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That which has could be appropriated by any body, because it had already been been given to
ce given to every body.] All that is required by the statute cannot be again 21 Jac. 1, c. 3, s. 6, is, that the grant shall be made “to the first appropriated by a any one.
and true inventors of such manufactures, which others at the time of the making of the grant did not use.” The statute intended to prevent loss to the inventor of a useful instrument, who brings it into public use and exercise, by reason of the making of a former similar invention not brought into practice, or the use whereof may be said to have ceased. [Lord Abinger, C. B.: By how many of the public would you allow it to be known, and what are the public? How vague a rule you would establish for each case! Would you say that the use by a particular club would be a use by the public; or suppose the inventor of a machine gives away a hundred among his friends, and they use it?] In Lewis v. Marling (h), a model and a specification of a machine similar to that for which the patent was granted had been brought over from America, and shown to several persons; but it was held, that as no machine had been manufactured and brought into use, and as the patentee had not seen that model or specification, he might still be considered the inventor. So in Jones v. Pearce (i), where it was proved for the defendant that a Mr. Strutt had constructed wheels similar in principle to that of the plaintiff's. Patteson, J., in summing up to the jury, said that if it appeared that the wheel “ was used openly in public, so that every body might see it, and the plaintiff had continued to use the same thing up to the time of taking out the patent, undoubtedly that would be a ground to say that the plaintiff's invention was not new.” [Alderson, B.: That is the very same principle of law as was laid down by my lord in the present case; the only restriction I should put upon it would be, that it need not appear that the machine was used up to the time of taking out the patent.] People would not become acquainted with the principle of this invention by passing along the road, past the gate, by thousands; and yet thereby a person bona fide discovering it for himself, and bringing it into public use in another part of England, is to be precluded from taking out a patent. Such a construction of the law is surely too large.
ALDERSON, B.: I think there ought to be no rule in this case. I have not the least doubt that that is the right construction of the law which my lord has put upon it. Public use means a
fact, the true and first inventor. Then arises the question, how far, under the peculiar words of the statute, letters patent granted to such subsequent and independent inventor, who introduces the in vention, that is, the working and making of the manufacture under the protection of letters pa. tent, may be valid, notwithstanding such prior
publication in a book without any use of the in-
(h) Ante 496; 10 B. & C. 22.
use in public, so as to come to the knowledge of others than the Public use is a inventor, as contradistinguished from the use of it by himself in use
was to come to his chamber. How then can it be contended that the lock the knowledge which has been used in public by Mr. Davies for so many years o is a new invention? If the plaintiff's doctrine is correct, it would follow, that if Mr. Davies were to change his lock to another gate he would be liable to an action for an infringement of the plaintiff's patent (k). The case of Lewis v. Marling went to the very extreme point of the law. GURNEY, B., concurred.
Lord ABINGER, C. B.: I agree in thinking that there is no ground for disturbing the verdict. I was counsel in the cases of Lewis v. Marling and Jones v. Pearce, and I recollect that those cases proceeded on the ground of the former machines being, in truth, mere experiments, which altogether failed. The public use and exercise of an invention, means a use and exercise in public, not by the public. There are some expressions in former cases which were referred to on the trial, which rather leant towards Mr. Kelly's argument, and I therefore thought it fit to lay down the rule of law in the broad terms I did. I have always entertained the same opinion on the subject.
(k) The learned judge does not appear to have adverted to the ambiguity which the terms “invention" and “the use of or using an invention" may involve. If the daily use or the removal of a lock be a using of an invention, within the meaning of the prohibitory clause of the letters patent, then with every sale of a patent article there ought to be an authority in writing, under the band and seal of the grantee of the letters patent, or of his executors, administrators, or assigns. Such, however, it is respectfully submitted, is not the true construction to put on the words of the letters patent, which are, in the words of the statute, to be granted for the working or making of a cer tain manner of new manufacture, that is, for the oxercising of the requisite arts by which such manufacture is to be produced; the letters patent give to the grantee, his executors, administrators, and assigns, and to no others, to make, use, exercise and vend the invention, and prohibit all other persons from making, using, or putting in practice the invention, without a license in writing, under seal. Can it be contended that the employ. ment in the ordinary purposes of life, of an article made under the patent,' is such a using of the invention? The omission of the word "vend" in the prohibitory part is remarkable. The vending that is, as defined by Coleridge, J., ante 138, the habit of selling, is frequently restrained by a court of equity, because it raises a presumption of the making, using and exercising the invention, and if unexplained a breach of the patent may well be inferred therefrom.
Suppose the lock in question, in the principal
case, to have been brought by some unknown per-
The notice of This was an action for an infringement of a patent, granted objections must 30th April, 1840, to the plaintiff Jones for improvements in point out the defence with treating or operating on farinaceous matter, to obtain starch greater particu- and larity than the
- and other products, and in manufacturing starch. The declararecord. tion was in the usual form, and the pleas were-1. Not guilty. Books intended. That the plaintif Los to be relied on
2. That the plaintiff Jones was not the true and first inventor. should be 3. That the plaintiff did not particularly describe and ascertain distinctly deScribed.' The the nature of the invention, and in what manner the same was to court will see be performed, in pursuance of the proviso in the letters patent. that the objec
s'stated 4. That the said invention was in use by others before the date with reasonable of the patent. particularity, ac.
" The notice of objections delivered with the pleas was as circumstances follows:-1. That the said Jones was not the true and first inof the case.
ventor of the said invention, the same having been published in Notice of objec- the specification of certain letters patent, granted to Thomas
Wickham, and which specification was enrolled on or about the 10th day of March, A. D. 1824, and also in the specification of certain other letters patent granted to William Prince, and which specification was enrolled, on or about the 2d day of May, 1768; and also by other persons in other books and writings, before the date of the said letters patent of Jones. 2. That the said specification does not sufficiently distinguish between what is old and what is new; that the processes therein described are not beneficially applicable to obtaining starch from all farinaceous matters; that Jones did not state in the said specification the most beneficial method with which he was then acquainted of practising his said invention; that the proportions and directions given are not such as to enable an ordinary workman to make starch of a quality suitable for the general purposes of commerce; that the said specification is in other respects uncertain, insufficient, and calculated to mislead. 3. That the said invention was in use by many persons before and at the time of the date of the said letters patent, and particularly that the use of rice as and for starch, and the use of rice flour as and for starch, and the preparing rice flour to be used as starch, and the preparation of starch from whole rice and from rice flour, were known and practised by persons engaged in the manufacture and finishing of lace and similar fabrics at Nottingham and elsewhere, before and at the time of the grant of the said patent to Jones.
Sir T. Wilde having obtained a rule calling on the defendant Argument on to show cause why further and better particulars should not be the rule. delivered, cause was shown by
Channel, Sergt. This case differs materially from those in which the court has had to consider, whether it would compel a party to give the names of persons who may have used the invention, or whether, when a defendant objects to some part of the improvement as not new, he will be required to state what part is not new. The first objection is addressed to the principle, not to the use of the invention; that the principle is not new, having already been the subject of two patents and contained in published works. Two specifications are pointed out, and it could never be intended that a defendant should give an account of all the cyclopædias in which the subject is mentioned. [Sir N. C. Tindal, C.J.: You may have kept your best evidence behind, and then start on them some article in an encyclopædia.] The objection is, that the principle is perfectly notorious; that the obtaining starch from farinaceous matters was well known to the chemical world. Suppose a person were to claim a patent for making rum from sugar or molasses, surely any one would be entitled to say that is not a new principle, it is disclosed by all the scientific publications of the day. The plaintiff's witnesses, who come to support a patent like this, ought to be in a situation to know whether it has been discussed in the leading scientific treatises of the day; the use of a particular substance to a certain extent, and so far as the plaintiff may have considered secretly, and yet large enough to invalidate the patent, seems to stand on a different ground.
The objections to the specification are specific, and the defendant is willing to strike out the general words at the end.
The last objection specifies the purpose for which, and the place at which, the invention is said to have been in use; this is different from the cases in which the question has been, whether names should be given, and is sufficient, looking at the nature of the invention. The case of Bulnois v. Mackenzie (a) decided that it would be going too far to require the names and addresses to be given. The case of Fisher v. Dewick (6) does not apply to the names and addresses of the parties. [Bompas, Sergt.: The report of that case does not go to the full extent; the Lord Chief Justice in all the pleas struck out the words " and other persons” (c).] If the objection had been simply, that the invention was used by certain persons, without giving any information as to their particular trade, it would have been sufficient upon the authority of the cases (d).
(d) The learned counsel referred to the note, ante 268.
(a) Ante 260.
b) Ante 266.
(c) See ante 266, n. a, and the further particulars of this case, post 551.
Argument on the rule.
Bompas, Sergt., in support of the rule. These objections are insufficient, in respect of certain words which tend to throw them open, and make them no notice whatever. The difficulty in respect of the words, “other books and writings," at the end of the first objection, is this :- A witness comes into the box to give evidence. A book is put into his hands, which he has never seen before, and he is asked to give his opinion as to whether what is there described is within the patent. The witness cannot give a satisfactory answer on a long statement at once; he is taken by surprise. It is essential in applying the testimony of scientific men, that the witnesses should have had an opportunity beforehand of seeing such statements. The evidence to be given is not like the knowledge of a fact which he is bound to know; it is an opinion on a long scientific statement. It is impossible for satisfactory and consistent evidence to be given in such cases without an opportunity of prior examination. And as regards written published accounts, the defendant cannot be prejudiced, since he may have the notice amended within any time of the trial that a judge may think reasonable. This is not a case in which there can be any tampering with witnesses or evidence ; each party has a fair opportunity of examining it, and forming his opinion upon it. If this be not done, the witnesses may be taken by surprise, and the effect of the trial thereby rendered abortive. The peculiar nature of patent cases requires that the plaintiff should have notice of all written documents or publications intended to be adduced in evidence. In the case of Fisher v. Dewick, the Lord Chief Justice struck out the words “divers other persons," the notice having mentioned certain persons, remarking at the same time, “if the defendant discovers other persons not named in these objections, he has the power of applying to a judge to add them,” and this case is precisely the same as that.
As to the objection that the plaintiff Jones has not described the best method with which he was acquainted, we have no idea what is meant. [Sir N. C. Tindal, C.J.: You must know, if you at one time thought of putting such a method into your specification. It lies within your own knowledge better than the defendant's. The defendant cannot prove it unless something of that sort has taken place.] [Erskine, J.: Suppose the defendant to prove that you have produced an article which clearly could not be produced by the mode described in the specification, by what other mode the witness cannot say, would not that be evidence to show you had not described the best mode with which you were acquainted ?]
The fourth objection is nothing more than the plea, that it was used publicly. [Maule, J.: It goes further. Persons of a particular trade at Nottingham and elsewhere.] That is not at all within what the court decided in Fisher v. Dewick. The in