in Bircot's case it was also resolved that if the new manufacture be substantially invented according to law, yet no old manufacture in use before can be prohibited. The question then would appear to be one of fact; was the manufacture said to be prohibited in use before was it in actual use? not was it so included or involved in that which was done or published before, that its use might be conceived to have been contemplated. The words of the proviso make this clear and distinct; it forbids to use or imitate any invention heretofore invented and found out." The proviso in effect says this the beforementioned grant shall not extend to give you the exclusive use of anything which was the common property of the public at the time of the grant, or of anything in which another had already an exclusive privilege. And it is material to observe with respect to the above proviso, that it differs in form and in legal effect from the other provisos contained in the letters patent; it is not, like them, a condition upon which the grant is made, and which, if not strictly satisfied, the grant will be void or voidable, but it is a proviso for the protection of prior patentees and of the public, declaring that their rights shall not be interfered with under color of the subsequent grant. This clause would in all probability be a good plea in confession and avoidance, or a ground for repealing letters patent which had been used in fact to the prejudice of prior patentees, but it would appear to differ very materially from the other provisos above referred to. In effect, it seems to amount to a declaration that the said letters patent shall not be an answer to any action by a party for an infringement on his prior patent.

Commenting on that portion of the argument of Pollock, Richards, Smith and Webster which contends that any change in the order or mode of a mere process constitutes a new manufacture, Webster says (1 Web. P. C. 401): A remarkable instance of this kind has recently occupied the attention of the Court of Queen's Bench in the case of Helliwell v. Dearman. The object of the plaintiff's invention was the rendering fabrics waterproof, but at the same time leaving such fabrics pervious to air. It appeared that before the plaintiff's patent a solution of alum and soap was made, and the fabric to be rendered waterproof was immersed therein. By this means a waterproof surface was produced on the fabric, but it was not of a lasting nature; it wore off. According to the plaintiff's invention, the fabric is immersed first in a mixture of a solution of alum with some carbonate of lime, and then in a solution of soap. The effect is that by the first immersion every fibre becomes impregnated with the alum, the sulphuric acid of the alum being neutralized by the carbonate of lime, and by the second immersion the oily quality rendering it repellent of water is given to every fibre, so that each fibre is rendered waterproof instead of the surface only, but the whole fabric continued pervious to air.

Webster (1 Web. P. C. 404, note) cites a decision by Tindal, C. J. (Jones v. Heaton), as having held that "the patentee is bound to give in his specification the most improved state of his invention up to the time of enrolling his specification."

BERRY v. CLAUDET.

Queen's Bench, June 25, 1842.

(21 Newton Lon. Jour. 57.)

Effect of Assignment on License. Covenant.

Covenant to refund to licensee, on assignment of patent, held not to imply a covenant on his part to surrender up license against his desire.

Demurrer to declaration in covenant.

The action was brought by Beard, proprietor, in the name of Berry, original patentee, against Claudet, to compel him to give up a license to use the invention. The license had been granted previous to the assignment of the patent to Beard, so that the patent right passed subject to it. There was, however, a clause in the license empowering Claudet to relinquish the license and to recover the purchase money in the event of the patent being sold.

DENMAN, C. J. This was an action of covenant against defendant for not reselling and transferring to plaintiff or his principal all his interest under an indenture of license to exercise a patent. There is no express covenant to that effect in the indenture, but the plaintiff contends that there is an implied covenant, it being the manifest intention of the parties, apparent upon the face of the indenture, that the defendant should, under the circumstances, resell and transfer.

By the indenture the plaintiff, as agent to two French gentlemen (as trustee for whom he had obtained a patent), in consideration of £200, granted to the defendant a license to use the patent for the remainder of the term. The indenture contains a covenant that if the plaintiff should grant licenses to other persons on terms more advantageous than those granted to the defendant, he would pay the defendant such sum of money as would put him on an equality with those persons; and then the indenture proceeds: "Provided, and it is hereby further agreed and de

clared, that if, at any time during the continuance of the letters patent and the license hereby granted, any contract or agreement should be made or entered into, by or on behalf of the said Daguerre and Niepce, with the Government of Great Britain, or with any person whatsoever, for the purchase of the rights and privileges granted by the letters patent, it shall be compulsory upon the said Daguerre and Niepce, the executors, administrators and assigns, to repurchase the interest hereby granted to the said Claudet, or such other persons as aforesaid, by paying to the said Claudet, or to such other persons as aforesaid, the consideration money paid by Claudet for the purchase of the license hereby granted, and giving him or her full power to dispose of and resell for his or their benefit all the stock and apparatus, plates, designs or tracings, he or she may then have on hand unsold."

The declaration then states that the rights and privileges granted have been disposed of to a person named Beard ; that the plaintiff and his principals have been ready to repurchase by paying to the defendant the consideration money, and giving him full power to dispose of the stock on hand, but that the defendant had refused to resell or transfer his interest upon the terms aforesaid.

The cases of Saltoun v. Houstoun, 1 Bing. 433, and Sampson v. Easterly, 9 Barn. & C. 505; aff'd 6 Bing. 644, were cited to show that the court will collect from all the words of an instrument what is the intention of the parties, and that no particular words or expressions are necessary to constitute a covenant. Other cases were also referred to to illustrate the same doctrine, as to which no doubt whatever can be entertained.

Acting upon that doctrine, and looking to the whole of this indenture, we are satisfied the intention of the parties was to make the repurchase of the defendant's license by the payment of the consideration money compulsory upon the granter of the license, Daguerre and his colleague, only; and the proviso was intended for the benefit of the defendant, and was not meant to be compulsory on him ; and that he may, if he please, relinquish it.

We are therefore of opinion that there was no covenant

expressed or implied.

Judgment for defendant.

SMITH v. WATSON.

Northern Circuit, Liverpool, Aug. 10, 1842.

(21 Newton Lon. Jour. 138.)

Novelty.

Andrew Smith's patent for wire rope standing rigging sustained.

Trial of action for infringement.

There were two patents in suit granted to the plaintiff, Andrew Smith, engineer and patentee of the wire rope in 1835 and 1836. First patent was for invention of a new standing rigging and the second for the invention of an improvement on the first.

Defendant pleaded: 1. That plaintiff was not the true inventor; 2. That the inventions were not manufactures; 3. That the inventions were of no use; 4. That the inventions were not new as to the public use; 5. That the specifications were not sufficient; 6. That the specifications were not duly enrolled; and 7. That defendant did not infringe the patents.

Hindmarch, for the plaintiff, compared the properties of the standing rigging with that previously manufactured, claiming a superiority in that patented both as regards lightness of weight and diminution of bulk, which was important in presenting less surface to the wind. Another advantage was that it was not affected by moisture. It appeared that for standing rigging a series of iron wires werc laid in a straight or parallel line or salvage fashion, the tension, which in no way diminishes the size of the rope or lengthens the same, and which was necessary to obtain an equal strength, being acquired by application of machinery

to that object. The rope thus formed is then saturated with a solution of india-rubber, and the interstices so filled up, it is then "parcelled" or covered with a binding of woollen list, so as to exclude the moisture and to protect the wires from oxidation; this being done, the rope is "served over" or bound round with spun yarn, so that when finished it represents the appearance of the ordinary hempen rope, with the exception of its being one half the size of that of hemp. He was informed that one of the grounds of defence was that lines or strings of hemp, forming a rope or rigging of a similar construction to that of the wire rope, had been used, such lines or strings having been "served," as with the wire rope or rigging, and thus that there was no novelty in the invention; but he would be prepared to show, and it was perhaps a question for the court to determine, whether the application of wire, as in this case, was not a "manufacture" under the act, inasmuch that, although the application might be the same, the material used was altogether dissimilar. The second patent was simply an improvement on the first, in making the loop, or so splicing the wire as to obtain a firm hold.

Mr. Whellan, witness for the plaintiff, stated that he was a master rigger in Liverpool, having been forty years in this port, and employed in such capacity since 1805; since which period he had rigged a number of vessels (760, as we understand) with hempen rope. Had never known of wire rigging being used before the date of plaintiff's patent in 1835. Has since fitted the Great Liverpool, of 1,400 tons, with rigging of that description, the John Garrow, Guadalupe and many others. Considered invention as useful, and that the wire rope had a decided advantage as to strength; at the same time was less bulky, and therefore held less wind.

Upon cross-examination by the court, stated that he had been engaged in fitting steam-vessels for the last twenty years; that the rigging had been, so far as the funnel was concerned, part iron chains and part hempen rope.

Mr. Binks, foreman of plaintiff, examined. Had from an early age been employed under Government as a rope