INDEX.

I. Of the forms and subjects of Patents; of the invention or discovery; of the utility of the invention; and of the interpretation and construction of letters patent.

1. Although it is not settled whether, under the general Patent law, improvements on different machines can be comprehended in the same patent, so as to give a right to the exclusive use of the several machines in combination; yet the act of January 21st, 1808, ch. 117, for the relief of Oliver Evans, authorizes the issuing to him of a patent for his invention, discovery, and improvements in the art of manufacturing flour, and in the several machines applicable to that purpose. Evans v. Eaton, 3 Wheat. 454, 1 Peters, 322.

2. Under the sixth section of the Patent law of February 21, 1793, ch. 156, if the thing secured by patent had been in use, or had been described in a public work, anterior to the supposed discovery, the patent is void, whether the patentee had a knowledge of this previous use or description or not. Ibid, 1 Peters, 322, S. C.

3. A party cannot entitle himself to a patent for more than his own invention; and if the patent be for the whole of a machine, he can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. Evans v. Eaton, 7 Wheat. 356.

4. If the combinations existed before in machines of the same nature, up to a certain point, and the party's invention consists in adding some new machinery or some improved mode of operation to the old, the patent should be limited to such improvement; for if it includes the whole machinery, it includes more than his invention, and therefore cannot be supported. Ibid.

5. Where a patent is taken out for an improvement, the specification ought to describe what the improvement is, and the patent should be limited to such improvement. Ibid. 1 Peters, 322. S. C. 3 Wash. C. C. R. 443.

6. The taking of the oath required by the Patent act, previous to the issuing a patent, is but a pre-requisite to the granting of a patent, and in no degree essential to its validity; and if not taken, still the patent is valid. Whittemore v. Cutter, 1 Gallis. 429.

7. The first inventor is entitled to the benefit of his invention, if he reduce it to practice and obtain a patent therefor: and a subsequent inventor cannot, by obtaining a patent, oust the first inventor of his right, or maintain an action against him for the use of his own invention. Woodcock v. Parker et al. 1 Gallis. 438. Bedford v. Hunt, 1 Mass. 302. Evans v. Weiss, 2 Wash. C. C. R. 342.

8. If the machine for which the patent was obtained substantially existed before, and the plaintiff made an improvement only therein, he is entitled to a patent for the improvement only, and not for the whole machine: and when, under such circumstances, the patent comprehends the whole machine, it is too broad, and therefore void. Ibid.

9. It is not necessary to defeat the plaintiff's patent, that a machine should previously have existed in every respect similar to his own; for a mere change of former proportions will not entitle a party to a patent. Ibid.

10. If he claim a patent for a whole machine, it must in substance be a

new machine; that is, it must be a new mode, method, or application of mechanism to produce some new effect, or to produce an old effect in a new way. Ibid.

11. If one who has invented merely an improvement, take out a patent for the whole machine, his patent is too broad, and utterly void. Whittemore v. Cutter, 1 Gallis. 476.

12. When a specific machine already exists, producing certain effects, if a mere addition is made to such machine, to produce the same effect in a better manner, a patent cannot be taken for the whole machine, but for the improvement only. Ibid.

13. In like manner, if to an old machine some new combinations be added, to produce new effects, the right to a patent is limited to the new combinations. Ibid.

14. A patent can, in no case, be for an effect only, but for an effect produced in a certain manner, or by a peculiar operation. For instance, no patent can be obtained for the admeasurement of time, or the expansive operations of steam; but only for a new mode or new application of machinery to produce these effects: and therefore if new effects are produced by an old machine, in its unaltered state, no patent can be legally supported, for it is a patent for an effect only. Ibid.

15. On the other hand, if well known effects are produced by machinery, in all its combinations entirely new, a patent may be claimed for the whole machine. Ibid.

16. So if the principles of the machine are new, either to produce a new or an old effect, the inventor may well entitle himself to the exclusive right of the whole machine. Ibid.

17. By the principles of a machine, as these words are used in the statute, is not meant the original elementary principles of motion which philosophy and science have discovered, but the modus operandi, the peculiar device or manner of producing any given effect. The expansive power of steam and the mechanical powers of wheels have been understood for ages; yet a machine may well employ either the one or the other, and yet be so entirely new in its mode of applying them, as to entitle a party to his patent for his whole combination. Ibid.

18. It is not sufficient to give validity to a patent that the specific machine, with all its combinations and effects, did not exist before; for if the same effects were all produced by the same application of machinery in separate parts, and the party merely combined them together, or added a new effect, such combination would not sustain the patent; as the artist who added a second hand or repeater to a watch, could not have been entitled to a patent for the whole watch. Ibid.

19. The original inventor of a machine is exclusively entitled to a patent for it. Mere colorable differences, or slight improvements, will not affect his rights. Odiorne v. Winkley, 2 Gallis. 51.

20. If another person invent an improvement on a machine, he can entitle himself to a patent for the improvement only, and does not thereby acquire a right to patent and use the original machine: and if he obtain a patent for the whole machine, and not for the improvement only, his patent is too broad, and therefore void. Ibid.

21. The material question in patent causes is, not whether the same elements of motion, or the same component parts are used, but whether the given effect is produced substantially by the same mode of operation, and the same combination of powers in both machines. Mere colorable differences or slight improvements cannot shake the right of the original inventor. Ibid.

22. By the expression "true inventor" in the statute is undoubtedly meant the sole and exclusive inventor; for if the machine were the joint invention of several persons, neither of them could claim to be the true inventor, having an exclusive right to the patent, but the interest would be a joint or common interest in the whole. In such a case, therefore, if a party were to obtain a patent for the invention, having sworn that he was the true inventor, he would, in the language of this act, obtain it upon "false suggestion," and as such false suggestion would be a surprise and fraud upon the Government, it might well also be declared to be obtained "surreptitiously.' Stearnes v. Barret, 1 Mason, 153.

23. The law allows a party a patent for a new and useful invention; and by "useful invention" is meant, not an invention, in all cases superior to the modes now in use for the same purpose, but useful in contradistinction to frivolous and mischievous inventions. Lowell v. Lewis, 1 Mason, 182.

24. As among inventors, he who is first in time has a prior right to the patent for the invention. Ibid.

25. By "useful invention" in the Patent act of the United States, is meant an invention which may be applied to a beneficial use in society, in contradistinction to an invention which is injurious to the morals, the health, or the good order of society. Bedford v. Hunt et al., 1 Mason, 302. Kneas v. Schuylkill Bank, 4 Wash. C. C. Rep.

26. It is not necessary that the invention should be of such general utility as to supersede all other inventions previously in practice, to accomplish the same purpose. Ibid, 1 Mason, 302.

27. Nor is it important that its practical utility should be very limited, for the law does not look to the degree of utility. Ibid.

28. A joint patent may well be for a joint invention, but not for a sole invention of one of the patentees: if each of the patentees obtain separate patents for the same invention, as his exclusive invention, and afterwards both obtain a joint patent for the same as their joint invention, they are estopped by the joint patents from asserting any title under the several patents. Barrett et al. v. Hall et al., 1 Mason, 447.

29. 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 from asserting the invention to be joint, but the former patents are very strong evidence against a joint invention. Ibid.

30. A patent cannot embrace various distinct improvements or inventions, but in such case the party must take out separate patents: and if the patentee has invented certain improved machines, which are capable of a distinct operation, and also has invented a combination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines, for the inventions are as distinct as if the subjects were entirely different. Ibid.

31. An inventor cannot, under the Patent laws of the United States, have two subsisting valid patents at the same time, for the same invention. The first that he obtains, while it remains unrepealed, is an estoppel to any future patent for the same invention, founded upon the general Patent act. Odiorne v. The Amesbury Nail Factory, 2 Mason. 28.

32. An invention or improvement, for which a patent has been obtained, must be useful, within the meaning of the Patent law, or the patent is void. Langdon v. De Groot et al., 1 Paine, 203.

33. Whether the usefulness of an invention be matter of fact to be left to the jury, or whether the court is to decide it as matter of law, Query? Ibid.

34. It seems, however, that if, on the plaintiff's own showing, the invention appears to be useless, and an imposition on the public, the court should so direct the jury. Ibid.

35. An invention of an ornamental mode of putting up thread, which gave it no additional value, but merely made it sell more readily at retail, and for a larger price, is not a useful invention within the meaning of the Patent law. Ibid.

36. Under the Patent act of February 21st, 1793, c. 156, a patent is valid, although the invention may have been in use for years anterior to the date of the patent, if the patentee was the inventor. Goodyear v. Matthews, 1 Paine, 300.

37. A patent for an entire machine is valid, although the invention consists only of an improvement on such machine; but the patentee is entitled to an exclusive use of no more than his improvement. Ibid.

38. The first section of the Patent act of February 21st, 1793, c. 156, construed in connexion with the other sections of the act, means that the invention should not be known or used as the invention of any other person than the patentee, before the application for the patent. Morris v. Huntingdon, 1 Paine, 348.

39. If the invention has got into use while the inventor was practising upon it, with a view to improve it before applying for a patent, such use does not invalidate the patent; and the motive for delay is a question for the jury. Ibid.

40. To obtain a patent under the laws of the United States, the party must be the original inventor in reference to the whole world; it is not sufficient that he be the first inventor within the United States. Reutgers v. Kanowers et al., 1 Wash. C. C. R. 168. Evans v. Eaton, 1 Peters' C. C. R. 323.

41. One who is the inventor of an improvement in the principle of a machine has the same right to the use of it as the inventor of the original machine had to that: aliter, if it be only in the form or proportion. Ibid. Gray et al. v. James et al., 1 Peters' C. C. R. 394.

42. It is a sufficient objection to the validity of a patent, that the allegations and suggestions of the petition are not recited in it. Evans v. Chambers, 2 Wash. C. C. R. 125.

43. If two machines be substantially the same, operating in the same manner to produce the same result, though they vary in forms, proportions, and degrees of utility, they are the same in principle, and the discoverer of the latter is entitled to a patent only for an improvement. Evans v. Eaton, 3 Wash. C. C. R. 443.

44. These are defects in the plaintiff's title, apparent upon the face of the documents on which the title is founded. On the same ground, defendant may object that the patent is broader than the discovery; that it is for an improvement which is not distinguished in the specification from the original invention; that the suggestions of the petition are not recited substantially in the patent. Kneass v. The Schuylkill Bank, 4 Wash. C. C. R.

45. A mistake of the word painting for printing in the patent is immaterial, if explained by other parts of the patent and specification, so that there can be no mistake. Ibid.

46. It is no objection to the validity of a patent that the mode of performing an operation, common and well known, is not described. Ibid.

47. The patent granted to O. Evans contains no grant of a right to the several machines, but is confined to the improvements in the art of manufacturing flour by those machines; although the act of Congress, authorizing the grant of the patent, authorized it to be issued for the several machines, as well as for the entire improvement. Evans v. Eaton, 1 Peters' C. C. R. 322.

48. A patent may be for a new and useful art; but it must be practicable

and explicable, and referable to something which may prove it to be useful. Ibid.

49. A machine or an improvement may be new and entitled to a patent, although parts of it were before known and used. Ibid.

50. The combination of old machines to produce a new and useful result, is a discovery for which a patent may be granted. Ibid.

51. Where two machines are substantially the same, and operate in the same manner to produce the same result, they must be in principle the same. Gray et al. v. James et al., 1 Peters' C. C. R. 394.

52. A patent "for an improvement in the art of making nails, by means of a machine which cuts and heads the nail at one operation," is not a grant of an abstract principle, nor is it the grant of the different parts of any machine, but of an improvement applied to a practical use, effected by a combination of various mechanical powers to obtain a new result. Ibid.

53. It is not sufficient to invalidate a patent that the specification is materially defective, unless the patentee intended by concealment of parts of the machine to deceive; and where practical mechanics are enabled to supply any omission in the specification, such an intention will not be presumed. Ibid.

54. By useful invention in the Patent act of the United States, is meant an invention which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the moral health or good order of society. Bedford v. Hunt, 1 Mason, 302.

55. It is of no consequence whether its utility be general or limited to a few cases; and it is not necessary to establish, that the invention is of such general utility, as to supersede the other inventions now in practice to accomplish the same purpose. Ibid.

56. Under the Patent laws of the United States, the applicant for a patent must be the first, as well as the original, inventor; and a subsequent inventor, although an original inventor, is not entitled to a patent, if the invention is perfected and put into actual use by the first and original inventor; and it is of no consequence whether the invention is extensively known or used, or whether the knowledge or use thereof is limited to a few persons, or even to the first inventor himself, or is kept a secret by the first inventor. Reed v. Cutter, 1 Story, 590.

57. The decision in Dolland's case, that a first and original inventor, who had kept his invention a secret, so that the public had no benefit thereof, could not defeat the patent of a subsequent original inventor, may be a correct exposition of the Statute of Monopolies (Stat. of 21 James I, ch. 3, § 6); but it is not applicable to the Patent Laws of the United States. Ibid.

58. The language of the Patent act of 1836, ch. 357, § 6, "not known or used by others before his or their discovery thereof," does not require that the invention should be known or used by more than one person, but merely indicates that the use should be by some other person or persons than the patentee. Ibid.

59. Under the Patent act of 1836, (ch. 357, § 15,) an inventor, who has first actually perfected his invention, will not be deemed to have surreptitiously or unjustly obtained a patent for that which was in fact invented by another, unless the latter was, at the time, using reasonable diligence in adapting and perfecting the same; yet he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has in fact first perfected the same, and first reduced the same to practice in a positive form. Ibid.

60. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to