(m) THE HOUSEHILL COMPANY v. NEILSON. H. L. [1843]

Lord Lyndhurst said: "If the machine is published in a book, distinctly and clearly described, corresponding with the description in the specification of the patent, though it has never been actually worked, is not that an answer to the patent? It is continually the practice on trials for patents to read out of printed works, without reference to what has been done."

Lord Brougham: "It negatives being the true and first inventor, which is as good as negativing the non-user. The book that is generally referred to is, the Repertory of Arts and Sciences.' It must not be a foreign book, but published in England." (1 Web. P. C. 718 n.)

(n) JONES v. BERGER. [1843]

Maule, J.: "I think it is an objection to the patent, and not evidence simply of an objection, that there has been a previous patent and a specification enrolled, and therefore published being enrolled, containing the invention." (1 Web. P. C. 550; 6 Scott, N. R. 219.)

(0) MUNTZ v. FOSTER. Ch. [1843]

The novelty of a patent is not impeached by a similar process, described in a previous specification, which will not, when carried out, produce the patented article. (2 Web. P. C. 94.)

(p) MUNTZ v. FOSTER. N. P. [1844]

If a patentee has had his mind furnished with the material of his invention by a prior specification, and has merely put it into a more detailed shape, it would neither be a new invention, nor would he be the first and true inventor. (2 Web. P. C. 107.)

(9) STEAD v. WILLIAMS. [1844]

Action for the infringement of a patent granted to the plaintiff for "making or paving public streets and highways, and public and private roads, courts and bridges, with timber or wooden blocks." Cresswell, J., directed the jury to consider: first, whether the publications relied on by the defendant came to the knowledge of the plaintiff; secondly, if they did, whether they disclosed that for which he claims a patent; for although he may have read those, if they do not disclose that which is the essential part of his patent, then it does not invade at all his privilege of having a patent right. Verdict for the plaintiff. (2 Web. P. C. 130.) A rule was subsequently obtained, and made absolute, for a new trial, on the ground of misdirection. The defendant's counsel contended that the mere fact of a prior publication is conclusive against the validity of the patent, though the patentee might have no knowledge of the existence of such prior publication. The Court of Common Pleas held that, "If the invention has already been made public in England, by a description contained in a work, whether written or printed, which has been publicly circu

lated, in such case the patentee is not the first and true inventor within the meaning of the statute, whether he has himself borrowed his invention from such publication or not; because we think the public cannot be precluded from the right of using such information as they were already possessed of at the time the patent was granted. It is obvious that the application of this principle must depend upon the particular circumstances which are brought to bear on each particular case. The existence of a single copy of a work, though printed, brought from a depository, where it has long been kept in a state of obscurity, would afford a very different inference from the production of an encyclopædia, or other work in general circulation. The question will be, whether upon the whole evidence there has been such a publication as to make the description a part of the public stock of information." (8 Scott, N. R. 472; 7 M. & Gr. 842; 2 Web. P. C. 142; 8 Jur. 933; 13 L. J., C. P. 220.)

(r) STEAD v. ANDERSON. [1847]

The first person who discloses an invention to the public is considered as the inventor. A knowledge and publication after the plaintiff's invention does not avoid a patent granted to the true and first inventor, who, having invented, obtained his patent before his invention was used. (16 L. J., C. P. 250; 2 Web. P. C. 151.) A prior invention, in order to avoid a patent, must have become known in the sense that it has become known to the people in the trade. (2 Web. P. C. 148.)

(8) DOBBS v. PENN. [1849]

A patent granted to A. for "improvements in the construction of racks and pulleys for window-blinds and other useful purposes," besides claiming a mode of making the frames, by constructing them in a particular manner of drawn open metal tubes, claimed a mode of fixing the pulley in the frame, by turning the knob of the spindle, upon which the pulley revolved, and thereby of screwing a piece of metal, made to slide within the frame, tight to the edge of the frame; by which means the pulley spindle became firmly fixed to the frame. By a patent previously granted to B., the same object was effected by a similar method, but with the addition merely of a piece of thin metal, called an escutcheon, which worked outside the frame; but the specification stated, that the pulleys might be made without the escutcheon. Held, that the two patents were substantially the same as to one of the things claimed, and therefore that A.'s patent was void. (3 Exch. 427.)

(t) IN RE LAMENAUDE'S PATENT. [1850]

Lord Brougham: "You may have a patent as the importer of a foreign invention, because that is the construction that the courts have put upon the statute that you are the quasi inventor, if you import it for the first time. But has it ever been said that such importation of a foreign invention is negatived by a book in this country stating the foreign invention? I am not aware that it has

been held to negative the right of an importer of a foreign invention that a book had stated it before." (2 Web. P. C. 169.)

(u) R. v. STEINER. Scire facias. [1851]

Lord Campbell, C. J., told the jury that if the improvement for which the patent was granted was contained in the specification of a prior patent, or was described in a book, published abroad but sold in England, the patent would be void. (40 Newton's London Journal, 71.)

(v) BETTS v. MENZIES. Ch. [1857]

Sir W. P. Wood, V.-C., said: "I conceive that the law is, that where an ingenious person makes, for instance, an improvement in the glasses of a telescope, or the wheels of a carriage, for his own use, and which he uses accordingly, but without publishing it anywhere, or if, on the other hand, he publishes in a book his invention which he has so made and used for his own private accommodation, much more when he takes out a patent for it, there can be no case for a subsequent patentee. . . . . I think that if a man sits down and takes out a patent from his own conjectures, without ever having tried the experiment set forth in it, that will not invalidate a subsequent patent taken out and practically worked, especially when it turns out that the method prescribed by the earlier patent is practically useless." (3 Jur., N. S. 358.)

(w) BETTS v. MENZIES. H. L. [1859-1862]

At the trial of an action for the infringement of a patent for "a new manufacture of capsules, and of a material to be employed therein, and for other purposes," the defendant contended that the process which the plaintiff claimed as his invention was not new, as it had been discovered by one Dobbs, and by him disclosed to the world by two specifications, one of the date of 1804, and the other of 1820. Campbell, C.J., in summing up to the jury, said: "I ask you whether you think that a person of ordinary skill, reading Dobbs's specifi ations, and having no other information upon the subject, could at once proceed to make Betts's metal, not making experiments and getting out bit by bit, but whether it is stated enough to enable him at once to sit down and make Betts's metal?" The Court of Queen's Bench held, that this was not the proper question to be left to the jury, for though a workman might not in that way be able to make Betts's metal, still Dobbs's specifications, or something done under them, might have disclosed some part of that which the plaintiff claimed. Rule absolute for a new trial. (8 Ell. & B. 923.) At the new trial a verdict was found for the plaintiff. The defendant having obtained a rule to set aside the verdict, it was held, that the plaintiff's patent was invalid, as it appeared, on a comparison of Betts's and Dobbs's specifications, that the former claimed that which had been already described by the latter. (1 Ell. & Ell. 990; 28 L. J., Q. B. 361 ; 5 Jur., N. S. 1164.)

On appeal to the Exchequer Chamber judgment affirmed; Williams and Willes, JJ., however, differed from the rest of the court, holding that the plaintiff's patent was good, and not invalidated by Dobbs's; since Dobbs's patent was practically incapable of being carried into effect. (1 Ell. & Ell. 1020; 30 L. J., Q. B. 81; 6 Jur., N. S. 1290.) On appeal to the House of Lords the patent was held good. Blackburn, J., in the course of his judgment, said: "It seems to me that, if Dobbs had made it part of the public knowledge how to produce a new material, as a practical result, and Betts had afterwards claimed to have a patent for, amongst other things, producing that result, he would have claimed what was not new, but if Dobbs had not made it part of the public knowledge how to produce a result, then Betts would not have claimed anything already known." Lord Chancellor Westbury, after stating the facts, said: "To defeat a new patent, it must be clear that the antecedent specification disclosed a practical mode of producing the result which was the object and effect of the subsequent discovery. A barren general description, therefore, though containing some suggestive information, or involving some speculative theory, could not be treated as avoiding, for want of novelty, a subsequent specification or invention, unless it was ascertained that the antecedent publication involved the same amount of useful information. As to the two specifications in this case, it was clear that the first was a mere general suggestion, the other a specific practical invention. The one might lead to the other; but the latter alone complied with the conditions under which protection was given by the patent law. Here there was nothing to show that Dobbs's patent was capable of a practical application; and on the principle contained in the answer of the judges, it was clear that the decision of the two courts below ought to be reversed." (10 H. L. Cas. 117; 31 L. J., Q. B. 233; 9 Jur., N. S. 29 ; 11 W. R. 1; 7 L. T. Rep., N. S. 110.)

(x) HILLS v. LONDON GASLIGHT COMPANY. [1860]

The plaintiff in 1849 obtained a patent for the employment of the hydrated oxides of iron in purifying coal gas from sulphuretted hydrogen.

In 1840 one Croll took out a patent, in the specification of which, after speaking of the use of black oxide of magnesia for the purpose of removing the sulphuretted hydrogen, he said: "The same effect may be produced by the application of the oxide of zinc, and the oxides of iron." The court construed this as a claim for the use of the hydrated and anhydrous oxides of iron. And, further, that as there are many oxides of iron, the hydrated and anhydrous, the natural and artificial, some of which will, and some will not answer the purpose, it is a matter of investigation and experiment to see which will. Upon this ground it was held that Croll had not anticipated the plaintiff. (5 H. & N. 312; 29 L. J., Ex. 409.) (y) OXLEY v. HOLDEN. [1860]

A provisional specification was filed on the 17th of March, and

afterwards abandoned by the inventor, who delivered another specification for the same invention on the 10th of April, in respect of which a patent was granted to him on the 12th of October, but dated as of the 10th of April. It was contended, that the filing by the plaintiff of the provisional specification of the 17th of March, and his afterwards allowing it to expire, was such a dedication to the public as prevented his obtaining a valid patent for the same invention on the subsequent application of the 10th of April. This objection was overruled, and Erle, C.J., in delivering the judgment of the Court of Common Pleas, said: "We are of opinion that a provisional specification abandoned does not become public by abandonment. The statute 15 & 16 Vict. c. 83, s. 29, authorizes the publication, but until that event it is not public. Furthermore, although the first provisional specification may afford an objection, either to receiving a second for the same invention, or to granting a patent for the invention after the first specification has expired, there is no principle of law, and no enactment making the patent void, if it is so granted; and, on the contrary, sect. 24 enacts, that the patent dated as of the day the provisional specification was delivered in shall be of the same force and validity as if it had been sealed on that day. This patent is dated as of the 10th of April; on that day the protection given under the specification of the 17th of March existed, and the patent is valid by the operation of this section.'

(30 L. J., C. P. 68; 8 Com. B. Rep., N. S., 666; 8 W. R. 626; 2 L. T. Rep., N. S., 464.)

(z) HILLS v. EVANS. Ch. [1862]

In giving judgment in this case, Lord Westbury, L.C., said: "The antecedent statement must (in order to invalidate a subsequent patent) be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments, and gaining further information before the invention can be made useful. . . . The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shown to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited, accurate, and gives a specific rule of practical application. The reason is manifest, because much further information, and therefore, much further discovery, are required before the real truth can be extricated and embodied in a form to serve the uses of mankind. It is the difference between the ore, and the refined and pure metal which is extracted from it." (31 L. J. Ch., 463; 8 Jur., N. S., 529; 6 L. T. Rep., N. S., 93.)