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invention will date from the completion of that specimen. Perfection is not necessary to such a specimen, in order to entitle it to such an effect. Substantial completeness is enough.

No invention ought to date from any day wherein it had 'no existence or representation outside of the mind of the inventor, no matter how clear or how complete his mental conception of its character and mode of operation may have been. Mental conceptions are not useful inventions until they are so embodied that the world could use them after the death of the persons who conceived them. To allow inventions to take date from mental conceptions would strongly tempt inventors to commit perjury in order to appear to anticipate real anticipations of their patents.

Whether an oral description, given by the inventor to another, of a subsequently patented invention, can give that invention a date earlier than that to which it would otherwise be entitled, depends upon the nature of the invention, and the capacity of the hearer to understand it and remember it. Where an invention is abstruse or is complicated, and where it is not certain that the hearer understood it, and has remembered it, well enough to communicate it to the world in case of the inventor's death, the invention

ought not to date from such a description. But where it . is shown that the person to whom such an oral description

was given, understood it completely, and has remembered it accurately, a patented invention may date back to that oral description. The reason for allowing a patented invention to date back to an oral or a written description, or to a drawing or a model, as the case may be, while an unpatented invention, which is set up to negative the novelty of a patented invention, is not allowed to date back to either of those things, resides in the fact that those things


'Stephens 0. Salisbury, 1 McArthur's Patent Cases, 385, 1855.

· Philadelphia & Trenton R. R. v. Stimpson, 14 Peters, 448, 1840; Stephens o. Salisbury, 1 McArthur's

Patent Cases, 385, 1855; Hill 0. Dunklee, 1 McArthur's Patent Cases, 483, 1857; Davidson v. Lewis, 1 McArthur's Patent Cases, 599, 1858.



are incipient in their nature, and in the principle that an invention which is ultimately developed and given to the world in a patent ought equitably to date from such an incipiency, while the rights of a patentee ought not to be impaired by a similar incipiency which was never developed into a patent.

$ 71. Novelty is negatived by prior knowledge and use in this country, by even a single person, of the thing patented.' This rule applies even to cases where that knowledge and use were purposely kept secret;' and it applies no matter how limited that use may have been.'

In Gayler v. Wilder* the Supreme Court announced an exception to this rule, but in a later case it intimated a denial, or at least a doubt, of the validity of that exception. According to the opinion of a majority of the court in the first case, a single instance of prior knowledge and use will not negative novelty if that use had ceased when the patent was granted, and that knowledge was forgotten until called to mind by the reinvention. Justices McLEAN and DANIEL dissented from that conclusion, and it will probably always be found impossible to fairly answer their arguments.

$ 72. Novelty is also negatived by evidence that even one specimen of the thing patented was made in this country, prior to its invention by the patentee, even though it was not used prior to that time. This rule results from the statute which provides that things, in order to be patentable, must not have been known or used by others in this country.' If the prior article produced or proved appears


Coffin o. Ogden, 18 Wallace, 120, 1873; Brush v. Condit, 20 Fed. Rep. 832, 1884.

? Reed 0. Cutter, 1 Story, 598, 1841.

3 Bedford o. Hunt, 1 Mason, 301, 1817; Rich v. Lippincott, 2 Fisher, 2, 1853.

*Gayler o. Wilder, 10 Howard,

477, 1850.

6 Coffin o. Ogden, 18 Wallace, 125, 1873.

• Corn-planter Patent, 23 Wallace, 220, 1874; Parker v. Ferguson, 1 Blatch. 408, 1849; Pitts v. Wemple, 2 Fisher, 15, 1855; Stitt o. Railroad Co. 22 Fed. Rep. 650, 1884.

? Revised Statutes, Section 4886.


on inspection to have been identical with the patented thing, and if it is proved to have been made in this country before the date of the patented invention, it follows that it was known here prior to that time, and the novelty of the patent is necessarily negatived. If, however, the identity of the patented and the prior article can be known only by actual use, and if the prior article never was actually used till after the date of the patented invention, then its prior making will not negative novelty. In that case, though its existence was known prior to the invention of the patented thing, it was not known to be what the patented thing afterward was. Knowledge in order to negative novelty must include knowledge of the character, as well as knowledge of the existence, of the prior thing.

$ 73. Negation of novelty is not averted by the fact that the inventor had no knowledge of the anticipating matter when he made the invention covered by the patent.' The patent laws do not reward people for producing things which, though new to them, are old to others in this country.

$ 74. Nor is negation of novelty averted by the fact that the anticipating substance was made by a different process, or derived from a different source from that which produced the patented substance, for it does not make an old thing new to derive it from a new and unexpected quarter' or to make it by a new and improved method."

$ 75. Questions of novelty are questions of fact." This point is very obvious, except in cases where the prior thing is a patent or printed publication. In those cases it may supposed that questions of novelty are questions of law

on the construction of documents. The point has, Sayles o. Railway Co. 4 Fisher, Cummins, 4 Bann. & Ard. 490, 588, 1871; Stitt o. Railroad Co. 22 1879. Fed. Rep. 650, 1884.

* Cottle o. Krementz, 31 Fed. Rep. 0. Sizer, 1 Fisher, 19, 42, 1887.

5 Battin v. Taggert, 17 Howard, * Cochrane o. Badische Anilin & 74, 1854; Turrill v. Railroad Co. 1 Soda Fabrik, 111 U. S. 311, 1883; Wallace, 491, 1863. Badische Anilin & Soda Fabrik v.


be arising

* Many 1849.


however, been settled by the Supreme Court, in a case involving the consideration of a prior patent, and bearing with equal logical force upon a prior printed publication.' In that case it was held that the question whether the novelty of a patent is negatived by a prior patent, depends not upon the construction of the latter, but depends rather upon

the outward embodiment of the terms contained in the latter document; and that such outward embodiment is to be properly sought, like the explanation of latent ambiguities arising from the description of external things, by evidence in pais. The court accordingly indorsed the proposition that such questions belong to the province of evidence, and not to that of construction; and said that even where no testimony is required to explain the terms of art or the description contained in the respective documents, the question is still to be treated as a question of fact.

$ 76. The burden of proof of a want of novelty rests upon him who avers it, and every reasonable doubt should be resolved against him.' It follows from this declaration of the Supreme Court, and has been expressly decided by several Circuit Courts, that novelty can only be negatived by proof which puts the fact beyond a reasonable doubt.'



1 Bischoff v. Withered, 9 Wallace, 812, 1869.

? Coffin 0. Ogden, 18 Wallace, 120, 1873; Cantrell o. Wallick, 117 U. S. 696, 1885; Parham v. Machine Co. 4 Fisher, 482, 1871; Webster Loom Co. 0. Higgins, 4 Bann. & Ard. 88, 1879; Shirley v. Sanderson, 8 Fed. Rep. 908, 1881; Green v. French, 11 Fed. Rep. 591, 1882; Duffy v. Reynolds, 24 Fed. Rep. 858, 1885; Dreyfus v. Schneider, 25 Fed. Rep. 481, 1885; Osborne o. Glazier, 31 Fed. Rep. 404, 1887; Smith o. Davis, 34 Fed. Rep. 785, 1888; Howard o. Plow Works, 35 Fed. Rep. 745, 1888.

3 Wood v. Mill Co. 4 Fisher, 560, 1871; Hawes v. Antisdel, 2 Bann. & Ard. 10, 1875; Bignall o. Harvey, 5 Bann & Ard. 636, 1880; Worswick Mfg. Co. v. Buffalo, 20 Fed. Rep. 126, 1884; Thayer 0. Hart, 20 Fed. Rep. 694, 1884; Everest o. Oil Co. 20 Fed. Rep. 849, 1884; American Bell Telephone Co. 0. People's Telephone Co. 22 Fed. Rep. 313, 1884; McDonald 0. Whitney, 24 Fed. Rep. 600, 1885: Jennings o. Kibbe, 24 Fed. Rep. 698, 1885; Wetherell 0. Keith, 27 Fed. Rep. 364, 1886; Hobbie o. Smith, 27 Fed. Rep. 659, 1886; Cohansey Mfg. Co. o. Wharton, 28 Fed. Rep. 191, 1886;

Under this rule, a patent enjoys the same presumption of novelty, that an unconvicted prisoner does of innocence.' Unlike most civil titles, it is not liable to be overthrown by a mere preponderance of evidence. The reason for this discrimination, resides in the fact that patentees are generally strangers to the alleged transactions upon which want of novelty is sought to be based. In civil suits generally the parties are both cognizant of the matters in controversy, and therefore equally able to guard against error and perjury in the witnesses. In patent cases, on the other hand, the alleged facts relied upon by defendants to show want of novelty, are nearly always wholly outside the knowledge of the plaintiffs. Those allegations may really be without any foundation, and the plaintiffs be wholly ignorant of that fact. It is easy for a few bad or mistaken men to testify, that in some remote or unfrequented place, they used or knew a thing substantially like the thing covered by the patent, and did so before that thing was invented by the patentee. In such a case it may happen that the plaintiff can produce nothing but negative testimony in reply: testimony of persons who were conversant with the place in question, at the time in question, and did not see or

know the thing alleged to have been there at that time. If , mere preponderance of evidence were to control the issue,

the affirmative testimony of a few persons, that they did see or know or use a particular thing at a particular time and place, would outweigh the negative testimony of many persons, that they were at or near that place at that time, and did not see or know or use any such thing. But such negative testimony may cast a reasonable doubt upon such affirmative evidence, and if it is strong enough for that purpose it will render the latter unavailing.'


American Bell Telephone Co. o. Globe Telephone Co. 31 Fed. Rep. 733, 1887.

1 Cluett 0. Claflin, 30 Fed. Rep. 922, 1887; Untermeyer 0. Freund, 37 Fed. Rep. 343, 1889.

? Sayles o. Railway Co. 4 Fisher, 588, 1871; Washburn & Moen Mfg. Co. o. Haish, 4 Fed. Rep. 900, 1880; Green o. French, 11 Fed. Rep. 591, 1882.

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