Council.

vention, and, from want of capital and means, has not been able In the Privy to obtain an adequate return, we have over and over again ex- A.D. 1839. tended the patent under such circumstances. The evidence is that more than £200 a year has been received, but part of that £200 a year consists of the profit upon capital. If it is a mode The questions of advantageously employing capital, it is an additional reward are, as to the novelty and for the invention. The questions are, is it a useful invention; utility of the is it beneficial to the public; is it an invention of that character invention, and sufficiency which would lead us to interpose; is there ingenuity in the in- of the remunevention, and has the party been remunerated? My doubt is this. ration. It appears, Mr. Hill, you would make £200 a year. The respectable witness, Mr. Nairn, whose evidence in point of feeling does him and Mr. Downton so much honour, went to show (and the rest of the evidence is consistent with it) that if you go on you will get £200 a year. Then if that has been the usual average profit during the fourteen years of the patent, or say ten or twelve years, since it has come into use, and you have been able to overcome the opposition of the plumbers, is not this the ordinary case; and would it be just for the party at the end of the fourteen years to come and say, "I have only made £200 a year; I want to make the same sum so many years more." We generally want this proof-that they made nothing for the The absence of all profits first seven or eight years, and it only began to be profitable during a part of during the latter years. It is no case for an extension only to the term a show that you made £200 a year for the first fourteen years, tension. you want to make £200 a year for seven years more. I take to be the objection.

and

That

In

Hill: I do not divide the 924 over the fourteen years. point of fact the sale is increasing: I have here a list of the number sold in each year. It appears that in 1825, 19 closets were sold; in 1826, 33; in 1827, 90; in 1828, 92; in 1829, 32; in 1830, 44; in 1831, 46; in 1832, 63; in 1833, 74; in 1834, 84; in 1835, 113. I can explain the small number in 1829, by a piracy at that time; and it went on increasing from 1829 till 1835, when the patentee died. In 1836, 73 closets were sold; in 1837, 70; in 1838, 69; in 1839, 22.

Lord LYNDHURST: Their lordships are of opinion, that the term of the patent should be extended for five years, and will report to her majesty accordingly.

Roebuck applied for the extra costs occasioned by the opposition.

A Lord: I think so in such a case as this; there was no ground for the opposition. The Attorney General is here for the public at all events (a).

ground for ex

(a) Costs.-The court ordered it to be referred to a master of the Queen's Bench to tax "all such extraordinary costs as may have been incurred on

behalf of the said Betsy Downton, in consequence of the caveat and opposition." These costs were taxed at £61. 10s.

In the Privy
Council.

June 13, 1839.

for extension,

KAY'S PATENT.

Cor. Lord Lyndhurst; Lord Brougham; Sir H. Jenner;
Dr. Lushington.

This was an application by the patentee for an extension of the terms of the several letters patent (a) granted to James Kay, for " 'improved machinery for preparing and spinning flax." Sir F. Pollock and Booth appeared for the petitioner (6); Cresswell for the opponents; and the Attorney General (Sir J. Campbell) for the crown.

Sir F. Pollock (in reply to a question from their lordships): The validity of the patent is disputed; an action has been tried and a verdict found establishing the patent; objections had been afterwards made in the Court of Chancery, and the case is now before the Master of the Rolls for further directions.

Cresswell: Though the verdict had been found for the plaintiff, a special indorsement was made on the postea; in consequence of this the Master of the Rolls sent a case to the Court of Common Pleas, consisting of the issue, the verdict, the postea, and the specification, desiring the opinion of that court, whether it was a valid patent or not; that court, after argument and time taken to consider, returned a certificate to the Master of the Rolls, that it was not a valid patent, and gave their reasons to the counsel on each side; the case had been argued before the Master of the Rolls on further directions, and now stood for his lordship's judgment.

Letters patent Their lordships intimated that, the case not being decided in being about to the Court of Chancery, they felt some difficulty in proceeding, expire, the Privy Council will and should not do so were it not that the patent would expire hear a petition in a few days; but that this court was not to be substituted in notwithstanding the place of the Court of Chancery to decide the legal question. any doubts as to [Sir F. Pollock: It is not necessary for me to go further than to show that there is a reasonable ground for supposing that the patent would appear to be valid, leaving to the Court of Chancery to decide upon that question.] [Sir J. Campbell, A. G. If this were res judicata, and the court had decided this not to be a valid patent, I should strenuously resist a pro

the validity of

the patent.

:

(a) The letters patent for England were dated 26th July, 1825; for Scotland, 23d June, 1825; and for Ireland, 9th December, 1826.

(b) The petition, after reciting the grant of the several letters patent, and setting forth the specification, stated the various legal proceedings which had taken place, and that these proceed

ings were still pending; but that the petitioner could not postpone the present application until their decision, as the patents were nearly expired. The petition further stated that, by reason of the litigation and expenses incurred, the inventor bad not been adequately remunerated.

Council.

longation of the term, but being lis pendens I do not conceive In the Privy your lordships could be considered as deciding that, by recommending a prolongation of the patent in case it should be established.] Their lordships decided that the patent being near its expiration, they would proceed, as the prolongation would be of no value if the Court of Chancery should decide against the validity of the patent. [Cresswell: The prolongation of a patent ought not to be recommended by your lordships unless the houses of parliament, for which this tribunal was substituted, would have seen it right to have granted a prolongation.] The usage of the House of Lords has been to Sufficient to esgrant an extension on the party making out a primád facie case, facie of the tablish a prima leaving the validity of the patent for the determination of the validity of the courts of law (c).

patent, in applications to the

The papers containing the advertisements were put in (d), legislature. and the service of notice on the parties who had entered caveats proved.

J. Kay, jun., a son of the petitioner. I came into my father's Evidence. employ in 1823; he was a cotton spinner, and at that time employed in making experiments on flax. He set up five or six machines for the purpose of these experiments before 1825, when he set up some machinery for spinning flax for sale. The machines set up for experiments differed materially from those now in use-in the maceration of the flax, and in the distance of the rollers. At that time I knew of no wet spinning except by hand. My father was employed for two years and spent hundreds of pounds on experiments before taking out his patent. The fineness of flax thread or yarn is measured by the number of leys to the pound. A ley is 300 yards. Formerly the extreme fineness of spun flax was about forty leys to the pound. My father has spun 300 leys to the pound. He erected different machines for experiments; he macerated the flax partially and in different ways, and spun it on machines of different descriptions; his object was to spin flax finer than had been done before. The experiments were made with rollers placed at different distances; he at last discovered 2 inches to be the best distance, and then took out his patent. The invention did not get into general use till 1829. The license money was one shilling a spindle; there are on an average 160 spindles in a machine. On cross-examination :-My father was a cotton spinner; spinning is always carried on by retaining and drawing rollers. Cotton is spun at a distance or ratch of 14 inch; every one acquainted with cotton spinning knows that the

(c) See cases in which the term of letters patent has been extended by act of parliament. Ante 40.

(d) The "Gazette" of the 25th and 28th of

December, 1838, and 8th of January, 1839; the "Manchester Guardian" of the 29th of December, 1838, and 2d and 5th of January, 1839.

In the Privy
Council.

length of the ratch must be determined by the length of the fibre and the fineness of the roving; in flax spinning it depends on the quality of the flax and the number to be spun; for a high number a fine roving must be prepared. My father spun at from 6 to 24 inches-he had a slide for bringing the rollers nearer together. The rollers could never be brought so near together before; he found the more he wetted the nearer he could bring the rollers. The soaking was continued to 1827, and then abandoned; the flax is now passed through a trough of hot water, and thence immediately to the rollers. All the macerating part of the mill machinery has been abandoned since 1827. It is drawn through to the retaining roller, and then the drawing rollers extend it. The experiments were going on under my superintendence during two years.

Joshua Wordsworth, a machine maker at Leeds: I have been acquainted with the flax trade for forty years. Before Kay's patent in 1825, flax was spun dry, and wetted before the twist was put in, at a ratch when fixed of about 24 inches; the ratch was sometimes made to vary from 15 to 30 inches. Previous to Kay's patent there was no machine in existence to spin flax at 2 inches. The flax can be drawn by a ratch shorter than the fibre itself. Before Kay's patent I never saw flax finer than fifty leys to the pound; in Scotland it was generally about fifteen leys, and in England from fourteen to twenty-five; by Kay's method it is spun at 200, and I have seen some at 300. Mr. Kay's was a new machine, it will spin only macerated flax, it will not spin dry flax, or wool, or cotton. If the fibre be longer than the ratch it cannot be drawn; the rollers hold the fibre at both ends. The invention began to get into general use in 1827. I have made many hundred machines. The mode in which the maceration is effected has been altered; the passing through water without steeping is called maceration; it remains in about three minutes. The water is at a temperature of about 95° F.; the hotter the water the quicker the maceration.

[Sir

A Lord: The invention claimed is not for macerating flax, but for new machinery to macerate flax. It appears that the machinery has been abandoned, and some other adopted. F. Pollock: If your lordships are inclined to entertain that question, I think you will see, that if a man discovers a principle and produces the result by means of machinery, the two together form the entire invention.] I think the discovery is, that by macerating flax you apply it to more advantage, but you do not claim that as the invention; you claim the machinery by which it is macerated, assuming that macerating was an old process, previously known; and in asking for that, he thought he could not claim a patent for macerating. He does not claim in his patent the macerating the flax with a view to

them to be valid.

its spinning, but he only claims the new machinery, that is, a In the Privy new mode of doing it. I do not infringe your patent by doing Council. that by other machinery. [Sir F. Pollock: That will depend upon this-whether if a man makes a discovery and gives it to the world in a particular shape, but which admits of being instantly copied by the substitution of mechanical equivalents, or by the adoption of other means which are quite obvious, it is not to be protected? I apprehend the law will protect that.] Let me ask you this, Mr. Cresswell-suppose the patent to be valid; suppose the decision had been already given in the petitioner's favour, that he was possessed of a judgment of law, either an injunction against you to restrain the pirating, or a verdict in an action, or in any other way you choose-suppose the validity is established, have you (suppose you put it upon that footing) any case against our granting an extension? [Cresswell: I think I have, and if your lordships please I will state it at once.] We think, after all the consideration we can give it, we The validity of must come to the conclusion, that we will not inquire into the letters patent being before validity of the patent, and as our decision will not affect the disputed in another court, the decision of the Court of Chancery, we will assume for this Privy Council purpose, that it is a valid patent; and then the only question will assume would be, whether this gentleman is entitled to a renewal. See the inconvenience of any other course; suppose we were to lay down the principle and come to a decision, that we would not extend the patent on the ground that it was an invalid patent, and a few days hence the Master of the Rolls should decide that it was a valid patent, we should do a great wrong; while, on the other hand, if we assume the patent to be valid, we do no harm. [Cresswell: The original monopoly is sufficient.] Then we wish to know, whether the original monopoly has been sufficiently remunerated? If it has been sufficiently remunerated, we shall not extend the patent; but if it has not been remunerated, and there is ingenuity in the invention, and usefulness, and he has been almost a loser by it, there seems no reason why it should not be extended for a time sufficient to remunerate him. [Cresswell: Then your lordships inform me that you will not, in deciding upon this extension, decide upon the validity of the patent.] Yes; we should have adjourned this petition if it had been possible to have had the judgment of the Master of the Rolls before the patent expired; but as we cannot do that, we should do injustice to decide against the validity of the patent, and as we cannot do that we shall assume, for the purpose of the present question, that it is a valid patent, because our judgment will go for nothing if the judgment of the Master of the Rolls should be against it. We can do no harm by assuming the validity of the patent, and we should do irreparable injury to Mr. Kay if we do not, unless you mean to say that the invention is of no use.