Opinion of the court. inventor had suffered the thing invented to be sold, and go into public use for four months before the grant of his patent; and it was held by the court that, on this account, the patent was utterly void. Lord Chief Justice GIBBS said: "To entitle a man to a patent, the invention must be new to the world. The public sale of that which is afterwards made the subject of a patent, though sold by the inventor only, makes the patent void." By "invention," the learned judge undoubtedly meant, as the context abundantly shows, not the abstract discovery, but the thing invented; not the new secret principle, but the manufacture resulting from it. The words of our statute are not identical with those of the statute of James, but it can scarcely admit of doubt that they must have been within the contemplation of those by whom it was framed, as well as the construction which had been put upon them by Lord COKE. But if there were no such illustrative comment, it is difficult to conceive how any other interpretation could fairly be put upon these words. We are not at liberty to reject words which are sensible in the place where they occur, merely because they may be thought in some cases to import a hardship, or tie up beneficial rights within very close limits. If an invention is used by the public, with the consent of the inventor, at the time of his application for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is not a use within the meaning of the statute, what other use is? If it be a use within the meaning of the statute, how can the court extract the case from its operation and support a patent, where the suggestions of the patentee are not true, and the conditions on which alone the grant was authorized to be made do not exist? In such a case, if the court could perceive no reason for the restrictions, the will of the legislature must still be obeyed. It cannot and ought not to be disregarded where it plainly applies to the case. But if the restriction may be perceived to have a foundation in sound policy, and be an effectual means of accomplishing the legislative objects by bringing inventions early into public and unrestricted use, and, above all, if such policy has been avowed and acted upon in like cases in laws having similar objects, there is very urgent reason to suppose that the act in those terms embodies the real legislative intent, and ought to receive that construction. It is not wholly insignificant, in this point of view, that the first Patent Act passed by Congress on this subject, (act of 1790, ch. 34, [ch. 7,]) which the present act repeals, uses the words "not known or used before," without adding the words "the application," and, in connection with the structure of the sentence in which they Opinion of the court. stand, might have referred either to the time of the invention or of the application. The addition of the latter words in the Patent Act of 1793 must, therefore, have been introduced ex industria, and with the cautious intention to clear away a doubt and fix the original and deliberate meaning of the legislature. The act of the 17th of April, 1800, ch. 25, which extends the privileges of the act of 1793 to inventors who are aliens, contains a proviso declaring "that every patent which shall be obtained pursuant to the act for any invention, art, or discovery which, it shall afterwards appear, had been known or used previous to such application for a patent, shall be void." This proviso certainly certifies the construction of the act of 1793 already asserted, for there is not any reason to suppose that the legislature intended to confer on aliens privileges essentially different from those belonging to citizens. On the contrary, the enacting clause of the act of 1800 purports to put both on the same footing, and the proviso seems added as a gloss or explanation of the original act. The only real doubt which has arisen upon this exposition of the statute, has been created by the words of the sixth section already quoted. That section admits the party sued to give in his defense, as a bar, that "the thing thus secured by patent was not originally discovered by the patentee, but had been in use anterior to the supposed discovery of the patentee." It has been asked, if the legislature intended to bar the party from a patent in consequence of a mere prior use, although he was the inventor, why were not the words "anterior to the application" substituted, instead of "anterior to the supposed discovery"? If a mere use of the thing invented before the application were sufficient to bar the right, then, although the party may have been the first and true inventor, if another person, either innocently as a second inventor or piratically, were to use it without the knowledge of the first inventor, his right would be gone. In respect to a use by piracy, it is not clear that any such fraudulent use is within the intent of the statute, and upon general principles it might well be held excluded. In respect to the case of a second invention, it is questionable at least whether if, by such second invention, a public use was already acquired, it could be deemed a case within the protection of the act. If the public were already in possession and common use of an invention fairly and without fraud, there might be sound reason for presuming that the legislature did not intend to grant an exclusive right to any one to monopolize that which was already common. There would be no quid pro quo-no price for the exclusive right or monopoly conferred upon the inventor for fourteen years. Opinion of the court. Be this as it may, it is certain that the sixth section is not necessarily repugnant to the construction which the words of the first section require and justify. The sixth section certainly does not enumerate all the defenses which a party may make in a suit brought against him for violating a patent. One obvious omission is where he uses it under a license or grant from the inventor. The sixth section in the clause under consideration may well be deemed merely affirmative of what would be the result from the general principles of law applicable to other parts of the statute. It gives the right to the first and true inventor, and to him only; if known or used before. his supposed discovery, he is not the first, although he may be a true inventor, and that is the case to which the clause looks. But it is not inconsistent with this doctrine, that although he is the first as well as the true inventor, yet if he shall put it into public use, or sell it for public use, before he applies for a patent, that this should furnish another bar to his claim. In this view, an interpretation is given to every clause of the statute, without introducing any inconsistency or interfering with the ordinary meaning of its language. No public policy is overlooked, and no injury can ordinarily occur to the first inventor, which is not in some sort the result of his own laches or voluntary inaction. It is admitted that the subject is not wholly free from difficulties; but, upon most deliberate consideration, we are all of opinion that the true construction of the act is that the first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right, or rather creates a disability to comply with the terms and conditions on which alone the Secretary of State is authorized to grant him a patent. The opinion of the Circuit Court was therefore perfectly correct, and the judgment is affirmed with costs. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Pennsylvania, and was argued by counsel; on consideration whereof, it is the opinion of this court that there is no error in the judgment of the said Circuit Court. Whereupon it is considered, ordered, and adjudged by this court that the said judgment of the said Circuit Court in this cause be, and the same is hereby, AFFIRMED WITH COSTS. Syllabus. JOSEPH GRANT ET AL V. E. & H. RAYMOND. (6 Peters, 218.) 1. Action for damages for an infringement of a patent-right granted to the plaintiff in 1825. The plaintiff recited that a former patent had been issued in 1821 to the same person, for the same improvement, "which had been cancelled, owing to the defective specification on which the same was granted." The exclusive privilege given by the patent on which the suit was brought is to continue fourteen years from the day on which the original was issued. On the trial, the defendants objected that the Secretary of State had no power, by law, to accept a surrender of and to cancel the first letters patent, or to inquire into and decide upon the causes for so doing; or to grant the second patent for the same invention with an amended specification, for the unexpired portion of the term of fourteen years which had been granted by the first patent. The Circuit Court of the Southern District of New York decided, in conformity with its former decisions, that such surrender might be made when the defect arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee; and that the Secretary of State had authority to accept such surrender, and cancel the record of the patent; and to issue a new patent for the unexpired part of the fourteen years granted under the first patent. By the court: It will not be pretended that this question is free from difficulty. But the executive departments, it is understood, have acted on the construction adopted by the Circuit Court, and have considered it as settled. We would not willingly disregard the settled practice in a case where we are not satisfied it is contrary to law, and where we are satisfied it is required by justice and good faith. 2. To promote the progress of useful arts is the interest and policy of every enlightened government. It entered into the views of the framers of our Constitution, and the power “to promote the progress of science and useful arts by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries," is among those expressly given to Congress. It is the reward stipulated for advantages derived by the public for the exertions of individuals, and is intended as a stimulus to those exertions. The laws which are passed to give effect to this purpose ought to be construed in the spirit in which they have been made, and to execute the contract fairly on the part of the United States, where the full benefit has been received-if this can be done without transcending the intentions of the statutes, or countenancing acts which are fraudulent or may prove mischievous. 3. If a mistake should be committed in the Department of State, no one would say it ought not be corrected. All would admit that a new patent, correcting the error, and which would secure to the patentee the benefits which the law intended to secure, ought to be issued; and yet the law does not, in terms, authorize a new patent, even in such a case. Its emanation is not founded on the words of the law, but it is indispensably necessary to the faithful execution of the solemn promise made by the United States. Why should not the same step be taken, for the same purpose, if the mistake has been innocently committed by the inventor himself? 4. The great object and intention of the act is to secure to the public the advantages to be derived from the discoveries of individuals; and the means it em Syllabus. ploys are the compensation made to those individuals for the time and labor devoted to those discoveries, by the exclusive right to make up and sell the things discovered for a limited time. That which gives complete effect to this object and intention, by employing the same means for the correction of inadvertent error which are directed in the first instance, cannot be a departure from the spirit and character of the act. 5. Quære, What would be the effect of a second patent, issued after an innocent mistake in the specification, on those who, skilled in the art for which it was granted, perceiving the variance between the specifications and the machine, had constructed, sold, and used the machine? This question is not before the court, and is not involved in the opinion given in the case. The defense, when true in fact, may be sufficient in law, notwithstanding the validity of the new patent. 6. The defendant in the Circuit Court, in his plea, assigned the particular defect supposed to exist in the specification, and then proceeded to answer, in the very words of the act, “that it does not contain a written description of the plaintiff's invention and improvement, and manner of using it, in such full, clear, and exact terms as to distinguish the same from all other things before known, so as to enable any person skilled in the art to make and use the same." The plea alleged, in the words of the act, that the prerequisites to issuing a patent had not been complied with. The plaintiff's denied the facts alleged in the plea, and on this issue was joined. At the trial, the counsel for the defendants, after the evidence was closed, asked the court to instruct the jury, that if they should be of opinion that the defendants had maintained and proved the facts alleged in their plea, they must find for the defendants. The court refused this instruction, and instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design, or for the purpose of deceiving the public. By the court: The instruction was erroneous, and the judgment of the Circuit Court ought to be reversed. 7. This instruction was material, if the verdict ought to have been for the defendants; provided the allegations of the plea were sustained, and if such verdict would have supported a judgment in their favor, although the defect in the specification might not have arisen from design and for the purpose of deceiving the public. That such is the law, the court is entirely satisfied. The third section of the act requires, as preliminary to a patent, a correct specification and description of the thing discovered. This is necessary, in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue a patent. The necessary consequences of the ministerial character in which the Secretary aets, is that the performance of the prerequisites to a patent must be examinable in any suit brought upon it. If the case was of the first impression, the court would come to this conclusion; but it is understood to be settled. 8. Courts did not, perhaps, at first, distinguish clearly between a defense which would authorize a verdict and judgment in favor of a defendant in an action for the violation of a patent, leaving the plaintiff free to use his patent and to bring other suits for its infringement, and one which, if successful, would require the court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void. This distinction is now well settled. 9. If the party is content with defending himself, he may either plead specially or plead the general issue, and give the notice required by the sixth section of |