In the House of entirely concur with my noble and learned friend, that we have no choice here but to allow the 11th exception.

Lords.

If the law be mistaken, and the direction

an exception

This, as my noble and learned friend has justly remarked, is a different case from that of an application for a new trial. If we are of opinion, first, that the law has been mistaken, and under tend to mislead, misapprehension has been erroneously delivered by the judge must be allowed. to the jury; and if we are, secondly, of opinion that the misdirection or mistake, in point of law, committed by the learned judge, had a direct tendency, I may almost say, an inevitable tendency, to mislead the jury in the conclusion to which they should come, and in the verdict which they should deliver, then, my lords, both of these questions being answered in the affirmative, that the law was mistaken, and that the mistake tended to mislead the jury in their verdict, we have no choice, but must allow the exception.

Now, my lords, a more important mistake, in point of law, your lordships will give me leave to say, could not possibly have been made by the learned judge than that into which the learned judge fell upon the present occasion. And I will not allow it to be said for one moment in dealing with this question, that there is any thing doubtful, that there is any thing speculative, that there is any new law to be laid down, or even any new topics, in respect of the law, about to be launched here, in dealing with the direction of the learned judge, for I speak with all possible respect for that learned judge's great ability and experience in his profession in Scotland, when I say, that this law which has been mistaken here by his lordship is a matter of as perfect certainty, as thoroughly known, and as little drawn into doubt in Westminster Hall, where the law is administered touching the construction of the statute of James, the patent act, as any one branch of the law most commonly known, and most frequently administered by our courts. The mistake into which the learned judge fell, and in which he was followed by his brethren in the Second Division, appears to me to have arisen from this. The patent act contains two exceptions-the proviso under which the monopoly is allowed to be granted, notwithstanding the statute prohibiting all monopolies for the future, saves to the crown the power formerly general, and now become limited by force of the act in two cases alone. In cases of inventions, the patent right, or monopoly, may be granted by the crown to a person, provided he be "the true and first inventor," and provided also, secondly, that at the time of the grant of the monopoly of the patent, others shall not have used the same (n). Consequently, observe the result, if either he

(n) The noble and learned lord means, it is conceived, that this second question is involved in the former. The words of the statute are, "which others at the time of making such letters patent

and grant shall not use." See statute, ante 31. In the course of the argument the same noble and learned lord expressed his opinion that these words of the statute are only cumulative. Post 719.

is proved not to be the true inventor, or if, being the true inventor, A.D. 1843. nevertheless it be proved that there has been a user at the time of the patent by others; in either the one case or the other the right flies off, the condition does not attach-which condition precedent must have existed in both those particulars to enable the crown to come within the benefit of the proviso, and to be saved from the prohibition of the act against all future grants of monopoly. The court below never seem to have kept those two distinct, which are perfectly distinct in their own nature. For a person may be disentitled to a patent who is the true inventor on account of user at the time, or he may be disentitled to a patent, though not used at the time, yet if he was not the first inventor: both titles must concur.

a

abandoned, must be presumed not to

have been com

trial.

Now see how this mistake, with respect to the abandonment An invention and continuance, arose. If an invention has not been completed, but if it all rests in experiment and trial, then it is most material circumstance as a test, whether any given act of plete, but to a party, other than the invention, was trial or complete inven- have rested in tion; it is a most salutary and important test to apply with a experiment and view to ascertain that, to see whether he abandoned or continued it. If he abandoned it, if he gave it up altogether, and for twenty or thirty years did nothing, it is a very strong presumption that it was only experimental-not an invention completed. But suppose it was complete, and suppose it is admitted not to have been a trial-suppose it is allowed to have been an invention executed, if I may so speak, not merely executory, or not merely in the progress of invention, but an invention. completed-then it is one of the greatest errors that can be committed, in point of law, to say that with respect to such an invention as that, it signifies one rush whether it was completely abandoned, or whether it was continued to be used down to the very date of the patent. Provided it was invented and publicly used at the time, twenty or thirty years ago, in this case forty years ago, it is perfectly immaterial, not immaterial to the second question, the second condition, namely, whether it was used or not at the time of the granting of the patent, but totally immaterial to the other question, which is equally necessary to be ascertained in the inventor's favour, whether or not he was the first and true inventor?-for he must be the first and true inventor, as well as the only person using it at the time, otherwise he is not entitled to the letters patent. Therein lies the error which has been committed by the learned judge. He dwells upon that, as if it were material in both cases; that is to say, to the question of "first and true inventor," to which it is not material, as well as to the question of user at the time, to which it is material. And I entirely agree with my noble and learned friend, in considering that there can be no doubt that, in using the word "trial" here, the learned judge does not mean it

Lords.

In the House of as experiment, because (ante 690), just before the two cases are cited, he speaks of "the existence and trial of machines of the very same sort," and then he makes his observations upon it. Now, "existence" implies invention; "trial," there, is rather user than experiment; and all that passage, taken with what follows at the top of the next page, after citing the two cases, and somewhat misunderstanding the import of the two cases, clearly relates to invention executed and completed.

the notice of ob.

These matters being duly taken into consideration, and there being in my apprehension no kind of doubt that the jury upon the trial would say, "Why should we consider whether it was used at the Bradley Works or not? Why should we consider whether it was a trial or a completed invention? Be it so that it was used forty years ago-be it so that it was a complete invention; we hear the learned Lord Justice Clerk telling us, that we need not trouble ourselves upon these points, for it is enough for us if it was abandoned, and that takes the facts out of the case, and leads us to find a verdict the other way."

Upon these grounds, my lords, we have no choice in this application, it being a bill of exceptions, we have no hesitation in saying, that the law was misconceived, and misstated to the jury. The law is undeniable, and I have no hesitation in supporting the proposition of my noble and learned friend, that this eleventh exception must be allowed.

Lord CAMPBELL. My Lords: This case has been treated so very copiously and lucidly by my noble and learned friends who have preceded me, that I shall occupy but a very few moments of your lordships' time in offering a very few observations upon it. I entirely concur in the opinion that has been expressed upon the first exception. I think that the learned judge was perfectly justified and bound at the trial to reject the evidence which was rejected. It seems to me that that section of the recent act of parliament, about giving notice, does not apply to The section of proceedings in Scotland. There are other sections of the act of the statute as to parliament that apply to Scotland, but I think that this does not. The language employed shows that it was not so intended, and there was this plain reason for abstaining from carrying into Scotland that provision, namely, that the law of Scotland required no such amendment, because, by the very salutary practice prevailing in that country, there is no danger of surprise, the condescendence and the statement upon the record being to be looked at as confining the general issue that might be granted to try the merits of the question. I am, therefore, clearly of opinion, that where an issue of this sort, which in the North is called a "general issue," is granted, the learned judge at the trial is fully justified in looking, and ought to look, at the record, and to confine both parties to the facts and circumstances which are therein alleged. Looking at the record in the

jections does not apply to proceedings in Scotland, the same object being obtained by the closed

record.

case, it seems to me that it excludes evidence of this trial, A.D. 1843. which is supposed to have taken place at Irvine, and that the defender was not justified in entering into evidence of such trials at any of the places which are not specified in the record. I should have been most sorry indeed to have at all prejudiced the salutary practice which prevails in Scotland upon this subject, and I wish that in England similar rules prevailed. According to the ancient practice of pleading in England, there was notice given, because in a writ of right the demandant stated specifically the title that he made. But in an ejectment, nobody can tell what case is to be made on the part of the lessor of the plaintiff, and I can say, from my own experience, that I have repeatedly gone into court, being counsel for the defendant, where an action was brought to recover a large estate, not only ignorant of the particular facts that were to be given in evidence, but not knowing what title was to be made, whether the lessor of the plaintiff claimed as heir-at-law, or under a deed; whether he impeached the title of the purchaser in himself, or whether it was a question of parcel or no parcel. That certainly leads frequently to surprise in England, and renders it necessary, on the ground of surprise, that a new trial should be granted. A much more salutary system prevails in Scotland, which I know this house most highly approves of, and will most carefully guard.

The other exceptions, till we come to the 11th, turn upon the construction of the patent. Now in one stage of these proceedings, I certainly did entertain some doubt on that subject. But after the construction put upon it by the learned judges of the Court of Exchequer, sanctioned by the high authority of my noble and learned friend now upon the woolsack, when presiding in the Court of Chancery, I think the patent must be taken to ex- The invention tend to all machines, of whatever construction, whereby the air is being for heating in transitu, heated intermediately between the blowing apparatus and the a comparison of blast furnace. That being so, the learned judge was perfectly apparatus is justified in telling the jury, that it was unnecessary for them to compare one apparatus with another, because, confessedly, that system of conduit pipes was a mode of heating air by an intermediate vessel between the blowing apparatus and the blast furnace, and therefore it was an infraction of the patent.

But, my lords, when we come to the 11th exception, I most sincerely and deeply regret, after all this litigation, and when probably the verdict would have been the same, if the direction had been unexceptionable, I most sincerely regret that we are bound to allow it. I have struggled as much as I could against this exception; I was very anxious, if possible, to consider either that the learned judge was talking, either merely of experiments, or, if he was wrong in point of law, that the direction was immaterial. But, my lords, after very anxious considera

unnecessary.

Lords.

In the House of tion of the record and the proceedings, it is impossible for me to get rid of the exception, either upon the one ground or the other. For the reasons stated by my noble and learned friends who have preceded me, it seems to me now quite clear that the learned judge was not speaking of experiments, but that he was speaking of prior use of the invention. That appears from the language of the learned judge himself. It appears still more clearly from the exception to which he did not object, and from the language of the learned judges of the Second Division, when the case came to be discussed before them. They did not at all consider that the observations of the learned Lord Justice Clerk referred to experiments. They all seem to have considered that The prior use of it applied to the prior use of a perfect machine. Then, if that a perfected in- be so, there can be no doubt whatever that the law which he laid down upon the subject was mistaken; because, to suppose there have been a prior use of the invention-of the perfected invention, for which the letters patent are granted, and that that prior use, publicly known, will not vitiate the patent if it has been abandoned but a few weeks before the date of the patent, strikes us in this part of the country with astonishment. That, certainly, is not the law as we have ever understood it, and I think, after the opinion of my noble and learned friends who have preceded me, I can have no hesitation in saying that that cannot be considered as the law of this country.

vention, if such prior use be

publicly known, will vitiate the

subsequent letters patent for

the same invention.

may

The learned judges in Scotland seem to me, with great deference, to have been misled by the expressions that are ascribed to Mr. Justice Patteson and Lord Chief Justice Tindal. I was counsel in the case of Jones v. Pearce, and I believe that the account of it in Mr. Godson's work is substantially correct (g). But what Mr. Justice Patteson may have said in that case, and what Lord Chief Justice Tindal may have said in the other case, taken in conjunction with the whole of their direction, amounts to this, that the abandonment may be material for the assistance of the jury, to consider whether it be a perfect invention or not; but assuming it to be a perfect invention, the abandonment becomes wholly immaterial. The learned judge, therefore, in Scotland, in assuming that the direction of the learned judges in England to the jury upon a point of fact, was laid down by the learned judges in England as a point of law, were certainly mistaken.

That being so, the only question then remains is this, whether this misdirection shall be considered as immaterial. But when I look at the form of the issue, I cannot say that it was immaterial, because the issue is, "whether the invention as described in the said letters patent and specification is the original inven

(g) Ante 124 & 709, n. h.