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and though the law relative to patents be the same in both parts of the United Kingdom, yet in applying it England is considered a foreign country to Scotland. In conformity with the preceding the clause in the letters patent is, that they shall be void, if it shall be found that the subject-matter of them “ quoad ejus publicum in illa parte dict. regni nostrie Magnæ Brit. Scotiá vocat, usum et exercitum non esse novam inventionem," and that they were consequently entitled to their patent, unless the respondents proved, that before the date of the patent the manufacture was publicly practised by others in Scotland; that a private or clandestine manufacture in small quantities would not answer the purpose, because that invention which is kept secret from the public, or is locked up in the breast of the inventor, is, so far as respects the public, no invention at all, and the man who first makes the art or invention public, is alone entitled from the state to the advantages accruing from it.
The appellants also insisted that they were the original and first inventors of the manufacture, in the most strict and literal sense of the term, but that even though the invention had been practised before their patent, in any other country considered a foreign one in the law of Scotland, yet, that if such practice had not extended to Scotland, it could make no alteration in the question.
The questions were, therefore, first, whether the respondents had proved their knowledge and user of the invention before the patent; secondly, whether the modes were known and practised by any other person in Scotland before the patent; or, thirdly, by any person in England.
The respondents, in their memorial, maintained that the whole Respondents' United Kingdom being subject to the same rules, regulations, Argument and restrictions in matters of trade, if the trade of making oil of vitriol in vessels of lead was free to all men in England, it must in like manner be free to all men in Scotland, notwithstanding the patent granted to the appellants. The respondents also maintained, that the patent was void on the following grounds; first, that the invention was not a subject-matter; secondly, that the appellants had known and practised the invention 14 years before they applied for the patent; thirdly, that the invention was practised by others both in England and Scotland, and was not within the proviso of 21 Jac. 1, c. 3, being no new invention or discovery of any art or manufacture, but only a trifling improvement, without the least variation in the manufacture itself, the spirit or oil of vitriol being the same as before. That if the substance was in esse before, a new addition, though making the former more profitable, yet is not a new manufacture in law (ante 31, n. p). That this was no new discovery at the date of the patent, the grant whereof is meant as a recompense to the patentee for his invention by giving him an exclusive right for 14 years ; consequently, when a person has enjoyed his inven
tion for a longer term than that for which patents are granted, he has no title to demand one. That the patent was void, the invention having been practised both in England and Scotland before the date of the patent.
In answer to the pretence of the appellants, that however invalid the patent might be in England it must be good in Scotland, the respondents relied on the 6th article of the treaty of Union; that the whole United Kingdom being subject to the same prohibitions, restrictions, and regulations, as to trade, and it being indisputable that the making the oil of vitriol is free to all men in England, that trade could not be the subject of a
monopoly in Scotland. Interlocutor. The cause was then reported by the Lord Ordinary to the
whole court, and the following interlocutor pronounced:-In respect it appears from the proofs adduced that the art of making 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 of the appellants, known to and actually practised by different persons in England-therefore the Lords find the
letters orderly proceeded and decern. Judgment of the May 27, 1774. On appeal to the House of Lords from the pree of Lords. ceding, it was ordered and adjudged, That the appeal be dismissed,
and that the interlocutors therein complained of be affirmed, for other reasons as well as the reasons specified therein.
The first interlocutor, ante 46, allowed the proof of the respective averments before answer; that is, before determining the relevancy and legal effect of the averments; the judgment affirming this, and the subsequent interlocutor, must therefore be considered as an authority, that the averment of the Stirlings, as to the prior public use in England, being proved, was a fact of itself relevant and sufficient in law to find the letters orderly proceeded, that is, in effect, to dissolve the injunction, and that the Stirlings were entitled to carry on the operations referred to.
The meaning of the sixth article of Union, and the authority of the great seal of the two countries, were under consideration in the case of the Universities of Oxford and Cambridge v. Ric chardson, 6 Ves. 689.
The plaintiffs were entitled, under letters patent, to print and sell Bibles, &c. within England, and other persons were entitled to like privileges within Scotland, under the seal of Scotland, and the defendant contended that by virtue of the act of Union, persons authorized to print and sell the said books in Scotland have a right to send the same into England and sell them there, and vice versa ; that the printing and publishing being legal, the sale at any place could not be restrained; thit the consequence of such restriction would be, that books of the kind, purchased in Scotland, even as a part of the library of a person coming into this country, could not be sold here.
On the part of the plaintiffs it was contended, that the argument founded on the 6th article of Union was fallacious, since on the same principle it might be contended, that since the Union a citizen of London might exercise the privileges of
a citizen of Edinburgh, and vice versa. That the true meaning of the article is, that the subjects of Scotland shall have the same privileges in England as the subjects of England have, and not that they may do that in England which the subjects of England cannot do. That the patents in both countries are confined to each respectively, as was clearly established by the House of Lords in the case of Baskett y. Watson. That notwithstanding the Union, for all the municipal jurisdiction of the great seal, and for all the purposes of acquiring rights under the great seal, the countries are distinct as ever. The right to print would be fruitless if the sale cannot be restrained. The whole exercise of the grant is by way of trade. Exportation to foreign countries is not prohibited, the object being only the sale in England. The instance of the sale of books from a private library does not come within the description of trading, unless it be made use of as a cover.
Lord Eldon, L. C., was clearly of opinion, “that the defendant was acting contrary to law, and must be enjoined; that the license given by the letters patent confines the printing to the limits of the Universities, and the purpose of the power is the sale out of the Universities any where in the King's dominions ; but the prior patent to the Scotch printer excludes them, and upon the true construction of all the patents it was not intended that the books they should print within the Uni. versities should be sold in Scotland. The argument of reciprocity, that Scotch books may be sold here and English books in Scotland, assumes the question; for those who contend that books printed in Scotland cannot be sent to England,
admit that books printed in England cannot be sent to Scotland.
"If the right of the defendant can be sustained. it must go to this; that the king's subjects in Ireland have, notwithstanding any patent like this granted to the king's printer in Ireland, a right to introduce into that country books printed by the king's printer in Scotland; and that the king's subjects in Scotland have a similar right to bring into Scotland books printed in England or Ireland by the king's printer. Independent therefore of authority, the proposition asserts a right in the king's subjects to control his grant in a most material and efficacious way. It is familiar, that if a patent for an invention is confined to England, it would not extend to Ireland. If a distinct patent is granted for Ireland, the very circumstance of taking them under the distinct great seals, which are still distinct for that purpose, among others, shows the reason ; and time is always required with regard to the day at which the enrolment of one patent is to be made, on account of the purpose to get a patent elsewhere ; and it is always understood, that the right in a patent for one country is confined to that, and would not enable the party to bring the article for sale into the other; yet upon all those cases the argument is perplexing, but that is in the nature of the thing.' It might be asked, whether the king's subjects could not buy that article in Ireland, and bring it here ; and if any one did, whether it might not be sold as part of his effects. To that I do not know an answer. It is enough to say, if it is legal, that circumstance has not stood in the way of this proposition; that you cannot bring those articles here for the purpose of trading. That circumstance belongs rather to the necessity of the habits of life, and has never prevailed against the law, protecting the sole right of the party.” 6 Ves. 709.
The points stated in the principal case suggest the following questions :
1. Whether the act of Union makes Scotland part of the realm of England, within the scope and meaning of the statute, 21 Jac. 1, c. 3, as regards patents.
2. Whether it does not appear from the act of Charles, ante 33, that the old common law of the two ancient kingdoms of England and Scotland was the same in respect of monopolies.
3. Whether the 6th article of the act of Union bas any other meaning than that the people of Scotland shall bave the same privileges in Eng. land as the people of England have.
4. In what respect the common law preroga. tive of the crown is limited or affected by the act of union, as to granting patent rights.
5. What is the prerogative of the crown in respect of Scotland, which is said in the old cases to be a dominion belonging not to the crown but to the king of England. See Craw v. Ram. sey, Vaugh. 279.
Practice. With respect to the practice in actions of infringement since the Union, the following case is of importance :
Morton v, Barclay. In the Jury Court of Edinburgh, 15 March, 1824, before the Lord Chief Commissioner, 'Lord Gillies, and Lord Pitmilly.
In this case Thomas Morton, the pursuer, had letters patent for Scotland, dated 18 August, 1818, for his machine for hauling vessels out of the water for repairs and other purposes; he subse.
quently had patents for the other parts of the United Kingdom and the colonies.
The defenders erected a similar machine near Glasgow, and an action being raised in the court of session, denied that the pursuer's machine was an original invention, and also alleged their machine to be different from that of the pursuer. The question was remitted to the Jury Court, but the defendants failed to appear at the trial, which proceeded in their absence, notice of trial having been proved.
The Lord Chief Commissioner made some observations as to the law of Scotland relative to cases of this nature, remarking that the law of England, in similar questions, was perfectly understood. He thought it would be a desideratum in the law of Scotland if the point was finally settled.
Mr. Jeffrey said, that since the Union the same practice in regard to patents had been followed in Scotland as in England, and the necessary preliminary steps to give effect to them were similar in both. The law, therefore, appeared to be as well understood as if provided for by statute.
A model of the defender's machine (admitted to be correct) was put in, and the letters patent and enrolment of specification were admitted, and the issues raised were, whether the said machinery described in the said specification, for the purpose of drawing ships out of the water on dry land, was an original invention of the pursuer.
Whether the defenders after the date of the letters patent, and of the said enrolment of the specification, by themselves or others did, without the consent or permission of the pursuer, and in contravention of the privilege granted and protected by the said letters patent, erect machinery at, &c., in imitation of, and which was substantially and in effect the same with the machinery described in the specification, to the loss and damage of the said pursuer.
The evidence having been gone through, the Lord Chief Commissioner in addressing the jury said, “ The defenders having made no appearance, seemed to consider their case indefensible, and no case could be more clearly made out. In a question such as this, the practice in England rendered it necessary for the pursuer, first, to make out that the invention was original, and that the invention was his own; and, secondly, that his patent had been invaded. Upon these points it would be a waste of time to say a word after the evidence which had been adduced. It had been proved that the invention was original; that it was useful; that it was preferable to dry docks ; and that it would be of the utmost utility in those places where there was not a rise and fall of the tide. Its superior advantages as to the length of time which it allowed to the artisans to carry on their labour, the dryness of the bottom of the vessel, and also the facility of getting in large planks, had been sworn to. The model of the machinery itself was before their eyes ; it was new, and the invention altogether original and of great utility. The evidence had been met with no answer, and it was indeed unanswerable. With regard to the law in questions of this nature, he would say nothing : he believed that this was the first case which had been brought to trial upon similar issues. As no proof of actual damage had been led, or of loss sustained by the pursuer in consequence of the infringement, and as his object was principally to establish the originality of his invention, which would be effectually done
by the jury giving small damages, as was the rule in England in similar cases, and it was the rule he understood which had guided the court of session in like questions, he would therefore suggest, if the jury found a verdict for the pursuer, with one shilling damages, that the object which Mr. Morton had in bringing this case to trial would be attained, viz. the establishment of the originality of his invention, and the violation of his right in the patent. A verdict also for the plaintiff, with one shilling damages, would, as a matter of course, carry costs, when that point came under consideration.”
Verdict for the pursuer, damages one shilling. See Printed Case, and 3 Murray's Jury Cases, 398.
There have been several other cases on patents recently before the courts in Scotland, but the questions raised in the principal case do not appear to have been raised till the case of Brown v. Annandale & others, before Lord Mackenzie, 14th and 15th of May, 1841, in which the authority of the principal case was recognised, and evidence of user in England, prior to the date of the patent, held admissible. Post.
Stirlings v. Roebuck & G.--Roebuck & G. v. Stirlings.
[5 Brown's Supp. to Dict. of Decisions, 523.] “ This writ (i. e. the proceedings in the principal The Messrs. Stirlings could not have recovered case, ante, 48) being ended in this manner, the any damages for the suspension in the courts of Messrs. Stirlings, on the one part, brought an this country, and the English Court of Chancery action of damages against Messrs. Roebuck & is consequently very cautious of stopping exten. Garbett, on account of the loss they had sustained sive works by injunction when irreparable damage by having their manufacture stopped for the space may be the result. In the recent case of Neilson's of 28 months, by the above illegal and ill-founded patent, Lord Cottenham, L. C., recognised this opposition ; and also for a certain sum as the principle in the following terms. " If the patentee expenses of that litigation. (In the first process is entitled, it would be extremely hard for the no expenses had been given in the Court of Ses court to do any thing to prevent his receiving sion, nor costs in the House of Lords.) And to that which he is entitled to receive, and in expec. meet this process, Messrs. Roebuck & Garbett tation of which he permitted the defendants to go brought a counter process of damages against the on with their works. But on the other hand, it Stirlings, founded on an allegeance (allegation), would be extremely hard indeed to tell the de. that Messrs. Stirlings had, by corrupting their fendants, that they shall not use the works which servants, and other unjustifiable and hidden means, with the plaintiff's knowledge they bave prepared stolen their secret from them, and rendered their at a very considerable cost; and as to telling them patent of no effect. Lord Stonefield assoilzied that they may go on with the cold blast instead of (discharged] the parties mutually from both ac the hot blast, when I am told that the difference tions ; but, on a reclaiming petition to the Lords between the use of the one and of the other is an (the full court) by Messrs. Stirlings, the Lords expense of nearly double, even if it were possible at first, 1st February 1776, adhered to the Ordi. that they may sustain that loss in the interval un. nary's interlocutor; but, on a second bill, 13th til the loss is tried-it seems to me that stopping June 1776, they altered, and found damages due. the works by injunction under these circumstances
“For, although it be true that suspensions and is just inverting the purpose for which an injuncinterdicts are established modes of trying contro. tion is used, namely, of preventing mischief; this verted questions, and it does not follow, as matter would be using an injunction for the purpose of of course, that every person who applies for an creating mischief; because the plaintiff cannot interdict, and afterwards fails in supporting the possibly be injured ; all he asks is one shilling grounds of that application, is liable to an action per ton; but the prejudice to the defendants of reparation and damages; yet at the same time must be very great indeed, if they are prevented such action is competent, and, upon special cause from using at their furnaces that apparatus which, shown, damages will be given ; especially as in with the consent of the plaintiff, they have erected. this case, where the Lords seemed to be of opinion The object of the court is to preserve to each that the patent was obtained by obreption and party the benefits he is entitled to, until the ques. subreption, and that the suspenders ought to have tion of right is tried, and that may be entirely allowed the buildings to have proceeded, and secured by the defendants keeping an account not trusted to the caution which was offered at pass only for the time to come but from the time when ing the bill by Lord Kaimes, for an after indem the connexion commenced, and undertaking to nification.
deal with it in such way as the court may direct." “ The conclusion for the costs of the former suit, Neilson v. Thompson & others. qud costs, was held clearly to be incompetent." See per Sir L. Shadwell, V.C., to the same effect 5 Br. Supp. Dict. Dec. 523.
in Bickford v. Skewes. Post.
MORRIS'S PATENT. Letters patent to John Morris and others, 28 March, A. D. 1764, for the invention of “ an engine or machine on which is fixed a set of working needles, which engine or machine is fixed to a stocking frame, for the making oilet holes or net work in silk, thread, cotton, or worsted. as mits, gloves, hoods, aprons, handkerchiefs, and other goods usually manufactured upon stocking frames, by a method entirely new.”
The specification referred to a drawing which represented and Specification. described a set of working needles.
* This invention led, about the year 1770, to a considerable and increasing trade at Notting bam, in weaving mits, handkerchiefs, &c., in open kaitted work, by stocking frames, with additional machinery, and several other patents were taken within 15 years after the preceding, and the courts
were often occupied with trials for infringements of them, but they are not reported.
The immediate consequence of this invention was therefore the introduction of a manufacture, new both in the result attained and in the manner of obtaining known results.
MORRIS v. BRANSOM.
[Bull N. P. 76 c.] The question was, whether an addition to an old stocking An addition or
improvement frame was the subject of a patent; Lord Mansfield said, If the a general question of law, viz. that there can be no patent for an matter. addition, be with defendant, that is open upon the record, he may move in arrest of judgment, but that objection would go to repeal almost every patent that was ever granted. There was a verdict for plaintiff, and £500 damages, which was acquiesced in.
This verdict being acquiesced in, the autho rity of Bircot's case, and the dictum of Sir E. Coke, ante 31, n. p., were entirely overruled, and an addition to an existing thing, or improvement in a known trade, has been recognised as the subject. matter of letters patent. See per Buller, J., 2 H. BL. 489, and per Grose, J., 8 T. R. 104.
The only question in recent cases has been whether the specification confines the claim to such addition or improvement, so that nothing known before is included.
Nor does it make any difference if the subject. matter is an addition to or an improvement on an existing patent. Lord Eldon, L. C.: “If the petitioners have invented certain improvements upon an engine for which a patent has been granted, and their improvements could not be used without the original engine, at the end of 14 years the petitioners could make use of a patent taken out upon their improvements; though before that period expired, they would have no right to make use of the other's substratum. At the end of that time the public has a choice between the patents. My present opinion is, that the patent must go." Fox, es parte, 1 Ves. & Bea. 67.
The subject-matter of the preceding was a
separate and distinct engine or instrument to be applied to the old stocking frame, and to be used in a certain manner, so as to produce a new manufacture ; but many cases occur in which the invention is more conveniently described by considering the old and the new as constituting a new combination of matter, or known elements and instruments. Thus in this particular case the old stocking frame, with its addition, was a new combination and arrangement of parts; similarly, the omission of any part of the old stocking frame would have constituted a new combination, and been a good subject matter, if it had led to any improvement of the trade.
In Russell's case the invention consisted in manufacturing iron tubes for gas and other purposes, by the omission of a maundril, an instrument in use under the preceding patent for this manufacture. Russell v. Cowley, i Cr. M. & R. 864.
The test applicable to this and all cases is, in the words of Buller, J., as follows : “ If there be any thing material and new, which is an improvement of the trade, that will be sufficient to support a patent." R. v. Arkwright. Post 71, n. e.