issue should not be amended, and judgment entered for the plaintiffs; or, Fourthly, why a new trial should not be had, and that in the mean time proceedings be stayed.

rule.

The defendants obtained a rule to show cause why, if the Defendants' court should determine in favour of the plaintiffs on the above rule, a new trial should not be had, on the ground that the verdict for the plaintiff on the second issue is against evidence, and that in the mean time proceedings be stayed.

MORGAN AND ANOTHER v. SEAWARD AND OTHERS.

In the Exchequer. Hil. T., 1837.

[2 M. & W. 544; Mur & H. 55; 1 Jur. 527.]

several inventions recited in

two pair of pad

Sir J. Campbell, A. G., D. Pollock, Alexander, and Jervis, If any one of showed cause against plaintiffs' rule. The question on the issue on the third plea, which, if mate- a patent as imrial, disposes of the others, is whether the inutility of an inven- not an improveprovements, be tion, or a material part of an invention claimed as an improve- ment, the patent ment, vitiates the letters patent. The statute 21 Jac. 1, c. 3, is The making of is wholly void. a restraining statute, and Lord Coke, in his commentary upon wheels under it, states (a) that at common law there must be, in order to sup- injunctions of port a monopoly, "urgens necessitas et evidens utilitas," and the secresy, and selling them for statute does not invest the crown with a larger power than it user abroad, will possessed at common law (b). The grant itself also recites that not vitiate subthe party is the inventor of an improvement; the plea denies that it is an improvement, so far as the plaintiff claims it as to steam engines; the jury have found that it is not so; the patent is therefore void as to this part, inasmuch as the crown has been deceived in its grant, having made it on the faith of the suggestion that the machine was an improvement in steam engines. And if void for that part, it is void altogether: the claim is for one entire invention, and if a party takes out a patent for several subjects, he perils the whole on the validity of each (c). A patent for a useless manufacture is "hurtful" and "inconvenient"

his instructions from time to time from Galloway. One pair was completed in April, and the other pair in June, 1829, and Curtis was then paid for them by Morgan. Curtis's ordinary workmen were employed upon them, but he received directions from Galloway that no other person should see them, as he was about to take out a patent. One Williams, a working mechanic, came on one occasion into the manufactory when the men were at work upon the wheels, and saw them; but a complaint being made on the subject, he was never again admitted, nor were they seen, so far as appeared in evidence, by any other stranger. When the wheels were finished, they were taken to pieces, packed up, and shipped for Trieste, where

sequent patent.

they arrived in July, and were received by an agent of the plaintiff Morgan; thence they were embarked for Venice, where they were put together, and in September they were started from Venice to Trieste, in boats belonging to the Venice and Trieste Steam Company, of which Morgan was the manager and a principal owner. The instructions for entering the caveat for the patent were given in the beginning of March, and it was taken out on the 2d of July.

(a) See ante 29-31, n. p.

(b) As to the effect of the statute upon mon law, see ante 8, n.

the com

(c) Citing Brunton v. Hawkes, 4 B. & Ald. 541.

on plaintiff's'

In the Fache- within the meaning of the statute, since it precludes all the rest quer. Argument of the public from enjoying the benefit of real improvements in the subject-matter of the patent during the term of the exclusive grant (d).

rule.

The plaintiffs will place great reliance on the case of Lewis v. Marling (e). There the patentee of an improved machine for shearing cloths, claimed as his invention, the application of a proper substance to brush the surface of the cloth to be shorn: the brush, however, turned out to be useless, but it was held, that this did not vitiate the patent, because the specification had not described it as an essential part of the machine. [Alderson, B.: There may be a great difference between the case of a complicated machine, one part of which may be useless, and a case where one of the distinct portions of an invention is useless.] Lewis v. Marling is, on that ground, clearly distinguishable from the present case. But besides, the patentee has here explicitly claimed this as an improvement in steam engines. That amounts to the same as if, in describing a complicated machine, he had claimed any particular part of it as an essential part. On this ground, therefore, it is submitted, that the patent is void altogether.

The second question is as to the novelty of the invention. The rule of law is, that if, after a party has completed his invention, and before taking out his patent, he thinks fit to put it into use or practice, that will avoid his exclusive right. The nature of the use must have been such as would invalidate a patent for the same invention, if taken out by another person (f). Here the facts show that there was such a use and exercise of the invention as amounted to a publication. It is said, that all that was done by Galloway was for the purpose of experiment. It rather appears, that it was by way of venture. The wheels were sent to Trieste by Morgan, not as the patentee, but as the agent of the company, in order that the company might purchase them, not merely that they might try the capability of the invention; and the patent was taken out within a month or two afterwards, before any answer was returned from Trieste. The new manufacture intended by the

(d) The argument on behalf of the defendants on this part of the case was directed to show that in all the cases the utility of the invention was recognised as essential to support the patent, and was a question to be left to the jury.

In Edgebury v. Stephens, it is said, "the act was intended to encourage new devices, useful to the kingdom." Ante, 35-6.

In Boulton & Watt v. Bull, Eyre, C. J., says, "the invention professes to lessen the consumption of steam; and to make the patent good, the method must be capable of lessening the consumption to such an extent as to make the invention useful." 2 H. Bl. 498; Dav. Pat. C. 216.

In Huddart v. Grimshaw, Lord Ellenborough, C. J., says, "if the combination be productive of a new end, and beneficial to the public, it is that species of invention which, protected by the king's patent, ought to continue to the person the sole right of vending," &c. Ante, 86.

It has been a constant practice to leave the question of utility to the jury. See per Lord Tenterden, C. J., in Lewis v. Davis, 3 Car. & P. 502; also Haworth v. Hardcastle, 1 Bing. N. C. 182. (e) 10 B. & C. 22.

(f) See Tennant's case, ante 125; and Wood v. Zimmer, ante 44, n.

quer. Argument

on plaintiffs'

statute, is something which at the time when the patent is taken In the Excheout, has not been known to others than the patentee: the restriction is not confined to cases where it has been previously rule. vended, or even used in the ordinary sense of the word. The previous knowledge and the use thereby acquired is a publication sufficient to avoid the patent. If these wheels, when completed, had been publicly exhibited, could the patent have been sustained? By such exhibition the invention would have ceased to be new, although it had never been brought into actual exercise.

Sir F. Pollock, Sir W. Follett, and Butt, in support of the rule. First, the plaintiffs are entitled to a verdict on the fifth issue. Upon the evidence given at the trial, there was nothing to go to the jury to show such a want of novelty as avoided the patent, either by force of the statute, or by the terms of the grant. The requisite of novelty in an invention was a restriction first introduced by the statute of James. [Parke, B.: That appears

questionable; Lord Coke seems to speak of it as one of those requisites of a monopoly which existed before the statute (g).] It is submitted that he is only commenting upon the several restrictions imposed by the statute itself. Then all which the statute requires in this respect, is that the grant shall be to the first and true inventors of such manufactures which others, at the time of the making of the grant, did not use. And all that the letters patent themselves require is, that the invention shall be new as to the public use and exercise thereof in England, or the colonies. Now, it does not appear from the evidence, that there was any use whatever of this invention, in the ordinary sense of the word, in England. The machine itself was never used; and if the invention be considered to be not the machine, but the method of constructing it, that was brought into use only on one specific occasion, and that only by way of experiment, and with the view of using the machine itself out of the kingdom. It has been said on the other side, that it could not have been by way of experiment, because the shipment of the machines for abroad was only a month or two before the date of the patent. But the period of six months, which is given after the date of the patent for enrolling the specification, is given for the very purpose that the patentee, having secured his right, may have an interval in which to perfect his experiments, before he is obliged to describe or ascertain by his specification the precise nature and details of his invention. Nay, he is even bound, if during that interval he make any further discovery, to communicate it to the public (h). Suppose the machines had been

(g) See the statute, and Lord Coke's commentary upon it, ante 31, n. p.; see also the early patents, ante 9-27. The statute appears to have imposed no new condition, excepting only in re

spect of the grantee being the true and first inventor. Ante, 8.

(h) See Crossley v. Beverley, ante 116.

In the Exche- made by Galloway himself, and then sold to the company, quer. Argument would that have been a publication? Clearly not. Then he has

on plaintiffs'

rule.

an equal right to employ another to make them: he does not sell to that other the privilege of making them for himself, but merely employs him to construct them, paying him the price of the materials and labour. Moreover, he is employed with a knowledge that a patent is about to be taken out, and therefore that the method of construction is a matter to be kept secret, and accordingly he is bound by a pledge of secresy. It is in all respects the same as if the machine had been made by Galloway himself in his own workshop, in a case where he could have made it by his own skill and labour. The inventor does not, by license or otherwise, permit others than himself-strangers, to use either the machine, or the method of construction, in England; he does not sell or publish in any way the method of construction; and he sells the machine but to be used abroad. The public have, before the date of the patent, no means whatever of discovering the invention. As to Galloway's publication to the plaintiff, that was under the intended contract of assignment, and was clearly no publication to the world. The cases referred to on the other side are all distinguishable. In Wood v. Zimmer, the article for which the patent was granted had been publicly vended. In Tennant's case, it had been used for several years by another manufacturer, the patentee was therefore certainly not the first and true inventor. The same observation applies to the case of Arkwright's patent. Lewis v. Marling was a stronger case than the present. [Alderson, B.: It is certainly a most important question, what are the limits of what a man may do without its being a publication; and a question on which much remains to be discovered; the law is in a very confused state. In the case of Lewis v. Marling, I should certainly have entertained very considerable doubts. If the question is to be put altogether on the ground of the public use of the invention, how did Dr. Brewster lose the benefit of his invention of the kaleidoscope, because it had been previously published in a book, if it had not been used, though made known to all the world before? If Dr. Hall had published his discoveries in a book, I apprehend that would have put an end to Dollond's patent. Much obscurity has been introduced into this question by the use of loose expressions and dicta (i).] The knowledge, and means of knowledge of the public, amount to the same thing: in this case, the public had neither.

Secondly; it may be admitted, that if a patent be taken out for a machine, or thing that is to perform a particular operation, and it does not perform that, and is therefore useless with re

(i) These observations of the learned judge present very prominently the difficulties which exist in respect of the construction to be put on

the words of the statute and letters patent, or rather on the meaning of the term publication. See ante 44, n.; and 86, n. c.

on plaintiffs'

ference to the specific purpose for which the patent is granted, In the Exchethat will avoid the grant. But here it is not pretended that the quer. Argument plaintiffs' steam engine is absolutely useless, or even worse to rule. use than one of a different construction in the same circumstances; and there is a wide difference between the case of an article's not being useful, because there is already another in the market which will as well answer the purpose, and may be cheaper, and that of an article which is useless, because it professes to effect a particular purpose, and does not effect it. The cases relied on by the other side will be found to apply to the latter state of circumstances. It is said, that this being a patent for several inventions, by upholding one of them when the other is useless, the patentee obtains a monopoly of the whole, and so deprives the public of the benefit of applying the former to some other useful combination. But the answer is that given by the court in Lewis v. Marling, that the statute imposes no such condition as that the invention shall be in all parts useful. "The condition is, that the thing shall be new, not that it shall be useful; and although the question of its utility has been sometimes left to a jury, I think the condition imposed by the statute has been complied with, when it has been proved to be new" (k). If the grant be according to the terms of the act of parliament, and the grantee complies with any farther condition which the crown may think fit to annex to the grant, that is all that is necessary. And if this be true, of a single invention composed of several parts, as was the case of Lewis v. Marling, a fortiori it is true of several distinct improvements comprised in one patent, where only one is found not to be useful. The restraint in the statute as to general inconvenience cannot apply to such a case; and the commentary of Lord Coke on that clause is, at the present day, absolutely absurd. The only question is on what terms the grant is made; the court cannot superadd any condition; and good reason may be assigned why the statute should impose no condition of utility. Whether a thing be new or not, is a pure question of fact; but whether it be useful or not, with reference to previously existing things of the same kind, is a question of opinion, and a question admitting of all possible shades and degrees of difference. Here, for instance, it may be that this engine consumes so much more fuel than others of a different construction, that it is not therefore worth while to use it, although it may be abstractedly a certain improvement in the construction of steam engines. [Alderson, B.: The Attorney General puts it thus: if the invention be useless, its being a monopoly makes it mischievous, inasmuch as it prevents other persons from adding to it, so as to make a useful combination.] It might be for a jury

(k) See per Parke, J., in Lewis v. Marling, 10 B. & C. 28. See post 192, n. l.