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$ 47. The case of the Agawam Co. v. Jordan' is not inconsistent with what is advanced at the close of the last section. The defendant in that case did not set up a joint invention by the patentee and another, but set up an alleged sole invention by that other, of the thing patented. The most that it could get its witness to testify, however, was that he suggested to the patentee one of the parts of one of the combinations secured by the patent, but that the patentee himself contrived the devices by means of which that part was incorporated into that combination. The patentee did not claim the suggested part as his invention, but only claimed several new combinations of old devices, and among the number a combination of several things, one of which was said to have been suggested by the defendant's witness. In that state of facts it was clear that the latter was neither sole nor joint inventor of anything covered by the patent, and accordingly the Supreme Court so decided.
$ 48. In order to make an invention of importance, a considerable fund of general knowledge must be possessed by the inventor. Where that fund was acquired before he undertook his invention, it is easy to see that those who imparted it are not thereby made joint inventors with him. Though not quite so obvious, it is equally certain that if, pending his experiments, an inventor seeks and secures one point of information from a scientist, and another from a machinist, and a third from a book, he is not, on account of
aving done the first two, any less a sole inventor than he is on account of having done the last.'
$ 49. To constitute a man an inventor, it is not necessary for him to have skill enough to embody his invention in a working machine, or in a model, or even in a drawing. If a man furnishes all the ideas needed to produce the invention aimed at, he may avail himself of the mechanical skill of others, to practically embody or represent his contrivance, and still be the sole inventor thereof. But it is not inven
tion to conceive a result, and then employ another to produce that result.'
$ 50. Under the statute, only he or they who have invented a particular thing can lawfully obtain a patent therefor, except in cases where the applicant is an assignee or legal representative of the true inventor or inventors. It follows that if one of two or more persons obtains a patent for a process or thing which was jointly invented by them all, that patent is not valid.' In such a case it is not true that the patentee invented the thing patented. He only helped to invent it. If he could have a valid patent for that thing or process, each of his co-inventors could do likewise, and each of several persons would possess the exclusive right to the same. As to each other, such a state of affairs among patentees would be impossible, and as to the public it would be intolerable.
$ 51. So also if several persons obtain a joint patent for what was invented solely by one of them, that patent is void.' There is no statutory authority to grant a patent to a non-inventor jointly with an inventor, without an assignment or a death, any more than there is to grant a patent to a non-inventor alone. But very convincing evidence is required to establish the invalidity of a patent on the ground stated in this section..
McArthur's Patent Cases, 696, 1859.
Streat 0. White, 35 Fed. Rep. 426, 1888.
· Arnold v. Bishop, 1 McArthur's Patent Cases, 36, 1841; H. T. Slemmer's Appeal, 58 Penn. 164, 1868.
3 Ransom 0. New York, 1 Fisher, 269, 1856; Hotchkiss 0. Greenwood,
4 McLean, 461, 1848; Barrett v. Hall, 1 Mason, 473, 1818; Royer o. Coupe, 29 Fed. Rep. 363, 1886; Stewart v. Tenk, 32 Fed. Rep. 665, 1887.
4 Button Fastener Co. 0. Lucas, 28 Fed. Rep. 371, 1886; Schlicht & Field Co. v. Machine Co. 46 Off. Gaz. 1394,.1888.
52. Novelty necessary to patent
ability. 53. Novelty defined. 54. Not negatived by knowledge or
use in a foreign country. 55. Not negatived by private patent
granted in a foreign country. 56. Prior printed publications. 57. Fulness of prior patents and
printed publications. 58. Novelty not negatived by any
abandoned application. 59. Qualification of the last rule. 60. Successful prior applications. 61. Novelty not negatived by any
unpublished drawing, or prior
model. 62. Novelty not negatived by any.
thing substantially different. 63. Abandoned experiments. 64. Novelty in cases of designs. 65. Novelty not negatived by any.
thing apparently similar or chemically identical, but practically useless.
66. Novelty not negatived by an
tiquity of parts. 67. Novelty not negatived by prior
accidental and not understood
production. 68. Novelty not negatived by any.
thing neither designed, nor apparently adapted, nor actually
used for the same purpose as the 69. Comparative dates. [invention. 70. Dates of patented inventions. 71. Novelty is negatived by one in
stance of prior knowledge and
use in this country. 72. Novelty is negatived by prior
making without using. 73. Inventor's lack of knowledge of
anticipatiug matter is imma
terial. 74. Old thing derived from new
source. 75. Questions of novelty are ques
tions of fact. 76. Burden of proof relevant to
$ 52. The statutes of the United States have always provided that anything to be patentable must be new. Statements that some things are not patentable because, though new in a commercial sense, they are not new in the eye of the patent law, occur in a few reported cases. In every such instance, however, it would have been more accurate to say that some things are not patentable because, though new things, they are not invented things. Such things lack patentability not because they lack newness, but because they lack invention. The subject belongs to the domain of invention and not to that of novelty, and it is therefore treated in the second chapter of this book. With this explanation, it is not untrue or misleading to say that whatever is really new, is new in the eye of the patent law.
$ 53. Many things are new in the eye of the patent statutes in addition to those things which are really new. The word has, therefore, a broader signification in those statutes than it has in the dictionaries; but that broader meaning is not capable of a short definition. Novelty is the conventional name of that statutory newness, but that name does not indicate the boundaries of the thing which it denotes. Those boundaries can be delineated only by enumerating and explaining those classes of facts which fall within them, but which fall without the boundaries of actual newness : those classes of facts which negative newness, but which do not negative novelty.
$ 54. Novelty is not negatived by prior knowledge and prior use in a foreign country of the thing patented, provided the patentee, at the time of making his application for a United States patent, believed himself to be the first inventor of the thing covered thereby, and provided that thing had nowhere been patented to another, and nowhere been described in a printed publication.'
Knowledge in the mind of a man who lives in this country, that the patented thing was known and used in a foreign country before its invention here, is not such knowledge in this country as will negative the novelty of the patent covering that thing.'
$ 55. Novelty is not negatived by any prior private patent granted in any foreign country,' nor by any public patent granted in England, unless the complete specification of the latter was filed before the person obtaining the American
i Revised Statutes, Sections 4887 and 4923.
: Doyle v. Spalding, 19 Fed. Rep.
Brooks 0. Norcross, 2 Fisher, 661, 1851.
patent made the invention.' In neither of those two cases can it be truly said that the invention was antecedently patented in a foreign country, that is, made patent to the public, and therefore such transactions do not come within the statute. On the other hand, it is safe to say that novelty would be negatived by a full description in the specification of a prior public patent of the thing covered by an American patent, even though that thing was not covered by the claims of the prior patent, and therefore not patented to the prior inventor.' This doctrine must result from the fact that whatever is well described in a patent is patented, that is, made patent to the public, whether it is claimed by the patentee or not. Indeed the Supreme Court has decided that novelty is negatived by a prior patent which shows the device in its drawings and describes it in the specification, but does not clearly state its use.
$ 56. A printed publication is anything which is printed, and, without any injunction of secrecy, is distributed to any part of the public in any country; and such a publication may negative novelty. Indeed, it seems reasonable that no actual distribution need occur, but that exposure of printed matter for sale is enough to constitute a printed publication. Whether a drawing, either in a patent or a printed publication, if unaccompanied by description in words, will negative novelty is an unsettled question. Its answer depends upon the meaning of the word “described” in the statute. If that meaning is confined to the last definition of Webster, then only description in words can negative novelty ; but if it covers also the first definition of Webster, then
representation by lines, as in a drawing, must have that effect. Inasmuch as drawings can generally give information which is as clear as that which words alone can give, relevant to
Smith v. Goodyear Dental Vulcanite Co. 93 U. S. 498, 1876.
? United States Bung Mfg. Co. o. Independent Bung Co. 31 Fed. Rep. 79, 1887.
3 Slow v. Chicago, 104 U. S. 547,
4 Rosenwasser o. Spieth, 129 U. S. 47, 1888.
6 Judson 0. Cope, 1 Fisher, 619, 1860; Reeves o. Bridge Co. 5 Fisher, 456, 1872.