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been ably and exhaustively treated in several leading English cases, and the House of Lords has decided that it is not sufficient that such prior specification contain a mere hint of the process contained in the subsequent one.1

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Lord Chancellor Westbury, in moving the vote of the House, said: "My lords, I pass on to the next conclusion which is involved in the answer of the learned judges to your lordships' question, and that conclusion is, I think, also of great importance to the law of patents, because it results from an opinion that an antecedent specification ought not to be held to be an anticipation of a subsequent discovery, unless you have ascertained that the antecedent specification discloses a practicable mode of producing the result which is the effect of the subsequent discovery. My lords, here we attain at length to a certain, undoubted, and useful rule; for the law laid down with regard to the interpretation of an antecedent specification is equally applicable to the construction to be put upon publications or treatises previously given to the world, and which are frequently brought forward for the purpose of showing that the invention has been anticipated. The effect of this opinion I take to be this, if your lordships shall affirm it, - that a barren, general description, probably containing some suggestive information, or involving some speculative theory, cannot be considered as anticipating, and therefore avoiding for want of novelty, a subsequent specification or invention, which involves a practical truth productive of beneficial effects, unless you ascertain that the antecedent publication involves the same amount of practical and useful information. Now, my lords, it will be evident, upon a comparison of the two specifications, that the one was a mere general suggestion, while the other is a specific, definite, practical invention. It is possible that a suggestion, such as that contained in the one, may lead to the discovery contained in the other. But it is the latter alone which does really add to the amount of useful knowledge; it is the latter alone which, by its practical operation, confers a benefit upon mankind, within the meaning of the patent law. In the present case there was not only no evidence that what was contained in Dobb's specification was capable of practical operation, but in reality that conclusion was negatived by the verdict of the jury. Therefore, my lords, concurring, as I entirely do, in the conclusions which have been

1 Betts v. Menzies, 7 Law Times, N. s. 110; 4 Best v. Smith, Q. B. 996.

arrived at by the judges in answer to the second question, it results, as a necessary consequence, that the decision of the Court of Queen's Bench and of the Court of Exchequer Chamber ought to be reversed, and that the rule nisi, made absolute by the Court of Queen's Bench, ought to be discharged." The House of Lords voted, as here moved, reversing thereby the judgment appealed from,1 and modifying the decision rendered in Bush v. Fox,2 and sustaining Hill v. Evans, where the Lord Chancellor had ruled as follows: "If appeal be made to an antecedently published book or specification, the question is, what is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patent? There is not, I think, any other general answer that can be given to the question than this, that the information as to the alleged invention, given by the prior publication, must, for the purpose 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 a specific rule of practical application. The reason is manifest, because much further invention, 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. Again, it is not in my opinion true in these cases to say that knowledge and the means of obtaining knowledge are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There may be a latent truth in the words of a former writer not known even to the writer himself, and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world. Upon principle, therefore, I conclude that the prior knowledge of an invention, to avoid a patent, must be knowledge 238 E. L. & Eq. 1.

18 Ell. & Blackb. 923. 36 Law Times, N. s. 90.

equal to that required to be given by a patent, namely, such knowledge as will enable the public to perceive the very discovery and to carry the invention into practical use."

The result of these recent cases would accordingly seem to be that prior specifications are, in this respect, to be construed by the same principles as other publications.

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§ 379. The defendant, therefore, to return to the consideration of this defence, who gives notice of the statute defence of want of novelty, will not be defeated in it, if he proves a material part of the invention to have been known or used before the discovery by the patentee, provided he shows that the specification was made broader than the real discovery of the plaintiff, with "wilful default or intent to defraud or mislead the public." But if it was made broader than the real discovery, through accident or inadvertence, the patent will still be good, and an action may be maintained for so much of the invention or discovery as is bona fide the invention or discovery of the patentee, provided it is a material and substantial part of the thing patented, and is definitely distinguishable from the other part which the patentee had no right to claim; unless there has been an unreasonable neglect or delay to file the disclaimer. The question whether there has been unreasonable negligence or delay in entering a disclaimer is one which goes to the right of action, so that the jury may, on finding great negligence, say that the patent is void. This applies, however, only to the case where the part wrongly claimed by the patentee is a material and substantial part of the thing patented.2

It seems that the ninth section was intended to cover inadvertences and mistakes of law, as well as of fact; and, therefore, a claim of an abstract principle would be within its provisions. Wyeth v. Stone, 1 Story's R. 273, 295. See further as to Disclaimer, ante.

* Hall v. Wiles, 2 Blatchf. 194, pr Nelson, J. Yet in another case, Seymour v. McCormick, 19 How. 96, the same judge, in giving the judgment of the Supreme Court, says: "In regard to the question of unreasonable delay in making the disclaimer, as going to the whole cause of action, the court are of opinion that the granting of the patent for this improvement, together with the opinion of the court below, maintaining its validity, repel any inference of unreasonable delay in correcting the claim; and that, under the circumstances, the question is one of law. This was decided in the case of O'Reilly v. Morse, 15 How. 121. The Chief Justice, in delivering the opinion of the court, observed that the delay in entering it (the disclaimer) is not unreasonable, for the objectionable claim was sanctioned by the head of the office; it has been held valid by a Circuit Court, and

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No costs, however, can be recovered in such an action, unless the plaintiff, before bringing his action, has filed in the Patent Office a disclaimer of all that part of the thing patented which his original specification should not have claimed. If the disclaimer is filed before the action is brought, but the entry of it at the Patent Office has been unreasonably neglected or delayed, the defence of a want of novelty in any material respect, from whatever cause the defect in the original specification arose, will be admitted as a bar to the action; and the question of unreasonable neglect or delay will be a question of law for the court.1

§ 380. Care is to be taken, therefore, in framing this defence, to ascertain, in the first place, whether the whole or only a part of the substance of the thing patented is open to the objection of prior use or knowledge; and, in the second place, whether a disclaimer has been filed. If a disclaimer has been filed in reasonable time, the defence of a want of novelty, that goes only to a part of the thing patented, and still leaves a material and substantial part unaffected by the objection, will not be an answer to the action, but will simply prevent the recovery of costs. But a defence which goes to the originality of the whole patent, and leaves nothing new that is material and substantial, and capable of distinction as the subject-matter of the plaintiff's invention, will be an answer to the action, notwithstanding any disclaimer. It is obviously necessary, therefore, to specify in the notice of defence the particular parts of the thing patented which it is intended to attack.2

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differences of opinion in relation to it are found to exist among the justices of this court. Under such circumstances the patentee had a right to insist upon it and not disclaim it until the highest court to which it could be carried had pronounced its judgment.' But in the trial in the Circuit Court (3 Blatchf. 209), from which the above-cited appeal was taken, Judge Nelson used the following language: "If the jury are satisfied that there has been unreasonable negligence and delay on the part of the patentee in making a disclaimer as respects the invalid part of his patent, then the whole patent is inoperative, and the verdict must be for the defendant."

1 McCormick v. Seymour, 3 Blatchf. 209; Seymour v. McCormick, 19 How. 96; Silsby v. Foote, 20 How. 378.

2 See, further, an elaborate construction of the seventh and ninth sections, as to a disclaimer, in the opinion of Mr. Justice Story, in the case of Wyeth v. Stone, 1 Story's R. 273.

§ 380 a. It may be well to add, by way of concluding the discussion of this statutory defence, that, although the statute requires notice to be given of any matter relied upon to defeat the patentee's claim on the ground of want of novelty, it does not prescribe any notice, previous to the admission of evidence, merely going to show the general state of the art at the time when the plaintiff made his invention. The distinction is, accordingly, to be drawn between evidence introduced for the purpose of defeating the patentee's claim and such as is offered by way of explanation. Thus in the case of Vance v. Campbell, which turned chiefly upon the question of infringement, Nelson, J., rendering the opinion of the Supreme Court, says: "Several exceptions were taken to the admissibility of evidence offered by the defendants; but without referring to them specially, it will be a sufficient answer to say, that it was competent and relative, as showing the state of the art in respect to improvements in the manufacture of cooking-stoves at the date of plaintiff's invention. No notice was necessary in order to justify the admission of evidence for this purpose."

§ 381. Another of the statute defences is, that the patentee had allowed his invention to become public, before his application for a patent, or, as it is expressed in the statute, that it "had been in public use, or on sale, with the consent or allowance of the patentee, before his application for a patent." This provision is intended to embody the defence of an abandonment or dedication to the public of his invention by the patentee, prior to his application for a patent. The question whether a patentee, by any and what degree of use of his invention before his application for a patent, could use his inchoate right in the thing invented, and not be able afterwards to resume it at his pleasure, arose before the statute of 1836 was passed, and the Supreme Court of the United States declared that an inventor might undoubtedly abandon his invention, and surrender or dedicate it to the public; and that the question which generally arises is, whether the acts or acquiescence of the party, furnish, in the given case, satisfactory proof of such an abandonment or dedication to the public. The court held that the true construction of the then existing law was, that the first inventor cannot acquire a good title to a patent, if he suffers the 1 1 Black, 427.

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