of Appeal not to constitute of itself the subject-matter of a patent.

In Parkes v. Stevens (L. R. 8 Eq. 358) James, V. C., was of opinion that the substitution of a slide for a hinge in the door of a lamp could not be the foundation of a valid patent.

SECOND PATENTS.

In Lister v. Leather (8 E. & B. 1004) it was held that a second patent for an improvement on an invention which is the subject of a previous patent afterwards assigned to the second patentee is not void as being contrary to public policy. And the same rule holds good in regard to a second patent obtained by the same inventor. The argument that the second patent prolongs the monopoly granted by the first until the expiration of the second is answered by the fact that the former invention without the improvement is free as soon as the earlier patent comes to an end. further as to Second Patents in the Index.

See

29

CHAPTER III.

THE INCIDENTS OF UTILITY AND NOVELTY WHICH MUST

BY LAW ACCOMPANY PATENTABLE INVENTIONS.

THE two chief incidents which are required by law to attend every invention that claims the protection of letters patent, are Utility and Novelty.

If a material part of the alleged invention should turn out to be either not useful or not novel, the patent is altogether void, the legal maxim utile per inutile being here disregarded. (See Crossley v. Beverley, 1 W. P. C. 106; Hill v. Thompson, 1 W. P. C. 249; Manton v. Parker (1 W. P. C. 192 n.; Dav. P. C. 327; Bloxam v. Elsee, 6 B. & C. 169; 1 Carp. 444.) And in like manner, where several distinct inventions are included in one patent, of which some only are useful or novel, the useless or old invention or inventions will invalidate the whole patent. (Turner v. Winter, 1 W. P. C. 77; 1 T. R. 602; Bloxam v. Elsee, 6 B. & C. 178; Morgan v. Seaward, 1 W. P. C. 196; Kay v. Marshall, 2 W. P. C. 71). The Crown having been misled as to the extent of the invention, the grant of letters patent in respect of it is void. It was on this principle that the Court, in deciding Morgan v. Seaward, looked at the cases of Hill v. Thompson (1 W. P. C. 237), and Brunton v. Hawkes (4 B. & A. 541); in which a patent for several inventions was held to be altogether void, because one was not new. The want of novelty is a fatal defect by the express wording of the statute, so far as relates to that which is old; and the whole patent is rendered void by the construction that the consideration for the grant is the novelty of all the

parts, which consideration failing, or as it is sometimes expressed, the Crown being deceived, the patent is void.

The questions as to the utility and novelty of the inventions, in respect of which a patent is sought, or has been granted, are consequently of the utmost importance, and it will be necessary to go into the matter at some length. And first, as to the question of

UTILITY.

If an invention contains no degree of usefulness whatever, over and above inventions already known, then the patent is void. (Manton v. Parker, Dav. P. C. 327; W. P. C. 192 n. Manton v. Manton, Dav. P. C. 348.) "A mere trifling matter" (said Page Wood, V. C., in Dangerfield v. Jones, 13 L. T. N. s. 142) " or a thing of no value will not do, inasmuch as the whole theory of the patent law is based upon the assumption that it is something of real value. You must show that you have invented something useful, a new and useful improvement in manufacture."

A patent for a useless invention is thought by some to be void at common-law; by others, by force of the Statute of Monopolies, which renders void grants of privileges which tend to the hurt of trade, or are generally inconvenient. For if a monopoly were allowed in a useless invention, other persons would be prevented from improving it, or turning it to any account whatever, so that combinations of utility might be impeded. It would stand in the way of real inventors, and hence be mischievous to the public generally. (See the observations of Parke, B., in Morgan v. Seaward, 1 W. P. C. 196.) On the trial of Palmer v. Wagstaff, at Nisi Prius (Newton's Lond. Journ. vol. xliii. p. 151), Chief Baron Pollock said that, in legal language it is a fraud on the law of patents for any person to take out a patent with a view to the obstruc

tion of improvements. The evidence showed that the plaintiff's patent, which it was alleged the defendant had infringed, had never been worked; no attempt had been made to bring the candles of the patented construction before the public; and the patent was only then brought into play, for the purpose of stopping the defendant from a course of improvement.

"A patent for an invention which is merely to obstruct every subsequent improvement, which is to step in and prevent the exercise of the ingenuity of mankind and the introduction of other inventions adapted to the particular subject to which the invention may be applicable, cannot, in my judgment, be supported." (Per Pollock, C. B., in Crossley v. Potter. Macr. P. C. 240.)

It is to be observed that the recital in the Letters Patent of the Crown's willingness "to give encouragement to all arts and inventions which may be for the public good," clearly points to the quality of utility as one of the considerations for the grant, which failing, the patent will be invalid.

It is for the jury, not the Court, to decide the question of utility when the point has been raised by appropriate pleadings;' and the question will go before them in the general shape of utility or no utility. They have not to consider to what extent the invention is useful, but only whether it is of any use at all. Mr. Baron Parke, in Neilson v. Harford (1 W. P. C. 314), speaking of a patent for the use of hot-blasts in furnaces, laid it down, that if the apparatus were an improvement, so as to be productive, practically, of some

That the patentee must go into proof of the utility of his invention in case that issue is raised is shown by what fell from the Judges in the cases of Rex v. Arkwright, Dav. P. C. 138; Manton v. Parker, Dav. P. C. 327; Manton v. Manton, Dav. P. C. 333; Bovill v. Moore, Dav. P. C. 399; Brunton v. Hawkes, 4 B. & Ald. 541; Russell v. Cowly, 1 W. P. C. 467; Hill v. Thompson, 1 W. P. C. 237; Minter v. Wells, 1 W. P. C. 129; Crane v. Price, 1 W. P. C. 411 ; Derosne v. Fairie, 5 Tyr. 393; 2 Cr. M. & R. 476.

beneficial result, no matter how great, provided it is sufficient to make it worth while (the expense being taken into consideration) to adapt such an apparatus to the ordinary machinery in all cases of forges, cupolas, and furnaces, where the blast is used, then that there would be utility sufficient to support the patent. The quantum of improvement (should an improvement be in dispute) is not a material point; it is enough that they can find any improvement. (Alderson, B., in Morgan v. Seaward, 1 W. P. C. 172, 186.) In other words, in order to quash a patent on this ground, a jury must expressly find that the invention is of no use.

But it must be kept in mind, that it is the invention which is required to possess utility, not merely the thing produced. As Pollock, C. B., remarked, on trying the case of Palmer v. Wagstaff (above cited), it is not sufficient for the maintaining of a patent to prove that the article produced under it is useful; it must be the invention that effects the utility. Thus a patented manufacture should be either better in quality, or cheaper in cost, than that which it is intended to supplant.

The uselessness of part of an invention, however, will not be allowed to vitiate the patent, unless that part is described as something essential. The case of Lewis v. Marling (1 W. P. C. 490), arose out of a patent for an improved machine for shearing woollen cloths, in which the patentee claimed, amongst other things, the use of a brush for raising the wool on the surface of the cloth to be shorn, but not as an essential part of the machine. Before any machine was made for sale, this part of the invention was discovered to be useless, and no machines were ever sold with the brush attached. It was contended that this uselessness of part vitiated the whole, but Lord Tenterden said, "If the patentee mentions that as an essential