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a patent—a fact which certainly deprived the invention of all pretensions to the character of new at the time that application was made, although in their petition they had positively stated it to be so. And that the circumstance referred to would have been, per se, a ground for annulling the patent, seems elear from the decision in the case of Wood and Others v. Žimmer and Others,* in which a patent was held void, where, previous to its being granted, the article had been publicly vended, (though only for four months,) by the patentee himself.

"The printed cases and reasons of appeal were accordingly prepared, so as not only to meet the view thrown out in the judgment of the Inner House, but to embrace the whole of the objections raised in the course of the pleadings in the Court below.

From the circumstance of there being unfortunately no report of the proceedings of the case of Roebuck in the House of Lords, the appellant is unable to state, with certainty, what were the other Reasons' referred to in the judgment for affirming the decision of the Court of Session. Probably they were founded upon the facts, that the manufacture was known to and actually used by others, and by the patentees themselves, in Scotland, and the proceeds sold by the patentees for a long period previously to the grant of the patent.

"One thing is beyond doubt, that the House of Lords did not proceed singly on the ground specified in the interlocutor of the Court, viz., That the manufacture had been previously known and practised in England; and yet, if that ground had been considered sufficient to support the interlocutor under review, it is to be presumed that the appeal would have been disposed of by a simple judgment of affirmance. That, however, as already seen, was not the case.

"It thus appears, that the circumstances of the case of Roebuck differed essentially from those of the present-in which, the sole fact upon which the direction excepted against proceeds, is the previous use of the invention in England. The decision in that case, therefore, cannot be regarded as a precedent here. Accordingly, viewing the point at issue as one open to be dealt with on principle, and holding it to be satisfactorily established, that there exists no communication or reciprocity, but, on the contrary, a complete distinction and separation between England and Scotland, as to rights of patent for new inventions,-the appellant confidently submits that it is impossible to support a ground of judgment, such as that excepted to, which rests necessarily and solely on the assumption, that the two parts of the United Kingdom are to be considered as but one jurisdiction, both in regard to the extent, and relative conditions, of grants of this nature.."

BIGGS ANDREWS.

(Signed) {JAMES MILLER.

Having thus allowed the appellant to state his Reasons for objecting to the decision of the Court below, the same course will be pursued with the respondents; the following, therefore, were the respondents' 'Reasons on which they maintained that the decision in their favour was correct.

RESPONDENTS' REASONS.

"Because Evidence of the prior Public Use of a Manufacture or Machine in England, is admissible to establish the invalidity of a Patent in Scotland for the same Manufacture or Machine."

"The respondents humbly maintain this proposition on principle, as well as on the authority of an express judgment on the point by the Court of

*Holt's Cases, page 58.

Session in Scotland, which was affirmed by your Lordships' House.

'In the first place, with regard to the principles of law applicable to the question.

"There are two things to be kept in view, about which there is and can be no manner of dispute. The first is, that the appellant applied for and obtained his letters-patent on a statement that he was the first and true inventor of his alleged improvements in the machinery for making paper; and that his said improvement had not been used by any other person at the time of making the letters-patent. The second is, that the letters-patent contain the usual proviso that the patent shall be void whenever it does appear that the invention had been previously used and exercised, and was not a new invention by the appellant.

"Now, the respondents were in a situation to prove, at the trial, that the appellant's alleged invention, for which he obtained his patent, had been publicly used and practised at all and each of the different great paper-works condescended on by them in their 12th Statement of Facts. The appellant, however, conceded the fact of such prior public use in England, but contended that any evidence of such use was irrelevant to void a Scotch patent; that to Scotland, England, in questions of this sort, behoved to be regarded as still a foreign country, as much as France or America; that England and Scotland were still distinct and separate 'realms,' in the sense of the statute of James I., and, therefore, that no use, however extensively proved in En.. gland, could invalidate a Scotch patent, and vice versa; and this view of the matter was enforced on various grounds, which the respondents shall hereafter notice.

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"It is proper, however, that they should premise, that, by the statute 21st James I., ch. 3, Concerning monopolies and dispensations with the penal laws, and the forfeitures thereof, it is declared, that all monopolies, letters-patent heretofore made or granted, or hereafter made or to be granted, for the sole buying, selling, making, working, or using, any thing within this realm, or the dominion of Wales, are contrary to the laws of this realm, and so are and shall be utterly void and of none effect.' But by Section 6, it is provided, declared, and enacted, That any declaration before mentioned, shall not extend to any letters-patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such letters-patent and grants, shall not use; so as also they be not contrary to the law, nor mischievous to the State, by raising prices of commodities at home, or hurt of trade, or generally inconvenient.' But by Section 10, letters-patent, made or to be made, conferring the exclusive privilege of printing any work, are expressly excepted from the operation of the Act.

"The power, therefore, which was reserved to the Sovereign of granting monopolies in time coming, was qualified with these four conditions :—1st, That it should only be extended to the working or making of new manufactures within the realm; 2dly, That the privilege should be granted to none but the true and first inventors of such manufactures; 3dly, That the first inventor should not be entitled to such letters-patent where others of his Majesty's subjects were, at the time, in the use and practice of making such manufactures; and 4thly, That letters-patent shall in no case be contrary to the law, nor mischievous to the State, by raising the prices of commodities at home, or hurt of trade, or generally inconvenient. In every case where letters-patent were unduly obtained, or came under any of these provisos, they were, by the previous general enactment, declared to be void and null.

"It is true that an invention may be learned by travel, or produced by study, and that in either case the intention of the legislature is fulfilled. But when a patent is sought for something which has been practised 'BEYOND THE SEA,' the applicant is required to affirm, that in consequence of a certain communication from a foreigner residing abroad,' he is in possession of

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a certain invention; and the fact so disclosed by him is then set forth in the title of the letters-patent. He must be the true and first inventor, and it is an express condition of such a patent, that others of the lieges must not have used his manufacture, otherwise the exclusive privilege is made void.

"In Scotland, a statute was passed in 1641, ch, 76, which proceeds on the preamble of the hurt and prejudice sustained by the lieges, by certain monopolies used and exacted within the Kingdom; and, therefore, it ordains several patents, which are enumerated, and all other patents, purchased or to be purchased, for the benefit of particular persons, in prejudice of the public, to cease and be ineffectual.

This Scotch statute and the declaratory Act of King James, settled the law as to the extent of the Royal prerogative in this matter; and since the union of the two Kingdoms the same law, in regard to trade and patents, has prevailed in both. For by the Sixth Article of the Treaty of Union, it is expressly declared, That all PARTS of the United Kingdom for ever, from and after the Union, shall have the same allowances, encouragements, and drawbacks, and be under the same prohibitions, restrictions, and regulations of trade, and liable to the same customs and duties on import and export: And that the allowances, encouragements, and drawbacks, prohibitions, and restrictions, and regulations of trade, and the customs and duties on import and export, settled in England when the Union commences, SHALL, from and after the Union, take place throughout the whole United Kingdom.' And by the 25th Article it is enacted and declared, that all laws and statutes in either Kingdom, so far as they were contrary to the Articles of the Union,' were to cease and become void.'

"Thus there can now be no monopoly, in relation to trade in England, which would not operate also as a monopoly in relation to trade in Scotland. The laws regulating the trade of all Great Britain' are the same; and though, when exclusive privileges are granted by the Sovereign, within the limits assigned to the prerogative by statute, the forms necessary to be adopted in the two portions of the United Kingdom, may vary,-the law is nevertheless the same in both. And the prior use of a manufacture in any portion of the United Kingdom, must therefore render the exclusive privilege meant to be conferred by a patent, of no avail any where within the limits of the United Realm or Kingdom.

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"Since the Union, there is but one realm—Great Britain,—one Sovereign to whom alone the subjects of Great Britain owe allegiance, though the oath of allegiance may, by law, still be administered before the ancient judicial tribunals of the two ancient Kingdoms. In all that relates to the encouragements, the prohibitions, restrictions, and regulations of trade, however, there is but one law; while, by the Treaty of Union, it is declared that the encouragements, as well as the prohibitions, restrictions, and regulations of trade, which were settled in England when the Union commenced, should, from and after the Union, take place throughout the whole United Kingdom.' "And, therefore, the English statute of James I. concerning monopolies, is as much part and parcel of the law of Scotland, as the Act ratifying the Treaty of Union itself. It has been always so understood in Scotland. And consequently, the declaration that patents shall be effectual for fourteen years for making any new manufacture within this realm, to the first and true inventor of such manufacture, which others have not, at the time of granting the patent, used, must be read as applicable to the United Kingdom, or as if the words within Great Britain' were substituted for the words within the realm.

"A different interpretation of the law would lead to the most anomalous and injurious results. It cannot surely be maintained that every thing that is unknown in Scotland may be the subject of a patent here, however common the use of it may be in England. On one side of the Tweed a particular species of plough may have been very long in common use, while it

Thomson's edition of the Statutes, Vol. V. p. 496.

was not in use at all on the other side. But would it be consistent, either with the spirit or letter of the Treaty of Union, that the lieges on both sides of the Tweed should not have the same protection in the use of the plough? "England and Scotland are no longer foreign countries to each other, in any sense of the term. They are divided by no sea, and, in point of law as well as of fact, they are the United Realm of Great Britain. And therefore to maintain that a patent may be good in Scotland, and yet bad in England, is utterly destructive of the principles on which, by statute, the two Kingdoms were incorporated into one.

"But the appellant, in his argument in the Court below, seemed to rely on Scotland being considered as a foreign country in regard to England, in relation to patents, because of the fact that a patent which had passed the Seals in England, would not be good in Scotland, unless it passed the Seals in Scotland also, et vice versa.

"But to this observation there is an irresistible answer. By the Union of the two Kingdoms, the English laws in force at the period of the Union, both as to the revenue and trade, were communicated to Scotland. The communication of these laws was no difficult matter, while the mode of administering them, or any change in the Courts or peculiar forms by which they were administered, was a different and more difficult matter. The nature of the land rights of Scotland, and many other obstacles, rendered an absolute union of the two Kingdoms next to impossible. And therefore, while the whole United Kingdom was declared to be subject to the same encouragements, restrictions and regulations of trade, the existence of separate judicatories and forms was indispensable.

"While the United Kingdom' remains subject to the same limitations and encouragements of trade, how can that machine which has been, publicly. and without restraint, for years used by the Queen's liege subjects in England, in the manufacture of paper, be made the subject of an effectual monopoly in Scotland? The question cannot be answered in the affirmative, without leading to the most unjust results to the lieges in one or other of the sections of the United Realm.

"With regard, again, to a patent passing a particular Seal for Scotland, and another Seal for England, that circumstance, with deference, affords no strength whatever to the appellant's case. It might as well have been said that the law regarding the revenue and trade in the two Kingdoms were different, because there were separate Courts of Exchequer, and separate Boards of Excise and Customs, and for Stamps and Taxes. But the law is, by the force of statute, declared to be the same in regard to patents on both sides of the Tweed. For the law relating to patents is only a part and parcel of the law by which the trade of the United Kingdom is regulated, restrained, or encouraged, though the execution of the law may be by means of different Courts in the two ends of the island.

"The matter of the patent is, the respondents believe, the only thing regarding trade where the Queen's Seals are necessary. And since it was requisite, and made a part and condition of the Union, that the Seals of the two sections of the United Kingdom should remain distinct, it is of course necessary to give a patent validity and force in both, that the Seals of both should be obtained. But it is equally certain, since the laws, regarding the prohibitions of trade, were declared to operate equally over the whole island, that he who is entitled to a patent for Scotland, is equally entitled to a patent for England; while, on the other hand, if there lie a good exception against it in the one section of the kingdom, he cannot obtain it in the other: For example, if the invention be disclosed and made public in either part of the United Kingdom before both patents are sealed, he could not avail himself of either. And accordingly, the respondents believe that, in practice, in order to enable the party to obtain a patent for both parts of the Kingdom, before his specification falls due under the English patent, and the necessity for the publication of the invention arises, the period for enrolling the specification in Chancery is enlarged.

"But a further conclusive argument against the appellant's proposition, that Scotland is considered as a foreign country as regards patents, is furnished by the fact, as well as the practice, of the Crown being at variance with such proposition. For a patent would not be granted upon the application of an individual importing an invention from Scotland, not even from a foreigner residing in Scotland-nor indeed from a native of Scotland residing in France, because he would not be a foreigner.

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Monopolies are adverse to the common law of Scotland as well as of England, and the grant thereof by the Sovereign can only be supported on clear evidence of utility to the public, or as a reward for the discovery of a perfectly new invention. But neither of these elements exist in the case of one who has wholesale imported the known public practice and use in any particular department in trade,-of Berwickshire, for example, into Northumberland, or of Cumberland into Dumfriesshire. The appellant admits, as matter of fact, the previous public use of his machine for manufacturing paper in England. About the fact there is no dispute, nor can there be any that the statute of James is part of the law of the United Kingdom, and that the law in relation to trade is the same in both. And therefore to hold, that the fact of prior public use in England of this invention, was not relevant and admissible as a ground for proving the invalidity of the appellant's patent, was in other words to say, that his patent was valid though it was not for a new manufacture-though he was not the first and true inventor-and though the manufacture had been in public use by others at the date of the patent, thereby treating as of no effect whatsoever the very qualities and conditions under which alone it is declared by statute, that the Sovereign may, in the exercise of the Royal prerogative, grant a valid patent or monopoly in a matter of trade.

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Suppose the case of admitted prior use of the manufacture in Scotlandthe appellant conceded that evidence of that fact would not only have been relevant and admissible, but of conclusive effect against the validity of his patent. But on what ground is it that that fact, when established, would be conclusive against the monopoly? It is because the lieges had, before the letters-patent, and by the use at the time by others, a vested right in the manufacture. But under the statute of James and the Treaty of Union, is there to be any distinction of the rights of the Queen's liege subjects in matters of trade? Though there is but one Sovereign, one realm, and one allegiance—is it to a certain section of the Queen's lieges only that the vested right of freedom from monopoly applies, and not to others? How can such a doctrine be maintained with any regard to the fact of there being now but one realm, and one law in relation to matters of trade for all the lieges?

"The respondents therefore humbly submit, that, on principle, the judgment of Lord Mackenzie at the trial, supported as it was by the unanimous judgment of the First Division of the Court of Session, disallowing the exception taken to his Lordship's judgment, is well founded.

"But, in the second place, the judgments appealed from are supported by the authority of an express decision of the Court below, and of your Lordships' House, and which stands unopposed, so far as the respondents can learn, by any opposite authority or decision, either in England or Scotland. The case to which they refer is that of Roebuck and Garbett v. William Stirling and Son, 10th March, 1774. It is reported in Brown's Supplement to the Dictionary of Decisions, Vol. V. p. 522; and in Lord Hailes' Collection of Decisions, Vol. I., p. 566. The rubric of the case, as stated by Lord Hailes, is in these words,' Found a good objection to a Scotch patent, that previous to its being granted, the art was known and practised in England.' The facts of the case were as follow:—

"Dr. Roebuck obtained, by letters-patent under the Great Seal of Scotland, the exclusive privilege of exercising the art of manufacturing oil of vitriol in vessels of lead, within Scotland, for fourteen years. Stirling and Company erected a vitriol-work at Glasgow for carrying on the same process, where2 B

VOL. XXI.

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