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tion of the pursuer?" You cannot say that it was the original A. D. 1843. invention of the pursuer, within the meaning of the statute, if it had been publicly known and practised by others before the patent was granted. It has been said, that there was no evidence. But I think that is a mistake. What conclusion the jury would have come to I know not, but at the Bradley Iron Works, there was such a machine, as Mr. Rutherford acknowledged at the bar, as would have amounted to an infraction of the patent, if that the use of it had been subsequent to the patent. Then that being so, I know not what conclusion the jury might have arrived at. They might have thought that this was a perfect machine-that it was the same machine, and that it had been publicly used. If they had been of that opinion, although it had been abandoned, they ought to have found a verdict for the defenders.

Under these circumstances, I regret exceedingly that I am obliged to concur in the opinion that has been expressed by my noble and learned friends, that this 11th exception must be allowed, and the consequence of that will be, that there must be a venire facias de novo, and that the cause must be tried by another jury.

The LORD CHANCELLOR: My lords: I wish to say, that if there had been any doubt whatever with respect to the meaning of the words used by the learned judge in summing up, those doubts would be removed by the concluding words, "that it must have been known and used as a useful thing at the time." What? The invention "must have been known and used as a useful thing at the time of the granting of the letters patent." That shows demonstrably what was intended.

abandonment of

not known to the

It must not be understood that your lordships, in the judg- Semble that the ment you are about to pronounce, have given any decision upon prior use and this state of facts, namely, if an invention had been formerly an invention, if used and abandoned many years ago, and the whole thing had lost sight of and been lost sight of. That is a state of facts not now before us. public, will not Therefore, it must not be understood that we have pronounced vitiate letters any opinion whatever upon that state of things. It is possible the same inventhat an invention may have existed fifty years ago, and may have been entirely lost sight of, and not known to the public. What the effect of this state of things might be it is not necessary for us to pronounce upon.

Lord BROUGHAM: It becomes like a new discovery; the judgment is reversed upon the 11th exception, and affirmed upon

the others.

Rutherford: Affirmed quoad ultra. My lords: May I be allowed to suggest that the remitting it to the court below to proceed accordingly would be sufficient to enable the court to give directions for a new trial. Of course, that would lead instantly to a new trial. It will be better if your lordships will

patent for

tion.

In the House of also remit to the Court of Session to deal with the question of costs, including this appeal, to the ultimate result.

Lords.

Lord BROUGHAM: No; you cannot have the costs of this appeal, when upon the main point there is a reversal.

Rutherford: Unless your lordships give a special direction. The LORD CHANCELLOR: It is not a case in which we ought to give costs on either side; I am afraid it is attended with great expense.

The judgments in the above case recognise and affirm the general rule of law, that the prior public use of a complete and perfected invention, though abandoned and not in use at the time of the granting of subsequent letters patent for the same invention, will vitiate such letters patent, inasmuch as such prior use negatives the title of the party as the true and first inventor; but the concluding observations of the noble and learned lords throw considerable doubt and uncertainty upon the practical application of the above general rule, since they import that cases may exist of the abandonment of the use of an invention, such as would entitle a subsequent independent inventor to valid letters patent for the same invention, provided the invention had been forgotten and laid aside, and the knowledge thereof so lost as that the invention should come upon the public as an absolutely new discovery. But whence is the evidence to be derived by which such a use would be proved? In the course of the argument the distinction which exists between the issue involved in the words of the proviso of the statute, "true and first inventor," and in the words, "which others at the time of making such letters patent and grant shall not use," was very much discussed; but the above judgments, except so far as they may be qualified or affected by the additional and concluding ob. servations of their lordships, are founded on the former words, without regard to the latter, and as if the latter did never exist. For the purpose of presenting the real questions which arise under the issue on the words "true and first inventor," it will be convenient to consider the evidence applicable thereto, which may be divided into the following classes:-1. The specification of a prior patent. 2. Some work printed and published, or in circulation in this country. 3. The existence prior to the date of the patent of a machine or article of manufacture substantially the same as that which is described in, or the subject of the patent, with or without evidence of the actual use of such machines or manufacture.

1. With respect to the first of these, namely, the specification of a prior patent, that has always been held sufficient of itself to invalidate subsequent letters patent for the invention therein described, without any evidence of user. Per Lord Ellenborough, C. J., ante 86, and in the course of the argument in the principal case by Lord Campbell, "A prior specification substantially describing the same machine or invention has always been considered fatal to a patent, without going further by showing that it has been used."

Various reasons have been assigned as the ground of the above rule. It has sometimes been

said that knowledge and the means of knowledge are the same thing, and this may well be so in some cases as matter of law, and in the particular case of the specification of letters patent it may be said that the public are bound to take notice of whatever is of the nature of a public record, and as such enrolled in the court of Chancery. Ante, 86, n. c. But on the authority of the principal case, the rule may be considered to rest simply on the ground of negativing the title of the party as the true and first inventor, and the grant of letters patent and the enrolment of the specification describing the complete and perfect invention, would appear to be the best evidence to negative the title of a claimant under subsequent letters patent as the true and first inventor. With reference to the distinction so much insisted on in the above judgments between experiment and invention, complete and perfected, it may be suggested, whether the obtaining letters patent for an invention fully described in the specification, and proved to answer, is not conclusive evidence that the invention was complete and perfected, and did not rest in experiment, speculation, or suggestion.

2. With respect to the legal effect of the publi cation in a book-On the principle above referred to, that knowledge and the means of knowledge on the part of the public are the same, and that the public has acquired little or nothing by the specification which it did not possess before, it has been generally assumed that the production of a book which was in the hands of the public be fore the date of the patent, will negative the title of the patentee as the true and first inventor.

Thus, on the argument of the above case, Lord Lyndhurst, L. C.: "If the machine is published in a book, distinctly and clearly described, corresponding with the description in the specification of the patent, though it has never been actually worked, is not that an answer to the patent? It is continually the practice on trials for patents to read out of printed books, without reference to any thing that has been done."

Lord Brougham:

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It negatives being the true and first inventor, which is as good as negativing the non-user. The book that is generally referred to is, the 'Repertory of Arts and Sciences.' It must not be a foreign book, but published in England."

The important distinction last adverted to was recognised by Lord Campbell in a recent case before the Judicial Committee of the Privy Council, on some foreign books being put in to show the state of knowledge on subjects closely connected with the invention for which letters patent were sought to be extended. That noble and learned lord observed, "that sitting there he should be in

fluenced by what had been published in a foreign journal, but in a court of justice he should require that it should be known in England." Post, 733.

The distinction thus made between the legal effect of publication in an English and in a foreign book, would appear to establish this important doctrine, that it is a question for the jury, whether such foreign work was known in England at the time the letters patent were granted; or the question would rather appear to be, whether the inventor derived his knowledge from such source, or whether the work was so known that the inventor must be presumed to have derived his knowledge from that source. If this be a

question for the jury in any case of publication in a book in the hands of the public, whatever its nature, and however limited its circulation, but which, had the public required it, might have been in extensive and general circulation, it is not very easy to see on what principle, or why the same question may not be for the jury in any case of publication by any book. From the observations of the learned Chief Justice Tindal in several recent cases (ante 592, n. c, and the cases there referred to), this would appear to be a proper question for the jury.

If in any case it is a question for the jury, whether a person did actually borrow, or is to be presumed to have borrowed his invention from a published book, or whether the account contained in any published book was or was not known in England by reason of such published book? but it is not a question for the jury, in the case of an account contained in a specification, that difference must be founded on the fact of the prior grant by letters patent, and that the specification, being matter of record, is a publication of which the public are bound to take notice; whereas the public cannot be presumed to take notice of, or to be acquainted with, all books. The work referred to by Lord Brougham is principally devoted to the publication of specifications; the fact of the existence of a specification, whether so published or not, negatives the title of any person subsequently claiming to be the true and first inventor of an invention substantially the same as that described in such specification.

But whatever may be the peculiar circumstances under which the publication takes place, the account so published, to be of any effect in law as a publication, must, on the authority of the principal case, be an account of a complete and perfected invention, and published as such. If the invention be not described and published as a complete, perfected, and successful invention, but be published as an account of some experiment, or by way of suggestion and speculation, as something which peradventure might succeed, it is not such an account as will vitiate subsequent letters patent. See per Lord Abinger, C. B., ante 534. It would appear to be a test not wholly inapplicable to cases of this nature, to inquire whether what is so published would be the subject of letters patent, because, inasmuch as that which rests only in experiment, suggestion, and speculation, cannot be the subject of letters patent, it would be unreasonable that what could not be the subject-matter of letters patent, supposing letters patent granted in respect thereof, should vitiate letters patent properly granted.

3. The third class of evidence is the production of a machine or article of manufacture with or

without proof of actual user anterior to the date of the patent. On the authority of the above case it would appear that the production of such a machine or article of manufacture, without actual proof as to its use, or any evidence as to whence it originally came, or as to its mode of manufacture, would vitiate subsequent letters patent for such a machine or article of manufacture, as negativing the grantee of such letters patent being the true and first inventor. With reference to this head, two distinct cases may occur— the one in which the machine or article of manufacture so produced shows at once its mode of manufacture-the other in which the machine or article of manufacture does not present any means of knowledge to the public, so as to enable any person to reproduce the same. There may be many various modes of attaining a result, and an article of manufacture may be the subject of various patents. The term "new manufacture" may be satisfied either by a thing that is made then for the first time, or that is made in a new way then for the first time. An arrangement of material parts, as a simple combination of the elements of machinery, discloses its mode of manufacture to the eye on inspection, but with respect to a paint, or a dye, or a medicine, and many other inventions, a mere inspection of the result attained will convey no information as to the mode of manufacture. The distinction just adverted to relates to the doctrine, "that knowledge and the means of knowledge are the same;" but independently of this, this last class of cases, depending upon user, differs altogether from the two first-mentioned classes of cases, depending upon publication in such a form as to preserve and communicate the knowledge to the public. The following observations with reference to this question were made in the course of the argument on the principal case.

Lord Lyndhurst, L. C.: "Look to the words of the statute; The declaration before mentioned shall not extend to any letters patent and grant of privilege, of the sole working or making of any manner of new manufacture within this realm, to the true and first inventor of such manufacture, which others at the time of making such letters patent and grant shall not use.' If the invention is in use at the time that the grant is granted, the man cannot have a patent, although he is the original inventor; if it is not in use, he cannot obtain a patent if he is not the original inventor. He is not called the inventor who has in his closet invented it, but who does not communicate it the first person who discloses that invention to the public is considered as the inventor. The party must be an inventor, you need not say the inventor, because another may have invented it and concealed it: but in addition to his being an inventor, others must not use the invention at the time of the patent."

Lord Brougham: "The statute excludes from a patent the true inventor who shall have made the invention so public that others at the time of the granting of the patent shall use the invention. The public have lost the consideration for the patent, namely, the specification which is given. The words 'true and first inventor,' and which others at the time shall not use,' are cumulative."

Lord Lyndhurst, L.C.: "He must be the first inventor, and it must not be in use at the time of granting the patent. For the purpose of meeting the case as to the point, that he is the first in

ventor, evidence may be gone into to show that a person used the invention for a year or two ten years ago, and then ceased to use it. That has nothing to do with the use at the time the letters patent were granted. Admitting that he is the inventor, if the invention is known and used at the time at which the patent is granted, in that case the patent is void; that is the sense in which the words used at the time of the grant of the letters patent' are employed."

Upon the above words of this noble and learned lord," known and used at the time," the question arises as to what is the kind of knowledge and use whereby letters patent will be vitiated.

Suppose an article of manufacture, an encaustic tile, for instance (post 736), or a particular species of painted glass, such as was well known in the middle ages, to have been manufactured at a certain period in this country in secret, or if not in secret that the whole knowledge of the art was lost, but that such tiles and painted glass were known and in use before the eyes of the public to the present time, and that it was a great desideratum that the art should be discovered, and that some ingenious man discovered a mode whereby tiles and painted glass, apparently the same, could be produced, and published that mode to the world under letters patent, would the knowledge and use of the tiles or painted glass at the time such letters patent were granted vitiate such letters patent? no knowledge or use of the invention as an art existing at the time of the grant. The knowledge of the fact of the existence of an article of manufacture, or the daily use of such an article, cannot, it is conceived, be knowledge and use of the invention within the meaning of the above terms, so as to vitiate subsequent letters patent. If such knowledge of the existence of an article and use of an article convey at once the requisite information as to its mode of manufacture, the case is different from that above supposed, which assumes the absence of that very knowledge which it is the object of the letters patent and specification to communicate and bestow. What has once been given to the public cannot be resumed; the public being in possession of any species of knowledge, there is no consideration for the exclusive privileges granted by subsequent letters patent; there is no fresh knowledge to be communicated to the public through the medium of the specification, to constitute the consideration upon which the letters patent are granted; such knowledge being the price and bargain for the grant, or that which the public get in return for the limited monopoly. It would appear therefore, on principle and on reason, that the knowledge of an invention which is to vitiate letters patent, must be knowledge of the same kind as that above referred to, namely, such knowledge or such means of knowledge, as will teach others to practise the invention.

A similar ambiguity attaches to the word "use," and the question arises, whether the use of an article under the circumstances above mentioned will vitiate subsequent letters patent, granted to a person who introduces the knowledge of the manufacture. In determining this question, regard

must be had to the proviso of the statute, which declares, that the previous declaration against monopolies shall not extend to any letters patent of the sole working or making of any manner of new manufacture within the realm. The working and making of the article to be produced is the subject of the grant, not the use of that article when produced, and the meaning of those words is well defined by the exposition of the law as stated in the case of monopolies (ante 6), and recently recognised and adopted by the Court of Common Pleas, in the case of Crane v. Price, in the following terms, "when any man by his own charge and industry, or by his own wit or invention, doth bring any new trade into the realm, or any engine tending to the furtherance of a trade, that never was used before, and that for the good of the realm, in such cases the king may grant to him a monopoly patent for some reasonable time, until the subjects may learn the same, in consideration of the good that he doth bring of his invention to the commonwealth-otherwise not." So that the subject of the grant, according to the old common law, on the authority of this case, is to be a new trade, or an engine tending to the furtherance of an existing trade, provided such trade or such engine had never been used before, whereas according to the statute, the condition would appear to be limited to the trade or engine being in use at the time of the grant. But then the difficult question arises, if ever in use, after what period, or under what circumstances, is the title of the party as the true and first inventor not to be negatived? The observation of Lord Brougham (cited above), that the latter clause of the statute is cumulative in effect, places the whole question on the issue of the true and first inventor, independently of the question of publica tion or prior use. It is, however, established, that these terms are not applicable to the case of a person who has made the invention, and confined it in his own breast or closet, or to one who has only speculated about it without attaining any prac tical result, but it has been expressly held that the terms are applicable to that person only who shall have invented, published, and introduced into, or put in use, a complete, perfect, and finished invention. The adoption, or the general knowledge, of the invention, by the public is not neces

sary.

The title of a person who subsequently lays claim to any exclusive right in respect of the same invention is defeated by the fact, that the complete and perfected invention was so published, or put into public use. But the concluding observations of the noble lords, as has been already observed, create considerable doubt and difficulty in the application of the above principles, and the only case to which they appear to be applicable, is that of a prior patent, never acted on, and from which the public never derived any practical benefit. Suppose the subject of such patent to be re-invented after fifty years, and to be introduced into general use, and to become part of the manufactures of the country, would the title of such subsequent and independent inventor be defeated by the grant of the prior patent? See ante 86, n. c.

EXTENSION OF TERM OF LETTERS PATENT.

SIMISTER'S PATENT.

Cor. Lord Campbell; Sir H. Jenner; Dr. Lushington; and

Mr. Justice Erskine.

In the Privy
Council.

1842.

This was an application for an extension of the term of the Dec. 7th & 8th, petitioner's patent of the 18th of December, 1828, for "improvements in weaving, preparing, or manufacturing a cloth or fabric, and the application thereof to the making of stays and other articles of dress, which improvements are also applicable to other purposes."

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The petition having briefly described the method of making The petition. stays before the date of the patent, namely, by sewing or stitching two pieces of cloth together, in such manner as to leave the requisite spaces for the introduction of the whalebone or other materials," stated experiments by the petitioner during three years, and his discovery of a method of weaving a double fabric suitable for stays, the requisite open spaces being left in the process of weaving. The petition then stated the expenses incurred and difficulties encountered in making and introducing the invention, particularly the opposition by the wholesale houses, and the prejudice created by reports industriously circulated, that the stays would not bear washing. The petition then stated the particulars and expense of the litigation in which the petitioner had been involved; that no profits had been received for some time, and that the profits during the last six years had not equalled the petitioner's losses; so that on the whole, there had been a loss on the invention. A disclaimer had been enrolled as to so much of the invention as did not relate to stays.

The notice of objections stated, as grounds of opposition, Notice of objccvarious objections to the validity of the patent-that the peti- tions. tioner had compromised the legal proceedings referred to in the petition by the payment of money, with the view of prejudicing and deterring other parties known to the petitioner to be infringing the patent; that in consequence of the petitioner's not interfering to stop such infringements, the opponents had embarked a large capital in machinery for manufacturing the stay fabric by steam power, and that it was not until the fabric so woven by steam power drove out of the market the fabric woven in the loom, that the petitioner thought of amending his patent by disclaimer with a view to the present application.

M. D. Hill, and Webster, appeared for the petitioner; Sir W. Follett, S. G., and Cowling, for the opponents.

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