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 illá parte dict. regni nostrie Magne Brit. Scotiá vocat. usum et exercitum non esse novum 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, Arguments. 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

Interlocutor.

Judgment of the

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.

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.

May 27, 1774. On appeal to the House of Lords from the preHouse 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. Richardson, 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 versá; that the printing and publishing being legal, the sale at any place could not be restrained; that 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 v. 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 Universities 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,

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 case, ante, 48) being ended in this manner, the Messrs. Stirlings, on the one part, brought an action of damages against Messrs. Roebuck & Garbett, on account of the loss they had sustained by having their manufacture stopped for the space of 28 months, by the above illegal and ill-founded opposition; and also for a certain sum as the expenses of that litigation. (In the first process no expenses had been given in the Court of Session, nor costs in the House of Lords.) And to meet this process, Messrs. Roebuck & Garbett brought a counter process of damages against the Stirlings, founded on an allegeance [allegation], that Messrs. Stirlings had, by corrupting their servants, and other unjustifiable and hidden means, stolen their secret from them, and rendered their patent of no effect. Lord Stonefield assoilzied [discharged] the parties mutually from both actions; but, on a reclaiming petition to the Lords [the full court] by Messrs. Stirlings, the Lords at first, 1st February 1776, adhered to the Ordinary's interlocutor; but, on a second bill, 13th June 1776, they altered, and found damages due.

"For, although it be true that suspensions and interdicts are established modes of trying controverted questions, and it does not follow, as matter of course, that every person who applies for an interdict, and afterwards fails in supporting the grounds of that application, is liable to an action of reparation and damages; yet at the same time such action is competent, and, upon special cause shown, damages will be given; especially as in this case, where the Lords seemed to be of opinion that the patent was obtained by obreption and subreption, and that the suspenders ought to have allowed the buildings to have proceeded, and trusted to the caution which was offered at passing the bill by Lord Kaimes, for an after indemnification.

"The conclusion for the costs of the former suit, qua costs, was held clearly to be incompetent." 5 Br. Supp. Dict. Dec. 523.

Title.

The Messrs. Stirlings could not have recovered any damages for the suspension in the courts of this country, and the English Court of Chancery is consequently very cautious of stopping extensive works by injunction when irreparable damage may be the result. In the recent case of Neilson's patent, Lord Cottenham, L. C., recognised this principle in the following terms. If the patentee is entitled, it would be extremely hard for the court to do any thing to prevent his receiving that which he is entitled to receive, and in expectation of which he permitted the defendants to go on with their works. But on the other hand, it would be extremely hard indeed to tell the defendants, that they shall not use the works which with the plaintiff's knowledge they have prepared at a very considerable cost; and as to telling them that they may go on with the cold blast instead of the hot blast, when I am told that the difference between the use of the one and of the other is an expense of nearly double, even if it were possible that they may sustain that loss in the interval until the loss is tried-it seems to me that stopping the works by injunction under these circumstances is just inverting the purpose for which an injunction is used, namely, of preventing mischief; this would be using an injunction for the purpose of creating mischief; because the plaintiff cannot possibly be injured; all he asks is one shilling per ton; but the prejudice to the defendants must be very great indeed, if they are prevented from using at their furnaces that apparatus which, with the consent of the plaintiff, they have erected. The object of the court is to preserve to each party the benefits he is entitled to, until the question of right is tried, and that may be entirely secured by the defendants keeping an account not only for the time to come but from the time when the connexion commenced, and undertaking to deal with it in such way as the court may direct." Neilson v. Thompson & others.

See per Sir L. Shadwell, V. C., to the same effect in Bickford v. Skewes. Post.

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 Nottingham, in weaving mits, handkerchiefs, &c., in open knitted 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.

H. Vac. A. D. 1776, Cor. Lord Mansfield.

[Bull N. P. 76 ]

The question was, whether an addition to an old stocking An addition or frame was the subject of a patent; Lord Mansfield said, If the a good subjectimprovement 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 authority 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 subjectmatter 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 subjectmatter 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, ex 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 I 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, 1 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.