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ordinary grant of lands or tenements from the
The distinction pointed out by the learned judge between the case of a false recital in the letters patent, and a false statement not recited in the patent by way of suggestion, as an error in the specification, is of the greatest importance. It would appear that a distinction is to be drawn between such an error in the specification as will render a suggestion in the letters patent false,
and such an error, in a matter of direction or otherwise, as affects the suggestion in some degree short of the preceding, as, for instance, to dimi. nish the extent of utility. Other defects in a specification, as insufficiency of description, vitiate by reason of non-compliance with the proviso in the letters patent.
The two classes of defects above specified may be distinguished, 1st, as false suggestion : 2d. as insufficient description; the former may be considered as on the record and for the court, the latter for the jury.
of the former class are those of Hill v. Thompson, 8 Taun. 375, and Brunton v. Hawkes, 4 B. and Ald. 541, already mentioned, and the following:
Letters patent for a watch, the invention, as disclosed by the specification, being of a particular movement. Jessop's case, 2 H. Bl. 489.
Letters patent for “ a new and improved method of drying and preparing malt," the specification describing an invention which consisted in submitting malt, prepared by the ordinary process, to a high degree of temperature, and thus producing a colouring material for beer, and not the known substance from which beer was to be made, were repealed by scire facias, R. v. Wheeler, 2 B. & Ald. 349.
Letters patent being for “a machine for sharpening knives, scissors, and razors," and the specification disclosing a method applicable to knives only, the plaintiff was nonsuited. Felton y. Greaves, 3 C. & P. 61.
of the second class are that of Lewis v. Marling, 10 B. & C.22, mentioned above, and the following:
The jury found that the invention was new and useful on the whole, but that the machine was not useful in some cases. Held sufficient, Haworth v. Hardcastle, 1 Bing. N. C. 189.
The court does not mean to intimate any doubt as to the validity of a patent for an entire machine or subject which is, taken altogether, useful, though a part or parts may be useless. Morgan v. Seaward, 2 M. & W. 544, and post.
DOLLOND'S CASE. Letters patent to John Dollond, 19 April, 31 G. 2 (1. D. 1758) for “ a new method of making the object glasses of refracting telescopes by compounding mediums of different refractive qualities, whereby the errors arising from the different refrangibility of light, as well as those which are produced by the spherical surfaces of the glasses, are perfectly corrected.”
1, the said John Dollond, do hereby declare, that my said new method of making the object glasses of refracting telescopes is to be performed in the manner following (that is to say), the principal glass of a refracting telescope is that which is farthest from the eye, and is commonly called the object glass, because it is at that end of the telescope which is directed towards the object. This glass refracts the rays which proceed from the object in such a manner as to form an image of the aforesaid object in the focus, which image is magnified by the eye glasses ; but as every ray of light consists of parts that differ in their
degrees of refrangibility, an image formed by refraction is thereby rendered very defective, as all opticians very well know. Now in these new telescopes the images of objects are formed by the difference between two contrary refractions, the object glass being a compound of two or more glasses put close together, whereof one is concave and the other convex. The excess of refraction by which the image is formed is in the convex glass, which is made of a medium or substance in which the difference of refrangibility is not so great. as in the substance which the concave is made of, therefore their refractions being proportional to their difference of refrangibility, there remains a difference of refraction by which the image is formed, without any difference of refrangibility to disturb the vision. The radii of the surfaces of each of these glasses are likewise so proportioned as to make the aberrations or errors which proceed from the spherical surfaces of these glasses respectively equal, and being contrary, they destroy each other.
In witness, &c.
The invention described and claimed in the not for mere principles; the specification de. preceding, is the general method of making the scribes the manner in which the invention is to object glass of telescopes, by combining a convex be carried into effect, with all the perspicuity of and a concave glass of media having different which the thing is capable." 2 H. Bl. 472. refractive powers, and the media used in practice And Buller, J.: “Dollond's patent was for obare crown glass for the convex glass, and flintject glasses, and the specification properly stated glass for the concave glass; but these particular the method of making those glasses.” Ibid. 487. substances are not specified, and whether any And Heath, J.: “I consider that as substantially other substances could be used, or whether the an improved machine.” Ibid. 482. inventor knew that these alone would succeed, is The rules with respect to the curvature of the a question which, on an objection being raised to surfaces, are matters of theory, known to opticians the specification on that ground, would have been and persons accustomed to grind lenses. for the jury.
It was suggested by Eyre, C. J., (2 H. Bl. 493.) With respect to this patent, it was said in that the above was perhaps exceptionable, as being argument, “ Dollond's telescopes are certainly for the “ method of producing a new object glass, a manufacture within the statute; they consist instead of being for the new object glass proof principles reduced into form and practice; duced,” but the manufacture is the same, whatand the patent is for glasses completely formed, ever the terms in the title of the patent,
DOLLOND V. This was an action for the infringement of the preceding patent, and the plaintiff succeeded; the case is not reported (a), but it was frequently alluded to in the subsequent case of Boulton and Watt v. Bull, both in the argument and judgments of the court. BULLER,J.(6): The objection to Dollond's patent was, that he The publisher
is the true and was not the inventor of the new method of making object glasses, first inventor but that Dr. Hall had made the same discovery before him. within the
tute. But it was holden, that as Dr. Hall had confined it to his closet,
(a) The following notice is contained in the Gentleman's Magazine, vol. 36, p. 102, 1766. “Tuesday, Feb. 18. A cause was tried in the Court of Common Pleas, wherein Mr. Dollond, optician in the Strand, was plaintiff, and Mr. Champness, mathematical instrument maker in Cornhill, de
fendant ; the cause of action was, the latter making a telescope in imitation of the patent telescopes of the former. The fact being proved, the plaintiff obtained a verdict, with £250 damages."
(b) 2 H. Bl. 470, and 487.
and the public were not acquainted with it, Dollond was to be considered as the inventor.
The preceding would appear to be the first decision on the meaning of the statute in the case of two rival inventors within the realm; the case of Edgebury v. Stephens, ante, 35, had decided, that the introducer from foreign parts of an invention within the realm, is the true and first inventor within the meaning of the statute, and this case decides that publication is essential to the acquiring that character; that user in private, without some publication, will not defeat the claim of a subsequent independent inventor and publisher of his invention under letters patent for the benefit of the public; the question then arises, what user is such a publi. cation as will defeat a patent, and two cases of user present themselves; Ist. By the patentee; 2d. By a stranger,
The words of the statute are, “the working or making of any manner of new manufactures, which others, at the time of making such letters patent and grant, shall not use;" the words of the letters patent are, “new invention as to the public use and exercise thereof." See post 53, n.a.
In Bramah v. Hardcastle it appeared that the plaintiff had made two or three of his patent machines before his patent, but it was admitted, that circumstance would not of itself avoid the grant. Holroyd, 81.
In Wood & others v. Zimmer & others, 1 Holt, N. P.C., post 82, the patentee had sold the article in the public market four months before the date of the patent. Such sale was evidence of the invention having been used and exercised for the purposes of commerce, and not simply for the purpose of experiment, before the date of the letters patent; such use and exercise, and the subsequent obtaining a patent, are contrary to the whole spirit of the patent laws, which require a disclosure for the benefit of the public, whereas the secret might be lost to the public by such a course of proceeding; and further, the patentee might thus have a monopoly for a much longer period than 14 years, were he allowed to practise the invention in secret until there was danger of its being discovered, or some other circumstances induced him to take out a patent. Post 45, n. b.
In Morgan v. Seaward, one pair of wheels had been made in secret in this country, sold and sent abroad prior to the date of the patent; held, that this was not such a publication as would defeat the patent. 2 M. & W. 559, and post.
The true construction to be placed on the above words of the statute and of the letters patent, in respect of the question, what is such a user as will vitiate the letters patent of a subsequent and independent inventor, is involved in great difficulty. It has been said that a use in any sense which could be called public, as contrasted with a use in private, will vitiate the grant; but such a use may be the result of acci. dent, and in perfect ignorance of the character or construction of the thing so used. Such user may co-exist with total ignorance of the working or making of the said manufacture.
One true test it is conceived is, whether the
manufacture for the purposes of commerce has been used by others. Suppose the country to have been entirely supplied with any particular article from abroad, and a person introduces the manufacture of that article as a branch of trade and commerce into the realm, under letters patent. Would these be rendered void by reason of such previous use of the same ar. ticle imported from abroad? See the smalt patents, ante, 9-14, and acts for patents, ante.
This difficult question was thus left to the jury by Sir N. Tindal, C. J.: “ It will be for the jury to say, whether the invention was or was not in public use and operation at the time the patent was granted. There are certain limits to this question. A man may make experiments in his own closet; if he never communicates these experiments to the world, and lays them by, and another person has made the same experiments, and, being satisfied, takes a patent, it would be no answer to say that another person had made the same experiments: there may be several rivals starting at the same time; the first who comes and takes a patent, it not being generally known to the public, that man has a right to clothe himself with the authority of the patent, and enjoys the benefit of it. If the evidence, when properly considered, classes itself under the description of experiment only, that would be no answer. On the other hand, the use of an article might be so general as to be almost universal ; then you can hardly suppose any body would take a patent. Between these two limits most cases will range themselves, and it must be for the jury to say, whether the evidence convinces their understanding that the subject of the patent was in public use and operation at the time when the patent was granted." Cornish v. Keene,
And again, in delivering the judgment of the court on the point of the verdict being against evidence. “The question whether the various instances brought forward amounted to proof that before or at the time of taking out the patent the manufacture was in public use in England, or whether it fell short of that point, and proved only that experiments had been made in various quarters and had been afterwards abandoned, being a question from its nature of consi. derable delicacy, and in which a slight alteration in the effect of the evidence will establish either the one proposition or the other, the only proper way of deciding it is by leaving it to the jury. And if a jury hear the evidence patiently, and appear to apply it with intelligence, the verdict will not be disturbed." Cornish v. Keene, 2 Hodg. 294; and 3 Bing. N. C. 588.
If an account of an invention be contained in any published book in general circulation, the presumption is that the patentee learnt it from such source, and in that case he would not be the true and first inventor. On the subject of this note, see the following cases; Liardet v. Johnson, post 53; Jones v. Pearse; Galloway v. Bleaden ; Bickford v. Skewes ; Minter v. Mover; and Carpenter v. Smith.
ROEBUCK and GARBETT (Appellants).
[In the House of Lords, 27 May, 1774 (a).]
The specification enrolled by Roebuck described the method Specification. of making acid spirit by burning sulphur and saltpetre, and collecting the condensed fumes, and stated the “material discovery to be the use of leaden vessels instead of vessels of glass, in all or any part of the process.”
The appellants, in their case, stated the uses of the article and the usual methods of preparing it; first, by burning sulphur and collecting the fumes by a bell glass held over, by which the fumes were condensed; secondly, by distillation, in strong glass retorts, over a strong fire; thirdly, by burning sulphur and saltpetre in close glass vessels; fourthly, by burning these materials, and collecting, rectifying and purifying the spirit in vessels of lead, which was the subject of the above patent; that by this invention the price of the articles was reduced 30 per cent. immediately. That they carried on the manufacture in secret, but on discovering that others were learning the art by decoying their servants, they applied for and obtained the above patent (6).
In January 1772, after the respondents had made considerable progress in erecting buildings, the appellants applied, by bill of suspension, to the court of session, praying an injunction to stop the respondents from proceeding with the building. After sundry proceedings, the bill was passed for stopping the works ; and the case being remitted to the Lord Justice Clerk to be discussed, the respondents stated the following objections :
1. That the substitution of lead in place of glass vessels was Objections to no new discovery, being only a small variation in the method of patent. conducting the manufacture. 2. That it could be no new discovery at the time of granting the patent, because the appellants had carried on the manufacture in that method for 20 years preceding the date of the patent. 3. That at the time the patent was granted, this method of manufacturing oil or spirit of vitriol in vessels of lead was known, and practised by various other persons both in England and Scotland. 4. That the appellants had not given such a description of their invention as
(a) See appeal case, House of Lords, folio; (b) The user by the patentee under the ciralin short account of the case, 5 Brown's Supp, tocumstances here stated, is clear ground of invaliDict. of Decisions, 522.
dity. See ante 44, n.
was required by the patent, and that it was signed by Roebuck only, and not by both the appellants.
The appellants answered; 1. That a new mode of manufacture, beneficial to the public, entitled the inventor to an exclusive privilege for the mode, leaving the other known modes free to every person. 2. That they were the original and first inventors of the use of lead vessels in the place of glass, and had made the discovery by degrees, after many tedious experiments, and were in possession of the same for many years before the date of the letters patent. 3. That before the date of the patent the invention was not publicly practised, either in England or Scotland, and that a public exercise must be proved to vitiate the patent. That it is not sufficient to say private experiments have been made, or that persons, by corrupting appellants servants, were attempting to practise it. 4. That the description was as explicit as the nature of the subject admitted, and that Roebuck
had full authority to sign it for himself and Garbett. Interlocutor. The Lord Ordinary, after various proceedings, reported the Evidence of cause to the court, and thereafter, before answer, allowed the user in England respondents to prove pro ut de jure, that the making the oil of
vitriol from a mixture of sulphur and saltpetre in vessels of lead was, at the time and before the date of the letters patent in favour of the appellants, known to and actually practised by others than the appellants themselves, and granted a commission
to examine witnesses in England and Scotland. Appellants’ Ar.
The proofs being concluded, the parties were ordered to give guments. in memorials on the import thereof. The appellants, in their me
morial, observed, that by the treaty of union, England and Scotland are to have the same allowances, encouragements and drawbacks, and to be under the same prohibitions, regulations, and restrictions of trade. That by this law the statute (21 Jac. 1, c.3) of monopolies is extended to Scotland, and it has consequently been customary since the union to grant patents in Scotland in the same form and to the same effect as in England. That these patents, to be effectual in both parts of the United Kingdom, must pass the seals of each; for a patent under the great seal of England does not extend to Scotland, nor under the great seal of Scotland to England; these countries being in the eye of the law foreign countries in this particular. Whence it appears that the Scotch law relative to patents is the same with the law of England, and must be interpreted by the practice and judgments of the courts there. That the rule adopted in England is, that the person who first used the invention within the realm, whether he is the original inventor or brings the invention from foreign parts, is entitled to a patent, as is decided by the adjudged cases, and by the legislature recognising Lombe's patent (ante 38). The law of Scotland considers every place not subject to the jurisdiction of its own courts a foreign country,