The defendants having used, in their paper-works, the machine of a Mr. Evans, of Birmingham, (who had likewise obtained a patent for certain improvements in paper-making machinery,) were attacked by the pursuer, by what is called, in Scotland, an action of suspension and interdict, (which is a proceeding analogous to a bill for an injunction in the English Courts of Equity,) complaining of an alleged infringement of the pursuer's patent of 4th February, 1836. The defenders put in answers to the pursuer's note of suspension, setting forth their grounds of defence, whereupon no injunction was applied for by the pursuer, but he shortly afterwards followed up his proceedings, by an action for damages, in order to try the validity of his patent and of the defences set up against his claim to the summary interference of the Court.

The two actions being, (according to the practice of the Scotch Courts) conjoined, a record was made up and sent for trial, before the Jury Court, upon the following admissions and issues:—

"It being admitted that, on the 4th day of February, 1836, the pursuer obtained letters patent under the Great Seal used in Scotland in place of the Great Seal thereof, whereby there was granted the exclusive privilege, during the period of fourteen years from the said 4th February, 1836, of using, as his original invention, certain machinery, as described in the said letters-patent, and in the specification inrolled in the Court of Chancery, for the application, in paper-making, of a vacuum to the horizontal web of wire-cloth of a Fourdrinier machine, in the manner described in the said specification: “Whether, during all or any part of the years 1839 and 1840, at the paper-mill works of the defenders at Polton, subsequent to the date of the said letters-patent and the said specification, the defenders, by themselves or others, without the consent or permission of the pursuer, wrongfully, and in contravention of the said letters-patent, used, in their said works, machinery in imitation of, and substantially the same with, the machinery described in the said specification, to the loss, injury, and damage of the pursuer? Or,— "Whether the said machinery, described in the said specification, is not the original invention of the pursuer ?

"Whether a machine or machines, constructed according to the description in the said letters-patent and specification, is not practically useful for the purpose therein set forth?

"Whether the description of the machine, contained in the said specification, is not such as to enable workmen, of ordinary skill, to make a machine capable of producing the effects set forth in the said patent?

These issues came to be tried before LORD MACKENZIE, one of the Judges of the First Division of the Court of Session, and a Jury, on the 14th and 15th days of May, 1841; and after the evidence, on the pursuer's part, had been concluded, the counsel for the defenders, in his address to the Jury, stated, that it would be part of the defenders' case to bring evidence to prove, inter alia, his averment on the record, that the invention, specified by the pursuer, had been publicly used IN ENGLAND before the date of his patent. Whereupon the admissibility of any such evidence was objected to by the pursuer's counsel, on the ground, that previous public use of the invention in England was not a ground for invalidating the pursuer's patent in Scotland. Lord Mackenzie over-ruled the objection, and decided, that the evidence

was admissible, as proving a ground of the invalidity of the patent. Against this judgment the counsel for the pursuer excepted and lodged the following minute :

"In respect of the opinion of the Judge, that the use and practice averred as to England, is competent, in evidence, to establish the first issue for the defenders, the pursuer admits, that the verdict must, in point of fact, go on that first issue for the defenders, subject to exception to the opinion of the Judge; the pursuer admitting that, if the above point of law is decided against him, the defenders are entitled to judgment in the cause.'

Upon which the Jury pronounced the following verdict:—“ In respect of the matters proven before them, and of the minute by the counsel for the pursuer, we find for the defenders on the first issue for the defenders."

The Bill of Exceptions came to be argued before their Lordships of the First Division of the Court of Session, when, on the 8th of July, 1841, they pronounced the following interlocutor:-"The Lords having heard counsel for the parties, disallow this Bill of Exceptions."

On the 13th July, 1841, the above decision, in favour of the defenders, was further carried out by the following additional interlocutor or decree:-"The Lords, in respect of the verdict of the Jury in this cause, apply the same; and, in the process of suspension and interdict, find the letters orderly proceeded, and dismiss the suspension; and, in the action of declarator and damages, assoilzie the defenders from the conclusions of the summons, and decern; find the defenders entitled to expenses in said conjoined actions, and remit the accounts when lodged to the auditor to tax and report."

Against these two interlocutors of the 8th and 13th July, 1841, the appellant (the pursuer below) brought the present appeal, praying that their Lordships would be pleased to reverse, vary, or alter the same, or that he might have such relief in the premises as to their Lordships should seem meet.

It will be seen, from the foregoing short abstract of the proceedings below, that there was thus distinctly raised, for the opinion of the Court of Last Resort, this very important question, namely:- Whether it is essential to the validity of a Scotch patent, that the invention, for which it is granted, should be new throughout Great Britain?' or, in other words, 'Whether evidence of the knowledge or use of the invention in England, prior to the date of the patent in Scotland, was sufficient to destroy the grant?'

It will probably be expected that, in a report upon a case of this kind, the reasons or grounds relied upon by the several parties, to support their respective views of the law upon the question in dispute between them, should be stated in their own words. There will be the less hesitation in doing this, as it is well known, that these 'Reasons' are prepared by counsel of great eminence, after the fullest consideration of the law of the case, and of the authorities bearing upon it, and that they bear the attestation of their signatures before they are admitted into the printed cases laid before their Lordships' House.

The following were the 'Reasons' assigned, on the part of the appellant, and upon which he contended, that the decision of the Court below was erroneous :—

APPELLANT'S REASONS.

"I. Because there is no communication of rights, under patents for inventions, between the subjects of the two parts of the United Kingdom, and therefore the fact, that the improvement, invented by the appellant in Scotland, had been previously used in England, is not a ground in law for invalidating his patent for Scotland.

"The power of the Crown of Scotland, to grant to the authors of new inventions in the useful arts, the exclusive privilege, for a reasonable period, of enjoying the advantages resulting from their discoveries, has not been established by any special statute, but is founded solely on immemorial usage on the part of the Crown to make such grants, and the uniform acquiescence of the nation..

"At one time, attempts were made to stretch this branch of the royal prerogative beyond its limits, by the creation of perpetual and oppressive monopolies in particular articles of trade and commerce. These abuses, however, having been complained of, were put an end to by the act 1641, c 63, which specially annulled certain monopolies of that nature, already granted, and and condemned as illegal the making of similar grants in all time coming. It is true that this statute, with all the other enactments made by the Scottish Parliament, during the troubles in the reign of Charles I., fell under the general recissory act 1661, c. 15. But although never renewed, the enactment referred to has always been considered effectual, on account of its benefit to commerce, and as declaratory of the principles of the constitution.

"The act 1641, however, while it discharged monopolies prejudicial to the public, did not in any degree call in question or abridge the right of the Crown to grant patents for useful inventions, but left that matter, without any statutory restriction, to be regulated, as before, by the principles and practice of the common law, which, while it fully recognised the policy and justice of rewarding those by whose successful exertions the community had been benefited, by securing to them, for a competent period, the fruits of their labours, was equally hostile, on the other hand, to any prolonged interference with the freedom of trade and industry.

"With respect to the number of years, for which patents for inventions were formerly in use to be granted in Scotland, it appears that there was no precise limitation in that respect. Some were granted for a longer, and some for a shorter period, varying generally from thirteen to twenty-one years, but none, so far as the appellant has discovered, extending beyond the latter of these terms. For example, in the *Register of the Great Seal, where all such grants are recorded, there is a patent for a new invention in the manufacture of iron, granted by James VI. of Scotland, to Sir George Bruce, bearing date 23d April, 1614, and to endure 'pro spatio tredecim annorum datum praesentium proxime sequent.' Another patent by James VI. to James Shevis, M.D., for a machine, to raise water from coal-pits, is granted in 1616, ' pro spatio viginti-unius annorum diem dati praesentium subsequent.' And on the 22d November, 1660,† John Brown obtained a patent, of similar endurance with the one last mentioned, for a mode, not before practised in Scotland, of refining sugar.

"On this point, the appellant may also take the liberty of referring to Dallas' System of Styles,§ printed at Edinburgh in 1697, in which, as a specimen of the usual terms of a Scotch patent of invention in his time, there is given the form of one granted, for fourteen years, to certain merchants of the city of London, to exercise the art of weighing up and recovering ships, &c., in the Scotch seas and harbours.'

"The term of fourteen years, thus set down in Dallas' Style Book, was the same as that to which patents of invention had been restricted in England, Reg. Mag. Sigil. Lib. I. No. 243. + L. V. & VI, No. 186.

8 Dallas' Styles, p. 137.

by the statute 21st James I., abolishing monopolies. Since the Union of the two Kingdoms, there has been no alteration of the practice in Scotland in this respect, except that the endurance of the privilege is now constantly limited in the patent to fourteen years.

"It would, however, be a great error to suppose, that this coincidence in the practice of the two countries, arose either from any binding force which the English statute could have in Scotland, or from an extension of its provisions to Scotland by virtue of the Union of the Kingdoms. The appellant has already shewn, that in Scotland the right of the Crown to grant exclusive privileges, for a limited time, to the authors or importers of useful inventions, is founded exclusively on the common law, while in England, on the other hand, as laid down by all the authorities, it depends on the statute of 21st James I., c. 3, sec. 6.

"But farther, the grants, by which such rights are constituted in the two countries, respectively, and the extent of the rights themselves thereby conferred on the grantees, have continued since the Union, to be just as distinct and separate as they were before that event. A patent granted for England, does not extend to Scotland; and, vice versa, a patent for Scotland does not extend to England. The right under a patent for either country is confined solely to that country; and thus it may, and often does happen, that the same article, for which a patent has been granted in the one country, and as to the using or vending of which, therefore, in that country, the patentee enjoys an exclusive right, shall be free and unrestricted to all the Queen's subjects in the other country. This shews clearly that, notwithstanding the Union, there is no communication of the law of patents, or of the rights arising under such grants, between the two countries, but that, in regard to this matter, each part of the United Kingdom must be considered as a distinct, separate, and independent country and jurisdiction, relatively to the other.

"If it were otherwise-that is, if, since the Union of the two Kingdoms, England and Scotland were to be considered as but one country, in relation to such questions as the present-it is manifest that the legitimate and necessary result would be, that all rights of patent for inventions should be co-extensive, and equally effectual in both parts of the United Kingdow. But that conclusion being directly at variance with the acknowledged state of the fact, the premises which lead to it must be unsound. To say, therefore, that the two Kingdoms of Scotland and England are now united into one Kingdom by the name of Great Britain, of which all the subjects are entitled to free intercourse of trade and commerce with all places within the said United Kingdom, is to found on a proposition, which, though undoubtedly true in regard to all articles which are not under any legal restriction, in either or both parts of the United Kingdom, is nevertheless wholly irrelevant to the subject of present inquiry relative to rights under patents for inventions, seeing it is conceded that, notwithstanding the Union, one patent would not be effectual for both England and Scotland; that a patent granted for England is limited in point of extent to England, and a patent for Scotland in like manner limited to Scotland; and consequently, that the freedom and intercourse of trade referred to in the articles of Union, does not extend to such rights of patent in either country. Nor are patents of invention the only rights, as to which, even in matters strictly relating to trade, a similar distinction continues to exist between the laws of the two countries. By the Scottish statutes in favor of the Royal Burghs, and particularly by the Act 1693, c. 12, the exclusive right of importing all foreign commodities for sale is conferred on the merchant-freemen of the Royal Burghs. Now, although the articles of Union declare that there shall be full freedom and intercourse of trade to all the subjects of the United Kingdom, yet it has been solemnly adjudged in the case of the Incorporated Trades of Aberdeen against the Magistrates and Guildry, 28th May, 1793,* that none but the guild-brethren, as

Mor. Dict, page 1979.

contra-distinguished even from the trades of the burgh, could import from England, commodities which were either the native produce of that country, or of the colonies abroad. This decision, (overruling an opposite one in the prior case of Smith v. the Guildry of Inverness, 16th December, 1757,) proceeded on the footing that the privileges of the Royal Burghs of Scotland were reserved by the Union; and that, according to the legal construction of the word 'foreign' in the statutes conferring those privileges, that character must still be held to apply to England. But the case, as to rights under patents for inventions, is evidently much stronger; for 1st.-Such patents are, in their own nature, matters of private right, constituted by grant, ex speciali gratia of the Crown, and accordingly pass in Scotland under the Seal appointed by the 24th article of the Treaty of Union, ' to be kept and used in Scotland in all things relating to private right, or grants which have usually passed under the Great Seal of Scotland, and which only concern offices, grants, commissions, and private rights, within that Kingdom;' 2nd. -It is indisputable that, in regard to patents of this nature, there is no interchange of rights and privileges between the subjects of the two parts of the United Kingdom; but that, on the contrary, a patent granted in the one country is entirely confined to that country, and has no effect whatever in the other. But, except in regard to such privileges and advantages of trade and commerce, as to which it was provided by the Treaty of Union, that there should be full freedom and intercourse between the subjects of the United Kingdom, and the laws concerning the regulation of which were therefore to be the same in Scotland after the Union as in England, the 18th article of the Treaty of Union expressly declared that all other laws in use within the Kingdom of Scotland, do, after the Union, remain in the same force as before. "The result of the foregoing considerations just comes to this: that, in regard to all questions touching the validity of a patent for Scotland, the matter must be tried and determined according to the law of that country alone, and consequently without reference to the legal state and condition of the article, forming the subject of the patent, as to freedom or restriction, in England or any other country. In stating this, the appellant certainly does not mean to say, that the law of Scotland, as to the general requisites, and construction of patents, differs from that of England, except as regards the limits of their respective jurisdiction, and the consequences naturally arising from that consideration. On the contrary, he admits, that, as might have been expected from the similarity of the general policy and principles on which such rights are founded in both countries, a corresponding uniformity has been produced in the rules of the law of Scotland and that of England on this subject. But what the appellant does maintain, is, that in applying those rules to the case of a Scotch patent, the matter must be considered solely with reference to its validity in Scotland, and the effect of the rights arising under it in that country, to which alone those rights are confined, just as if England had no connection with it."

"II. Because, according to the just construction and true meaning of the patent granted to the appellant for Scotland, the only thing required, as to the novelty of the improvement, is that it was invented in Scotland by the appellant; and there is no condition, express or implied, that the mere circumstance of its having been previously known or used in England, should infer a nullity of the patent."

"The patent first recites the petition of James Brown, (the appellant,) setting forth that he had discovered a certain improvement in the manufacturing of paper.-' Quam inventionem credit pr generali beneficio et commodo futuram esse, dictam inventionem novam esse, et haud unquam antehac factitatam aut usitatam fuisse per ullam aliam personam aut personas quascumque intra hae regna, ut intelligit et credit. Petitor, igitur, humillime supplicavit ut nobis gratiose placuerit concedere sibi, executoribus, adminis