questionable, whether a patent granted in a form not warranted A. D. 1842. by the act, would not be set aside on scire facias. Biggs Andrews followed on the same side. The respondents claim as of right to control the prerogative. They say the patent ought to have an additional, or more restrictive proviso. [The Lord Chancellor: If the proviso is made more extensive than the law authorizes, it would no doubt be void by the statute.] These are bargains between the subject and the crown. [The Lord Chancellor : But the crown cannot make a bargain contrary to law.] But if the crown had the power before the union, as part of its prerogative, it is well established that such prerogative could not be taken away, except by express act of parliament. [The Lord Chancellor: No doubt the crown had much. greater powers as respects letters patent formerly, before the statute of James took it away.] Yes. It was restrictive of the prerogative and declaratory. I am willing to take it upon that. What effect is fairly to be put upon that restriction? By the old common law the crown clearly had a power to grant patents without restrictions (o). The statute limits the crown's power to 14 years, and confines it to new inventions. The question then is, what is the meaning of the words, "which others at the time shall not use." Clearly others within the country for which the patent was to be granted. Within the realm, whether actually invented or brought into it, as in the case of Edgebury v. Stephens (p). In English patents, until very recently no distinction was made between foreign and native inventions. The grantee was equally called the inventor. And this was the correct way of describing him: I doubt if any other be legal: in pleading, he could only be called the inventor(q). [Lord Brougham: Have you any case you know to be a foreign invention, where the common form is used?] I have not; but I can find no other form in any book on patents until the last edition of Mr. Godson's, where, in a note at the second page of the appendix, he for the first time mentions a difference in the form. This statute refers only to England. There was no statute for Scotland whatever. The act of 1641, which has been alluded to, does not apply to patents for inventions at all (r). ment, then sworn and now declared, is evidently false in fact, although not in law, the importer being in law the true and first inventor. But then the next words were useless as well as false. In modern practice this form has been modified; but the words of the statute have not been adopted. See Law & Practice, Pr. F., I. (r) This statute, ante 33, appears to apply to all monopolies, and in subject-matter very much resembles the English statute. It is frequently referred to as declaratory of the law of patents in Scotland. The learned counsel proceeded to refer to the case of Scotch patents granted between the time of the passing the English statute, 25 May, 1624, and the union, 1 May, 1707; see ante 34. This Biggs Andrews It is admitted by the respondents, that before the union the for the appellant. crown had the power to have made this grant, and any conditions in the patent must necessarily have had reference to Scotland only. Then my argument is brought down to the consideration of the effect of the union. If it be conceded that the crown had the power before contended for, how is the prerogative taken away? It is a maxim, that it can only be taken away by express act of parliament. [Lord Brougham: That is stated too generally; take the case of the crown's prerogative of issuing writs to summon members to parliament at discretion, taken away by the effect of the union; and many other instances where the prerogative has been abridged inferentially.] [The Lord Chancellor : Read also the recitals of the act of James, which have especial reference to the prerogative, and speak of the inconvenience of it.] The effect of the union was merely to extend a mutuality of rights, to apply the statute of James to Scotland, as if it had been passed in Scotland before the union. In that view, "realm" will mean in England as before, and in Scotland, the realm of Scotland. [The Lord Chancellor : Suppose the invention is found not to be new in the colonies? It would be void, because they are part of the realm. All became one realm at the union; England, Scotland, and the Colonies.] [Lord Campbell: There is no separate patent for the colonies (8). It may be extended to the colonies as part of the realm.] The articles relied on are the 6th and 18th. By them it is argued, the two countries are to be made one as to patents. [Lord Brougham: There are other general words incorporating them into one.] If so, the great seal would be used for Scotch patents; if patents are public matters, then they clearly should pass under the great seal of England. If private, then they are expressly exempted by the 44th article from the operation of the They always have been sealed under the seal of Scotland. Therefore, they must be private matters. If not, one patent would run over both countries; but in practice, each is confined to the country it issues from. [The Lord Chancellor: But patent rights surely affect the public. They may be given for part, or for the whole realm. For England, for instance, without the colonies; or for Scotland, and not for England, and vice versá: they are distinct countries only as to the form and extent of the grant. The sealing has only reference to the form of the grant, and the officer who is to superintend the issuing of it.] [Lord Brougham: There might be a patent for one county only.] act. part of the subject is left in much obscurity by both the appellant and respondents; and the case of the Universities of Oxford and Cambridge v. Richardson, 6 Ves. 659, before Lord Eldon, L. C., and his opinions, were never adverted to. See ante 48, n. The respondents in their case referred to the saving clause, 21 Jac. 1, c. 3, s. 10, of letters patent relating to printing, in expectation, as Mr. Shearman informs me, of the above case before (s) That is to say, there is no separate great seal for the colonies. But there are several 10 stances of distinct grants for the colonies; such patents pass as English patents under the great seal of the United Kingdom: one such was mentioned. of the invention [The Lord Chancellor: If a patent were granted for England A. D. 1842. and Jamaica, how would it be if it was found not new in Jamaica; would it not be wholly void?] It would no doubt be A patent or wholly void. [The Lord Chancellor: If for England only, and England rendered void by it was not new in Jamaica, it would be equally void, because the previous use Jamaica is part of the realm. The question is, as to the power in any of the of the crown there, for it does not affect the words of the in- colonies. strument. There is but one realm.] Then the word realm can only mean England: if not, the crown cannot grant a patent for England alone. The subjects of both countries would not be under one prohibition, &c., unless all patents extended to the whole realm. Every English patent would then be void. It cannot be one realm for one purpose, and not for another. [The Lord Chancellor: The party is at liberty to take out his patent for the whole realm, or for part of it, as he chooses; or he may dispense with part of his rights, or not enforce them. There is a dispensing power in the patentee.] [Lord Brougham: I know no reason why the crown could not grant a patent for all counties on this side the Trent. It would not be inconsistent with the statute so long as the invention was new all through the realm.] [Lord Campbell: The effect of the union is to extend that clause of the statute of James to Scotland.] So it might, and yet leave the crown in the same situation as to its Scotch subjects as it was in before towards its English. Thus there would be a perfect equality; where could be the hardship of this? The reason given by Lord Chief Justice Clerk, in Roebuck and Stirling, is, that where there was a new manufacture introduced into England it would be hard if that new manufacture could not be introduced at once into Scotland (t). Suppose a manufacture to have existed in England for a number of years, and that the Scottish public had been inattentive to it, or should know nothing of it until brought to their own doors by some individual having introduced it under a patent; is it fair that such persons should be told, you are not entitled to take out this patent? [Lord Campbell: The argument as to inconvenience is of no avail. The law may be with you, but no argument of inconvenience will help you.] Scotland is still a foreign country as to several matters; bills of exchange, for instance. As to the other authorities cited,-[The Lord Chancellor: I must say that the authorities cited by the respondents, when compared with the cases, are not borne out. There is nothing before the house to justify the respondents' statements (u). There is a total misapprehension both as to the cases of Arkwright's and (t) See judgment, post 452. (u) This is with reference to these being adduced as instances in which user in Scotland had been admitted as evidence of want of novelty in England. Ante 441, n. c. Evidence of this kind has been repeatedly rejected by learned judges in this country, and the feeling of the profession has been unanimous against its admissibility. Ante 444. Biggs Andrews Tennant's patents.] As to Roebuck and Stirling, it is quite for the appellant. clear that the house did not give judgment on this ground solely. [The Lord Chancellor : How can we aver against the Judgment. very terms of the judgment itself, which is on record in that case? It is affirmed for one reason, as well as many reasons in the court below. Does not that terminate the question?-that decision has been pronounced, and it must be considered as binding upon us, unless you can show some very strong reasons indeed to the contrary; so strong as to satisfy us that the judgment was without foundation.] [Lord Campbell: The administration of the law in Scotland is different in form from England. The ratio decidendi is often given. If the House of Lords had repudiated that reason, it would have so appearen on the journals. On the contrary, the reason is approved of. It appears to me it would be attended with great inconvenience and some absurdity if it were otherwise.] The question is one of the greatest importance, as there are a great number of patents in the same unfortunate situation as the appellant's; and very strong opinions have been given by most eminent lawyers, that previous use in Scotland did not vitiate an English patent. The Lords having consulted, The Lord Chancellor LYNDHURST: As far as I am concerned, I feel bound by that decision. Lord BROUGHAM: The case of Roebuck v. Stirling appears to me perfectly to decide this case. The Court of Session had dismissed the suit, because it appeared that the process in question was known to and practised by different persons in England. This house adjudged, "That the interlocutors complained of be affirmed, for other reasons as well as the reasons specified therein." That implies that they concurred in the reasons thus given on the face of the interlocutor. What other reasons there may have been for the affirmance may be a question, but that reason was put forward by the court below as the ground of its decision, and being so put forward, was at all events one of the reasons for the affirmance of the judgment, with other reasons not stated by the house. Lord CAMPBELL: There is an express decision applying in its terms to the present, just as much as if other reasons had not been introduced into the judgment of the house. That being an express decision upon the point in question, unless it is shown that the house was under some great mistake at the time, it must be considered as binding. I entirely concur in the decision; I think it is perfectly right; and if it had been res integra, I should have so decided, but especially after that decision; I perfectly concur in the affirmance of the judgment of the court below. My opinion is, that the law was quite correctly laid down by this house in the year 1774. Lord BROUGHAM: When I stated that I proceeded on the decision of this house in Roebuck v. Stirling, in the year 1774, I intended to have added, that I should have so decided without that precedent; I entirely agree with my noble and learned friend, that if this had been res integra, I should have so decided it. Kelly and Godson for the respondents: Your lordships purposing to affirm that judgment without hearing the respondents' counsel, we have to ask that it may be affirmed with costs, being directly in the face of a judgment of this house. Biggs Andrews: No argument was allowed in the court. below. The LORD CHANCELLOR: Here has been a decision of a single judge, then of the whole court, as we think they ought to have decided; and therefore, I think the interlocutors must be affirmed, and the appeal dismissed with costs. Judgments of the Court of Session in Roebuck & Garbett v. Stirling & Son. The following report of the judgments of the Lords in the Court of Session, the appeal from which is reported, ante 45, was appended to the respondents' case: Lord HAILES: A very momentous question occurs here. Messrs. Roebuck and Company contend, “that although they were not the inventors of making oil of vitriol in lead vessels, still their patent must be good to exclude others, because they were the first that practised that art in Scotland." Your lordships will not establish this proposition without maturely weighing its consequences, which seem exceedingly strange. I will explain what I mean by a few familiar examples. The first stocking-loom in Scotland was established at Glasgow between thirty and forty years ago. According to Messrs. Roebuck and Company, the man who first established that stockingloom might have sought and obtained a patent, prohibiting all others in Scotland from establishing a stocking-loom in Scotland for fourteen years; the same would be the case as to the still later establishment of looms for silk, gauze, and ribands, so necessary in the present ruined state of our linen manufactures. At this day the working of velvet, or of any other manufac tures used in England, but not in Scotland, may be circumscribed by patent for fourteen years, that is, all new manufactures may be limited in Scotland to one man for the space of fourteen years. The only person in Scotland who has used Dr. Franklin's conductor for lightning is Dr. Lind. Were that gentleman less benevolent than he is, he might monopolize Dr. Franklin's invention in Scotland for fourteen years. According to the suspender's argument, he, as the first user, though not the inventor, may have a patent. though lightning were as frequent and as fatal in Scotland as in Virginia and Pennsylvania, no man could use the conductor without Dr. Lind's permission, no, not even Dr. Franklin himself. Take the latest invention of all, Dr. Irvine's method of Al Judgment accordingly. making salt water fresh; the process is simple; I may set it a going in Scotland, procure a patent, and prohibit all the inhabitants in Scotland from making salt water fresh. Again, there is in Edinburgh one Dallaway, who understands the method of enamelling on white iron, as practised at Birmingham. This art is not known in Scotland; it is a manufacture which would maintain thousands of hands; there can be no doubt of the publicus usus et exercitium of Dallaway, for I have seen his work; he may therefore obtain a valid patent to-morrow, and prevent the further introduction of the manufacture into Scotland for fourteen years. Many more examples might be given; but these may suffice to call your lordships' attention to this question,-whether that proposition can be true in law, whereof the consequences are obviously ruinous to the whole system of improvements in Scotland. Lord GARDENSTON: Here is such an improvement as may be held an invention. There is nothing in the objection, that Roebuck and Company had privately carried on the trade for a number of years. The great difficulty is here, that the work in lead vessels had been carried on in England before the date of the patent. I should even doubt whether a patent might be granted to the person who first introduced any foreign invention into Britain. In matters of prerogative there is no distinction between England and Scotland. This distinction was taken away by the happy Union. Lord KAIMES: This is a matter of considerable moment, because it concerns the good of the public and manufactures. The suspenders take the benefit both of the act of James the First, and of the general prerogative of all princes touching patents to new inventions. The radical point is, whether Messrs. Roebuck and Company have invented any thing material? They certainly have. The use of lead vessels instead of glass is a matter of great moment. It has been said, that if the use of lead vessels was known in England before the date of the patent, Messrs. Roebuck and Company cannot support their patent; and to |