not attempt to make another like the one he is supposed to have invented, but used a different one. And upon this state of the evidence the court put it to the jury to say, whether this safe had been finally forgotten or abandoned before Fitzgerald's invention, and whether he was the original inventor of the safe for which he obtained the patent; directing them, if they found these two facts, that their verdict must be for the plaintiff. We think there is no error in this instruction. For if the Conner safe had passed away from the memory of Conner himself, and of those who had seen it, and the safe itself had disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. The public could derive no benefit from it until it was discovered by another inventor. And if Fitzgerald made his discovery by his own efforts, without any knowledge of Conner's, he invented an improvement that was then new, and at that time unknown; and it was not the less new and unknown because Conner's safe was recalled to his memory by the success of Fitzgerald's.

We do not understand the Circuit Court to have said that the omission of Conner to try the value of his safe by proper tests would deprive it of its priority; nor his omission to bring it into public use. He might have omitted both, and also abandoned its use, and been ignorant of the extent of its value; yet, if it was the same with Fitzgerald's, the latter would not, upon such grounds, be entitled to a patent, provided Conner's safe and its