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CI 



PATENT LAW 



BY 



JOHN BARKER \VAITE 

PROFESSOR OF LAW IN THE UNIVERSITY 
OF MICHIGAN LAW SCHOOL 



PRINCETON.UNIVERSITY PRESS 
PRINCETON 

LONDON: HUMPHREY MILFORD 
OXFORD UNIVERSITY PRESS 

1920 



'■> 



Copyright, 1920, by 

Princeton University Press 

Princeton, N. J. 

Published, 1920 
Printed in the United States of America 




PREFACE 

Law is often defined as the rules by which courts will de- 
cide controversies. If this be correct, the art of practice is in 
forecasting how courts will decide particular cases. Decisions 
are no longer, even in theory, mere repetitions of precedent, 
nor even purely logical development of precedent to fit new 
circumstance. The practical effect of one decision or another 
has openly, or, more often, covertly, drawn many a judge from 
the straight path of abstract logic. Primarily, of course, a 
practitioner must be familiar with precedent and must be 
trained so to analyze it as to perceive to the uttermost thread 
that web of ever fining principles which constitute the rules of 
law. But beyond this, in order to prognosticate the future 
pattern which his threads will weave, he must observe, in addi- 
tion to the pattern of the past, the extraneous factors which 
influence judicial decisions ; he must know to what extent de- 
clared principles have been deduced through logic and how far 
merely supported by it. He must comprehend the ideas of 
policy and the pragmatic reasoning which permeate all the 
modern law. It is partly because it can at least suggest this 
background that a proper text-book has an informational value 
greater than that of either digest or encyclopedia. But more 
particularly does the text book serve a special purpose in so 
showing the derivation of a rule, in expounding and explaining 
it in relation to other rules, as to indicate its probable direction 
and application. I have endeavored to dp this so far as pos- 
sible without getting into either speculation or philosophic dis- 
coursiveness, but, partly in consequence thereof, some proposi- 
tions of law are not so categorically stated as one might like. 
Since law is what will be developed from what has been de- 
termined, one can be quite positive and define only as to the 
past and, in regaid to some matters, even that can not be 
formulated into a rule. In occasional instances I have not 
hesitated to state what I believe ought to be the rule, where the 



vi Preface 

actual decisions leave it uncertain, or where there are not de- 
cisions upon the matter at all, but in no case have I knowingly 
done so without pointing out the lack of actual authority. 

The comparatively small size of the book is not due to any 
conscious superficiality of treatment nor omission of pertinent 
subject matter. It purports to cover only the substantive law 
of patents, their nature, validity, effect and their characteristics 
as property. Matters of procedure in securing patents or suing 
on them, and the difficult subject of the amount of compensa- 
tion recoverable by suit, would require a volume for them- 
selves and are not included herein. But of the matter which 
is included, it has been my desire to present every issue which 
has come before the courts. Of course I have in no degree 
cited all the cases, but to the extent that I have accomplished 
my intention, some part of the discussion will be found ap- 
plicable to every case. I have sought brevity in such a co- 
ordination of propositions and so carefully worked out a 
sequence of topics as would eliminate duplication of discussion. 
But for this reason some propositions will not be found under 
customary headings and reference to the index will be conse- 
quently more necessary than is usual. 

Although the book is as complete in its field and as thorough 
as I could make it, it is written primarily for others than patent 
practitioners. They, presumably, being already trained special- 
ist? in this subject, have no longer any need for discussion 
and exposition of principles. The digests, showing particular 
applications of the various rules, should be their tools. This 
book is intended more particularly for the use of inventors, 
business men, engineers, lawyers in general practice and all 
that class of laymen who from time to time want information 
concerning their rights in respect to inventions and patents. 

John Barker Waite. 
Ann Arbor, Michigan. 



CONTENTS 

CHAPTER I 

Origin of Patent Rights 

The Common Law i 

Royal Grants 2 

Statutes 5 

CHAPTER n 
What May Be Patented 

Source 

Importation "12. 

Discovery , 14 

Character 

A Mental Concept 23 

Inventive Quality 34 

Originality — Prior Knowledge 

Foreign Use 76 

Extent of Prior Knowledge 79 

Proof of Prior Knowledge 83 

Lost Arts 92 

Unrecognized Results 95 

Scattered Knowledge 96 

Inventor's Own Revelatipns 97 

Date of Invention T 98 

CHAPTER III 
Utility 107 

CHAPTER IV 

The Person Entitled to a Patent 

Who May Apply 118 

Who May Receive 122 

Who is the Inventor 124 

Joint Invento7s 130 

CHAPTER V 

Loss OF Right to a Patent 

Public Use or Sale 136 

Experimental Use or Sale 145 

Abandonment 154 

Public Use 155 

Failure to Apply 157 

• • 

Vll 



viii Contents 

CHAPTER VI 

Securing a Patent 

Form of Application 165 

Description 170 

Claim 186 

Corrections 

Disclaimer : 196 

Reissue 198 

Amendment 209 

New Applications 210 

Appeals 213 

Interferences 215 

Protests Against Issue 216 

CHAPTER VII 

* Actions to Avoid Patents 

By the Government 217 

By Patentees 218 

Insufficiency of Remedies 219 

CHAPTER VIII 

The Ownership of the Monopoly 

Duration 222 

Transfer 225 

Effect . . * 227 

Conditions 231 

Partial Transfers 232 

Undivided Interests 233 

Contracts to Transfer 237 

Estoppel 245 

Licenses 248 

Restrictions on Licensee 255 

Restrictions by Contract 262 

CHAPTER IX 

Protection of the Monopoly 

Jurisdiction of the Courts T 266 

Remedies 268 

Proof of Infringement 271 

The Essential Issues 271 

Factors in the Decision 276 

Pioneer Patents .*. 279 

Who May Infringe 285 

What Constitutes Infringement 286 

Contributory Infringement 294 

Practical Value of Void Patents 299 

CHAPTER X 
Designs 301 

CHAPTER XI 
Epilogue 311 



CHAPTER I 

Origin of Patent Rights 

The Common Law does not recognize any righc of owner- 
ship in an invention. If one has conceived a new means of 
accomplishing a given result his only right to .the exclusive use 
and enjoyment of that new means is by virtue of statutes ; he 
has no such right in the "unwritten law." So long as an in- 
ventor can practically keep his idea a secret it remains his 
property, to be exclusively enjoyed by him, because the law 
does not compel him to reveal it. Furthermore, if an inventor 
has revealed his new idea of means to some other person un- 
der an express or implied ple.dge of secrecy, or through a 
confidential relationship, the law (equity) will enjoin that 
person under pain of punishment from breaking his pledge of 
secrecy.^ If an inventor embodies his new idea in tangible 
form, that corporeal embodiment itself is his property just as 
would be any other tangible thing that he might make, or have 
made, for himself. The mistaken, but not infrequent, as- 
sumption that the corporeal embodiment of the new idea is 
itself the invention, has given rise to occasional statement that 
the Common Law, because it recognized the maker's ownership 
of the corporeal chattel, recognized ownership in an invention. 
The distinction between the "invention," which is an intangi- 
ble concept, and the wheels, levers, substances and other tangi- 
ble things by which the idea is given visible form must be kept 
clearly in mind. Invention is a mental operation, not a physi- 
cal act, and an invention is an idea, expressed in some form, 
visible or audible, and not the tangible thing in which it may 
happen to be demonstrated. Of this, more will be said later. 

The idea itself, so soon as it becomes known to others, 
ceases, so far as the unwritten law is concerned, to be the in- 
ventor's property. It is at once open to the use and enjoyment 

^O. & W. Thum Co. v. Tloczynski, 114 Mich. 149. 



2 Patents and Inventions 

of any one. As one judge expressed it, "So long as the origi- 
nator of the naked idea keeps it to himself ... it is his ex- 
clusive^roperty, but it ceases to be his own when he permits it 
to pass from him. Ideas of this sort, in their relation to prop- 
erty may be likened to the interest which a person may obtain 
in bees and birds, and fish in running streams, which are con- 
spicuous instances of (animals) ferae naturae. If the claimant 
keeps them on his own premises they become his qualified 
property, and absolutely his so long as they do not escape. 
But if he permits them to go he can not follow them."^ 

The whole matter of ownership of inventions, therefore, 
depends upon written law ; and the statutes of the country are 
the beginning and the end of an inventor's exclusive xight to 
the use and enjoyment of his invention. 

Royal grants. The right of sole enjoyment of an inven- 
tion originated, in England, from grants made by the sovereign 
to particular inventors. These grants were evidenced by open 
letters, which were technically called letters patent or merely 
patents, and by a sort of metonymy the rights themselves 
thereby evidenced have come to be commonly known as pat- 

2 Bristol V. E. L. A. Society, 52 Hun. 161, 5 N. Y. S. 131 ; To the same 
effect are, Stein v. Morris, Va. (1917), 91 S. E. 177; Wilson v. Rousseau, 
4 How. 646, 673; Gayler v. Wilder, 10 How. 477; Morton v. N. Y. Eye 
Infirmary, 5 Blatch. 116; Dudley v. May hew, 3 Comstock (N. Y.) 9; 
Comstock V. White, 18 How. Prac. (N. Y.) 421. 

As a matter of fact, the idea of "possession" has been so fundamental 
in the English concept of "property;" that the Common Law has been 
loath to recognize property rights in anything that is not capable of ex- 
clusive physical possession. But while it never recognized an exclusive 
right to an invention, it has conceded property rights in some intangible 
ideas. An interesting discussion of an author's exclusive right to the sub- 
ject matter of his compositions as distinct from his tangible manuscript, 
is found in the early case of Millar v. Taylor, 4 Burr, 2303, esp. 2336 ff. 
"The present claim is founded upon the original right to this work, as 
being the mental labour of the author; and that the effect and produce of 
the labour is his. It is a personal incorporeal property, saleable and 
profitable; it has indicia certa: for though the sentiments and doctrine 
may be called ideal, yet when the same are communicated to the sight and 
understanding of every man, by the medium of printing, the work becomes 
a distinguishable subject of property, and not totally destitute of corporeal 
properties." 



Origin of Rights 3 

ents. Many monopolies and exclusive r'ghts were granted by 
royal letters patent other than those relating to the use and 
enjoyment of an invention, but it is with the latter only that 
we are here concerned.^ 

The practice of the sovereign in granting monopolies was 
always opposed by the Common Law, on the ground that they 
were contrary' to natural right.* The courts could not prevent 
the sovereign from issuing such grants, but they could punish 
the procurement of them, and they could refuse to enforce 
them.' They did so refuse in cases of monopolies which they 
did not believe to be for the good of the realm. 

Nevertheless the grants became so numerous and so ob- 
noxious that in 1601 an attempt was made by Parliament to 
abolish monopolies entirely. A promise by the Queen to lessen 
the burden of them prevented action at this time, but during 
the reign of James I, in 1623, a statute was enacted, entitled 
the statute against Monopolies.** This act provided, **that all 
monopolies, and all commissions, grants, licences, charters and 
letters patents heretofore made or granted, or hereafter to be 
made or granted to any person or persons, bodies politick or 
corporate whatsoever, of or for the sole buying, selling, mak- 
ing, working or using of anything within this realm, . . , are 
altogether contrary to the laws of this realm, and so are and 
shall be utterly void and of none effect, and in nowise to be put 
in use or execution." The act contained, however, an express 
exception from its operation of those letters patent and grants 
of privilege, for a limited term, which had been, or should be, 
given for 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 patents and grants shall not use, so as 
also they be not contrary to the law, nor mischievous to the 

3 The first letters patent for an invention are said to have been given 
by Edward III to the inventor of a "philosopher's stone." 

* Coke, 3rd institute, Cap. 85. 

^Darcy v. Allin, Noy. 173; 74 Eng. Rep. 1131; The Clothworkers of 
Ipswich Case, Godbolt No. 351, p. 252, 78 Eng. Rep. 147. 

«2i Jac. I. Ch. 3. The date is 1623 or 1624 according to the time at 
which his reign is assumed to have commenced. 



4 Patents and Inventions 

state^ by raising prices of commodities at home, or hurt of 
trade, or generally inconvenient. . . ." 

This negative provision, excepting monopoly patents to 
inventors from the ban of the statute, has generally been 
thought of as the original foundation of patent law. It is 
quite clear, however, that royal patents to inventors would not 
have been invalid, under the Common Law, before the statute, 
but would have been enforced, as being actually for the good 
of the realm, and that the exception in the statute was there- 
fore merely declaratory of the Common Law. Lord Coke in 
his Institutes says specifically that this proviso made such 
patents no better than they would have been before the act, 
but only excepted them from the express prohibition of the 
act.^ He further suggests as the reason they are good at all, 
that they benefit the realm by offering a reward for the pro- 
duction of new manufactures. 

This is the position consistently taken by all who advocate 
the propriety of- granting monopolies to inventors. The re- 
striction of the natural right of the public to make use of all 
knowledge revealed to it, is justified on the theory that the 
grant of a sole right to inventors encourages and instigates the 
production of knowledge, by stimulating search for it.® It is 
not within the scope of this work to discuss the economic 
propriety of granting patent monopolies ; it is sufficient to say 
that legal validity of the grant is predicated upon the assump- 
tion that it is for the good of the public.® 

7 No. 3, Cap. 85. 

® "It (the patent statute) was passed for the purpose of encouraging 
useful invention and promoting new and useful improvements by the 
protection and stimulation thereby given to inventive genius, and was 
intended to secure to the public, after the lapse of the exclusive privileges 
granted, the benefit of such inventions and improvements." Bauer v. 
O'Donnell, 229 U. S. i, 10. 

® A discussion of the justification of the patent laws will be found in 
Robinson on Patents, vol. i, p. 54 ff ; Hopkins on Patents, introduction to 
Vol. I ; Articles by Fredk. P. Fish, Sci. Am., Sept. 27 and Oct. 4, 1913. 
An unusual and excellent discussion of the justification of the monopoly 
given by the patent law is to be found in "Inventors and Money-makers" 
by F. W. Taussig. His thesis appears to be, that invention flows natur- 



Origin of Rights 5 

This right of the sovereign, as recognized by the Common 
Law and the Statute of Monopolies, to create by express grant 
the sole right to enjoy the fruits of invention, became a pre- 
rogative of the state governments of this country," and it is 
possible that they still have power to grant patents for inven- 
tions within their own jurisdictions. 

The right to issue monopoly patents to inventors is given to 
the federal government by the Constitution.^^ It authorizes 
Congress "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 Discov- 
eries." As nothing further is said in the Constitution upon the 
subject, it would appear that Congress is unhampered as to the 
character of the right it shall grant, except by the other pro- 
visions of the Constitution and, possibly, by the rules of the 
Common L-aw.^^ The grants might be made by special act 
concerning particular inventions, if Congress so desired, in- 
stead of by the general laws under which they ar^ in fact se- 
cured.^^ The law may also be retrospective as well as pros- 
pective for "the power of Congress to legislate upon the sub- 
ject of patents is plenary, by the terms of the Constitution, 
and as there are no restraints on its exercise, there can be no 
limitation of their right to modify them at their pleasure, so 
that they do not take away the rights of property in existing 
patents."^* 

The patent statutes. The first general act providing for 
the issuance of patents to inventors was that of April lo, 
1790.^' This provided generally for the grant, by the Secre- 

ally, in its fullest extent, from the primitive instinct for contrivance, but 
that the monopoly is necessary to assure the commercial development and 
practical perfection of inventions. 
^0 Act of 1793, § 7 ; Livingston & Fulton v. Van Ingen, 9 Johns (N. Y.) 

507. 

11 Art. I, §8. 

12 Blanchard v. Sprague, 3 Sumner 535. 

13 Bloomer v. McQuewan, 14 How. 539 ; Evans v. Eaton, 3 Wheat. 454 ; 
Graham v. Johnston, 21 Fed. 40. 

1* MoClurg V. Kingsland, i How. 202. 

15 The sequence of the various patent acts is set out in Root v. Railway 
Co., 105 U. S. 189. 



6 Patents and Inventions 

tary of State, Secretary of War and Attorney General, or any 
two of them, of a patent, to endure for 14 years, to any in- 
ventor who came within the terms of the act. It provided for 
a particular mode in which application for the patent should be 
made and proceedings and conditions in accord with which 
the patent should be issued. By later acts the duty of issuing 
the patents was imposed upon the Secretary of State," and 
eventually a sub-department known as the Patent Office was 
instituted to perform these duties, and the office of Commis- 
sioner of Patents was created. ^^ In 1870-4 the patent laws 
were revised and re-enacted in the form which, with some 
minor changes, is still in effect.^® 

This act provides that " "Any person who has invented or 
discovered any new and useful art, machine, manufacture or 
composition of matter, or any new and useful improvements 
thereof, not known or used by others in this country, before 
his invention or discovery thereof, and not patented or de- 
scribed in any printed publication in this or any foreign coun- 
try, before his invention or discovery thereof, or more than 
two years prior to his application, and not in public use or on 
sale in this country for more than two years prior to his ap- 
plication, unless the same is proved to have been abandoned, 
may, upon payment of the fees required by law, and other 
due proceeding had, obtain a patent therefor.'' 

**Every patent shall contain a short title or description of 
the invention or discovery, correctly indicating its nature and 
design, and a grant to the patentee, his heirs or assigns, for 
the term of seventeen years, of the exclusive right to make, 
use, and vend the invention or discovery throughout the United 
States and the Territories thereof, referring to the specifica- 
tion for the particulars thereof. A copy of the specification 
and drawings shall be annexed to the patent and be a part 
thereof.'' 

i«Act of 1793. 
"Act of 1836.' 

1^ The Commissioner of Patents will furnish, on application, without 
charge copies of the Patent Laws as they now stand. 
i» ^ 4886 and 4884. 



Origin of Rights y 

Interpretation of the statutes. The greatest bulk of 
patent litigation has arisen out of controversy as to whether 
some particular alleged invention was entitled to protection 
under the terms of this statute and, if so, how far it should be 
protected. 

Our initial investigation, therefore, concerns the degree of 
strictness with which the terms 6f the statute shall be construed 
and unexpressed terms implied; that is to say, whether the 
construction shall favor the alleged inventor, or the public, 
whose natural right a valid patent would restrict. Many 
courts have sought for the answer to this through an exami- 
nation of the fundamental justification for granting any 
exclusive right of enjoyment to an inventor. Out of this have 
arisen three different theories of the justifying purpose of 
the patent laws. These are best denoted by the expression 
generally used in reference to them, viz. : i . The patent is 
a monopoly. 2. It is a reward. 3. It is a contract between the 
state and the inventor. 

The theory that a patent is a monopoly and should there- 
fore be interpreted most strictly against a patentee and in 
favor of the public, proceeds upon the assumption that there is 
in fact no justification for the patent laws; that they are not 
of economic advantage to the state. This theory is not sup- 
ported in judicial decision, although there is remarkable con- 
flict of expression as to whether or not a patent right is in 
name a monopoly. Courts have said with equal positiveness 
that it is a monopoly^® and that it is not a monopoly. Indeed 
the same judge has said in one case," "This (patent) law 
gives a monppoly, but not in an odious sense," and in another 
case^^ "Patentees are not monopolists . . . the (patent) law 
repudiates a monopoly." This conflict is due not to disagree- 
ment as to the character of the patent right but to difference in 
understanding of the word monopoly. In its simplest mean- 
ing, monopoly is defined, from its root words /tAoVo?, sole, and 

20 "A true and absolute monopoly," Heaton-Peninsular, etc. Co. v. 
Eureka Specialty Co., 77 Fed. 288. 

21 Brooks V. Jenkins, 3 McLean 432 (1844). 

22 Allen V. Hunter, 6 McLean 303 (1855)- 



8 Patents and Inventions 

v<t>\€ivy barter, sale, as "an exclusive privilege to carry on a 
traffic." It can not be denied that, in this sense, a patent right 
is a monopoly since it gives to the patentee an exclusive right 
to make, use and vend the invention, and it is in this sense 
that courts speak of it as being a monopoly. But in the usage 
of the law, as well as of common parlance, the word has ac- 
quired a certain odium because of the type of privileges with 
which it was customarily connected. Coke says^* "a monopoly 
is an institution or allowance by the king by his grant, com- 
mission, or otherwise, to any person . . . for the sole buying, 
selling, making, working, or using of anything whereby any 
person or persons . . . are sought to be restrained of any 
freedom or liberty that they had before., or hindered in their 
lawful trade." Blackstone^* defined it as a'grant "whereby the 
subject in general is restrained from that liberty of manufac- 
turing or trading which he had before." It is to this last 
phrase, this idea of deprivation of what the public already 
actually had, that the hatred of monopolies is due. The right 
of a patentee, however, is in no way a restraint upon the pub- 
lic in anything which they had before; it simply precludes pub- 
lic use, for a limited time, of that which has just been re- 
vealed to the public. The courts are thoroughly consistent in 
holding that a patent right is not a monopoly as defined by 
Coke or Blackstone. The general opinion is well expressed in 
Allen V. Hunter,^^ the court saying, "Patentees are not mo- 
nopolists. This objection is often made, and it has its effect 
on society. The imputation is unjust and impolitic. A mo- 
nopolist is one who, by the exercise of the sovereign power, 
takes from the public that which belongs to it, and gives to the 
grantee and his assigns an exclusive use. On this ground mo- 
nopolies are justly odious. It enables a favored individual to 
tax the community for his exclusive benefit, for the use of 
that to which every other person in the community, abstractly, 
has an equal right with himself. 

"Under the patent law this can never be done. No exclusive 

23 3d Institute Cap. 85. 

24 Commentaries Vol. 4-159. 

25 6 McLean 303, 305. 



Origin of Rights 9 

m 

right can be granted for any thing which the patentee has not 
invented or discovered. If he claim any thing which was be- 
tore known, his patent is void. So that the law repudiates a 
monopoly. The right of the patentee entirely rests on his in- 
vention or discovery of that which is useful, and which was 
not known before. And the law gives him the exclusive use 
of the thing invented or discovered, for a few years, as a com- 
pensation for *his ingenuity, labor and expense in producing 
it.' This, then, in no sense partakes of the character of mo- 
nopoly. 

"It then appears that patentees, so far from being mo- 
nopolists hanging as dead weights upon the community, are 
the benefactors of their country."^^ 

The patent is therefore treated either as a reward given to 
the inventor for his success in adding to the stock of public 
knowledge,^^ or as a contract between the inventor and the 
state, whereby the latter assures him the exclusive right to his 
invention for a term of years, in consideration of his revela- 
tion of it to the public, which thereby acquires the possibility, 
through knowledge, of using it after the time has expired.*^ 

The courts are not at all definite, however, in their choice of 

2« Bloomer v. Stolle, 5 McLean 158; Kedall v. Winsor, 21 How. 322, 
328. 

27 Letters patent are not to be regarded as monopolies, created by the 
executive authority at the expense and to the prejudice of all the com- 
mimity except the persons therein named as patentees, but as public fran- 
chises granted to the inventors of new and useful improvements for the 
purpose of securing to them, as such inventors, for the limited term therein 
mentioned, the exclusive right and liberty to make and use and vend to 
others to be used their own inventions, as tending to promote the pro- 
gress of science and the useful arts, and as matter of compensation to the 
inventors for their labor, toil, and expense in making the inventions, and 
reducing the same to practice for the public benefit . . ." 

28 DeFerranti v. Lyndmark, 3 D. C. App. 417. "While a patent is a 
contract between the government and the patentee . . ." ; Ransom v. Mayor 
of New York, i Fisher Pat. Cas. 252, 259, "when the patent is granted, it 
becomes, to a certain extent, a contract upon the part of the government 
with the party named in the patent, that they will, through their Courts, 
and in the ordinary course of the administration of justice, protect him 
in the exercise of the exclusive privilege which his patent gives to 
him. . . ." 



10 Patents and Inventions 

terminology between 'Veward" and "contract." Thus in 
Grant v. Raymond,^^ one reads, ''It (the patent) is the reward 
stipulated for the advantages derived by the public from the 
exertions of the individual, and is intended as a stimulus to 
those exertions." On the following page the court says, "The 
communication of the discovery to the public has been made 
in pursuance of law, with the intent to exercise a privilege 
which is the consideration paid by the public for the future 
use of the machine." Theoretically there should be a differ- 
ent interpretation and construction, if the intent of the statute 
is to confer a mere reward, than there would be if it conferred 
the patent right as the consideration in a contract. The one 
is a mere gift from the public, to be construed in the giver's 
favor, the other is an inducement for which a quid pro quo is 
received, and to be construed like all fair contracts. Practic- 
ally it is impossible to say in just what respect the courts do 
view it, but a full study of the cases shows clearly the broad 
proposition that the statute and the proceedings under it will 
not be construed strictly as against either party, but with so 
absolute impartiality as possible, so as to render the. most 
nearly equal measure of justice to both parties.^® This is quite 

20 6 Peters 217, 241. 

30 The patent *'is the reward stipulated for the advantages derived by 
the public for the exertions of the individual, and is intended as a stimu- 
lus to those exertions. The laws which are passed to give effect to this 
purpose ought, we think, 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 actually received ; if this can be 
done without transcending the intention of the statute, or countenancing 
acts which are fraudulent, or may prove mischievous. The public yields 
nothing which it has not agreed to yield ; it receives all which it has con- 
tracted to receive." Grant v. Raymond, 6 Peters 217. Ames v. Howard, 
I Sumner 482; Brooks v. Fiske, 15 How. 211, 223; Tannage Patent Co. 
V. Zahn; 66 Fed. 986, 988; Henry v. Dick Co., 224 U. S. i, 26; Bauer v. 
O'Donnell, 229 U. S. i, 10; O H. Jewell Filter Co. v. Jackson, 140 Fed. 
340, 343, "A patent is, after all, nothing but a contract by which the gov- 
ernment secures to the patentee the exclusive right to vend and use his 
invention for a few years, in consideration of the fact that he has per- 
fected and described it and has granted its use to the public tor ever 
after. The rules for the construction of contracts apply with equal force 
to the interpretation of patents." 



Origin of Rights ii 

in accord with the expressed idea that the patent is both a re- 
ward for the stimulation of invention and a contractual con- 
sideration for the revelation of the invention to the public. 
The subject of construction comes up in so many ways and 
is so confused with interpretation as between the patentee and 
an individual not representative of the public, that nothing 
more than this can be said as a general proposition. 



CHAPTER II 

What May Be Patented 

§ I. Source 

We come now to a discussion of the circumstances under 
which one is entitled to a patent. The statute reads*'^ "Any 
person who has invented or discovered any new and useful 
art . . . may . . . obtain a patent therefor." When, then, 
has .a person "invented or discovered" something. This may 
be considered, first, in connection with the source from which 
the invention or discovery is obtained, disregarding for the 
present the character of the result. 

It may be said. broadly that nothing is invented or discov- 
ered, within the meaning of the statute, which has not found 
its source in the mind of the alleged inventor. It must be the 
result of his mental operation upon external stimuli, and not 
a mere representation or recreation of those stimuli in their 
original forms. 

Importation. It is probable that there has always been a 
difference in the meaning of the words "inventor" and "im- 
porter," but the distinction was formerly one in name only. 
The two stood on the same plane of merit and were considered 
together so often and with so little indication of real differ- 
entiation that there is at least a little confusion in precisely 
allocating their respective meaning. By the Common Law 
and also by the exception in the Statute of Monopolies, the 
bringing into the realm of a new trade or device was consid- 
ered as meritorious as was the evolution from the mind of a 
new idea for a trade or device. This was, of course, perfectly 
logical in the days when travel and intercourse were difficult 
and rare, and knowledge percolated from one country to an- 
other but slowly. The knowledge of one nation was not then, 
as it has since come to be, equally the knowledge of any other 

81 ? 4886. 



Mecming of Invention 13 

which chooses to note it. One who importe4 ^^^^ England 
knowledge of a trade or a substance from abroad did so, usu- 
ally, at considerable expense and risk to himself. Consequent- 
ly we find royal patents granting monopolies of such importa- 
tions consistently respected and enforced by the courts. Fur- 
thermore it is evident from the cases that these importations 
were sometimes called "inventions" equally with the produc- 
tions of one's own mind, and were generally not very clearly 
distinguished therefrom.^^ 

The proper application of the name "inventor'* came into 
question so late as 1878 in an English case'^ and it was de- 
cided that it did not include a mere "importer." The court 
sustained the proposition that an importer might be treated 
legally as an inventor, but maintained that he was not nomi- 
nally an inventor.** 

82 Darcy v. Allin, No. 173, 74 Eng. Rep. 13 : The Clothworkers of 
Ipswich Case, Godbolt p. 252, No. 351, 78 Eng. Rep. 147, "But if a man 
hath brought in a new invention and a new trade within the kingdom, 
in peril of his life, and consumption of his estate or stock, etc, or if a 
mauxhath made a new discovery of anything, in such cases the King of his 
grace and favor, in recompense of his costs and travail, may grant by 
charter unto him, that he only shall use such a trade or traffique for a 
certain time, because at first the people of the kingdom are ignorant and 
have not the knowledge or skill to use it." 

i^i^Marsden v. Sayville Street, etc. Co., L» R. 3 Ex. Div. 203. 

8* "It is difficult to say a priori on what principle a person who did not • 
invent anything, but who merely imported from abroad into this realm 
the invention of another, was treated by the judges as being the first and 
true inventor. I have pever been able to discover the principle, and I 
could never get a satisfactory answer. The only answer was. It has been 
so decided, and you are bound by the decisions. . . The grounds on which 
it is put we do know . . . considering the difficulty which then attended 
communication from abroad, a man who brought in anything from abroad 
did it at the peril of his life and consumption of his estate and stock, 
and it was therefore such a meritorious service done to this kingdom, that 
the king might lawfully grant him a monopoly. That is the ground it is 
put upon. Now, there is some reason in that. It does not make him a 
true and first inventor, but it does show a true and meritorious consider- 
ation which warranted an exception from the general rule that monopolies 
could not be granted." "No doubt it was that use (in the early cases) 
which induced the judges, after the passing of the statute of James, to 
treat the man who brought the invention from beyond the seas as being 



14 Patents and Inventions 

In the United States the granting of patent monopolies by 
the colonies had been so infrequent that it may be said there 
was no established custom before the privilege of granting 
patents to inventors was conferred upon the federal govern- 
ment by the framers of the Constitution. By that date the 
facility of communication was such as to have removed com- 
pletely the reasons because of which patents for importations 
had been sustained by the Common Law.^* Nothing is said 
expressly in the Constitution, or in the patent acts passed there- 
under, regarding importation or importers as such, and the 
only possible right to a patent for an importation would have 
to depend, therefore, upon a favorable interpretation of the 
word ^'invention." The courts have been uniform in holding 
that "information" is not included in "invention."^® 

Discovery. The statute authorizes the issue of a patent to 
one who has "invented or discovered" certain things. In or- 
dinary usage the verb "discover" has a sense of bringing to 
light that which before existed but was unknown. In such 
sense Columbus "discovered" America and Newton "discov- 
ered" the law of gravity. It is defined as meaning to "un- 
cover" or "disclose." In the Century Dictionary it is said, 

in the same position as the first and true inventor, or as being in an 
equivalent position, and gradually the language seems to have been changed 
and he was treated as the true and first inventor." Marsden v. Sa3rville 
St. etc. Co., supra. The court then went on to hold that whether the 
"ordinary or the existing meaning" of the word inventor be used^ 
the particular plaintiff, as the facts lay, did not come within either. In a 
recent English work (The Laws of England, by the Earl of Halsbury 
and others, vol. 22, p. 130 ff) it is said "An inventor is a person who dis- 
covers or finds out something new, a framer, contriver, or deviser of 
what was before unknown. Invention is an act of the mind, and a 
person whose mind performs the act is the true inventor." But almost 
immediately the writer goes on to say "as the Statute of Monopolies was 
construed to intend to preserve all monopolies which would have been 
good at common law, the words "true and first inventor" have always 
been construed to include "true and first importer." 

35 There seems to have been some belief even at the time the Consti- 
tution was adopted that a monopoly for new importations would be de- 
sirable. See Story's Commentaries on the Constitution, vol. II, § 1153. 

3« McClain v. Ortmeyer, 141 U. S. 419, 427 ; and cases infra. 



Meaning of Invention 15 

''Discover, Invent, agree in signifying ti) find out; but we 
discover what already exists, though to us unknown ; we invent 
Vvhat did not before exist." The conjunction of the two 
words in the statute might seem to imply that one is comple- 
mentary of the other and that the framers intended to allow 
patenting of both inventions and discoveries, in the normal 
sense of the words, provided only that they were not known 
and used before. The courts have, however, consistently in- 
terpreted the statutes as being confined to those things which 
come within the meaning of "invention" only, and have treated 
discovery as though it were synonymous therewith instead 
of an addition to it. 

The word "invention" has never been defined with any de- 
gree of exactness in delimitation and both courts and writers 
agree th^t k can not be. "The truth is," says the Supreme 
Court, "the word can not be defined in such manner as to af- 
ford any substantial aid in determining whether a particular 
device involves an exercise of the inventive faculty or not."^'^ 
But the cases all agree that there can not be invention without 
creation. Mere revelation of something existing but unknown 
is not sufficient, there must be something produced by operation 
of the mind. 

A PRINCIPLE OR LAW OF NATURE, (that is, the fact that 
from certain causes certain different results will "naturally" 
and invariably follow) exists, at least according to many ac- 
cepted philosophers, whether humanity is aware of it or not.^® 
The discovery that a certain result will follow from certain 
relations of matter is not in any way creation of the result, it 
is a mere revelation of the causal relation. It is trulv dis- 
covery. In its usual sense, and not invention. It is therefore 
not patentable. Possibly the statutes are defective economic- 
ally, and unjust also, in not providing rewards for such reve- 

• 

lation of ' important knowledge, but, as interpreted by the 

37 McClain v. Ortmeyer, 141 U. S. 419, 426. 

^^ As to whether principles of nature have been given to us by God 
or by the human beings who first revealed them to us, is entertainingly 
argued by Gerard and the Doctor in Reade's, "The Cloister and the 
Hearth." 



l6 Patents and Inventions 

courts, they do not authorize any reward. The most con- 
spicuous case of unpatentable discovery of a law of nature 
is that of Morton v. New York Eye Infirmary.*® The patentee 
in this case had discovered that the introduction of sulphuric 
ether to the lungs, that is to say, its inhalation, "would pro- 
duce insensibility to pain, or such a state of quiet nervous ac- 
tion as to render a person or animals incapable, to a great ex- 
tent, if not entirely, of experiencing pain while under .the ac- 
tion of the knife. . . ." This beneficent effect, the court con- 
ceded, had never been known before. It was, however, the 
only new thing about the alleged invention, the ether itself and 
the apparatus for applying it being both well known. It was, 
in short, only the discovery of a result naturally arising from 
a certain relation of matter. As the court put it, the patent 
presented nothing new except the effect produced by well 
known agents, administered in well known ways on well known 
subjects. 

The court recognized the ineffable benefit to humanity 
of this discovery but nevertheless held the patent which 
had been issued to be invalid, saying "At common law an in- 
ventor has no exclusive right to his invention or discovery. 
That exclusive right is the creature of the statute, and to that 
we must look to see if the right claimed in a given case is 
within its terms. The act of Congress provides, 'that any 
person or persons having discovered or invented any new and 
useful art, machine, manufacture, or composition of matter, 
or any new and useful improvement on any art, machine, 
manufacture, or composition of matter not known or used by 
others before his or their discovery or invention thereof, and 
not, at the time of his application for a patent, in public use, 
or on sale with his consent or allowance as the inventor or dis- 
coverer,' shall be entitled to receive a patent therefor. The 
true field of inquiry, in the present case, is to ascertain whether 
or not the alleged invention, set forth in this specification, is 
embraced within the scope of the act. Very little light can 
be shed on our path by attempting to draw a practical distinc- 
tion between the legal purport of the words 'discovery' and 

*®5 Blatch. Ii6, 2 Fisher 320. 



Meaning of Invention 17 

'invention.' In its naked ordinary sense, a discovery is not 
patentable. A discovery of a new principle, force, or law 
operating, .or which can be made to operate, on matter, will 
not entitle the discoverer to a patent. It is only where the 
explorer has gone beyond the mere domain of discovery, and 
has laid hold of the new principle, force, or law, and connected 
it with some particular medium or mechanical contrivance of 
which, or through which, it acts on the material world, that 
he can secure the exclusive control of it under the patent laws. 
He then controls his discovery through the means by which 
he has brought it into practical action, or their equivalent, and 
only through them. It is then an invention, although it em- 
braces a discovery. Sever the force or principle discovered 
from the means or mechanism through which he has brought 
it into the domain of invention, and it immediately falls out 
of that domain arid eludes his grasp. It is then a naked dis- 
covery, and not an invention. 

"A discovery may be brilliant and useful, and not patent- 
able. No matter through what long, solitary vigils, or by 
what importunate efforts, the secret may have been wrung 
from the bosom of Nature, or to what useful purpose it may 
be applied. Something more is necessary.*'*® 

The result of the case seems hard, but the exposition of the 
court demonstrates that the patentee created nothing. He 
could not therefore acquire a reward, because the patent laws 
have never been construed as rewarding diligence in merely 
finding out the various possessions with which the Creator of 
all things has already blessed the world. 

Another case which is frequently cited as supporting the 
rule that a principle of nature can not be patented, even though 
newly discovered, is that of O'Reilly v. Morse.*^ The patentee, 
Morse, had discovered that electricity, acting through the elec- 
tro-magnet, could be used for the transmission of intelligible 
signals, and he had devised a particular means for utilizing 
this discovery. The first seven claims of his patent dealt with 

*®The credit for the discovery is attributed to Morton, beyond doubt, 
in Park's History of Med. 2d ed. p. 312. 
*i 15 How. 61. 



1 8 Patents and Inventions 

this particular idea of means and were sustained by the Su- 
preme Court. The eighth claim was broader, and amounted 
in reality to a claim of the natural principle or force of 
electro-magnetism for transmitting intelligible signals. It 
read "I do not propose to limit myself to the specific ma- 
chinery or parts of machinery described in the foregoing 
specification and claims; the essence of my invention being 
the use of the motive power of the electric or galvanic cur- 
rent, which I call electro-magnetism, however developed, for 
marking or printing intelligible characters, signs, or letters, at 
any distances, being a new application of that power of which 
I claim to be the first inventor or discoverer." This claim the 
court rejected as invalid saying of it, "It is impossible to mis- 
understand the extent of this claim. He claims the exclusive 
right to every improvement where the motive power is the 
electric or galvanic current, and the result is the marking ot 
printing intelligible characters, sigr^s, or letters at a distance. 
If this claim can be maintained, it matters not by what process 
or machinery the result is accomplished. For aught that we 
now know- some future inventor, in the onward march of 
science, may discover a mode of writing or printing at a dis- 
tance by means of the electric or galvanic current, without us- 
ing any part of the process or combination set forth in the 
plaintiff's specification. His invention may be less compli- 
cated — less liable to get out of order — less expensive in con- 
struction, and in its operation. But yet if it is covered by 
this patent the inventor could not use it, nor the public have 
the benefit of it without the permission of this patentee. No 
one we suppose will maintain that Fulton could have taken 
out a patent for his invention of propelling vessels by steam, 
describing the process and machinery he used, and claimed 
under it the exclusive right to use the motive power of steam, 
however developed, for the purpose of propelling vessels. It 
can hardly be supposed that under such a patent he could have 
prevented the use of the improved machinery which science 
has since introduced ; although the motive power is steam, and 
the result is the propulsion of vessels. Neither could the man 
who first discovered that steam might, by a proper arrange- 



Meaning of Invention 19 

ment of machinery, be used as a motive power to grind corn 
or spin cotton, claim the right to the exclusive use of steam as 
a motive power for the purpose of producing such effects."*^ 

• 

*2 In a sense this statement was dictum since it affected only the costs 
of the suit and not its merits. Leroy v. Tatham, 14 How. 156; Id. 22 
«How. 132, 136; Foote V. Silsby, 2 Blatch. 260. An opposite view is set out 
by Mr. Justice Nelson in his dissenting opinion in Leroy v. Tatham, 14 
flow. 156, 186. "I shall not pursue a reference to the authorities on this 
.•subject any further. The settled doctrine to be deduced from them, I think, 
is, that a person having discovered the application for the first time of a 
well-known law of nature, or well-known property of matter; by means 
of which a new result in the arts or in manufactures is produced, and 
has pointed out a mode by which it is produced, is entitled to a patent; 
and, if he has not tied himself down in the specification to the particular 
mode described, he is entitled to be protected against all modes by which 
the same result is produced, by an application of the same law of nature or 
property of matter. And a fortiori, if he has discovered the law of nature 
or property of matter, and applied it, is he entitled to the patent, and afore- 
said protection. And why should not this be the law. The original con- 
ception — the novel idea in the one case, is the new application of the 
principle or property of matter, and the new product in the arts or manu- 
factures — in the oth^r,.in the discovery of the principle or property, and 
application, with like result. The mode or means are but incidental and 
flowing naturally from the original conception ; and hence of incoTisidei abi e 
merit. But, it is said, this is patenting a principle, or element of nature. 
The authorities to which I have referred, answer the objection. It was ans- 
wered by Chief Justice Eyre, in the case of Watts's patent, in 1795, fifty- 
seven years ago ; and more recently in still more explicit and authoritative 
terms. And what if the principle is incorporated in the invention, and 
the inventor protected in the enjoyment for the fourteen years. He is 
protected only in the enjoyment of the application for the special purpose 
and object to which it has been newly applied by his genius and skill. For 
every other purpose and end, the principle is free for all mankind to use. 
And, where it has been discovered, as well as applied to this one purpose, 
and open to the world as to every other, the ground of complaint is cer- 
tainly not very obvious. Undoubtedly, within the range of the purpose 
and object for which the principle has been for the first time applied, 
piracies are interfered with during the fourteen years. But anybody may 
take it up and give to it any other application to the enlargement of the 
arts and of manufactures, without restriction. He is only debarred from 
the use of the new application for the limited time, which the genius of 
others has already invented and put into successful practice. The protec- 
tion does not go beyond the thing which, for the first time, has been 
discovered and brought into practical use; and is no broader than that 



20 Patents and Inventions 

Patents for the means of utilizing a natural prin- 
ciple have been consistently sustained; indeed it would be 
difficult to conceive of any mechanical contrivance whose ef- 
fectuation of a given result, static or dynamic, did not make 
use of some "natural principle." The conception of a means 
of utilizing such a principle does, however, involve creation; 
the means is something which did not before exist, in the 
ordinary comprehension of existence, and such a concept is 
therefore within the intended protection of the patent laws.** 

The courts have experienced considerable difficulty, how- 
ever, in distinguishing with certainty between the use of a 
principle, which is not patentable, and the means of utilizing 
it, which is. patentable. The discovery of a new principle is 
held to entitle the discoverer to a wide range of protection in 
the means he devises to utilize it. He is secured not merely in 
the precise form of means he set3 out in his patent but in all 
forms which are essentially similar. The principle itself thus 
becomes a part, at least, of the device, inasmuch as it is the real 
distinguishing feature of two otherwise similar devices. The 
result is that in a certain sense the principle is actually pat- 
ented, as part of the entire device. The difficulty of differ- 
entiating between the patenting of a principle, by itself, and 
the patenting of a device which is distinguished from other 
devices only by the principle utilized in it, has created much 
confusion. That the principle may be an essential part of a 
patented device is sustained by many cases which, if the dis- 
tinction between a principle by itself, and as part of a device, 

extended to every other discoverer or inventor of a new art or manu- 
facture. I own, I am incapable of comprehending the detriment to the 
improvements in the country that may flow from this sort of protection 
to inventors. To hold, in the case of inventions of this character, that 
the novelty must consist of the mode or means of the new application 
producing the new result, would be holding against the facts of the case, 
as no one can but see, that the original conception reaches far beyond 
these. It would be mistaking the skill of the mechanic for the genius 
of the inventor." 

*3 O'Reilly v. Morse, 15 How. 61 ; Neilson v. Harford, i Webs. Pat. 
Cases, 295. Tilghman v. Proctor, 102 U. S. 707, Leroy v. Tatham, 14 How. 
551 ; Parker v. Hulme, i Fish. Pat. Cases 44, Fed. Cas. No. 10740. 



Meaning of Invention 21 

be not clearly .understood, seem to conflict with the rule that 
a' principle can not be patented. The author suggests, though 
far from stating it as the accepted rule, that the fundamental 
difference between an unpatentable law of nature and one 
which is patentable as part of a concrete contrivance, be it 
"machine" or "process," is in the self-operative character of 
the law involved. If it is a principle which will produce the 
result automatically when merely given substance to operate 
on it is unpatentable. It is utilized to be sure, but not through 
the assistance of any means of utilization. But a principle 
which produces the desired result only through physical mani- 
pulation of substances, and as a concomitant of that manipula- 
tion, not as a sequent to it, is patentable as part of the idea of 
means whereby the result is produced. Certainly the cases de- 
cided recently give credence to the proposition, that while a 
principle of nature may not be patented as a means and an end 
in itself, it may be patented as an integral part of an idea of 
means the substantive part of which, even as an entirety, is 
old.** That is to say, the principle alone could not be patented ; 
neither could the substantive contrivance by itself be patented, 
for it is already well known; but the new combination, of un- 
patentable principle and old mechanical device, can itself be 
patented. 

An excellent illustration of this is seen in the case 
of Leroy v. Tatham.*^ Here the patentee had discovered 

**This is in exact accord also with the theory on which patents are 
economically justified, if the proposition of Mr. Taussig in "Money-Makers 
and Inventors" is correct. This proposition is that people will invent and 
make research to the full extent of their abilities of the creative in-: 
stinct, and without the stimulation of a legal reward, but that the monopoly 
of a patent is necessary to induce capital to make inventions commercially 
practical. If this be so, no reward is necessary to stimulate research and 
discovery of the principles of nature, and, not being necessary, would not 
be justifiable. But a reward is necessary to invessigate the development of 
practical means of utilizing the discovered principle, and such a reward is 
offered by the patent statutes. On this theory, therefore, the fact that 
discovery of an important principle of nature is not patentable, but con- 
ception of a means by which that principle may be put to practical use is 
patentable, even though the material part of that means be already well 
known, is not a defect in the patent law, but a virtue. 

*5 14 How. 156. For the facts see Tatham v. Leroy, 2 Blatch. 474. 



22 Patents and Inventions 

the principle that lead in a solid condition would re- 
unite after separation, if heated under great pressure. He 
devised a method of utilizing this principle in the making of 
lead pipes, and claimed, as his invention, this particular device 
when used for such a purpose. Similar machines, on a lighter 
scale, had been used before this for other purposes such as the 
making of clay pipes and macaroni. The court in this case 
confined him to the device as set forth, without considering 
its connection with a new principle, and held that evidence of 
other similar devices for other purposes, utilizing other prin- 
ciples, might be admitted to prove that the patentee's device 
was not new. But this same case came before the Supreme 
Court again, in equity,*^ and a conflicting decision was reached. 
The court in the second case held that the device patented was 
not deprived of novelty by the existence of other machines 
similar to it, but smaller and intended for other purposes. The 
novelty of the patentee's device lay, it would appear, in the 
fact that it was used in combination with the new principle.*^ 
The patentee's concept was the new combination of the old 
machine with the novel principle ; clearly a new concept. 
- It can not therefore be correct to say broadly either that a 
principle of nature can not be patented or that it can be pat- 
ented. Either statement results in confusion. It must be 
understood, before any statement is definite, in just what 
sense the terrrls are used. 

"Function," "Result," "Principle of operation," etc. 
What has just been said in regard to a principle of nature ap- 

*«22 How. 132. 

*7 In Foote v. Silsby, 2 Blatch. 260, the court held, broadly that a patent 
might be granted for any means, old or new, of utilizing a newly dis- 
covered principle. Poillon v. Schmidt, 6 Blatch. 209 ; Tilghman v. Proctor, 
102 U.S. 707. See also The Telephone Cases, 126-U.S. i. The patent sus- 
tained in Minerals Separation Co. v. Hyde, 242 U. S. 261, seemed to be 
practically a patent for a principle, the means by which it might be utilized 
are so general. At any rate, the court of Appeals declared the patent in- 
valid because the appreciable means used was so nearly identical with 
means long known. The Supreme Court reversed this, and held the patent 
valid because the difference from the known means, slight as it was, 
brought an entirely different principle into play. 



Meaning of Invention 23 

• 

plies equally to the patentability of such abstractions as the 
function of a machine, or its principle of operation, etc. These 
are qualities or characteristics of a device, and have no con- 
ceivable existence except as appertaining to something else; 
In no sense can they be created in and of themselves ; if they 
are created, it is because something else of which they are an 
inherent quality or characteristic has been created. Not being 
themselves created they can not themselves be patented. 

But the function which a device performs, the principle on 
which it operates, or the result which it accomplishes may be 
the particular characteristic which distinguishes it from other 
devices. This function, etc., is an intrinsic part of the con- 
cept which is the invention. Indeed, the result accomplished, 
the purpose, the principle of operation, or the like, may, like 
the principle of nature utilized, be the only characteristic which 
distinguishes the device, that is, the concept, from the concept 
of other devices. Just as the natural principle used in Tat- 
ham's machine for making lead pipe was the only thing which 
distinguished his invention from the old machines for making 
macaroni, so the result which a device accomplishes may serve 
as its only distinction from known devices. If this difference 
is sufficient to convince the courts that the later concept, as 
characterized by its function, etc., was the result of inventive 
genius, it^ may be patented. Thus it may happen that a device 
is • recognizedly patentable whose only distinguishing feature 
is its principle of operation, its function, or the like. One 
tends, therefore, to think of the function or principle of oper- 
ation as having itself been patented, and is apt to say loosely 
that it has been. This leads to a deal of confusion in the ex- 
pressions of the cases. For instance, Mr. Justice Brown ap- 
pears guilty of contradicting himself by saying, in one and the 
same opinion,*® first that a function can not be patented, and 
then, that a "pioneer patent,'' — which gives the patentee an 
especial breadth of protection — "is commonly understood to 
denote a patent covering a function never before performed.'* 
But owing to the fact that these abstract qualities have them- 

*^ Westinghouse v. Boyden Power Brake Co., 170 U. S. 537. 



24 Patents and Inventions 

ft 

selves no separate existence, it is only the devices character- 
ized by them that are patented, and the cases demonstrate in- 
dubitably that devices differentiated from others by these char- 
acteristics only may be validly patented, if it required inventive 
genius to conceive that difference. 

§ 2. Character 

Thus far we have considered the nature of patentable in- 
ventions in respect to their source. We now take up their 
necessary character. 

An invention is a concept. Of first. importance is the 
proposition that an invention is not tangible. It is a concept ; 
a thing evolved by the mind. It is not a tangible thing pro- 
duced by manual effort. The statute does refer, to be sure, 
to one who has invented any new "art, machine, manufacture, 
or composition of matter." These things are tangible. But it 
does not say, one who has **made" a machine, etc. ; it says "in- 
vented" such things. And the act of invention is undeniedly 
and undeniably a mental and not a manual act. The phrase 
"art, machine, manufacture, or composition of matter" merely 
refers to and. limits the subject matter of the concept. 

Machine, Manufacture, Composition of matter. Since pat- 
entable inventions are limited to concepts of a new art, ma- 
chine, manufacture or composition of matter, it is essential to 
know just what those terms include. There is a most remafk- 
able confusion of definition and judicial explanation of the 
meaning of each term. A frequent subject of dispute is 
whether or not the privilege of patenting a "machine" includes 
that of patenting a "tool." In other words is a "tool" a "ma- 
chine?" Variant definitions are to be found in the cases;** 
text writers are equally indecisive of the meaning of machine. 
Mr. Hopkins accepts^® the definition that "the term 'machine' 
includes every mechanical device or combination of mechani- 
cal powers to produce some function and to produce a certain 

*» Corning v. Burden, 15 How. 252; Burr v. Duryee, i Wall. 531; 
Coupe V. Weatherhead, 16 Fed. 673. 
50 Hopkins on Patents, I. p. 53 ff. 



Characteristics of Invention 25 

effect or result." Macomber" says, vaguely, "A machine con- 
sists in imposing upon mechanical elements the mind of the 
inventor, working in harmony with the laws of mechanics to 
effect a result." Robinson^^ insists that a distinction between 
machines and other instruments is necessary for harmony in 
the law and for its proper application. Nevertheless he rec- 
ognizes that whether or not a device is a machine or a tool has 
nothing whatever to do with its inherent patentability. The 
name by which the inventor himself calls the device is imma- 
terial to the validity of the patent; and if the device be not, 
in fact, a **machine," it is equally as patentable as a **manu- 
facture." 

So far as there is any harmony of usage of the terms, the 
distinction appears to turn, generally speaking, upon whether 
the desired result is accomplished by a dynamic means or a 
static one. An inventively shaped collar button, for instance, 
holding a collar in place by its mere presence, or accomplish- 
ing the result of its own position with novel ease because of 
its mere shape, would probably be a "manufacture." A thing 
of wheels and levers accomplishing the result of producing an 
old form of collar button from flat, unformed material would 
undoubtedly be a machine. A typewriter would probably be 
a machine ; but would a pair of pincers, which accomplishes a 
result by transmitting dynamic energy, be a machine ; or would 
a hammer, or cold chisel? The question has never been set- 
tled and it is fortunate that it does not need to be. 

The term "composition of matter" is generally applied to 
those embodiments of the invention whose peculiarity does 
not depend upon external, visible shape, but upon internal re- 
lations. 

As Mr. Robinson liimself says, the name "manufacture" in- 
eludes "every article devised by man except machinery upon 
the one side, and compositions of matter and designs upon the 
other." The name by which the inventor characterizes his 
concept is immaterial. The terms machine, manufacture, com- 
position of matter and design cover everything tangible which 

^^ Fixed Law of Patents, p. 61. 
"Rob. on Patents, Vol. i, Ch. 11. 



26 Patents and Inventions 

« 

man could conceivably contrive. It seems clear therefore that 
a concept of anything to be given tangible form by man is, so 
far as its subject-matter is concerned, patentable. It is quite 
unnecessary to decide into what class of tangible things it falls. 
So far as the writer is aware, in no case has this ever been a 
material issue.^^ 

Art. The Century Dictionary defines an art as, *'the com- 
bination or modification- of things to adapt them to a given 
end; the employment of a given means to effect a purpose; 
... a system of rules and traditional methods for facilitating 
the -performance of certain actions." Despite the provision 
that an invention whose subject matter is an "art" may be 
patented, the early cases had some doubt as to whether an 
idea of accomplishing a given result by a novel series of steps, 
or sequence of operations, could be patented. Such a sequence 
of actions is usually called, in the patent law, a ^'process." 

Of the cases which declare a process not to be patentable, 
that of Risdon Iron & Locomotive Works v. Medart^^ is typi- 
cal. The invention was a method of manufacturing belt pulleys. 
It appeared that pulleys as theretofore made had been more or 
less out of balance, owing to the fact that the distance from 
the axis of revolution to the inside of the rim was not uniform 
along all radii. In consequence, when the outside of the rim 
was ground to a perfect surface everywhere equidistant from 

53 A unique statement is found in Jacobs v. Baker, 7 Wall. 295 which 
appears to be in conflict with the proposition that everything tangible is 
included in the terms machine, manufacture or composition of matter. 
The device patented was a jail having "a secret passage, or guard cham- 
ber," around the outside of an iron-plate enclosure. The purpose was 
to allow the keeper to hear the prisoners and oversee them without their 
being conscious of his presence. The court held the patent to be invalid, 
and in the course of its opinion said, "Now a jail can hardly come under 
the denomination of a 'machine'; nor, though made bv hands, can it well 
be classed with 'manufactures'; nor, although compounded of matter, 
can it be termed a 'composition of matter', in the meaning of the patent 
act." This statement is, however, the merest dictum and the court, "waiv- 
ing all these difficulties as hypercritical," found that there was no novelty 
whatever in the jail described but that it had been in use long before the 
alleged invention. 

56 158 U. S. 68, 



Characteristics of Invention 2y 

the axis, the thickness of the rim necessarily varied at differ- 
ent radial points. The patentee proposed to obviate this in- 
equahty by grinding the ends of the radial arms to an equality 
from the center before the rim itself was attached. 

In a very confusing opinion the court says, "That the 
patent is for a process in manufacture, and not for the mechan- 
ism employed, nor for the finished product of some manu- 
facture, is undeniable, and is so expressed upon the face of the 
specification. That certain processes of manufacture are pat- 
entable is as clear as that certain others are not, but nowhere 
is the distinction between them accurately defined. There is 
somewhat of the same obscurity in the line of demarcation as 
in that between mechanical skill and invention, or in that be- 
tween a new article of manufacture, which is universally held 
to be patentable, and the function of a machine, which it is 
equally clear is- not. It may be said in general that processes 
of manufacture which involve chemical or other similar ele- 
mental action are patentable, though mechanism may be nec- 
essary in the application or carrying out of such process, while 
those which consist solely in the operation of a machine are 
not. Most processes which have been held to be patentable 
require the aid of mechanism in their practical application, 
but where such mechanism is subsidiary to the chemical action, 
the fact that the patentee may be entitled to a patent upon his 
mechanism does not impair his right to a patent for the pro- 
cess; since he would lose the benefit of his real discovery, 
which might be applied in a dozen diflferent ways, if he were 
not entitled to such patent. But, if the operation of his de- 
vice be purely mechanical, no such considerations apply, since 
the function of the machine is entirely independent of any 
chemical or other similar action.'' The court therefore came 
to the stated conclusion that ''all that he invented in fact was 
a machine for the more perfect manufacture of such pulleys, 
and the operation or function of such machine, however, is 
not patentable as a process." The relation of this Statement 
to the first statement, that the patent was not for a machine, 
is decidedly obscure. The real reason for the decision is ob- 



28 Patents and Inventions 

vious enough, however, after the confusion of other state- 
ment is stripped off, in the express finding that "in short, this 
is a patent only for superior workmanship, and within all the 
authorities is invalid/'^^ 

Of the cases holding that a "process'' is patentable, the 
strongest is that of Cochran v. Deener.^® The purpose of the 
inventor was "to increase the production of the best quality of 
flour," and the invention "consisted in separating from the 
meal first the superfine flour, and then the pulverulent impuri- 
ties mingled with the flour producing portions of the mid- 
dlings-meal, which when reground and rebolted, would yield 
pure white flour'' thus increasing the total amount of such 
white flour. The method described consisted "in passing the 
ground meal through a series of bolting-reels clothed with 
cloth of progressively finer meshes, which pass the superfine 
flour and retard the escape of the finer and lighter impurities ; 
and, at the same time, subjecting the meal to blasts or currents 
of air introduced by hollow perforated shafts furnished with 
pipes so disposed that the force of the blast may act close to 
the surface of the bolting-cloth; the bolting-chest having an 
opening at the top for the escape of the air, and of the finer 
and lighter particles therewith, through a chamber where the 
particles are arrested, whilst the floor and sides of each com- 
partment of the chest are made close, so as to prevent the 
escape of the air in any other direction than through the said 
opening. By this means, the superfine flour is separated, and 
the fine and light specks and impurities, which ordinarily ad- 
here to the middlings and degrade the flour produced there- 
from, are got rid of ; and when the middlings are now sepa- 
rated from the other portions of the meal, they are white and 
clean, and capable of being reground and rebolted, so as to 
produce superfine flour equal in quality and even superior to 
the first instalment. This is the process described; but the 
patentee claims that it is not limited to any special arrange- 

^^ For other cases in which it has been held that the alleged invention 
revealed only superiority of workmanship and was therefore not inven- 
tion, see infra. 

68 94 U. S. 780- 



Characteristics of Invention 29 

ment of machinery. He admits the prior use of currents of 
air in the interior of the reels, introduced by means of hollow, 
perforated shafts, for the purpose of keeping back the speck, 
and increasing the quantity of superfine flour ; but not for puri- 
fying the middlings preparatory to regrinding. His improve- 
ment, therefore, does not consist in using drafts and currents 
of air, but in the process as a whole, comprising the applica- 
tion of the blast, and the carrying oflf of the fine impurities, 
whereby the middlings are purified preparatory to regrinding 
after being separated from the other parts." The defendants 
used a formally different mechanical device, but the same pro- 
cess of manufacture. 

It was admitted that the ne\v method had produced a revo- 
lution in the manufacture of flour. The fact that the mechani- 
cal devices actually used were old did not affect the validity of 
the patent, the court held, because they were not themselves 
the invention. This, the court said, was a process, and "That 
a process may be patentable, irrespective of the particular 
form of the instrumentalities used, cannot be disputed. If 
one of the steps of a process be that a certain substance is to 
be reduced to a powder, it may not be at all material what 
instrument or machinery is used to effect that object, whether 
a hammer, a pestle and mortar, or a mill. Either. may be 
pointed out ; but if the patent is not confined to that particular 
tool or machine, the use of the others would be an infringe- 
ment, the general process being the same. A process is a mode 
of treatment of certain materials to produce a given result. 
It is an act, or a series of acts, performed upon the subject- 
matter to be transformed and reduced to a different state or 
thing. If new and useful, it is just as patentable as is a piece 
of machinery. In the language of the patent law, it is an art. 
The machinery pointed out as suitable to perform the process 
may or may not be new or patentable; whilst the process it- 
self may be altogether new, and produce an entirely new result. 
The process requires that certain things should be done with 
certain substances, and in a certain order ; but the tools to be 
used in doing this may be of secondary consequence." 



30 Patents and Inventions 

A more recent statement is found in Expanded Metal Co. v. 
Bradford.^® The suit involved defendant's right to use a cer- 
tain machine for making "expanded'' sheet metal. Before 
complainant's patent, such metal had been made either by 
cutting properly placed slits in the plates and then opening 
the metal by bending the severed portions, as two operations, 
or by cutting and opening, in a different way, simultaneously. 
Both these methods had the objection of distorting the ex- 
ternal dimensions of the plate from which it was made. Gold- 
ing conceived the idea of simultaneously cutting and opening 
the metal by both bending and stretching the severed portions 
and of following this up with a like operation in which the 
location of the cuts was changed in a longitudinal as well as 
a transverse direction. This method resulted in substantial 
advantages. It was the coordination of these two operations 
to produce the result, which in the opinion of the court con- 
stituted the invention. 

The mechanism by which the work was perfected could 
have been produced on demand by any competent mechanic. 
Furthermore, no mechanism for doing it was described in the 
specification, though enough was suggested to indicate to a 
skilled mechanic what to construct for the purpose. It thus 
appears that the invention could have been nothing more than 
the method of procedure for accomplishing the result. The 
real invention was a concept of procedure, although to be 
carried out by substantial machinery. The court held the 
patent valid. In discussing the meaning of this ^'process," it 
quoted w^ith approval^® "A machine is a thing. A process is an 
act or a mode of acting. The one is visible to the eye — an 
object of perpetual observation. The other is a conception of 
the mind, seen only by its effects when being executed or per- 
formed. Either may be the means of producing a useful re- 
sult." ''We therefore," said the court, ''reach the conclusion 
that an invention or discovery of a process or method involv- 
ing mechanical operations, and producing a new and useful 

59 214 U. S. 366. 

^^ Tilghman v. Proctor, 102 U. S. 707. 






Characteristics of Invention ^i 

result, may be within the protection of the Federal Statute, 
and entitle the inventor to a patent for his discovery."®^ 

It now seems settled that the concept of a series of steps, 
or a method of operation, to produce a stated result is patent- 
able, so far as its subject matter is concerned. It will be noted, 
however, that in all the cases cited on this point, the art, or 
process, has been carried out through the manipulation of 
substance and the use of tangible instrumentalities. 

Mental process. It is a pertinent inquiry, therefore, whether 
a method of accomplishing a given result which does not re- 
quire the use of tangible instrumentalities; in other words, 
whether a purely mental process, not involving the manipula- 
tion of substance, can be protected by patent as an "art.'' If, 
for instance, a mathematician should evolve, as the result 
of real inventive genius, a new method of determining 
the cube root of numbers; or if a stage "magician'' should 
hit upon a novel method of conveying secret informa- 
tion by means of apparently commonplace speech, would 
not these methods of accomplishing the ends desired come 
within the statutory meaning of an "art"? There is no 
direct authority upon the question, but the writer fully be- 
lieves that such a process of accomplishing a result is an "art," 
and as such is patentable. The reason is negative; that is, 
there is no sound reason why it should not be patentable as an 
art. 

All the authority opposed to the proposition appears to be 

^1 Lawther v. Hamilton, 124 U. S. i. The court upheld the patent in 
this case although all the instrumentalities were well known, because "the 
mode of using and applying these old instrumentalities" was new. "And 
what is that but a new process? This process consists of a series of acts 
done to the flax-seed. It is a mode of treatment." Cf. Gage v. Herring, 
107 U. S. 640; Cf. Crescent Brewing Co. v. Gottfried 128 U. S. 158; 
Fuller V. Yentzer, 94 U. S. 288. "That the means, and the only means, 
of applying the process, are strictly mechanical, is a matter of no mo- 
ment, so far as patentability is concerned. If the process when distin- 
guished from the means of performing it, is new, useful, and intellectu- 
ally rises to the dignity of "invention, it is patentable — if it falls within 
the meaning of the word 'art* as used in the statute." Buffalo Forge Co. 
V. City of Buffalo, 255 Fed. 83. 



32 Patents and Inventions 

in the form of dicta only. The case of Hotel Security Check- 
ing, Co. vs. Lorraine Co.°* is typical of all those most 
nearly in point. The claim of the patent was for a ''means 
for securing hotel or restaurant proprietors or others from 
losses by the peculations of waiters, cashiers or other em- 
ployees, which consists of a sheet provided with separate 
spaces, having suitable headings, substantially as described, 
said heading being designatory of the several waiters to whom 
the several spaces on the sheet are individually appropriated, 
in conjunction with separate slips, each so marked as to indi- 
cate the waiter using it, whereby the selling price of all the 
articles sold may be entered in duplicate, once upon the slip 
of the waiter making the sale, and once upon his allotted space 
upon the main sheet, substantially as and for the purpose speci- 
fied.'' It will be observed that the claim really made was not 
in the least for a mental process,, nor even for a series of hu- 
man actions, or other form of art, but for a wholly tangible 
sheet of paper, to be used in conjunction with other sheets of 
paper, all appropriately marked and designed. Of this tangible 
means the court said briefly, "It can not be maintained that 
the physical means described by Hicks, — the sheet and the 
slip — apart from their manner of use, present any new and 
useful feature.'' The court then proceeded to discuss the case 
on the seemingly unwarranted assumption that the patentee 
had claimed an intangible thing. It said, "It is manifest that 
the subject matter of the claim is not a machine, manufacture 
or composition of matter. If within the language of the 
statute at all, it must be as a 'new and useful art.' " It then 
went on to say, "In the sense of the patent law, an art is not 
a mere abstraction. A system of transacting business discon- 
nected from the means for carrying out the system is not, 
within the most liberal interpretation of the term, an art. Ad- 
vice is not patentable." This expression, and more of like 
tenor, is pointedly to the effect that an intangible means of 
effectuating a result is not patentable. The actual decision of 
the case did not require any such statement and is, in fact, 

5* i6o Fed. 467. 



Characteristics of Invention 33 

placed on the ground that the fundamental principle of the 
system is "as old as the art of book-keeping*' and the patentee 
had ^'modified and adapted it to fit the ephemeral character of 
the business in hand, but it required no exercise of the inven- 
tive faculties to do this/' The case thus clearly turns on the 
lack of novelty of the alleged invention and the statements in 
regard to the character of patentable invention are merely 
dicta.'"' 

Lest this discussion may have somewhat overshadowed the 
original proposition, it may well be said again, that although 
an invention is an idea, not a tangible thing, not every idea 
is patentable as an invention. It must be an idea of the classes 
named in the statute, namely the idea of a new art, machine, 
manufacture or composition of matter. 

55 In a case more nearly in point (Fowler v. City of N. Y. 121 Fed. 747) 
the patent was described by the court as "a new plan for handling the 
large number of passengers who patronize the public vehicles provided 
for rapid transit in large cities." It consisted in an arrangement of tracks 
and stations such that passengers could be picked up at local stations, and 
transferred to express trains at express stops, without' necessitating an 
interfering use of the same tracks by both express and local trains. It 
was in substance the now well known system of "island stations," or plat- 
forms, located between the local and express tracks so that passengers 
can be received at one side and transshipped from the other. It was 
argued that this system constituted a "machine." The court appears to 
have doubted the proposition but to have conceded it for the sake of 
argument, and on such concession, held the device unpatentable because 
any competent engineer could have devised the same plan whenever it 
should become practically usable. The only justification for interpreting 
the case as authority for holding an intangible means of accomplishing 
a result unpatentable is the fact that the court did concede, for the sake 
of argument, that the contrivance in question was tangible. Another case 
in which the real and expressed ground for the holding belies the loose 
statements of patentability is Risdon Loco. Wks. v. Medart, 158 U. S. 68. 
A class of cases apt to be confused with the character of patentable in- 
vention is that in which the means employed to the end is the result of 
selection and good judgment. The courts have held this excellence of 
judgment not to constitute invention. This is equivalent only to holding 
that this type of means is unpatentable for lack of invention and is quite 
different from holding that no intangible means can be patented. Refer- 
ences to particular cases are noted infra. See a further discussion in 
15 Michigan Law Rev. 660. 



.^4 Patents and Inventions 

Inventive quality. We have already discussed inven- 
tion in respect to the creative element which is necessary. But 
while nothing is patentable as invention which is not the re- 
sult of creation, not everything that has been created by a 
person is patentable. One may actually create something by 
the labor of his own mind so that, in respect to himself, it 
comes within all the definitions of invention. But the purpose 
of the patent laws is to promote the progress of science and 
the useful arts, not merely to reward mental effort as such. 
Therefore nothing is patentable which is not "new." The fact 
that a production is new to the producer does not bring it 
within the statute ; it must be new to the public, to the science 
and arts which the statutes intend to promote.*^^ 

^3 An interesting illustration of this proposition is found in New De- 
parture Bell Co. V. Bevin Bros. Mfg., Co., 73 Fed. 469. The patent in issue 
was for a bicycle bell. It had gone into wide use, but the evidence in 
the case revealed that a very similar mechanism had been described in 
an English patent for door-bells and call bells issued to one Bennett some 
fourteen years previous to that of the complainant. If this English 
mechanism had been utilized in this country, the court said, the fact 
that it had not been utilized for bicycle bells until complainant's patent 
would strongly have indicated the presence of invention. But, went on 
the court, "this argument ... is not applicable to the case at bar. There 
is no reason to suppose that Bennett or his bell was ever heard of by any 
bell manufacturer in this country until his patent was unearthed by a 
search for anticipating devices.". "So well adapted is that mechanism 
to bicycle bells that it is almost inconceivable that it could have been 
known to bell makers here during the 14 years in which they were try- 
ing to improve such bells, and yet was not availed of. No doubt, Rock- 
well devised the striking mechanism set out in his patent independently, 
and with no knowledge of what Bennett had done ; and, since that mechan- 
ism was better adapted to meet the requirements of a bicycle bell than 
anyttiing which rival manufacturers had succeeded in producing, it may 
be accepted as the fruit of an inventive conception, but its novelty is 
negatived by the British patent. The statutes authorize the granting of 
patents only for such inventions as have not been patented or described 
in any printed publication in this or any foreign country before the ap- 
plicant's embodiment of his own conception. It may be a hardship to 
meritorious inventors, who, at the expenditure of much time and thought, 
have hit upon some ingenious combination of mechanical devices, which, 
for aught they know, is entirely novel, to find that, in some remote time 
and place, some one else, of whom they never heard, has published to the 



Characteristics of Invention 35 

This question of novelty does not come up at the time of 
application and issue of a patent, except as prior knowledge 
is shown by other applications and already issued patents. 
These are all that is of record in the Patent Office. New ap- 
plications are compared with this record, and if anticipation 
is clear a patent may be refused. But the office can not go 
outside of this record to look for prior knowledge. The patent 
when issued indicates, therefore, nothing whatever as to the 
patentable novelty of the invention, except in respect to other 
patents issued in this country. Even in this respect it indi- 
cates but little since the benefit of the doubt is given to an 
applicant when his device is at least superficially diflferent from 
anything theretofore patented. 

Whether a production which is new to the creator himself 
is properly to be called "invention" need not be here discussed. 
It is possible that in correct definition, "invention" includes 
the element of novelty as to all human knowledge. If this be 
true, to speak of a new invention is redundant, and an inven- 
tion which is lacking in novelty is not an invention. But in 
ordinary parlance both of courts and of laymen, invention is 
applied to those productions which the producer thinks are 
new, whether they are actually of such novelty as to be 
patentable or not. The statute itself is either unreasonably re- 
dundant or else is framed upon this usage; it reads "one who 
has invented . . . any new . . . art, machine . . . not known 
or used by others." The reports are replete with references 
to "inventions" which are not patentable for lack of novelty.®* 

The fact that a device can not be patented unless it is new 
to the public, being accepted, the question at orrce arises, in 
each case, whether the particular device is new or old. 

world, in a patent or a printed publication, a full description of the very 
combination over which they have been puzzling; but in such cases the 
act, none the less, refuses them a patent." 

«-* Reed v. Cutter, i Story 590. 2 Robb. Pat. Cas. 81, Fed. Cas. No. 
11,645; "Under our patent laws," says Judge Story, "No person, who is 
not at once the first, as well as the original, inventor, by whom the in- 
vention has been perfected and put into actual use, is entitled to a patent. 
A subsequent inventor, although an original inventor, is not entitled to 
any patent." Reckendorfer v. Faber, 92 U. S. 347, 350. 



36 Patents and Inventions 

The great bulk of litigation under the patent law has 
arisen out of this question. In mere terminology the question 
sometimes takes the form of whether there is ^'novelty'' in the 
"invention/' and sometimes whether the concept under con- 
sideration is really an "invention" or not. Properly speak- 
ing, whether it is "invention" should relate only to whether 
or not it is such a creation of the mind as comes within the 
legal meaning of "invention." Whether it is so new to the 
public as to be patentable should come under the question of 
"novelty." Nevertheless, both text-writers and courts often 
discuss the matter of novelty of the idea as though it were 
a matter of "invention." In a sense this is logical and arises 
thus; — the courts have consistently held that an alleged in- 
ventor must be presumed, legally, to have had knowledge of 
everything similar to his own production, whether he actually 
had such knowledge or not.^^ This being the case, a produc- 
tion which is not new to the public is not new, in legal con- 
struction, even to the producer, and therefore can not be "in- 
vention" even as to him.. It is absolutely impossible to allo- 
cate, upon a reasonable basis of distinction, those cases which 
say that a particular device is not patentable because it is "not 
new," and those which refuse patentability on the ground that 
it is "not invention" because not sufficiently unlike contriv- 
ances already known to society. Except for the form of ex- 
pression used, however, the inquiry is precisely the same in 
either class of cases, and the methods of solution are sub- 
stantially identical. In this analysis therefore, the issue will 
be considered, for the sake of simplicity and clarity, as one 
of invention or non-invention, on the principle that the alleged 
inventor is presumed to have had knowledge of all existing 
ideas and therefore a production which is not "new" could 
not have been created by the mind of the person subsequently 
claiming it.®® 

«5 Daylight Glass Mfg. Co. v. American Prismatic Glass Co., 142 Fed. 
454; Foot V. Silsby, 2 Blatch. 260, 268. 

®^ The precision and extent of knowledge which will suffice to pre- 
clude a production from being an invention and the amount of proof of 
such knowledge which is necessary are discussed later. 



Characteristics of Invention 37 

It should be repeated here, however, that there is a real dis- 
tinction between the act of "invention'' and certain other acts 
such as "discovery'* or "importation," and that the latter are 
not patentable however "novel" they may be. It is only novel 
inventions that the patent statute protects, and therefore it 
seems more satisfactory to discuss the matter of novelty under 
the term "invention" than under "novelty." There is less 
chance for forgetfulness that "novelty" alone is not sufficient. 

If the fact of invention depended upon the mere visible form 
or manifestation of an art, machine, manufacture or com- 
position of matter, the inquiry as to whether a production were 
invention would involve simply the determination of identity 
or non-identity of its form with the form of anything which 
had already existed. But invention, as interpreted by the 
courts, requires a creation by mental act, a new idea as well 
as a new substantial and perceptible form. It follows there- 
fore that the substantial form of two devices may be prac- 
tically identical, yet the later one may be invention because it 
involves a new concept, idea, principle, or whatsoever it may 
be called. There is something new actually presented to the 
public although tangibly embodied in an old form. Thus, a 
device may be a new idea of means, because the purpose is 
new, although the physical means is old.®^ 

On the other hand a device may be, in tangible form, dif- 
ferent from anything which had ever existed, but yet not be an 
invention because its production involved no new concept or 
idea of means sufficiently diflferent from that of the first de- 
vice to constitute invention.®^* We shall discuss this latter 
condition first. 

®^ Such was the invention involved in Leroy v. Tatham, 22 How. 132, 
The patent was sustained although the actual tangible form of the device 
had existed in other usages before. Potts v. Creager, 155 U. S. 597. 
See also cases under new use for old device. 

^^* The determination of this question is obviously a mental conclusion ; 
in a sense, it is a question of fact. As a rule, however, it is not left to 
juries to determine but is decided by the court itself. Courts sitting in 
equity, may, of course, decide questions of fact themselves, but there is 
no lack of judicial statement to the effect that when the trial is at law the 
question should be submitted to the jury, ^^'inans v. N. Y., etc. R. R. 



38 Patents and Inventions 

Assuming, then, that the tangible form of a concept is un- 
like any form already known, is the concept itself sufficiently 
dififerent from anything else to be an invention? The answer 
is not the ascertainment of a sensible fact ; it is wholly a mental 
conclusion, deduced from the perceptible facts. 

Whether this new idea, this novelty of concept, is present or 
not, depends upon all the circumstances of each particular case. 
There are no rules for determining it, in the sense that there 
are rules for deciding issues in the common law. Such pre- 
cision as is necessary to a rule is precluded by the fact that in 
the nature of the subject no case can arise wherein the facts 
are the same as those of a precedent case. 

In ordinary processes of society and of individuals, the es- 
sential circumstances are recurrently similar in many in- 
stances. A man buying a suit of clothes on credit from a de- 
partment store is very apt to do it under precisely the same 
overt circumstances as the ten or the hundred men preceding 
him have done. And, in consquence, it may fairly be said that^ 
he and his salesman had the same constructive intent in re- 
gard to the passing of title as did the buyers and sellers pre- 
ceding. Proceeding to wider analogies, it is not illogical to 
say that the buyer of clothes on credit has the same presump- 
tive intent as to the passing of title as the buyer of furniture. 
There is in all such cases a usual similarity of observable ex- 
ternal circumstances. It is possible, also, by a long line of de- 
cisions to give to words that may be commonly used a perfect- 
ly definite legal meaning. 

But where patents are concerned, the very nature of the 
subject itself precludes similarity, and consequently eliminates 
any possibility of definite standards. When a device whose 
patentability is asserted is physically like a preceding device 
there is usually no case for the court. The fact of exact iden- 
tity, which is in such case apparent to any observer, obviates 
any pretense of invention. On the other hand, a mere visible 
difiference between two devices does not ipso facto denote the 

Co., 21 How. 88, "There was in fact but one question to be decided by 
the court, viz.: the construction of the patent; the question of novelty 
being the fact to be passed on by the jury." Jackson v. Allen, 120 Mass. 64. 



Characteristics of Invention 39 

presence of invention. Whether it does actually denote inven- 
tion is the issue to be decided. Broadly speaking, this issue, 
and others of the patent law, can not be determined by a mere 
comparison of those facts which are cognizable by the senses. 
The decision must come from the operation of the mind upon 
these observed facts. It is the conclusion of the particular 
judge, in each case, whether the alleged invention is really a 
new creation or merely a natural and normal modification of 
existing ideas. 

Sometimes where the observed facts are essentially the same 
in many instances, the operation of a normal mind upon them 
will produce the same conclusion that preceding normal minds 
reached. Consequently, the conclusion which other minds 
have arrived at, from approximately the same external facts 
which now face a judge, may properly be considered by him in 
reaching his own judicial conclusion. So it is possible to com- 
pile a line of court decisions whose weight is of controlling 
influence in a later case where a judicial conclusion is to be 
reached upon facts that are essentially similar to those in the 
collected precedents. 

But in patent law there can not be this requisite similarity 
of external facts. The facts appreciable by the senses are the 
concrete, and usually material, elements of the concept. Al- 
ways they must be essentially dififerent from the elements of 
the devices which have preceded them or there is no case at 
all. The abstract similarity or dissimilarity of the whole to 
something else, the legal likeness or difference, is purely a 
conclusion of the mind from these always variant external 
stimuli. As the visible, sensible, facts are always different it 
follows that the conclusion of another mind in another case 
can furnish no logical influence upon the decision to be made 
and it is not only impossible to lay down rules for decision, as 
in other branches of the law, but absurd to try.^^ As Mr. 
Justice Story said long ago,*^^ "The doctrine of patents may 
truly be said to constitute the metaphysics of the law.'' 

^^ Marshall v. Wirt, 232 Fed. 603, each decision is a question of fact, and 
stands on its own bottom. 
69 Barrett v. Hall, i Mason 447, 471. 



40 Patents and Inventions 

To some slight advantage, however, decisions in regard to 
the presence or absence of invention can be grouped according 
to the particular tangible feature which distinguishes the de- 
vice involved from other devices. And to the extent that the 
judicial opinions repeatedly refer to some characteristic circum- 
stance as strongly indicating invention, or as negativing it, it 
can be broadly laid down as a rule, though not an invariable 
one, that the presence of such feature indicates invention, or 
otherwise. It may be said, however, that these "rules" have 
been customarily restricted to the negative position that such 
or such a feature does not indicate invention. 

The great disadvantage of thus attempting to group decis- 
ions into even the least forceful or obligatory of "rules'' is 
that it tends to perpetuate the pernicious idea that certain con- 
cepts can not intrinsically be invention, regardless of their 
novelty. We have seen that some things which are novel, 
such as discoveries and importations, are not inventions, and 
can not be patentable, as such, but that is because those things 
are hot creations of the mind. This proposition seems to con- 
fuse itself at times with the so called rules that certain char- 
acteristics do not usually denote sufficient mental genius to be 
worth the name of invention, and the result is the anomalous 
and vicious proposition that certain characteristic mental con- 
cepts can not be .properly called inventions. Thus it is one 
thing to say that the aggregation into a unit of static ele- 
ments (e.g. the placing of an eraser in one end of a wooden 
sheathed lead pencil) is not usually the product of inventive 
genius and is therefore not usually invention. But it is quite 
another thing to say that such aggregation does not ever indi- 
cate inventive genius, and, as a matter of law, can not be 
invention. This latter idea is found in the decisions much less 
often than it used to be, but it is sometimes found, most ob- 
noxiously, in the Patent Office itself, and among young prac- 
titioners, trained by text-books and lectures in which it has 
been laid down as a real rule, that certain mental creations, 
such as the concept of a particular aggregation, or of a sub- 
stituted material, can not be considered as inventions. It is 
therefore repeated most emphatically that the cases here 



Characteristics of Invention 41 

grouped do not stand for rules that certain concepts are not 
invention, but only illustrate concepts which courts have said, 
in a number of particular and striking instances, did not in 
those cases reveal invention. 

The number of these groups or rules depends upon the 
judgment of the particular classifier. One text-book of con- 
siderable note^" refers to twelve rules, another^* to thirty-two. 
The difference lies in the number of instances which each 
author considered necessary before a rule could be deduced. 
Of the thirty-two "rules'' of Hopkins' text, some are deduced 
as rules from the existence of but a single decision in which the 
particular distinguishing feature was held not to indicate in- 
vention. The only authority apparently needed for citing such a 
decision as a "rule" is, to some minds, the fact that a court has 
declared as its own generalization that the particular feature 
involved does not constitute invention. If the mere statement 
of the court that a particular feature never indicates, or gen- 
erally cannot indicate, invention, may be taken as a "rule", 
the number of rules possible is naturally greater than if they 
be deduced from a consistency of actual decisions. Only the 
more generally accepted "rules" will be given here. 

Excellence of workmanship has been held not to denote 
sufficient mental creation to constitute invention. Therefore 
a particular manufacture, as such, is not patentably distin- 
guished from others of the same type merely because it is bet- 
ter made. The art of making it, or the machinery by which 
it is made might be patented under proper circumstances, but 
the manufacture itself, if considered apart from the way it is 
made is not patentable. It might be said, that the fact of bet- 
ter workmanship is not in itself patentable. ^^ But it is not im- 

70 Walker. 

71 Hopkins. 

72 Risdon Locomotive Wks. v. Medart, 158 U. S. 68, 80. "In short this 
is a patent only for superior workmanship, and within all the authorities 
is invalid. This court has repeatedly stated that all improvement is not 
invention. If a certain device differs from what precedes it only in su- 
periority of finish or in greater accuracy of detail, it is but the carrying 
forward of an old idea and does not amount to invention. Thus, if it 
has been customary to make an article of unpolished metal, it does not 



42 Patents and Inventions 

possible that the fact of better workmanship might come from 
some underlying idea that is itself an invention. 

Change arising frovt the use of better or more desirable ma- 
terials is not normally treated as showing invention. Thus in 
Hicks V. Kelsey," the validity of a patent for a particular form 
of "wagon reach/* (the shaft connecting the front and rear 
axles of a wagon), was in question. Ordinarily this shaft is 
curved in such a way as to allow the front wheel to pass under 
it when cramped for a turn. Before the patentee's change, 
reaches had been made of wood with a strap, or straps, of iron 
fastened along either side of the curved part. The patentee 
conceived the idea of omitting the wood at the curve and bolt- 
ing the iron straps together. By this means the shaft became 
less bulky at the curve though in all other respects and pur- 
poses it remained the same. The court held the patent invalid, 
saying, "The question is whether the mere change of material 
— making the curve of iron instead of wood and iron-^was a 
sufficient change to constitute invention ; the purpose being the 
same, the means of accomplishing it being the same, and the 
form of the reach and mode of operation being the same. It 
is certainly difficult to bring the case within any recognized 
rule of novelty by which the patent can be sustained. The use 
of one material instead of another in constructing a known 

involve invention to polish it. If a telescope has been made with a 
certain degree of power, it involves no invention to make one which dif- 
fers from the other only in its having greater power. If boards had 
heretofore been planed by hand, a board better planed by machinery 
would not be patentable, although in all these cases the machinery itself 
would be patentable." (It should be noted, however, that a manufacture is 
often identified not by its physical appearance but by its method of manu- 
facture). International Tooth Crown Co. v. Gaylord, 140 U. S. 55, 64. 
"It is hardly necessary to say that it is no invention, within the meaning 
of ^the law, to perform with increased speed a series of surgical oper- 
ations old in themselves, and in the order in which they were before per- 
formed. With what celerity these successive operations shall be per- 
formed depends entirely upon the judgment and skill of the operator, and 
does not involve any question of novelty which would entitle him to a 
patent therefor." Smith v. Nichols, 21 Wall. 112, 119; Edison v. Ameri- 
can Mutoscope Co., 114 Fed. 926, 935. 
73 18 Wall. 670. 



Characteristics of Invention 43 

machine is, in most cases, so obviously a matter of mere me- 
chanical judgment, and not of invention, that it cannot be 
called an invention, unless some new and useful result, an in- 
crease of efficiency, or a decided saving in the operation, is 
clearly attained. Some evidence was given to show that the 
wagon-reach of the plaintiff is a better reach, requiring less 
repair, and having greater solidity than the wooden reach. 
But it is not sufficient to bring the case out of the category of 
more or less excellence of construction. The machine is the 
same. Axe-helves made of hickory may be more durable and 
more cheap in the end thai) those made of beech or pine, but 
the first application of hickory to the purpose would not be, 
therefore, patentable.'*^* 

Mere enlargement has been held not to indicate the mental 
creation necessary to invention. ^^ 

7* It should be noted that express exception is made if by the sub- 
stitution of materials "some new and useful result" is produced. Hotch- 
kiss V. Greenwood, 11 How. 248. In this case it was urged that it should 
have been left to the jury to say whether or not the change of materials 
amounted to invention, but the court held as a matter of law that if the 
change required no more skill than was required by an ordinary mechanic . 
there was no invention involved in making it. "The difference is formal, 
and destitute of ingenuity or invention. It may afford evidence of judg- 
ment and skill in the selection arid adaptation of the materials in the 
manufacture of the instrument for the purposes intended, but nothing 
more." New York Belting & P. Co. v. Sierer, 149 Fed. 756; Crouch v. 
Roemer, 103 U. S. 797; Guidet v. Brooklyn, 105 U. S. 550 ; Cf. Smith v. 
Goodyear Dental Vulcanite Co., 93 U. S. 486. 

75 Phillips V. Page, 24 How. 164 ; Planing Machine Co. v. Keith, loi 
U. S. 479; "The appellant contends that the Anson machine fails to be 
an anticipation of the Woodbury invention, because, as they say, it has no 
solid bed. It plainly has, however, a solid bed, adequate for the pur- 
poses for which the machine was intended and used, — for cutting, and 
planing light material, sash, and blinds, and the bed is sufficiently solid 
for such uses. It may be admitted it would be too weak for general 
planing work upon boards or plank. It is comparatively a small machine. 
It would not cease to be the same machine, in principle, if any one or 
all of its constituents were enlarged or strengthened, so that it might 
perform heavier work. True, the bed is divided by a slit running long- 
itudinally from one end to the other; but the two parts are arranged so 
as to constitute one bed, and is is not perceived why, if enlarged, it 
would not answer all the purposes of the Woodbury machine. Mere en- 



44 Patents and Inventions 

Mere duplication of parts has not normally shown inven- 
tion. In one case^® involving a patent for the combination, in 
a tobacco curer, of two sets of furnaces of different capacities 
the court said, **But surely there can be no invention in this! 
Where one stove is found to be unequal to the heating of a 
room, to put another beside it, even though smaller, requires 
no invention. And if at the time of the issue of plaintiff's 
patent there was in- use for curing tobacco, or anything else, 
single furnaces, with flues entering a common flue with a re- 
turn flue to the chimney, it is not a patentable combination to 
put two furnaces side by side to accomplish the same purpose, 
even though one be smaller than the other. The plaintiff's 
combination produces no new result. It works in no different 
manner. It is a mere colorable variation from the old method 
of building furnaces, required no exercise of the inventive 
faculty, and is not patentable."" * 

But this rule like all the others is not absolute; it does not 

largement is not invention. The simplest mechanic can make such a 
modification. Woodbury's patent claims no particular form of a bed. 
It does not require the bed to be of any specified thickness, or constructed 
in one piece. Its purpose is to furnish a firm and unyielding support to 
the material when passing under the cutter, and that may be done as 
well by constructing the bed of two parts as of one. An anvil composed 
of two pieces is not the less an anvil, a solid block to resist the blows of 
a hammer. A solid foundation of a house may be composed of more than 
one stone.. W? cannot but think this objection to the Anson machine as 
an anticipating device is entitled to no weight." Am. Road Machine Co. 
V. Pennock & Co., 164 U. S. 26; American Well Works v. Austin Mfg. 
Co., 98 Fed. 992, dictum. 

^^Millner v. Voss & Co., 4 Hughes 262. 

^^ In Dunbar v. Myers, 94 U. S. 187, it was held that the use, on a 
circular saw, of two deflecting plates was not invention because of the 
fact that the use of one had long been known. "Grant that 2 such plates 
are in certain cases better than one used alone, still the question arises 
whether it involves any invention to add the second plate to a machine al- 
ready constructed with one plate. Beyond doubt, every operator who 
had used a machine having one deflecting plate knew full well what the 
function was that the deflecting plate was designed to accomplish, and 
the reasons for placing it at the side of the saw are obvious to the un- 
derstanding of every one who ever witnessed the operation of a circu- 
lar saw. Ordinary mechanics know how to use bolts, rivets, and screws, 
and it is obvious that any one knowing how to use such devices would 



Characteristics of Invention 45 

mean that duplication can not be the result of invention/^ In 
one case where the device was actually only a duplication of 
existing ones the court held the patent covering it to be valid, 
saying,^® "It is contended the changes made by Firm were 
merely mechanical, and that in reality he but took the presses 
which he found standing side by side, and banked them one 
upon another, that the change involved was mere reconstruc- 
tion, rearrangement, duplication. It is to be noted, however, 
that printing-press construction is mechanically a highly- 
developed industry. The complex and intricate details of these 
great presses; the calls upon them for speed, strength, and 
product ; the constant demand upon builders for improvement ; 
and the keen rivalry existing among such builders and the 
users of the presses, — are factors which brought the art to 
this high mechanical standard. The very fact that, with all 
these stimulating considerations, insuring the most rapid strides 
in mechanical advance, no such step as Firm's was taken in 
duplex presses, shows that Firm's change was not in the line 
of mechanical progress, but in the original, inventive sphere. 
Granted the change consisted in banking one press upon an- 
other, yet the two, when so combined, and in their new relation, 
so co-acted as to dispense with angle-bars, with a web-de- 
know how to arrange a deflecting plate at one side of a circular saw 
which had such a device properly arranged on the other • side, it being 
conceded that both deflecting plates are constructed and arranged pre- 
cisely alike, except that one is placed on one side of the saw and the other 
on the opposite side. Both are attached to the frame in the same man- 
ner; nor is it shown, either in the specification or drawings, that there 
is anything peculiar in the means employed for arranging the deflecting 
plates at the sides of the saw, or in attaching the same to the frame. 
Both are alike, except that the outer end of the one on the same side as 
the strengthening plate projects farther from the saw than the inner end, 
and that the other is rather smaller in diameter, and that the ends pro- 
ject about an equal distance from the saw." Slaw son v. Grand St. R. R. 
Co., 107 U. S. 649; Ferguson v. Roos Mfg. Co., 71 Fed. 416; New De- 
parture Ball Co. V. Bevin Bros. Mfg. Co., 73 Fed. 469. 

^® Duplication may constitute invention, Parker v. Hulme, i Fish. Pat. 
Cases 44 Fed. Cas. No. 10740. 

7» Goss Printing Press Co. v. Scott, 108 Fed, 253, 259. 



46 Patents and Inventions 

fleeted course, and made possible a straight-line duplex press. 
A single straight-line press in itself was no novelty, so far as 
the straight-line printing of an individual web is concerned; 
but, when the product of two such presses were united, it was 
only through angle-bar agency. Firm's device, by placing the 
two in new relations, eliminated the angle-bar, did away with 
the tangent-turning webs, and thus secured valuable results. 
The test in such cases is not whether duplication exists, but 
whether duplication produces, not mere duplication of pro- 
duct or function, but a new unitary, additional result, and not 
the mere aggregate of prior, separate mechanism. The mere 
elements of the combination are immaterial. In their individ- 
ual relations they may be old, may be mere duplicates ; but the 
test is not the character of the combining elements, but the 
result flowing from their being combined.*' Duplication pro- 
ducing a new and a useful result, as it was here produced, may 
be patentable. It renders useful what was previously useless. 
Aggregation, Merely to gather static elements into juxta- 
position with each other has been held not to indicate invention. 
A case often cited upon this point is that of Reckendorfer v. 
Faber.*® The patetit in this case was for the now common 
wooden sheathed lead pencil, having an eraser somewhat 
larger in diameter than the lead, set into a cylindrical hole 
in one end. The court, three justices dissenting, held the 
patent to be invalid, saying, "The combination, to be patenta- 
ble, must produce a different force or effect, or result in the 
combined forces or processes, from that given by their sepa- 
rate parts. There must be a new result produced by their 
union: if not so, it is only an aggregation of separate ele- 
ments. An instance and an illustration are found in the dis- 
covery, that, by the use of sulphur mixed with india-rubber, 
the rubber could be vulcanized, and that without this agent 
the rubber could not be vulcanized. The combination of the 

80 92 U. S. 347. It has always seemed to the writer that this case was 
wrongly decided — that the collocation into one instrument of these various 
elements showed much more inventive genius than many another collection 
of interacting elements which has been upheld as invention. The whole 
tenor of the case suggests the vision theory, heretofore referred to, that 
certain concepts, such as aggregation, can not be considered invention. 



Characteristics of Invention 47 

two produced a result or aa article entirely different from that 
before in use. Another illustration may be found in the frame 
in a saw-mill which advances the log regularly to meet the 
saw, and the saw which saws the log; the two co-operate and 
are simultaneous in carrying on a continuous sawing. A stem- 
winding watch-key is another instance." The office of the stem 
is to hold the watch, or hang the chain to the watch : the office 
of the key is to wind it. When the stem is made the key, the 
joint duty of holding the chain and winding the watch is per- 
formed by the same instrument. A double effect is produced 
or a double duty performed by the combined result. In these 
and numerous like cases the parts co-operate in producing the 
final effect sometimes simultaneously, sometimes successively. 
The result comes from the combined effect of the several parts, 
not simply from the separate action of each, and is, therefore, 
patentable. In the case we are considering, the parts claimed 
to make a combination are distinct and disconnected. Not 
only is there no new result, but no joint operation. When the 
lead is used, it performs the same operation and in the same 
manner as it would do if there were no rubber at the other 
end of the pencil; when the rubber is used, it is in the same 
manner and performs the same duty as if the lead were not in 
the same pencil. A pencil is laid down and a rubber is taken 
up, the one to write, the other to erase : a pencil is turned over 
to erase with, or an eraser is turned over to write with. The 
principle is the same in both instances. It may be more con- 
venient to have the two instruments on one rod than on two. 
There may be a security against the absence of the tools of an 
artist or mechanic from the fact, that, the greater the number, 
the greater the danger of loss. It may be more convenient to 
turn over the different ends of the same stick than to lay down 
one stick and take up another. This, however, is not inven- 
tion within the patent law, as the authorities cited fully show. 
There is no relation between the instruments in the perform- 
ance, of their several functions, and rio reciprocal action, no 
parts used in common."^^ 

81 Ace. Thacker Heating Co. v. Burtis, 121 U. S. 286. Here the patentee 
had combined a fuel reservoir which was well known with a particular 



48 Patents and Inventions 

But, after all, practically every device involves juxtaposition 
of elements. A machine is an aggregation of wheels, shafts, 
levers, etc. A patentable wash board is a juxtaposition of 
wood and zinc parts; and so the list might run unendingly. 
The statement that juxtaposition does not constitute invention 
is therefore only possible of those groupings in which, as in 
the Reckendorfer pencil, each element remains individual, in 
proximity and connection with other elements which also re 
tain their identity. This is called aggregation, as distinct from 
those combinations of elements which form a patentable de- 
vice.®^ The distinction is often expressed by saying, as in the 
Reckendorfer case, **The combination to be patentable must 
produce a different force or effect, or result in the combined 
forces or processes, from that given by their separate parts. 
There must be a new result produced by their union ; if not so, 
it is only an aggregation of separate elements.*' The same 
idea is expressed in Hailes v. Van Wormer,®^ where the court 
says : "It must be conceded that a new combination, if it pro- 
duces new and useful results, is patentable, though all the con- 
stituents of the combination were well known and in common 
use before the combination was made. But the results must 
be a product'of the combination, and not a mere aggregate of 
several results each the complete product of one of the com- 
bined elements. Combined results are not necessarily a novel 
result, nor are they an old result obtained in a new and im- 
proved manner. Merely bringing old devices into juxtaposi- 

form of stove which was also well known. They had not, however, been 
used together before. The court held the patent void because invention 
was absent. The confused reasoning of this case is an illustration of the 
difficulties encountered in explaining absence of invention by some rule 
of thumb. 

Hailes v. Van Wornjer, 20 Wall. 353, Stephenson v. Brooklyn Cross- 
Town Ry. Co., 114 U. S. 149, Pickering v. McCullough, 104 U. S. 310, 
Palmer v. Corning, 156 U. S. 342, Richards v. Chase Elevator Co., 159 
U. S. 477, Grinnell Washing-Machine Co. v. E. E. Johnson Co., 247 U. S. 
426, National Tube v. Aiken, 163 Fed. 254, James Spear Stove Co. v. 
Kelsey Heating Co., 158 Fed. 622; Fort Pitt Supply Co. v. Ireland & 
Matthews Mfg. Co., 232 Fed. 871. 

82 Loom Co. V. Higgins, 105 U. S. 580. 

83 20 Wall. 353. 



Characteristics of Invention 49 

tion, and there allowing each to work out its own effect with- 
out the production of something novel, is not invention. No 
one by bringing together several old devices without produc- 
ing a new and useful result the joint product of the elements of 
the combination and something more than an aggregate of old 
results, can acquire a right to prevent others from using the 
same devices, either singly or in other combinations, or, even 
if a new and useful result is obtained, can prevent others from 
using some of the devices, omitting others, in combination." 

The real difficulty is in determining just when the juxta- 
position of parts does produce a cooperative result such that 
the presence of invention is not prima facie absent. If the 
parts actively co-operate so that there is mutual or reciprocal 
action and interaction of some kind, the device is then ipso 
facto a combination instead of aggregation and has possibili- 
ties of patentability.®* 

But while this is the thought frequently expressed, it is a 

8* Pickering v. McCullough, 104 U. S. 310, 318. "In Nimmo's appara- 
tus, it is perfectly clear that all the elements of the combination are old, 
and that each operates only in the old way. Beyond the separate and 
well-known results produced by them severally, no one of them con- 
tributes to the combined result any new feature; no one of them adds to 
the combination anything more than its separate independent effect; no 
one of them gives any additional efficiency to the others, or changes in 
any way the mode or result of its action. In a patentable combination 
of old elements, all the constituents must so enter into it as that each 
qualifies every other; to draw an illustration from another branch of the 
law, they must be joint tenants of the domain of the invention, seized 
each of every part per my et per tout, and not mere tenants in common, 
with separate interests and estates. It. must form either a new max:hine 
of a distinct character and function, or produce a result due to the joint 
and co-operating action of all the elements, and which is not the mere 
adding together of separate contributions. Otherwise it is only a me- 
chanical juxtaposition, and not a vital union. In the case of this appara- 
tus the mould was known, and a rib or former was known, and their 
use in combination was known. Salvetat described a rib, so arranged 
that, after it had performed its function in shaping the interior of the 
vessel, it could be withdrawn, through the top of the vessel, so as not to 
produce injury by striking against its side. This rib Nimmo substituted 
for the old one in the same combination. And this is the whole of the 
invention. Upon the principle stated, there is no invention in it." 



50 Patents and Inventions 

fact that mere static juxtaposition has been held so to co-oper- 
ate in producing a new result as to be indicative of invention, 
and therefore patentable. In Hailes v. Van Wormer, just 
quoted from, the court assumed the validity of a patent cov- 
ering the simple juxtaposition in a stove of a fire-pot, coal 
magazine, revertible flues, etc., all of which by themselves were 
old, but had never been so grouped together. In the case of 
The Barbed Wire Patent^^ the court sustained the patent, 
which was directly attacked, despite the fact that the device 
was nothing more than the collocation — aggregation, in its 
non-technical sense — of fence wires twisted together and a 
short transverse wire coiled at its central portion about one of 
the twisted strands, so that its* ends would project therefrom 
to form the well known barb. The court called it a combina- 
tion, without discussing its differentiation from unpatentable 
aggregation.®^ 

Combination. The word ''combination'' ordinarily means 
any grouping of parts, as for instance, the combining of parts 
of a stove into one whole or the placing together of wheels, 
shafts, etc., in combination to form a single machine. It is 
so used generally in the patent law, and in this sense we have 
just discussed ft. But it has also a technical use in patent law. 
In this technical sense "combination" is used of a collection or 
arrangement of parts which do not themselves entirely sub- 
merge their identity in the new device. In a machine, for in- 
stance, the identity of the individual wheels and other parts is 
entirely lost; they go to make up the machine which is itself 
looked upon as the only entity. The well known Seldon pat- 
ent,®^ however, is an illustration of a ''combination*' in the 
technical usage. It covered the collection in an automobile, of 
engine, driving mechanism, and carriage. While these parts 
all went tp make up the whole, yet their individual identity was 
not lost as in the case of the parts of a single machine.^® Out 
85 143 u. S. 275. 

8^ Juxtaposition of old elements in a rubber tire held invention, Dia- 
mond Rubber Tire Co. v. Consolidated R. T. Co., 220 U. S. 428; Rubber 
Tire Co. v. Goodyear Co., 232 U. S. 413. 

87 Col. Motor Car Co. v. Duerr, 184 Fed. 893. 

88 Gould V. Rees, 15 Wall. 187. Barrett v. Hall, i Mason 447, 474. 



Characteristics of Invention 51 

of this use of combination grow such rules as that *'the sub- 
stitution of equivalents is not such invention as will sustain a 
patent/**® and others having to do especially with changes in 
a combination.*** The fact that the combination consists of old 
and well known elements does not necessarily deprive it of 
patentability.®^ 

Mere change of form. Another holding, frequently ex- 
pressed as a rule, is that mere change of form does not con- 
stitute invention. The difficulty with this as a ''rule'' is that 
it is even more indefinite than the generalities just discussed. 
It leaves still open the question, what is mere change of form. 
Practically all invention involves change of form in some 
way, if only the change, for instance, from bulk steel to that 
of a finished tool. Even if the rule be confined to change of 
physical appearance without change of use or purpose there is 
conflict. In harmony with the ^*rule" are such cases as Glue 
Co. V. Upton.®^ Here the invention alleged was that "of glue 
comminuted to small particles of practically uniform size,* as 
distinguished from the glue in angular flakes hitherto known." 
It was claimed for this form of glue, which was called "instan- 
taneous and comminuted glue,'* that less preparation for use 
was required, that it could be more readily put up in packages 
as there were no large sharp edged flakes to cut the container, 
and that it had a more pleasing appearance. "It thus appears," 
said the court, "that the invention claimed is not any new 
combination of ingredients, creating a different product, or 
any new mechanical means by which a desirable change in the 
form of a common article of commerce is obtained ; but it con- 
sists only of the ordinary flake glue reduced to small particles 
by mechanical division. The advantages from such division 
consist in its more ready and rapid solution, its greater con- 

8» Smith V. Nichols, 21 Wall. 112. 

»<>Burt V. Evory, 133 U. S. 349, McClain v. Ortmeyer, 141 U. S. 419. 
Moody V. Fiske, 2 Mason 112. 

®i Loom Co. V. Higgins, 105 U. S. 580, Expanded Metal Co. v. Brad- 
ford, 214 U. S 366 ; Rubber Tire Co v. Goodyear Co., 232 U. S. 413 ; Seim 
V. Hurd, 232 U. S. 420. Hay v. Heath Cycle Co., 71 Fed. 411, Steiner v. 
Voegtly Hardware Co., 178 Fed. 831. 

»2 97 U. S. 3. 



52 Patents and Inventions 

venience for packing and retailing, and its whiter appearance 
and enhanced salableness. The whole claim is to an old article 
of commerce in a state of mechanical division greater than 
previously used, but unchanged in composition and proper- 
ties; and the benefits arising from the increased division are 
such as appertain to every soluble substance when divided into 
minute particles. A distinction must be observed between a 
new article of commerce and a new article which, as such, is 
patentable. Any change in form from a previous condition 
may render the article new in commerce ; as powdered sugar is 
a different article in commerce from loaf sugar, and ground 
coffee is a different article in commerce from coffee in the 
berry. But to render the article new in the sense of the patent 
law, it must be more or less efficacious, or possess new prop- 
erties by a combination with other ingredients; not from a 
mere change of form produced by a mechanical division."®* 
The inexactness of stating the result of such holdings as a 
rule is, however, shown by the case of Winans v. Denmead.®* 
This concerned the validity of a patent for a body for railroad 
freight cars. The bodies in use before the patent had been 
rectangular. Transportation of such freight as coal and ore in 
these cars caused a great lateral pressure upon the body of the 
car and a consequent tendency to distortion. To overcome 
this, so much bracing and stiffening was necessary that the 
cars were capable of transporting a load of not more than 
their own weight. The patentee had conceived the idea of 
building the body in the form of a frustrum of a cone, in- 
verted. This so far did away with the tendency to distortion 

®3 King V. Galium, 109 U. S. 99. Validity was denied to a patent for the 
idea of putting plastering hair into smaller bales than had been hereto- 
fore known. The court did not refer to "change of form" at all. The 
Patent Act of Feb. 21, 1793, §2, provided specifically, "It is hereby enacted 
and declared, that simply changing the form or propositions of any ma- 
chine, or composition of matter in any degree, shall not be deemed a 
discovery." Belding Mfg. Co. v. Corn Planter Co., 152 U. S. 100, Lowell 
V. Lewis, I Mason 182, 189; "I say substantially the same invention, be- 
cause a mere change of form or proportions of any machine cannot, per 
se, be deemed a new invention." 

»*I5 How. 330. 



Characteristics of Invention 53 

as to permit elimination of a great deal of lateral bracing. 
The cars could, in consequence, carry a load of considerably 
more than their own weight, and they had other advantages 
over the old rectangular ones. In its decision the court rec- 
ognized that "under our law a patent can not be granted 
merely for a change of form.'' But it held that the production 
of the patentee involved more than a change of form and was, 
in fact, an invention. The reasoning by which the decision is 
leached is, at least, not quite logically clear, on account of the 
assumed necessity for holding that the change from a rec- 
tangular container to a conical one was not merely a change 
of form. The truth is, it was merely a change of form, but it 
required, acc6rding to the decision, the mental act of invention 
to conceive of that change. 

Application of old device to new purpose. It often occurs 
that patentability is claimed for an invention, even when the 
substantial embodiment of the means conceived does not differ 
at all, in form, from other known embodiments of means. 
The quality of invention is alleged to lie in the conception of 
using such known substantial means for a new purpose; to 
accomplish some result not before reached by that means. 

Just when this application of an old and known device to the 
accomplishment of an end for which it has not before been 
used amounts to invention, is a question which has greatly 
troubled the courts. They are reasonably agreed that if the 
new use is "analogous" to the old one, no invention is involved, 
but that there may be invention in the application of an old 
device to a new and "non-analogous" end. The issue there- 
fore, when the use only is changed and not the device, is 
whether the purpose or use is so like the known use that no 
inventive genius was required for its conception. One of the 
clearest cases of "analogous" use is that considered in Penn- 
sylvania Ry. Co. V. Locomotive, etc. Co.®^ Here the patentee 
claimed to have invented the use of a certain swivel truck, 
which allowed a slight amount of lateral motion, under rail- 
road engines. Exactly the same form of truck, which was well 

»5 no U. S. 490. 



54 Patents and Inventions 

known, had already been used under railroad cars, for the 
same purpose, but it had never been placed under an engine 
until the patentee conceived the idea. The patent was held in- 
valid on the ground that its subject matter had required no 
invention. The court said, "It is settled by many decisions of 
this court, which it is unnecessary to quote from or refer to 
in detail, that the application of an old process or machine to 
a similar or analogous subject, with no change in the manner 
of application, and no result substantially distinct in its na- 
ture, will not sustain a patent, even if the new form of result 
has not before been contemplated.'' 

In Grant v. Walter®® the patentee had discovered that silk 
wound in a peculiar form of skein could be dyed in the skein. 
Theretofore it had been dyed while in much smaller skeins 
and then re-wound. The patentee's discovery effectuated con- 
siderable saving in time and effort. What he claimed was his 
particular form of skein when made up of silk ready for dye- 
ing. Practically the same form of skein was already used for 
silk from which the gum was to be boiled off, and which was 
not, therefore, ready for the dye. The court was in much 
doubt as to just for what the patent purported to be but finally 
decided apparently that it was for the skein. It therefore held 
that, "The most that can be said of this Grant patent is that it 
is a discovery of a new use for an old device which does not 
involve patentability. However useful the nature of the new 
use to which the skein is sought to be confined by the dis- 
claimer, compared with the former uses to which the old skein 
was applied at the dat-e of the improvement, it forms only an 
analogous or double use, or one so cognate and similar to the 
uses and purposes of the former cross-reeled and laced skein 
as not to involve anything more than mechanical skill, and 
does not constitute invention, as is well settled by authorities 
already referred to."®^ 

»« 148 U. S. 547. 

®^ Jones V. Cyphers, 126 Fed. 753, Bowman v. DeGrauw, 60 Fed. 907, 
Brown v. Crane Co., 133 Fed 235. Mellon v. Wm. C. Gregg & Co., 137 
Fed. 68, 77y "It is only when the new use is so recondite and remote from 
that to which the old device has been applied, or for which it was con- 



Characteristics of Invention 55 

On the other hand, in Bary v. Harpoon Castor Mfg. Co.,*® a 
device consisting of a spherically convex piece of metal, having 
sharp projections vertical to its plane, on the concave side, and 
intended to be fastened to the ends of table legs, etc., by driv- 
ing the projections into the wood, the whole being to supply 
the place of a **castor,'' was held patentable despite the fact 
that an almost precisely similar article had previously been 
used for ornamentation of Mexican saddles. The court said, 
"In order to test the question let us assume that the exact 
structure shown in the patent to Alleyn was taken from the 
shield of a Scottish Highlander or the war bonnet of a North 
American Indian 300 years ago, and was on exhibition in some 
museum here. Would it not involve invention to put it to use 
as a substitute for the elaborate, clumsy and expensive castors 
now in use? We think it would."®® 

These cases represent extremes on either side of the line. 
Between them is the debatable ground. Whether the new use 
is analogous, mere unpatentable "double use,'' or is a new 
and novel one involving invention can not be determined by 
any rule of thumb. All that is possible is, "as a result of the 
authorities upon this subject, it may be said that, if the new 
use be so nearly analogous to the former one, that the applica- 
bility of the device to its new use would occur to a person of 
ordinary mechanical skill, it is only a case of double use, but 
if the relations between them be remote, and especially if the 
use of the old device produce a new result, it may at least in- 
volve an exercise of the inventive faculty. Much, however, 
must still depend upon the nature of the changes required to 
adapt the device to its new use." 

Mechanical skill. All of these decisions and "rules," and 
m.any others, may be summed up in the proposition that no 

ceived, that its application to the new use would not occur to the mind 
of the ordinary mechanic, skilled in the art, seeking to devise means to 
perform the desired function, with the old machine or combination present 
before him, that its conception rises to the dignity of invention." 

^8209 Fed. 207. 

®®Acc. DuBois V. Kirk, 158 U. S. 58; Here the presence of inventive 
genius was determined by the theretofore unsatisfied need. Western Elec. 
Co. V. La Rue, 139 U. S. 601. 



56 Patents and Inventions 

change, from what already is known, amounts to invention, 
unless it is something more than any capable mechanic would 
have accomplished when faced by the need for it.^®" It is just 
the difficulty of determining whether a production has pro- 
ceeded out of something more than mechanical skill which 
makes patent law so inexact as a science. "The task of dis- 
tinguishing between invention and the power of adaptation 
possessed by a skillful mechanic is not always an easy one, 
nor have the courts apparently succeeded in formulating a 
proposition to cover all cases. While the statutes require that 
a patent, to be valid, must disclose invention and novelty, yet 
the degree or amount of invention required is not prescribed, 
and, from the nature of the case, can not be.''^®^ The various 
so called rules above referred to are merely the attempts of 
courts to formulate something by which the difficulty of this 
decision can be lessened. But it arises afresh in each case, 
and can be helped by precedents only to the most meagre 
extent. 

In the great bulk of cases in which a patent has been held 
void for want of the quality of invention in the device set 
forth, the court has not even attempted to give reasons for its 
finding. It has simply said something to the effect that "In 
view of the prior art ... it can not be claimed that the com- 

i^^Hollister v. Benedict Mfg. Co., 113 U. S. 59, Smith v. Nichols, 21 
Wall., 112, 118, Reckendorfer v. Faber, 92 U. S. 347, Blandy v. Griffith, 
Fed. Cas. No. 1529, 3 Fisher 609. Blake v, Stafford, 6 Blatch. 195, 205. 
Hollister v. Benedict Mfg. Co., supra, "As soon as the mischief became 
apparent, and the remedy was seriously and systematically studied by 
those competent to deal with the subject, the present regulation was 
promptly suggested and adopted, just as a skilled mechanic, witnessing 
the performance of a machine, inadequate, by reason of some defect, to 
accomplish the object for which it had been designed, by the application 
of his common "knowledge and -experience, perceives the reason of the 
failure, and supplies what is obviously wanting. It is but the display of 
the expected skill of the calling, and involves only the exercise of the 
ordinary faculties of reasoning upon the materials supplied by a special 
knowledge, and the facility of manipulation which results from its habit- 
ual and intelligent practice; and is in no sense the creative work of that 
inventive faculty which it is the purpose of the Constitution and the patent 
laws to encourage and reward." 

101 Hillborn v. Hale, etc. Mfg. Co., 69 Fed. 958, 963. 



Characteristics of Invention 57 

bination in question exhibits such novelty as amounts to in- 
vention.""* 

The question of ability of a mechanic to make a device on 
first call is never involved when the device is not a mere de- 
velopment of existing forms, but is essentially unique. In 
such case, the idea of means is indubitably a creation of the 
mind and could not be a mere skillful change of something 
existing. 

To understand fully the difference between mere mechanical 
skill and invention, and to reconcile many seemingly adverse 
holdings, one must remember the existence of the "idea" as 
well as the substantial "means" in invention. Many a device 
covered by a valid patent, could have been produced by any 
skillful mechanic who had been told what was wanted. Often, 
as is* evident in the range of equivalents against which an in- 
vention is protected, other devices, totally unlike in substantial 
form would be quite as efficient means. The thing that is pro- 
tected, that is really patented, and hence is really the invention, 
is the idea of accomplishing the result by the described means 
or its equivalent. It is only when this idea of means could 
have been thought of by a skillful mechanic that the concept 
is lacking in inventive genius, not when the substantially oper- 
ating part, that is, the means itself, could have been devised 
by one informed of the idea.^®' 

io2Fougeres v. Jones, 66 Fed. 316. 

1^3 The foregoing discussion has been concerned chiefly with the fact 
that mere physical difference does not indicate invention, but the con- 
verse is equally true and mere physical similarity does not preclude it. 
This is apparent from the cases involving the new use of an old device. 
In Brown v. Puget Sound Reduction Co., no Fed. 383, the court said, 
"The Holthoff-Wethey furnace, according to the description of it in the 
specifications of the patent and the model exhibited to the court, is 
double decked, like the Brown furnace, and dosdy resembles it in other 
particulars, to such an extent that in a mere casual observer would prob- 
ably create an impression that the chief difference between the two is in 
the superior construction of the Holthoff-Wethey furnace; but to reach 
a just determination of the rights of the parties a close examination of 
the two patents is necessary." They found such actual difference as 
to warrant a decision of non-infringement. 

Neither does similarity of name preclude invention. Machine Co. v. 
Murphy, 97 U. S. 120, 125. 



58 Patents and Inventions 

Various matters, wholly extraneous to the substance of the 
contrivance itself, have been declared, recurrently, to have in- 
fluenced the court in its finding upon the question of inven- 
tion. Theoretically perhaps, the character of an alleged in- 
vention should be predicated solely uix^n the peculiarities 
by which the idea is manifested. But inasmuch as the de- 
termination is not directed by any definite limits, and there 
can be no scientific exactness, it is inevitable that the opinion, 
on which the determination actually rests, should be more or 
less afifected by other matters than simple contemplation of the 
concept itself. The most obvious and recurrent of these ex- 
traneous influences are here set out. 

The length of time required in evohnng the alleged inven- 
tion, it may be said at once, does not indicate whether it is in 
fact invention or not. ^'Originality is the test of invention. 
If that is successfully exercised, its product is protected; and 
it is as immaterial whether it is displayed in greater or less 
degree, or whether the new idea revealed itself to the inventor 
by a sudden flash of thought, or slowly dawned on his mind 
after groping his way through many and dubious experi- 
ments."^^* The production of the housewife who in a flash of 
inspiration sees a simpler way of performing a daily task, and 
that of an Edison who definitely strives and experiments for 
the means of accomplishing a certain result, may be equally 
entitled to the protection of a patent. 



105 



50* Blake v. Stafford, 6 Blatch. 195, 205; Bowman v. DeGrauw, 60 Fed. 
907. "Nor does it detract from its merit that it is the result of experi- 
ment and not the instant and perfect product of inventive power." Dia- 
mond Rubber Co. v. Consolidated Tire Co., 220 U. S. 438. 

105 O'Reilly v. Morse, 15 How. 62. 

The invention was a "flash of genius." O'Rourke Engineering Co. 
V. M'Mullen, 160 Fed. 933, 937. The Goodyear patent for the composi- 
tion of matter, which alone makes rubber usable for such purposes as 
tires, has been upheld many times and has been enormously capitalized. 
The invention was the result of mere accident, however. The inventor 
in an apparently hopeless search for a composition that would effectuate 
the purpose accidentally spilled some of a mixture on a hot stove, and the 
discovery was made. 

The patent upheld in Minerals Separation Co. v. Hyde, 242 U. S. 261, 



Characteristics of Invention 59 

Long existing demand. The fact, however, that others have 
been searching for a long dme for a means of accomplishing 
a certain result, does afifect the question of whether invention 
is present in the final revelation of such a means. The fact 
that others engaged in the search were unable to evolve a 
means, very clearly indicates that its production was beyond 
the power of mere mechanical skill. This is illustrated in the 
case of Brunswick-Balke-Collender Co. v. Thum.^°® The 
patent here involved was for **a bowling alley runway, com- 
prising a descending or downwardly sloped portion, beginning 
at the pit end of the alley, and returning towards the players' 
end, and an ascending or up-grade portion connected therewith, 
and located near the playing end of the alley, which merges 
into the ball receiving and retaining terminal of the runway, 
all in such manner, as hereinbefore described, that the balls 
put into the receiving end of the runway will roll downwardly 
toward the playing end of the alley, and then, ascending the 
up grade, or ascending portion of the runway, will pass thence 
onto the terminal or ball receptacle of the player's end of the 
return way without much shock or concussion.'' The court 
said, "The improvement consists in an extremely simple, and, 
it would seem, perfectly obvious, application of common knowl- 
edge as to the law of gravitation. Were there nothing in the 
record but the bare statement of facts above set forth, we 
would be inclined to concur with the court below in the propo- 
sition that: *Had any skilled mechanic been asked to perfect 
a structure that should gradually arrest the momentum of the 
returning ball, an ascent would obviously have been the struc- 
ture needed.' But in this case, as in the Singer Case, the evi- 
dence shows conclusively, and, indeed, without contradiction, 

followed from an unexpected discovery. The inventors were searching 
for the minimum amount of oil that could be used in a certain process 
for separating minerals from the undesirable quartz, or rocky material, 
when crushed. They observed that when this apparent minimum had been 
reached and the separation had ceased, a further reduction in the amount 
of oily substances caused separation to begin again. Investigation of this 
startling result disclosed the reason and the patent subsequently obtained 
for it was upheld. 
108 III Fed. 904. 



6o Patents and Inventions 

that this very demand for an arrester of the returning ball was 
before skilled mechanics for many years, and yet no one before 
Reisky hit upon the device which now seems so obvious. The 
defects of the old system were serious. The time required for 
the return of the ball was not uniform, and in its entirety was 
slow. If started with a shove, it came more quickly, but, if 
merely placed in the trough, it made but slow time at the be- 
ginning; and the player, desirous often of using a particular 
ball already played became impatient. Whether started with a 
shove or not, its velocity steadily increased, and it was running 
at its highest speed when it came home against the post or 
other ball at rest at the player's end. Moreover, this speed 
was generally so high that the surfaces of the balls were 
broken or chipped, piarticularly at the vicinity of the finger 
holes, and thus soon became unfit for use. This damage put 
the alley keeper to considerable expense in keeping the balls 
in fair condition, or in getting new balls, and also resulted in 
great dissatisfaction among the players at the damaged con- 
dition of the balls. There was also constant danger of an in- 
cautious player having his hand among the homed balls when 
the returning ball smashed in. The evidence shows that this 
condition of affairs had lasted for a long time; the old style 
of runway persisted for 40 years, during this period there was 
a constant demand for an improvement which would remedy 
the difficulty, and to that demand the skilled mechanic who put 
up bowling alleys responded. Various devices were contrived, 
— all of them, save one, independent of the trough itself. Sus« 
pended shot bags of various shapes, softie with appendages in 
the shape of patches or belts, weighted sections of hose pipe, 
pieces of stiff leather attached shutter-wise across the trough, 
pivoted levers having a piston entering a dashpot, are among 
the devices independent of the trough. It was also sought to 
retard the ball by successive transverse pieces of rope at the 
sides or bottom of the trough. So many of these devices are 
shown that it is apparent that the skilled mechanics were for 
years trying to find some way to properly retard the ball, and 
the proof conclusively shows that all of them were unsatis- 



. Characteristics of Invention 6i 

factory. Not one of them secured retardation by a change of 
grade of the trough itself, until the patentee disclosed his 
simple method, which has so commended itself, that now, 
within three years after the issuance of the patent, 90 per- 
cent of the existing bowling alleys have the new style, or 
Reisky, returnways. In the face of this evidence, we can- 
not hold that his improvement is devoid of patentable in- 
vention." 

Precisely this same doctrine has been declared by the Su- 
preme Court in the case of Krementz v. Cottle Co."® It had 
been claimed that the patent, which was for an improved 
collar button, formed out of a single piece of sheet metal, 
was anticipated by other devices to the extent that, as the 
lower court said, "any competent mechanic, versed in the 
manufacture of hollow sheet-metal articles, having before 
him the patents of Stokes and Keats, could have made these 
improvements and modifications, without exercising inven- 
tion, and by applying the ordinary skill of the calling." But 
the upper court responded that, "The view of the court be- 
low, that Krementz's step in the art was one obvious to any 
skilled mechanic, is negatived by the conduct of Cottle, the 
president of the defendant company. He was himself a pat- 
entee under letters granted April 16, 1878, for an improve- 
ment in the construction of collar and sleeve buttons, and 
put in evidence in this case. In his specifications he speaks 
of the disadvantages of what he calls 'the common practice 
to make the head, back and post of collar and sleeve buttons 
separate, and to unite tli'em by solder.' His improvement was 
to form a button of two pieces ; the post and base forming one 
piece, and then soldering to the post the head of the button as 
the other piece. Yet, skilled as he was, and with his attention 
specially turned to the subject, he failed to see, what Kre- 
mentz afterwards saw, that a button might be made of one 
continuous sheet of metal, wholly dispensing with solder, of 
an improved shape, of increased strength, and requiring less 

109 148 U. S. 556. 



62 Patents and Inventions 

material."^" The court therefore held the device to be the 
product of invention rather than mere mechanical skill. 

Immediate acceptance by public. Another circumstance 
closely akin to the fact that a device has been long sought for, 
is the fact that when the alleged invention was ofifered to the 
public it was immediately accepted and welcomed. The 
theory on which this influence is based is that immediate ac- 
ceptance indicates an existing demand on the part of the pub- 
lic, which was unsatisfied until the advent of the device in 
question. If the device might have been produced by mere 
mechanical skill, the public need would, in the foregoing 
theory, have called it forth at once instead of remaining un- 
satisfied. This has shown marked and admitted influence 
upon the courts in inducing them to find the presence of in- 
vention in the device. So closely allied is it to the circum- 
stance of long search that reference to both is usually found 
conjoined, and indeed, confused.^^^ In the Krementz case 
just quoted from, the court in reasoning to its conclusion of 
patentability, further said, *Tt was also made to appear that 
the advantages of the new button were at once recognized 
by the trade and by the public, and that very large quantities 
have been sold. 

"The argument drawn from the commercial success of a 

m Davis V. Parkman 71 Fed. 961. A claim of invention in turning thfe 
foot-rest of a row-boat upward at an angle of 45° was upheld on the 
ground that "various rude and unsatisfactory expedients had been used 
by many persons for the purpose of accomplishing what Davis accomp- 
lished by the simple expedient of turning up the foot-board, that this 
occurred to none of them, and that after it had been suggested by him 
it came into general use." American Gramophone Co. v. Universal, 151 
Fed. 595. McFarland v. Spencer, 23 Fed. 150. O'Rourke Engineering Co. 
v. M'Mullen, 160 Fed. 933, "Where the court has to deal with a device 
which has achieved undisputed success and accomplished a result never 
attained before, which is new, useful and in large demand it is generally 
safe to conclude that the man who made it is an inventor." In one case, 
at least, the fact of a long existing desire for a device was held to be 
evidence of stupidity on the part of the public concerned, rather than of 
genius on the part of him who 'answered the call. Butler v. Steckel, 
27 Fed. 219. 

112 Consol. Car Heating Co. v. American, etc. Corp. 82 Fed. 993. 



Characteristics of Invention 63 

patented article is not always to be relied on. Other causes, 
such as the enterprise of the vendors, and the resort to lavish 
expenditures in advertising, may cooperate to promote a large 
marketable demand. Yet, as was well said by Mr. Justice 
Brown, in the case of Consolidated Brake-Shoe Co. v. Detroit 
Co., 47 Fed. Rep. 894, *When the other facts in the case leave 
the question of invention in doubt, the fact that the device 
has gone into general use and has displaced other devices 
which had previously been employed for analogous uses, is 
sufficient to turn the scale in favor of the existence of inven- 
tion.' 

''Loom Co. V. Higgins, 105 U. S. 580, 591, was a case 
where the patented device consisted in a slight modification of 
existing mechanism, and it was contended that this slight 
change did not constitute a patentable invention ; but this view 
did not prevail, the court saying : *It is further argued, how- 
ever, that supposing the devices to be sufficiently described, 
they do not show any invention; and that the combination 
set forth in the fifth claim -is a mere aggregation of old de- 
vices already well known; aiid therefore it is not patentable. 
This argument would be sound if the combination claimed 
by Webster was an obvious one for attaining the advantages 
proposed, — one which would occur to any mechanic skilled 
in the art. But it is plain from the evidence, and from the 
very fact that it was not sooner adopted and used, that it did 
not for years occur in this light to even the most skilful per- 
sons. It may have been under their very eyes; they may al- 
most be said to have stumbled over it; but they certainly 
failed to see it, to estimate its value, and to bring it into 
notice. Who was the first to see it, to understand its value, 
to give it shape and form, to bring it into notice and urge its 
adoption, is a question to which we shall shortly give our 
attention. At this point we are constrained to say that we 
cannot yield our assent to the argument, that the combination 
of the different parts or elements for attaining the object in 
view was. so obvious as to merit no title to invention. Now 
that it has succeeded, it may seem very plain to any one that 
he could have done it as well. This is often the case with 



64 Patents and Inventions 

inventions of the greatest merit. It may be laid down as a 
general rule, though perhaps not an invariable one, that if a 
new combination and arrangement of known elements pro- 
duce a new and beneficial result never attained before, it is 
evidence of invention. It was certainly a new and useful re- 
sult to make a loom produce fifty yards a day when it never 
before had produced more than forty; and we think that the 
combination of elements by which this was effected^ even if 
those elements were separately known before, was invention 
sufficient to form the basis of a patent.' ""^ 

But the utility of a device can not be relied on absolutely 
as indicative of invention. It may not at all indicate a need 
that was unsatisfied. The demand may have arisen out of 
recent changes in conditions, and have been at once supplied. 
An illustration of this is seen in the case of Falk Mfg. Co. 

113 Hollister v. Benedict Mfg. Co., 113 U. S. 59, 72. "Such an increased 
utility, beyond what had been attained by devices previously in use, in 
cases of doubt, is usually regarded as determining the question of inven- 
tion." Barbed Wire Patent, 143 U. S. 275, "There are many instances in 
the reported decisions of this court where a monopoly has been sustained 
in favor of the last of a»series of inventors all of whom were groping to 
attain a certain result, which only the last one of the number seemed able 
to grasp." Expanded Metal Co. v. Bradford, 214 U. S. 366, 381 ; Adams 
V. Howard, 19 Fed. 317, 318, "The defense that the patent is anticipated 
by the lantern described in the prior application for a patent by Anthony 
M. Duburn is not tenable, because there is no evidence, except his appli- 
cation for a patent, that he ever invented such a lantern. It was con- 
ceded by his solicitors upon the application that the model accompanying 
his application would not answer for use as a lantern, although it was 
sufficient to illustrate the construction of the device; and the examiner in 
charge condemned the model as inoperative. As there is no evidence in 
the case to show that such a lantern as was described in the application 
and illustrated by the model was ever actually constructed by Duburn, 
sufficient does not appear to defeat the novelty of Irwin's invention." 
American Caramel Co. v. Thos. Mills & Bro:, 149 Fed. 743 ; Carnegie Steel 
Co. V. Cambria Iron Company, 185 U. S. 403, 429; Magowan v. New York 
Belting Co., 141 U. S. 332 ; Diamond Rubber Co. v. Consolidated Tire Co., 
220 U. S. 428, "It (the law) regards a change as evidence of novelty, 
the acceptance and utility of a change as a further evidence, even as 
demonstration." "Litigation shows and measures the existence of the 
public demand for its use." 



Characteristics of Invention 65 

V. Missouri R. R. Co.^" The device here involved was for 
welding steel rail- joints, and it varied but little from other 
well-known devices. It was argued that the patent was. valid, 
despite this resemblance, because the extent to which the de- 
vice was used, especially for welding electric streetcar rails, 
proved its character as an invention. The court held how- 
ever, that the utility was due to the fact that electric street 
car rails had come into general use only recently, and was 
not due to the fact that the device filled a long-felt want."® 

A warning against the overvaluation of utility as an indi- 
cation of invention, has been issued by the Supreme Court, 
which says,^^® "Counsel for the plaintiff in the case under con- 
sideration has argued most earnestly that the only practical 
test of invention is the effect of the device upon the useful 
arts — in other words, that utility is the sole test of invention, 
and, inferentially at least, that the utility of a device is con- 
clusively proven by the extent to which it has gone into gen- 
eral use. He cited in this connection certain English cases 
which go far to support his contention. These cases, how- 
ever, must not be construed in such way as to control the 
language of our statute, which limits the benefits of patent 
laws to things which are new as well as useful. By the com- 
mon law of England, an importer — the person who intro- 
duced into the kingdom from any foreign country any useful 
manufacture — was as much entitled to a monopoly as if he 

11* 103 Fed. 295. 

115 The court said, of the general topic, "The utility of a machine, article 
of manufacture, process, or an improvement thereof, is only allowed to 
turn the scale in favor of its patentability in those instances where the 
question whether the inventive faculty has been exercised is balanced 
with doubt and uncertainty. In such cases the conceded utility of a 
patented machine or process, or an improvement thereof, may well be 
allowed to sustain the patent; but conceded utility can not be permitted 
to have that effect in a case like the one in hand, where the process whicli 
is described and claimed as new is clearly old." Duer v. Corbin Lock Co., 
149 U. S. 216, "The mere fact that a patented article is popular and meets 
with large and increasing sales is unimportant when the alleged invention 
is clearly without patentable novelty." 

116 McClain v. Ortmayer, 141 U. S. 419, 427. 



65 Patents and Inientions 

had invented it. It is evident that these principles have no 
application to the patent system of the United States, whose 
beneficence is strictly limited to the invention of what is new 
and useful, and that the English cases con.^truing even their 
more recent acts, must be received with some qualification. 
That the extent to which a patented device has gone into 
use is an unsafe criterion even of its actual utility, is evident 
from the fact that the general introduction of manufactured 
articles is as often effected by extensive and judicious ad- 
vertising, activity in putting the goods upon the market and 
large commissions to dealers, as by the intrinsic merit of the 
articles themselv-es. The popularity of a proprietary medi- 
cine, for instance, would be an unsafe criterion of its real 
value, since it is a notorious fact that the extent to which such 
preparations are sold is very largely dependent upon the lib- 
erality with which they are advertised, and the attractive man- 
ner in which they are put up and exposed to the eye of the pur- 
chaser. If the generality of sales were made the test of patent- 
ability, it would result that a person by securing a patent upon 
some trifling variation from previously known methods might, 
by energy in pushing sales or by superiority in finishing or 
decorating his goods, drive competitors out of the market and 
secure a practical monopoly, without in fact having made the 
slightest contribution of value to the useful arts. The very 
case under consideration is not barren of testimony that the 
great success of the McClain pads and clasping hooks, a large 
demand for which seems to have arisen and increased year by 
year, is due, partly at least, to the fact that he was the only 
one who made the manufacture of sweat pads a specialty, that 
he made them of a superior quality, advertised them in the 
most extensive and attractive manner, and adopted means of 
pushing them upon the market, and thereby largely increased 
the extent of their sales. Indeed it is impossible from this tes- 
timony to say how far the large sales of these pads is due to 
their superiority to others, or to the energy with which they 
were forced upon the market. While this court has held in 
a number of cases, even so late as Magowan v. The New York 
Belting and Packing Co., ante, 332, decided at the present term, 



Characteristics of Invention 67 

that in a doubtful case the fact that a patented article had gone 
into general use is evidence of its utility, it is not conclusive 
even of that — much less of its patentable novelty/' 

The weight of such a factor is therefore absolutely inde- 
terminate. Indeed, it is not altogether possible to delimit the 
extent to which utility and public appreciation of a device ac- 
tually influence the courts to declare the device an invention, 
from a mere judicial use of such matters to bolster up an inde- 
pendent conclusion of patentability. A recent case well in- 
dicates the difference in effect of such a factor."^ The Circuit 
Court of Appeals^^® held the device to be lacking in inventive 
novelty and reversed the decision of the District Court, which 
had sustained the patent. This court in deciding invention to 
be lacking, said, "The decision of the court below appears to 
have been largely influenced by the consideration that the 
appellees' patent had gone into extensive and successful use. 
The fact that a patented device or process has gone into ex- 
tensive and successful use is often of value in determining the 
question of invention and patentability. It is referred to for 
the purpose of turning the scales in cases of grave doubt. It 
is of no value whatever where the question of the invention or 
patentability is free from doubt, and in any case its value de- 
pends largely upon the causes which produced it. It is often 
due to business ability in manufacturing, exploiting, and ad- 
vertising, and to the fact that prior conditions have not stimu- 
lated development. The appellees' process, originally patented 
in Great Britain, has been installed in Australia, Sweden, Fin- 
land, Chile, and Wales, and it is in the process of installation in 
Cuba. It is not improbable that in those countries the prior 
art may have been substantially unknown, and it is possible 
that the appellees' success there is referable to the fact alleged 
in the bill." The Supreme Court in turn reversed the Circuit 
Court of appeals, and as one reason for so doing said, the pro- 
cess ''promptly came into extensive use for the concentration 
of ores in most if not all of the principal mining countries of 
the world, notably in the United States, Australia, Sweden, 

11^ Hyde v. Minerals Separation Co., 242 U. S. 261. 
"8214 F, 100. 



68 Patents and Inventions 

Chile and Cuba and . . . because of its economy and simplic- 
ity it has largely replaced all earlier processes. This of itself 
is persuasive evidence of that invention which it is the purpose 
of the patent laws to reward and protect.""® Thus we find 
the same fact disregarded by one court and given considerable 
influence by another, because the reason why the device had 
been so generally adopted was not made clear by counsel but 
was left to the court's own guess. 

The opinion of experts is supposed to have considerable 
weight in the court's conclusion. Their testimony may be 
heard by the court and usually is. heard as a matter of course. 
The expert's true function is to explain and interpret techni- 
cal matters, and generally to elucidate the principles of the 
patented contrivance, and their difference from or resemblance 
to those of other contrivances. . But the expert may also be 
asked his opinion upon the ultimate issue as to whether the 
particular device differs from others in such a way as to have 
resulted from inventive genius. 



119« 



ii»Doig V. Morgan Mach. Co., 59 C. C. A. 616; Grant v. Walter, 148 
U. S. 547; Keystone Mfg. Co. v. Adams, 151 U. S. 139, "The argument 
drawn from the commercial success of a patented article is not always to 
be relied upon. Other causes such as the enterprise of the vendors and 
the resort to large expenditures in advertising, may cooperate to promote 
a large marketable demand." Apple v. Am. Shoe Mach. Co. 232 Fed. 603. 

11^' If it be true that the presence or absence of "invention" is a ques- 
tion of "law" for the court, rather than of fact for the jury, a mere wit- 
ness ought not to be permitted to give his opinion in regard to it. It is 
a conclusion for the judicial mind alone, based on all the evidentiary facts 
of the case. Even if the question of invention be treated as one of fact 
rather than of law, it is nevertheless the ultimate issue in the case. An 
answer to it is not a basis for the decision; it is the decision itself. To 
ask a witness his opinion as to the presence or absence of invention in 
the concept in question, would be to ask him his opinion as to how the 
court should decide the case, or what verdict the jury should bring in. 
There is some conflict of authority, in cases relating to other branches 
of law, as to whether such a question, whose answer "usurps the function 
of the jury" is permissible. On the whole, it seems to be proper. Cham- 
berlayne, Evidence sec. 1820; Wigmore on Evidence, sec. 1921. 

The point seems never to have been passed upon precisely in relation 
to inventions, but it is clear that courts do in fact admit the opinions of 



Characteristics of Invention 69 

The personality and mental equipment of the particular 
judge by' whom the issue is decided undoubtedly has influence 
upon the answer. A judge who can not drive a nail, to whom 
a mechanical toy is an inexplicable mystery, and chemistry in- 
comprehensible, will naturally tend to find invention in that 
which a more technically trained judge would recognize as 
mere mechanical skill. The reports show that certain judges 

experts in regard to the presence or absence of invention. Ideal Stopper 
Co. V. Crown Cork, etc, Co. 131 Fed. 244. 

The opinion of experts in regard to the facts from which the ultimate 
conclusion of invention or non-invention is to be derived may of course 
be given. Thus, witnesses may point out and explain the features and 
characteristics of the device which is described in the patent, and may 
state the extent to which any or all of these were already known before 
the alleged invention. They may also point out to the court or jury the 
essential as well as formal similarity and difference between an alleged 
invention and the already known art, or between two particular devices. 
"Experts may be examined to explain terms of art, and the state of the 
art, at any given time. They may explain to the court and jury the 
machines, models, or drawings, exhibited. They may point out the dif- 
ference or identity of the mechanical devices involved in their construc- 
tion. The maxim of *cuique in sua arte credum' permits them to be ex- 
amined to questions of art or science peculiar to their trade or profes- 
sion; but professors or mechanics can not be received to prove to the 
court or jury what is the proper or legal construction of any instrument 
of writing." Winans V. New York & E. R, Co, 21 How. 88, 100. Com- 
mercial Mfg. Co. v. Fairbank Co,, 135 U. S. 176, 187. In National Cash 
Reg. Co. v. Leland, 94 Fed. 502, objection was raised because an expert 
was asked to say whether a certain part of one machine was an "equiva- 
lent" of a part of another machine. The court held the question proper, 
saying, "The mechanism . . . was complicated, and an ordinary man un- 
skilled in mechanics, might well have failed to understand it completely. 
It was proper, therefore, that a witness skilled in mechanics and under- 
standing the term 'mechanical equivalent,' should be allowed to express 
to the jury his opinion of the relation of one machine to the other, subject 
to further direct examination and to cross examination, in order to bring 
out more clearly the grounds of his opinion." But compare Osgood 
Dredge Co. v. Metropolitan etc, Co., 75 Fed. 670; Jackson v. Allen, 120 

Mass. 64. 

So, also, experts may be asked whether or not the patent does reveal 
anything definite and, if so, just what it is. As stated in the text a patent 
which does not describe some real, comprehensible concept is a nullity, but 
the description need not be such as is clear to an untrained person. If it 



70 Patents and Inventions 

have more often decided in favor of the presence of invention 
than against it^ while others have the more often decided ad- 
versely to invention. One judge by whom many decisions 
have been rendered is well known among his friends to be lack- 
ing in any mechanical ability, and to hit the nail on the thumb 
more often than on the head. To one who has read many of 

conveys a clear idea to persons skilled in the particular subject matter, 
that is sufficient. It follows therefore that experts may be asked whether 
the description is clear to them, and to translate it, as it were. See Loom 
Co. V. Higgins, 105 U. S. 580. 

It is not only permissible for experts to give their opinion on these 
matters, but it is expressly desired by courts in abstruse and technical 
matters. Thus the court in Dececo Co. v. George E. Gilchrist Co., 125 
Fed. 293, 296, said, "There may be, and there probably is, an underlying 
suggestion applicable to both Mann and the present inventors which is 
fundamental, and which was first put to use in this art by the former. 
We are lacking, in this case, any explanation of the operation of either 
device by any scientific person, capable of applying and making clear the 
laws of pneumatics and hydraulics, each of which sciences are here in- 
volved in an occult manner. ... In the absence of the scientific explana- 
tion which we say is not in the record, we are unable to find this propo- 
sition proved. "Expert testimony should be introduced when difficult tech- 
nical questions are involved. Fay v. Mason, 127 Fed. 325; Greene v. 
Buckley, 135 Fed. 520. 

But courts are, of course, not in any way bound by the testimony and 
opinions of experts. "The admission of an expert witness is, of course, 
entitled to weight in the interpretation of technical terms employed in a 
patent. But the court is not necessarily concluded by such interpretation 
when other satisfactory evidence is available." Panzl v. Battle, etc. Co., 
138 Fed. 48. "Opinions of experts generally, though given under oath, are 
but arguments in behalf of the side calling them." Ideal Stopper Co. v. 
Crown Cork, etc. Co., 131 Fed. 244, 249; Winans v. New York & E. R. R. 
Co., 21 How. 88. Indeed there is occasional judicial suggestion of a 
feeling of general unreliability in expert testimony. "Unhappily we can- 
not accept without reservation the opinions of the experts who have been 
examined as witnesses, for they are necessarily partizans of the side call- 
ing them, and essentially advocates, and their opinions are contradictory, 
and tend to perplex, instead of elucidating, although they appear to be 
gentlemen of great ability and deserved eminence." Ideal Stopper Co. 
V. Crown Cork, etc. Co., 131 Fed. 244. 

One can find in the opinions suggestions of possible value to witnesses. 
For instance, "If the expert who is called to testify in such cases would 
only appreciate that he is not addressing electrical engineers, but laymen, 



Characteristics of Invention 71 

his decisions it is apparent that he tends to find invention in 
anything mechanically ingenious, and to be loath to see in- 
fringement where there is great material change. On the other 
hand, another judge whose opinions indicate a highly tech- 
nical education, is obviously conservative about dignifying a 
production with the name of invention and very ready in hold- 
ing an invention to have been infringed. It is, of course, per- 
fectly reasonable that what might seem to an untrained mind 
impossible of conception by any one but an inspired genius, 

and if, when undertaking to describe what some particular patent showed 
to a man skilled in the art, he would take the specifiv:ations and drawings 
of the patent as his text, instead of some conventional paraphrase of his 
own devising with its lettering entirely changed, he would materially 
lighten the labor of the court." Western Elec. Co. v. Rochester Tel. Co., 
145 Fed. 41. Again there is pertinent suggestion, in Bene v. Jeantet, 129 
U. S. 683, in the fact that although one witness testified as a matter of 
theory that a certain alleged anticipation could not work, the court decided 
against his proposition because an opposing witness testified that he had 
made a device according to the description of the alleged anticipation 
which did actually work. 

One frequent fault of expert testimony is its prolixity and volume. In 
Columbia Motor Car Co. v. Duerr, 184 Fed. 893, where the only question 
involved was whether the modern Otto type of compression gas engine 
was essentially identical with the old Erayton type, the record of the 
case filled 36 large volumes. In Am. Stove Co. v. Cleveland Foundry 
Co., 158 Fed. 978, the court, in commenting upon another long record of 
expert testimony, said, "As a contest between gentlemen learned in the 
science of t^e subject, it might be interesting if one had leisure, though 
it seems sometimes to run into very attenuated points. This prolixity 
seems not so much the fault of the witnesses as a mistake of the counsel. 
It is not the province of witnesses to advocate the cause of the party who 
calls him, nor to pass upon the questions of law and facts presented by 
the controversy. Frequently, an expert witness may be of much aid to 
the court in explaining matters which can only be appreciated and un- 
derstood by learning higher than the ordinary; but his province is to in- 
struct and not to decide ; and even the instruction is of uncertain value 
when it is colored from standing in the place of a partisan for one of the 
parties." 

The last sentences of this opinion are quite worth noting: "Usually the 
testimony of one competent witness on each side is enough to insure a 
full and fair elucidation of what is recondite in the case. The voice of 
a single teacher is worth more than a confusion of many tongues. And 
the expense is worse than useless." 



72 Patents and Inventions 

would be to a mind skilled in the art, nothing but the mechani- 
cal answer to recent call. The reality of the influence of the 
human factor upon the result is indubitably demonstrated by 
the very many flatly conflicting decisions upon the same state 
of facts in different circuits. A number of illustrations of 
such divergence of personal conclusion are noted in a later sec- 
tion. This influence of the unusual upon the result is sug- 
gested by the words of Mr. Justice McKenna, in giving very 
favorable interpretation to a recent patent. The device cov- 
ered by it was a gas check for large breech-loading guns. It 
had to withstand enormous pressure and great heat, yet it was 
made of tallow and asbestos. **If our purpose was specula- 
tive," said^e, "not practical, we might pause to wonder how 
such substances could produce such results under the conditions 
to which they are subjected, and by wondering we express in 
a way the quality of tlie invention."^^^ This intrusion of di- 
verse personalities into the decisions in patent cases can not 
help but make for even greater uncertainty of rights than is 
inherent in other subjects depending upon opinion. It fur- 
nishes at least one argument in favor of a special court for the 
adjudication of controversies arising under the patent laws. 
The opinion of other courts of concurrent or lower jurisdic- 
tion, even upon the same facts, is not of any compulsory effect 
upon the court which is trying a case. The statutes contain 
nothing upon the matter and the courts themselves have never 
recognized any obligation to follow the decisions of their co- 
adjudicators.^^^ Neither are the decisions of other courts of 

120 U. S. V; Anciens Etablissements, 224 U. S. 309, 323. As indicative 
of the effect of personality on the result, compare the different decisions 
of an United States court and an English one upon the same facts, in 
Haskell Golf Ball Co. v. Perfect, etc. Co., 143 Fed. 128 and 25 R. P. C. 
194. The decision in the Selden Patent case, Columbia, etc. v. Duerr, 184 
Fed. 893 is often said to have been affected by the court's disapproval of 
the patentee's unconscionably long delay in procuring his patent. 

For discussions of the proposal to establish a special court to try patent 
cases, see The Report of the Committee on Pat. Law, Am. Bar Assn., 
1910, 43 Oii. Legal News, 63; Editorials, 20 Green Bag 203, 22 Id. 408; 
H. K. Wagner, in 21 Case & Comment 265. 

121 Elec. Mfg. Co. v. Edison Elec. Lt. Co., 61 Fed. 834; Rubber Tire 
Wheel Co. v. Milwaukee Rubber Works Co., 154 Fed 358. 



Characteristics of Invention 73 

any appreciable practical influence upon the opinion of later 
judges. There is an occasional dictum to the effect that the 
decision of other courts, especially of the lower courts which 
are being reviewed, ought not to be overturned except upon 
strong evidence.^** But even these remarks are seldom found, 
and there is a distressing frequency of patents which have been 
held valid in one or more jurisdictions and invalid in others, 
and the number of times a lower court is reversed upon its 
opinion of the validity or scope of a patent is astonishing.^^* 
The opinion of a superior court, however, has at least a lit- 
tle weight when another suit on the same patent comes before 
the lower court.^^* 

122 Elec. Mfg. Co. V. Edison Elec. Lt. Co., 61 Fed. 834; NatT Fold'g Box 
& Paper Co. v. Elsos, 65 Fed. looi. 

123 As examples see, Am. Stove Co. v. Cleveland Foundry Co., 158 Fed. 
978; Consolidated Rubber Tire Co. v. Firestone Tire & Rubber Co., 151 
Fed. 237. The patent involved in this case was held valid in four circuits, 
(91 Fed. 978; 116 Fed. 629; 147 Fed. 739; and one unreported). Two of 
these decisions were reversed and the patent held invalid by the Circuit 
Court of Appeals, (Goodyear Tire & Ru1>ber Co. v. Rubber Tire Wheel 
Co., 116 Fed. 363; Rubber Tire Wheel Co. v. Victor Rubber Tire C, 123 
Fed. 85) ; and a writ oi certiorari to review one of these decisions was re- 
fused by the Sup. Ct. (Rubber Tire Wheel Co. v. Goodyear Tire & Rub- 
ber Co., 187 U. S. 641). The circuit court of appeals in the principal case 
sustained the validity of the patent. Its validity was declared by the Su- 

• preme Court in Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 
U. S. 428, Approved, Rubber Tire Co. v. Goodyear Co., 232 U. S. 413; 
Mayor of N. Y. v. American Cable Ry. Co., 60 Fed. 1016 ; Fireball Gas Co. 
v. Commercial Acetylene Co., 239 U. S. 156; 168. Compare also the con- 
flicting opinions as to who was the real inventor, in 229 Fed. 730 and 234 
Fed. 343. 

12* Anderson Foundry & Mach. Co. v. Potts, 108 Fed. 379; Rawson v. 
Western Sand Blast Co., 1 18 Fed. 575 ; Rubber Tire Wheel Co. v. Victor 
Rubber Tire Co., 123 Fed. 85; Cramer v. Singer Mfg. Co., 147 Fed. 917. 

When the issue concerns not the validity of a patent or its infringement 
but merely the propriety of a temporary injunction it would seem that 
final adjudications of other courts ought to have considerable influence. 
That they do so, is stated in Elec. Mfg. Co. v. Edisqn Elec. Lt. Co., 61 
Fed. 834, 836, "It may be difficult to formulate a rule that will comprehend 
all the conditions which could be presented, but we think it safe to say 
that in general, where the validity of a patent has been sustained by prior 
adjudication upon final hearing, and after bona fide and strenuous con- 



74 Patents and Inventions 

The weakness of influence of other adjudications is shown 
in the statement and proceedings of the Supreme Court in Rub- 
test, the matter of its validity upon motion for preliminary injunction is 
no longer at issue, all defense, except that of infringement, being re- 
served to the final hearing; subject, however, to the single exception that, 
where a new defense is interposed, the evidence to support it must be so 
cogent and persuasive as to improps the court with the conviction that, 
if it had been presented and considered in the former case, it would 
probably have availed to a contrary conclusion. In the consideration of 
such new defense of anticipation, regard should be had to the rule that 
such a defense is an affirmative one; that the burden of proof is upon 
him who asserts it ; and that the grant of letters patent is prima facie evi- 
dence that the patentee is the first inventor of the device described there- 
in, and of its novelty. Coffin v. Ogden, i8 Wall. 120; Smith v. Vulcanite 
Co., 93 U. S. 486; Lehnbeuter v. Holthaus, 105 U. S. 94; Cantrell v. 
Wallick, 117 U. S. 689, 6 Sup. Ct., 970; Barbed- Wire Patent, 143 U. S. 
275, 12 Sup. St. 443, 450. The propriety of this rule is enforced by the 
consideration that an adjudication in the case of a patent is not only ^ 
judgment inter partes, but is a judicial construction of a grant by the 
government, and in a broad sense deals with and determines the rights 
of the public. A patent is sui generis. By it the public, through its 
authorized representatives, grants a monopoly for a term of years in 
consideration of the surrender of the invention to public use upon ex- 
piration of the term. When, upon judicial contest, a cotnpetent court 
has sanctioned the grant, and determined the right thereunder, jthe mo- 
nopoly hereby granted ought not to be permitted to be invaded except 
upon a clear showing that the decision invoked in its favor was wrong. 
It is true that the prior adjudication does not deal with the supposed new 
defense, and does not affect the merits of that defense upon final hear- 
ing; but the fact that it was not presented, especially where the existence 
of the claim was known to and considered by counsel, is a circumstance 
to.be considered by the court in passing judgment ^pon the merits upon 
the hearing for an interlocutory injunction. We are of opinion that the 
rule was correctly interpreted by the court below, and properly applied 
to the case in hand. We are asked to determine the extent to which this 
court should go in review of an exercise of discretion by the court below 
in granting a preliminary injunction. There would seem to be some di- 
vergence of opinion in the circuit courts of appeals upon this question. 
The cases of Dudley E. Jones Co. v. Hunger, etc., Manuf'g Co., 2 U. S. 
App. 188, I C. C. A. 668, and 50 Fed. 785, in the fifth circuit; Watch Co. 
V. Robbins, 6 U. S. App. 275, 3 C. C. A. 103, and 52 Fed. 337, and Blount 
V. Societe Anonyme du Filtre Chamberland Systeme Pasteur, 6 U. S. App. 
337, 3 C. C. A. 455, and 53 Fed. 98, in the sixth circuit; Consolidated 
Electric Storage Co. v. Accumulator Co., 3 U. S. App. 579, 5 C. C. A. 202, 



Characteristics of Invention 75 

ber Co. v. Goodyear. ^^^^ Referring to the patent in suit, they 
said, **The validity of the claim of the testator was never 
shaken by any adjudication. It has been uniformly affirmed 
and sustained. If the subject was never brought here before, 
it was doubtless because those who were defeated elsewhere 
saw no ground for the hope of a more favorable result in this 
court. These considerations are very persuasive to the pre- 
sumption that the claim of Chas. Goodyear, the elder, that he 
was the original and first inventor is impregnable. If it were 
not so we can not doubt that it would have been overthrown 
in the numerous and several assaults would have been made 
upon it. We have, however, examined the question by the light 
of the evidence. . . .'' The uniformity of opinion of other 
courts upon the same matter did not, it appears, so satisfy the 
last court as to obviate its independent examination of the 
evidence. 

and 55 Fed. 485, in the third circuit; American Paper Pail & Box Co. v. 
National Folding Box & Paper Co., i U. S. App. 283, 2 C. C. A. 165, and 
51 Fed. 229, in the second circuit; and Davis Electrical Works v. Edison 
Light Co., 5 U. S. App. 611, 60 Fed. 276, in the first circuit, — are perhaps 
in antagonism, leading the court of the sixth circuit to certify the ques- 
tion to the Supreme Court. That court, however, in Watch Co. v. Robbins, 
148 U. S. 266, 13 Sup. Ct. 594, held that the fact that courts had reached 
contradictory results did not under the statute warrant the submission 
of the question or its decision, but might furnish ground for a certiorari 
upon proper application. We do not deem it needful at this time to enter 
that field of discussion, because, assuming the right of the appellate court 
to review to the fullest extent the decision of the court below, we are 
satisfied with the correctness of the conclusion reached upon the merits 
with respect to the issuance of the preliminary injunction." Approved in 
Breshnaham v. Tripp Giant Leveller Co., 7 Fed. 920. In National Cash 
Reg. Co. V. Am. Cash Reg. Co., 178 Fed. 79 the influence cppears to have 
been limited to adjudications of appellate courts. 

1269 Wall. 788, 793. The fact that a patent has been judicially declared 
to be valid does not obligate another court even to grant a preliminary 
injunction against infringement. "While it is a rule of comity, conven- 
ience, and expediency that deference shall be paid to the judgment of a 
co-ordinate tribunal sustaining the validity of a patent, its obligation is 
ot imperative." Vulcan Soot Co. v. Amoskeag Mfg. Co., 255 Fed. 88. 



76 Patents and hiventions 

§ 3. Originality — Prior Knowledge 

Anticipation and Novelty. The foregoing has been a 
discussion of the general proposition that nothing amounts to 
invention, within the meaning of the patent laws, which is not 
so different from prior existing actualities as to have necessi- 
tated a certain degree of uncommon mental operation. If the 
new product does not sufficiently differ from the existing 
knowledge as to be invention it is, technically, said to be "an- 
ticipated" by such knowledge. It is also said to lack novelty. 
The expressions are practically synonymous ; "anticipated'' and 
"lacking in novelty" are used interchangeably."^ As has been 
already said, the phrase "lacking in invention" is also syn- 
onymous with the others, being merely a different way of say- 
ing that a device has been anticipated and is lacking in novelty. 
Some writers treat "invention" and "novelty" as distinct, but 
it will be observed, that the same cases or type of cases are 
used by them to show when invention is present, and when not, 
as are used to illustrate the presence or absence of novelty. A 
production can not be an invention, when knowledge of all the 
prior art is conclusively presumed to be possessed by the in- 
ventor, unless it does possess novelty. It is only when inven- 
tion is used in the very broad sense of something actually new 
to the producer himself that it can be dissociated from novelty. 
For the sake of convenience it is often used in this sense, but 
there is no need for further discussion of the determination of 
the presence of patentable invention under this head. The con- 
text usually shows clearly with which meaning the word in- 
vention is employed. 

We come now to a discussion of the extent to which knowl- 
edge must exist to constitute anticipation, and the degree of 
proof oi its existence which is necessary. 

Foreign use. The one exception to the. requirement that 
a production must be new, to be a patentable invention, is in the 
fact that mere use in a foreign country does not preclude pat- 
entability of a device in this country. 

127 But see the apparent distinction made in Crandall v. Richards, 8 
Fed. 808. 



Prior Knowledge 77 

If the applicant for a patent appears to have been ignorant 
of such use, and therefore to be more than a mere importer, 
he is entitled to a patent despite the use. The statute of 1836 
and those following authorize issue of a patent for an inven- 
tion "not known or used by others in this country . . . and 
not patented or described in any printed publication in this or 
any foreign country/' In the earlier statutes the words "in 
this country," following "not known or used'' were absent. 
Under this phraseology it was held that use even in a foreign 
country deprived an inventor of his right to a patent monopo- 
ly."® But since the act of 1836 the Supreme Court has said 
that a patent issued to one who believed himself the true and 
first inventor is not avoided by evidence of mere prior use in a 
foreign country.^^^. In such case "the party who invents is not 
strictly speaking the first and original inventor. The law as- 
sumes that the improvement may have been known and used 
before his discovery. Yet his patent is valid if he discovered 
it by the efforts of his own genius, and believed himself to be 
the original inventor. The clause in question qualifies the 
words before used, and shows that by knowledge and use the 
legislature meant knowledge and use existing in a manner ac- 
cessible to the public. If the foreign invention had been printed 
or patented, it was already given to the world and open to the 
peofde of this country, as well as of others, upon reasonable 
inquiry. They w^ould therefore derive no advantage from the 
invention here. It would confer no benefit upon the com- 
munity, and the inventor therefore is not considered to be 
entitled to the reward. But if the foreign discovery is not 
patented nor described in any printed publication it might be 
known and used in remote places for ages, and the people of 
this country be unable to profit by it. The means of obtaining 
knowledge would not be within their reach ; and, as far as their 
interest is concerned, it would be the same thing as if the im- 
provement had never been discovered. It is the inventor here 
that brings it to them, and places it in their possession. And 
as he does this by the effort of his own genius, the law regards 

129 Whitney v. Emmet, Baldwin 303. 
isoQayler v. Wilder, 10 How. 476, 496. 



yS Patents and Inventions 

him as the first and original inventor, and protects his patent,, 
although the improvement had in fact been invented before, 
and used by others/'"^ 

It is to be noted that these cases, even though they sustain 
patents for devices already known abroad, do not conflict with 
the rule that an importer is not entitled to a patent. . They 
merely hold that one who has truly created something by his 
own mental action, and therefore believes himself to be not 
only a true inventor but also the first inventor, shall not lose 
his right to a patent because the same thing was known but 
not published in a foreign country. Proof that the alleged in- 
ventor had acquired his own knowledge from abroad, and 
therefore could not believe himself the inventor, but was merely 
an importer, would undoubtedly deprive him of his right to a 
patent.^'" 

The publication of knowledge, or the actual patenting of the 
device, even in a foreign country will, as said in Gayler v. 
Wilder, supra, be sufficient to deprive a device of patentability 
here. 

But if the foreign patent was taken out by the same inventor 
who is seeking a patent in this country the statute provides an 
exception, in § 4887. "No person otherwise entitled thereto 
shall be debarred from receiving a patent for his invention or 
discovery by reason of its having been first patented or caused 
to be patented by the inventor or his legal representatives or 
assigns in a foreign country, unless the application for said 
foreign patent was filed more than twelve months prior to the 
filing of the application in this country, in which case no patent 
shall be granted in this country. 

"An application for patent filed in this country by any per- 
son who has previously regularly filed an application for a 
patent for the same invention or discovery in a foreign coun- 

^31 O'Reilly v. Morse, 15 How. 62, no. Roemer v. Simon, 95 U. S. 214. 
Cornely v. Marckwald, 17 Fed. 83, Schillinger v. Greenway Brew'g Co. 
17 Fed. 244; Worswick Mfg. Co. v. Steiger, 17 Fed. 250, Doyle v. Spauld- 
ing, 19 Fed. 744. McFarland v. Spencer, 23 Fed. 150. Vacuum Engineer- 
ing Co. V. Dunn. 209 Fed. 219. 

132 Roemer v. Simon, 95 U. S. 214 and cases supra. 



Prior Knowledge 79 

try which, by treaty, convention, or law, affords similar privi- 
leges to citizens of the United States shall have the same force 
and effect as the same application would have if filed in this 
country on the date on which the application for patent for the 
same invention or discovery was first filed in such foreign 
country, provided the application in this country is filed within 
twelve months from the earliest date on which any such for- 
eign application was filed ; but no patent shall be granted upon 
such application if the invention or discovery has been patented 
or described in a printed publication in this or any foreign 
country, or has been in public use or on sale in this country, 
for more than two years prior to the date of filing in this 
country/' 

Extent of prior knowledge. Knowledge or use in this 
country, or description in a printed publication anywhere, con- 
stitute sufficient knowledge, by the very words of the statute, 
to deprive a production of novelty. The prior knowledge 
need not have been widespread to constitute anticipation ; it is 
sufficient if it was general enough to be satisfactorily proved. 
In a case as early as 1817, this particular point came before the 
court,^^^ which said "The law never could intend, that the 
greater or less use, in which it might be, or the more or less 
widely the knowledge of its existence might circulate, should 
constitute the criterion by which to decide upon the validity of 
any subsequent patent for the same invention. I hold it, there- 
fore, to be the true interpretation of this part of the Statute, 
that any patent may be defeated by showing, that the thing 
secured by the patent had been discovered and put in actual 
use prior to the discovery of the patentee, however limited the 
use or the knowledge of the prior discovery might have be.en.'* 

The Supreme Court itself has said,^^* "The prior knowledge 
and use by a single person is sufficient. The number is imma- 
terial." In this particular case the prior knowledge appears to 
have been held by at least five persons. While this dictum is 

133 Bedford v. Hunt, i Mason 302. 

134 Coffin V. Ogden. 18 Wall. 120. Twentieth Century Co. v. Loew Mfg. 
Co., 243 Fed. S7S, 378, "Prior knowledge and use by a single person would 
have been sufficient to require denial of the patent." 



8o Patents and Inventions 

undoubtedly sound as a matter of law, it is obvious that the 
actuality could seldom arise. If the knowledge were truly con- 
fined to one person, it is clear that the proof of such knowledge 
would, almost as a corollary, be confined to the same one per- 
son. In view of the tendency of the courts to scrutinize most 
carefully the evidence of alleged prior knowledge where, as 
they say, the incentive to perjury is extreme, it is decidedly im- 
probable that the testimony of one individual, that he, alone, 
possessed knowledge of the device before the time of the dis- 
puted invention, would be accepted as sufficient to show antici- 
pation. But it is not impossible ; as is clear from the case of 
Bannerman v. Sanford.^^*^ In this case the prior knowledge 
was actually embodied in a wooden model. Although this 
model was known to but one individual and no U3e of the de- 
vice had ever been made, the court held that it constituted an- 
ticipation, and quoted as authority the dictum of Coffin v. 
Ogden."^ 

Some confusion as to this proposition, that the extent of the 
prior knowledge is immaterial, is caused by the expression of 
courts which have failed to distinguish clearly between knowl- 
edge and the proof of knowledge. As we have said, the fact 
that but one or two persons testify as to the existence of the 
prior knowledge may well leave effective doubt as to its actu- 
ality. If a court being unsatisfied, for some such reason, as 
to its existence, puts its decision upon the ground merely of 
''absence of prior knowledge," there may be confusion as to 
whether the court disbelieved the evidence, or believing it, did 
not consider the knowledge proved to be sufficient. An excel- 
lent illustration of this looseness of thought and expression is 
found in the case of Lincoln Iron Works v. M'Whirter Co.^^® 
The statement is definitely made in this case that, "It is not 
enough to defeat the patent that some one other than Gilmour 
(the patentee) had conceived the invention before he did, or 
had even perfected it, so long as it had not been in public use 
or described in some patent or publication.'' This is in flat 

185 99 Fed. 294. 
187 18 Wall. 120. 
139 142 Fed. 967. 



Prior Knowledge 8i 

conflict with the cases just referred to and contrary to the 
statute itself. But on examination of the particular case, it 
appears clearly that the matter of prior knowledge, as antici- 
pation, was not involved in the statement quoted at all. The 
question was whether the patentee, Gilmour, had obtained the 
idea of the device which he patented from one Brown, to whom 
it was claimed the credit for the invention really belonged, and 
the court held that Gilmour had not obtained from Brown any- 
thing new or patentable. The court then did adjudge the 
patent void, in view of prior knowledge, for lack of novelty. 
This case stands as illustration also of the futility and positive 
harm of relying for the law upon statements excerpted from 
cases, instead of upon the facts and actual holdings thereof. 

Proof of prior knowledge. But although the prior knowl- 
edge need not have been general, its actual existence must be 
conclusively proved. This proof takes what may be consid- 
ered as two distinct forms, which however are incapable of 
exact differentiation. There must first be proved the existence 
of some knowledge as alleged; and then it must be demon- 
strated to the satisfaction of the court that this knowledge, as 
proved to have existed, is in truth enough like the subsequent 
alleged invention to constitute an anticipation of it. When the 
alleged prior knowledge exists in some tangible or substantial 
form, as in published works, or well known machines or pro- 
cesses, the first proof is comparatively simple; the real issue 
arises out of the attempt to identify this earlier knowledge with 
that of the patent in suit. On the other hand, if the prior 
knowledge is not embodied in any visible form, but rests only 
in the memory of witnesses, there is a decidecj issue of fact, 
arising from the necessity of proving the actual existence of 
this alleged knowledge, before the issue of similarity can arise 
at all. This is equally true where the alleged prior knowledge 
is embodied in substantial form, in drawings, or in written de- 
scription but the authentic date of these embodiments is dis- 
putable. In such case the same issue of existence of the al- 
leged knowledge arises before that of identity can be con- 
sidered. There are so many correlations, however, between 



82 Patents and Inventions 

the existence and the identity of knowledge, that the issues and 
the proof can not well be separately treated. The whole mat- 
ter must be considered as one issue, namely, that of the ex'st- 
ence of identical knowledge. 

The uncertainty of oral testimony is commented on by the 
Supreme Court, forcefully, in saying,"^ '*We have now to deal 
with certain unpatented devices, claimed to be complete antici- 
pations of this patent, the existence and use of which are 
proven only by oral testimony. In view bi the unsatisfactory 
character of such testimony, arising from the forgetfulness of 
witnesses, their liability to mistakes, their proneness to recol- 
lect things as the party calling them would have them recol- 
lect them, aside from the temptation to actual perjury, courts 
have not only imposed upon defendants the burden of proving 
such devices, but have required that the proof shall be clear, 
satisfactory and beyond a reasonable doubt. Witnesses whose 
memories are prodded by the eagerness of interested parties 
to elicit testimony favorable to themselves are not usually to 
be depended upon for accurate information. The very fact, 
which courts as well as the public have not failed to recognize, 
that almost every important patent, from the cotton gin of 
Whitney to the one under consideration, has been attacked by 
the testimony of witnesses who imagined they had made simi- 
lar discoveries long before the patentee had claimed to have 
invented his device, has tended to throw a certain amount of 
discredit upon all that class of evidence, and to demand that it 
be subjected to the closest scrutiny. Indeed, the frequency 
with which testimony is tortured, or fabricated outright, to 
build up the defence of a prior use of the thing patented, goes 
far to justify the popular impression that the inventor may be 
treated as the lawful prey of the infringer.''"^ 

The Patent as Evidence. The issuing of the patent itself 
gives rise to a presumption that the device covered thereby is 
novel. 

1*2 The Barbed Wire Patent, 143 U. S. 275, 284. 

1*3 Mere testimony of a single witness as to the prior existence of a 
device held too uncertain to show anticipation. Peters v. Union Biscuit 
Co., 120 Fed. 679. 



Prior Knoivledge 83 

The burden of proving the invalidity of a patent is thus 
thrown upon the party asserting it. "The burden of proof 
rests upon him, and every reasonable doubt should be resolved 
against him/'"" "Evidence of doubtful probative force will 
not overthrow the presumption of novelty and originality 
arising from the grant of letters patent for an invention. It 
has been frequently held that the defense of want of novelty or 
originality must be made out by proof so clear and satisfac- 
tory as to remove all reasonable doubt."^*^ In the case-quoted 
from, to overthrow the presumption that the patentee. Bell, 
was the first inventor, the other party introduced the testi- 
mony of nearly 200 witnesses to prove the priority of a device 
quite sufficiently identical with the patented one to deprive it 
of novelty. Despite this overwhelming abundance of corrobo- 
rative testimony, the court upheld the patent, questioning the 
validity of the testimony very largely on the ground that if 
such prior device had actually existed it would have been put 
into use or, at least, patented. 

Similarity of the prior knowledge as proved. When, 
however, the existence of the prior knowledge has been proved, 
the issue then becomes not one of evidence and credibility, but 
one of mere conclusion as to its similarity with the patented 
device. This may be treated by the courts as a question of 
fact, to be proved by expert testimony, or as a mere conclusion 
to be reached in some intuitive or logical way. 

But in either aspect, it is not a matter to be determined by 
rules of law, and could not be. Precedents may influence to 
a certain extent, as in other findings on the matter of inven- 
tion, but each case must, in the very nature of the subject, be 
determined solely on its own peculiar circumstances. The 
expression of individual findings as rules of law is not un- 
common in the reports, but it is wholly inaccurate, misleading, 

1*0 Coffin V. Ogden, 18 Wall. 120, 124. Parks v. Booth, 102 U. S. 96, 
Condit V. Brush, 132 U. S. 39, Am. Caramel Co. v. Mills & Bro., 149 
Fed. 743. 

1*1 Am. Bell Telephone Co. v. People's Telephone Co., 22 Fed. 309, 313, 
citing authority. Underwood Typewriter Co. v. Elliott-Fisher Co., 165 
Fed. 927. 



84 Patents and Invention's 

and a source of much confusion when other courts come to a 
different conclusion upon similar superficial facts. 

Use. The fact of use of a prior device has great influence 
upon the decision in each of these questions. As is obvious 
from the cases just referred to, actual use or absence of use, 
may be a determinant factor in the credibility to be given to 
evidence of the existence of the alleged prior knowledge.^" 
So, also, as will be seen, it plays a very great part in determin- 
ing the identity of the prior knowledge with that of the patent. 
The proposition is that an already existing idea of means 
which was never in fact put into use, was probably not essen- 
tially identical with the later one which was actually put into 
use. "In determining a question of this character (anticipa- 
tion) it is a pertinent and reasonable inquiry, if it be true that 
the disclosure of an earlier patent was substantially that of 

i**Deering v. Winona Harvester Works, 155 U. S. 286, 30i/"Graating 
the witnesses to be of the highest character, and never so conscientious 
in their desire to tell only the truth, the possibility of their being mistaken 
as to the exact device used, which, though bearing a general resemblance 
to the one patented, may differ from it in the very particular which makes 
it patentable, are such as to render oral testimony peculiarly untrust- 
worthy; particularly so if the testimony be taken after the lapse of years 
from the time the alleged anticipating device was used. If there be add- 
ed to this a personal bias, or an incentive to color the testimony in the 
interest. of the party calling the witness, to say nothing of downright 
perjury, its value is, of course, still more seriously impaired. If, as he 
says, in 1878, he tried a rigid extension and found it unserviceable, and 
subsequently, in the same season, he invented a pivoted extension, and it 
worked well, it is improbable that he would have cast it aside altogether 
at the end of the season, and taken up again the theory of a rigid ex- 
tension, and applied it not only to his own, but to a number of other 
machines. His excuse that the binder was incapable of doing satisfactory 
work during the season of 1879, by reason of the shortness of the grain 
that season, is evidence that it was inoperative. If it had been a success, 
he would hardly have thrown it aside permanently. Doubtless he did use 
a rigid extension of some sort; but if he ever used a pivoted device at all 
— of which we have considerable doubt — his efforts in that direction must 
be relegated to the class of unsuccessful and abandoned experiments, 
which,, as we have repeatedly held, do not affect the validity of a subse- 
quent patent." Gamewell Fire Alarm Telegraph Co. v. Municipal Signal 
Co., 61 Fed. 948. 



Prior Knowledge 85 

Jones, why during a period of many years was it not practically 
applied to the same use?"^*^ 

The statute does not provide that the prior knowledge shall 
have been put into actual use to constitute. anticipation. It is 
sufficient to deprive an alleged invention of patentability if it 
weie used or knoimi before. In many instances, there is prac- 
tical reason why use should be required before a finding of 
anticipation will be reached. Actual use often is necessary, 
as has been said, to show that the prior knowledge was identi- 
cal with the alleged invention; but, except as regards proof, if 
the identity of the knowledge is otherwise clear, the prior 
knowledge need not have been placed in use.^*® 

Even in cases where actual use has been held requisite to 
show the real similarity of the prior device to the usable one in 
question, only enough use to demonstrate this has been de- 
manded. Thus in Brush v. Condit^*^ only one embodiment of 
the earlier known device had ever been made. It had been used 
a very short time only, and then discarded. Nevertheless the 
court said, "With a strong disinclination to permit the re- 
mains of old experiments to destroy the pecuniary value of a 

1*5 Carnegie Steel Co. v. Cambria Iron Co., 89 Fed. 721, 738. 

^*^ Sayles v. Chi. & N. W. R. R. Co., 4 Fisher Pat. Cases. Hoe v. Miehle 
Printing Press Co, 141 Fed. 112. It must, however, be noted that in at least 
one case, very positive prior knowledge was held not to constitute anticipa- 
tion because it had never gone into practical use. This was so held even 
though the identity of knowledge was undisputed. Carnegie Steel Co. 
V. Cambria Iron Co., 89 Fed. 721. The case involved a patent for the 
process of mixing molten iron so as to produce uniformity by emptying 
the contents of several converters into a central basin, from which the 
combined contents were drawn off as desired. This was held not antici- 
pated by an earlier publication in which it was said, "Uniform results 
. . . can hardly be expected unless a number of blast furnace charges are 
mixed. This would seem to be the theoretical solution of the problem." 
Gayler v. Wilder 10 How. 476, 409, "The case was thus made to turn 
not on the priority of invention only, but upon that and the fact of its 
having been tested by experiments. This introduces a new principle into 
the patent law. The right under the law depends upon the time of the 
invention. An experimental test may show the value of the thing invented, 
but it is no part of the invention." Stitt v. Eastern R. R. Co., 22 Fed. 
649; Crown Cork & Seal Co. v. Aluminum Stopper Co., 108 Fed. 845. 

1*7 132 U. s. 39. 



86 Patents and Inventions 

patent for a useful and successful invention, and remembering 
that the defendants must assume a weighty burden of proof, 
I am of the opinion that the patentee's invention is clearly 
proved to have been anticipated by that of Hayes."^*® 

Abandoned Experiments, Whether or not abandoned ex- 
l^eriments are sufficient to anticipate a later production, is a 
question of evidence rather than of substantive law. It is 
occasionally said that * 'abandoned experiments do not antici- 
pate,'' as though it were a matter of law that they could not."® 
This, however, is not correct. Abandoned experiments not 
only can anticipate, theoretically, but have been held to do 
so."® The abandonment of experiments may result not from 
the inutility and unsuccess fulness of the device as developed, 
but from wholly extraneous causes, such as lack of capital to 
build machinery. If the essential identity of the prior device, 
concerning which the experiments were being made, with the 
particular device in issue is clear, no further showing is neces- 
sary."^ 

But if the alleged anticipated device was different in formal 
structure from the later one, the difficulty of proving that it 
was essentially identical with the later one is extreme. It is 
perfectly obvious that a device which will not work is not the 
same in form or construction as a device which will work. 

If the prior device has been actually built, so that its formal 
characteristics are clearly demonstrated, the question of an- 
ticipation becomes merely the usual issue, already discussed, 
of whether the change which made the latter device successful 
required invention or was merely mechanical. 

If the earlier device has not been formally embodied, there 
is then a complication arising from the difficulty of determin- 
ing exactly what the "experimental" device was, or purported 
to be, either in form or essence. With this in view, there are 
two possibilities in respect to an alleged anticipated device 

^*Hall V. McNeale, 107 U. S. 90; Bedford v. Hunt, i Mason 301. 
i*»The Corn Planter Pat. 23 Wall. 181, 211. Deering v. Winona Har- 
vester Works, 155 U. S. 286, 302. 
150 Crown Cork & Seal Cq. v. Aluminum Stopper Co., 108 Fed. 845. 
1" Sayles v. Chi. & N. W. R. R. Co., 4 Fish. 584. 



Prior Knowledge 87 

which has never been put into practical use. It may have been 
completed on paper, so that a device made according to the 
plans and description would work, but no device may have 
ever been made according to those plans. Or it may never 
have been completely developed, either substantially or on 
paper, to the extent that it would quite work. 

In the former case, it certainly, amounts to a prior descrip- 
tion of the later device, and the only possible question is 
whether this alleged description was in reality so clear that 
an expert would, in following it, produce the later device. In 
the latter case, the fact that it did not work, and could not be 
made to work, so far as the experimenter had proceeded, is 
generally treated as rather conclusive evidence that the knowl- 
edge represented by it was not sufficiently like the knowledge 
represented by a workable device to constitute anticipation. 

It is obvious, that the mere fact of prior knowledge not 
having been put to actual use, can not be absolutely relied on 
as negative invention. If the prior knowledge is clearly quite 
identical with the patented device, as for instance if it were 
shown in a published statement word for word and completely 
descriptive of the device, the anticipation could not logically 
be avoided by the fact that the utility of the device had not 
been generally recognized or that it had never been constructed. 
Even if the prior knowledge were only substantially similar to 
the patented device, the failure to use it might be due not to 
essential and inventive difference from the later device, but 
wholly to extraneous circumstances. ^^^ 

Drawings, models, etc. Where the prior knowledge exists 
in the form of a published description, or in the specification of 

152 Crown Cork & Seal Co. v. Aluminum Stopper Co., 108 Fed. 845. 
Crandall v. Richardson, 8 Fed. 808. "In a defence of prior use it is 
often a controlling circumstance, where there is doubt in the proof, that, 
considering the success of the later device, if it had been made previously 
it would have attracted the attention of the trade and immediately have 
gone into use; but it often happens that from various fortuitous circum- 
stances a complete invention, in a branch of business where much depends 
on energy and facilities and capital, fails to attract that attention which, 
under different and better auspices, it receives when independently pro- 
duced at a later day." 



88 Patents and Inventions 

c. patent, or in the existence of a mere model, the question of 
anticipation is, in the first inquiry, one of evidence only. Is 
prior knowledge surely proved? Does the publication, the 
patent, or the model clearly show the same device as the one 
in question? If it does, the 'device in question is anticipated. 

One text writer has taken a different position.^" He says, 
"Novelty of a machine or manufacture, is not negatived by any 
prior unpublished drawings, no matter how completely they 
may exhibit the patented invention, nor by any prior model, no 
matter how fully it may coincide with the thing covered by the 
patent. The reason of this rule is not stated with fullness in 
either of the cases which support it, but that reason is deducible 
from the statute and from the nature of drawings and of 
models. The statute provides, relevant to the newness of pat- 
entable machines and manufactures that they shall not have 
been previously known or used by others in this country. Now, 
it is clear that to use a model or a drawing is not to use the 
machine or manufacture which it represents; and it is equally 
obvious that to know a drawing or a model is not the same 
thing as knowing the article ' which that drawing or model 
more or less imperfectly pictures to the eye. It follows that 
neither of those things can negative the newness required '\yy 
the statute. Nor is the statutory provision on this point lack- 
ing in good reasons to support it. Private drawings may be 
mislaid or hidden, so as to preclude all probability of the pub- 
lic ever deriving any benefit therefrom; and even if they are 
seen by several or by many, they are apt to be understood by 
few or by none. Models also are liable to be secluded from 
view and to suffer change and thus to fail of propagation. 
Moreover, if a patent could be defeated by producing a model 
or a drawing to correspond therewith, and by testifying that 
it was made at some sufficiently remote point of time in the 
past, a strong temptation would be offered to perjury. Sev- 
eral considerations of public policy and of private right com- 
bine, therefore, to justify the rule of this section." 

This seems to be supported, in part, at least, by the case of 

153 Walker, Patents. 



Prior Knozdedge 89 

American Writing Machine Co. vs. Wagner Typewriter Co.^" 
in which the court said "It is clear, as pointed out by Mr. 
Walker, that knowledge of a model or a machine is not knowl- 
edge of the machine itself any more than knowledge of a model 
of Brooklyn Bridge is knowledge of that structure. But we 
think the rule should be restricted to a model pure and simple 
as the word is understood in common parlance, viz. : a pat- 
tern, a copy, a representation usually upon a reduced scale. 
The word "model'' should not be construed to mean the identi- 
cal device which is covered by the patent. If this were other- 
wise a defendant who produces the exact structure of the 
claims and proves that it was known prior to the date of the 
alleged invention is completely answered if the complainant 
can show that the anticipating structure was filed as a model." 

There are like expressions to be found in other cases. But on 
examination it is clear that the true rule is one of evidence 
simply. It is perfectly obvious that Mr. Walker has fallen in- 
to the common error of confusing the embodiment of the in- 
vention with the invention itself, and therefore he forgets that 
an invention might be known, or even used, even though it 
had never been tangibly embodied. In the particular case just 
referred to the court admits this, although it does lay down 
the rule of law quoted, in saying further, "In the case of a 
complicated machine a small model incapable of actual use may 
be filed for the purpose of explaining and illustrating the draw- 
ing ; that such a model alone would not anticipate is, of course, 
perfectly clear. On the other hand, it frequently happens that 
the applicant files as his model not a pattern or representation 
of the thing invented by him but the thing itself. Take, for 
illustration, an application for a patent for a horseshoe nail 
v/here one of the nails made by the inventor is filed as a model, 
can it be that a subsequent applicant can hold a patent for that 
nail or any feature thereof after proof of its prior existence 
and the knowledge thereof by the public." 

If one only keeps clearly in mind what Mr. Walker evidently 
forgot and the court in the Typewriter case saw but vaguely, 

"* 151 Fed. 576. 



90 Patents and Inventions 

namely, that an invention is a concept, not a tangible thing, 
then to know a drawing or a model is to know the invention 
which they represent. Mr. Walker's reasons why the existence 
of the drawing or model should be carefully scrutinized are 
sound. But to seriously contend that the concept which con- 
stitutes the invention could not be revealed to the public by a 
full and clear written description of it, or by its embodiment 
in miniature, would be ridiculous. 

In the case of Keys v. Grant^" the Supreme Court said it 
was properly left to the jury to decide whether a device de- 
scribed in a prior publication was in fact so similar to the 
patented device as to anticipate the latter. As the prior knowl- 
edge was represented only by this printed description, there 
could have been no question for the jury if it were a rule of 
law that published drawings could not anticipate. There is 
no more reason why unpublished drawings should not also an- 
ticipate, except the reason arising from the natural doubt as 
to their authenticity. 

The confusion arises from the fact that this issue of evi- 
dence is confused with the issue of whether the device as dem- 
onstrated in the earlier form is the same in essence as the 
later one. This latter issue is not one of evidence but on6 of 
fact, whether for the court or the jury. It is, again, the usual 
issue of whether the apparent change is such as amounted to 
invention or is a merely formal and mechanical change, and is 
determined by the same factors as in all such cases. 

But although the foregoing statements of the present writer 
are indisputable in theory, it must be recognized that the courts 
do in fact hold inventions not to be anticipated by prior knowl- 
edge shown by unpublished drawings, no matter how definite 
and positive and exact a knowledge those drawings may reveal. 
Such holdings are clearly indefensible as a matter of logic, but 
they are based rather obviously on the court's opinion of public 
good, and they must be reckoned with.^' 



L55» 



155 ii8 U. S. 25. 

i'5* In addition to cases already cited see, to this effect, Christie v. 
Seybold, 55 Fed. 69; Automatic Weighing Mach. Co., v. Pneumatic Scale 
Corp., 166 Fed. 288; See also the discussion under "date of invention," 
post. 



Prior Knowledge 91 

Summary. The foregoing discussion has been concerned 
simply with the evidence on which lack of novelty can be 
predicated and the weight usually given to the different forms 
which the evidence takes. It may be summed up as a general 
proposition by saying that a prior patent, model or other 
tangible embodiment offered as evidence of lack of novelty 
must set forth the knowledge in such clear and unequivocal 
form that a true and just comparison can be made of it with 
the subsequent device.^*^® But in the broadest aspect, after the 
weight to be given the evidence is settled, the comparison re- 
mains to be made; the question of identity of the two ideas 
of means still remains to be settled. This involves of course 
the whole matter of "invention'' and "novelty'' thus far dis- 
cussed. When the existence of the prior patent or other form 
of knowledge is shown, so that the existence of the knowledge 
is proved, and the issue thereby becomes one of identity, the 
form of the prior knowledge ceases to be material, except as 
stated in the foregoing discussion. If this is clearly borne in 
mind much of the confusion as shown in decisions, between 
conclusions as to identity of concepts, and proof of the exist- 
ence and characteristics of a particular concept, will be elimi- 
nated — a consumption devoutly to be desired. 

A warning may be here adverted to, which is sometimes 
uttered by the courts, against reading into the prior knowledge 
something which is in fact not there. The subsequent device 
may, when produced, seem so simple that its actual difference 
from prior knowledge may appear immaterial. Whether it is 
really immaterial or not, is the whole question of invention as 
against mere mechanical skill. As one court has said,^" "The 
line which separates invention from mechanical skill is at best 
a narrow one, and the difficulty of demarkation in this case is 

156 Underwood Typewriter Co. v. Elliott-Fisher Co., 165 Fed. 927, 930. 
"The prior patent or publication relied upon must, by descriptive words or 
drawings, or by both, contain and exhibit a substantial representation of 
the patented improvement in such full, clear and exact terms as to enable 
any person skilled in the art or science to which it appertains to make, 
construct, and practice the invention." Hanifen v. Godschalk Co., 84 
Fed. 649. 

15^ Ideal Stopper Co. v. Crown Cork & Seal Co., 131 Fed. 244, 246. 



92 Patents and Inventions 

enhanced by the fact that of necessity we look upon Young's 
invention with eyes instructed by Painter's and other subse- 
quent patents, and must take care that we do not in such light 
so reconstruct Young's patent as to see in it those possibilities 
which may seem very obvious now, but which may not have 
been disclosed by the patent itself; for, vague and uncertain 
as may be the line of demarkation between mechanical skill 
and invention, we could not deny Painter the right of inven- 
tion, unless the idea upon which his patent is predicated is so 
clearly set forth or suggested by Young that a mechanic, with 
Young's patent before him, could by mere mechanical skill so 
modify proportions or change the mode of operation as to 
overcome the difficulties which excluded the prior device from 
commercial utility, and thus make fruitful the inventive idea 
which before was futile, merely through lack of the mechanical 
skill needed for its development."^^® 

Lost Arts. Certain forms of what might be called prior 
knowledge, even when proved to exist and to be identical with 
that for which patent is sought, are held, as a matter of law, 
not to anticipate so as to deprive a later invention of patent- 
ability. Prior knowledge which had been forgotten at the time 
of a later production, will not suffice to deprive that later con- 
cept of patentability. The public is no more in possession of 
torgotten knowledge than if that knowledge had never ex- 
isted. It is generally believed that centuries ago certain arts 
existed whose fruits have come down to us today, but whose 
methods of procedure have been wholly lost to the world. It 
can not be doubted but that if some one were to resurrect, 
through his own creative power, the means of producing the 
same result, he would not be precluded from a patent by the 
tact that an art had once been known for producing the same 
result. In Gayler v. Wilder^^® the contention was set up that 
the patent involved was void for lack of novelty because one 
Conner had used a precisely similar device long before. The 
court rejected the contention, saying, "If the Conner safe had 

158 Topliff V. Topliff, 145 U. S. 156, 161. 

159 10 How. 477. 



Prior Knowledge 93 

passed away from the memory of Conner himself, and of those 
who had seen it, and the safe itself had disappeared, the knowl- 
edge of the improvement was as completely lost as if it had 
never been discovered. The public could derive no benefit 
from it until it was discovered by another inventor. And if 
Fitzgerald (the patentee) made his discovery by his own ef- 
forts, without any knowledge of Conner's, he invented an im- 
provement that was then new, and at that time unknown ; and 
it was not the less new and unknown because Conner's safe 
was recalled to his memory by the success of Fitzgerald's 
patent.""' 

In this particular case there was a strong dissenting opinion 
to the effect that Conner's knowledge, merely temporarily for- 
gotten, was not truly a "lost" art. Mr. Justice McLean said, 
"Conner's safe, as appears from the bill of exceptions, was 
used in his counting-house, being accessible to every one, some 
six or eight years. In 1838 it passed into other hands; but 
into whose hands it does not appear. In 1843, Fitzgerald ob- 
tained his patent. How long before that he made experiments 
to test the invention is not proved. At most, the time must 
have been less than five years. This is a short period on which 
to found a presumption of forgetf ulness. The law authorizes 
no such presumption. It can never become the law. It is not 
founded on probability or reason. The question is. Was Con- 
ner's invention prior to that of Fitzgerald? That it was of 
older date by some ten or twelve years is proved. And the 
instruction, it must be observed, was founded on the supposi- 
tion that both inventions were similar. 

"The instruction seems to attach great importance to the 
fact that Conner's safe was used only for his private purpose. 
This is of no importance. The invention is the question, and 
not the manner in which the inventor used it. The safe was 
constructed at the f oundery, and must have been known to the 
hands there employed. How can it be ascertained that Fitz- 
gerald was not informed by some of these hands of the struc-. 
ture of Conner's safe, or by some one of the many hundreds 

160 Coffin V. Ogden, 18 Wall. 125. 



94 Patents and Inventions 

who had seen it in his counting-house in the city of New 
York. It was to guard against this, which is rarely if ever 
susceptible of proof, that the act is express, — if the thing pat- 
ented was known before, the patent is void. If the fact of this 
knowledge in any one be established, it is immaterial whether 
the patentee may have known it or not, it avoids his patent." 
Mr. Justice Daniel, also dissenting, very pertinently said, "An 
attempt has been made to compare the doctrine propounded by 
the court to what it might be thought is the law as applicable to 
the discovery, or rather recovery, of the processes employed in 
what have been called the lost arts. This illustration is in 
itself somewhat equivocal, and by no means satisfactory; for 
if that process could certainly be shown to be the same with 
one claimed by the modem inventor, his discovery could 
scarcely have the merit of originality, or be the foundation of 
exclusive right. But, in truth, the illustration attempted to be 
drawn from a revival of a lost art is not apposite to the pres- 
ent case. The term lost art is applicable peculiarly to certain 
monuments of antiquity still remaining in the world, the 
process of whose accomplishment has been lost for centuries, 
has been irretrievably swept from the earth, with every vestige 
of the archives or records of the nations with whom those arts 
existed, and the origin or even the identity of which process 
none can certainly establish. And if a means of producing 
the effect we see and have amongst us be discovered, and none 
can either by history or tradition refer to a similar or to the 
identical process, the inventor of that means may so far claim 
the merit of originality, though the work itself may have been 
produced possibly by the same means. But not one principle 
drawn from such a state of things can be applied to a recent 
proceeding, which counts from its origin scarcely a period of 
fifteen years." 

That mere temporary forgetfulness of knowledge does not 

'prevent that knowledge from anticipating is shown in Brush 

V. Condit.^®^ Here the patent was for a device to hold the 

carbon in electric arc lights. It had been preceded by a simi- 

161 132 U. S. 39. 



Prior KmiyztieJge 95 

lar device, as was shown on the trial, but the earlier one had 
been used on only one lamp, for a verj* short time, and had 
teen then relegated to absolute desuetude. In ordinary par- 
lance, it had been completely forgotten, till called to mind by 
the later de\nce. The court, admitting that the disuse might 
tend to show dissimilarity with the later, used, one, but being 
satisfied that there was an identity nevertheless, held that the 
patented device was not patentable because of this earlier 
knowledge. 

The law is thus left open as to just how far a" device, art, 
etc., must have been forgotten to be technically "lost" and 
therefore, not anticipator)-. Theoretically, if it can be so far 
recalled as to be compared with the later device, it is not lost at 
all, merely forgotten. Practically, perhaps, the one who 
causes its recall to public memory by his new device is quite 
as worthy of a patent as one who absolutely creates a device. 
The majority opinion in Gayler v. \Mlder represents the prac- 
tical view ; the dissenting opinion, and such cases as Brush v, 
Condit, the theoretical one. 

Unrecognized results. Akin to the fact that lost knowl- 
edge does not anticipate is the fact that an unrecognized re- 
sult, an unperceived actuality, if such a phrase may be used, 
will not serve to anticipate a subsequent alleged creation. In 
the words of the court,^*^ *'novelty is not negatived by a prior 
accidental production of the same thing, when the operator 
does not recognize the means by which the accidental result is 
accomplished, and no knowledge of them, or of the method of 
its employment, is derived from it by any one." In Andrews 
V. Carman,^*^ one Green had patented a method of utilizing a 
principle of nature. It was claimed that the principle had al- 
ready, prior to his invention, been called into operation by 
devices accomplishing the same purpose. The court upheld 
the patent, saying, "A chance operation of a principle, unrec- 
ognized by any one at the time, and from which no informa- 
tion of its existence, and no knowledge of a method of its 
employment, is derived by any one, if proved to have occurred, 

i«2 Wickelman v. Dick Co., 88 Fed. 264. 
i«3 13 Blatch. 307, 323. 



96 Patents and Inventions 

will not be sufficient to defeat the claim of him who first dis- 
covers the principle, and, by putting it to a practical and in- 
telligent use, first makes it available to man/'^^* 

The holding is somewhat differently put in another case.^®'^ 
It was admitted that a certain earlier patented device ap- 
proached very near the device in question and might have 
been made into the same thing by a slight modification. It 
w^as held not to anticipate, however, because it was not de- 
signed by its maker for the purpose, and the fact that it could 
have been so modified and used, was not evident to an ordi- 
nary mechanic. ^^^ 

Scattered knowledge. Since an invention is itself, as 
such, a single idea, although it may be composed of many 
minor constituent ideas, a patent is not necessarily defeated 
by showing that some or all of the constituent ideas were al- 
ready well known. These constituent ideas, uncombined, and 
each by itself, are not in any sense the one composite idea into 
which the patentee has welded them. Knowledge of them by 
themselves is not knowledge of the combination or composite 
into which they may be welded. Of course, the combining of 
them into one whole may not have required the exercise of 
inventive genius. In such case the existence of the separate 
ideas would legally invalidate the patent for the composite 
idea. The occasional statements to the effect that if the un- 
combined elements do not show the combination, the patent 
for the latter is therefor valid, are obviously not meant in their 
literal significance. Contextually they mean only that if the 
elements do not show the combination, the patent may be valid. 
It is not necessarily so. But if in fact it did require invention 
to create the patented idea out of the separate ideas, then the 
patent is valid, however well known the separate ideas may 

164 Warren Bros. v. Owosso, 166 Fed. 309. 

i«5 Topliff V. Topliff, 145 U. S. 156, 161. 

i^^This indicates the substantial identity of invention and novelty. The 
particular device was not anticipated because to an ordinary mechanic the 
slight change necessary was not obvious — it would have taken more than 
mechanical skill to have made the change; hence the later device was a 
true invention. Tilghman v. Proctor, 102 U. S. 707, 711. 



Prior Knoivledge 97 

have been. Proof of the prior knowledge of these separate 
ideas is, therefore, pertinent in a suit, and should not be ex- 
cluded nor disregarded. But it does not of itself invalidate 
the patent attacked. It only forms a background against which 
the inventive quality of the idea patented can be determined. ^®^' 

Patentee's prior revelations. The fact that the prior 
knowledge was given to the world by the subsequent patentee 
himself does not keep it f ronx being such anticipation as will 
render invalid the later patent. To quote from one decision, 
**The various improvements or modifications in the process 
of manufacturing of solidified collodion which are disclosed 
in the earlier patents to the Hyatts are outstanding against this 
patent (also issued to the Hyatts) just as much as if they were 
issued to strangers. "^®^ 

If this prior knowledge has been covered by a patent, granted 
to the inventor and still held by him, the fact of anticipation 
will not matter, except as to the greater length of time that 
the monopoly would exist if it could be obtained under the 
later patent. If the earlier patent represents a subject matter 
sufficiently like that of the later one to constitute an anticipa- 
tion of it, anything that would be an infringement of the later 
sought patent ought, theoretically, to be an infringement of 
the earlier patent. If the prior knowledge is not protected by 
a patent, the inventor may avoid the evils of anticipation by 
patenting his earlier device, unless he has been guilty of allow- 
ing too great a time to pass. Nevertheless, although the earlier 
patent which would anticipate a later one ought to protect the 
inventor to the same extent as the later one asked for would 
do, the practical result is not always so equally balanced. 
Courts tend sometimes to find a device anticipated by a funda- 
mental earlier patent when they might not be inclined to find 

i««* Bates V. Coe, 98 U. S. 31 ; Smith v. Macbeth, 67 Fed. 137 ; Imperial 
Bottle Co. V. Crown Cork etc. Co., 139 Fed. 312; Packard v. Lacing-Stud 
Co., 70 Fed. 66. 

167 Celluloid Mfg. Co., v. Cellonite Mfg. Co., 42 Fed. 900, 905; So also 
Doig V. Morgan Match Co., 59 C. C. A. 616; Underwood v. Gerber, 149 
U. S. 224; Miller v. Eagle Mfg. Co., 151 U. S. 186; Bannerman v. Sanford, 
99 Fed. 294; Williamson v. Neverslip Mfg. Co., 136 Fed. 210. 



t 



98 Patents and Inventions 

the later device within the protected scope of the earlier patent 
if the case should come up from that direction. For this rea- 
son, it is sound policy for an inventor to cover all that he is 
entitled to in a single patent, or at least in patents applied for 
simultaneously, instead of delaying his application for any 
part independent of, but closely related to, his main inven- 
tion.^«« 

What constitutes priority. The priority of the alleged 
anticipating knowledge is not determined in relation to the 
date the patent is issued nor even that on which it is applied 
for. The knowledge, to anticipate, must have existed at the 
time the invention was made.^^^ The patent statute^^®' pro- 
vides that an inventor may have a patent if his device be "not 
known or used by others in this country, before his invention 
or discovery thereof.'' 

If public knowledge is proved to have existed before the ap- 
plication for the patent was filed, the patent is prima facie void 
because of anticipation, lack of novelty in the invention, or 
whatever one chooses to call it. In the absence of any other 
proof the invention is presumed to have first been brought in- 
to existence at the time the application was filed,^^® and it would 
therefore be subsequent to the public knowledge as proved. 
But, inasmuch as the date of the invention is not restricted to 
the date of application, the inventor is free to prove the real 
time at which his invention was brought into existence. 

Date of invention. The sufficiency of the evidence upon 
this point takes two forms, which for the sake of true com- 
prehension of the cases, must not be confused, although they 
are not always clearly distingtiished in judicial discussion.^^^ 
The first issue upon the evidence is whether it amounts to proof 

168 The right of including more than one invention in a single patent 
is discussed infra, 

i6» Klein v. Russell, 19 Wall. 433, 464. 

i«o' Section 4886. 

i^oDrewson v. Hatje, 131 Fed. 734; Automatic Weighing Mach. Co. 
V. Pneumatic Scale Corp., 166 Fed. 288. 

1^1 Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 166 Fed. 
288. 



Date of Invention 99 

of the real existence of any knowledge, regardless of the effect 
of that knowledge. The inventor might testify under oath that 
he had evolved his invention in complete detail long before he 
made his application, but, unless this were corroborated by 
other evidence, no court would be apt to fix the date of inven- 
tion according to his statement. The possibility of mere mis- 
take, to say nothing of deliberate falsehood, would be far too 
great. An invention may be an invention even though it be still 
locked in the mind of the inventor. But as Lord Justice Brian 
said, centuries ago,"^ "The devil himself knows not the thought 
of man,'' and if there has been no revelation of the invention to 
others, no substantial embodiment or perceptible expression of 
it, the proof, resting itself only in the statement of the soi- 
disant inventor is extremely difficult if not impossible. This 
was somewhat discussed in the case of Clark Thread Co. v. 
Willimantic Linen Co.^^^ "The allegation/' said the court, 
"that the invention of Conant, for which his said letters patent 
were granted, was made before the publication or sealing of 
Weild's patent requires more careful consideration. . . . The 
only evidence on the question as to the time of Conant's inven- 
tion is his own testimony, a species of evidence which, in cases 
of this kind, ought to be received with great caution." The 
court felt bound to construe the testimony very strictly against 
the patentee, "because such testimony, given for the purpose 
that this was, is necessarily subject to the gravest suspicion, 
however honest and well intentioned the witness may be." If 
the inventor could corroborate his statements by the testimony 
of others to the effect that he had revealed to them his invention 
in perfected form, it is possible that courts would accept such 
testimony as sufficient proof, despite its being merely oral 
statements depending on honesty and exactness of memory. 
Certainly, however, the testimony would be severely scrutin- 
ized arid would be accepted as proof with the greatest hesi- 
tancy. The statements of courts in respect to the strength of 
evidence necessary to prove knowledge alleged to anticipate a 

172 Yr. Bk. 17 Ed. IV. i, 2. 

173 140 U. S. 481. See also, Symington Co. v. National Malleable Co., 39 
Sup. Ct. Rep. 542. 



lOO Patents and Inventions 

patent, might be applied equally well to the evidence concern- 
ing the date of invention."* 

Occasional courts have gone to the extreme of saying, in 
effect, that the date of invention can not be fixed prior to the 
time when the invention has been actually embodied in sub- 
stantial form.^" These statements, while quite frequent, are 
logically incorrect, although they do seem to be the law — with 
some exceptions hereafter discussed. They appear to be based 
on either of two ideas. One is the vicious error already re- 
ferred to, that an invention is not a mere concept itself, but is 
the tangible device resulting from some concept involving in- 
ventive genius. On this assumption there could, of course, be 
no "invention" until there were a tangible contrivance ; but the 
assumption is, as we have said, wholly unwarranted by the 
cases.^^® 

The other idea behind the statement is, that the existence of 
the invention can not be satisfactorily proved without some- 
thing more than oral testimony. This idea certainly finds a 
great deal of support in the cases; and it is at least possible, 
that no amount of completely credible oral testimony would be 
accepted as sufficient, by itself.' 



177 



17* Supra. 

17^ Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 489; 
Ellithorp V. Robertson, Fed. Cas. 4408, 4 Blatch. 307; Automatic Weighing 
Mach. Co. V. Pneumatic Scale Corp., 166 Fed. 288, and cases therein cited; 
S3miington Co. v. National Malleable Co., 39 Sup. Ct. Rep. 542. 

I'^o Brown v. Crane Co., 133 Fed. 235, Grosscup J., speaking upon an issue 
other than the one here referred to, "Invention is not in my judgment 
confined to the concrete mechanical form into which an idea ultimately 
evolves. Invention is the idea itself, the burst of new thought, the dis- 
covery; and patentable invention is the conjunction of these with appro- 
priate and efficient and mechanical means." See other cases collected 
supra. 

177 A contrary opinion is expressed in Phila. & Trenton R. R. Co. v. 
Stimpson, 14 Peters 448, 461, "In many cases of invention, it is hardly 
possible, in any other manner, to ascertain the precise time and exact 
origin of the particular invention. The invention itself is an intellectual 
process or operation ; and like all other expressions of thought, can in 
many cases scarcely be made known, except by speech. The invention 
may be consummated and perfect, and may be susceptible of complete 



Date of Invention 



lOI 



For this reason it behooves an inventor to keep such visible 
record of the progress of his concept that, should the date of 
his invention be called into question, he can demonstrate be- 
yond a doubt the date at which he really evolved the concept 
that constitutes the invention. 

The form which this corroborating evidence takes is not 
material, so long as it demonstrates the existence of the in- 
vention claimed. In many cases it has been in the shape of 
drawings or written description.^^® 



* \ V 



J 



t 



description in words, a month, or even a year before it can be embodied 
in any visible form, machine or composition of matter. It might take a 
year to construct a steamboat, after the inventor had completely mastered 
all the details of his invention, and had fully explained them to all the 
various artisans whom he might employ to construa the different parts 
of the machinery. And yet from those very details and explanations, 
another ingenious mechanic might be able to construct the whole appara- 
tus, and assume to himself the priority of the invention. The conversa- 
tions and declarations of a patentee, merely affirming that, at some for- 
mer period, he invented that particular machine, might well be objected to. 
But his conversations and declarations, stating that he had made an 
invention, and describing its details and explaining its operations, are 
properly to be deemed an assertion of his right, at that time, as an in- 
ventor, to the extent of the facts and details which he then makes known ; 
although not of their existence at an antecedent time." See also, Bullock 
Mfg. Co. V. Crocker-Wheeler Co., 141 Fed. loi, 107. 

178 Bullock Elec. Mfg. Co. v. Crocker- Wheeler Co., 141 Fed. loi ; West- 
inghouse Elec. & Mfg. Co. v. Stanley Instrument Co., 133 Fed. 167; Dodge 
V. Porter, 98 Fed. 624; Draper v. Potomska Mills Corp., Fed. Cas. No. 
4072. 

Some confusion has been caused by the cases in which it is said that 
drawings and descriptions do not constitute an invention and have no 
effect upon a subsequently granted patent unless they are followed up to 
practical embodiment, or reduction to practice with proper diligence. 
Any such statement is on its face paradoxical, and is unsound. If the 
drawings, etc., do not at least evidence the invention, they could have no 
effect however diligently they should be followed up. If the invention 
does not exist until reduced to practice, it does not exist until then how- 
ever diligent the reduction may have been, and could not therefore take 
precedence of an invention evolved before the reduction to practice. All 
that such cases can stand for, in any sort of harmony with other cases» 
is either that the strength of evidence of the drawings, etc., is weakened 
by the lapse of time, or that the first inventor has lost his rights because 



I02 Patents and Inventions 

But here again it must be said emphatically that the decis- 
ions are not altogether in accord with the logical theory. In 
theory, as we have just said, the date of the invention is the 
date at which knowledge of the precise invention can be satis- 
factorily proved to have existed. And a drawing or a clear 
and specific description whose authenticity and existence on 
the date alleged is beyond dispute, ought therefore to be suffi- 
cient evidence to protect the inventor. But practically they 
seem not to be sufficient when there is a question of priority of 
invention between rival claimants for a patent. In such cases, 
the courts do say, however illogically, that the date of inven- 
tion is the date when the concept is first "reduced to practice." 
Thus, in Automatic Weighing Machine Co. v. Pneumatic 
Scale Corp.^^®" One Watson "conceived his invention, illus- 
trated it by a drawing, and disclosed it to others, as early as 
January lo, 1896. He reduced his invention to practice by the 
building of a machine in April, 1897. He filed his application 
March 11, 1898.'' One Thomas had filed an application for a 
patent for precisely the same invention in December, 1896. 
Thomas' application, therefore, was filed between the admitted 
date of Watson's concept in its definite and complete form 
and his embodiment of that concept in its tangible form. The 
filing was assumed to be the date of Thomas' invention. The 
issue was whether on these facts Watson or Thomas should 
be considered the first inventor. Logically, of course, Watson 
was admittedly the first inventor, he having definitely and pre- 
cisely formulated the concept which was the invention nearly 
a year before Thomas did so. But the decision of the court is 
peculiar. It held the date of Watson's invention to be April, 

of his long delay. If, in addition to holding that the earlier alleged in- 
ventor has lost the right of precedence which his drawings, etc., might 
have given and forfeited his possible monopoly, the subsequent and more 
diligent inventor's patent is upheld, the result is to uphold a monopoly in 
utter disregard of the fact that the invention covered thereby had been 
known by others before the patentee evolved it. Pennsylvania Diamond 
Drill Co. v. Simpson, 29 Fed. 288; Automatic Weighing Machine Co. v. 
Pneumatic Scale Corp., 166 Fed. 288. 
i78« 166 Fed. 2SS. 



Date of Invention 103 

1897, and declared it to be a rule that an invention dates not 
from the time of its full and definite conception but from the 
time it is first reduced to practice. "The authorities/' says the 
court, "seem to be conclusive upon the point that a conception 
evidenced by disclosure and drav^ings does not constitute an 
invention under the patent lav^s." The illogicalness of this 
position is justified by the court on a basis of public advantage. 

But the court states two qualifications to this rule. The first 
is that an application for a patent will be treated as a sort of 
constructive reduction to practice ; that is to say, invention may 
date from the filing of the application even though the con- 
cept has never actually been reduced to practice. As the court 
puts it, "From these established and seemingly contradictory 
principles of the patent law, first, that an invention in order 
to be patentable must be reduced to practice, and, second, that, 
under the statutes, reduction to practice is not essential either 
before or after the grant of a patent, it follows that there must 
be some stage of an invention when it must be presumed as a 
matter of law that the inventor has reduced his invention to 
practice ; and that stage is presumed to have been reached when 
he has done all that he is required to do to obtain a valid 
patent, namely, when he has filed a complete and allowable 
application; and hence the Patent Office has adopted the rule 
that the filing of such an application is constructive reduction 
to practice, and the federal courts have adopted the rule that 
such an application is conclusive evidence that the patentee has 
made his invention — that is, reduced his invention to practice 
— at least as early as that date.'' 

The second qualification is that the date of invention may 
be carried clear back to the time of the conception, even with- 
out any reduction to practice, if the inventor has used due dili- 
gence in attempting to reduce it to practice. "It is conceded," 
says the court, "that a patentee who has used 'reasonable dili- 
gence in adapting and perfecting' his invention can carry the 
date back to his drawings and disclosure. "^^®'* 

178" The right of an admittedly prior conceptor was declared to be lost 
because of his unreasonable delay in reducing his concept to practice, and 



I04 Patents and Inventions 

A working model not necessary. An actual working model 
of the invention is not required. In the case of Loom Co. v. 
Higgins^^^ the court quite precisely said, "An invention relat- 
ing to machinery may be exhibited either in a drawing or in 
a model, so as to lay the foundation of a claim to priority, if 
it be sufficiently plain to enable those skilled in the art to un- 
derstand it." 

Identification of knowledge. When a pateniee has succeeded 
in demonstrating to the court's satisfaction that he really did 
have a certain definite idea at the time alleged, there then 
arises the very different question whether this idea is the same 
one actually embodied in the patent. While it is frequently 
left as a fact for the jury, and is in one sense a question of 
fact, it is truly a question of psychological fact, a matter of 
conclusion, reached by the operation of the judicial mind upon 

the patent of a subsequent conceptor of the same idea was upheld, in 
One-Piece Lens Co. y. Bisight Co., 246 Fed. 450. 

"Now Reno is in this dilemma: if his disclosure was complete in Octo- 
ber, 1900, he was not reasonably diligent in waiting until the end of De- 
cember, 1902, to file his application; if he was reasonably diligent it was 
because he needed for the completion of his conception the intervening 
two years, and he does not antedate Stone & Brenchard. He himself sug- 
gests no reason for the delay, but the necessity of engineering study, and 
that did not interfere with an application if he had really fully conceived 
the invention. . . . He makes no claim that poverty or sickness stood in 
his way, nor that he was too engrossed with independent affairs, assum- 
ing that such would be any excuse. For these reasons his date of inven- 
tion must be in my judgment that of his application." United Ttmnel Co. 
V. Interborough, etc. Co., 207 Fed. 561, 569. 

"Diligence is of the essence of a proper relation between the conception 
and the reduction to practice of an invention, and must consist of a de- 
gree of effort that can fairly be characterized as 'substantially one con- 
tinuous act.' " Twentieth Century Co. v. Loew Co., 243 Fed. 373, 384. 

"As the evidence shows that both inventors used 'reasonable dilli- 
gence in adopting and perfecting' their inventions by reducing them ta 
practice, each can carry the date of his invention back to the date of his 
conception and disclosure . . . and the one who first conceived and dis- 
closed his invention and with reasonable diligence connected his concep- 
tion with its reduction to practice is the 'original and first inventor' under 
the statutes, without regard to which of the two first completed the re- 
duction to practice." Evans v. Associated, etc. Co., 241 Fed. 252. 

"9 105 U. S. 5S0. 



Date of Invention 105 

the perceptible actualities presented. Much the same prece- 
dents may be used, in arriving at a particular conclusion upon 
the evidence presented, as are used for guidance in determin- 
ing whether certain prior knowledge constitutes anticipation. 
The question is really the same. In the ascertainment of an- 
ticipation the inquiry is, whether the knowledge proved to 
have existed, prior to the patent, is sufficiently definite and 
similar to constitute substantially the same thing. When the 
date of invention is in issue, the inquiry, in the particular 
phase under discussion is, whether the concept proved to have 
existed prior to the application for the patent is sufficiently 
definite and similar enough, in essence, to that of the patent to 
be substantially the same invention as that patented. The fact 
that any change from the original idea whose date is proved, 
and that covered by the patent, was made by the originator of 
the idea himself does not matter. If the change has been of 
the essence, has required inventive genius, the date of the new 
invention can not be carried back to that of the original. **The 
invention or discovery relied upon as a defense must have been 
complete, and capable of producing the result sought to be 
accomplished; ... If the thing were embryonic or inchoat; 
if it rested in speculation or experiment; if the process pursued 
for its development had failed to reach the pomt of consumma- 
tion, it can not avail to defeat [or to protect] a patent founded 
upon a discovery or invention which was completed, while in 
the other case there was only progress, however near that 
progress may have approximated the end in view. The law 
requires not conjecture but certainty. If the question relates 
to a machine, the conception must have been clothed in sub- 
stantial forms which demonstrate at once its practical efficiency 
and materiality.""® And again,"^ "Although prior unsuccess- 
ful experiments in part suggested the construction which the 
patentee adopted and perfected, this fact will not defeat [nor 
protect] the patent.""^ Neither would incomplete, inchoate 

180 Coffin V. Ogden, 18 Wall. 120, 124. 

181 Whittlesey v. Ames, 13 Fed. 8$3, syl. 

i82Agawam Co. v. Jordan, 7 Wall. 583, 602. "The settled rule of law 
is that whoever first perfects a machine is entitled to the patent, and is 



io6 Patents and Inventions 

ideas of the invention suffice to carry the date of invention 
back of the date of application for the patent, against a show- 
ing of knowledge between the dates of the experiments and 
that of the application.^®^ 

As illustrative of the effect of collateral circumstances upon 
proof of the date of invention, is the case, just referred to, of 
Loom Co. V, Higgins/®* Here, one Davis professed to have 
invented a device, prior to Webster's production of it. The 
court rejected this claim, for lack of evidence, and said inci- 
dentally, "Another circumstance seems to us as having much 
weight in this connection. It was found that the loom No. 
50, and the Sterling loom, when completed in 1871, worked 
with wonderful success ; sometimes as many as sixty yards be- 
ing woven on one loom in ten hours. If Davis was the in- 
ventor of the wire motion applied to these looms, why did he 
riever apply for a patent for it? He was already a patentee 
of a different and inferior apparatus. He knew all about the 
method of going about to get a patent. He belonged to a 
profession which is generally alive to the advantages of a 
patent-right. On the hypothesis of his being the real inventor 
his conduct is inexplicable." 



the real inventor, although others may have previously had the idea and 
made some experiments toward putting it into practice. He is the inventor 
and is entitled to the patent who first brought the machine to perfection 
and made it capable of useful operation." 

183 For further authorities see the discussion of the inquiry as to what 
constitutes sufficient knowledge to anticipate. Westinghouse Elec. Co. v. 
Beacon Lamp Co., 95 Fed. 462; The Wood-paper Pat., 90 U. S. 566, 594; 
Allis V. Buckstaff, 13 Fed. 879; Hillard v. Fisher-Book-Typewriter Co., 
159 Fed. 439, 441, "Statements in a prior application relied upon to prove 
anticipation must be so clear and explicit that those skilled in the art will 
have no difficulty in ascertaining their meaning" ; Lincoln Iron Works v. 
M'Whirter Co., 142 Fed. 967. 

184 105 U. S. 580. 



CHAPTER III 



Utility 



The statute provides that an invention to be patentable must 
not only be new but must be ''useful'' also/®*^ It does not, 
however, say just how much usefulness there shall be, nor does 
it indicate what is meant by "useful." The interpretation is 
left open to the courts. It is clear from the decisions that 
"useful" is not used in the sense of "usable." If it were in 
this sense, the patent office would be encumbered with a great 
many fewer absolutely impractical "paper" inventions. There 
are, for instance, of record, in the neighborhood of 700 patents 
for various types of explosion turbines and parts thereof. Yet 
manufacturers are unanimous in saying that a usable,*practic- 
able, explosion turbine can not be built, so far as present knowl- 
edge of metals goes. It is evident therefore that these 700 
patents are not for "usable" devices; yef no one would deny 
that they are valid patents. 

The requirement of usefulness has in fact been restricted to 
the purpose for which the device is intended, and has not been 
connected with the actual operation of the device. In an 
early case it was contended strongly that the requirement 
should properly be applied to the device itself as well as to 
the purpose of it. The literal form of the statute possibly 
bears out this assertion, that a "useful art, machine, manufac- 
ture or composition of matter" is one which can be used. But 
the generally held judicial opinion was voiced in that case by 
Mr. Justice Story as follows :'®^ "To entitle the plaintiff to a 
verdict, he must establish, that his machine is a new and use- 

185 § 4886— **any new and useful art, machine, manufacture or com- 
position of matter"; §4893 — ^"if on such examination it shall appear . . . 
that the same (the invention) is sufficiently useful and important, the Com- 
missioner shall issue a patent therefore." 

186 Lowell V. Lewis, i Mason 182. 



io8 Patents and Inventions 

f ul invention ; and of these facts his patent is to be considered 
merely prima facie evidence of a very slight nature He must, 
in the first place, establish it to be a useful invention ; for the 
law will not allow the plaintiff to recover, if the invention be 
of a mischievous or injurious tendency. The defendant, how- 
ever, has asserted a much more broad and sweeping doctrine ; 
and one, which I feel myself called upon to negative in the 
most explicit manner. He contends, that it is necessary for 
the plaintiff to prove, that his invention is of general utility; 
•so that in fact, for the ordinary purpose of life, it must super- 
sede the pumps in common use. In short, that it must be, for 
the public, a better pump than the common pump ; and that un- 
less the plaintiff can establish this position, the law will not 
give him the benefit of a patent, even though in some peculiar 
cases his invention might be applied with advantage. I do 
not so understand the law. The Patent Act uses the phrase 
**usef ul jnvention" merely incidentally ; it occurs only in the 
first section, and there it seems merely descriptive of the sub- 
ject matter of the application, or of the conviction of the ap- 
plicant. The language is, 'when any person or persons shall 
allege, that he or they have invented any new and useful art, 
machine, etc,' he or they may, on pursuing the directions of 
the Act, obtain a patent. Neither the oath required by the 
second section, nor the special matter of defence allowed to 
be given in evidence by the sixth section of the act, contains 
any such qualification or reference to general utility, to estab- 
lish the validity of the patent. Nor is it alluded to in the tenth 
section as a cause, for which the patent may be vacated. To 
be sure, all the matters of defence or of objection to the patent 
are not enumerated in these sections. But if such an one as 
that now contended for, had been intended, it is scarcely pos- 
sible to account for its omission. In my judgment the argu- 
ment is utterly without foundation. All that the law requires 
is, that the invention should not be frivolous or injurious to 
the well-being, good policy, or sound morals of society. The 
word 'useful,' therefore, is incorporated into the act in contra- 
distinction to mischievous or immoral. For instance, a new 



Utility 109 

invention to poison people, or to promote debauchery, or to 
facilitate private assassination, is not a patentable invention. 
But if the invention steers wide of these objections, whether 
it be more or less useful is a circumstance very material to 
the interest of the patentee, but of no importance to the public. 
If it be not extensively useful, it will silently sink into con- 
tempt and disregard."^®^ 

Even though the device set forth in the patent be quite im- 
practicable, in that precise substantial form, it is not neces- 
sarily unpatentable. This is another illustration of the fact 
that it is the idea which is really patented and not the particu- 
lar form of embodiment described in the application. This 
is quite definitely settled by those cases which hold that a 
patent is infringed by some particular device, even though the 
latter would work successfully and the one patented would 
not, in the form described, work as well, if the change by 
which the successful operation was brought about was due 
solely to mechanical skill. "A machine can not be pronounced 
useless or impracticable, because it is susceptible of improve- 
ment which will obviate or prevent embarassments to its most 
perfect operation. If it could, then it would be the duty of 
the Courts to pronounce the patent for any machine void, so 
soon as ordinary mechanical judgment, or even ingenuity, had 
suggested an improvement which made it perform its desired 
office more rapidly or more perfectly."^®® 

Indeed, a patent is valid even though the device as literally 
described in it will not operate at all, if it can be made prac- 
tically usable by mere mechanical skill. Such facts as these 
came before the court in the case of Crown Cork & Seal Co. v. 
Aluminum Stopper Co.^^® This was a suit for infringement, 
and defense was made that the complainant's patent, on which 
his action was based, was void for lack of utility. The de- 

187 He repeats much the same thing in Bedford v. Hunt, i Mason 302 ; 
Ace. Kneass v. Schuylkill Bank, 4 Wash. 9, Fed. Cas. 7875. 

iss'Wheeler v. Clipper Mower & Reaper Co., 10 Blatch. 181, 189; Rogers 
Typograph. Co. v. Mergenthaler Linotype Co., 64 Fed. 799; Lamb Knit 
Goods Co. V. Lamb Glove Co., 120 Fed. 267. 

189 108 Fed. 845. 



no Patents and Inventions 

» 

fendants introduced, as evidence of this lack of utility, the 
fact that one Lorenz had tried to make bottle stoppers by fol- 
lowing faithfully the directions of the complainant's patent 
and had been unable to do so successfully. Other witnesses 
also testified that success could not be attained by following 
the directions. The trouble was that the flange of the stopper 
as described was too short to fold tightly over the crown of 
the bottle opening. A mere slight increase in length of this 
flange was all that was necessary to obviate the defect. This, 
the court said, any competent mechanic skilled in the art would 
have realized, and Lorenz and the others failed merely be- 
cause they were not sufficiently and properly conversant with 
the particular art. No invention was needed to remedy the 
inutility of the device. Hence the court held the patent to be 
valid, despite the fact that, followed literally, it was not usable. 
This court said specifically, "Utility being one of the quali- 
ties necessary to patentability, the granting of the patent is 
prima facie evidence of it; and this is not negatived by the 
fact that the device is susceptible of improvement, or that 
like inventions are so far superior to it that they may entirely 
supersede the use of it. Comparative utility between ma- 
chines or processes is no criterion of infringement, and com- 
parative superiority or inferiority does not necessarily import 
noninfringement; nor does it tend to avoid infringement if 
the defendant's device is simpler and produces better results, 
unless the cause is due to a difference in function or mode of 
operation or some essential change in character. Differences 
in utility do not necessarily import differences of invention. 
The burden is upon the defendant, in a case like this, to prove 
want of utility. He must show either that it is theoretically 
impossible for such a device to operate, or demonstrate by 
clear proof that a person skilled in the art to which the in- 
vention pertains has endeavored in good faith to make the 
patent work, and has been unable to do so. One of the reasons 
for the failure of the experiments of Lorenz and Hall may be 
found in the fact that they followed closely the directions in 
the drawing of the Painter patent as to the dimensions of the 



Utility 1 1 1 

devices shown therein. The object of the drawings filed in 
the patent office is attained if they clearly exhibit the princi- 
ples involved, and, in a case .like this, rigid adherence to the 
dimensions thus exhibited is not required or expected, and, if 
an intelligent mechanic would so proportion the dimopsions 
as to secure practical results, inutility is not demonstrated by 
experiments with material identical in form and proportion of 
parts with the drawings in the patent. The special reason as- 
signed for lack of utility consists in the shortness of the 
flange of the cup which constitutes the .bottle stopper, and in- 
crease in the length of the flange would cure the defect. That 
is so obvious that no inventive faculty need be invoked to sug- 
gest it, and the learned counsel for the defendants admits in 
his argument that the bottle stopper of Fig. 6 in the Painter 
patent can be made useful by sufficiently increasing the length 
of its flange so as to increase the depth of the cup. We can- 
not think that a decision adverse to the utility and operative- 
ness of this invention could safely rest on the ill success of 
experiments made by those who were not specially skilled in 
the art, and where it is not obvious that they were specially 
desirous of making their experiments succeed."^®® 

Furthermore, if the device as shown in the patent requires 
the application of something more than mechanical skill to 
make it operate successfully, the courts have not declared the 
patent invalid ; they have declared that the improved and oper- 
ative device is itself an invention, so different from the in- 
operative one as not to be anticipated by it.^®^ 

This doctrine, that practical usability is not necessary to 
patentability, and is not included in the "usefulness" of the 
statute, seems to be a perfectly logical and desirable one. It 
offers a maximum of protection without any deleterious re- 
sult. If it develops that a device has been patented which 
will not work in any practical way and can not by mere me- 
chanical change be made usable, no harm whatever is done by 
the issue of the patent. It secures to society no knowledge of 

ISO Ace. Brunswick-Balke-Collender Co. v. Backus etc. Co., 153 Fed. 288. 
1^1 See the discussions under utility as evidence of invention, and un- 
successful experiments as anticipation. 



112 Patents and Inventions 

any value to be sure ; but the public has not been deprived of 
anything which it could possibly desire. If it could be as- 
serted that the public was actually deprived of something, in 
being precluded from the use of the subject matter covered 
by the patent, the very claim itself would demonstrate beyond 
contradiction the fact that the device is actually of some use. 
On the other hand, the issue of a patent for a possibly inoper- 
ative or inutile device may be of great advantage to the pat- 
entee. Its seeming inutility may be due merely to mechanical 
defects which anyone .skilled in the art can remove. If there 
is ever call for the device, within the life of the patent, the 
patentee should have, as the statute provides, the monopoly of 
response to that call. If a change of circumstances should 
make usable a device theretofore wholly futile, the patentee 
should have the protection to which he is entitled for having 
revealed the information whereby the newly developed need 
may be satisfied. If the information which the patentee has 
given could not be made useful by mechanical skill whenever 
needed, or if the thought of using it to satisfy the newly de- 
veloped need itself amounted to invention, the existence of the 
patent would not prevent the maker of the inventive changes 
or the originator of the new and "non-analogous*' use from 
putting his own ideas into practice.^®^ 

There is just one possibility in which the valid patenting of 
an inutile device might result harmfully to the public. A later 
inventor might evolve an addition to the inoperative device 
w^hich, when used as a part of the patented device, or in con- 
nection with it, would make it operate successfully. The later 
invention could not be used alone. In such case it is con- 
ceivable that it could not be used at all without the consent of 
the patentee of the foundational device. In all probability, 
however, the courts would hold, under such circumstances, 
that the later device was not a mere patentable addition to the 
already patented device, but that the later inventor was en- 
titled to a patent for an entirely new device, which did not in- 
fringe and was not anticipated by the earlier unsuccessful de- 

192 See discussion under "new use for an old device." 



Utility 1 1 3 

vice. It is not difficult to comprehend that a device which 
works may be an entirely different device from one which does 
not work, even though the successful one contains, as an ele- 
ment of itself, the device which failed of success. This is 
seemingly the actuality in many of the cases holding devices 
not to have been anticipated by similar but unsuccessful ex- 
periments or by other unsuccessful forms of prior knowledge. 
It does not appear, however, to have been specifically con- 
sidered by the courts. 

- As a matter* of fact, the charge that a patent is void for 
lack of utility can by its very nature hardly come before a 
court for consideration. The only person in a position to 
make such a change would be one desiring himself to use the 
patented device. It could not be brought up as an abstract 
proposition. It could not be brought up by a patentee seeking 
to avoid an allegation of lack of novelty in his own patent. 
In the latter case, if the knowledge set up as anticipation did 
in fact amount to anticipation, it would do the patentee no 
good whatever to answer that the patent in which the antici- 
pating knowledge was shown was void. The prior knowledge 
would remain as proved, whether covered by a valid patent 
or open to the public. In such circumstances, the inutility of 
the earlier device could be set up, not as affecting the validity 
of the patent for it, but only as showing that it was not identi- 
cal with the later device. The only possible way, therefore, in 
which the invalidity of a patent, because of lack of usefulness 
in the device covered by it, could be called into issue, is by its 
being set up in answer to a charge of infringement. An al- 
leged infringer might answer, as has been done, that the com- 
plainant's patent was itself void for lack of utility. But, on 
the face of it, such a charge could not be sustained. If the 
defendant in such a case were in fact infringing, his device 
must be substantially the same as the one covered by the 
patent. The very fact that the infringer was using the equiva- 
lent of the patented device, and thereby infringing, would be 



114 Patents and Inventions 

conclusive evidence against him that the patented device could 
be used, that it was in fact "useful."^®^ 

Some slight confusion has been caused by the failure of 
courts to recognize the distinction between comparative utility, 
as showing the difference between inventions, and usefulness, 
as necessary to the validity of a patent. An example of this 
appears in Bliss v. The City of Brooklyn/^* Here, a patent 
had been issued for a particular form of hose coupling. Suit 
was brought against the city, for infringement of this patent. 
By way of defense it was contended that the device shown 
by the patent was ''worthless, and the patent, for this reason, 
invalid.'* The court said, "The law upon the subject of utility 
is not in doubt. No particular amount of utility is required to 
render an invention patentable, but there must be some. When 
the invention is shown to be worthless, the patent must fail. 
Such appears to be the case in the present instance. The evi- 
dence fails to disclose any instance where the combination de- 
scribed in the reissued patent of 1869 has been successfully 
used. The plaintiff himself testifies, that he does not know of 
any such coupling having been found to be of practical use. 
Although he sells couplings, he never sold any such, and only 
recollects three instances where their use has been attempted. 
His testimony satisfies me that the combination described in 
the patent here relied on proved inoperative and worthless." 
On this ground the court held the patent to be invalid. It 
might be very pertinently asked, why the city was using the 
device if it were in reality useless. The answer, as shown by 
the facts, is that the city was not using the device covered by 
the patent at all. Its device contained an additional feature, a 
peculiar lug which served to remedy the defects of the earlier 
device. "The introduction of this lug," said the court, "makes 
the combination a different combination from that described in 
the plaintiff's patent of 1869. But, it is said, that the intro- 
duction of the lug is simply an improvement. I cannot se 

198 "The patent was itself evidence of the utility of Claim 4, and the 
defendant was estopped from denying that it was of value" (dictum) 
Westinghouse Co. v. Wagner Mfg. Co., 225 U. S. 604, 616. 

i»* 10 Blatch. 521. 



Utility 1 1 5 

consider it. The two combinations are distinct, because they 
have different elements and attain a different result. In the 
one combination, no lug appears, and no practical result is 
attained. The introduction of the lug, for the first time pro- 
duced a combination which accomplished any useful result. 
An added element, which increases the efficiency of a combi- 
nation, of itself effective, is of the nature of an improvement; 
but, when the added element is essential to the production of 
any useful result, such an addition is not an improvement, but 
its use gives birth to the only patentable, because the first use- 
ful, combination." 

The real ground of the decision, therefore, appears to have 
been lack of substantial identity between the two devices, as 
demonstrated by the inutility of the earlier one. It was quite 
outside the scope of the case, and unnecessary, to hold that 
the patent sued on was invalid.^®'^ 

That "useful'' as employed in the statute appertains to the 
purpose of the device rather than to the device itself, is fur- 
ther indicated by the few cases in which patents have been de- 
clared invalid for lack of utility. One of the most illuminating 
of these cases is that of Rickard v. DuBon.^®® The complain- 
ant here had secured a patent for a process of treating to- 
bacco leaves, while still growing, in such a way as to produce 
spots upon them. The alleged purpose of the invention was 
to improve the combustion properties of the leaves. The 
court dismissed the suit, saying "The patent shows upon its 
face that it is intended to secure a monopoly in the art of 
spotting growing tobacco, without reference to improving its 
quality. The only fact that lends color to the theory that the 
treatment of the leaves by the patented process will improve 
the quaUty is that tobacco rich in organic salts of potash ab- 
sorbed from the soil has a porous carbon, and is therefore of 
superior burning quality. But tobacco in which lime replaces 
the potash has to that extent a compact carbon, and will ex- 
tinguish rapidly. According to the specification, lime can be 

1^5 In Gibbs v. Hoffner, 19 Fed. 323, "usefulness" is very evidently con- 
fused with lack of inventive novelty in view of the prior state of the art. 
"« 103 Fed. 868. 



Ii6 Patents and Inventions 

substituted for potash in applying the process of the patent. 
And the claims of the patent cover a treatment by any alkali. 
In authorizing patents to the authors of new and useful dis- 
coveries and inventions, congress did not intend to extend 
protection to those which confer no other benefit upon the pub- 
lic than the opportunity of profiting by deception and fraud. 
To warrant a patent, the invention must be useful; that is, 
capable of some beneficial use as distinguished from a perni- 
cious use.*' 

In another case,^®^ it was said, *ln this case the verified 
answer not only denies that the invention is new and useful, 
but alleges a specific fact, which, if true, disposes of the ques- 
tion of utility. It charges directly that the apparatus is used 
for gambling purposes, and that it cannot be used for any 
other purpose. Clearly, this is an allegation which, under the 
rule, should be treated as testimony in favor of the defendants, 
and, in view of the fact that the complainant has introduced 
no testimony to support the patent, it is, in my judgment, 
sufficient to entitle the defendants to a decree in their favor."^^® 

It is to be observed that this doctrine of invalidity is re- 
stricted to those cases in which the device can be utilized for 
an undesirable and "useless'' purpose only. The fact that it 
may be used in an immoral, harmful, or otherwise undesirable 
way does not deprive it of patentability, if it is capable of a 
beneficial use also. Thus, in Fuller v. Berger,^^® the patented 
device was a bogus-coin detector for coin operated slot-ma- 
chines. It appeared that the complainants, who were assignees 
of the inventor, had never used the device, nor allowed its 
use, on anything except gambling machines. The court found 
that there was no element of chance necessarily connected with 
the use of the detector, and that it could be applied to perfectly 
legitimate machines, as well as to those used for gambling, 
and would work on them equally well. It was decided there- 

i»7 Schultze V. Holtz, 82 Fed, 448. 

188 Animarium Co. v. Filloon, 102 Fed. 896; Mahler v. Animarium Co., 
XII Fed. 530. 
199 120 Fed. 274. 



Utility 1 1 7 

fore, that although the device could be used for immoral and 
harmful purposes, more readily, perhaps, than for innocuous 
ones, and had been only so used,, it could not be declared un- 
patentable on that account.^^®' 

ioo» It may be noted that while, as the foregoing discussion points out, 
the utility of an invention has nothing to do with its validity, the Patent 
Office occasionally takes an opposing position. It has been known to 
refuse patents on the ground that the alleged invention was impractical 
and would not work. 



CHAPTER IV 

The Person Entitled to a Patent 

Only an inventor is entitled to apply for a patent for 
the invention. The patent itself may, if the inventor requests, 
be issued to another,^^^ but the same section of the statute 
which provides for this declares "in all cases of an application 
•by an assignee for the issue of a patent, the application shall 
be made and the specification sworn to by the inventor or dis- 
coverer/' Another section provides^^^ "The applicant shall 
make oath that he does verily believe himself to be the original 
and first inventor or discoverer of the art, machine, manufac- 
ture, composition or improvement for which hie solicits a 
patent." The only exception to the requirement that the in- 
ventor himself must apply for the patent is that of § 4896 
which provides that, "When any person, having made any 
new invention or discovery for which a patent might have 
been granted, dies before a patent is granted, the right of ap- 
plying for and obtaining the patent shall devolve on his exe- 
cutor or administrator, in trust for the heirs at law of the de- 
ceased, in case he shall have died intestate; or if he shall have 
left a will disposing of the same, then in trust for his devisees, 
in as full manner and on the same terms and conditions as 
the same might have been claimed or enjoyed by him in his 
lifetime; and when any person having any new invention or 
discovery for which a patent might have been granted becomes 
insane before a patent is granted the right of applying for and 
obtaining the patent shall devolve on his legally appointed 
guardian, conservator, or representative in trust for his estate 
in as full manner and on the same terms and conditions as the 
same might have been claimed or enjoyed by him while sane; 
and when the application is made by such legal representatives 

200 ? 4895. 

201 § 4892. 



Person Entitled to a Patent 119 

the oath or affirmation required to be made shall be so varied 
in form that it can be made by them. The executor or admin- 
istrator duly authorized under the law of any foreign country 
to administer upon the estate of the deceased inventor shall, in 
case the said inventor was not domiciled in the United States 
at the time of his death, have the right to apply for and obtain 
the patent. The authority of such foreign executor or ad- 
ministrator shall be proved by certificate of a diplomatic or 
consular officer of the United States. The foregoing section, 
as to insane persons, is to cover all applications now on file 
in the Patent Office or which may be hereafter made.'* 

With this exception, a patent which has been isssued upon 
the application of one who is not the inventor of the device 
thereby covered is void. It is no defense to this invalidity that 
the application was made with the express consent of the in- 
ventor. In Kennedy v. Hazelton,^^^ the defendant had con- 
tracted to assign to plaintiff all patents which he might there- 
after obtain from the United States or Canada for inventions 
appertaining to steam boilers. After this contract he did in- 
vent an improvement on steam boilers. In order to evade the 
effect of his contract he entered into an arrangement with one 
Goulding whereby application for a patent for this invention 
was to be made in Goulding's name as inventor, though at the 
defendant's expense. Goulding, then, "at the request and by 
the procurement of the defendant'' filed an application and the 
patent was granted. He then assigned it to defendant. Plain- 
tiff brought suit in equity to compel defendant to assign this 
patent to him, according to the teems of the contract spoken 
of. The court refused this request on the ground that it could 
not compel the assignment of an absolutely void patent, and 
referred the plaintiff to an action at law for breach of court. 
In ifindihg that the patent issued to Goulding was void the 
court said, "The patent law makes it essential to the validity of 
a patent, that it shall be granted on the application, supported 
by the oath, of the original and first inventor (or of his execu- 
tor or administrator), whether the patent is issued to him or 

202 128 U. S. 667, 



I20 Patents and Inventions 

to his assignee. A patent which is not supported by the oath 
of the inventor, but applied for by one who is not the inventor,, 
is unauthorized by law, and void, and, whether taken out in 
the name of thp applicant or of any assignee of his, confers 
no rights as against the public. Jlev. Stat. §§ 4886, 4920. 

*'The patent issued by the Commissioner to the defendant as 
assignee of Goulding is only prima facie evidence that Gould- 
ing was the inventor of the improvement patented; and the 
presumption of its validity in this respect is rebutted and over- 
thrown by the distinct allegation in the bill, admitted by the 
demurrer, that the defendant, and not Goulding, was the in- 
ventor. 

"As the patent, upon the plaintiff's own showing, conferred 
no title or right upon the defendant, a court of equity will 
not order him to assign it to the plaintiff — not only because 
that would be to decree a conveyance of property in which the 
defendant, has, and can confer, no title but also because its 
only possible value or use to the plaintiff would be to enable 
him to impose upon the public by asserting rights under a 
void patent."""" 

Even if the true inventor joins in making application with 
some one else who was not jointly an inventor with him, the 
patent is void. Conversely if an invention has been the joint 
production of two persons, an application by one of them alone 
as inventor is insufficient to support a patent. In the words 
of the court,""* "it is one thing to say that the machine was 
invented by Louis Royer, for example, and quite another 
thing to say that it was invented by Herman and Louis Royer. 
If this machine was invented by Herman and Louis, then it 
would be untrue to say that it was invented by Louis only or 
by Herman. If, on the other hand, it was invented solely by 
Louis or solely by Herman, then it would be equally untrue to 
say that it was invented by Herman and Louis ; and you are to 
understand the law to be that if, in this respect, the patent 
contains a statement which is untrue, and not in accordance 

203 Hammond v.' Pratt, 16 O. G. 1235. 

204 Royer v. Coupe, 29 Fed. 358, 363 ; Hartshorn v. Saginaw Barrel Co., 
119 U. S. 664. 



Person Entitled to a Patent 121 



with the facts, then the penalty which the patentee pays is that 
his patent is absolutely void, and of no effect/'^®' 

Effect on real inventor s rights of another's application. 
Just how the rights of the real inventor would be affected by an 
application made in the name of some one else is not certain. 
If the application were made without the consent, express or 
tacit, of the true inventor, his right would not be in any way 
derogated thereby. On the other hand, if the true inventor, 
knowing that he was the inventor, should consciously permit 
application to be made by another as inventor, it is highly prob- 
able that this would be considered as conclusive evidence of 
his intent to abandon his invention to the public. To deliber- 
ately allow another to ask for a patent would be tantamount to 
£ gift of the invention to the world, since the inyentor would 
be presumed to know that the patent, if issued to the other, 
would be void and of no protection against use by the world. 
The only doubt might arise in those cases where one who was 
a joint inventor had applied for a patent in his own name, 
as sole inventor, honestly believing that to be the fact. Or con- 
versely, it might arise in cases where an inventor honestly be- 

205 Welsbach Light Co. v. Cosmopolitan, etc. Light Co., 104 Fed. 83, 43 
C. C. A. 418; DeLaval Separator Co. v. Vermont Farm Machine Co., 135 
Fed. 772, 68 C. C. A. 474, "It is true that the testimony of an inventor in 
derogation of the validity of his own patent is usually open to suspicion ; 
and in case like this, where he has made oath, for the purpose of obtain- 
ing a joint patent, that he and another inventor were the joint inventors 
of the subject-matter, the court should reject his subsequent testimony to 
the contrary, unless it carries a clear conviction that he did not intend 
to falsify originally, but made the oath under misapprehension or mistake. 
In this case the applicants were foreigners, supposedly unfamiliar with 
our law of patents; and they had agreed to be joint owners of the patent. 
Each had devised improvements which were within its general scope, and 
those which had been the wprk of Reuther were disclosed and illustrated 
in the specification and drawings, as well as were those which were the 
work of Melotte. Thus both had contributed to the invention in its en- 
tirety. Under these circumstances it is not strange that they did not dis- 
criminate between the things devised and the things which were not neces- 
sarily covered by the claims, and that they should have considered them- 
selves joint inventors of the entirety, although some of the improvements 
were independently devised by one and some of them by the other." Heu- 
lings V. Reid, 58 Fed. 868. 



122 Patents and Inventions 

lieved another to be entitled to joint credit, and made applica- 
tion, accordingly, jointly with the other. Whether such an ap- 
plication, would, of itself, preclude the true inventor from mak- 
ing another application when he should discover his mistake 
seems not to have been definitely passed on by the courts. 

Right not restricted to particular persons. The right 
to obtain a patent is not restricted to any class of persons as 
respects sex, age, race, citizenship or anything else. According 
to the statute, "Any person'' who has made an invention may 
have a patent therefore. Within the universal scope of this 
privilege come aliens,^^^ married women,* and children.^®^ 
While a corporation is a 'legal person,'' in some senses, it 
could not, of course, apply 'for a patent; it has no mind of its 
own with which to invent anything. But it may be made the 
assignee of a patent, and a patent, applied for by the inventor, 
may issue in the name of a corporation. 

Patent may be issued in name of another. Although 
only the inventor may apply for a patent, the patent itself may 
be issued to anyone else whom the inventor designates, by an 
assignment of his right which has been put on record in the 
Patent Office. *^^ The exclusive right of enjoyment of the in- 
vention is then, of course, in the assignee, the patentee named. 
The patent when issued is not rendered invalid by the fact 
that the person in whose name it Was asked to be issued, and 
to whom it was eventually granted, was no longer living at 
the date of issue. The statute reads in the disjunctive, in pro- 
viding that the patent shall grant the monopoly to the ''pat- 
entee, his heirs, or assigns." Hence if the patentee himself 
be dead, the grant takes effect in his heirs or assigns. This 
circumstance, the death of the patentee before actual issue of 
the patent, was one of the elements in the case of DeLaVergne 

206 Shaw V. Cooper, 7 Peters 2Q2. 

207 Fetter v. Newhall, 17 Fed. 841. R. S. Title XI, M 480, "All officers 
and employes of the Patent Office shall be incapable, during the period 
for which they hold their appointments, to acquire or take, directly or in- 
directly, except by inheritance or bequest, any right or interest in any 
patent issued by the Office." 

"8 § 4895 R. S. 



Person Entitled to a Patent 123 

Machine Co. v. Featherstone.*^^ The defendant, on suit for 
infringement, set up the contention that the patent was invalid 
because of that circumstance; that it was a requisite in all 
valid grants that there be a grantee in esse, a person capable of 
receiving the grant in praesenti ;^^^ that '^heirs'' was intended 
only to indicate an estate of more than life, and was not a 
word of purchase. The lower court held the patent void on 
this account. The Supreme Court reversed this decision, say- 
ing, "We are ito remember that it is to be assumed that James 
Boyle had made a useful invention and taken all the necessary 
steps to secure the benefits to be derived therefrom, and that 
in view of the policy of the government to encourage genius 
and promote the progress of the useful arts, by securing to the 
inventor a fair and reasonable remuneration, a liberal con- 
struction in favor of those who claim under him must be 
adopted in the solution of the principal question before us. 
It is also to be observed that, under the practice of the Patent 
Office, a considerable time necessarily elapses after a patent- 
for an invention is allowed before it actually issues; that the 
applicants often reside at a great distance ; that the cases when 
an inventor dies between the date of the application and the 
allowance, and the allowance and the issue, must be of fre- 
quent occurrence ; and that this may happen when neither the 
office nor the inventor's solicitors are aware of the death. The 
reflection is a natural one that Congress, which, in framing the 
provisions of the patent laws, must be presumed to have had 
these possible occurrences in mind, did not contemplate that 
all patents issued under such circumstances should be invali- 
dated by the death of the inventor. What, then, was the in- 
tention of Congress in providing for a grant to the "patentee, 
his heirs or assigns?" Must it be construed as merely a per- 
sonal grant to the individual, or may his personal representa- 
tives be treated as grantees ? In view of these considerations, 
as the language of the statute admits of a construction which, 

*i» 147 U. S. 209. 

*20 Citing Galloway v. Finley, 12 Pet. 264; Gait v. Galloway, 4 Peters 
332, holding a patent of land to a dead man and his heirs to be void. 
McDonald v. Smalley, 6 Pet. 261. 




124 Patents and Inventions' 

in sustaining the grant, effectuates the settled policy of the 
government in favor of inventors, our judgment is that that 
construction should be adopted, and that the statute should be 
read in the alternative, and the grant be treated as made to 
the patentee or his heirs or assigns." 

Who is the inventor. The inquiry then arises, who is 
the inventor of any particular device. This can only arise 
subsequently to the inquiry as to whether or not an invention 
has been made. It differs essentially from the latter inquiry in 
this way also: — the one assumes that some particular person 
has produced a device and seeks to determine whether or not 
that production amounted to invention ; the other assumes that 
3 certain device is an invention and seeks to determine to whom 
the credit for that invention shall be given. The one question 
is "what is an invention" and, correlatively, who is an inven- 
tor"; the other "who is the inventor," and, as a basis for the 
answer, "what is the invention." It is with this inquiry that 
we have now to deal. To whom belongs the credit for any 
particular invention? 

Since, as we have said before, an invention is an idea, the 
inventor is the person who has conceived the particular idea. 
The difficulty in answering the inquiry arises out of the fact 
that the idea of means is not always clearly delimited from the 
idea of the result sought to be produced and from the actual 
substantial embodiment of the idea. If the same person has 
conceived the idea of the result desired, and of the means of 
reaching or producing it, and has himself embodied the idea, 
there is, of course, no question. That person is the inventor. 
An issue arises, however, when different persons have accomp- 
lished the separate parts of the whole work. 

In the case of the electric telegraph, for instance, it is com- 
prehensible that one person might have conceived and promul- 
gated the idea of using electricity for the transference of in- 
telligence. He might have been the first to suggest that it 
would be a very desirable and beneficial result, if it could be 
accomplished. Another, starting with this idea, might evolve 
an idea of means for accomplishing this result; he might de- 



Person Entitled to a Patent, 125 

vise the apparatus by which it could be done. A third person 
might do the technical work of constructing this apparatus, of 
making the necessary coils and keys, even of selecting the 
type of wire that would best carry the current and figuring 
the power of the magnets necessary. In such case it is evident 
that only the second of these three persons would be entitled 
to reward as an inventor. The first has been, perhaps, a 
dreamer and a visionary, but he has given the world nothing 
more than, at most, an aspiration toward which to strive. He 
has not furnished anything whatsoever toward the attainment 
of that aspiration. He has conceived a result, only ; not the 
idea of an art, machine, manufacture, or composition of mat- 
ter. The third person has been nothing more than a mechanic. 
He has simply embodied the idea of the second person and 
made what the second directed him to make, using his techni- 
cal skill in making it as effective as possible. He has done only 
what any competent mechanical engineer skilled in that par- 
ticular trade could have done. The second person, however, 
has truly given something to the world. He has given a knowl- 
edge of how to reach the desirable result pointed out by the. 
first. 

As this example is put, the division of accomplishment is 
clear and sharp. But is it conceivable that the line of distinc- 
tion might almost be undiscemable. Suppose, for instance, 
number two had not conceived a distinct idea of means, but 
had only suggested that electricity might be used for the trans- 
mission of intelligence by means of some arrangement whereby 
the current could be interrupted and the interruptions record- 
ed. If, from this suggestion, the third man had evolved an 
actual arrangement of magnets and keys whereby this re- 
corded, or audible, interruption could be systematically ac- 
complished, to whom then would belong the credit of the in- 
vention? The first of these gave something more than a gen- 
eral idea of result — if not precisely an idea of means, it was 
at least an idea of result by means of which to produce an- 
other result. On the other hand, the second man has done 
something more than merely to carry out the directions of the 



126 Patents and Inventions 

first. • He has created something, the particular means, by 
which the suggested results are accomplished. Yet what he 
did might be something that any competent person trained in 
electrical engineering could have done if given the fundamen- 
tal suggestion produced by the other person. If this be the 
case, the benefit to the public is due to the first of the two. 

Cases such as this arise not infrequently, and it devolves 
upon the court to decide which of the two is entitled to the 
reward given for invention. The question is absolutely im- 
possible of determination, of course, by any rule of thumb. 
Like practically all the other issues of the patent law, each 
case must be decided in accord with its own particular cir- 
cumstances. Each court must decide for itself what is the real 
invention, and which of the alleged inventors has in fact given 
it to the world. If anyone might have envisioned the result, 
but not. any technician could have produced the means of at- 
taining it, credit belongs to the latter. If however it took 
more than the mere ordinary course of mind, under the cir- 
cumstances, to think of the result in such terms of means, 
however indefinite, that any technician could thereafter ac- 
complish it, the credit is due the abstract thinker. The only 
value which particular precedents can have is to indicate the 
various factors which have influenced other courts.^^® 

208 Pitts V. Hall, 2 Blatch. 229. "Now, there is no doubt that a person, 
to be entitled to the character of an inventor, within the meaning of the 
Act of Congress, must himself have conceived the idea embodied in his 
improvement. It must be the product of his own mind and genius and 
not of another's. Thus, in this case, the arrangement patented must be 
the product of the mind and genius of Carey, and not of Bowers' or 
Fowler's. This is obvious to the most common apprehension. At the 
same time, it is equally true that, in order to invalidate a patent on the 
ground that the patentee did not conceive the idea embodied in the im- 
provement, it must appear that the suggestions, if any, made to him by 
others, would furnish all the information necessary to enable him to 
construct the improvement. In other words, the suggestions must have 
been sufficient to enable Carey, in this case, to construct a complete and 
perfect machine. If they simply aided him in arriving at the useful re- 
sult, but fell short of suggesting an arrangement that would constitute 
a complete machine, and if, after all the suggestions, there was some- 
thing left for him to devise and work out by his own skill or ingenuity, 



Person Entitled to a Patent 127 

In general it may be said that when the concept is that of 
a definite machine, manufacture or composition of matter, .the 
one who conceives it is the inventor, rather than the one who 
ingeniously figures out the way to embody the concept. This 
is illustrated by the case of Huebel v. Bemard.^^® Bernard 
had conceived the idea of overcoming certain objections in 
the customary type of sponge and soap holders for bath tubs, 
by making the holder of a peculiar form. He employed Huer 
bel to make a holder for him and pointed out the distinctive 
and dominating feature of his improvement. He did not give 
Huebel any definite drawing or specifications however. Hue- 
bel having done the work claimed the invention. The court 
admitted that he had '*made a neater and more perfect device 
than that in the mind of Bernard, at the time of the communi- 
cation of his idea," but they credited the invention to Bernard, 
on the ground that Huebel had used only mechanical skill. 
On the other hand, the idea of an indefinite .machine, etc., only 
vaguely conceived in its details, and known by its results 
rather than by its construction, is really only an idea of a re- 
sult to be accomplished — namely the creation of a machine 
having the value or the effect of the machine desired. And 
if the concept is one of a desirable result only, it is not a 
patentable invention (if "invention" at all), and the person 

in order to complete the arrangement, then he is, in contemplation of law, 
to be regarded as the first and original discoverer. On the other hand, 
the converse of the proposition is equally true. If the suggestions or 
communications of another go to make up a complete and perfect ma- 
chine, embodying all that is embraced in the patent subsequently issued 
to the party to whom the suggestions were made, the patent is invalid, 
because the real discovery belongs, to another. These are all the obser- 
vations I shall trouble you with on the first branch of the case. It is an 
important question, and, in one aspect of the case, puts an end to the 
controversy. It is for you to say, after weighing carefully the whole 
evidence who is entitled to the merit of this improvement — who invented 
and perfected it. I do not mean, who constructed the first machine, but 
who conceived and gave practical form and effect to the ingenious ar- 
rangement which constitutes the improvement engrafted on the old 
machines." Agawam Co. v. Jordan, 7 Wall. 583, 603; United Shirt & 
Collar Co. v. Beattie, 149 Fed. 736. 
200 15 App. D. C. 510. 



128 Patents and Inventions 

entitled to a patent is he who conceives the means of making 
the. desired machine, or otherwise accomplishing the desired 
result. This is illustrated by Forgie v. Oilwell Supply Co."® 
The patent here involved was for a means of unscrewing 
certain oil well tools. Formerly this had been done by manual 
effort and was accomplished with great difficulty. Forgie who 
was familiar with the methods in use and their unsatisfactori- 
ness, conceived the idea that it would be possible to accomplish 
the result by mechanical power of some sort. There had been 
recently invented by one Barrett a hydraulic lifting jack and 
Forgie suggested to Barrett that his jack could probably be 
applied in some way to the purpose. Barrett then made cer- 
tain changes in the jack and adapted it to be used in a hori- 
zontal position to effectuate the end desired. Forgie obtained 
a patent for this device as his own invention, which was the 
patent sued on. The suit was dismissed on the ground that if 
there was any invention at all in the device, the credit belonged 
to Barrett, not to Forgie. "Undoubtedly,'' said the court, 
**Mr. Forgie did describe to Mr. Barrett the usual method of 
coupling and uncoupling the tools with the old appliances, and 
the great necessity for overcoming existing difficulties. He 
conceded the value and power of the jack invented by Mr. 
Barrett, and repeatedly said that, if it could only be made 
applicable to this work of coupling and uncoupling oil-well 
tools, he thought it would do the work with ease. But there 
was the rub. How could it be so applied? Evidently Forgie 
had not the slightest idea as to this, for nowhere does it ap- 
pear that he made tHe slightest suggestion, of any practicable 
benefit, looking to this end. . . . "Admitting that he may have 
had some conception of what was wanted — -which, however, 
is very doubtful — mere conception is not invention. It is the 
crystallizing of that conception into the invention itself, oper- 
ative and practical, that entitles the inventor to the protection 
of letters patent." 

Between these two cases is the wide field in which decisions 
can be made only as the mentality of each particular judge, 

210 58 Fed. 87T. 



Person Entitled to a Patent 129 

acting upon the circumstances shown by the evidence, con- 
cludes that the idea was the practical invention, or that it was 
only an idea of result, the means of accomplishing which was 
invented by the one who embodied the particular device used 
thereto. 

The fact that one has been doing certain mere mechanical 
work for another, during the process of which an accident re- 
veals a result not expected, and so new that the use of that 
process to produce the result can be patented, does not ipso 
facto entitle the workman to the patent. This came before the 
court in Minerals Separation Co. v. Hyde.^^^ The patentees 
were engaged in research work to find a process of separating 
mineral matter from crushed ore more economical than those 
in use. During the experiments, a wholly unthought of meth- 
od was revealed by accident, and a patent secured for it.. The 
results that occurred during the experiment were clear to any- 
one, and the workman in charge could probably have repro- 
duced them at will by repeating his actions by rote. The prin- 
ciples or natural laws which produced the results, that is to 
say, the reason for the particular results, had to be thought out. 
When the patent came into litigation, claim was made that the 
patentees were not the original discoverers of the pro.cess 
patented because "an employee of theirs happened to make the 
analyses and observations which resulted immediately in the 
discovery.*' The court dismissed this contention without fur- 
ther comment than that, "The record shows very clearly that 
the patentees planned the experiments in progress when the 
discovery was made; that they directed the 'investigations day 
by day, conducting them in large part personally and that they 
interpreted the results.'' 

It does not appear from such facts as are given that the em- 
ployee had any realization whatever of the desirableness of the 
result The "invention" lay before his senses; his mode of 
operation had produced certain results, but he himself had con- 
ceived no idea of relation between method and result. It re- 
mained for his employer to do that; to perform the mental 

* 211 242 U. S. 261. 



130 Patents and Inventions 

operation which constitutes invention. If this assumption is 
correct, the decision of the court is wholly in harmony with 
those cases holding that unrecognized events, though prior in 
time, do not serve to negative novelty in an invention. The 
public has never been treated as having been in possession of 
those transient combinations of circumstance producing a cer- 
tain result when the relation or circumstance and result has 
not been recognized. He -who later gives knowledge thereof 
to the world, gives it something new. 

If the employee had recognized the sequence of circum- 
stance and result in such a way as to bring into being a con- 
scious appreciation thereof, so that he might have applied it to 
practical use, it is doubtful if his claim to the title of inventor 
could have been avoided. It is well settled that an inventor's 
ignorance of the principle by which a desired result is pro- 
duced does not detract from the patentability of his idea of 
means. All he needs to know is that a given result can be pro- 
duced by certain means. The employee in this case would have 
been the first to have conceived this particular means or method 
of producing the desired result and there is no reason why, 
in such case, he should not be considered the true inventor. 
The, right to a patent, however, might be vested in the em- 
ployer by the terms of the employment. 

Joint inventions. The difficulty of determining who is 
the inventor of a particular device would seem to be amelio- 
rated to some extent by the theory of "joint" inventors. If it 
is possible that two or more persons may be equally and jointly 
entitled to the credit for an invention, the troublesome neces- 
sity of attributing it to some one person may often be avoided. 
The difficulty just discussed is in determining the person to 
be properly accredited "inventor," where "one suggests an 
idea in a general way and the other falls in with it and gives 
it definite practical embodiment." If we can say, as in the 
case from which the quotation is made,^^^ that "the two may 
be considered joint inventors," an extremely troublesome de- 
cision is rendered unnecessary. Judicial opinions and text 

212 Gottfried v. Phillip Best Brewing Co., 5 B. & A. 4, 17 O. G. 675. 



Person Entitled to a Patent 131 

books are replete with expressions indicating that inventions 
may be the joint product of several minds. Patents have been 
actually issued for joint inventions, and such patents have 
been sustained by the courts, when* their validity was in ques- 
tion on grounds other than the fact of their being to "joint 
inventors." They have thus been quite indisputably, though 
obliquely, recognized as possible and proper. Mr. Justice 
Story discussed this, saying,^*^ ''A joint patent may well be 
granted upon a joint invention. There is no difficulty in sup- 
posing in point of fact, that a complicated invention may be 
the gradual result of the combined mental operations of two 
persons acting together, pari passu, in the invention. And if 
this be true, then as neither of them could justly claim to be 
the sole inventor in such a case, it must follow, that the in- 
vention is joint, and that they are jointly entitled to a patent. 
And so are the express words of the Patent Act, which de- 
clares, that if any person or persons shall allege, that he or 
ihey have invention, etc., a patent shall be granted to him or 
them for the invention." 

In Quincey Mining Co. v. Krause, ^^* a patent issued to two 
persons, apparently as joint inventors, was attacked for lack of 
novelty and on the ground that the invention was not really 
the joint product of their minds. The court answered, "It is 
next said that the evidence tends to show that this idea of plac- 
ing the outlet inside of the mortar was the thought of but one 
of the patentees, and therefore could not be the subject of a 
joint patent. If a claim covered but a single idea, it would be 
difficult to conceive how it could be patented by two ; but, when 
a claim covers a series of steps or a number of elements in a 
combination, the invention may well be joint, though some of 
the steps or some of the elements may have come as the 
thought of but one. Such is the invention here patented, and 
it would not be fatal to this patent if the fact is that Krause, 
Sr., gave birth to the best thought connected with a combina- 
tion claim — which covers more than the place of the location 

213 Barrett v. Hall, i Mason, 447,472. 
21* 151 Fed. 1012, 1017. 



1 



132 Patents and Inventions 

of the discharge outlet. But it is by no means shown that 
Krause, Sr., alone solved the problem to be dealt with. The 
evidence relied upon is altogether too meager to overthrow a 
patent. To destroy a patent granted for a joint invention, 
upon the ground that it was the invention of only one of the 
patentees, would require very clear evidence of a very reliable 
character. That has not been produced." 

Again in Welsbach Light Co. v. Cosmopolitan Light Co.^^* 
The court said, **The patent contains two claims. The first, 
which is in suit,, is for a single thought, — :the described im- 
provement in strengthening incandescent mantles, consisting 
in coating the completed mantle with paraffine or other suitable 
material. That thought might well have come to one when 
in bed, and have been put to the practical test the next day, as 
testified. It is difficult to apprehend how two could have 
shared in the conception. The second claim, however, is dis- 
tinctly different. It is for a method of forming incandescent 
mantles, consisting of a number of steps, the combining of 
which, to produce the desired result, may well have been the 
joint achievement of two or more minds." 

In commenting upon this case it has been said, "But it is 
not difficult to conceive of a case where an invention consisting 
of a 'single thought' might be the product of collaboration of 
two minds working toward and finally reaching the single 
decisive step and taking it in step, so to speak; in such unity 
and simultaneousness that neither of the two could declare 
under oath which actually produced the 'single thought.' "^^^ 

It is difficult to comprehend, however, how Athena could 
have sprung, full panoplied, simultaneously from the heads of 
Z^us and of Metis also. In the womb of Metis, first, she may 
have be^n conceived and then come forth from the head of 
Zeus, but she could have come simultaneously from both only 
if both were one. As a child can not be the product of two 
wombs, so a single thought cannot emerge from two minds. 
It is true, that thoughts, alike in substance, may originate sim- 
ultaneously in two minds, but they are two thoughts, despite 

215 104 Fed. 83; Worden v. Fisher, 11 Fed. 505. 

216 Macomber, The Fixed Law of Patents, i^ 704. 



Securing a Patent 133 

their similarity. For both thoughts the patent statute has not 
made provision. It does not provide for a patent to all who 
have invented something, but authorizes one to the first in- 
ventor only. Nor, if it be comprehensible that two minds 
might produce the same invention coincidentally, has the sta- 
tute provided for a patent to both. It has simply failed to 
consider such a case. To assert the contrary would be to main- 
tain that utter strangers, working independently of each other, 
happening to produce an invention simultaneously, would both 
be entitled to patents therefore.^^^ . 

The cases in which a patent has been directly attacked be- 
cause issued to joint inventors are comparatively few before 
the upper courts. In nearly all of such cases, however, the 
attack has been sustained on the ground that the invention had 
not in fact been joint. 

It is, therefore, perfectly sound as a matter of logic, and 
probably correct as a matter of precedent, to say that there 
can not be such a thing as a joint invention, if the invention 
be considered as a single idea. In such case the idea of means 
w^hich constitutes the invention must, by its very unity of na- 
ture, have emanated from one mind only, and must be credited 
to but that one mind. 

But if an invention can be thought of as a composite of two 
or more distinct, though co-operating ideas, it is possible for 

217 The wording of the statute, which, to Mr. Justice Story, gave counte- 
nance to the assertion that such things as joint inventions and joint 
inventors were contemplated by it has since been changed. The act of 
1836, § 6, makes a partial change from the plural to the singular. It reads, 
"Any person or persons, having discovered any new and useful art, . . . 
not known by others before his or their discovery or invention thereof, 
and not, at the time of his application for a patent," etc. "But before any 
inventor shall receive a patent for any such new invention or discovery, he 
shall deliver a written description," etc. "The applicant shall also make 
oath or affirmation that he does verily believe that he is the original and 
first inventor." As the statute now stands, however, it is worded wholly 
in the singular; all words indicating the possibility of a plurality of in- 
ventors of a single invention have been eliminated. If this change means 
anything at all, it may be said to indicate the impossibility of joint in- 
vention. 




134 Patents and Inventions 

it to be the joint product of two or more minds. The separate 
ideas which go to make up the invention may emanate from 
different minds, and the credit may be apportioned accordingly. 
To the writer, the idea of invention as a concept, which per- 
vades all the law, seems to preclude the possibility of a com- 
posite of ideas. The credit seems, logically, to be due to the 
master mind who welds the lesser ideas into the single perfect 
whole which constitutes the real invention — the one compre- 
hensive concept of means by which a particular result is to be 
accomplished. But while this seems the logical and consistent 
view, the contrary opinions of the courts must be recognized 
&s effective authority, and it must be said that, at least insofar 
as an invention consists of two or more separable ideas, it may 
be the product of joint inventors to whom a patent may prop- 
erly issue. 

Joint producers of these several ideas which enter into the 
composite whole of the invention, are not entitled to joint 
credit for the invention in all cases. When the ideas which 
each has contributed are of comparatively equal importance, it 
is possible that they may be jointly entitled to credit for the 
w'hole. But when the ideas of one contributor are insignifi- 
cant compared with those of the other, when one has evolved 
the principle idea and the other has merely added minor ideas 
in elaboration of the main thought, only the first one, the origi- 
nator of the fundamental idea, is entitled to the patent. In 
the case of Agawam Co. v. Jordan,^^® the defense to a suit for 
infringement was that the patent was invalid, the invention 
thereby having been made by another than the patentee, name- 
ly by one Winslow. On the trial it appeared that Goulding, 
who later became the patentee, had nearly completed his de- 
vice when Winslow suggested certain parts for it as improve- 
ments upon the ones that Goulding was using. This sugges- 
tion was adopted by him, and parts were accordingly made by 
Winslow, according to his idea, and substituted in the work- 
ing model of Goulding's device. They proved to be useful 
auxiliary parts, and the patent in question was then taken out 

218 7 Wall. 583. 



Person Entitled to a Patent 135 

by Goulding for the whole device, including these parts, as 
his invention. Of the claim that the invention was Winslow's 
the court said, ^'Valuable though it was and is, as aiding in 
the accomplishment of the desired result, it is nevertheless a 
great error to regard it as the invention described in the sub- 
sequent patent, or as such a material part of the same that it 
confers any right upon the party who made the suggestion to 
claim to be the inventor, or a joint inventor, of the improve- 
ment, or to suppose that the proof of what was done by that 
party can constitute any defence, as against the owner of the 
patent, to the charge of infringement.'' 



CHAPTER V 

Loss OF Right to a Patent 

An inventor who, so far as the character of his production is 
concerned, is entitled to a patent, may lose that right under 
certain conditions. His invention may have been, at the time 
of its creation, new and useful, not known or used by others 
and not described in any printed publication, nor previously 
patented; nevertheless he may have so acted as to have de- 
prived hfmself of the patent privilege. For one thing, the 
statute specifically provides that an invention, even though 
patentable when made, shall not be patented if it has been in 
public use or on sale in this country for more than two years 
prior to the filing of an application for a patent, or if it has 
been patented or described in any printed publication more than 
two years previous thereto. Again, an invention can not be 
patented if it is proved to have been abandoned to the public 
by the inventor. In the event that the invention were dedicated 
to the public the right to a patent would be lost to an inventor, 
as in the case of abandonment, although such a contingency is 
not expressly covered by the statute. 

§ I. Public Use or Sale 

The phrase of the statute, ''in public use or on sale in this 
country for more than two years,'' has been very definitely in- 
terpreted by the Supreme Court in a way that speaks for it- 
self.^^° 'The statutory clause upon which the second objec- 
tion (to the validity of the patent) is founded is in the dis- 
junctive. The language is, 'purchase, sale, or prior use' . . . 
'for more than two years prior' to the application for the 
patent. The phrase, 'for more,' as thus used, is loose and in- 
accurate, and is to be understood as if the language were 

219 Consolidated Fruit Jar Co. v. Wright, 94 U. S. 92. 



Loss of Right to Patent 137 

earlier than 'two years prior/ etc., or as if *for' were omitted 
from the sentence. This omission would produce the same 
effect."^^® It is therefore settled that the use need not have 
continued during two years, as the statute might seem to indi- 
cate, nor need sales have occurred throughout a period of two 
years. It is sufficient if the use, or the sale, took place earlier 
than two years before the application, whether it continued 
during the two years or not.^^^ 

Single sale or use. The only real question involved in 
this topic is as to what constitutes public use or sale within 
the meaning of the statute. In the Consolidated Fruit Jar 
case just quoted the court said, ''The defects specified are also 
in the singular. It follows that a single instance of sale or of 
use by the patentee may, under the circumstances', be fatal to 
the patent; and such is the construction of the clause as given 
by authoritative adjudication." In this particular case there 
v/as in fact more than one instance of sale or use. The pat- 
entee had made at least two dozen of the jars covered by the 
later patent. Two of these he gave away and some others he 

• 

sold, and the court found it to be a fair inference that the 
recipients of them put them to the use for which they were 
intended.^^^ But in a later case, this authority was followed in 
holding the right to a patent to be lost because of a single sale 

220 The court quoted Pitts v. Hall, 2 Blatch. 235, as follows : "The pat- 
entee may forfeit his right to the invention if he constructs it and vends 
it to others to use, or if he uses it publicly himself in the ordinary way 
of a public use of a machine at any time prior to two years before he 
makes his application for a patent. That is, he is not allowed to derive 
any benefit from the sale or use of his machine, without forfeiting his 
right, except within two years prior to the time he makes his applica- 
tion." See other authorities therein cited. Pennock v. Dialogue, 2 Peters 
I ; Swain v. Holyoke Machine Co., 109 Fed. 154. 

221 The earlier statutes did not restrict the use or sale, which would 
destroy the right to a patent, to a time more than two years before th^ 
application. Public use or sale within that time, if with the consent of 
the inventor would preclude him from obtaining a patent. Pennock v. 
Dialogue; 2 Peters i, 19; Bates v. Coe, 08 U. S. 31, 46; Andrews v. 
Hovey, 124 U. S. 694, 719. 

222 Other authorities are cited in the case. Jenner v. Bowen, 139 Fed. 556. 



138 Patents and Inventions 

and use.^^^ The patent involved was for a turbine" water wheel. 
The undisputed evidence showed that a wheel substantially 
identical to that covered by the patent had been sold, installed 
and put in operation, by the inventor, a few days more than 
two years previous to his application for a patent. On this 
showing of a single sale and use, barely outside the limit of 
the time allowed, the court held the patent to be invalid, say- 
ing **as a general rule, a single unrestricted sale by the pat- 
entee of his patented device, embodying his completed inven- 
tion, is a public use or sale within section 4886, of the Re- 
vised Statutes.'' 

Inventor's acquiescence not material. The prior use 
or sale need not, under the present statute, be with the knowl- 
edge or consent of the inventor, although under the earlier 
statutes this was not the case.^" It is sufficient if public use 
or sale did occur more than two years prior to the application. 
This was settled in an elaborate opinion in the case of Andrews 
V. Hovey.^^^ The same case had been before the court previ- 
ously and had come up for a rehearing. After an exceedingly 
copious citation of authorities and a full discussion of them, the 
court declared its affirmance of the previous decision, saying, 
"Under §§ 6, 7, and 15 of the act of 1836, a patent was made 
invalid if, at the time of the application therefore, the inven- 
tion had been in public use or on sale, with the consent or al- 
lowance of the patentee, however short the time. The second 
clause of the 7th section (act of 1839) seems to us to clearly 
intend, that, where the purchase, sale, or prior use referred to 
in it has been for more than two years prior to the application, 
the patent shall be held to be invalid, without regard to the 
consent or allowance of the inventor. "^^^ 

Before the invalidity of a patent can be predicated upon the 
ground that the device was in public use or on sale more than 
two years prior to the application on which the patent was 

223 Swain v. Holyoke Machine Co., 109 Fed. 154. 

224 Shaw V. Cooper, 7 Peters 292. 
225 123 U. S. 267. 124 U. S. 694. 

226 Bates V. Coe, 98 U. S. 31. Eastman v. Mayor of N. Y., 134 Fed. 844. 



Loss of Right to Patent 139 



granted, there must be very clear and decisive proof that such 
use or sale did actually take place. ^^^ 

Secret use. The statute provides that the right to a patent 
shall be lost through "public use*' or some other form of public 
knowledge. It does not preclude an inventor from using his 
device secretly as long as he desires before applying for a 
patent. Neither is any restriction upon indefinite secret use 
read into the statute by the courts. On the contrary the Su- 
preme Court has explicitly said,^^® "Inventors may, if they can, 
keep their invention secret; and if they do for any length of 
time, they do not forfeit their right to apply for a patent, 
unless another in the meantime has made the invention, and se- 
cured by patent the exclusive right to make, use and vend the 
patented improvement. Within the rule, and subject to that 
condition, inventors may delay to apply for a patent." The 
exception as stated in this excerpt is obviously incorrect and 
is characteristic of the looseness of statement with which 
patent cases are filled. A subsequent inventor could not take 
out a valid patent, as the court suggests, for the device. His 
patent would be invalid for lack of novelty, if the secretly used 
device could be proved. Neither would the first inventor have 
lost his right merely because a subsequent inventor had pro- 
duced a like device and put it into use or on sale. By the very 
words of the statute, the use or sale must have taken place 
more than two years before the first inventor's application. 
It may be said therefore, that an inventor does not lose his 
right to a patent by any length of secret use, unless he fails to 
apply for a patent until more than two years after a similar 
device has been used or sold. The cases referred to at the end 
of this discussion may, however, establish a qualification of 
this broad doctrine as laid down by the Supreme Court. 

Just what constitutes a "secret" use it is utterly impossible 
to state. Certainly the courts are not prone to recognize a use 
as secret. What might in ordinary parlance have been called 
a secret use was held not to be such within the meaning of the 

227Cantrell v. Wallick, 117 U. S. 689; Penn. Electrical & Mfg. Co. v. 
Conroy, 159 Fed. 943. 
228 Bates V. Coe, 98 U. S. 31. 



iz;o Patents and Inventions 

patent statute, in the case of Perkins v. Nassau Card, etc. Co.^^^ 
This is illuminating as to the attitude of the courts. The facts 
may be given in its own words. '*The patentee made a ma- 
chine containing his invention in the year 1857, and in 1863 
he substituted for it another varying in form and proportions, 
but not in principle. These machines he used successively in 
the ordinary way of his business, as a maker of card and paste- 
board, until he applied for his patent, in 1876. The specifi- 
cation and model represent precisely the machine of 1863. 
During the time that the machines were used they stood in the 
room with several other machines necessary for the other proc- 
esses of making, drying and coloring pasteboard, and were 
operated chiefly by one man, Moulton, who was sometimes as- 
sisted by one other. About 23 workmen were employed upon 
the other parts of the manufacture. The doors of the factory 
were usually kept locked, and each of the 25 workmen had a 
key. How many visitors came to the factory is one of the 
disputed points. There were occasional visitors, but not many 
persons came to the factory from mere curiosity. During 
some months Mr. Denison, a friend of the patentee, was given 
the use of an upper room for making tags, and his workmen 
passed in sight of the pasting machine. It is not proved that 
any workmen, visitors, or other persons acquired or divulged 
a knowledge of the mode of operation of the machine, until 
the workman Moulton gave that information to the defendants, 
in 1876.'' On these facts it was held that the device had been 
in public use. 

This doctrine, that when the public might have acquired 
knowledge of the invention, through its use, it will be deemed 
to have such knowledge, was carried into extreme form in the 
case of Egbert v. Lippmann.^^° The patent sued on covered 
a peculiar form of corset steels. It appeared from the evi- 
dence that a woman, who afterward became the wife of the in- 
ventor, had complained of corset steels breaking frequently. 
To remedy this the inventor devise^ the steel, which he after- 

229 2 Fed. 451. 

230 104 U. S. 333' 



Loss of Right to Patent 141 

ward patented, and gave her a set to wear. Later he gave her 
Another set. This set he showed to one other person. In the 
words of the court, ''This is the evidence presented by the 
record, on which the defendants rely to establish the public 
use of the invention by the patentee's consent and allowance. 
The question for our decision is, whether this testimony shows 
a public use within the meaning of the statute. 

*'We observe, in the first place, that to constitute the pub- 
lic use of an invention it is not necessary that more than one of 
the patented articles should be publicly used. The use of a 
great number may tend to strengthen the proof, but one well- 
defined case of such use is just as effectual to annul the patent 
as many. McClurg v. Kingsland, i How. 202; Consolidated 
Fruit-Jar Co. v. Wright, 94 U. S. 92 ; Pitts v. Hall, 2 Blatchf . 
229. For instance, if the inventor of a mower, a printing- 
press, or a railway-car makes and sells only one of the articles 
invented by him, and allows the vendee to use it for two years, 
without restriction or limitation, the use is just as public as if 
he had sold and allowed the use of a great number. 

"We remark, secondly, that, whether the use of an invention 
is public or private does not necessarily depend upon the num- 
ber of persons to whom its use is known. If an inventor, hav- 
ing made his device, gives or sells it to another, to be used by 
the donee or vendee, without limitation or restriction, or in- 
junction of secrecy, and it is so used, such use is public, even 
though the use and knowledge of the use may be confined to 
one person. 

''We say, thirdly, that some inventions are by their very 
character only capable of being used where, they cannot be seen 
or observed by the public eye. An invention may consist of a 
lever or spring, hidden in the running gear of a watch, or of 
V rachet, shaft, or cog-wheel covered from view in the recesses 
of a machine for spinning or weaving. Nevertheless, if its 
inventor sells a machine of which his invention forms a part, 
cind allows it to be used without restriction of any kind the 
use is a public one." 

"Tested by these principles, we think the evidence of the 



142 Patents and Inventions 

complainant herself shows that for more than two years be- 
fore the application for the original letters there was, by the 
consent and allowance of Barnes, a public use of the inven- 
tion, covered by them. He made and gave to her two pairs of 
corset-steels, constructed according to his device, one in 1855 
and one in 1858. They were presented to her for use. He 
imposed no obligation of secrecy, nor any condition or restric- 
tion whatever. They were not presented for the purpose of 
experiment, nor to test their qualities. No such claim is set 
up in her testimony. The invention was at the time complete, 
and there is no evidence that it was afterwards changed or 
improved. The donee of the steels used them for years for 
the purpose and in the manner designed by the inventor. 
They were not capable of any other use. She might have ex- 
hibited them to any person, or made other steels of the same 
kind, and used or sold them without violating any condition 
or restriction imposed on her by the inventor.'' 

This opinion of the court was undoubtedly greatly influ- 
enced by the fact that during the eleven years which inter- 
vened between the date of the invention and that of the ap- 
plication the same device had come into very general use 
through the revelation of subsequent inventors. As the court 
said, "It is fair to presume that having learned from this 
general use that there was some value in his invention, he at- 
tempted to resume, by his application, what by his acts he had 
clearly dedicated to the public." It is extremely doubtful if, 
had this not been the case, the court would have held the 
slight use shown to be such as would invalidate the patent. 
But under the circumstances, the statements of the court in 
respect to public use, while they seem wholly correct, were 
quite unnecessary. There was indubitable general public use, 
more than two years before the application, by others than the 
patentee or his representatives. Under the rule, discussed 
above, that the use need not be with the consent of the patentee 
to have the effect of invalidating a patent, this use by others, 
arising out of their own discoveries, clearly rendered the 
patent void. The court got into its discussion of whether the 



Loss of Right to Patent 143 

patentee's own use was sufficient to avoid the patent, in order 
to eliminate the question, which it appears to have considered 
unsettled at that time, whether unauthorized use by others 
would have the same effect.^^^ 

As is suggested in the foregoing cases, the mere fact that 
an invention is concealed from view when in use does not 
prevent such use from being public within the meaning of the 
statute. In Hale v. Macneale,^^^ the invention was a tapering 
bolt for holding together the series of plates which formed the 
walls of a certain type of safe. When in place it was abso- 
lutely hidden from view and could be examined only by de- 
struction of the safe. More than two years .before his appli- 
cation, the inventor had constructed three safes containing this 
device, all of which were sold and put into use. "The con- 
struction and arrangement and purpose and mode of opera- 
tion and use of the bolts in the safes were necessarily known 

231 The dissenting opinion is clearly out of harmony with other ad- 
judications. "It must, in the language of the act, be in public use or on 
sale. If on sale, of course the public who buy can use it, and if used in 
public with his consent, it may be copied by others. In either event there 
is an end of his exclusive right of use or sale. The word public is, there- 
fore, an important member of the sentence. A private use with consent, 
which could lead to no copy or reproduction of the machine, which taught 
the nature of the invention to no one but the party to whom such con- 
sent was given, which left the public at large as ignorant of this as it 
was before the author's discovery, was no abandonment to the public, and 
did not defeat his claim for a patent. If the little steel spring inserted in 
a single pair of corsets, and used by only one woman, covered by her 
outer clothing, and in a position always withheld from public observa- 
tion, is a public use of that piece of steel, I am at a loss to know the line 
between a private and a public use. The opinion argues that the use was 
public, because, with the consent of the inventer to its use, no limitation 
was imposed in regard to its use in public. It may be well imagined that 
a prohibition to the party so permitted against exposing her use of the 
steel spring to public observation would have been supposed to be a piece 
of irony. An objection quite the opposite of this suggested by the opinion 
is, that the invention was incapable of a public use. That is to say, that 
while the statute says the right to the patent can only be defeated by a 
use which is public, it is equally fatal to the claim, when it is permitted 
to be used at all, that the article can never be used in public." 

232 107 U. S. 90. 



144 Patents and Inventions 

to the workmen who put them in. They were, it is true, hid- 
den from view, after the safes were completed, and it re- 
quired a destruction of the safes to bring them into view. 
But this was no concealment of them or use of them in secret. 
They had no more concealment than was inseparable from 
any legitimate use of them.'' Accordingly the court held the 
patent for the device to be invalid.^^^ 

All this discussion as to what constitutes "secret use'' seems 
to have been rendered unnecessary, however, by the decision 
in Macbeth-Evans Glass Co. v. General Electric Co*^^^" The 
facts were that Macbeth had invented a certain process in 
1903, since which time the plaintiff Company, of which Mac- 
beth was president, had been using it. The court admitted, 
however, that this use had been ^'secret." In 1910 an em- 
ployee of the plaintiff company had revealed the process, in 
breach of his confidential relation, to the Jefferson Glass Co., 
which at once began to use it. On suit by the Macbeth Com- 
pany, however, the state court enjoined the Jefferson Com- 
pany from further using it or revealing it to others."^^*' Dur- 
ing these court proceedings the secret of the process was not 
revealed. It does not appear just how or when the defendant, 
the General Electric Company, came by its knowledge of the 
process. On these facts, the court might have held that there 
was in fact a public use. This might have been predicated on 
the use by the Macbeth Co., which would have been in accord 
with Perkins v. Nassau Card Co., supra. Still more convinc- 
ingly, the court might have said that the use by the Jefferson 
Co. and the General Electric Co., although without plaintiff's 
consent, was clearly a public use more than two years before 
the statute. 

But the court chose not to base its decision on either of 
these grounds. On the contrary, it explicitly undertook to de- 
cide, 'Svhether one who has discovered and perfected an in- 

233 Ace. Brush v. Condit, 132 U. S. 39, 49. 

233« 246 Fed. 695 ; writ of certiorari refused by Sup. Ct., 246 U. S. 659 
(March, 1918) ; cited with approval in E. W. Bliss' Co. v. Southern Can 
Co., 251 Fed. 903, 907. 

233b Macbeth-Evans Glass Co. v. Schnelbach, 239 Pa. 76. 



Loss of Right to Patent 145 

• 

vention can employ it secretly more than nine years for pur- 
poses only of profit, and then, upon encountering difficulty in 
preserving his secret, rightfully secure a patent/' It was not 
pretended that Macbeth had really abandoned his invention to 
the public. His constant effort to keep the secret of the in- 
vention hidden from the public indisputably negatived this. 
Nevertheless, the court held, on an interpretation of the policy 
of the statute, that Macbeth had forfeited his right to a patent. 
He had not abandoned the invention to the public as a mat- 
ter of fact; it had not been in public use; but the right was 
lost solely because of his secret use. 

In this case, the rule, as clearly expressed, is that without 
exception the right to a patent is forfeited by secret use which 
is not for experimental purpose. This would cover the case 
of an inventor who, having used his device in secret for a 
time, should still apply for a patent before anyone else had 
discovered the secret. The dicta on which the court in the 
Macbeth case relies do not go this far. They declare the right 
to a patent to be forfeited only when others have begun to use 
the invention before the inventor's application. Whether the 
court in the Macbeth case really intended to go further than 
this is not quite certain.^^^*" 

Experimental Use. There is a type of use which, al- 
though it may be quite visible to the public and even exercised 
by the public generally, and gives to the public a full knowledge 
of the invention, is, nevertheless, not held to be a "public use" 
such as to preclude the subsequent issue of a patent. This is 
what the courts denominate "experimental" use. No matter 
how full and complete the use may have been, and no matter 
how public it may have been, in the common usage of the 
word, if the court feels, intuitively or otherwise, that such 
use was "experimental" in its purpose, it is not public use with- 
in the technical meaning of the statute. 

Probably the most frequently cited case on this topic is that 
of Elizabeth v. Paving Co.^^* The patent there attacked cov- 

233c Yov a further discussion, see 17 Mich. Law Rev. 499. 
23*97 U. S. 126. 



146 Patents and Inventions 

ered a form of street pavement made of wooden blocks. On 
the part of the attackers it was shown that the inventor had 
caused a stretch of his pavement to be laid upon a certain road 
in Boston where it was used for a period of 6 years before his 
application. The road on which it was so used was a public 
toll-road, owned by a corporation in which the inventor was a 
shareholder. The pavement was in front of the toll-house and 
was about 75' in length. The court held that this was not such 
a public use of the invention as invalidated the subsequent 
patent. It was constructed by the inventor at his own expense, 
in order to ascertain the effect upon it of heavily loaded 
wagons and of constant use. The inventor came frequently 
to examine it and made many inquiries, of other people, as to 
its satisfaction. 

The court reasoned to its holding that this was not a public 
use, in the technical sense, but a mere experimental one as 
follows : *'That the use of the pavement in question was pub- 
lic in one sense cannot be disputed. But can it be said that 
the invention was in public use ? The use of an invention by 
the inventor himself, or of any other person under his direc- 
tion, by way of experiment, and in order to bring the inven- 
tion to perfection, has never been regarded as such a use. 
Curtis, Patents,. sect. 381 ; Shaw v. Cooper, 7 Pet. 292. Now, 
the nature of a street pavement is such that it cannot be ex- 
perimented upon satisfactorily except on a highway, which 
is always public. When the subject of invention is a ma- 
chine, it may be tested and tried in a building, either with or 
without closed doors. In either case, such use is not a public 
use, within the meaning of the statute, so long as the inventor 
is engaged, in good faith, in testing its operation. He may 
see cause to alter it and improve it, or not. His experiments 
will reveal the fact whether any and what alterations may be 
necessary. If durability is one of the qualities to be attained, 
a long period, perhaps years, may be necessary to enable the 
inventor to discover whether his purpose is accomplished. 
And though, during all that period^ he may not find that any 
changes are necessary, yet he may be justly said to be using: 



Loss of Right to Patent 147 

his machine only by way of experiment; and no one would say 
that such a use, pursued with a bona fide intent of testing the 
qualities of the machine, would be a public use, within the 
meaning of the statute. So long as he does not voluntarily 
allow others to make it and use it, and so long as it is not on 
sale for general use, he keeps the invention under his own 
control, and does not lose his title to a patent. It would not 
be necessary, in such a case, that the machine should be put up 
and used only in the inventor's own shop or premises. He 
may have it put up and used in the premises of another, and 
the use may inure to the benefit of the owner of the establish- 
ment. Still, if used under the surveillance of the inventor, 
and for the purpose of enabling him to test the machine, and 
ascertain whether it will answer the purpose intended, and 
make such alterations and improvements as experience demon- 
strates to be necessary, it will still be a mere experimental use, 
and not a public use, within the meaning of the statute. 

''Whilst the supposed machine is in such experimental use, 
the public may be incidentally deriving a benefit from it. If it 
be a grist-mill, or a carding-machine, customers from the sur- 
rounding country may enjoy the use of it by having their ^rain 
made into flour, or their wool into rolls, and still it will not be 
in public use, within the meaning of the law. But if the in- 
ventor allows his machine to be used by other persons gen- 
erally, either with or without compensation, or if it is, with 
his consent, put on sale for such use, then it will be in public 
use and on public sale, within the meaning of the law. 

''If, now, we apply the same principles to this case, the an- 
alogy will be seen at once. Nicholson wished to experiment 
on his pavement. He believed it to be a good thing, but he 
was not sure ; and the only mode in which he could test it was 
to place a specimen of it in a public roadway. He did this at 
his own expense, and with the consent of the owners of the 
road. Durability was one of the qualities to be attained. He 
wanted to know whether his pavement would stand, and 
whether it would resist decay. Its character for durability 
could not be ascertained without its being subjected to use for 



148 Patents and Inventions 

a considerable time. He subjected it to such use, in good 
faith, for the simple purpose of ascertaining whether it was 
what he claimed it to be. Did he do anything more than the 
inventor of the supposed machine might do, in testing his 
invention? The public had the incidental use of the pavement, 
it is true ; but was the invention in public use, within the mean- 
ing of the statute? We think not. The proprietors of the 
road alone used the invention, and used it at Nicholson's re- 
quest, by way of experiment. The only way in which they 
could use it was by allowing the public to pass over the pave- 
ment." 

The difference between technical public use and experimental 
use such as does not invalidate a subsequent patent is impossi- 
ble to formulate. Like most of the other issues of patent law 
cases, the character to be given to a proved use depends upon 
the circumstances of each case and is a psychological fact. It 
depends wholly upon the operation of mind of the particular 
judge upon the particular circumstances. But, as in respect 
to the other issues, precedents do show certain circumstances 
which have more or less apparently influenced the court in its 
decision. 

The fact that the inventor himself has appeared to be satis- 
fied that his invention was at least usably perfect, has militated 
against the proposition that it was merely experimental. In 
the case just referred to the court said, "Had the city of Bos- 
ton, or other parties, used the invention, by laying down the 
pavement in other streets and places, with Nicholson's consent 
and allowance, then, indeed, the invention itself would have 
been in public use, within the meaning of the law ; but this was 
not the case. Nicholson did not sell it, nor allow others to 
use it or sell it. He did not let it go beyond his control. He 
did nothing that indicated any intent to do so. He kept it 
under his own eyes,- and never for a moment abandoned the 
intent to obtain a patent for it." 

This idea was made the foundation of the holding in a later 
case.^^^ The invention here involved was an improvement in 

235 Root V. Third Ave. R. R. 146 U. S. 210. 



Loss of Right to Patent 149 

the construction of cable railways. More than two years prior 
to his application the inventor had put it into actual use on a 
cable-rairroad, of which he had been employed to superintend 
the construction. He had apparently devised his invention in 
the expectation that he would be called upon to construct this 
particular road. He explained his invention to the directors 
of the road, and it was adopted by them. In defense of the 
patent it was urged that this use was experimental merely and 
the case of Elizabeth v. Pavement Co. was relied upon as 
authority. The inventor testified that he had been possessed 
by serious doubt as to the practicability of his device, and that 
he delayed applying for a patent until the utility of the device 
should have been tested by use. He did not, however, com- 
municate this doubt to the directors of the road. The court 
said of this, quoting the words of the lower court, **Mani- 
festly the complainant received a consideration for devising 
and consenting to the use of an invention which was designed 
to be a complete, permanent structure, which was to cost a 
large sum of money, and which he knew would not meet the 
expectation of those who had employed him, unless it should 
prove to be in all respects a practically operative and reason- 
ably durable one. If he had entertained any serious doubts 
of its adequacy for the purpose for which it was intended, it 
would seem that he would not have recommended it in view 
of the considerable sum it was to cost. At all events, he did 
not treat it as an experimental thing, but allowed it to be ap- 
propriated as a complete and perfect invention, fit to be used 
practically, and just as it was, until it should wear out, or 
until it should demonstrate its own unsuitableness. He turned 
it over to the owners without reserving any future control over 
it, and knowing that, except as a subordinate, he would not be 
permitted to make any changes in it by way of experiment; 
and at the time he had no present expectation of making any 
material changes in it. He never made cr suggested a change 
in it after it w^ent into use, and never made an examination 
with a view of seeing whether it was defective, or could be 
improved in any particular."' The court held, therefore, that 



150 Patents and Inventions 

the case did not come within the principles of the Pavement 
Co. case, and that the patent was invalid.^^^ 

The fact that the inventor has received a profit from the 
use of his device does not necessarily demonstrate that the use 
was more than experimental. The matter of profit was dis- 
cussed by the court in Smith & Griggs Mfg. Co. v. Sprague.^" 
The machine involved, which was one for making buckles, 
**was practically successful, in that during the period of its 
use the complainant produced and sold about 50,000 gross of 
levers .used on these shoe buckles, which he sold to his custo- 
mers in the market. It was a public use in the sense of the 
statute and within the decisions of this court, inasmuch as it 
was used by the complainant in the regular conduct of his 
business by workmen employed by him in its operation, and in 
the view of such part of the public as chose to resort to his 
establishment, either for the purpose of selling material for the 
manufacture or of purchasing its product. It is claimed, how- 
ever, and it was so decided by the Circuit Court, that this prior 
use of the machine in that form was not a public use within 
the prohibition of the statute so as to defeat the patent, be- 
cause that use was experimental only, of an imperfect ma- 
chine, embodying an incomplete invention, in order to enable 
the inventor to perfect it by improvements actually added, and 
to overcome defects developed by this use, which improvements 
are contained in the three additional claims, and which were 
added as parts of the invention within two years before the 
date of the application." 

236 Hall V. Macneale, 107 U. S. 90, 96. "It is contended that the safes 
were experimental, and that the use was a use for experiment. But we 
are of the opinion that this was not so. . ... The invention was complete 
in those safes. It was capable of producing the results sought to be 
accomplished, though not as thoroughly as with the use of welded steel 
and iron plates. ... As to their use being experimental it is not shown 
that any attempt was made to see if the plates of the safes could be 
stripped off, and thus to prove whether or not the conical bolts were effi- 
cient. The safes were sold, and apparently, no experiment and no experi- 
mental use was ever thought to be necessary. The idea of a use for ex- 
periment was an afterthought." 

237 123 U. S. 249. 



Loss of Right to Patent 151 

The court said, generally, that '"The use by the inventor, 
for the purpose of testing the machine, in order by experiment 
to devise additional means for perfecting the success of its 
operation, is admissible ; and where, as incident to such use, 
the product of its operation is disposed of by sale, such profit 
from its use does not change its character ; but where the use 
is mainly for the purposes of trade. and profit, and the experi- 
ment is merely incidental to that, the principal and not the in- 
cident must give character to the use." But of the particular 
case it said, "The use of the machine was apparently for the 
purpose of conducting an established business ; the machine it- 
self was the only one used for the manufacture, of which the 
patentee, by a prior patent, already had a monopoly. He alone 
supplied the market with the article, and the whole demand 
was satisfactorily met by this single machine. To this extent, 
it operated successfully. That it was capable of improve- 
ment need not be denied, nor that, while it was in daily use, 
its owner and inventor watched it with the view of devising 
means to meet and overcome imperfections in its operation; 
but this much can be said in every such case. There are few 
machines, probably, which are not susceptible of further de- 
velopment and improvement, and the ingenuity of mechanics 
and inventors is commonly on the alert to discover defects and 
invent remedies. The alterations made in the machine in 
question, however useful, were not vital to its organization. 
Without them, it could and did work so as to be commercially 
successful. 

"The impression made upon us by the evidence, the conclu- 
sion from which we cannot resist, is, that the patentee unduly 
neglected and delayed to make his application for the patents, 
and deprived himself of his right thereto by the public use of 
the machine in question, so far as it is embodied in the claims 
under discussion. 

"The proof falls far short of establishing that the main pur- 
pose in view, in the use of the machine by the patentee, prior 
to his application, was to perfect its mechanism and improve 
its operation. On the contrary, it seems to us that it shows 



152 Patents and Inventions 

that the real purpose in the use was to conduct the business of 
the manufacture, the improvement and perfection of the ma- 
chine being merely incidental and subsidiary. 

**The case upon the proofs seems to us to fall within the 
principle of the decision of this court in Hall v. Macneale, 107 
U. S. 90, 96, 97. It was there said : 'It is contended that the 
safes were experimental and that the use was a use for experi- 
ment. But we are of opinion that this was not so, and that 
the case falls within the principle laid down by this court in 
Coffin V. Ogden, 18 Wall. 120. The invention was complete 
in those safes. It was capable of producing the results sought 
to be accomplished, though not as thoroughly as with the use 
of welded steel and iron plates. The construction and ar- 
rangement and purpose and mode of operation and use of the 
bolts in the safes were necessarily known to the workmen who 
put them in.* They were, it is true, hidden from view after 
the safes were completed, and it required a destruction of the 
safes to bring them into view. But this was no concealment 
of them or use of them in secret. They had no more conceal- 
ment than was inseparable from any legitimate use of them. 
As to the use being experimental, it is not shown that any 
attempt was made to see if the plates of the safe could be 
stripped off, and thus to prove whether or not the conical bolts 
were efficient.' ''''' 

Experimental . Sale. The same principles apply to sale 
as to use, and there may be an actual sale, more than two 
years prior to the application, which does not, in law, amount 
to a sale within the meaning of the statute. In Swain v. 
Holyoke Machine Co.^^^ the court said, ''As a general rule, 
a single unrestricted sale by the patentee of his patented de- 
vice, embodying his completed invention, is a public use or 
sale, within section 4886 of the Revised Statutes. There are 
undoubtedly cases where the strict application of this rule 
works great hardship. Some inventions are for large and 

238Jenner v. Bowen, 139 Fed. 556; Cf. Am. Caramel Co. v. Thos. Mills 
& Bro. 149 Fed. 743, "Nor is such use a public use, which will defeat the 
patent, because the product of the machine during the time was sold." 

239 109 Fed. 154. 



Loss of Right to Patent 153 

cobtly structures, others require a long period of time to test 
their practical utility, ^nd still others are for small devices 
which are attached to large machines. It follows that an in- 
ventor, from lack of means or other circumstances, may be 
forced to sell his patented device in order to test its utility or 
efficiency. For this reason the courts in some instances have 
declined to enforce the strict rule where the sale was attended 
by some exceptional circumstance3. The following cases il- 
lustrate the exceptions to the general rule : Where the sale of 
the machine was for the purpose of trial, and the machine was 
warranted. Graham v. McCormick (C. C.) 11 Fed. 859, 862, 
and Same v. Manufacturing Co., Id. 138, 142. Where the 
patentee derived no profit from the sale, and the device was a 
mere appendage to a large machine sold by his employer. Har- 
mon V. Struthers (C. C.) 57 Fed. 637. Where the sale was 
made at an under price, and without profit to the inventor, and 
for the purpose of securing a fair test of the invention. Innis 
V. Boiler Works (C. C.) 22 Fed. 780. Where an imperfect 
machine was sold, which did not embody the invention. Eas- 
tern Paper-Bag Co. v. Standard Paper-Bag Co. (C. C.) 30 
Fed. 63, 66. Where the device sold did not embody the most 
complete and perfect form of the invention. Draper v. Wat- 
tles, 3 Ban. & A. 618, 620, Fed. Cas. No. 4,073. 

"We should hesitate to lay down the broad proposition that 
a single sale of a patented device for experimental purposes 
works a forfeiture of the patent under the statute. We dg 
not understand that it has ever been so expressly decided by 
the supreme court. It is certainly doubtful whether, under 
such circumstances, the device can be said to be *on sale,' with- 
in the fair meaning of the statute. It does not follow that, 
because a machine has been sold, it has passed the experimental 
stage. 

"Instead of laying down a fixed rule, it seems to us that in 
each case the court should direct its attention to the funda- 
mental inquiry : Under what circumstances and for what pur- 
pose did the public use or sale take place? And, where it ap- 
pears that there has been a public use or sale more than two 
years before the application, the burden is thrown upon the 



154 Patents and Inventions 

patentee to establish, by full, clear, and convincing proofs, that 
such use or sale was principally and primarily for experimental 
purposes, and that such purposes were not merely incidental 
or subsidiary. Whatever expressions may be found in the 
opinions of the supreme court to the effect that a single sale 
comes within the statutory prohibition, we .think a careful ex- 
amination of the cases shows that the primary and governing 
consideration is the purpose and object of the inventor in mak- 
ing such sale/' While this statement is mere dictum and the 
actual holding of the case was that there had been a sale and 
use within the meaning of the statute, it is a clear and force- 
ful expression of what appears to be the settled rule. 

A mere contract to sell, not accompanied by the passing of 
title to anything, has been held not a "sale'' within the meaning 
of the statute.'*^ 

It is evident from the foregoing discussion that the purpose 
of use or sale, which makes it experimental or otherwise, is 
not decided in accord with the inventor's assertions in regard 
to it. It depends instead upon the appearance which all the 
collateral facts give to it. An inventor who bears this in 
mind, can so arrange his experiments as to make their true 
character much more clearly demonstrable from the circum- 
stances than if he should ignore it. 

§ 2. Abandonment 

The statute makes abandonment of an invention a bar to 
the securing of a patent ; — a bar that is distinct from the effect 
of mere public use or sale. In practice, abandonment is so in- 
timately connected with use or sale as to be to a- great extent in- 
distinguishablie from it. Whether or not an invention has 
been abandoned to the public is obviously a question of fact 
to be determined in each case,^*^ but its determination is a 
matter of conclusion, and not a mere matter of evidence. The 
bar to a patent arising from abandonment is thus very different 
from the bar arising from use or sale two years prior to the 
application. The use and sale is a mere matter of demonstra- 

2*<> Burke Elec. Co. v. Independent Pneumatic Tool Co., 232 Fed. 145. 
. 241 Kendall v. Winsor, 21 How. 322, 331. 



Loss of Right to Patent 155 

tiofi. If a public use or a sale has been proved, it automatic^ 
ally follows that the patent is invalid unless the use or sale 
is excused as experimental. , Abandonment, on the other hand 
depends wholly upon the intent of the inventor. A conclusion 
as to intent must be drawn, therefore, from the proved facts, 
before the law can be applied. This conclusion can not be 
subject to rules of law, for the very simple reason that there 
is too little possibility of similar facts in enough particular 
cases for the harmony of conclusions therein to demonstrate 
a rule. Abandonment is therefore a matter of judicial con- 
clusion as to intent, although we are accustomed to speak of 
these conclusions, psychological facts perhaps, as facts to be 
proved. In this sense, the intent to abandon, or, simply, aban- 
donment, "may be proved either by express declaration of an 
intention to abandon, or by conduct inconsistent with any 
other conclusion.''^" 

Public use. The fact that an inventor let his device go 
into public use, or has himself used it or put it on sale with- 
out making any effort to patent it, is. reasonably clear evidence 
that he did not intend to patent it and had abandoned the right. 
Because of this, it is possible for public use to bar the right to 
a patent in two distinct ways: It may act as a bar as a matter 
of law, absolutely regardless of the inventor's intent to take 
out a patent, because it took place more than two years be- 
fore his application. Or, it may bar his right, regardless of 
'the time at which it occurred, because it occurred under such 
circumstances as to indicate clearly an intent to abandon the 
invention to the public. The cause of the bar is quite different 
in each case, but because of the presence of public use in each 
case, the statutory bar of public use has become very much 
confused with loss of the right to a patent throughout aban- 
donment. In the case of Elizabeth v. Pavement Co.,^*^ for in- 
stance, the court says, "An abandonment of an invention to 
the public may be evince3~by the conduct of the inventor at 
any time, even within the two years named in the law. The 

' "2U. S. Rifle & Cartridge Co. v. Whitney Arms Co., 118 U. S. 22;' 
Planing Mach. Co. v. Keith, loi U. S. 479, 484. 
243 97 u, s. 126, 134. 



156 Patents and Inventions 

effect of the law is, that no such consequence will necessarily 
follow from the invention being in public use or on sale, with 
the inventor's consent and allowance, at any time within two 
years before his application; but that if the invention is in 
public use or on sale prior to that time, it will be conclusive 
evidence of abandonment, and the patent will be void." The 
latter part of this statement is absolutely unwarranted by the 
statute or the cases. It is correct to the extent that under such 
circumstances the patent will be void. But it will not be void 
because the invention is conclusively deemed to have been 
abandoned. The statute does not authorize this conclusion 
and neither do the cases. The invention may possibly have 
been abandoned, to be sure, but the patent is void, as a matter 
of law, simply because the statute says it shall be void on ac- 
count of the public use.^** This failure to distinguish be- 
tween avoidance because of public use more than two years 
prior to the application, and avoidance because of abandon- 
ment as evidenced by public use, is found in very many of the 
decisions upon the point and has led to a deal of confused 
thought and expression. It probably accounts, also, for the 
part which the intent of the inventor plays in solving the ques- 
tion whether an open use is "public use" within the meaning 
of the statute, or merely "experimental" use. The intent of 
the inventor subsequently to apply for a patent does, as dis- 
cussed above, have an influence upon the court's conclusion as 
to whether his use of the device is pufilic or not. There is no^ 
logical reason why this should be so to be found in the defi- 
nition of "public." It is as open to knowledge and as no- 
torious, as fully shared in by the public, whatever be the intent 
of the inventor. But if the bar of public use be confused with 
that of intent to abandon, there is an obvious reason why 

2** The tendency to treat abandonment as a matter of law to be drawn 
from certain circumstances is well illustrated in Kendall v. Winsor, 21 
How. 322. The court says emphatically, as a matter of decision, that the 
question of abandonment is one for the jury, yet, as a matter of dictum, 
it says, an inventor may confer his invention upon the public, such inten- 
tion being manifested expressly or by conduct, or he may forfeit his 
rights "by a willful or negligent postponement of his claims, or by an at- 
tempt to withold the benefit of his improvement from the public. . . ." 



Loss of Right to Patent 157 

public use without an intent to abandon should not be treated 
as a bar.^*' 

Failure to apply. The intent to abandon may be predi- 
cated upon circumstances other than public use, as well as on 
that. In one case**® it was found that the inventor had evinced 
an abandonment of his right to a patent because he had let 
eight years pass by, after his original application was with- 
drawn, without making any attempt to secure a patent. Dur- 
ing this period other persons had taken out patents for simi- 
lar devices. The court said, "An inventor, whose application 
for a patent has been rejected, and who, without substantial 
reason or excuse, omits for many years to take any step to 
reinstate or renew it, must be held to have abandoned any 
intention of further prosecuting his claim." 

Delay in prosecuting an application not only may amount to 
abandonment as a reasonable conclusion of fact, but is specific- 
ally declared to be presumptive abandonment by the patent 
statute. This provides,**^ "All applications for patents shall 
be completed and prepared for examination within one year 
after the filing of the application, and in default thereof, or 
upon failure of the applicant to prosecute the same within one 
year after any action therein, of which notice shall have been 
given to the applicant, they shall be regarded as abandoned by 
the parties thereto, unless it be shown to the satisfaction of 
the Commissioner of Patents that such delay was unavoid- 
able." This phraseology leaves open the possibility of show- 
ing that the delay was not in fact due to intent to abandon, 
but it takes the burden of proof off from the party attacking 
the patent,, where it ordinarily rests, and puts it upon the pat- 
entee himself. Commenting upon this, the court has said,"® 
"All this shows the intention of Congress to require diligence 

2*5 Under the earlier statutes, by which public use within two years of 
the application would bar the right to a patent as well as public use more 
than two years before it, there was a greater justification for injecting the 
element of intent into the definition of public use than there is now. Shaw 
V. Cooper, 7 Pet. 319; Pennock v. Dialogue, 2 Pet. i. 

2*« U. S. Rifle & Cartridge Co. v. Whitney, 118 U. S. 22. 

2*7 § 4894 R. S. 

2*8 Planing Mach. Co. v. Keith, loi U. S. 479, 485. 



158 Patents and. Inventions 

in. prosecuting the claims to an exclusive right. An inventor 
cannot nithont cause hold his application pending during a 
long period of years, leaving the public uncertain whether he 
intends ever to prosecute it, and keeping the field of his in- 
vention closed against other inventors. It is not unfair to 
him, after his application for a patent has been rejected, and 
after he has for many years taken no steps to reinstate.it, to 
renew it, or to appeal, that it should be concluded he has 
acquiesced in the rejection and abandoned any intention of 
prosecuting his claim further. Such a conclusion is in ac- 
cordance with common observation. Especially Js this so when, 
during those years of his inaction, he saw his invention go 
into common use, and neither uttered a word of complaint or 
remonstrance, nor was stimulated by it to a fresh attempt to 
obtain a patent. When in reliance upon his supine inaction 
during those years of his inaction the public has made use of 
the result of his ingenuity and has accommodated its business 
and its machinery to the improvement, it is not unjust to him 
to hold that he shall be regarded as having assented to the ap- 
propriation, or, in other words, as having abandoned the in- 
vention."^*^ . 

But the court followed up this statement by the recognition 
that "There may be, it is true, circumstances which will excuse 
delay in prosecuting an application for a patent, after it has 
been rejected, such as extreme poverty of the applicant or pro- 
tracted sickness. "^^^ 

The application for a new patent to replace one already is- 
sued, and even a subsequent abandonment of effort to secure 
this reissue does not amount to an abandonment of the origi- 

2*0 Ace. Gandy v. Marble, 122 U. S. 432. 

250 Smith V. Goodyear Dental Vulcanite Co., 93 U. S. 486, 501, "And the 
proof respecting his health and pecuniary condition, together with his 
constant efforts to obtain the necessary means to prosecute his right, 
rebuts all presumption that he ever abandoned, actually or constructively, 
either his invention or his application for a patent. That he never in- 
tended' an abandonment of his invention is perfectly clear ; and it was not 
his fault that granting the patent was so long delayed." A dissenting 
opinion argues that the long delay in this case did amount to abandonment. 



Loss of Right to Patent 159 

nal patent. That is still quit^ as valid and effective as when 
it was duly issued.^^^ 

A different type of acquiescence, on which abandonment was 
predicated, arose in Hartshorn v. Saginaw Barrel Co.^^^ Two 
men, Campbell and Hartshorn, had invented the same device 
at' about the same time. Campbell supposed that he was the 
later inventor and let Hartshorn take out a piatent, himself 
patenting only a part of his device. Many years later it de- 
veloped that Campbell was in reality the first inventor, and 
within a rjeasonable time thereafter he applied for a patent. 
The lower court held this patent to be valid, under the circum- 
stances. The Supreme -Court said on the contrary, **Campbell 
contented himself with the narrow claim originally contained 
in his patent of 1867, and thereby acknowledged that he was 
not entitled to the broader claim which he now asserts under 
his reissue. He had the means and the opportunity at the time 
the application for his original patent was pending to have 
asserted his claim to priority of invention; he choose not to 
do so. He acquiesced in the claim of his adversary; he can 
not now claim what he then abandoned." 

Omission from application. This is really only a varia- 
tion of the well settled doctrine that when an inventor has ap- 
plied for a patent and specifically described therein the in- 
vention for which he claims right of a monopoly, he is pre- 
sumed to have claimed everything that he wants to protect. If 
he has omitted from the application some part of the inven- 
tion which he would be expected to have claimed at that time, 
if at all, it is fair to assume that he did not intend to cover 
that particular part by patent, but has abandoned it to the 
public. In the words of the court,^^^ **The statute requires the 
inventor to particularly point out and to claim distinctly the 
improvement or combination which he claims as his discovery. 
When, under this statute, the inventor has made his claims, 
he has thereby disclaimed and dedicated to the public all other 
combinations and improvements apparent from his specifica- 

251 McCormick Harvesting Machine Co. v. Aultman, 169 U. S. 606. 

252 119 U. S. 664. 

253 M' Bride v. Kingman, 97 Fed. 217, 223. 



i6o Patents and Inventions 

tion and claims that are not mere evasions of the device, com- 
bination, or improvement which he claims as his own. While 
the patent is notice of the claims which it contains and allows, 
it constitutes an estoppel of the patentee from claiming under 
that or any subsequent patent any combination or improvement 
there shown which he has not clearly pointed out and distinctly 
claimed as his discovery or invention when he received his 
patent. It is a complete and a legal notice to every one — ^notice 
on which every one has a right to rely — ^that he may freely use 
such improvements and combinations without claim or moles- 
tation from the patentee." "The object of the patent law in 
requiring the patentee to particularly point out and distinctly 
claim the part, improvement or combination which he claims 
as his invention or discovery, is not only to secure to him all 
to which he is entitled, but to apprise the public of what is still 
open to them."^'^* 

The fair implication from these quotations would be that 
failure to claim all to which the applicant is entitled amounts 
ipso facto, as a matter of law, to an abandonment of the un- 
claimed part. But in "both of the cases quoted from the issue 
was not at all whether or not any part of the invention had 
been in fact abandoned. It was merely one of interpretation 
of the patent as it stood. The decision was, that because the 
claim did not actually cover the matter alleged, it could not 
be made to cover such matter by judicial construction. This 
proposition that a patent could not be constructively extended 
so as to cover what had not in fact been claimed is logical as 
a rule of law. The other proposition, that failure to claim 
amounts to abandonment, is not logical as a rule of law, al- 
though it is justified as a rule of presumption. If the matter 
which the inventor failed to claim were something which did 
not necessarily need to have been included in the same patent 
as the matter which he did claim, it would be a possibility, at 
least, that he intended to claim it through another and separate 
application.' Even if such an intent were unusual it would not 
be unreasonable. To hold as a matter of law that failure to 

254 McClain v. Ortmeyer, 141 U. S. 419. 223. 



Loss of Right to Patent i6i 

claim in the first application constituted an abandonment, would 
be unreasonable and illc^ical. There could be, fairly, only a 
presumption of such intent. If the matter omitted were some- 
thing which could have been patented only in conjunction with 
that claimed, the presumption is stronger. It could not have 
been omitted with th^ intent of patenting it separately, at a 
later time. The neglect to claim Jt, whether through actual 
intent not. to, or mere indifference or carelessness, indicates 
with reasonable conclusiveness an intent to abandon. But it 
does not absolutely demonstrate such an intent. The omission 
might very possibly have happened through mistake, or lack 
of knowledge, or any form of inadvertence. If abandonment 
depends upon intent, as the courts have agreed it does, it can 
not logically be predicated upon omission to claim arising out 
of such a cause as inere inadvertence. 

The actual decisions accord with what has just been said, 
and abandonment is not conclusively presumed from mere 
omission. The judicial view of it is forcefully expressed in 
Miller v. Brass Co.*^' This suit was based on the re-issue of 
a patent which contained a claim not included within the origi- 
nal patent. The court held the new claim to be invalid be- 
cause it had not been even described in the original patent and 
could not have been claimed therein. They recognized, how- 
ever, that reissues are frequently made for the purpose of 
enlarging the claims of original issues under proper circum- 
stances, and that the original claim is not absolutely conclusive 
upon the inventor as to the extent of his rights. In respect to 
the circumstances under which the expansion is allowable, it 
said, "If a patentee who has no corrections to suggest in his 
specification except to make his claim broader and more com- 
prehensive, uses due diligence in returning to the Patent Office, 
and says *I omitted this,' or *my solicitor did not understand 
that,' his application may be entertained, and, on a proper 
showing, correction may be made. But it must be remembered 
that the claim of a specific device or combination, and an omis- 
sion to claim other devices or combinations apparent on the 

255 104 u. S. 350. 



i62 Patents and Inventions 

face of the patent, are, in law, a dedication to the public of 
that which is not claimed. It is a declaration that that which is 
not claimed is either not the patentee's invention, or, if his, he 
dedicates it to the public. This legal effect of the patent can- 
not be revoked unless the patentee surrenders it and proves 
that the specification was framed by real inadvertence, acci- 
dent, or mistake, without any fraudulent or deceptive inten- 
tion on his part ; and this should be done with all due diligence 
and speed. Any unnecessary laches or delay in a matter thus 
apparent on the record affects the right to alter or reissue the 
patent for such cause. If two years' public enjoyment of an 
invention with the consent and allowance of the inventor is 
evidence of abandonment and a bar to an application for a 
patent, a public disclaimer in the patent itself should be con- 
strued equally favorable to the public. Nothing but a clear 
mistake, or inadvertence, and a speedy application for .its cor- 
rection, is admissible when it is sought merely to enlarge the 
claim.'' In short, the rule as laid down by this court is simply 
that omission to claim amounts to abandonment, as a matter 
of law, unless the patentee demonstrates, within a reasonable 
time, that it was not an abandonment. All of which is but a 
cumbersome way of saying that abandonment will only be 
presumed from omission. 

The precise question came before the court in Miller v. Eagle 
Mfg. Co. ^^® The patentee had taken out two patents, the de- 
scriptions and drawings of which were identical. The claims, 
however, differed, in that the later issued one claimed matter 
not included in the claim of the first. There was a valid reason 
for the making of this division, and the court distinctly held 
that * 'Where the second patent covers matter described in the 
prior patent, essentially distinct and separable from the in- 
vention covered thereby and claims made thereunder, its valid- 
ity may be sustained."^" 

25« 151 U. S. 186. 

257 It is also, however, said quite as distinctly that a single invention may 
not be split and part of its features patented at one time and part at 
another. It might be commented that a single invention capable of being 
split into parts which are themselves patentable as inventions is an un- 
illustrated paradox. 



Loss of Right to Patent 163 

Correction of omissions. It might be supposed that whether 
an inventor intended to abandon or not, he must lose any part 
of his invention which he failed to claim when he should have 
done' so, because the statute does not provide for a correction 
under such circumstances. It provides for the issue of a patent 
for an invention, but not for the issue of a second patent in 
case the first one has not been broad enough. Logically there 
seems to be no answer to such a position. The invention 
should be treated as lost, not by abandonment, but by failing 
to apply for a patent. 

Practically, however, the courts have protected the inventor 
from such loss as a result of his mistake, by their interpreta- 
tion of § 4916 R. S. This provides that, "Whenever any 
patent is inoperative or invalid, by reason of a defective or 
insufficient specification, or by reason of the patentee claiming 
as his own invention or discovery more than he had a right to 
claim as new, if the error has arisen by inadvertence, accident, 
or mistake, and without any fraudulent or deceptive intention, 
the Commissioner shall, on the surrender of such patent and 
the payment of the duty required by law, cau^e a new patent 
for the same invention, and in accordance with the corrected 
specification, to be issued to the patentee, or, in case of his 
death or of an ass'ignment of the whole or any undivided part 
of the original patent, then to his executors, administrators, or 
assigns, for the unexpired part of the term of the original 
patent. Such surrender shall take effect upon the issue of the 
amended patent. The Commissioner may, in his discretion, 
cause several patents to be issued for distinct and separate 
parts of the thing patented, upon demand of the applicant, and 
upon payment of the required fee for a reissue for each of 
such reissued letters patent. The specifications and claim in 
every such case shall be subject to revision and restriction in 
the same manner as original applications are. Every patent 
so reissued, together with the corrected specifications, shall 
have the same effect and operation in law, on the trial of all 
actions for causes thereafter arising, as if the same had been 
originally filed in such corrected form; but no new matter 



164 Patents and Inventions 

shall be introduced into the specification, nor in case of a ma- 
chine patent shall the model or drawings be amended, except 
each by the other ; but when there is neither model nor draw- 
ing, amendments may be made upon proof satisfactory to the 
Commissioner that such new matter or amendment was a 
part of the original invention, and was omitted from the speci- 
fication by inadvertence, accident, or mistake, as aforesaid/'^*^* 

Dedication of an invention to the public is not differ- 
ent from abandonment, in the ordinary speech of the courts. 
The words are often used indiscriminately. If judges were 
to make a distinction it would probably be in accord with the 
distinction of non-technical usage; abandonment carrying the 
idea of negative intent, of acts of omission ; dedication im- 
plying positive acts and intent definitely to confer the right 
upon the public. 

The foregoing discussion has dealt with abandonment or 
dedication to the public. There is a form of what might be 
called abandonment or dedication to particular individuals 
which, while it does not affect the inventor's right in respect 
to the public generally, does affect it in respect to these indi- 
viduals. This is found in the statute itself ^^® which provides 
**Every person who purchases of the inventor or discoverer, 
or with his knowledge and consent, constructs any newly in- 
vented or discovered machine, or other patentable article, prior 
to the application by the inventor or discoverer for a patent, 
or who sells or uses one so constructed, shall have the right to 
use, and vend to others to be used, the specific thing so made 
or purchased, without liability therefor.'' 

258 James v. Campbell, 104 U. S. 356 ; Electric Gas Lighting Co. v. Boston 
Elec. Co., 139 U. S. 481 ; Thomson-Houston Elec. Co. v. Elmira & H. 
Ry. Co., 71 Fed. 396; Ide v. Trorlicht, etc. Carpet Co., 115 Fed. 137. The 
SuflFolk Co. V. Hayden, 3 Wall. 315, syll. i, "Where a party having made 
application for a patent for certain improvements, afterwards, with his 
claim still on file, makes application for another but distinct improvement 
in the same branch of art, in which second application he describes the 
former improvement, but does not in such second application claim it as 
original, the description in such second application and non-claim of it 
there, is not a dedication of the first invention to the public." 

250 R. S. § 4899- 



^^ 



V, 






s; 



CHAPTER VI 

Securing a Patent 

§ I. Form of Application 

The statute provides that**® "Before any inventor or discov- 
erer shall receive a patent for his invention or discovery, he 
shall make application therefor, in writing, to the Commis- 
sioner of Patents, and shall file in the Patent Office a written 
description of the same, and of the manner and process of 
making, constinicting, compounding and using it, in such full, 
^ clear, concise, and exact terms as to enable any person skilled 
.^ in the art or science to which it appertains, or with which it is 
"^ most nearly connected, to make, construct, compound, and use 
ci the same; and in case of a machine, he shall explain the prin- 
r ciple thereof, and the best mode in which he has contemplated 

\ applying that principle, so as to distinguish it from other in- 

ventions ; and he shall particularly point out and distinctly 
claim the part, improvement, or combination which he claims 
as his invention or- discovery. The specification and claim shall 
be signed by the inventor and attested by two witnesses. 
"When the nature of the case admits of drawings, the ap- 
"" plicant shall furnish one copy signed by the inventor or his 

V , attorney in fact, and attested by two witnesses, which shall be 

filed in the Patent Office; and a copy of the drawing, to be 
furnished by" the Patent Office, shall be attached to the patent 
as a part of the specification. 

"When the invention or discovery is of a composition of 
matter, the applicant, if required by the Commissioner, shall 
furnish specimens of ingredients and of the composition, suffi- 
cient in quantity for the purpose of experiment. 

"In all cases which admit of representation by model, the 
applicant, if required by the Commissioner, shall furnish a 

2«o R. s. § 4888-4893. 



i66 Patents and Inventions 

model of convenient size to exhibit advantageously the several 
parts of his invention or discovery. 

"The applicant shall make oath that he does verily believe 
himself to be the original and first inventor or discoverer of 
the art, machine, manufacture, composition, or improvement 
for which he solicits a patent ; that he does not know and does 
not believe that the same was ever before known or used ; and 
shall state of what country he is a citizen. Such oath may be 
made before any person within the United States authorized 
by law to administer oaths, or, when the applicant resides in a 
foreign country, before any minister, charge d' affaires, con- 
sul, or commercial agent holding commission under the Gov- 
ernment of the United States, or before any notary public, 
judge, or magistrate having an official seal and authorized to 
administer oaths in the foreign country in which the applicant 
may be, whose authority shall be proved by certificate of a 
diplomatic or consular officer of the United States. 

"On the filing of any such application and the payment of 
the fees required by law, the Commissioner of Patents shall 
cause an examination to be made of the alleged new invention 
or discovery; and if on such examination it shall appear that 
the claimant is justly entitled to a patent under the law, and 
that the same is sufficiently useful and important, the Commis- 
sioner shall issue a patent therefor.'' 

In amplification of these provisions of the statute, the Pat- 
ent Office has made more definite and specific rules in regard 
to application for a patent and other proceedings to obtain 
j^ 261 '^'YliQ Commissioner of Patents, subject to the approval 
of the Secretary of the Interior, may from time to time estab- 
lish regulations, not inconsistent with law, for the conduct of 
proceedings in the Patent Office.*' Copies of these rules will 
be furnished free of charge upon application to the Commis- 
sioner of Patents. As they are definite, and appertain only to 

261 This is authorized by R. S. >! 483, "The Commissioner of Patents, 
subject to the approval of the Secretary of the Interior, may from time 
to time establish regulations, not inconsistent with Law, for the conduct 
of proceedings in the Patent Office." 



Securing a Patent 



167 



the undisputed and clear details of procedure, they need not 
be set out here nor discussed at length. 

Title. The application must be by petition under oath, 
signed by the inventor, if he is alive and sane. It must be in 
the English language, as must be also the specifications and 
oath. The rules provide that the petition must ''designate by 
title the invention sought to be patented/' The form of this 
designation is, however, relatively unimportant, and it need 
not be exact nor complete provided the petition properly adopts, 
by reference^ a specification of the invention by which it is 
sufficiently set forth. This matter came before the court in the 
case of Hogg v. Emerson.^*^ The invention for which the 
patent issued was entitled, **a new and useful improvement in 
the steam engine.'' The suit itself was brought for violation 
of a patent for an "improvement in the steam engine and in 
the mode of propelling therewith either vessels on the water 
or carriages on the land." It was contended that the offer in 
evidence of the patent, as entitled, did not prove the existence 
of a patent such as set out in the suit. The court held that the 
identity of the patent need not be determined by the title alone, 
but that the specification annexed to the petition was a part of 
it and should be read in connection with it. The holding of 
the court and its reasons can not be set out more clearly than 
in its own language which is as follows : "Coupling the two 
last together, they constitute the very thing described in the 
writ. But whether they can properly be so united here, and 
the effect of it to remove the difficulty, have been questioned, 
and must therefore be further examined. We are apt to be 
misled, in this country, by the laws and forms bearing on this 
point in England being so different in some respects from what 
exist here. There the patent is first issued, and contains no 
reference to the specification, except a stipulation that one 
shall, in the required time, be filed, giving a more minute de- 
scription of the matter patented. It need not be filed under 
two to four months, in the discretion of the proper officer. 
(Gods. Pat., 176.) Under these circumstances, it will be seen 

262 6 How. 437. 



i68 Patents and Inventions 

that the patent, going out alone there, must in its title or head- 
ing be fuller than here, where it goes out with ^he minute speci- 
fication. But even there it may afterwards be aided, and its 
matter be made more clear, by what the specification contains. 
They are, says Gods. Pat., io8, 'connected together,' and 'one 
may be looked at to understand the other/ See also 2 H. Bl. 
478; I Webst. Pat. Cas., 117; 8 T. R., 95. There, however, it 
will not answer to allow the specification, filed separately and 
long after, to be resorted to for supplying any entire omission 
in the patent ; else something may be thus inserted afterwards 
which had never been previously examined by the proper offi- 
cers, and which, if it had been submitted to them in the patent 
and examined, might have prevented the allowance of it, and 
which the world is not aware of, seeing only the letters-patent 
without the specification, and without any reference whatever 
to its contents. 3 Brod. & B., 5. The whole facts and law, 
however, are different here. This patent issued March 8th, 
1834, and is therefore to be tested by the act of Congress then 
in force, which passed February 21st, 1793. (i Stat, at L. 
318.) In the third section of that act it is expressly provided, 
*that every inventor, before he can receive a patent,' 'shall de- 
liver a written description of .his invention,' &c. ; thus giving 
priority very properly to the specification rather than the 
patent. This change from the English practice existed in the 
first patent law, passed April loth, 1790 (i Stat, at L., 109), 
and is retained in the last act of Congress on this subject, 
passed July 4th, 1836 (5 Stat, at L., 119). It was wisely in- 
troduced, in order that the officers of the government might 
at the outset have before them full means to examine and un- 
derstand the claim to an invention better, and decide more ju- 
diciously whether to grant a patent or not, and might be able 
to give to the world fuller, more accurate, and early descrip- 
tions of it than would be possible under the laws and practice 
in England. In this country, then, the specification being re- 
quired to be prepared and filed before the patent issues, it can 
well be referred to therein in extenso, as containing the whole 
subject-matter of the claim or petition for a patent, and then 



Securing a Patent 



169 



\ 



not only be recorded for information, as the laws both in Eng- 
land and here require, but beyond what is practicable there, be 
united and go out with the letters-patent themselves, so as to 
be sure that these last thus contain the substance of what is 
designed to be regarded as a portion of the petition, and thus 
exhibit with accuracy all the claim by the inventor. In this 
view, and under such laws and practice here, it will be seen 
that the contents of the petition, as well as the petition itself, 
became a very unimportant form, except as construed to adopt 
the specification, and the contents of the latter to be consid- 
ered substantially as the contents of the former." 

Filing of parts. As suggested in the foregoing quotation, 
an application consists of "the first fee of $15, a petition, speci- 
fication, and oath ; and drawings, model or specimen when re- 
quired." "It is desirable," says the rules,^®* "that all parts of 
the complete application be deposited in the office at the same 
time, and that all the papers embraced in the application be 
attached together; otherwise a letter must accompany each 
part, accurately and clearly connecting it with the other parts 
of the application." It is not absolutely necessary that all 
parts be filed together and, if identified with the other parts 
as provided, the petition may precede the specification and 
both may precede the model, etc. Inasmuch as the specifica- 
tion and drawings constitute the real description of the inven- 
tion, which need not be set out at length in the petition, it is 
obvious that no examination can be made and no patent issue 
till the specification, etc., are filed, so as to complete the peti- 
tion. Hence the rules very reasonably provide that an applica- 
tion for a patent will not be placed upon the files for examina- 
tion until all its parts, have been recorded. The application 
must be completed and prepared for exhibition within one 
year^®* after the filing of the petition. In default of such 
completion, or if the applicant shall have failed to prosecute 
the application within one year after any action upon it, of 
which notice shall have been mailed him or his agent, the ap- 



263 Rule 32. 

264 Xwo years until amendment of 1897: 



170 Patents and Inventions 

plication shall be regarded as abandoned, unless it be shown to 
the Commissioner that such delay was unavoidable.^®'^ 

§ 2. Description. 

Since the specification is the real description of the invention 
it is of exceeding importance. According to the rules, in this 
instance a paraphrase of the statute, "The specification is a 
written description of the invention or discovery and of the 
manner and process of making, constructing, compounding, 
and using the same, and is required to be in such full, clear, 
concise, and exact terms as .to enable any person skilled in the 
art or science to which the invention or discovery appertains, 
or with which it is most nearly connected, to make, construct, 
compound, and use the same. The specification must set forth 
the precise invention for which a patent is solicited, and ex- 
plain the principle thereof, and the best mode in which the 
applicant has contemplated applying that principle, in such 
manner as to distinguish it from other inventions. In case of 
a mere improvement, the specification must particularly point 
out the parts to which the improvement relates, and must by 
explicit language distinguish between what is old and what is 
claimed as new ; and the description and the drawings, as well 
as the claims, should be confined to the specific improvement 
and such parts as necessarily co-operate with it. The specifica- 
tion must conclude with a specific and distinct claim or claims 
of the part, improvement, or combination which the applicant 
regards as his invention or discovery. When there are draw- 
ings the description shall refer to the different views by figures 
and to the different parts by letters or numerals (preferably 
the latter).'' 

Great care is necessary to set out exactly the device — the 

idea of means — for which the inventor desires a monopoly. 

He must describe and claim all that he has invented and 

wishes to protect and he shoul d not^ clsiPl anyth ing ou_tside 

7' "--. tjie bounds of his own patentable invention. 

The purpose of this description is, of cotirse, to identify the 

265 Rule 31. 



Securing a Patent 171 

invention and to delimit it, for purposes of protection, from 
all other knowledge, to which the inventor has no particular 
right. In Hogg v. Emerson^®® this description is invested with 
a three fold purpose, "to enable the commissioner of Patents 
to judge correctly whether the matter claimed is new or too 
broad, — to enable courts, when it is contested afterward be- 
fore them, to form a like judgment. . . . And so that the 
public, while the term continues, may be able to understand 
what the patent is, and refrain from its use, unless licensed.*'^^^ 
Must be definite. It sequentially follows that an inventor 
who has not described anything, can not be protected in any- 
thing, no matter what his claims are. If he has not set forth 
any definite idea of means of accomplishing a result he has 
contributed nothing definite to public knowledge, and is en- 
titled la nothing definite by way of reward. Incandescent 
Light Patent^®® is an illustration of this. The patent sued on 
purported to cover an invention appertaining to incandescent 
electric light. There had been considerable difficulty in this 
art owing to the fact that the carbon filaments in the lamps 
were subject to rapid disintegration. The improvement de- 
scribed by the patentees was the use "of an incandescent con- 
ductor of carbon made from a vegetable fibrous material in 
contradistinction to a similar conductor made from mineral or 
gas carbon." No especial description of making this conductor 
was given nor did the patent claim any definitely particularized 
substance which might be used for making it. The defendant 
used a certain kind of bamboo fibre which he had discovered 
as suitable for the purpose, quite by accident, after trying many 
other kinds of wood fibres none of which could be made to 
work. The patentees, said the court, "supposed- they had dis- 
covered in carbonized paper the best material for an incandes- 
cent conductor. Instead of confining themselves to carbon- 
ized paper, as they might have done, and in fact did, in their 
third claim, they made a broad claim for every fibrous or tex- 
tile material, when in fact an examination of over six thousand 

2«« 6 How. 437, 483, citing other authority. 

267 Accd. The Incandescent Light Pat., 159 U. S. 465, 474. 

268 159 U. S. 46.S 



172 Patents and Inventions 

vegetable growths showed that none of them possessed the 
peculiar qualities that fitted them for that purpose. Was every- 
body then precluded by this broad claim from making further 
investigation? We think not/' . . . 'If the description be so 
vague and uncertain that no one can tell, except by independ- 
ent experiments, how to construct the patented device, the 
patent is void." So the court held most strictly, "The claims 
of the patent, with the exception of the third, are too indefinite 
to be the subject of a valid monopoly." 

In a somewhat similar case^®® the plaintiff had discovered a 
new substance compounded of fusel oil and the mineral and 
(•arthy oils, which he denominated a "burning fluid." In de- 
scribing it he said, "the exact quantity of fusel oil which is 
necessary to produce the most desirable compound must be de- 
termined by experiment." . The defendants used a combination 
of the same ingredients described by the patentee. It was left 
to the jury to determine whether the defendant's proportions 
were substantially the same as those of the patentee's, and the 
verdict was adverse to the latter. The court in upholding the 
verdict and judgment said, "Now a machine which consists of 
a combination of devices is the subject of invention, and its ef- 
fects may be calculated a priori, while a discovery of a new 
substance by means of chemical combinations of known ma- 
terials is empirical and discovered by experiment. Where a 
patent is claimed for such a discovery, it should state the com- 
ponent parts of the new manufacture claimed with clearness 
and precision, and not leave the person attempting to use the 
discovery to find it out 'by experiment.' The law requires the 
applicant for a patent-right to deliver a written description of 
the manner and process of making and compounding his new- 
discovered compound. The art is new ; and therefore persons 
cannot be presumed to be skilled in it, or to anticipate the re- 
sult of chemical combinations of elements not in daily use."^^^ 

269 Tyler V. Boston, 7 Wall. 327, 

270 In view of this last sentence it would seem as though the court were 
evading a logical reversal of the case by a resort to mere technical lan- 
guage ; that the description taken as a whole was in fact clear enough and 
should have been given a broader interpretation. In Minerals Separation 



Securing a Patent I73 

Must SEPARATE old and new matter. In order to de- 
scribe an invention with such exactness and clarity as to satisfy 
the requirements, it is often necessary to give it a background, 
by describing other machines, arts, etc. When an invention 
embraces in itself an entire machine or device, separate as an 
entity from other devices, it can be described as an entity and 
there is no necessity of describing anything whatsoever out- 
side of the actual invention. A particular shape of nail, for 
instance, could be described of itself without the necessity of 
representing other nails or anything else in connection with the* 
nail. But even in such cases it is occasionally desirable to point 
out the essence of the inventive idea by comparison of the 
formal embodiment with other devices. More often the sub- 
ject of the invention is not an absolute entity, totally uncon- 
nected with any other device. It may be something not at all 
novel in its absolute form, but, on the contrary, novel only in 
its connection with other devices and its use therewith. Such, 
for instance, would be the type of invention which, while neces- 
sarily complete in itself, is commonly known as an **improve- 
ment'' upon an existing device. Differently expressed, the 
essence of the invention may be so related to an existing de- 
Co. V. Hyde, 242 U. S. 261, the court said, "Equally untenable is the 
claim thiat the patent is invalid for the reas6n that the evidence 
shows 'that when different ores are treated preliminary tests must 
be made to determine the amount of oil and the extent of agitation neces- 
sary in order to obtain the best results. Such variation of treatment must 
be within the scope of the claims, and the certainty which the law re- 
quires in patents is not greater than is reasonable, having regard to their 
subject matter. The composition of ores varies infinitely, each one pre- 
senting its special problem, and it is obviously impossible to specify in a 
patent the precise treatment which would be most successful and economi- 
cal in each case. The process is one for dealing with a large class of sub- 
stances and the range of treatment within the terms of the claims, while 
leaving something to the skill of persons applying the invention, is clearly 
sufficiently definite to guide those skilled in the art to its successful ap- 
plication, as the evidence abundantly shows. This satisfies tfie law." 

See also. Wood v. Underbill, 5 How. i ; Tannage Patent Co. v. Zahn, 66 
Fed. 986 ; Schneider v. Lovell, 10 Fed. .666 ; The claim was alleged to be 
too vague but held sufficiently definite in Burke Elec. Co. v. Independent 
Pneumatic Tool Co., 232 Fed.. 145. 



174 Patents and Inventions 

vice, that both must be described if the invention is to be 
comprehensible. It is therefore both necessary and permissible 
for an inventor to set out in his specification, description which 
covers matter not included within the invention itself.^^^ The 
validity of his patent is not affected by the mere fact that he 
has included extraneous matter in his description, provided he 
has not claimed it as part of his invention. But somewhere 
in the specification the line of distinction between this matter 
extraneous to the invention and what he claims as his invention 
must be clearly pointed out. If this separation of the inven- 
tion itself from the described background is not clearly made, 
it is obvious that a valid patent can not be issued. The entire 
matter described could not be covered by patent because part 
of it is admittedly old. But if the inventor himself has not 
separated that part of the description which constitutes his 
invention from the description of what is old, neither the Com- 
missioner of Patents nor the courts have power to do it for 
him. It has even been said specifically,^^^ "It is not enough to 
give such a description of the machine patented as to show, by 
comparing it with other machines, what part has been in- 
vented. ... It is not enough that the thing designed to be 
embraced by the patent should be made apparent on the trial, 
by a comparison of the new with the old machine. . . . The 
specification must be complete. No defects can be obviated 
by extraneous evidence at the trial. "^" 

271 Merrill v. Yeomans, 94 U. S. 568. "When a man supposes he has 
made an invention or discovery useful in the arts, and therefore the 
proper subject of a patent, it is, nine times out of ten, an improvement n 
some existing article, process, or machine, and is only useful in connection 
with it. It is necessary, therefore, for him, in his application to the 
Patent Office, to describe that upon which he engrafts his invention, as 
well as the invention itself; and, in cases where the invention is a new 
combination of old devices, he is bound to describe with particularity all 
these old devices, and then the new mode of combining them, for which 
he desires a patent. It thus occurs that, in every application for a patent^ 
the descriptive part is necessarily largely occupied with what is not new,, 
in order to an understanding of what is new." 

272 Brooks & Morris v. Jenkins & Bicknell, 3 McLean, 432, 442. 

273 The acual holding of the case reads, "What is claimed as new and 
how is it distinguished from the old? There is nothing on the face of 



Securing a Patent 175 

Sufficiency of description, by whom decided. Whether 
or not the specification does set cut sufficiently the invention it 
is alleged to describe, appears to be a question of fact, to be 
left to the jury in actions of law, according to the opinion of 
many courts. ^^* 

Other judges have made a verbal distinction between the 
province of the jury, in this respect, and that of the court, 
which seems rather more in harmony with actual practice. Mr. 
Justice McLean charged a jury upon this point as follows,^^^ 
"A question is raised, whether the thing claimed to have been 
invented is sufficiently described in the patent, is a matter for 
the determination of the court or jury. In its nature it is a 
question of law, for it depends upon the construction of a 
written instrument. If technical terms be used peculiar to 
mechanics in describing the invention, evidence may be heard 
in explanation of those terms, and in such case a jury may be 
necessary. If this point were ordinarily referable to a jury, 
the decisions on the same instrument would be as variable as 
the names of the parties. To produce uniformity of decision, 
the courts must give a construction to all written instruments. 
In this mode, by the application of known rules of construc- 
tion, the specifications of a patent are construed and settled 
as regards the thing invented. Whether the description is so 
particular as to enable a mechanic to construct the machine^ 
is a question for the jury. But unless the thing claimed to be 

the patent or specifications, which can enable any one to say, what is new 
and what is old. If he has added something to a machine which is new, 
and which he claims as his improvement, he must describe it. But no 
such description is given. ... He can then have no shadow of ground on 
which to sustain his patent." Merrill v. Yeomans, 94 U. S. 568; Parks v. 
Booth, 102 U. S. 96. 

274 Wood V. Underbill, 5 How. i ; Evans v. Eaton, 7 Wheat. 356, 428 ; 
"It is not disputed, that the specification does contain a good and suffi- 
cient description of the improved hopper-boy, and of the manner of con- 
structing it; and if there had been any dispute on this subject, it would 
have been a matter of fact for the jury and not of law for the court." 
Tannage Patent Co. v. Zahn, 66 Fed. 986; Palmer v. McCormick, 2 Brock 
(Ch. J. Marshall's Decisions) 298. 

275 Brooks & Morris v. Jenkins & Bicknell, 3 McLran 442. 



1^6 Patents and Inventions 

invented, is so described as to be known, in the language of 
the statute, from every other thing, the patent is void. And 
this must be determined by the cx)urt." Probably the true dis- 
tinction is that whether or not the description is actually com- 
prehensible as delimiting a definite idea or device, is a question 
of fact ; at just what point that device so described is marked 
off from all other devices, is a question of construction for the 
court. What it is that the description does set forth is also a 
question to be decided by the court ; a question of construction 
of the patent and accompanying specifications.^^® The seem- 
ing confusion of statement arises out of the failure of courts to 
distinguish, or their lack of precision in stating the distinction, 
between the invention as it is in formal expression and the 
invention as it is in inexpressible essence, which may include 
many substantial forms. 

To the extent that the courts do themselves undertake to 
decide the formal sufficiency of a specification, the evident in- 
clination is to be liberal toward the inventor. This is one of 
the issues in which the characterization of a patent as an odious 
monopoly or as something less repugnant to the law, as dis- 
cussed at the beginning of this book, is of importance. Were 
it considered an objectionable monopoly, the patentee should 
be held to the strictest precision of description. On the con- 
trary, he is in practice favored, on the principle that his patent 
is, at least, not an odious monopoly.^" 

Need not be clear to the unskilled. It is consistent 
with this that the courts do not require the description to be 
so full and clear and in such terms as to be understood by every 
intelligent reader. It is sufficient if it is comprehensible at least 
to persons particularly skilled in the branch of knowledge to 
which the alleged invention appertains. "The purpose of the 
specification,^* as contradistinguished from a claim, in letters 
patent, is to describe clearly the invention sought to be pro- 
tected by them, and the manner of making, using, and con- 

276 Merrill v. Yeomans, 94 U. S. 568, Further discussion under "protec- 
tion." 

277 Brooks & Morris v. Jenkins & Bickhell, 3 McLean 442. 

278 Tannage Patent Co. v. Zahn, 66 Fed. 986, 988. 



Securing a Patent 177 

« 

structing the same. The letters patent constitute a contract 
^between the patentee and the public. On the one hand is 
granted an exclusive use of the invention for a specified term. 
On the other, by way of consideration, a full disclosure of the 
invention, in all its parts, must be made. It is through the 
instrumentality of the specifications that this disclosure is 
made, and the invention thereby, fully placed within the knowl- 
edge of the public. Necessarily, upon their thoroughness in 
that respect, and upon their accuracy in statement, depends the 
validity of the contract of the letters patent. If there be ma- 
terial failure in either respect, there necessarily results such 
failure of consideration as must vitiate the contract. It fol- 
lows, then, that a specification failing in any material respect 
to make the invention fully known and accessible to the pub- 
lic must be held fatally defective, and the patent based upon 
it, ipso facto, becomes void. Wayne v. Holmes, 2 Fish. Pat. 
Cas. 20, Fed. Cas.*No. 17,303. But it should be borne in 
mind, in judging of the sufficiency of the specifications of let- 
ters patent, that while the language and the methods of state- 
ment used by 'the inventor must be such as will fully place 
the invention .in the intelligible possession of the public 
generally, it is not necessary that it should be so minutely and 
exactly described as to be readily understood by every person 
going to make up the public. The specifications of letters 
patent are addressed primarily to those skilled in the art to 
which the invention relates, and not to those who are wholly 
ignorant of the subject matter. 

'*In Plimpton v. Malcolmson, 3 Ch. Div. 531, Sir George 
Jessel, the master of the rolls, thus states the principle : *In the 
first place, it is plain that the specification of a patent is not 
addressed to people who are ignorant of the subject-matter. 
It is addressed to people who know something about it. If it is 
mechanical invention, as this is, you have, first of all, the scien- 
tific mechanicians of the first class, — eminent engineers. Then 
you have scient'fic mechanicians of the second class, — mana- 
f-trs of great manufacturies ; great employers of labor; persons 
who have studied mechanics, not to the same extent as those of 



178 Patents and Inventions 

the first class, the scientific engineers, but still to a great extent, 
for the purpose of conducting manufactories of complicated 
and unusual machines. . . . And then the third class, consisting 
of the ordinary workman, using that amount of skill and in- 
telligence which is fairly to be expected from him, — not a care- 
less man, but a careful man, though not possessing that great 
scientific knowledge or power of invention which would enable 
him by himself, unaided, to supplement a defective description 
or correct an erroneous description. Now, as I understand, to 
be a good specification it must be intelligible to the third class I 

have mentioned, and that is the result of the law. It will be 

• 

a bad specification if the first two classes only understand it, 
and if the third class do not.' And in the case of Morgan v. 
Seward, i Webst. Pat. Cas. 174, Mr. Baron Anderson used 
this language: The specification ought to be framed so as 
not to call on a person to have recourse to more than those 
ordinary means of knowledge (not invention) which a work- 
man of competent skill in his art may be presumed to have. 
You may call upon him to exercise all the actual existing 
knowledge common to the trade, but you cannot call upon him 
to exercise anything more. You have no right to call upon 
him to tax his ingenuity or invention.' 

"From which it seems to follow that persons skilled in the art 
to which the specification is addressed are in fact those of or- 
dinary and fair information, but not those having very great 
technical knowledge relating to the subject-matter of the inven- 
tion. And if, to them, the specification sufficiently and well 
describes the invention or process, it is quite sufficient. Now, 
the courts have always been generous towards inventors, in 
their application of these princphs of the law, and their conse- 
quent judgment of the validity of a specification. Although 
the specification may be in some degree incorrect, or vague or 
incomplete, if from it, taken in .connection with accompanying 
drawings and models and plans and formula, and especially the 
rest of the letters patent, one skilled in the art, as above defined,, 
can, by exercise of purely non-inventive powers, succeed in con- 
structing a machine or in following the process, or in combining 
the ingredients of matter mentioned into one whole, it is suffi- 



Securing a Patent 



179 



^ 



V 



V 



o 



cient. On the other hand, if experiment and inventive skill 
on the part of a skilled operator or user is necessary, in addi- 
tion to the instructive statements of the specification, to render 
the invention available and the use successful, then the specifica- 
tion is fatally defective, and the patent based thereon is void. 
Lockwood V. Faber, 27 Fed. 63 ; McNamara v. Hulse, 2 Webst. 
Pat. Cas. 128; Tyler v. Boston, 7 Wall. 327." 

The particular phraseology and syntax of the description do 
not affect its validity. If it is a full, clear and exact descrip- 
tion, it is, so far as its language is concerned, sufficient. In 
one case^" it was actually **argued by the defendant that the 
specifications are ungrammatically expressed, prolix, mislead- 
ing, and are erroneous in their statement of the scientific prin- 
ciples which govern the movements of the currents of air. 
Nevertheless," said the court, "I can see no reason why a 
skilled person, attempting to construct a kiln according to the 
specifications and the drawings of the patent should not be 
able to do it." The patent was accordingly upheld. 

Statement of principle. A statement of the principle of 
the invention is required in the specification by rule No. 36 
which Y^eads, **The specification must set forth the precise in- 
vention for which a patent is solicited, and explain the prin- 
ciple thereof, and the best mode in which the applicant has 
contemplated applying that principle, in such manner as to 
distinguish it from other inventions." But where the principle 
is not an essential element in the differentiation of the device 
from other inventions, a statement of it is not necessary to 
constitute a sufficient description, and the fact that in such 
case it is not set forth does not invalidate the patent. If some 
principle is set forth, and is in truth incorrect, the mistake is 
immaterial ; it can be treated as mere surplusage.^®® 

279 Emerson Co. v. Nimocks, 99 Fed. 737. 

280 Emerson v. Nimocks, 99 Fed. 737. An incorrect theory was actually 
assigned to account for the operation of the invention, but the court said, 
"The scientific principle is not part of the process, is not patentable and 
need not be set forth." Eames v. Andrews, 122 U. S. 40, 55, quoting An- 
drews V. Cross, 19 Blatch. 294, 305, "It may be that the inventor did not 
know what the scientific principle was, or that, knowing it, he omitted, 



i8o Patents and Inventions 

It is highly desirable, however, for the inventor, or, more 
particularly, the draftsman of the application, to know and 
understand the particular mechanical principle, or the principle 
of nature, involved in the invention. As we have seen, no 
matter what a man may have invented, he is protected only 
as to what he actually claims protection for. ' He can not claim 
either the mechanical principle on which his invention is based, 
nor the natural principle which it utilizes. But it must be re- 
membered that both the mechanical principle and the principle 
of nature involved in a device may serve as the characteristic 

from accident or design, to set it forth. That does not vitiate the patent. 
He sets forth the process or mode of operation which ends in the result, 
and the means for working out the process or mode of operation. The 
principle referred to is only the why and the wherefore. That is not re- 
quired to be set forth. Under §26 of the act of July 8, 1870, 16 Stat. 
201, under which this reissue was granted, the specification contains a 
description of the invention and of 'the manner and process of making, 
constructing, compounding, and using it,' in such terms as to enable any 
person skilled in the art to which it appertains to make, construct, com.- 
pound, and use it; and, even regarding the case as one of a machine, the 
specification explains the principle of the machine, within the meaning 
of that section, although the scientific or physical principle on which the 
process acts when the pump is used with the air-tight tube, is not ex- 
plained. An inventor may be ignorant of the scientific principle, or he 
may think he knows it and yet be uncertain, or he may be confident as 
to what it is, and others may think differently. All this is immaterial, 
if by the specification the thing to be done is so set forth that it can be 
reproduced." "It is certainly not necessary that he understand or be able 
to state the scientific principles underlying his invention, and it is imma- 
terial whether he can stand a successful examination as to the speculative 
ideas involved." Diamond Rubber Co. v. Consolidated Tire Co., 220 U. S. 
428, "He must, indeed, make such disclosure and description of his inven- 
tion that it may be put into practice. In this he must be clear. He must 
not put forth a puzzle for invention or experiment to solve but the de- 
scription is sufficient if those skilled in the- art can understand it. This 
satisfies the law, which only requires as a condition of its protection that 
the world be given something new and that the world be taught how to 
use it. It is no concern of the world whether the principle upon which 
the new construction acts be obvious or obscure, so that it inheres in the 
new construction." "Of course a mechanical device may be patentable al- 
though the true story of it is not understood." Steward v. Am. Lava Co., 
215 U. S. 161, 166; Toch V. Zibell, etc., Co., 233 Fed. 993. 



Securing a Patent i8i 

which above all other characteristics distinguishes it from other 
devices similar in mere tangible form. Therefore, while an in- 
ventor can not patent the particular principle — which he has 
not created — he may validly claim all devices involving that 
principle, which differ from the device described by him only 
as the result of mere mechanical skill. But a draftsman who 
does not understand the principle involved might so formulate 
the description and claims as unwittingly to eliminate the 
principle as a characteristic of the invention, and by the pre- 
cision of his words confine the patent to the single tangible 
form characterized by the description. A very pointed illus- 
tration is the. case of Steward v. American Lava Co.^*^ The 
patentee had described a form of tip for burning acetylene 
gas. As described, it was not materially different from those 
in use. At the trial, however, it was urged that the particular 
form of tip accomplished the purpose of the other forms by 
the utilization of an entirely different natural principle. Jus- 
tice Holmes intimated that if this were true the patent would 
be upheld. But there was conflicting evidence as to whether 
the burner did really involve that principle, and the scale was 
turned against the patentee by the fact that he had indicated no 
realization of such a principle in his description. The court 
also said in criticizing the indefiniteness of the claim, "Vacil- 
lation in theory led to uncertainty of phrase.''^®^* 

281 215 U. S. 161. 

281* A further, and very precise, illustration is found in the recent case of 
Minerals Separation Co. v. Butte, etc., Co., 39 Sup. Ct. Rep. 496 (June, 
1919). The patent was for the process of separating minerals from the 
crushed ore by agitating the mass in a mixture of oil and water. The 
essence of the invention was the use of less than 1% of oil. The defend- 
ants in this case used more than 1% of oil, which was, superficially, not 
an infringement. But the oil which they used was a mixture of pine oil 
and petroleum oils. The pine oil itself was less than 1%. The patentees 
contended that the pine oil was the only kind that had any effect ; that the 
petroleum oil was worse than useless and was added only to make a pre- 
tense of non-infringement through the apparent use of more than 1% of 
oil. The Supreme Court refused relief to the patentees on the ground that 
their patent did not refer to any particular kind of oil, but claimed only 
the use of less than 1% of "oils having a preferential affinity for metal- 
liferous matter* or "oily substance." They said that the petroleum product 



1 82 Patents and Inventions 

Includes all descriptive parts. When it is said that the 
"specification'' or "description*' must set forth the invention, 
the words are not confined to the nominally descriptive part 
of the application only, but are used, evidently, as including all 
of the application from which an understanding of the inven- 
tion can be obtained.^®^ "The word 'specification' when used 
separately from the word 'claim' in section 2916, means the 
entire paper referred to in section 4888, namely, the written 
description of the invention, 'and of the manner and process 
of making, constructing, compounding, and using it,' and the 
claims made. The word 'specification,' meaning description 
and claims, is used in that sense in sections 4884, 4895, 4902, 
4903, 4917, 4920 and 4922. In some cases, as in sections 4888 
and 4916, the words 'specification and claim' are used, and in 
section 4902 the word 'description' and the word 'specification' 
are used. But it is clear that the word 'specification,' when 
used without the word 'claim,' means description and claim." 
In the rules of practice 'specification' is undoubtedly used as 
inclusive of the claim. Indeed rule 37 reads, ^'The specifica- 
tion must conclude with a specific. and distinct claim or claims 
of the part . . . which the applicant regards as his invention 
or discovery." It is a perfectly logical assumption therefore 
that the rule requiring the "specification" to set forth the in- 
vention includes the claim within the term, and that the latter 
may properly be looked to, if necessary, to aid in describing 
the invention and giving it the comprehensibility required. 
This is the view taken by the courts.^®^ 

was an "oily substance" and did not have a preferential affinity for the 
metallifferous matter, and thus met the terms of the" patent. As it was 
used in quantities exceeding 1% its use did not infringe. The court's 
decision was that if the patentees had intended to patent the use m small 
quantities of particular kinds of oil, they should have specified those 
particular kinds in the description of their process. One gathers from the 
evidence that the reason the patent was not so limited is because the 
patentees did not themselves realize that there was a difference in effect 
of the different oils. 

282 Wilson V. Coon, 6 Fed. 611, 615. 

288 Electric Smelting & Aluminum Co. v. Carborundum Co., 102 Fed. 618, 
629, "If a claim, uncertain when considered apart from the description, 



Securing a Patent 183 

Includes drawings. Even the drawings may be referred 
to for the purpose of rendering intelligible the verbal descrip- 
tion of the invention and giving to it the exactness and clarity 
necessary to its validity. In Earle v. Sawyer,^®* one ground 
of alleged error was "that the Court directed the jury, that 
the drawings annexed, and referred to in the specification, 
constituted a part thereof ; and that they might be resorted to, 
to aid the description, and to distinguish the thing patented 
from other things known before. In point of fact, the draw- 
ings were annexed to the specification in the patent, and it 
made perpetual references to them, distinguishing thereby the 
new parts from the old, so that it was unintelligible without 
them. The Court, therefore, in the first part of the direction, 
did no more than state the fact, as it was ; and the other part 
was correct, unless the description must be wholly in writing. 
The argument now is, that by the very terms of the patent act, 
there must be a written description (without any reference to 
drawings), in such full, clear, and exact terms, as to distin- 
guish the things patented from all other things; and that, in 
case of a machine, the act requires drawings in addition 

can by reference to the latter be rendered so clear as to satisfy the re- 
quirement of the statute, that the inventor "shall particularly point out 
and distinctly claim" his invention, by parity of reasoning a doubtful 
point in the description, when considered apart from the claims, can by 
reference to the latter, when in themselves unambiguous, be rendered so 
clear as to satisfy the other requirement of the statute that the ii^ventor 
shall fully and clearly set forth his invention in the description. That 
under such circumstances a description uncertain or indefinite when con- 
sidered alone, but not inconsistent with the claims, may be rendered cer- 
tain and sufficient to meet- the requirements of the statute by reading the 
whole specification together has frequently been recognized and is, we 
think, a sound rule of law. Battin v. Taggert, 17 How. 74 85, 15 L. Ed. 
37 ; The Corn-Planter Patent, 23 Wall. 181, 224, 23 L. Ed. 161 ; Carver v. 
Manufacturing Co., 2 Story, 432, 446 ;Howes v. Nutes 4 Cliff. 173 174, 
Fed. Cas. No. 6,790; Ryan v. Goodwin, 3 Sumn. 514, 520, Fed. Cas. No. 12, 
186 ; Myers v. Frame, 8 Blatchf . 446, 457, Fed. Cas. No. 9,991 ; Parker v. 
Stiles, 5 McLean, 44, 56, Fed. Cas. No. 10,749; Lowell v. Lewis, i Mason, 
182, 188, Fed. Cas. No. 8,568; i Robb's Pat. Case 131." Am. Automotoneer 
Co. V. Porter, 232 Fed. 456. 
284 4 Mason i, 9. 



184 Patents and Inventions 

thereto. For this position, the case, Ex parte Fox ( i Ves. & 
Beames, 67), before Lord Eldon, has been cited. It was a 
petition to the Lord Chancelloi for the grant of a patent, 
against which a caveat had been entered. On hearing the 
parties, Lord Eldon granted the patent, and on that occasion 
is reported to have said, *I take it to be clear, that a rnan may, 
if he chooses, annex to his specification a picture or a model, 
descriptive of it; but his specification must in itself be suffi- 
cient, or I apprehend it will be bad.' As I understand this 
language, it is not intended to assert the doctrine for which 
it is cited. It means, that the specification must in itself be 
sufficient, and that the mere annexation of a picture or model 
will not help any defect in the specification. This may be true, 
where such picture or model is not referred to, as constituting 
a part of the specification itself. But if the explanations of the 
specification call for drawings, and refer to them as a com- 
ponent part in the description, they are just as much a part 
of the specification, as if they were placed in the body of the 
specification. Indeed, in many cases it would be impracticable 
to give a full and accurate description of the form, adjust- 
ments, and apparatus of very nice and delicate machinery, 
without drawings of some of the parts, as everything might 
depend on size, position, and peculiar shape. Lord Eldon 
could not have meant, that if drawings and figures were 
necessary to a full description of a machine in the specifica- 
tion, .there was still some stubborn rule of law prohibiting it. 
That would be to require the end, and yet to refuse the means. 
One of the objections in Boulton vs. Bull (2 H. Bl. 463) 
was, that the specification was imperfect, and it was pressed, 
that there ought to have been drawings to explain the ma- 
chinery. How was this objection met? Not by stating, that 
by law no explanatory drawings would help a specification, 
even if referred to in it, but by showing the specification suffi- 
cient without them. Mr. Justice Rooke said (p. 480), *As to 
the objection of a Want of a drawing or model, that at first 
struck me as of great weight. I thought it would be difficult 
to ascertain, what was an infringement of a method, if there 



Securing a Patent 185 

was no additional representation of the improvement, or thing 
methodized/ *If they (the jiiry) can understand it without a 
model, I am not aware of any rule of law, which requires a 
model or drawing to be set forth, or which makes void an in- 
telligible specification of a mechanical improvement, merely 
because no drawing or model is annexed. It seems to me then 
there isno ground for this objection to the charge, even upon 
the law of patents in England, where the specification consti- 
tutes no part of the patent itself, but is required by a proviso 
in every grant, to be enrolled in the Court of Chancery, within 
a limited time, and particularly to describe and ascertain the 
nature of the invention, and in what manner the same is to be 
performed. But how stands our own law on this subject; for 
by this the question must, after all, be decided? The patent 
act requires, that the inventor *shall deliver a written descrip- 
tion of his invention, and of the manner of using, or process 
of compounding the same, in such full, clear, and exact terms, 
as to distinguish the same from all other things before known, 
&c., &c. ; and in the case of a machine, he shall fully explain 
the principle and the several modes, in which he has contemp- 
lated the application of that principle or character, by which 
it may be distinguished from other invention; and he shall 
accompany the whole with drawings and written references, 
where the nature of the case admits of drawings,' &c. This is 
an explicit direction to annex drawings, where the nature of 
the case admits of them, with written references; and when, 
so annexed, they become part of the written description re- 
quired by the act. They may be indispensable to distinguish 
the thing patented from other things before known. Surely, 
then, the act could not intend studiously to exclude them as 
part of the written description. That would be to require the 
end and deny the means. ''^®' 

285Accd. Schneider v. Lovell, 10 Fed. 666; Banker v. Bostwick, 3 Fed. 
517; Hogg V. Emerson, 11 How. 587, 606, "Under the instructions of the 
court the jury found that it (the description) was clear enoug^h to be un- 
derstood by ordinary mechanics, and that machines and wheels could be 
readily made from it, considering the specifications as a whole, and ad- 
verting to the drawings on file. This is all which the law requires in re- 
spect to clearness. . . ." Tannage Patent Co. v. ZaJin, 66 Fed. 984, 990. 



1 86 Patents and Inventions 

But while the drawings may be adverted to in connection 
with the written description to give it exactness sufficient to 
enable one skilled in the art to understand the invention and 
to construct or use it; while they may be used to explain and 
interpret it, they may not be considered for the purpose of 
amplifying or supplementing a description which is not in it- 
self complete. They can not be used to extend the scope of 
the written description. The propriety of such use was ex- 
I^icitly denied in the case of Caverly v. Deere.^^^ The patent 
"^ there sued on could be saved from a chaKge of anticipation 
only by holding that the device described had certain knife- 
blade parts set at an angle of 45°. It was admitted that this 
at least might constitute patentable novelty. The drawings 
showed these parts set at that angle, but nothing whatever 
was said in the specification to indicate that the inventor in- 
tended them to be set especially at such an angle, or at any 
particular angle except such a one as would produce the best 
results, and the court held the patent invalid.^^^ 

§ 3. Claim 

Claim an important part. The claim itself, while only 
a part of the whole application, is an extremely important part. 
By the claim the extent of the monopoly covered by the patent 
is determined.^^^ The statute provides, precisely, that the ap- 
plicant must, in his specification, '^particularly point out and 
distinctly claim the part, improvement, or combination which 
he claims as his invention or discovery. ''^®^ The purpose of 

286 66 Fed. 305. 

287 Tinker v. Wilber Eureka etc. Co., i Fed. 138, "The drawing could 
and should be looked at, if necessary, in order to explain an ambiguous 
or doubtful specification, and to make the invention capable of being un- 
derstood and used. But it can not supply an entire want of any part of 
a specification or claim in a suit upon a patent, although it might afford 
ground for a re-issue covering the part shown by it.*' 

288 Description extraneous to the claim itself is necessary, because while, 
as said above, the claim may be used to explain the description, the claim 
can not be utilized for expanding the description. Nothing can, there- 
fore be effectively claimed which is not described. 

289 § 4888. 



Securing a Patent 187 

« 

the statute is primarily to benefit the public, not the individual. 
It gives to the individual a monopoly for a limited time, as 
an inducement for him to reveal his invention to the public. 
If he chooses to give his invention to the public without the 
recompense of a monopoly he is as free to do so as ever he 
was, and he may make his revelation by describing it and mak- 
ing it public in any way he wishes. For him to describe it in 
a written instrument filed with the Commissioner of Patents 
has no other effect, so far as he is concerned, than if he had 
sent his writing to the editor of a magazine. He must ask for 
a patent to receive one, and his request is the claim. With- 
out any claim, he asks for nothing; what he does ask for is 
what he has included in his claim. Only that which he claims, 
therefore, is granted to him by the patent. The descriptive 
part of the application may set out with clarity and exactness 
a device which constitutes an invention and would be patent- . 
able, but the patentee does not acquire by that particular part . 
a monopoly of the described device unless he has claimed it. 
The phrase "by that particular patent" is inserted in the pre- 
ceding sentence because it seems clear that he might later pro- 
tect himself by a new aiq)lication containing a proper claim. 
(This question, whether failure to claim a described device 
amounts to an actual loss of the right or merely to a presump- 
tive abandonment which can be rebutted by a proper showing, 
is discussed above. ) Butj at any rate, no protection is given by 
the particular patent issued on the application. This is well 
illustrated by the case of Merrill v. Yeomans.^®® The claim- 
ant sued for infringement of an improved manufacture of 
heavy hydro-carbon oils. The defendants were dealers in oils 
and not manufacturers of them. The. court found as an issue 
that, "If the appellant's patent was for a new^ oil, the product 
of a mode of treating the oils of that character which he de- 
scribes in his application, the defendants may be liable; for 
they bought and sold, without license or other authority from 
him, an oil which is proved to be almost if not quite identical 
with the one which he produced. If, however, appellant's 

2»o 94 u. S. 568. 



/ 



1 88 Patents and Inventions 

patent is only for the mode of treating these oils invented and 
described by him, — in other words, for his new process of 
making this new article of hydro-carbon oil, — then it is clear 
the defendants have not infringed the patent, because they 
never used that process, or any other, for they manufactured 
none of the oils which they bought and sold." The appellant 
contended that his patent was in fact for the product. The 
defendant urged that it was for the process of manufacture 
only. It was admitted by all parties that the product as well 
as the process was sufficiently described in the specification, 
and the court found that on the description as it stood the 
inventor might have had a valid patent for both the product 
and the process. But the court came to the conclusion that he 
had not in fact claimed the product and that his patent, there- 
fore, gave him no monopoly of anything but the use of the 
process of manufacture. Mr. Justice Clifford dissented on the 
ground that the claim, as properly construed, did cover the 
product as well as the process.^®^ 

291 It might be noted that the laborious and unsatisfactory reasoning of 
the decision as made was unnecessary; the same evidently desired result 
might have been reached on the ground that the oil sold by the defendants 
was not the same as the product which the complainants claimed to have 
patented. The cases consistently accord with the principle that the meth- 
od of manufacture is one of the distinguishing elements of a product. 
In this case the court had distinctly found "that the oils sold by defendants 
were produced by a process very different from that described by appel- 
lant." This being so, the claimant could not have hoped to cover it, no 
matter what his claim. Accord, that nothing is protected which is not 
claimed; "He cannot go beyond what he has claimed and insist that his 
patent covers something not claimed, merely because it is to be found in 
the descriptive part of the specification." Railroad Co. v. Mellon, 104 U. S. 
112, 118; Stirrat v* Excelsior Mfg. Co., 61 Fed. 980; Wells v. Curtis, 66 
Fed. 318; "The claims measure the invention," Paper Bag Patent Case, 
210 U. S. 405, 419; Anderson, Foundry & Mach. Wks. v. Potts. 108 Fed. 379. 

It is pertinent to note the remark of the court that, "no such question 
(of construction) could have arisen if the appellant had used language 
which clearly and distinctly points out what it is that he claims in his 
invention." 

The necessity of determining just what it is that a patentee has claimed 
and been awarded thereon by the patent office, arises out of the question 
whether the idea of means, for the unauthorized use of which suit has 



Securing a Patent 189 

Multiplicity of claims. Applications for patents, and the 
patents issued thereon, frequently contain more than one claim 
as to the part, improvement or combination which constitutes 
the invention. In part this arises from the recognized custom 
of joining two or more distinct inventions in one patent. 

Several inventions. Whatever may be the theory, it is in- 
disputably the fact that single patents are, in certain cases, 
issued for more than a single invention. As an illustration, a 
combination which is itself patentable as a means to an end 
may contain elements which are themselves inventions. An 
explosion turbine for instance might be patentable as a novel 
combination of parts, and the particular form of valves used, 
or the combination of parts of the rotor element, might in 
themselves be new. In such cases, a single patent can legiti- 
mately be issued to cover the entire combination, as an inven- 
tion, and to cover also the new parts or sub-combinati6ns as 
inventions. In the same way, an idea of static means for ac- 
complishing a result, a peculiar shaped collar button for in- 
stance, might be of inventive quality, and the idea of dynamic 
means for making such a button might also be the novel result 
of inventive genius. Each of these ideas of means is an in- 
vention in itself, but the courts seem to permit the patenting 
of them both through one application and under a single patent. 
The right to join distinct inventions in a single application 

been brought, is covered by the claim. It is simply a way of stating the 
issue of infringement. If the alleged infringer has used a device pre- 
cisely described in the claim, the infringement is evident, and there is no 
necessity for construing the claim. But the scope of the protection given 
by a patent is not limited to the precise substantial device described and 
claimed therein. As we have already said, it covers the idea of means set 
forth, as well as the particular substantial means actually described. It 
covers every thing which is essentially identical with the means described. 
When the alleged infringer has used a device different from the means 
particularly described in the patentee's claim, he is guilty of infringement 
only if his device was essentially described in the claim. It becomes, 
therefore, necessary to determine whether the claim does set out an idea 
of means broad enough to include the defendant's device. In a sense, 
the claim must be construed. A discussion of this construction and in- 
terpretation of claims will be found under the subject of infringement. . 



V 



190 Patents and Inventions 

and. patent is covered by rules of the Patent Office.^^^ "Two 
or more independent inventions can not be claimed in one ap- 
plication; but where several distinct inventions are dependent 
upon each other and mutually contribute to produce a single 
result they may be claimed in one application. If several in- 
ventions, claimed in a single application, be of such a nature 
that a single patent may not be issued to cover them, the in- 
ventor will be required to limit the description, drawing, and 
claim of the pending application to whichever invention he may 
elect. The other inventions may be made the subject of sep- 
arate applications, which must conform to the rules applicable 
to original applications. If the independence of the inventions 
be clear, such limitation will be made before any action upon 
^ the merits ; otherwise it may be made at any time before final 
action thereon, in the discretion of the examiner. A require- 
ment of division will not be repeated without the written ap- 
proval of a law examiner. After a final requirement of divi- 
sion, the applicant may elect to prosecute one group of claims, 
retaining the remaining claims in the case with the privilege of 
appealing from the requirement of division after final action 
by the examiner on the group of claims prosecuted." 

These rules are discussed by the court in the case of Stein- 
metz V. Allen. ^^^ At that time the rule of the Patent Office 
forbade the inclusion in a single patent of a machine and its 
product, or of a machine and the process in the performance 
of which it was used, or of a process and its product. The 
petitioner had been required by the Commissioner of Patents 
to eliminate certain claims from his application on the ground 
that they should be the subject matter of a separate applica- 
tion. The court's discussion of the law is worth quoting, and 
is as follows : "There is nothing in the language of the sec- 
tion (R. S. 4886) which necessarily precludes the joinder of 
two or more inventions in the same application. But the sec- 
tion does distinguish inventions into arts (processes), ma- 
chines, manufactures and compositions of matter, and the 
earliest construction of the law denied the right of joinder. 

292 Rules of Practice No. 41 and 42. 

293 192 U. S. 543. 



Securing a Patent 191 

An exception, however, came to be made in cases of depend- 
ent and related inventions. In Hogg v. Emerson, 6 How. 437, 
it was said: *The next objection is, that this description in 
the letters thus considered covers more than one patent and is 
therefore void. There seems to have been no good reason at 
first, unless it be a fiscal one on the part of the government 
when issuing patents, why more than one in favor of the same 
inventor should not be embraced in one instrument, like more 
than one tract of land in one deed or patent for land. Phil. 
Pat. 217. Each could be set out in separate articles or para- 
graphs, as different counts for different matters in libels in 
admiralty or declarations at common law, and the specifica- 
tions could be made distinct for each and equally clear. But 
to obtain more revenue, the public officers have generally de- 
clined to issue letters for more than one patent described in 
them, Renouard, 293; Phil. Pat. 218. The courts have been 
disposed to acquiesce in the practice, as conducive to clearness 
and certainty. And if letters issue otherwise inadvertently to 
hold them, as a general rule, null. But it is a well established . 
exception that patents may be united, if two or more, included 
in one set of letters, relate to a like subject, or are in their 
nature or operation connected together. Phil. Pat. 218, 219; 
Barret v. Hall, i Mason, 447; Moody v. Fiske, 2 Mason, 112; 
Wyeth et al. v. Stone et al., i 5tory, 283.' 

"This language would seem to imply that not the statute 
but the practice of the Patent Office required separate appli- 
cations for inventions, but the cases cited were explicit of the 
meaning of the statute. Mr. Justice Story, in Wyeth v. Stone, 
said : *For, if different inventions might be joined in the same 
patent for entirely different purposes and objects, the patentee 
would be at liberty to join as many as he might choose, at his 
own mere pleasure, in one patent, which seems to be inconsis- 
tent with the language of the patent acts, which speak of the 
thing patented, and not of the things patented, and of a patent 
for invention, and not of a patent for inventions ; and they di- 
rect a specific sum to be paid for each patent.' But he con- 
fined the requirement to independent inventions, and his il- 



\ 



192 Patents and Inventions 

lustrations indicated that he meant by independent inventions 
not those which, though distinct, were *for the same common 
purpose and auxiliary to the same common end/ Hogg v. 
Emerson came to this court again, and is reported in 1 1 How. 
587. Of one of the objections to the patent the court said: 
'It is that the improvement thus described is for more than 
one invention, and that one set of letters patent for more than 
one invention is not tolerated by law. But grant that such is 
the result when two or more inventions are entirely separate 
and independent, though this is doubtful on principle, yet it 
is well settled in the cases formerly cited, that a patent for 
more than one invention is not void if they are connected in 
their design and operations. This last is clearly the case here.' 
Many other cases are to the same effect." 

The court went on to say that -the line between independent 
and related inventions is vague and unplacable, and that "It is 
difficult, perhaps impossible, to lay down any general rule by 
which to determine when given inventions or improvements 
shall be embraced in one, two, or more patents. ... It is often 
a nice and perplexing question. The discretion which must 
nicessarly therefore, reside in the Commissioner of Patents, 
is not final, in him, but is reviewable." **The Patent Office has 
not been consistent in its views in regard to the division of in- 
ventions. At times convenience of administration has seemed 
to be of greatest concern; at other times more anxiety has 
been shown for the rights of inventors. The policy of the 
office has been denominated that of battledore and shuttlecock, 
and rule 41 as it now exists was enacted to give simplicity and 
uniformity to the practice of the office. Its enactment was 
attempted to be justified by the assumption that the patent 
laws gave to the office a discretion to permit or deny a joinder 
of inventions. But, as we have already said, to establish a rule 
applicable to all cases is not to exercise discretion. Such a 
rule ignores the differences which invoke discretion, and which 
can alone justify its exercise, and we are of opinion therefore 
that rule 41 is an invalid regulation." In this particular case 
the court held that a process and an apparatus might be such 



Securing a Patent 193 

related inventions as to be capable of inclusion in a single 
patent, and that inasmuch as the rule purported rigidly to pre- 
clude such a combination it was invalid.^®* 

It is often desirable to take advantage of this right to join 
inventions, both because it is a monetary saving so to do, and 
because the failure to claim one of the inventions might be 
construed as showing an intent to abandon it. 

Repetition of claims. Another cause for a multiplicity of 
claims is found in the difficulty of making clear to all minds, 
by mere words, precisely what it is that is claimed. As one 
court expressed it,^®*^ "While, according to strict rules of law, 
two distinct claims for the same substantial matter, differing 
only in nonessentials, cannot both be sustained, yet, out of 
regard to the frailty of human methods of expression, and 
the variety of views among different legal judicial tribunals as 
to the construction of instruments of the character of letters 
patent, and conceding, also, the difficulty of always correctly 
defining what one's invention really is, the practice has become 
settled to allow the same substantial invention to be stated in 
different ways, very much as the same cause of action, or the 
same offense intended to be covered by indictment, are per- 

2»* Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 301, 318, 
"A process and an apparatus by which it is performed are distinct things. 
They may be found in one patent; they may be made the subject of dif- 
ferent patents. So may other dependent and related inventions." Ben- 
et V. Fowler, 8 Wall. 445; DuBois v. Kirk, 158 U. S. 58; Thomson- 
Houston Elec. Co. V. Elmira & H. Ry. Co., 71 Fed. 396; Benj. Elec. Mfg. 
Co. V. Dale Co., 158 Fed. 617. Merrill v. Yeomans, 94 U. S. 568. The 
patent in this case was for the process of making certain hydro-carbon 
oils. The defendants were charged with selling oils similar to those made 
by the patented process but in fact made by an entirely" different process. 
The court held that tjie patent had not been infringed because the oils 
had not been made by the defendants, nor even by the same process and 
because the right to use and vend the oils as a product had not been cov- 
ered by the patent. This case contains the strongest sort of intimation 
that two distinct things, namely, the process and the product, could have 
been and should have been claimed In the one patent. In another case, 
Rubber Co. v. Goodyear, 9 Wall. 788, syll. 7 reads, "A process and the 
product of a process may be both new and patentable, and are wholly 
disconnected and independent of each other." 

295 Dececo Co. v. Geo. E. Gilchrist Co., 125 Fed. 293, 300. 



194 Patents and Inventions 

mitted to be propounded in different counts, with a general 
verdict on all of them/' 

The fact that one or more of these claims covers matter to 
which the patentee is not, in the court's opinion, entitled, and 
is therefore void, does not necessarily invalidate the entire 
patent. A notable example of this is the patent issued for the 
Morse telegraph concept.^®^ It contained eight claims, of 
which seven were held valid and the eighth so broad as to be 
invalid. While the court would not go so far as to concede 
the contention that this void claim might be treated as a nullity 
and of no effect at all upon the patent, it did hold that it might, 
before or after the conclusion of the suit, be disclaimed, and 
the rest of the patent thereby be rendered valid and effective. 
In the later case of Carleton v. Bokee^®^ the fourth claim of 
the patent was held void because of anticipation. "One void 
claim, however," said the court, "does not vitiate the entire 
patent, if made by mistake or inadvertence and without any 
willful default or intent to defraud or mislead the public." It 
is evident from the case that the court did not consider the 
claiming of too much, under a real belief that he might be en- 
titled to it all, to show an intent to defraud or mislead the 
public.^®® 

It has grown, therefore, to be a legitimate practice to claim 
not only all that the inventor may seem entitled to, but, lest 
this be too much, or the claim be misunderstood, to claim also 
narrower and surer degrees of comprehensiveness.^^® 

2»6 O'Reilly v. Morse, 15 How. 62. 
297 17 Wall. 463. 

298 Leeds & Catlin v. Victor Talking Machihe Co., 213 U. S. 301, syll. 
"Separate claims in the same patent are independent inventions, and the 
infringement of one is not the infringement of the others, and the redress 
of the patentee is limited to the injury he suffers; nor is the validity and 
duration of valid claims affected by the invalidity or expiration of any 
other claim." 

The English rule seems to be otherwise. The United Horsenail Co. v. 
Stewart, 2 R. P. C. 132. Also 59 Law Times 561. 13 Att. Cases 401. 

299 The course of "multiplying claims unnecessarily" was criticized by 
the court in Westinghouse Air-brake Co. v. N. Y. Air-brake Co., 112 
Fed. 424. Criticism is justly due the too frequent practice of multiplying 



Securing a Patent 195 

A multiplicity of claims may be of value for its effect upon 
the courts under certain circumstances. A patent for a com- 
bination is of such narrow credit that its use, with the omis- 
sion of a single element, is often held not to be an infringe- 
ment. Technically the claimant of a combination, who has 
not expressly and explicitly limited himself to the one precise 
form, should be given a scope of equivalents appropriate to the 
deserts of his invention. This breadth of scope should be 
given him, theoretically, and in harmony with other decisions, 
whether he has mentioned the particular equivalents or not. 
In other words, if he has not explicitly Hmited himself, his 
invention entitles him to protection against all merely formal 
evasions of it; and if a later device is not a mere formal 
evasion, it could not properly have been included under the 
patent for the first invention had the patentee thought of in- 
cluding it. Therefore, the recital of various forms of the 
combination is, theoretically, either mere surplusage — such 
forms being included in the one combination as stated in its 
broadest form — or they are distinct and independent of the 
invention and not properly included in the patent. 

It is possible, however, that such variant claims do have a 
practical value, owing to the effect upon the courts' opinions, 
of matters extraneous to the mere merits of the invention. A 
court which, because of the narrowness of an invention, might 
refuse it any range of unexpressed equivalents, may perhaps 
be induced to hold it broad enough to cover mere mechanic- 
ally skillful variations which have been actually expressed in 
the patent. 

claims because of the solicitor's own uncomprehension of the law. Many 
patent attorneys, as well as some courts, are still obsessed by the notion 
that nothing can be property that is not tangible, or represented by some- 
thing tangible. They fail, therefore, to realize that it is the idea of 
means which is patented and not merely the means literally described. In 
order to secure the protection to which they feel the inventor is entitled, 
they literally describe as many variations in the embodiment of the idea 
as they can think of. The actual result is that they often, by the very 
extent and prolixity of their descriptions limit the scope of protection un- 
necessarily, and they always confuse the records of the patented art. 



196 Patents and Inventions 

§ 4. Disclaimer 

With these possible exceptions, the necessity for including 
several claims, and even the value of so doing is dubious. The 
practice is not essential in preventing harm when it appears 
that too much has been claimed in the effort to get all 
that is allowable. The statute^®® provides, "Whenever, through 
inadvertence, accident, or mistake, and without any fraudulent 
or deceptive intention, a patentee has claimed more than that 
of which he was the original or first inventor or discoverer, 
his patent shall be valid for all that part which is truly and 
justly his own, provided the same is a material or substantial 
part of the things patented; and any such patentee, his heirs or 
assigns, whether of the whole or any sectional interest therein, 
may, on payment of the fee required by law. make disclaimer 
of such parts of the thing patented as he shall not choose to 
claim or to hold by virtue of the patent or assignment stating 
therein the extent of his interest in such patent. Such dis- 
claimer shall be in writing, attested by one or more witnesses, 
and recorded in the Patent Office; and it shall thereafter be 
considered as part of the original specification to the extent 
of the interest possessed by the claimant and by those claiming 
under him after the record thereof. But no such disclaimer 
shall affect any action pending at the time of its being filed, 
except so far as may relate to the question of unreasonable 
neglect or delay in filing it." This is a specific statement to 
the effect that the "patent shall be valid for all that part which 
is truly and justly his own,'* without limitation to such part 
as has been stated in a separate claim, valid in itself. In the 
words of the statute, a claim would appear to be equally valid 
whether it is that part of a single claim which is left after 
pruning off the surplus and invalid parts, or is a claim, origi- 
nally complete in itself, left after other excessive claims have 
been removed.^®^ 

300 R. S. ?! 4917. 

301 "Matters properly disclaimed cease to be a part of the invention; 
and it follows that the construction of the patent must be the same as it 
would be if such matters had never been included in the description of 





Correcting Patent 197 

Even when a disclaimer has not been filed before suit, the 
statute provides^®^ that **Whenever, through inadvertence, ac- 
cident, or mistake^ and without any willful default, or -intent 
to defraud or mislead the public, a patentee has, in his specifi- 
cation, claimed to be the original and first inventor or discov- 
erer of any material or substantial part of the thing patented, 
of which he was not the original and first inventor or dis- 
coverer, every such patentee, his executors, administrators, 
and assigns, whether of the whole or any sectional interest in 
the patent, may maintain a suit at law or in equity, for the 
infringement of any part thereof, which was bona fide his own, 
if it is a material and substantial part of the thing patented, 
and definitely distinguishable from the parts claimed without 
right, notwithstanding the specifications may embrace more 
than that of which the patentee was the first inventor or dis- 
coverer. But in every such case in which a judgment or de- 
cree shall be rendered for the plaintiff, no costs shall be re- 
covered unless the proper disclaimer has been entered at the 
Patent Office befor e the commencement qf^ the suit. But no 
patentee shall be entitled tSnffie "5enefits~of this section if he 
has unreasonably neglected or delayed to enter a disclaimer.''*®* 
. Failure to claim all that the patentee might have been en- 
titled to can not be corrected by means of disclaimer. That 
is to say, a patentee can not under pretense of disclaiming 

the invention or the claims of the specification." Dunbar v. Meyers, 94 
U. S. 187 ; Schwartzwalder v. New York Filter Co., 66 Fed. 152. 

An interesting instance in which the patentee, in fear of proof of antici- 
pation, disclaimed the only feature on which his patent could be upheld, 
and thereby worked his own defeat h found in Brunswick, Balke, Col- 
lender Co. V. Klumpp, 131 Fed. 255. Disclaimer not allowed to be cor- 
rected account of mistake, Hillborn v. Hale & Kilborn Mfg. Co., 66 
Fed. 958. 

802 R. s. ? 4922. 

303 Failure to file a disclaimer does not become unreasonable until it is 
evident on the face of the patent that it is too broad or until the decision 
of a court has shown it to be necessary. Seymour v. McCormick, 19 How. 
96; O'Reilly v. Morse, 15 How. 62; Gage v. Herring, 107 U. S. 640. 



198 Patents and Inventiqns 

part of His claim so alter the rest as to make it include more 
than it would have done in its original form.' 



304 



§ 5. Reissue 

Such failure to claim all that the invention included can be 
corrected only by a reissue such as the statute provides for.^^° 
This provision is, '^Whenever any patent is inoperative or in- 
valid, by reason of a defective or insufficient specification, or 
by reason of the patentee claiming as his own invention or dis- 
covery more than he had a right to claim as new, if the error 
has arisen by inadvertence, accident, or mistake, and without 
any fraudulent or deceptive intention, the Commissioner shall, 
on the surrender of such patent and the payment of the duty 
required by law, cause a new patent for the same invention, 
and in accordance with the corrected specification, to be issued 
to the patentee, or, in case of his death or of an assignment 
of the whole or any undivided part of the original patent, then 
to his executors, administrators, or assigns, for the unexpired 
part of the term of the original patent. Such surrender shall 
take effect upon the issue of the amended patent. The Com- 
missioner may, in his discretion, cause several patents to be 
issued for distinct and separate parts of the thing patented, 
upon demand of the applicant, and upon payment of the re- 
quired fee for a reissue for each of such reissued letters patent. 
The specifications and claim in every such case shall be sub- 
ject to revision and restriction in the same manner as original 
applications are. Every patent so reissued, together with the 
corrected specifications, shall have the same effect and opera- 
tion in law, on the trial of all actions for causes thereafter 
arising, as if the same had been originally filed in such cor- 
rected form; but no new matter shall be introduced into the 
specification, nor in case of a machine patent shall the model 
or drawings be amended, except each by the other; but when 
there is neither model nor drawing, amendments may be made 

8<>* Albany Steam Trap Co. v. Worthington, 76 Fed. 966; Hailes v. Al- 
bany Stove Co., 123 U. S. 582; Collins Co. v. Coes, 130 U. S. 56; Carnegie 
Steel Co. V. Cambria Iron Co., 185 U. S. 403. 

805 R. S. § 4916. 



Correcting Patent 199 

upon proof satisfactory to the Commissioner that such new 
matter or amendment was a part of the original invention, and 
was omitted from the specification by inadvertence, accident, 
or mistake, as aforesaid." 

It will be observed that this section provides for a reissue 
only when an existing patent is "inoperative or invalid,'' by 
reason of the deficiency in specification, etc. It does not, in 
terms, cover the case of a patent which is perfectly valid and 
effective, but which, because of the mistake in specification, 
etc., does not give the patentee all of the protection which he 
might have had if he had properly claimed it. The right to 
a reissue originated, however, prior to any specific statutory 
provision, as a judicial interpretation of the spirit of the law 
as a whole. This appears in the case of Grant v. Raymond.^®® 
Grant had secured a patent which, through inadvertency, was 
so vague and inaccurate in its specification as to be ineffective. 
On discovering this he petitioned the Secretary of State to 
issue a new patent, containing a correct description of his in- 
vention and a valid claim which should protect him for the 
unexpired part of his term, and to cancel the old patent. This 
the Secretary did although no part of the Patent Statute spe- 
cifically authorized it. Grant then sued Raymond for in- 
fringement of his reissued patent, and the defense was that 
there was no authority for the second, the corrected patent, 
and that it was void. A number of very practical objections 
to even authorized reissue were also raised. The court held, 
however, that although there was no specific authority, the 
reissued patent was good. Chief Justice Marshall, in deliver- 
ing the opinion, said, "If the mistake should be committed in 
the department of state, no one would say that it ought not to 
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 act does not in terms authorize a new patent, even in this 
case. Its emanation is not founded on the words of the law, 
but is indispensably necessary to the faithful execution of the 

306 6 Peters 218 (1832). 



2CO Patents and I mentions 

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? . . . 
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 employs is the compensation 
made to those individuals for the time and labor devoted to 
these discoveries, by the exclusive right to make, use 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, we think, be a departure 
from the spirit and character of the act. . . . The communi- 
cation of the discovery has been made in pursuance of law, 
with the intent to exercise a privilege which is the considera- 
tion paid by the public for the future use of the machine. If, 
by an innocent mistake, the instrument introduced to secure 
this privilege fails in its object, the public ought not to avail 
itself of this mistake, and to. appropriate the discovery with- 
out paying the stipulated consideration. The attempt would 
be disreputable in an individual, and a court of equity might 
interpose to restrain him."^°^ 

The original patent in that case appears to have been actu- 
ally inoperative and ineffective to give any protection. But 
the reasoning on which the court proceeded would equally well 
sustain the correction of a patent which, while in fact opera- 
tive, did not protect the inventor as fully as his invention en- 
titled him to be protected. And the courts do extend it to 
just such cases. Thus in Wilson v. Coon^°® it was contended 
that the reissued patent was void because the original was in 

307 xhe court also answers the practical objections that to allow a reissue 
for mistake would vest judicial power in the Secretary of State, and that 
the reissue would retroact upon persons who had lawfully taken ad- 
vantage of the failure to protect the invention. That a reissue may be 
granted to correct a mistake of the Patent Office itself, as suggested ini 
Grant v. Raymond, see. Railway Register Co. v. Railroad Co., 23 Fed. 
593. In Hobbs v. Beach, 180 U. S. 383, a reissue was allowed to correct 
a mistake, not in the specification but in the drawings. 

308 6 Fed. 611. 



Correcting Patent 201 

fact valid and operative. But the court rejected the proposi- 
tion, saying, "a patent may be inoperative from a defective or 
insufficient description, because it fails to claim as much as 
was really invented, and yet the claim may be a valid claim, 
sustainable in law, and there may be a description valid and 
sufficient to support such claim. In one sense such patent is 
operative and is not inoperative. Yet it is inoperative to ex- 
tend to or claim the real invention, and the description may 
be defective or insufficient to support a claim to the real in- 
vention, although the drawings and model show the things in 
respect to which the defect or insufficiency of description ex- 
ists, and show enough -to warrant a new claim to the real in- 
vention. It can never be held, as it never has been held, in a 
case where the point arose for decision ; that a patent can not 
be reissued where a suit could be sustained on the specifica- 
tion and claim as they are."^°® 

Inadvertence, accident, or mistake are essential in the. 
justification for a reissue. The whole theory of a reissue is 
the correction of such an error only. If the inventor has de- 
liberately omitted matter which he knew belonged in his speci- 
fication and claim, he will be presumed to have intended not 
to claim it and to have abandoned it to the public.^^® "A clear 
mistake, inadvertently committed, in the wording of the claim 
is necessary. "^^^ What amounts to inadvertence or mistake 
depends upon the circumstances. It should be noted however 
that the question will be much more strictly examined when 
the attempt is to expand the claim (as discussed in the follow- 

309 "Xo justify a reissue it is not necessary that the patent should be 
wholly inoperative or invalid. It is sufficient if it fail to secure to the 
patentee all of that which he has invented and claimed," Hobbs v. Beach, 
180 U. S. 383, 394; Miller v. Brass Co., 104 U. S. 350; American etc. Co. 
y. Porter, 232 Fed. 456. 

310 For further discussion of this point see the topic Abandonment. 

311 Parker, etc. Co. v. Yale Clock Co., 123 U. S. 87, 103; "Where it is 
apparent on the face of the patent, or by contemporary records, that no 
siKh inadvertence, accident, or mistake, as claimed in a reissue of it, 
could have occurred, an expansion of the claim cannot be allowed or sus- 
tained," James v. Campbell, 104 U. S. 356, 37^ ; Stafford Co. v.' Coldwell 
Co., 202 Fed. 744. See also the cases cited in the following paragraphs. 



202 Patents and Inventions 



ing paragraphs) than when it is only to perfect, without broad- 
ening, an existing patent.^^^ 

It seems to be a generally accepted rule that courts will not 
review the decision of the Commissioner of Patents that the 
defect was in fact the result of mistake and inadvertence, if 
the purpose of the reissue is only to perfect the protection 
which the original purported to grant and not to enlarge the 
scope of the protection. There is a great deal of conflict and 
more confusion upon the question of review. Many cases say 
specifically that the Commissioner's finding of mistake, etc., 
will not be reviewed ; many more say that, on one ground or 
another, it will be reviewed. So far as the confusion can be 
cleared at all, the weight of opinion seems to be that where the 
reissue does not give any wider scope of protection than the 
original claimed, the decision will not be reviewed ; but if the 
reissue enlarges the claimed protection the courts will review 
the question of mistake, etc., if there seems to be any real 
doubt of the matter.^^^ 

Purpose of reissue. The statute authorizes a reissue only 
in cases where the specification is defective or insufficient, or 
the claim is for more than the inventor is entitled to. But the 
reasoning of the decision in Grant v. Raymond, supra, that a 
reissue might be had independently of statute, justifies it for 
purposes other than those stated in the statute. It has be- 
come a settled rule that reissues may be had for the purpose 
of expanding original patents which, through mistake and in- 
advertence, claimed less than the inventor was entitled to. "If 
a patentee who has no corrections to suggest in his specifica- 
tion except to make his claim broader and more comprehen- 

312 As to what constitutes mistake, etc., see Autopiano Co. v. American 
Player Co., 222 Fed. 276; Morey v. Lockwood, 8 Wall. 230; James v. 
Campbell, 104 U. S. 356 ; Yale Lock Co. v. James, 125 U, S. 477 ; American 
etc. Co. V. Porter, 232 Fed. 456; Moneyweight Co. v. Toledo Scale Co., 
187 Fed. 826. 

313 "This court will not review the decision of the Commissioner upon 
the question of inadvertence, accident or mistake, unless the matter is 
manifest from the record," Hobbs v. Beach, 180 U. S. 383, 395, quoting 
from Topliff v. Topliff, 145 U. S. 156, 171; Mahn v. Harwood, 112 U. S. 

354- 



Correcting Patent 203 

sive, uses due diligence in returning to the Patent Office, and 
says, *I omitted this,' or, *my solicitor did not understand that,' 
his application may be entertained, and, on a proper showing, 
corre(ition may be made."^^* 

It is this right to have a reissue for the purpose of enlarging 
the scope of protection afforded, as well as for perfecting that 
originally claimed, which has caused much of the confusion 
of statement in regard to reissues. If the original patent actu- 
ally claimed a certain breadth of protection, but the specifica- 
tion upon which the claim was based was inaccurate, or de- 
scribed so much as to be vague, or had some such defect, there 
could not be the objection, and the necessity for close scrutiny 
in allowing a reissue, that there would be if the patentee were 
trying to secure something which he did not even attempt to 
claim in the original. In the latter case the courts will scrutin- 
ize the grounds for the reissue most carefully. To quote fur- 
ther from Miller v. Brass Co.'^'' "We think it clear that it 
was not the special purpose of the legislation on this subject 
to authorize the surrender of patents for the purpose of re- 
issuing them with broader and more comprehensive claims, 
although, under the general terms of the law, such a reissue 
may be made where it clearly appears that an actual mistake 
has inadvertently been made. But by a curious misapplication 
of the law it has come to be principally resorted to for the 
purpose of enlarging and expanding patent claims. And the 
evils which have grown from the practice have assumed large 
proportions. Patents have been so expanded and idealized, 
years after their first issue, that hundreds and thousands of 
mechanics and manufacturers, who had just reason to suppose 
that the field of action was open, have been obliged to dis- 

31* Miller v. Brass Co. 104 U. S. 350, 352; Topliff v. Topliff, 145 U. S. 
156, 170; while it is clear that a reissue for the purpose of broadening 
claims would be permissible on the authority of Grant v. Raymond, supra, 
and this seems the real authority, the case of American etc. Co., v. Porter, 
232 Fed. 456, brings such a re-issue under the statute by saying that 
"specification" includes "claim" and therefore a too limited claim is an 
"insufficient specification." 

815 104 U. S. 350. 



204 Patents and Inventions 

continue their employments, or to pay an enormous tax for 
continuing them. Now whilst, as before stated, we do not 
deny that a claim may be enlarged in a reissued patent, we 
are of opinion that this can only be done when an actual mis- 
take has occurred; not from a mere error of judgment (for 
that may be rectified by appeal), but a real bona fide mistake, 
inadvertently committed; such as a Court of Chancery, in 
cases within its ordinary jurisdiction, would correct. Reissues 
for the enlargement of claims should be the exception and not 
the rule." 

The reissue must be for the same invention as the 
original. It is not a new patent, but a correction of one al- 
ready issued which did not protect the invention for which it 
was issued. "Two leading and imperative requirements stand 
in the path of a reissue ; First, that the error must have arisen, 
*by inadvertence, accident, or mistake'; and, second, that the 
new patent is to be for the 'same invention.' Consequently, 
it must appear, in some manner provided by law, that the in- 
vention for which the reissue is granted was in the contempla- 
tion of the patentee at the outset. . . .""* 

That the new matter claimed in the reissue was really a part 
of the original invention must be shown, said the same court, 
by "clear and positive proof, in harmony with the universal 
rules of equity not to disturb the existing status except by 
proof of that character. No mere inferences can take the 
place of such proof. Ordinarily, what is called for by the 
words *same invention' should appear in some way on the face 
of the original patent, and it cannot be gathered from mere 
inferences or suggestions with reference to what the patentee 
might or might not have conceived." To determine just what 
was the scope of the original invention, beyond what was origi- 
nally claimed, is an extremely difficult proposition. The nat- 
ural tendency of the human mind is to look at any invention 
in the light of later progress, and to ascribe to an inventor 
that which to later and more completely educated minds seems 

3i« Stafford Co. v. Coldwell Co., 202 Fed. 744 ; McDowell v. Ideal Con- 
crete Co., 187 Fed. 814; Parker v. Yale Clock Co., 123 U. S. 87y citing 
much authority. 



Correcting Patent 205 

so obvious that he could not but have known it. The inventor 
himself is still more inclined to believe that he knew and fore- 
saw at the time of his invention all that subsequent experience 
has taught him. Therefore, *'if enlargement is to come, not 
from evidence contained in the original patent (or in the pro- 
ceedings to obtain it), but from what the inventor subsequently 
says (truthfully or untruthfully) was in his mind prior to 
filing the original application, a region of danger, of tempta- 
tion to fraud and deception, would be opened wide. . . ."^^^ 
The statement of the court first quoted is, that ''ordinarily'' all 
that is covered by the reissue ''should appear in some way on 
the face of the original patent.'' While there are a number of 
decisions which do not absolutely require this, the later Su- 
preme Court decisions refuse to allow any claim in a reissue, 
the substance of which is not at least shadowed in the original 
application.^^® A real workable understanding of what the 

317 McDowell V. Ideal etc. Co., 187 Fed. 814, 821. 

318 A full discussion of this matter is found in Parker v. Yale Clock 
Co. 123 U. S. 87 ; Yale Lock Co. v. James, 125 U. S. 447 ; "If the claims of 
the reissue are limited, as they must be, to the specific methanism de- 
scribed in the specification . . ." Electric Gas Co. v. Boston Elec. Co., 
139 U. S. 481, 503; Freeman v. Asmus, 145 U. S. 226; "It is settled by 
the authorities that to warrant new and broader claims in a reissue, such 
claims must not be merely suggested or indicated in the original specifi- 
cation, drawings or models, but it must further appear from the original 
patent that they constitute parts or portions of the invention which were 
intended or sought to be covered or secured by such original patent. It 
is also settled by the authorities that in applications for reissue the patentee 
is not allowed to incorporate or secure claims covering or embracing 
what had been previously rejected upon his original application," Corbin 
Lock Co. V. Eagle Co., 150 U. S. 38, 42; American etc. Co. v. Porter, 
232 Fed. 456, "The further and last statutory condition is that the reissue 
must be for "the same invention." It is true that, for purposes of de- 
termining infringement, the identity of the patented invention is fixed by 
the claims; but to apply the same test to identity of invention as between 
original and reissue loses sight of the difference between the real inven- 
tion and the originally patented invention, and unless there is such a dif- 
ference, there is no occasion for reissue. To recognize that difference 
and permit it to be corrected is the whole purpose of the reissue statute; 
and so it seems quite destructive of the statute to assume that the identity 
of the actual invention is permanently declared and fixed by the form 



2o6 Patents and Inventions 

courts will recognize as indicated in the original application, 
can be had only in study and comparison of the cases them- 
selves, much more fully than can be set out in a text book. The 
presumption is in favor of the validity of the reissue, as it is 
in favor of the validity of any patent, and the original must 
be introduced in evidence as the basis of an attack.^^® 

The time within which a reissue must be asked is not 
limited by the statute in any way, although of course there 
would be no point in a reissue after the term of the original 
had expired. Where the reissue is sought for the purposes 
specified in the statute, namely, to correct a defective or in- 
sufficient specification, or to narrow the claim, there could be 
no real objection to its being granted at any time.**® But as we 
have seen, the right to a reissue for the purpose of broadening 
a claim appears to be founded on judicial interpretation of the 
general law, not on specific statute. There might well be ob- 
jection to broadening a patent after the lapse of time; and the 
same judicial authority which inaugurates the right can of 
course limit it. The Supreme Court, accordingly, has limited 
the time, within which a reissue for the purpose of broaden- 
ing claims may be had, to what is reasonable under all the cir- 
cumstances. In Miller v. Brass Co.,**^ the court says, "Re- 
issues for the enlargement of claims should be the exception 
and not the rule. And when, if a claim is too narrow,- — that 
is, if it does not contain all that the patentee is entitled to, — 
the defect is apparent on the face of the patent, and can be dis- 

which the original claims are inadvertently allowed to take. In the same 
way as with reference to mistake, the question of identity is submitted to 
the Patent Office, and for the same reason its conclusion is to be taken 
as prima facie right. The last sentence of section 53 even permits the 
Patent Office, in certain cases, to go entirely outside the record to de- 
termine what the original invention was. It follows that only when it is 
clear that the reissue is not for the same invention are the courts justified 
in reaching that conclusion; and we take this to be the rule of the decis- 
ions hereinafter cited." 

318 Seymour v. Osborne, 11 Wall. 516; Second reissue may be compared 
directly with the original, Hoskin v. Fisher, 125 U. S. 217; But cf. post^ 

320 Accord, Sewing-Machine Co. v. Frame, 24 Fed. 596. 

821 104 U. S. 350. 



Renewal of Applications 207 

covered as soon as that document is taken out of its envelope 
and opened, there can be no valid excuse for delay in asking 
to have it corrected. Every independent inventor, every me- 
chanic, every citizen, is affected by such delay, and by the issue 
of a nev^ patent with a broader and more comprehensive claim. 
The granting of a reissue for such a purpose, after an un- 
reasonable delay, is clearly an abuse of the power to grant re- 
.issues, and may justly be declared illegal and void. It will not 
do for the patentee to wait until other inventors have pro- 
duced new forms of improvement, and then, with the new 
light thus acquired, under pretence of inadvertence and mis- 
take, apply for such an enlargement of his claim as to make 
it embrace these new forms. Such a process of expansion 
carried on indefinitely, without regard to lapse of time, would 
operate most unjustly against the public, and is totally un- 
authorized by the law. In such a case, even he who has rights, 
and sleeps upon them, justly loses them. The correction of a 
patent by means of a reissue, where it is invalid or inoperative 
for want of a full and clear description of the invention, can- 
not be attended with such injurious results as follow from 
the enlargement of the claim. And hence a reissue may be 
proper in such cases, though a longer period has elapsed since 
the issue of the original patent. But in reference to reissues 
made for the purpose of enlarging the scope of the patent, 
the rule of laches should be strictly applied ; and no one should 
be relieved who has slept upon his rights, and has thus led the 
public to rely on the implied disclaimer involved in the terms 
of the original patent. And when this is a matter apparent 
on the face of the instrument, upon a mere comparison of the 
original patent with the reissue, it is competent for the courts 
to decide whether the delay was unreasonable, and whether the 
reissue was therefor contrary to law and void."^^^ 

Since the matter depends upon circumstance, it is obvious 
that there can be no arbitrary length of time after which the 
right to a reissue will be automatically lost. A rule of pre- 

322 Reiterated, Mahn v. Harwood, 112 U. S. 354. 



2o8 Patents and Inventions 

sumption was stated, however, in Topliff v. Topliff,^^^ as fol- 
lows : "due diligence must be exercised in discovering the mis- 
talke in the original patent, and, if it be sought for the pur- 
pose of enlarging the claim, the lapse of two years will ordi- 
narily, though not always, be treated as evidence of an aban- 
donment of the new matter to the public to the same extent 
that a failure by the inventor to apply for a patent within two 
years from the public use or sale of his invention is regarded, 
by the statute as conclusive evidence of an abandonment of the 
invention to the public."^" But while it thus appears that the 
presumption of invalidity does not begin to run until two years 
have passed, a much shorter time than this may demonstrate 
such unjustified delay as will bar the right to a reissue/^^ 

The inventive quality of the matter covered by the re- 
issue will, as in the case of all inventions, be considered as of 

323 145 u. S. 156, 171. 

324 "Where a reissue expands the claims of the original patent, and it 
appears that there was a delay of two years, or more, in applying for it, 
the delay invalidates the reissue, unless accounted for and shown to be 
reasonable." Hoskin v. Fisher, 125 U. S. 217, quoting Wollensak v Reiher, 
115 U. S. g6; American, etc. Co. v. Porter, 232 Fed. 456. "By the issue of 
a patent, the inventor dedicates to the public everythin.15 which he does not 
claim as his monopoly. Upon this dedication, the public has a right to rely, 
and if members of the public devote time and money to the manufacture 
of a device which the inventor has so dedicated, or to the devising, in- 
venting and patenting of structures which embody such a feature, it may 
be presumed that this is done upon the faith of the dedication; and so 
the inventor may not be permitted thereafter to enlarge his monopoly to 
the prejudice of these new rights, — even though, except for them, the 
reissue would be permissible. The settled doctrine has come to be that 
from a delay of more than two years, and in the absence of any sufficient 
contrary evidence, these fatal intervening rights (public or private) will 
be presumed; in the presence of less delay, they must be proved. But 
see White v. Dunbar, 119 U. S. 47, 52, 7 Sup. Ct. 72, 30 L. Ed. 303, and 
Milloy Co. V. Thompson Co. (C. C. A.) 148 Fed. 843, 847, 78 C. C. A. 533." 

325 The authorities on the matter of time allowed are not as numerous 
as they appear to be. In many cases in which it is said that too long a 
time has been allowed to pass, it is specifically held that the reissue is 
not for the same invention, and it would, therefore, have been invalid even 
if applied for within two hours. Cf. Haines v. Peck, 26 Fed. 625. 

As instance of what will excuse a long delay, see Whitcomb v. Coal 
Co., 47 Fed. 658; Cf. Wollensak v. Sargent, 151 U. S. 221. 



Renewal of Applications 209 

the date of the invention. Since the reissue is only a correc- 
tion of the original patent and covers only the original in- 
vention, the date must be that of the original invention. Also 
since the reissue is considered not as a new patent, standing 
by itself, but as a correction of the old patent, the fact that 
the device involved has been in public use or on sale more than 
two years prior to the application for reissue does not neces- 
sarily bar the reissue, as it would bar an original patent. That 
fact will, however, have an important bearing on the question 
of whether or not a reissue is lost through undue delay in ap- 
plying for it.' 



326 



§ 6. Amendment 

When the defect is discovered before the patent has actu- 
ally been issued, it may be corrected by amendment of the ap- 
plication. There is no express provision of the statute upon 
this subject, but it seems to follow as a matter of course. The 
rules of practice of the Patent Office provide that^^^ "the ap- 
plicant has a right to amend before or after the first rejection 
or action; and he may amend as often as the examiner pre- 
sents new references or reasons for rejecting." The rules also 
provide when and how the amendment shall be made. 

The patentee can not by amendment make the application 
cover a different device than the one claimed in his original 
application. He may so correct the description, or even add to 
it as to make it cover the entire invention, but he can not de- 
scribe what would amount to another invention. He is re- 
stricted to the remedying of defects in the description thereof 
and in the claims.'^® 

826 Grant v. Raymond, 6 Peters 218, 244 ; Stimpsoa v. Railroad Co., 4 
How. 380; Coffield Co. v. Howe Co., 172 Fed. 668. 

327 Rule No. 68. 

328Hobbs V. Beach, 180 U. 5. 383, 395— holding the defense that the 
claims had been unlawfully expanded before issue of the patent not sus- 
tained. Eagleton Mfg. Co. v. West, etc. Mfg. Co., iii U. S. 490; Kirch- 
berger v. Am. Acetylene Burner Co., 128 Fed. 599; Cleveland Foundry 
Co. V. Detroit Vapor Stove Co., 131 Fed. 853; American Lava Co. v. 
Steward, 155 Fed. 731. 



2IO Patents and Inventions 

If the change desired is such as would amount to the descrip- 
tion of another idea of means, a different invention, than the 
one actually though incompletely described and claimed, a new 
application under oath must be made, as for a new and distinct 
invention. 

§ 7. New Applications 

Abandoned applications. All applications for a patent 
must be completed so as to be ready for examination by the 
Commissioner within one year from the time the application is 
filed.^*® An application consists^^® of the petition, specifica- 
tion, oath, fee of $15.00, and when required, drawings, model 
and specimen. It is not complete until all these parts are re- 
ceived by the Patent office.^^^ If it is not so completed within 
the year it will be regarded as abandoned, unless it be shown 
to the satisfaction of the Commissioner of Patents that such 
delay was unavoidable.^^^ 

When the application is completed, if it has been acted upon 
unfavorably and the applicant has been notified thereof, it is 
his duty to take some further action to secure his patent. If 
he fails to prosecute his application within one year from the 
date of the adverse action^^^ he is presumed to have abandoned 
it just as in case of failure to complete it. 

The right to a patent may be abandoned to the public by the 
inventor regardless of his actions in respect to securing a 
patent. Such abandonment is a matter of his real intent as 
evinced by his conduct. The abandonment of an application, 
and consequent possible loss of his patent, is quite another 
ipatter, in that it has nothing whatever to do with his real 

329 R. s. § 4894. Until amendment of 1897 the time limit was 2 years. 

330 Rule No. 30. 

381 "It is desirable that all parts of the complete application be de- 
posited in the office at the same time, that all the papers embraced in the 
application be attached together; otherwise a letter must accompany each 
part, accurately and clearly connecting it with the other parts of the 
application." 

332 R. S. ? 4894. 

338 Two years prior to amendment of 1897. 



Renewal of Applications 211 

intent. The abandonment of an application, is an arbitrary 
condition fixed by statute, and resulting from the mere lapse 
of time. There is the ameliorating provision, however, that 
this condition of abandonment shall not be deemed to exist if 
the delay is excused to the satisfaction of the Commissioner. 
This possibility of excuse should not be confounded with the 
fact that when certain circumstances give rise to an appear- 
ance of real intent to abandon, it is possible to refute that ap- 
pearance by a showing of other facts which nullify the infer- 
ence from the first ones. The arbitrary conclusion decreed by 
the statute, and the conclusion of intent deduced from the 
facts, are, however, often enough confused in the opinion to 
make some seeming conflict.^^* Real abandonment arising 
from apparent intent thereto has already been discussed.^^^ 

New applications. An important difference between aban- 
donment of the invention, and abandonment of the applica- 
tion is, that when the former is satisfactorily shown by the cir- 
cumstances it is irretrievable. The abandonment of the ap- 
plication, however, even if the delay be not excused, does not 
ipso facto preclude the inventor from later securing a patent.^^® 
He may file another application and does not lose his right to 
a patent unless, and until, such time has elapsed before the 
filing of that application that the device has been in public use 
or on sale more tharl two yeiars prior thereto.®^^ 

The two years dates from the filing of the new application 
and not from the filing of the original one. This question has 
come squarely before the court.^^^ In 1894 an inventor filed 
an application which was rejected, and notice given to him, the 
same year. He failed to take further action for more than a 
year. This delay he attempted to excuse, but the reasons 
given were not satisfactory to the Commissioner. Accordingly 

33* Beverly v. Henderson, Fed. Cas. No. 1379, 9 Blatch. 50. 

335 Commissioner's decision against sufficiency of excuse held to be final. 
Hayes-Young Tire Plate Co. v. St. Louis Transit Co., 137 Fed. 80. 

336 Western Electric Co. v. Sperry Elec. Co., 58 Fed. 186. 

337 Western Elec. Co. v. Sperry Elec. Co., 58 Fed. 186; Hayes- Young 
Tire Plate Co. v. St. Louis Transit Co., 137 Fed. 80. 

338 Hayes etc. Co. v. St. Louis Transit Co., 137 Fed. 80. 



212 Patents and Inventions 

he filed a new application in 1901. A question of pleading 
raised the issue whether the patent would be valid if the in- 
vention had been in public use more than two years before this 
later application, though not before the date of the first appli- 
cation. The court said that the two years would date from 
the application of 1894 if that of 1901 could be considered a 
mere amendment and continuation of the former. But they 
held that, "the abandonment of an application destroys the 
continuity of the solicitation of a patent. After abandonment 
a subsequent application institutes a new and independent pro- 
ceeding, and the two years public use or sale which may in- 
validate the patent issued upon it must be counted from the 
filing of the later application.''^^® 

As the public use or sale is effective to defeat patentability 
regardless of the inventor's consent therein, it is wise, where 
the time on which abandonment is predicated has passed, un- 
less the inventor is certain there has been no such use with or 
without his consent, to present excuse, if possible, for the de- 
lay, rather than to let the original application go and file a 
new one. 

Failure to pay final fee. If after an application has 
been allowed and a patent ordered to issue, the patentee fails 
to pay the final fee within six months after the sending of 
notice to him, a new application becomes necessary.^*® It has 
been held that such new application may contain more in 
breadth of claim than the original one did, so long as the in- 
vention itself is not exceeded.^*^ A new application, in the 
sense of a new petition, oath, description, etc., while it is ap- 
parently allowable, is not necessary. The statute provides that 
in such case of non-payment, "Any person who has an inter- 
est in" the invention, "whether as inventor, discoverer or as- 
signee" may make an application for a patent. It logically 
follows that the statute does not here use "application" with 

339 Citing, Beverly v. Henderson, Fed. Cas. No. 1379, 9 Blatch. 50; 
Mowry v. Barber, Fed. Cas. No. 9892 ; Lindsay v. Stein, 10 Fed. 907 ; Lay 
V. Indianapolis Brush & Broom Mfg. Co., 120 Fed. 831. 

340 R. s. ? 4897. 

341 Bowers v. San Francisco Bridge Co., 69 Fed. 640. 



Renewal of Applications 213 



the same meaning it has elsewhere, and requires only an ap- 
plication for the issue of the patent already adjudged.' 



342 



§ 8. Appeal in Case of Rejection 

The statute®*^ provides "Whenever, on examination, any 
claim for a patent is rejected, the Commissioner shall notify 
the applicant thereof, giving him briefly the reasons for such 
rejection, together with such information and references as 
may be useful in judging of the propriety of renewing his ap- 
pHcation or of altering his specification." The applicant may 
then, if he chooses, alter his claims so as to eliminate there- 
from matter which has in the opinion of the Commissioner 
been anticipated and offer the altered claims for approval. If 
they are again rejected as too broad, he may again correct 
them, and this rejection, correction and resubmission may con- 
tinue until limited by the subject matter itself. When, at any 
stage in this procedure, the applicant does not believe that the 
earlier patents, referred to by the Commissioner as anticipa- 
tions, necessitate a change in his claims, the statute provides, 
"And if, after receiving such notice, the applicant persists in 
his claim for a patent, with or without altering his specifica- 
tions, the Commissioner shall order a re-examinatidn of the 



cdse. 



If upon this re-examination, the application is again re- 
jected, the applicant may then, and then only, appeal. Al- 
though the statute reads as though these examinations and 
rejections were made by the Commissioner, they are in fact 
the work of "preliminary examiners," and the appeal is made 
from their decisions to a group of examiners, also subordi- 
nate to the Commissioner, called the board of examiners-in- 
chief.^" If the applicant is dissatisfied with the decision of 
this board he may, on payment of the fee prescribed,®*^ appeal 
to the Commissioner in person.®*® If he is still dissatisfied, 

5*2 Ex parte Livingston, 20 O. G. 1747. 
8« R. S. ? 4903. 

3** R. S. ^ 4909. The course of procedure is described by the court in 
Butterworth v. Hoe, 112 U. S. 50. 
3*5 $20.00, Rule 140. 
3*« R. S. § 4910. 



214 Patents and Inventions 

after the decision of the Commissioner he may carry his ap- 
peal to the Court of Appeals of the District of Columbia.^*^ 
A favorable decision by this court affects only the right to have 
a patent issued and does not in any way determine the validity 
*r' of the patent after it has been issued.^*^ 

• \^\ The rules of procedure of appeals, the time for filing papers, 

\^^^ -^ ^ notices to be given, forms, etc. can be found in the Rules of 
. ' • -^ the Patent Office and in books upon the detail work of solicit- 
^'' -^ ing patents, and are too technical to be discussed here.^*^ 

If the decision of the Court of Appeals is adverse to the 
claimant, or if he does not choose to appeal to that court at 
all, he has still a further proceeding to compel issue of a patent 
to him.^^® "Whenever a patent on application is refused, either 
by the Commissioner of Patents or by the Supreme Court of 
the District of Columbia upon appeal from the Commissioner, 
the applicant may have remedy by bill in equity ; and the court 
. having cognizance thereof, on notice to adverse parties and 
other due proceedings had, may adjudge that such applicant 
is entitled, according to law, to receive a patent for his inven- 
tion, as specified in his claim, or for any part thereof, as the 

847 Prior to the act of February 9, 1893 creating this court, the appeal 
was to the Supreme Court of the District of Columbia, R. S. S 4911. It 
was changed by §9 of the act. By the act of March 3, 191 1 (Judicial 
Code ? 250) the decision of the Court of Appeals is declared to be final 
except in certain cases which do not include patent matters, subject to 
certiorari by the Supreme Court of the United States or certificate to it. 
If the examiner or the Commissioner should refuse to act at all, a writ 
of mandamus would undoubtedly be proper. Steinmetz v. Allen, 192 

u. s. 543. 

348 R, s, § 4914^ Rousseau v. Brown, 21 App. D. C. 73. 

3*® It has been held that there is no appeal from the Commissioner to 
the Secretary of the Interior on his finding as to patentability. Butter- 
worth V. Hoe, 112 U. S. 50. The multiplicity of appeals and difficulty 
of acquiring a patent is severely criticized by U. R. Lane, in Dilatory 
Patent Procedure, 20 Green Bag 503. 

350 R. S. § 4915. By § 24 of the Judicial Code, the action is within the 
primary jurisdiction of the United States District Courts. In Butter- 
worth V. Hill, 114 U. S. 128, it was held, without deciding where the action 
should be brought, that it could not be brought in any other district than 
the one of which the Commissioner was an inhabitant. 



Conflicting Applications 215 

facts in the case may appear. And such adjudication, if it 
be in favor of the right of the a5>plicant, shall authorize the 
Commissioner to issue such patent on the applicant filing in 
the Patent Office a copy of the adjudication, and otherwise 
complying with the requirements of law. In all cases, where 
there is no opposing party, a copy of the bill shall be served on 
the Commissioner ; and all the expenses of the proceeding shall 
be paid by the applicant, whether the final decision is in his 
favor or not." This right has been held to be available only 
when the application has been rejected on the ground that the 
alleged invention is not, on its merits, entitled to a patent.^^^" 
This proceeding must be brought within the one year limited 
for the prosecution of applications after adverse action,^'^ un- 
less the delay is satisfactorily excused,^^^ and to secure a de- 
cision in its favor the alleged invention must not only be prior 
in time to the one specifically set up in anticipation by the Com- 
missioner, but must also be patentable on its own merits. 



35S 



§ 9. Interferences 

Whenever an application is filed, setting out an alleged in- 
vention which the Commissioner feels is anticipated by an un- 
expired patent or earlier application for a patent, and there is 
a contention that the device for which application was last 
made was in fact invented before the one already patented or 
for which patent was first asked, the Commissioner is required 
by the Statute to give notice to the parties and to try the 
question of priority of invention.^*^* The statute reads, "When- 
ever an application is made for a patent which, in the opinion 
of the Commissioner, would interfere with any pending appli- 
cation, or with any unexpired patent, he shall give notice there- 
of to the applicants, or applicant and patentee, as the case may 
be, and shall direct the primary examiner to proceed to de- 
termine the question of priority of invention. And the Com- 

85o« Butterworth v. Hoe, 112 U. S. 50. 
851 R. S. § 4894. 

352 Gandy v. Marble, 122 U. S. 432. 
853 Hill V. Wooster, 132 U. S. 693. 
85* R. S. § 4904. 




2i6 Patents and Inventions 

m 

missioner may issue a patent to the party who is adjudged the 
prior inventor, unless the adverse party appeals from the de- 
cision of the primary examiner, or of the board of examiners- 
in-chief, as the case may be, within such time, not less than 
twenty days, as the Commissioner shall prescribe." Literally 
taken, this covers all cases where the later application is, in 
the opinion of the Commissions, anticipated by an earlier one, 
for in all such cases one would interfere with the other. But 
it is obvious that a question of priority does not arise, so as 
to be triable, in all such cases. Even if the opinion of antici- 
pation is not acquiesced in, the controversy may be solely over 
the essential id'entity of the two devices, and priority of one or 
the other be admitted. In such circumstance the statute would 
not require notice and trial. When a trial as to priority is had 
under the statute, the procedure, taking of testimony, etc., is 
governed by the statutes and the rules of the office. Appeal 
from the decision of the Commissioner is the same as in other 
cases of unfavorable decision upon an application.^^^ 

§ 10. Protest Against Issue 

One who is not a party in any way to a patent, may, on learn- 
ing that a patent is pending in the patent office, file with the 
Commissioner a protest against its allowance, on the ground 
of public use or sale more than two years prior to the filing 
of the application.^^® 

355 The question of what constitutes priority of invention is discussed 
supra. 

359 In re National Phonograph Co., 89 O. G. 1669; U. S. ex rel. v. Allen, 
loi O. G. 1 133; Ex parte Kephart, 103 O. G. 1914; Ex Parte Hartley, 136 
O. G. 1767; Kneisely v. Kaisling, 174 O. G. 830; In re Lewthwaite, 176 
O. G. 525. 




'A- 



CHAPTER VII 

i 

Actions to Avoid Patents 

After a patent has once been issued by the patent office, in 
proper form, it is too late for that office to revoke it or other- 
wise actively to affect its validity. "It has passed beyond the 
control and jurisdiction of that office, and is not subject to be 
revoked or concelled by the President or any other officer of 
the Government. ^^^ It has become the property of the paten- 
tee, and as such is entitled to the same legal protection as 
other property. ^^^ The only authority competent to set a pat- 
ent aside, or to annul it, or to correct it for any reason what- 
ever, is vested in the courts of the United States, and not in 
the department which issued the patent."^^^ 

Government action to invalidate. The government 
may bring an action in the courts to have a patent that has 
been issued annullecj and set aside, and this may be done 
"not only when it has a proprietary and pecuniary interest 
in the result, but also when it is necessary in order to en- 
able it to discharge its obligation to the public, and some- 
times when the purpose and effect are simply to enforce the 
rights of an individual. "^^'^ Such suits must be based on the 
ground that the patent has been improperly issued on account 
of fraud, accident, mistake or the like, and the fraud or other 
matter on which invalidity is predicated must be clearly 
proved.^^* 

360 McCormick Machine Co. v. Aultman, 169 U. S. 606, citing U. S. v. 
Schurz, 102 U. S. 378; U. S. v. Am. Bell Telephone Co., 128 U. S. 315, 

363. 

^61 Citing Seymour v. Osborne, 11 Wall 516; Cammeyer v. Newton, 94 
U. S. 225 ; U. S. V. Palmer, 128 U. S. 262, 271. 

362 Citing Moore v. Robbins, 96 U. S. 530; U. S. v. Am. Bell Telephone 
Co., 128 U. S. 315, 364; Mich. Land & Lumber Co. v. Rust, 168 U. S. 589, 

593. 

363 U. S. V. Am. Bell Telephone Co., 167 U. S. 224, 264; Id. 128 U. S. 315. 

364 U. S. V. Am. Bell Telephone Co., 167 U. S. 224; in this case delay of 



2i8 Patents and Inventions 

Interfering patents. When two patents have been issued, 
whether by oversight of the patent office, or for any other 
reason, which one of the patentees believes to cover the same 
invention, the question is ordinarily decided in the usual pro- 
cedure of an infringement suit. The defense is made that the 
plaintiff's patent is invalid, or if valid does not include the 
device which the defendant is making, vending or using under 
the second patent. A decision in favor of the defense, sus- 
tains either the non-identity of the inventions or the invalidity 
of the plaintiff's patent. As the decision may be in the defend- 
ant's favor on either ground, it does not necessarily determine 
the validity or invalidity of the plaintiff's patent unless the 
court so specifies particularly. But a decision in the plaintiff's 
favor settles the identity of the patents and the priority of the 
plaintiff's patent, and thus indirectly, determines the defend- 
ant's patent to be invalid. The statute provides in addition to 
this procedure an action whereby one of the patents may be 
directly declared void. The section reads,^'® "Whenever there 
are interfering patents, any person interested in any one of 
them, or in the working of the invention* claimed under either 
of them, may have relief against the interfering patentee, and 
all parties interested under him, by suit in equity against the 
owners of the interfering patent; and the court, on notice to 
adverse parties, and other due proceedings had according to the 
course of equity, may adjudge and declare either of the pat- 
ents void in whole or in part, or inoperative, or invalid in any 
particular part of the United States, according to the interest 
of the parties in the patent or the invention patented. But no 
such judgment or adjudication shall affect the right of any 
person except the parties to the suit and those deriving title 
under them subsequent to the rendition of such judgment." 

It is to be noted that the result of the decision affects* only 
the parties to the suit and • those subsequently deriving title 
from them. Its practical advantage is therefore not much 
greater than that of the ordinary infringement action. The 

the patent office from the time of application in 1877 to an issue in 1891 
without any intermediate action was held not to invalidate the patent. 
"6 R. S. § 4918. 



Invalidating Patents . 219 

statute also provides that both patents may be declared in- 
valid on a prop'er showing, so that there is a certain risk in 
bringing the action to the plaintiff, unless he has, as in some 
actions, something to gain and nothing to lose. It was actu- 
ally held, in the case of Palmer Pneumatic-tire Co. v. Lozier,^" 
that both patents were invalid. Counsel on both sides agreed 
that the court could decide nothing but the priority of one or 
the other of the patents and such had been the opinion of the 
court below, which decided that the patent later applied for and 
issued really represented the prior invention and was there- 
fore the valid one of the two. "On the contrary," said the 
Appellate Court, "we think the court is bound to determine 
whether, upon identifying the subject matter of the interfering 
patents, the invention therein stated is patentable. If it is not, 
and the court should go on and pronounce a decree of nullity 
against one of the patents, it would do so at the instance of 
one who has no right to protect, and consequently no standing 
on which to assail his adversary. The parties would not stand 
on equal ground in such a litigation, and consequently the 
power of the court would be perverted to the determination of 
an unprofitable inquest as to who was the first discoverer of a 
nullity. The outcome would be that, while one pretender 
would be dislodged, the other would occupy the field unscathed. 
We think that if, upon inspection of the patents, or in the 
course of the investigation it must make in order to determine 
the nature of the alleged invention, the court should see that 
the patents are void for lack of patentable subject matter, it 
ought not to proceed to an inquiry as to who first discovered 
the thing which the court finds to be null, and decree thereon, 
but should dismiss the bill." The general state of the art as 
shown by evidence outside of the patents themselves is ad- 
missible in this action as it is in others.^^® 

Insufficiency of remedies. It will be observed that neither 
of these actions gives any remedy to the individual who be- 
lieves an existing patent to be void and unenforcible, but who 
is not certain of the fact. The statute authorizes an ac- 

85790 Fed. 732. 

*'° Simplex Ry. Appliance Co. v. Wands, 115 Fed. 517. 



358 



220 Patents and Inventions 

tion to question the validity of a patent only when the com- 
plainant is himself the owner of another patent, or otherwise 
interested in an existing patent. The action by the govern- 
ment, to have a patent declared void, may be started in the 
interest of an individual, but it appears to be maintainable, only 
where the patent is attacked on the ground of fraud, or some- 
thing more fundamental than the mere lack of invention in the 
thing patented. Yet these seem to be the only cases in which 
a patent can be attacked when the owner of the patent has not 
himself started the action and will not do so. 

The only way, therefore, that the validity and effectiveness 
of a patent can be ascertained by one who wishes to enjoy the 
use of the thing patented without the permission of the pat- 
entee, is for him to make use of the invention and take his 
chances either of not being sued by the patentee, or, if he is 
sued, of being able to defeat the patent. But such a course 
involves unjust risk. Many inventions require the investment 
of considerable fixed capital for their utilization. If one 
should make such investments in a mistaken belief that the 
patent was void, and then be successfully restrained by the 
patentee from infringing what the courts should hold to be a 
valid patent, his loss, through inability to utilize his fixed capi- 
tal, would be far in excess of the compensatory damages which 
might be recovered by the plaintiff. That is, he would not only 
have to pay damages to the patentee, but also would lose his 
own investment. Even if no great initial investment were re- 
quired, men might hesitate to go into the manufacture of a 
patented article, even though advised by expert counsel that 
the patent was invalid, knowing that if the patent should be 
held good by the courts, all their profits would be swept away 
and a carefully built up business destroyed. 

Even when capitalists are perfectly willing to take the risk 
of operating in contravention of what they are convinced is an 
improperly issued and worthless patent, they can not always 
do so, successfully, on account of the patent. The patentee 
may himself be too doubtful of the validity of his patent to 
go into court where it can be attacked, and yet he may never- 
theless successfully prevent serious infringement. The Vac- 



N^ 



I 

I 

i -^ 



' V. .; ^ 



"V., 



\ 



'J. 



Invalidating Patents 221 

<€^/ uum Cleaner Co., for instance, had patents covering certain 

elements of the usual construction of vacuum cleaners. The 
Electric Renovator Co. manufactured cleaners which the 
Vacuum Co. asserted infringed its patents. As the Renova- 
"Ss. tor Co. denied that it was infringing a valid patent, the Vac- 
* [ uum Co. sent out circulars and threatening letters warning the 

' wholesale houses and other customers of the Renovator Co., 

that the Renovator Co. had no license and that whoever han- 
• y died its products would be prosecuted for infringement of the 
Vacuum Co.'s patents. For two years it continued this practice 
of frightening off the Renovator Co.'s customers, while at the 
same time persistently refusing to bring suit against anyone, 
in which the validity of its patents could be tried out. Finally, 
the Renovator Co., in the absence of any other remedy, sued 
for an order restraining the Vacuum Co. from continuing its 
-^^^ ' unfair practice. The court granted the injunction on the 
ground that the allegation of infringement and the warnings 
sent out were not made in good faith, and that the lack of 
- U good faith was indicated by the refusal to bring suit in which 
^ Vv the matter could be tried out.^^*' But even in this case the 
'^ ^ validity of the patent itseH was not tried out ; the defendant 
was merely enjoined from unfair practices. It is qtiite con- 
ceivable that, without going so far as to be demonstrably un- 
^ - fair, the owner of an invalid patent might make it almost im- 
possible for any one successfully to invade his unjust monopoly. 
It is a serious defect in the patent law that it does not fur- 
nish any practical method by which the individual public can 
protect itself against the menace and extortionate monopolies 
of invalid patents. It may be that in time an action of some 
form will be provided, whereby one who honestly doubts the 
validity of an existing patent can get the judgment of a court, 
without having to await the dangerous convenience of the 
patentee.""*- 

364* Electric Renovator Co. v. Vacuum Cleaner Co., 189 Fed. 754, Ac- 
cord, Adriance Co. v. National Harrow Co., 121 Fed. 827. 

364b Pqj. ^ discussion of "declaratory judgments" in general see the arti- 
cle by E. R. Sunderland in 16 Michigan Law Rev. 69. See also that of 
Borchard in 28 Yale Law Rev. i. The state of Michigan now provides for 
such declaratory judgments, Pub. Acts of 1919, No. 150. 







CHAPTER VIII 

The Ownership of the Monopoly 

§ I. Duration 

The statute provides^®^ that the owner of a valid patent shall 
have the exclusve right, to make, use and vend the invention or 
discovery covered by it throughout the United States and its 
Territories. This exclusive right is given for a period of 17 
years. The time begins to run from the date of issue of the 
patent, and is unaffected by the date of invention or the date of 
application. The right to acquire a monppoly dates from the 
time of the invention, and the first inventor alone is entitled to 
a patent, no matter if another has been the first applicant. The 
duration of the monopoly, however, dates from the time the 
•patent is issued.^®^' An extreme illustration of the materiality 
of this difference is found in the case of United States v. Amer- 
ican Bell Telephone Co.^^® From about 1878 that Company 
had been operating its phones with transmitters that were 
covered by patents issued at that time. In 1891 another patent 

3« R. S. § 4884. 

s®'^' It is obvious, of course, that since the monopoly dates from the issue 
of the patent, the inventor has no monopoly until then. He can not pre- 
vent others from using his invention prior to the issue of his patent, nor 
can he recover anything as damage. "A patentee can not recover damages 
for the sale or use of his invention prior to the issuance of a patent but 
the fact that articles embodying the invention were manufactured before 
the patent was issued, unless by the patentee's consent, does not authorize 
their use thereafter." (Syl.) Columbia & N. R. R. v. Chandler, 241 Fed. 
261. See also cases cited infra. 

One who has applied for a patent may, however, mark his product 
"Patent Applied For" and this does have a practical deterrent effect, be- 
cause it warns the user of the invention that his invested capital may be 
rendered worthless by the granting of the patent. 

3«« 167 U. S. 224. The "Oldfield Bill," H. R. 1700, April 1913, which 
failed of passage in Congress, contained a provision limiting the monopoly 
to a maximum period of 19 years from the date of application. . 












v^ 



J * Duration of Ownership 223 

^ " \, was issued to them for precisely the same invention. On in- 
vestigation it appeared that the invention on which this latter 
patent was issued had been made prior to that of the patents 
under which the Company had been securing protection. Ap- 
plication for this patent had been made at the proper time, thus 
saving the right to a patent, but the whole matter had been 
neglected by the Patent Office, and no patent had been issued 
till 1 89 1. On suit to set aside this long delayed patent the 
court decided that the delay was not the result of fraud in any 
A ^^ ' ^ form and that the patent was valid and operative from the time 
^v^ ' of its issue. The result was that the company, having operated 

\^ : for many years under a very effective appearance of monopoly, 

v^?^ although without any actual right whatever thereto, now ac- 
^ quired a valid and actually enforcible monopoly for another 17 

\i ^ years longer. 

Conversely, the inventor has no right to the exclusive enjoy- 
ment of his invention, no monopoly of it at all, until a patent 
has actually been issued to him.^®®* 

The patent must be issued by the Patent Office within three 
months from the date of payment of the final fee, which must 
itself take place not later than 6 months from the date on 
. which notification that the application was passed and the 
patent allowed, was sent to the applicant. If this fee is not 
paid within the proper time the statute provides that the patent 
shall be withheld. A new application must then be made in 
order to secure the issue of the patent.^®^ 

The Monopoly is absolute. After the patent has been 

366" Standard Scale Co. v. McDonald, 127 Fed. 709 ; D. M. Steward G>. 
V. Steward, 109 Tenn. 288. 

367 Patents for designs are granted for the term of 3 years and 6 mo., 
or for 7 years, or for 14 years, as the applicant may in his application 
elect." ^ 4931 R. S. The statute prior to the amendment of March 3, 1897, 
provided that patents issued in this country for inventions already pat- 
ented in a foreign country, should expire coincidentally with the expira- 
tion of the shortest of the foreign patents, but this phraseology was 
changed by the amendment, R. S. ? 4887. See the statement, in 191 5, in 
regard to this in Fireball Gis Co. v. Commercial Acetylene Co., 239 
U. S. 156; and in Cameron Septic Tank Co. v. City of Knoxville, 227 
U. S. 39. 



224 Patents and Inventions 

issued the right which it confers is absolute. The right is not 
the invention nor the enjoyment of the invention. It is the 
monopoly of the right to enjoy it. The patentee may utilize 
the invention, may make, use and vend the things covered by 
it if he chooses, but whether he does exercise his privilege of 
enjoyment or not, his right to exclude others is absolute, and 
is npt affected by his own non-use of the privilege. This is 
established beyond doubt by the cases. In the Paper Bag 
Patent case^^® the question was passed upon in actual decision, 
not as mere dictum. It was contended in the case that a court 
of equity had no jurisdiction to restrain by injunction the in- 
fringement of letters patent, the invention covered by which 
had "long and always and unreasonably been held in non- 
use . . . instead of being .made beneficial to the art to which 
it belongs.'' It was conceded, the court said, even by the 
claimant, that the monopoly was not defeated by the non-user 
of the privilege ; that an action at law for infringement would 
^still lie. The only contention was that the right to an injunc- 
tion was lost; that, for the good of the public, unauthorized 
persons should be allowed to make, use and vend the inven- 
tion without restraint by the courts, if the patentee would not 
•exercise the privilege himself, and that the patentee should be 
left to his legal remedy of damages. This contention the court 
absolutely rejected, on the ground that Congress had given 
to a patentee not merely the right to make, use and vend his 
invention himself, but the absolute right of keeping others 
from so doing, and that this monopoly was not lost by neglect 
to put the invention into use.^^^ 

368 210 U. S. 405- 

869 Button Fastener Cases, 77 Fed. 288, 35 L. R. A. 728, cited with ap- 
proval Henry v. Dick, 224 U. S. i, 28_: "If he will neither use his device 
nor permit others to use it, he has but suppressed his own. That the 
grant is made upon the reasonable expectation that he will either put 
his invention to practical use or permit others to avail themselves of it 
upon reasonable terms, is doubtless true. This expectation is based alone 
lipon the supposition that the patentee's interest will induce him to use, 
or let others use, his invention. The public has retained no other security 
to enforce such expectations. A suppression can endure but for the life 
of the patent, and the disclosure he has made will enable all to enjoy the 



Transfer of Ownership 225 

§2. Transfer of the right 

The monopoly conferred by the patent may be transferred 
to others at the will of the patentee as freely as any other 
form of incorporeal personal property. It is personal prop- 
erty and descends to the personal representatives of a deceased 
owner, rather than to his heirs.^®^' The owner may also enter 
into agreements in respect to the enjoyment of the right, 
which agreements may, like other contracts, be either written 
or oral. The transfer of the title to the patent, that is to say, 
the complete . ownership of the monopoly itself, can be made 
only by an instrument in writing, as the statute is interpreted. 
The statute provides that "every patent or any interest therein 
shall be assignable in law by an instrument in writing,''^^^ and 
the conveyance, to be effective, is 'apparently limited to this 
method."^ 

fruit of his genius. His title is exclusive, and so clearly within the con- 
stitutional provisions in respect of private property that he is neither 
bound to use his discovery himself nor permit others to use it." Victor 
Talking Machine Co. v. The Fair, 123 Fed. 424. An attempt was made 
to change this rule by a bill introduced in Congress, April 7, 1913 — ^H. R. 
1700 — called the "Oldfield Bill." It provided, among other minor changes, 
that when it should be proved that the owner of a patent was withholding 
or suppressing all benefit to the public, from the invention, he might be 
compelled, by court action, to license others to make use of it upon proper 
terms of recompense. The bill failed to pass and prominent patent at- 
torneys and inventors were reported as having testified that deliberate 
suppression of marketable inventions was practically non-existant. The 
act of July 13, 1832 provided that in case of patents issued to aliens, they 
should become void in the event of failure to introduce the invention into 
public use within one year and to continue such use. This was repealed 
four years later. 

A commendation, on economic g^:ounds, of the fact that inventions need 
not be put into use in this country, is uttered by O. C. Billman in The 
Compulsory Working of Patents, 24 Green Bag 513, 21 Case & Com. 276. 

869* Wilson V. Rousseau, 4 How. 646, 674; De la Vergne Mach. Co. v. 
Featherstone, 147 U. S. 209. 

370 R. s. § 4898. 

371 Gayler v. Wilder, 10 How. 477, 492; Blakeney v. Goode, 30 O. S. 350; 
But see dictum, Paulus v. Buck, 129 Fed. 524. An oral contract to assign 
future inventions will be enforced in equity, Dalzell v. Dueber Mfg. Co., 
149 U. S. 315. 




226 Patents and Inventions 

Such a transfer of the ownership of the patent right vests 
in the assignee all the rights which the assignor has under the 
patent. It is in effect like any other sale of property. The 
new owner, by virtue of the transfer, may sue for infringe- 
ment, may resell the monopoly, or in any other way exercise 
the same power that his assignor could have used.^^^ 

The transfer is, "void as against any subsequent purchaser 
or mortgagee for a valuable consideration, without notice, un- 
less it is recorded in the Patent Office within three months 
from the date thereof.''^^^ Such recording is not obligatory 
and does not affect the validity of the assignment except as 
against subsequent purchasers without notice. The usual rules 
as to what constitutes actual notice are applicable in respect to 
these assignments. 

Although the patent monopoly itself is created by Federal 
law, its sale, and other contracts concerning it, are subject to 
regulation by State law in the same way that other personal 
property is. A number of states have exercised this power in 
requiring such sales to be recorded, or in declaring promissory 
notes given for the purchase price to be void, unless they show 
on their face that they are so given. It behooves the pur- 
chaser, as well as the seller, of a patent right, therefore, to 
examine the statutes of the particular state upon the matter. ^^^* 

No SPECIAL FORM OF ASSIGNMENT is Set out or Suggested by 
the statute, nor is any particular form requisite. Anything 
that would be sufficient at the Common Law to indicate a clear 
intention to transfer the patent right, properly executed, would 

372 Assignee may sue his assignor, if the latter infringes, just as he 
could any one else. Littlefield v. Perry, 21 Wall. (88 U. S.) 205. In short, 
he is the "owner" of the patent, in place of the original patentee. 

373 R. S. § 4898. Compare, National Cash Reg. Co. v. New Columbus 
Co., 129 Fed. 114. 

373« A Kansas statute, (Gen. Stat, of 1901, 4356 ff.) requiring the seller 
to file affidavits of ownership, etc, was held valid, in Allen v. Riley, 203 
U. S. 347 ; John Woods & Sons v. Carl, 203 U. S. 358. A somewhat similar 
statute had been held not valid in Hollida v. Hunt, 70 111. 109. Parish v. 
Smith, <Ark.) 204 S. W. 415. 

This should not be confused with the power of the state, which also 
exists, to regulate the sale of articles embodying a patented invention. 



V? 



Transfer of Ownership 227 

undoubtedly be sufficient. ^^* A seal upon the assignment is 
not necessary to its validity /^^^ 

An acknowledgment before a notary or other official is un- 
necessary to the effectiveness of the instrument. It is how- 
ever provided in the statute that^^® "If any such assignment, 
grant, or conveyance of any patent shall be acknowledged be- 
fore any notary public of the several States or Territories or 
the District of Columbia, or any commissioner of the United 
States circuit court, or before any secretary of legation or 
consular officer authorized to administer oaths or perform no- 
tarial acts under section seventeen hundred and fifty of the 
Revised Statutes, the certificates of such acknowledgment, un- 
der the hand and official seal of such notary or other officer, 
shall be prima facie evidence of the execution of such assign- 
ment, grant, or conveyance/'^" It would seem a wise policy 
therefore to have it acknowledged and recorded, both because 
of the evidentiary effect of the acknowledgment and because of 
the protection which the record gives against a fraudulent 
second sale by the assignor. 

Effect of the transfer. The sale and transfer of a patent 
monopoly has the* same effect, and creates only Ihe same rights 
and liabilities as does the sale of any personal property. The 
seller, for instance, gives up all property interest in the mo- 
nopoly. He has no lien upon the patent right for payment, 
and if the buyer resells, the sub-buyer is not liable to the 
original seller if the first buyer fails to pay. The recent Eng- 
lish case of Barker v. Stickney,^"* although it arose out of the 

37* Campbell v. James, 18 Blatch. 92; Siebert Cylinder Oil-Cup Co., v. 
Beggs, 32 Fed. 790; Delaware Seamless Tube Co. v. Shelby Steel Tube 
Co., 160 Fed. 928; Myers v. Turner, 17 111. 179; Hill v. Thuermer, 13 Ind. 
351. Forms of assignment whose use is recommended are given in the 
Rules of Practice of the Patent Office. 

"5 Gottfried v. Miller, 104 U. S. 521. 

376 R. s. § 4898. 

377 It is not necessary that the acknowledgment be made at the same 
time the assignment is executed. It will be effective as prima facie proof 
of the execution whenever made. Lanyon Zinc Co. v. Brown, 115 Fed. 
150; Murray Co. v. Continental Gin Co., 149 Fed. 989. 

377* (1918)2 K. B. Div. 356, citing many other English decisions. 



228 Patents and Inventions 

transfer of a copyright, is a precise analogy on this point. 
The plaintiff was author of a book. He had granted to a pub- 
lisher the exclusive right to publish the book, and the owner- 
ship of the copyright when procured. The publisher agreed, 
in consideration, to pay a certain royalty and not to dispose of 
the copyright to others except, "subject to the terms of this 
agreement, so far as the same is applicable.'' This publishing 
company fell into financial difficulties, and a receiver was ap- 
pointed, who sold the coypright, and other assets, to the de- 
fendant. The defendant knew of the terms on which the 
copyright had been sold by plaintiff to the publishing com- 
pany, and, indeed, bought the assets from the receiver, "sub- 
ject to all equities or other claims thereon." Plaintiff sued to 
recover the agreed royalties upon volumes published by the 
defendant, and also for the amount of royalties which had not 
been paid on volumes published by the first company. The 
court held, that the defendant was not liable either for unpaid 
royalties on volumes published by the first company nor on 
those published by itself; that such liability could be founded 
only on contract between the defendant and plaintiff, or on the 
theory of some sort of lien attaching to the property, i.e. the 
copyright ; and that neither a contract nor a lien existed.^"*" 

It is not impossible, that by express provisions in the con- 
tract of sale a right in favor of the seller could be attached to 
the patent, so as to bind subsequent purchasers with knowl- 
edge thereof. The court, in the decision just referred to, 
strongly intimates that it could be done, and, indeed, says as a 
matter of dictum, that "the assignment will create a vendor's 
lien for royalties if some of the provisions of the document 
fairly, though impliedly, point to a reservation of such a lien 
by the patentee or author, provided that the effect of such pro- 
visions is not negatived by the other terms of the bargain. "^^^"^ 

377»> In Dancel v. United Shoe Mach. Co., 120 Fed. 839, it was held with- 
out discussion that the successor in ownership of the assignee of a patent 
right was not liable to the seller, in law, but that he might be liable, under 
certain conditions, in equity. 

377c In Bagot Pneumatic Co. v. Clipper Co. (1902), i Ch. Div. 146, 157, 
is a dictum to the effect that, "If you had notice of a contract between 



Transfer of Ozcnership 229 

The question of how far legal or equitable servitudes can be 
imposed upon personal property seems never to have been 
very positively settled, however. Instances are not infrequent 
of patentees having sold their patents, without payment in 
cash, to corporations which have later become bankrupt and 
whose assets, including the patent, have been sold to pay debts. 
By virtue of the rule just stated, the inventor, having trans- 
ferred the title to his patent to the corporation, would have no 
right whatever against the purchasers from the corporation or 
from the trustee in bankruptcy. There is no doubt but that 
such transactions have occasionally been brought about with 
deliberate intent to ^'freeze out'' the original owner of the 
patent. It is possible that the terms of the original sale might 
be so made as to provide for a revesting of title in the seller in 
case of the buyer's subsequent bankruptcy, etc. The safest 
method, however, for a patentee to protect himself against such 
a contingency would be to sell not to the corporation itself, but 
to a trustee to hold for the corporation on stated terms. 

The seller having transferred the ownership of the right to 
the buyer, can not take it back again merely because the buyer 
fails to pay as agreed, or has become insolvent, nor because the 
buyer has failed to do other things agreed upon.^"' But the 
actual fraud of the buyer, in the inducement of the contract, 
will, of course, permit the seller to rescind the contract, as 
against the buyer, and take back the title. And the parties may 
effectually provide by express stipulation that the title shall 
revert to the seller on the buyer's failure to perform certain 
conditions, or on the occurrence of certain extraneous 
events.^"^ 

the person under whom you claim property, real or personal, and a former 
owner of the property, whereby a charge or incumbrance was imposed 
upon the property of which you thus take possession, and have the en- 
joyment, you take the property subject to that charge or incumbrance, and 
can only hold it subject thereto." The real decision, however, was: that 
the sub-licensee of the right to enjoy a patent was not liable in any way 
to the owner of the patent. 

377« Morgan v. National Pump Co., 74 Mo. App. 155; Barclay v. C R. 
Parmele Co., 70 N. J. Eq. 218; Comer v. Byers, 40 Tex. Civ. App. 239. 

s^T"* Pierpoint Boiler Co. v. Penn etc. Co., 75 Fed. 289 ; Janney v. Pan- 
coast etc. Co., 122 Fed. 535; Van Tuyl v. Young, 13-23 Ohio C. C. 15. 



-' \ 






230 Patents and Inventions 

Conversely, it appears that, in the absence of fraud, the 
buyer can not rescind the agreement and get his money back, 
or refuse to complete his payment, merely because the patent 
turns out to be worthless/^^' But, like any other contract of 
sale, it may be rescinded if it was induced by the fraud of the 
seller."^^ 

Although a buyer of the title to a patent right is not af- 
fected by prior sales of which he has no knowledge, actual or 
/' ^ constructive, he does take the monopoly subject to the prior 

rights of those to whom his seller has given licenses. And this 
seems to be true even though the buyer had not even construc- 
tive knowledge of the existence of such licenses.^^^* But the 
a' ' 'y\ buyer does not necessarily assume the personal obligations of 

!t/\'j his seller toward the licensee.^^^* 
jy' M;^ Furthermore, the mere sale of the patent right, without also 

)\ y/^' an assignment of the seller's contracts under it, does not vest 

(f in the buyer any right to the royalties due from licensees of 

his seller. Thus, in Carlton v. Bird^"' it appeared that G. E. 
Carlton had been the owner of a certain patent and that while 
owner he had given the defendant a license to -use the inven- 
tion, for which the defendant had agreed to pay certain yearly 
royalties. Thereafter, he sold the patent to his wife. The sale 

377«Xilsson V. De Haven, 47 X. Y. App. Div. 537, affd. 168 N. Y. 
656; United States v. Harvey Steel Co., 196 U. S. 310; Eclipse Bicycle Co. 
V. Farrow, 199 U. S. 581. 

377 J Pratt V. Hawes, 118 Wis. 603; Holmes v. Bloomingdale, 76 N. Y. S. 
182; Rose V. Hurley, 39 Ind. 77; Rice v. Gilbreath, 119 Ala. 424; Swinney 
V. Patterson, 25 Nev. 411. There is conflict on this point, however. Thus 
in Marston v. Swett, 66 N. Y. 206, the court says, by way of dictum, "It 
is the settled law of this and several other states that the invalidity of a 
patent is a defense to an action for the purchase price of the same, on the 
ground of a failure of consideration," citing, Dunbar v. Marden, 13 N. H. 
311; Geiger v. Cook, 3 Watts & Serg. 266; Dorst v. Brockway, 11 Ohio 
471; McClure V. Jeffrey, 8 Ind. 79; Mullikin v. Latchen, 7 Blatchf. 136. 

377<»Fort Wayne etc. Rr. v. Haberkorn, 15 Ind. App. 479; Pratt v. Wil- 
cox Mfg. Co., 64 Fed. 589; Whitson v. Phonograph Co., 18 App. D. C. 
565; N. Y. Phonograph Co. v. National Phonograph Co., 144 Fed. 404; 
McClurg V. Kingsland, i How. 202, 206. 

877« Bi-adford Belting Co. v. Kisinger-Ison Co., 113 Fed. 811. 

377' 94 Me. 182. 



Transfer of Ownership 231 

was of "all the right, title and interest I have in the above de- 
scribed invention. . . ," The grantee thereafter started this 
suit, as an action in debt for the royalties clue since she had be- 
come owner of the patent. The court dismissed the action 
because "the case does not show any assignment of the con- 
tract (to pay royalties) to her, except in so far as the deeds 
of the patent rights, already quoted from, may have the effect 
of an assignment. . . . We are, therefore, of the opinion that 
a suit for the breach of a purely personal covenant, such as the 
one in suit, must be brought in the name of the convenantee, 
and that this action, for that reason can not be maintained." 

These rules make it incumbent upon the buyer of a patent 
to examine the character of the seller as well as the value of 
the patent itself. If the seller has no title, this fact will show 
on the records of the Patent Office, or else the Iniyer will not 
be affected by prior sales. But if the seller lui^ theretofore 
granted licenses to use the invention, these i^nints may not 
show on the records, but nevertheless will be effective even 
against the innocent buyer. It may happen therefore that in- 
stead of getting an absolute monopoly in res])ei:t to the 
tion the buyer will find himself subject to the cunipetitit 
one or more licensees, from whom he is not even entitled to 
collect the royalties they have contracted to pay. His only- 
safety lies in the honesty and financial reUability of the 
although he may find some advantage in having thi 
make affidavit that there are no licensees, or in tak 
him an assignment of his rights against all poss^ible licenset 

The sale of the monopoly transfers the ownership of 
monopoly only, and does not invest the buyer with any right 
to recover damage suffered by the prior owner. The buyer, 
therefore, acquires no right to sue on account of infringement 
which took place before his purchase."" 

Conditions and other provisions may be put into the 
signment to the same extent as in any other instrument 
sale, and will be given effect to the same extent, provided th< 

3JT' "Claims for damages for past trespasses do not v^'.^ b\ 
ance of the thing trespassed upon." Superior Drill Co. v. Xey Mfg. O 




4 



232 Patents and Inventions 

do not so limit the quantity of the interest passed as to prevent 
the transaction from being in fact an assignment of the owner- 
ship of the patent right. In such case the transfer would not be 
entirely void, but the assignee could not sue in his own name, 
or otherwise act as owner.^^® 

Partial assignments. It is occasionally said by courts, that 
the patent right can not be divided into parts.^^® It is true 
that it can not be divided subjectively, as it were, so that a 
part of the invention is controlled by one person and a part 
by another, and the statements, 'in their context, really mean, 
though loosely expressed, that the invention can not be di- 
vided.^®^ This follows obviously from the fact that an inven- 
tion is a unity — a single idea, existing only as an entirety — 
although the concrete embodiment of it may consist of many 
parts, and although it may have various applications or uses. 

378 In Rude v. Westcott, 130 U. S. 152, an assignment was made by an 
instrument which the court found to be amply sufficient to convey the 
assignor's entire interest in and title to the patent. It contained, however, 
a provision that the net profits were to be shared with the assignor. It 
was contended that this so deprived the instrument of effect as an assign- 
ment that the complainants — the assignees — had not title under which to 
sue. The court denied this proposition, saying, "The concluding provision, 
that the net profits arising from sales, royalties, or settlements, or other 
source, are to be divided between the parties to the assignment so as to 
give the patentee one fourth thereof, does not, in any respect, modify or 
limit the absolute transfer of title. It is a provision by which the con- 
sideration for the transfer is to be paid to the grantor out of the net 
profits made; it reserves to him no control over the patents or their use 
or disposal, or any power to interfere with the management growing out 
of their ownership." Boesch v. Graff, 133 U. S. 697; Waterman v. Mac- 
kenzie, 138 U. S. 252. In this case the assignment contained a condition 
of defeasance upon performance of a condition- and was in reality a 
mortgage. 

379 Waterman v. Mackenzie, 138 U. S. 252, 255. 

380 Pope Mfg. Co. V. Gormully, 144 U. S. 248 ; In this case the patentee 
had transferred to plaintiff all his right, title and interest in and to a 
patent on velocipedes so far as the patent related to the saddle part of 
the velocipede. It was contended that the plaintiff had not title on whick 
to sue and the court upheld this contention on the ground that "the as- 
signment was neither of an undivided interest in the whole patent, nor 
of an exclusive right within a certain territory." 



Transfer of Otunership 233 

But the ownership of the patent right may, it is well settled, be 
divided in a geographical app9rtionment. The patentee can 
not transfer the title to a part of the invention, but he may 
transfer title to a part of the right which the patent gives him. 
Thus, he may assign the right to the whole invention, to make, 
use and vend it, throughovit a particular territory. The trans- 
feree of the right acquires by the transfer all the rights and 
privileges of the transferor, in the same degree as any assignee 
of the entire patent right, subject only to the restriction as to 
territory in which they may be exercised. Such assignee of 
the right in a particular district may sue as owner and other- 
wise comport himself as one having complete title within that 
territory.*" 

S81 Littlefield v. Perry, 21 Wall. 205; Gayler v. Wilder, 10 How. 47^. 
"By the .fourteenth section, the patentee may assign his exclusive right 
within and throughout a specified part of the United States, and upon 
such an assignment the assignee may sue in his own name for an in- 
fringement of his rights. But in order to enable him to nit, the assign- 
ment must undoubtedly convey to him the entire and unqualilied monopoly 
which the patentee held in the territory specified, — excluding the pati 
himself, as well as others. And any assignment short of this is 
hcense. For it was obviously not the intention of the legislature 
mit several monopolies to be made out of one, and divided 
ferent persons within the same limits. Such a division would in< 
lead to fraudulent impositions upon persons who desired to purcl 
use of the improvement, and would subject a party who, under a 
as lo his rights, used the invention wilhout authority, to ha bar; 
a multiplicity of suits instead of one, and to successive recovei. 
damages by different persons holding different portions of the pa. 
right in the same place. Unquestionably, a contract lor Ihe purchase 01 
any portion of the patent right may be good as between ilie parties as 
license, and enforced as such in the courts of justice. Bui the legal right 
in the monopoly remains in the patentee, and he alone <:-^n maintain an 
action against a third party who commits an infringemeni uiijii it. This 
is the view taken of the subject in the case of Blancbard v. Eldridge, 
J. W. Wallace, 337, and we think it the true one. Applying these princi- 
ples to the case before us, the action was properly brought by the plaintiff 
below, and could not have been maintained by Herring. The a|c;reement is 
singularly confused and complicated. It purports to grant to Herring the 
exclusive right to make and vend the Salamander safe in tlii citv, tnuniy. 
and state of New York; and Herring agrees to pay to the liffinihitii in 
error a cent a pound for every pound the safes might WL-igh. ti.i be paid 




^ 



^ 



234 Patents and Inventions 

Undivided interest. So, also, the assignment may be of 
an undivided interest in the patent right; in which case the 
assignee becomes an owner in common with the assignor and 
acquires the rights and liabiHties of owners in common of 
personalty generally.^®^ 

There is a very grave danger inherent in joint ownership 
of patents which should be w^ell considered before one shares 
a title. It lies in the fact that each owner has the right to 
use and enjoy the invention to the fullest extent as owner, and, 
hence, is not accountable to anyone for such use. One's only 
control, therefore, over the acts of his co-owner lies in the 
honesty of such owner. 

An illustration of what may happen is found in Blackledge 
V. Weir and Craig Mfg. Co.'''" The plaintiff, Blackledge, 
had been the co-owner of a patent with one Silberhorn. They 
two had licensed the defendant to use the invention on a royalty 
basis. Later, however, the defendant managed to buy Silber- 
horn's half interest. Thereafter it, the defendant, continued 
to use the invention but it no longer paid any royalties to the 
plaintiff. Furthermore, it, as an owner of the patent, granted 
licenses to other persons for which it got royalties, but for 
which the plaintiflf got nothing. When the value of these 
royalties and this use by the defendant had amounted to 
$10,000, the plaintiff sued, as co-owner, to recover half of the 
amount. The court rejected the suit. The defendant, it held, 
was an owner of the patent right and as such he had a com- 

monthly. But at the same time it reserves to Wilder the right to set 
up a manufactory or works for making these safes in the state of New 
York, provided it is not within fifty miles of the city, and to sell them in 
the state of New York, paying to Herring a cent a pound on each safe so 
sold within the state. It is evident that this agreement is not an assign- 
ment of an undivided interest in the whole patent, nor the assignment of 
an exclusive right to the entire monopoly in the state or city of New 
York. It is therefore to be regarded as a license only, and under the act 
of Congress does not enable Herring to maintain an action for an in- 
fringement of the patent right. The defendant in error continues the 
legal owner of the monopoly created by the patent." Paulus v. Buck, 
129 Fed. 594. 
882 "Waterman v. Mackenzie, 138 U. S. 252; Gayler v. Wilder, 10 How. 

477, 493- 
asa* 108 Fed. 71 ; Acc'd, Paulus v. Buck Mfg. Co., 129 Fed. 594. 




Transfer of Oumership 235 

plete right of enjoyment of it. The only limitation was that 
he could not exclude the other owner from a similar enjoy- 
ment. As owner, he did not have to pay anyone for his use of 
the invention; the granting of licenses is part of the enjoyment 
and use of a patent right and as the defendant did not have to 
pay for his enjoyment, he did not have to account to the plain- 
tiff for the royalties received from such licenses. The ^e^ 
defendant could not, the court said, keep the plaintiff from 
likewise using the device and licensing others to do so, but he 
could use it himself or sell his right of use without accounting 
to anyone. 

So it follows that when a patent is owned jointly, anyone 
who wishes to use it has two possibilities. If the two owners, 
expecting to divide the returns, put too high a royalty on the 
license, he may, if one of them is susceptible, pay a little more 
than half such royalty to that one alone and get almost as val- 
uable a license. He may even buy outright the right to use it 
and to license others, and the deceived co-owner will be help- 
less. The only difference in the result to the buyer will be, 
that if he had bought from both owners he might have ac- 
quired an exclusive right, whereas if he buys only from one he 
can not eclude the other or the other's licenses.^®^^ 

Before existence of the patent. An assignment may 
be made of a patent right which has not yet been acquired by 
the assignor. This is different from an assignment so made 
and recorded that the patent will issue in the name of the 
assignee. The patent will be issued to the inventor, but his 
prior assignment of the rights which he is to get, will oper- 
ate upon those rights just as though it had been made after 
their acquisition. This was declared by the court in the case 
of Gayler v. Wilder.^®^ The defense was made in this case 

382»>Lalance & Grosjean Mfg. Co. v. National Enameling Co., 108 Fed. 77, 
one co-owner may sell without consent of other ; no sufficient evidence to 
show an agreement to account for the proceeds. But one co-owner's 
release will not affect prior accrued damages, Lalance & Grosjean Mfg. 
Co. V. Haberman Mfg. Co., 107 Fed. 487; Id., 93 Fed. 197. 

The respective rights of the co-owners may be regulated by contract, 
as between themselves. Harrison v. Ingersoll, 56 Mich. 36. 

383 10 How. 477. 



236 Patents and Inventions 

that the plaintiff had no legal right to the monopoly, and there- 
fore could not sue in his own name, because the assignment 
under which he claimed had been executed before the patent 
was in existence. The invention, however, had been perfected 
at the time the transfer was made. The court upheld the 
plaintiff's right to sue, saying, "The inventor of a new and 
useful improvement certainly has no exclusive right to it, un- 
til he obtains a patent. This right is created by the patent, and 
no suit can be maintained by the inventor against any one for 
using it before the patent is issued. But the discoverer of a 
new and useful improvement is vested by law with an inchoate 
right to its exclusive use, which he may perfect and make ab- 
solute by proceeding in the manner which the law requires. 
Fitzgerald possessed this inchoate right at the time of the 
assignment. The discovery had been made, and the specifi- 
cation prepared to obtain a patent. And it appears by the lan- 
guage of the assignment, that it was intended to operate upon 
the perfect legal title which Fitzgerald then had a lawful right 
to obtain, as well as upon the imperfect and inchoate interest 
which he actually possessed. The assignment requests that 
the patent may issue to the assignee. And there would seem 
to be no sound reason for defeating the intention of the parties 
by restraining the assignment to the latter interest, and com- 
pelling them to execute another transfer, unless the act of Con- 
gress makes it necessary. The court thinks it does not. The 
act of 1836 declares that every patent shall be assignable in 
law, and that the assignment must be in writing, and recorded 
within the time specified. But the thing to be assigned is not 
the mere parchment on which the grant is written. It is the 
monopoly which the grant confers ; the right of property which 
it creates. And when the party had acquired an inchoate right 
to it, and the power to make that right perfect and absolute at 
his pleasure, the assignment of his whole interest, whether 
executed before or after the patent issued, is equally within the 
provisions of the act of Congress.''^®* Of course, a plaintiff 

38* Ace. Littlefield v. Perry, 21 Wall. 205; Hendrie v. Sayles, 98 U. S. 
546; Hammond v. Mason, 92 U. S. 724; Brush Elec. Co. v. California 



Contracts Concerning Ownership 237 

who is not the person named in the patent, must prove his title 
to it; that is, must prove the assignment, before his suit can 
be maiatained. 

§ 3. Contracts to Transfer 

Even before the invention itself comes into existence a con- 
tract to assign it when it shall have been made, may be validly 
entered into and will be enforced like any other contract.®®^ 
There can not be an actual transfer of the invention before it 
comes into existence, for the evident reason that there is noth- 
ing in existence to be transferred. There is not even the right 
to a patent, such as was made the subject of a transfer in 
Gayler v. Wilder, supra. But a contract to transfer the right 
to the patent when the invention does come into existence, or 
to transfer the patent which shall have been acquired for an 
invention that is to b^ made, is possible ; just as is a contract 
to do any act upon the happening of certain events. When 
the events have transpired, that is to say, when the invention 
has been made, the courts will enforce the contract to transfer 
the patent the right to a patent." 



386 



Elec. Light Co., 52 Fed. 945; Nilsson v. De Haven, 47 N. Y. App. Div. 
537; affd. 168 N. Y. 656; Burton v. Burton Stock Car Co., 171 Mass. 437. 
Such an assignment will not, however, affect an assignee of the issued 
patent without knowledge, even though the first assignment was recorded 
in the Patent Office, Nat'l Cash Reg. Co. v. New Columbus Co., 129 Fed. 
114. 

385 Reece v. Fenwick, 140 Fed. 2S7 ; American Brake Beam Co. v. Pungs, 
141 Fed. 923 ; Littlefield v. Perry, 21 Wall, 205 ; Dalzell v. Dueber Mfg. Co., 
149 U. S. 315. 

38fi Regan Vapor-Engine Co. v. Pacific Gas Engine Co., 49 Fed. 68 ; 
*The agreement of May 15, 1886, is not the assignment of a patent, though 
it contains language — 'grant and convey' — sufficient for that purpose if 
there was anything to assign. It may be good as an agreement to sell: 
and assign a future invention, but it can not operate as a sale or assign- 
ment of such an invention, even when made. No one can sell that which 
he hath not." 

A court of equity will order an inventor to apply for a patent and to 
assign it, in favor of one with whom the inventor has contracted so to 
do. Adams v. Messinger, 147 Mass. 185; Runstetler v. Atkinson, Mac- 
Arthur & Mackey (D. C.) p. 382. 



238 Patents and Inventions 

Express agreements. It is not altogether infrequent for 
employers to insert in the contract of employment an express 
provision that any invention produced by the employee in the 
course of the employment shall become the property of the 
employer.^" Such contracts appear to have been uniformly 
enforced. In Thibodeau v. Hildreth/®® Thibodeau had con- 
tracted in writing with Hildreth to enter his employ, and to 
give him his best services and also the full benefit and enjoy- 
ment of any kind and all inventions and improvements which 
he had made or might thereafter make relating to machines 
or devices pertaining to said Hildreth's business. Suit was 
brought involving the conveyance of an invention under the 
terms of the contract, and the court said of it, "This contract 
is neither unconscionable nor against public policy. Such an 
agreement is not uncommonly made by an employee with his 

387Rudyard Kipling notes, in his descriptions of India, that the East 
Indian Railway Co. at that time required all employees to sign such a 
contract — to the great decrease in inventive production. 

388 124 Fed. 892, 63 L. R. A. 480. For an interpretation of this contract 
see Hildreth v. Duff, 143 Fed. 139. A still broader contract was upheld 
in Hulse v. Bonsack Mach. Co., 65 Fed. 864. Here Hulse had agreed as 
a stated condition precedent to any contract of employment that any in- 
ventions he might make in respect to cigarette machines would be "for the 
exclusive use of the said company whether they should be made while he 
was in the employment of the company, or at any time thereafter." This 
contract was enforced despite the contention that, being perpetual, it was 
unconscionable, unreasonable and contrary to public policy. On the lat- 
ter point the court said, "Is the contract void as against public policy? 
Does it injure the public? Here we have the case of an ingenious man, 
without opportunity of developing his talent, and struggling under diffi- 
culties, enabled by this contract to secure employment in a large and 
prosperous corporation, where he could give his inventive faculties full 
play. He in this way was afforded every opportunity of discovering and 
removing defects in cigarette machines. He secured this employment by 
signing this contract. He could not have obtained it if it had been un- 
derstood that this contract had no validity. Then, in all human probabil- 
ity, the public would have lost the benefit of his discovery. In this point 
of view, a contract of this character cannot be said to be against public 
policy." Binney v. Annan, 107 Mass. 94; Wright v. Volalion Organ Co., 
148 Fed. 209, contract that a half interest should appertain to the em- 
ployer. 



Contracts Concerning Oumership 239 

employer, and it may be necessary for the reasonable protec- 
tion of the employer's business/' 

Such contracts to assign inventions have nothing whatever 
to do with the patentability of the invention or the validity 
generally of the patent. They do not involve the patent statute, 
despite the fact that the property with respect to which they 
relate is created by that statute, but, like any contract create 
only rights in personam. Their enforcement, therefore, lies 
within the normal jurisdiction of the state courts and is not 
exclusively the province of the federal courts.^®^ 

The title to inventions not covered by the terms of the con- 
tract is not affected, of course, by the contract. In one case, for 
illustration,^^® one Dice contracted in writing to work for 
the company in whatever capacity "pertaining to the manu- 
facturing of shellers and powers, and disposing of the 
same,'* the company might direct. He further agreed that all 
improvements he might make should belong to the Company. 
After the making of this contract, the company took up the 
manufacture of "check rowers," which had no relation to 
"shellers and powers,'' and Dice was employed at that work 
for part of his time. He then invented an improvement in 
"check-rowers," for an assignment of which the company 
brought this suit. The bill was dismissed on the ground that 
Dice had not contracted to assign this invention; that the 
written contract had reference only to "shellers and powers" 
and not to "check rowers." In another case,^^^ one 1* hibodeau 
had bound himself by written agreement to allow his employer 
the use of all inventions which he might make "relating to 
machines or devices pertaining to" the employer's business, 
which was that of candy manufacturing. Suit was brought by 

88^ Binney v. Annan, 107 Mass. 94 ; American Circular Loom Co, v. 
Wilson, 198 Mass. 182; Holt v. Silver, 169 Mass. 435; Keyes v. Eureka 
Mining Co., 158 U. S. 150; Shoemaker v. South Bend Spark Arrester Co., 
22 L. R. A. 332, 135 Ind. 471 ; title in this case was derived through judg- 
ment of another court. Carleton v. Bird, 94 Me. 182, even though state 
court has to construe the patent. 

380 joliet Mfg. Co. V. Dice, 105 111. 649. 

8S1 Hildreth v. Duff, 143 Fed. 139, affirmed 148 Fed. 676. 



240 Patents and inventions 

the employer to compel assignment of the patent for a machine 
for pulling candy which Thibodeau had invented. This was 
refused by the court, which said that by the contract Thibodeau 
had been employed to work on "machines for use in the manu- 
facture of candy, and especially for sizing, shaping, cutting, 
wrapping, and packing, also the pulling of molasses candy/' 
"At the time the paper was signed,'' said the court, "machines 
for pulling candy, such as that here in question, to take the 
place of the men who pulled the candy over hooks to whiten 
it, were riot known in the art. No such machine was in use 
in Hildreth's business nor in course of construction for him. 
Under the circumstances, neither Hildreth or Thibodeau could 
have contracted with immediate reference to such a machine. 
At that time, however, machines performing a different kind 
^ of pulling operation were known to and used in the trade. 
The function of that machine was to pull the candy down to 
the requisite size to feed the cutting and wrapping machine, 
doing the work of a girl who was accustomed to pull the candy 
down to the required size. A pair of such pulling machines 
were built for Hildreth in March, 1897, about two months be- 
fore the Thibodeau contract was signed. Thibodeau was fa- 
miliar with that class of pulling machines, but had no knowl- 
edge whatever with respect to any other machine for pulling 
candy. Therefore it is well within reasonable belief that he 
understood the words 'also for the pulling of molasses candy,' 
especially in view, of their associated words, to refer to that 
class of then known and used pulling machines, as he testifies 
he did so understand them." "In the recital of the paper in 
controversy, which is the key to the meaning of the parties, 
it is not machines generally, but *a certain machine or ma- 
chines,' which Hildreth is desirous of having 'perfected and 
manufactured,' and it is on such machines that Thibodeau is 
to be employed for the purpose of 'constructing, improving 
and perfecting.' Now, this recital, in view of its specific ref- 
erence to a certain machine or machines, cannot fairly be con- 
strued to cover a machine not then known to the art and radi- 
cally different from any known machine. The more general 



Contracts Concerning Ownership 241 

words subsequently employed in the body of the paper ought 
not to be held to have a larger scope than the language of the 
recital, especially as they expressly relate to machines or de- 
vices ^pertaining to said Hildreth's business/ McFarland v. 
Stanton Manufacturing Company, 53 N. J. Eq. 649, 650, 33 
Atl. 962, 51 Ahi. St. Rep. 647. Looking at the whole paper, 
it seems to me that Thibodeau had a right to understand that 
the contract related to Hildreth's business as then conducted, 
and that the machines mentioned in the body of the paper were 
not other than such as had already been made the subject of 
recitation." 

Implied agreements. A promise to give another an in- 
terest in an invention to be produced, need not be in express 
words. It, like any other promise, may be implied by circum- 
stances. These implied promises are often, loosely, spoken of 
as if they arose out of estoppel. Properly speaking they have 
nothing in common therewith. Estoppel is essentially a pre- 
clusion, for equitable reasons, from denying the existence of 
certain facts, whatever the reality may be. But in the case of 
an implied promise there is no preclusion of the truth ; there 
is an assumption that the promise exists because the evidence 
indicates a tacit intent that such should be the result and there 
is no countervailing evidence produced. It is a judicial con- 
clusion of fact, based upon all the circumstances of the case, 
not a fiction of truth imposed out of equity. The implied con- 
tract is the reciprocal intent wliich the court believes must have 
actuated the parties as normal men, under the circumstances, 
when they do not appear to have had any conscious intent. 

An intent that the employer shall have an interest in an in- 
vention of the employee will not be assumed by the courts from 
the mere relation of employer and employee. Every employ- 
ment is the result of a contract, of one sort or another, where- 
by the employee, in consideration of certain recompense, 
agrees to do certain things. The courts will not read into 
such contracts an, agreement by the employee to make inven- 
tions for the benefit of the ernployer, unless unusual circum- 
stances indicating, it are present. It is impossible to formu- 



242 Patents and Inventions 

late any rule of law as to when the circumstances are such as 
do indicate an intent that the employer shall have an interest 
in the employee's inventions, and when they do not so indicate. 

As a broad rule it may be said, that the courts will never 
assume a tacit agreement that inventions outside the actual 
^cope of the enhployee's normal occupation shall be for the 
benefit of the employer. Neither will an agreement that the 
employer shall have the benefit of the employee's inventions be 
assumed when the employment is one of merely mechanical 
or routine labor. A ditch-digger, inventing a shovel, or a 
bookkeeper, inventing an account-book, would not be bound to 
allow his employer any interest whatsoever therein. 

It may further be said that an agreement to vest the owner- 
ship of an invention in the employer will practically never be 
deduced from mere tacit circumstances. The most that will 
be assumed without express words, is an intent that the em- 
ployer shall have a right to use the invention, with or without 
further payment. ^^^ 

892 American Circular Loom Co. v. Wilson, 198 Mass. 182. "The plain- 
tiff has not established its right to require an assignment of the tubing 
machine patent, the letters patent numbered 543,587, and dated July 30, 
1895, upon a machine for making tubing. This was the invention of the 
defendant himself,' made while he was employed by the plaintiff as the 
superintendent of its manufacturing department. The machine was de- 
signed to turn out the same product, a flexible covering and protection for 
electric wires, which the plaintiff was already producing under the Her- 
rick patent, so called, for the use of which the plaintiff held an exclusive 
license; and it was a material improvement upon the previous mode of 
obtaining that product. One of the defendant's duties under his employ- 
ment was to look after the plaintiff's machinery and to make improvements 
therein. The expenses of procuring the patent were paid by the plaintiff* 
Many machines embodying the invention and built under the patent have 
been constructed under the direction and supervision of the defendant at 
the expense of the plaintiff, and have been used by it in its business -with 
his knowledge and consent; and the success of its business has largely 
depended upon its use of these machines. But these circumstances and 
the other facts which have been found do not show that the plaintiff is 
entitled to the property right in the invention itself and in the letters 
patent which secure that right. The invention and the patent thereon be- 
long to the inventor, to whom the patent has been issued, unless he has 



Contracts Concerning Ownership 243 

When one has been employed for the express purpose of de- 
vising means for accompHshing a certain end, the courts gen- 
erally assume a tacit agreement that the employer shall have 
at least a license to use without further pay any inventions 
that may be produced for that purpose. A very clear indica- 
tion of such intent is illustrated by the circumstances of Solo- 
mons V. United States.^®^ The government was seeking a 
practicable stamp for use in internal revenue collections. A 
committee of Congress was appointed to consider the matter. 
One Clark was, at the time, head of the Bureau of Engraving 
and Printing. He was directed by the committee, apparently 
as part of his employment in the Bureau, to devise a stamp, 
with the understanding that the best one he should devise 
would be put into use. Nothing whatever was said by either 
party in regard to the government's right to use the stamp. 
Clark did devise a stamp which was adopted by the govern- 
ment. It was subsequently patented by Clark, who brought an 
action to recover for its use by the government. The Supreme 

made either an assignment of his right or a valid and enforceable agree- 
ment for such an assignment, even though it was his duty to use his 
skill and inventive ability to further the interests of his employer by de- 
vising improvements generally in the appliances and machinery used in 
the employer's business." Hildreth v. Duff, 143 Fed. 139; Hapgood v^ 
Hewitt, 119 U. S. 226; Dalzell v. Dueber Mfg. Co., 149 U. S. 315; Joliet 
Mfg. Co. V. Dice, 105 111. 649; Burr v. DeLaVergne, 102 N. Y. 417, "The 
proposition asserted in behalf of the defendant, that one partner acquires 
no right or interest, legal or equitable, in an invention made by his co- 
partner during the existence of the partnership by reason merely of the 
copartnership relation, although the invention relates to an improvement 
in machinery to facilitate the business carried on by the firm, and al- 
though the partner making the invention, uses copartnership articles to 
devote his whole time and attention to the firm business, is a doctrine 
supported by authority and consonant with reason. Slemmer's Appeal, 
58 Penn. St., 155, 164; Belcher v. Whittemore, 134 Mass. 330." Pressed 
Steel Car Co. v. Hansen, 137 Fed. 403; Barber v. National Carbon Co., 
129 Fed. 370; But compare Solomon v. U. S. 137 U. S. 342; Pressed 
Steel Car Co. v. Hansen, 128 Fed. 444, assumption not warranted by mere 
fact that the employee has theretofore assigned other inventions to his. 
employer. 
303 137 U. S. 342. 



244 Patents and Inventions 

Court denied his right to recover saying, "An employee, per- 
forming all the duties assigned to him in his department of 
service, may exercise his inventive faculties in any direction 
he chooses, with the assurance that whatever invention he may 
thus conceive and perfect in his individual property. There 
is no difference between the government and any other em- 
ployer in this respect. But this general rule is subject to these 
limitations. If one is employed to devise or perfect an instru- 
ment, or a means for accomplishing a prescribed result, he can- 
not, after successfully accomplishing the work for which he 
was employed, plead title thereto as against his employer. 
That which he has been employed and paid to accomplish be- 
comes, when accomplished, the property of his employer. 
Whatever rights as an individual he may have had in and to 
his inventive powers, and that which they are able to accomp- 
lish, he has sold in advance to his employer. So, also^ when 
one is in the employ of another in a certain line of work, and 
devises an improved method or instrument for doing that 
work, and uses the property of his employer and the services 
of other employes to develop and put in practicable form his 
invention, and explicitly assents to the use by his employer of 
such invention, a jury, or a court trying the facts, is war- 
ranted in finding that he has so far recognized the obligations 
of service flowing from his employment and the benefits re- 
sulting from his use of the property, and the assistance of the 
coemployees, of his employer, as to have given to such em- 
ployer an irrevocable license to use such invention. '^ These 
statements of the court are undoubtedly too broad and in their 
breadth are in conflict with the actual decisions in other cases, 
but the finding of implied intent as to the right of the gov- 
ernment to use is quite in accord with other decisions.^®* 

If the evidence shows that in addition to being employed to 
'ijnprove known methods of accomplishing a given purpose the 
employee has used his employer's materials and machinery in 
the development of his invention and has actually permitted 
the employer to use it without further agreement, the con- 

394 Cf . cases cited supra. 



Contracts Concerning Ownership 245 

elusion that his employment gave his employer a right to use 
the invention is particularly clear. 

The cases involving the matter are not numerous enough 
for any real classification of facts to be made and a rule of 
judicial custom founded thereon. The best that can be done 
by an attorney is to examine particular cases, seek the closest 
analogy,' and hope that the force of the analogy will influence 
the court to a similar conclusion. ^^'^ 

Estoppel. The decision in a number of cases appears to 
have been based on a real estoppel. The expressions of the 
court rather indefinitely combine tacit contract and estoppel, 
but the moving factor of these latter decisions seems to be that 
the employee has allowed the employer to change his position, 
upon a supposition of a right in the invention, to such an ex- 
tent that it would be inequitable to allow the employee to deny 

395 An often cited case is that of McClurg v. Kingsland, i How. 202. 
Here the inventor was employed at a weekly wage, apparently as a mere 
mechanician. After his invention he allowed his employers to use it, and 
his wages were increased in consequence. Eventually he left their employ, 
and subsequently brought suit on account of their continued use of the 
invention. The trial court charged the jury that these facts would fully 
justify the presumption of a license, and that they amounted to a con- 
sent and allowance of such use and gave the defendants a right to the 
continued use of the invention. This charge was sustained by the Su- 
preme Court^ and approved by it again in Solomon y. U. S. 137 U. S. 342. 

In Lane & Bodley Co. v. Locke, 150 U. S. 193, the inventor had been 
employed as a designing engineer and draughtsman to assist in the de- 
velopment and construction of elevators and other machinery. He used 
his employers' tools and machinery in perfecting his invention of a check 
valve for elevators and subsequently allowed them to use the invention 
without a claim for compensation. These facts were held to demonstrate 
a license to the employers to continue the use of the invention even after 
a termination of the contract of employment. 

See also. Continental Windmill Co. v. Empire Windmill Co., 8 Blatch. 
29s, Fed. Cas. No. 3142; Magoun v. New England Glass Co., 3 Bann & 
Ard, 114, Fed, Cas. No. 8960; Davis v. U. S. 23 Ct. CI. 329; Barry v. 
Crane Bros. Mfg. Co., 22 Fed. 396; Bensley v. Northwestern Horse-Nail 
Co., 26 Fed. 250; Withington-Cooley Mfg. Co. v. Kinney, 68 Fed. 500; 
Herman v. Herman, 29 Fed. 92; Jencks v. Langdon Mills, 27 Fed. 622; 
Fuller & J. Mfg. Co. v. Bartlett, 68 Wis. 72,^ 60 Am. Rep. 838; Keyes ▼. 
Eureka Mining Co., 159 U. S. 150. 



246 Patents and Inventions 

the reality of that right. It is quite impossible, however, to 
draw any line between those which turn upon pure estoppel 
and those which base their decision upon a conclusion of an 
implied license to a Hmited use. An illustration is the case of 
Barber v. National Carbon Co.^^^ Barber had been in the em- 
ploy of the defendants as a mechanical engineer, for the pur- 
pose of improving their processes of manufacture. While so 
employed he invented a valuable device which, with the de- 
fendant's knowledge, he patented. Six machines embodying 
this device were constructed under his direction for the com- 
pany and used by them without any mention of royalty. The 
use of the machines by the company had involved the con- 
struction of special buildings and necessitated other expensive 
arrangements. On suit for infringement brought by Barber, 
the court held that there was no indication that he had agreed 
to assign title to his invention to the defendants, as was sug- 
gested, but that the defendants were, nevertheless, justified in 
the continued use of the machines already constructed. At the 
beginning of one paragraph the court says, 'We think that the 
presumption is that he (Barber) intended to grant to the 
Carbon Company the right to use his process in connection 
with the machines, for which space in the several factories had 
been specifically arranged with his knowledge and under his 
direction.'' This would indicate a finding of constructive in- 
tent, but at the close of the same paragraph the court says, 
*'By his conduct. Barber has estopped himself from asserting 
that the use of his invention to this extent is an infringement 
of his right as a patentee." Either doctrine leads to the same 
result. 

The case of Gill v. U. S.^*^^ was a clear case of estoppel and 
was expressed as such. The plaintiff had persuaded the gov- 
ernment to defray the cost of embodying and perfecting me- 
chanically an invention which he had made while in govern- 
ment employ, and had allowed the government to use the com- 
pleted invention without any mention of recompense. His suit 

396 129 Fed. 370. 
397 160 U. S. 426. 



r 



Contracts Concerning Ozvnership 247 

• 

to recover for this use was dismissed. The court said, "The 
principle is really an application or outgrowth of the law of 
estoppel in pais, by which a person looking on and assenting 
to that which he has power to prevent, is held to be precluded 
ever afterwards from maintaining an action for damages. A 
familiar instance is that of one who stands by, while a sale is 
being made of property in which he has an interest, and makes 
no claim thereto, in which case he is held to be estopped from 
setting up such claim. The same principle is applied to an 
inventor who makes his discovery public, looks on and per- 
mits others to use it without objection or assertion of a claim 
for a royalty." 

An inventor may lose his right of exclusive enjoyment, to 
a limited extent, not only through estoppel as just discussed, 
but also through the provision of the statute itself which reads, 
"Every person who purchases of the inventor or discoverer, or, 
with his knowledge and consent, constructs any newly invented 
or discovered machine, or other patentable article, prior to the 
application by the inventor or discoverer for a patent, or who 
sells or uses one so constructed, shall have the right to use, and 
vend to others to be used, the specific thing so made or pur- 
chased, without liability therefor.''^^^" 

A CONTRACT TO ASSIGN WILL BE SPECIFICALLY ENFORCED. 

As a contract gives only a right against the person of the 
promissor, and does not create any right in the particular thing 
concerning which the contract was made, it follows that no 
right in the invention itself vests in the purchaser under such 
a contract to transfer. An actual transfer is necessary.^®® If 
the inventor refuses to make such a transfer, according to the 
terms of his contract, he will be liable in damages just as in 
any other case of breach of contract. 

Furthermore, equity will step in and compel the inventor to 
perform his contract specifically and to make the transfer, un- 
less the rights of third parties have intervened or it would for 

397a Wade V. Metcalf, 129 U. S. 204. 

398 Milwaukee Carving Co. v. Brunswick-Balke-Collender Co., 126 Fed. 
171. 



248 Patents and Inventions 

• 

other reasons be inequitable to do so/®^ Equity will not act 
to compel such an actual transfer if it would reflect injuriously 
upon some other purchaser for value, without notice, from the 
inventor. The mere recording of the contract to assign, even 
though it be in form a present assignment, is not constructive 
notice to any one purchasing the invention or an interest there- 
in, after the invention is in existence. Hence, even a contract 
so recorded does not give the buyer therein named any interest 
as against one without actual knowledge of the contract, lo 
whom the patentee has subsequently conveyed the patent.*®^ 

§ 4. Licenses 

The name of "assignment'' is technically and properly lim- 
ited to those transactions by which the ownership of the patent 
right is transferred. It includes not only transfers of the ab- 
solutely unlimited ownership, but also those which convey an 
absolute ownership of the right within a particular geographi- 
cal limit and those which convey a joint, but otherwise abso- 
lute, ownership.*^^ The conveyance of anything less than the 
ownership creates in the person to whom it is conveyed only 
a right to do certain things in respect to the invention without 
interference from the owner of the patent. Such a transaction 
is properly called a "license,'* and the person in whom the 
privilege is created a "licensee." These two relations, i.e. that 
of assignee or that of licensee are the only ones which the 
patentee can create, although various other names are some- 
times given to them. That is to say, a particular person must 
be either owner of the patent monopoly, or not owner of it, 

399 Dalzell V. Dueber Mfg. Co., 149 U. S. 315. 

400 National Cash Reg. Co. v. New Columbus Watch Co., 129 Fed. 114. 
An exception to the rule as stated is made in this case as regards future 
improvements. Concerning this the court says, "That an assignment of a 
patent, together with any future improvements thereon, is recordable and 
operative as a notice to subsequent assignees of patents for improvements 
may be conceded. Littlefield v. Perry, 21 Wall. 205, 22 L. Ed. 577 ; Aspin- 
wall Co. V. Gill et al (C. C.) 32 Fed. 697." 

*02 "Waterman v. Mackenzie, 138 U. S. 252; Paulus v. Buck Mfg. Co., 129 
Fed. 594; Pope Mfg. Co. v. Gormully, etc. Co., 144 U. S. 248. 



Licenses 249 

though his position may be given various indicative names. 
The same thing is, of course, true of all other forms of per- 
sonal property, one is either owner or not owner, as the terms 
are employed in their never yet defined legal usage, but it is 
necessary to speak of it because confusion on this point is 
noticeable in some cases.*^^ 

If one is not owner, he has only such rights in respect to 
the monopoly as his agreement with the owner, directly or in- 
termediately, gives to him. Towards third person he is not 
owner, and can not assume such position, and therefor can 
not bring suit against them in his own name. "In equity as 
in law, when the transfer amounts to a license only, the title 
remains in the owner of the patent ; and suit must be brought 
in his name, and never in the name of the licensee alone, un- 
less that is necessary to prevent an absolute failure of justice, 
as where the patentee is the infringer, and can not sue him- 
self. Any rights of the licensee must be enforced through or 
in the name of the owner of the patent, and perhaps, if neces- 
sary to protect the rights of all parties, joining the licensee 
with him as a plaintifif."^^^ 

Character of the transaction. The particular name by 
which the parties have called the transaction does not determine 
its character. It does not amount to a transfer of ownership 
merely because it is called an assignment by the parties ; it will 
be called an assignment by the courts only if it does transfer 
the title. Whether the transaction is a transfer of ownership, 
or merely confers a right to make, use or vend the invention 
with permission of the owner of the monopoly, depends wholly 

*03 A mortgage amounts to a transfer of the ownership and vests title 
in the mortgagee, subject to defeasance upon performance of the condi- 
tion. Waterman v. Mackenzie, 138 U. S. 252, Waterman v. Shipman, 55 
Fed. 982. 

*04 Waterman v. Mackenzie, 138 U. S. 252, 255; Paper Bag Cases, 105 
U. S. 766; Birdsell v. Shaliol, 112 U. S. 485; Rice v. Boss, 46 Fed. 195; 
Moore Mfg. Co. v. Cronk Hanger Co., 69 Fed. 998; Bogart v. Hinds, 25 
Fed. 484; Littlefield v. Perry, 21 Wall. 205; Suydam v. Day, 2 Blatch. 20, 
Whether an assignment needs to be in writing or not, a license, it is 
settled, may be created by parole. 



250 Patents cmd Inventions 

upon the intention of the parties as determined by the courts. 
In cases of doubt as to this intention the name by which the 
parties called their transaction would undoubtedly be of in- 
fluence upon the decision/®'^ so that it is well to use the terms 
in their accepted sense, and in accord with the real intent. The 
intention of the parties as to the relations created, the scope 
of the rights conveyed, and so forth, will be determined from 
the facts and circumstances of the entire transaction under the 
same rules of evidence and presumption as apply to the in- 
terpretation and construction of other agreements.*®* As in 
other cases of written instruments, the instrument itself con- 
trols and will be enforced according to its own terms if its 
meaning be clear and indisputable; it can be "interpreted" 
from the extrinsic circumstances only when the true meaning 
is in doubt. *®^ 

Rights of Licensee. Because a mere license conveys to 
the licensee no title to the monopoly itself, but only the right 
to invade it without liability, and, in consequence, does not 
invest him with any right to sue as owner of the monopoly, 
his power to protect his own rights is, in theory at least, in- 
direct only. If a license is so construed as to give the licensee 
nothing more than a right himself to invade the monopoly, he 
is not entitled to any protection whatever against other per- 
sons who may also invade the monopoly. So long as his own 

*05 Moore Mfg. Co. v. Cronk Hanger Co., 69 Fed. 998. 

*o« Nicholson Pavement Co. v. Jenkins, 81 U. S. 452, "An assignment of 
an interest in an invention secured by letters patent, is a contract, and like 
all other contracts, is to be construed so as to carry out the intention of 
the parties to it." Illingworth v. Spaulding, 43 Fed. 827; In Littlefield v. 
Perry, 21 Wall. 205, it was held that a record instrument containing in 
unmistakable language an absolute assignment of title to a patent would 
not be reduced to a mere license and the assignee precluded from sueing 
as owner, by a subsequent oral agreement limiting the assignee's right of 
user. The second agreement was said to be in effect a license back to the 
assignor from the assignee of the complete ownership. 

^o'' Railroad Co. v. Trimble, 10 Wall. 367. For the interpretation of 
particular licenses on possibly recurrent points see, Pelzer v. City of 
Binghamton, 95 Fed. 823; Western Elec. Co. v. Robertson, 142 Fed. 471; 
Indiana Mfg. Co. v. J. I. Case Co., 154 Fed. 365. 



Licenses 251 

freedom of enjoyment is not itself restricted^ his right is not 
lessened, although his profits may be more or less eliminated. 
He has no cause for action against the others who make, use 
or vend the invention, nor against his licensor for allowing 
such others to do it. 

If his license gives him, either expressly or by implication, 
an exclusive right to make, use or vend the invention in certain 
particulars, the exercise of such privilege by others is obvi- 
ously an invasion of his own right. This matter of exclusive- 
ness of the right granted must be determined, of course, by the 
ordinary rules for construing contracts, before the procedure 
of protecting it can become a pertinent issue. 

If it is an exclusive right and the assignor himself invades 
it, he, the assignor, is undoubtedly liable in an action for 
breach of contract.*®® Since the title, however, is still in the 
assignor and he is therefore the only person entitled to sue 
because of infringement of the patent monopoly, it is the only 
logical conclusion that the licensee can not sue him for in- 
fringement, any more than he could sue a third party, and that 
action in breach of contract is the licensee's only remedy. He, 
the licensee, acquires no right in rem to the patent monopoly, 
but only a right in personam against the owner of the mo- 
nopoly, who has agreed to let the licensee, and the licensee 
only, invade the monopoly without liability.*®^ 

408 In N. Y. Phonograph Co, v. Edison, 136 Fed. 600, affd. 144 Fed. 404, 
the licensee was allowed to bring action based on contract liability against 
the assignee-with-notice of his licensor. 

409 Two cases at least have suggested, as matter of more or less loose 
dictum, that the licensee could sue the licensor for infringement in such 
circumstances. In Littlefield v. Perry, 88 U. S. (21 Wall.) 205 that court 
held that title to the monopoly had actually passed to the plaintiffs. It 
then went on to say, "But even if they (plaintiffs) are not technically 
assignees, we think this action is, nevertheless maintainable (against the 
infringing grantor) ... A mere licensee can not sue strangers who in- 
fringe. In such case redress is obtained through or in the name of the 
patentee or his assignee. Here, however, the patentee is the infringer, 
and as he can not sue himself, the licensee is powerless, so far as the courts 
of the United States are concerned, unless he can sue in his own name. A 
court of equity looks to substance raher than form. When it has juris- 
diction of parties it grants the appropriate relief without regard to 
whether they come as plaintiff or defendant. In this case, the person who 



252 Patents and Inventions 

When the invasion of the licensee's right is by a third per- 
son, not the licensor or one acting by his authority, it is clear 
that the licensee can not sue such invader in his own name, on 
the ground of infringement of the patent. The patent is in- 
fringed, to be sure, but the licensee does not own it and there- 
fore cannot sue to protect it/^^ He may, however, sue in the 
name of his licensor, if his license is exclusive. 

Under these circumstances, is the licensor bound by his con- 
tract himself to sue the invader of the licensee's right? In 
other words, did he contract only that the licensee should have 
the exclusive right of enjoying the invention, with power to 
protect himself in the licensor's name ; or did he further agree 
that he would himself, under his right to prevent infringement, 
protect the licensee. The question is a material one, because 
the financial burden of protecting the licensee from infringe- 
ment of the patent might be extremely heavy. To hold that 
the licensor, the patentee, does, by granting an exclusive li- 
cense, impliedly undertake to protect the licensee against in- 
fringement of the patent by others, is to throw a possibly 
heavy burden upon the licensor ; a burden for which compen- 
sation could not be estimated in advance. If the licensor has 
not expressly agreed to protect the licensee against infringe- 
ment he is apparently not bound to do so.*^^ This has been 
said to be the case even where the licensor has agreed "to pro- 
tect the patent,'' as distinct from protecting the licensee.^ 



412 



should have protected the plaintiff against all infringements has become 
himself the infringer. He held the legal title to his patent in trust for 
his licensees. He has been faithless to his trust, and courts of equity 
are always open for the redress of such a wrong. This wrong is an in- 
fringement. Its redress involves a suit, therefore, arising under the patent- 
laws, and of that suit the Circuit Court has jurisdiction." It might well 
be doubted whether the court would have said invasion of the licensee's 
exclusive right by way of contract was an infringement of the patent 
monopoly if that question had really been involved. See also, Water- 
man V. McKenzie, 138 U. S. 252, 255 ; Waterman v. Shipman, 55 Fed. 982. 

*io See authorities supra. 

*ii In re McLeod, 66 N. Y. S. 253 ; Martin v. Nev/ Trinidad Lake As- 
phalt Co'., 255 Fed. 93, citing authority. 

*i2 Kline v. Garland Co., 135 Mich. 313. 



Licenses 253^ 

If the licensor has expressly agreed to protect the licensee 
against infringement he will, of course, be required to do so 
at his own cost.*^^ 

As between the licensor and licensee, the validity of the 
patent should not be capable of becoming an issue in court 
proceedings. The agreement of a licensee to pay royalties, or 
whatsoever the consideration may be, can be made dependent 
on the validity of the patent. In such event, it would be a 
proper defense, perhaps, to allege and attempt to prove the in- 
validity of the patent. But unless such conditional liability on 
the. licensee's part is clear from the terms of the license, his 
agreement is to pay the consideration named in return for im- 
munity from prosecution for infringement by the licensor; the 
validity or invalidity of the patent is not an element in the 
mutual considerations, is not a condition precedent, and con- 
sequently not a proper defense.*^* Where the evidence is clear 
that the acts of a defendant have been done under the pretense 
of a license from the patentee, he will be estopped to deny that 
they were in fact so done.*^'^ 

*i3 Foster v. Goldschmidt, 21 Fed. 70 ; Such an agreement is valid, 
Virtue v. Creamery Co., 227 U. S. 8, 32; Bailey v. Miller, 45 Ind. Ap. 475; 
Clark V. Cyclone, etc. Co., 22 Tex. Civ. Ap. 41 ; Macon Knitting Co. v. 
Leicester, etc. Co., 113 Fed. 844, affd. 116 Fed. 196, cost of suit divided by 
agreement. The obligation to protect the licensee does not run with the 
ownership of the patent, so as to bind an assignee of the licensor, Brad- 
ford Belting Co. v. Kisinger Iron Co., 113 Fed. 811. 

^1* Piatt V. Fire-Extinguisher Mfg. Co., 59 Fed. 897; Moore v. National 
Water-Tube Boiler Co., 84 Fed. 346 ; Martin v. New Trinidad Asphalt Co., 
255 Fed. 93; Tilghman v. Proctor, 102 U. S. 707, 734, dictum. Marston v. 
Sweet, 66 N. Y. 206; In re McLeod, 66 N. Y. S. 253; Eureka Co. v. Bailey 
Co., II Wall. 488; Fair v. Shelton, 128 N. C. 105. 

*i5 The Illinois Watch Case Co. v. Ecanbert, 177 111. 587, syll. "One 
who has paid fees or royalties to the owner of a patent for the use 
thereof, and who has enjoyed the benefits of the patent, is estopped to 
set up that he is not a licensee but an infringer, in order to defeat the 
jurisdiction of the State court of an action for royalties claimed to be 
due and unpaid." Accd. Am. Street Car Advertising Co. v. Jones, 122 
Fed. 803; Marston v. Swett, 82 N. Y. 526, dictum; Marston v. Swett, 66 
N. Y. 2c6; Holmes v. McGill, 108 Fed. 238. 



254 Patents and Inventions 

If the defendant could show that the contract had been re- 
pudiated, or in other ways put an end to before the acts com- 
plained of took place, or that such acts were, for any other 
reason, not within the purview of a contract, he would then be 
free to contest the claim of the plaintiff in the same way that 
any alleged infringer could do/^® 

A suit to recover royalties due under the contract is purely a 
contract action and, although the contract deals with a patent 
right, the suit is not one which, because it arises under the 
patent laws, gives the Federal courts a jurisdiction which they 
would not otherwise have.*^^ 

The extent to which a licensee can assign his license to 
others is purely a matter of contract law, and is essentially the 
same in respect to licenses under patents as in respect to any 
other contracts of similar type. The mere fact that a licensee 
does assign his license, without right to do so, does not give 
the patentee any right of action in contract against such as- 
signee. In such case the patentee's right is not on contract, 
which does not exist between him and the assignee, but for in- 
fringement of the patent, on the ground that such assignee is 
using the invention without authority from the patentee.*^^' 

*i® It has been held that the failure of the licensee tp pay the royalties 
contracted for does not in itself terminate the contract; which is quite in 
accord with the law in respect to other contracts, such as those for the 
payment of rent. White v. Lee, 3 Fed. 222; Wagner T3rpewriter Co. v. 
Watkins, 84 Fed. 57; Standard Dental Mfg. Co. v. National Tooth Co., 
95 Fed. 291 ; Am. Street Car Advertising Co. v. Jones, 122 Fed. 803. The 
fact that a patent had been invalidated by interference proceedings in the 
Patent Office was held ipso facto to terminate a contract for the payment 
of royalties in Marston v. Swett, 82 N. Y. 526. 

Estoppel to deny validity of the patent ceases on termination of the 
contract, regardless of the motive in terminating it, Stimpson^ etc. Co., 
V. Stimpson, 104 Fed. 893. As to right to sell articles made during life 
of the contract, compare Pelzer v. City of Binghamton, 95 Fed. 823. 

^i^Briggs V. United Shoe Co., 239 U. S. 48; Even though the State 
court has to construe the patent, Carleton v. Bird, 94 Me. 182; Odell v. 
Farnsworth Co., 39 Sup. Ct. Rep. 516 (June, 1919). 

4i7» Wilson V. Mechanical, etc. Co., 68 N. Y. S. 173, 170 N. Y. 542 ; 
Moore v. Coyne, etc. Co., 98 N. Y. S. 892; A promise to pay royalties will 
not be implied from the mere fact that the defendant has deliberately in- 



Conditions and Restrictions 255 

In general it may be said, that he can not assign it unless his 
contract with the owner of the patent expressly so provides. 
He may, however, arrange to enjoy his license through the 
use of other persons as employees. 

§ 5. Restrictions in Licenses 

The statute gives a patentee the exclusive right to make, use 
and vend his invention. We have seen that he can transfer 
the ownership of this, monopoly to another without destroying 
it. He need not make any use of the invention himself nor 
permit others to use it ; he may keep all advantage of it from 
the world during the period of his patent, if he so chooses.*^^ 
But if he chooses to put his invention into use he can, as we 
have seen, open his monopoly to one or more particular per- 
sons; that is to say, he may license certain persons to invade 
his monopoly, without thereby throwing it open to the public. 

Furthermore, the patentee may limit this permitted invasion 
of his monopoly not only to the particular person, but also to 
the particular extent. He may limit the invasion permitted to 
enjoyment of the invention in a particular territory or at a 
particular place,*^^ or for a particular time,*^* or for a particu- 
lar purpose only,*^^ or to a particular person without right of 
transfer.*^® So also the limitation in a permission to use em- 
bodiments of the invention but not to make them has been up- 
held.*^^ All of these restrictions have been recognized as 

fringed the patent monopoly, May v. Western Lime Co., 65 Wash. 696, 
44 L. R. A. (N. S.) 333. 

*22 Continental Paper Bag Co. v. Eastern, etc. Co., 2ID U. S. 405^ 
Heaton-Peninsular Co. v. Eureka, etc. Co., yy Fed. 288. 

«3 Rubber Co. v. Goodyear, 9 Wall. 788. 

424 Mitchell V. Hawley, 16 Wall. 544- 

*25 Pope Mfg. Co. V. Gormully, 144 U. S. 248, Gamewell, etc. Co. v. 
Brooklyn, 14 Fed. 255. 

*26 Waterman v. Shipman, 55 Fed. 982; Oliver v. Rum ford Chemical 
Works, 109 U. S. 81. 

*27 Brush Elec. Co. v. California, etc. Co., 52 Fed. 945 ; In Oliver v. 
Rumford Chemical Works, 109 U. S. 75, the patent covered the process 
of making an acid to be used in the manufacture of certain kinds of flour. 



256 Patents and Inventions 

proper, and the limited permission to invade the monopoly and 
enjoy the invention did not create in the license a complete 
right to use and enjoy the invention. 

Restrictions on resale, or use of embodiments. From 
the fact that the patentee can thus limit the extent to which 
others are permitted to invade his monopoly, it would seem 
to follow that he could validly limit the licensee in respect to 
the profit he might, or must, make and the ways in which he 
might use embodiments of the invention. Such is undeniably 
the logical proposition, and it is one which was accepted by 
the courts until recently. Thus in Bement v. National Harrow 
Co.*^^ the plaintiff had contracted, for certain considerations, 
to let the defendant make and sell embodiments of his inven- 
tion, on the agreement of the defendant, however, not to sell 
the embodiments at less than a stipulated price. In suit to 
recover damages for the defendant's breach of this contract, 
it was claimed that the contract was void as an attempt to re- 
strain trade in contravention of the Sherman Anti-trust Act. 
The court said, "On looking through these licenses we have 
been unable to find any conditions contained therein rendering 
the agreement void because of a violation of that act. . . . 
The provision in regard to the price at which the licensee would 
sell the article manufactured under the license was also an 
appropriate and reasonable condition. It tended to keep up 
the price of the implements manufactured and sold, but that 
was only recognizing the nature of the property dealt in, and 
providing for its value so far as possible. This the parties 
were legally entitled to do. The owner of a patented article 
can, of course, charge such a price as he may choose, and the 
owner of a patent may assign it or sell the right to manufac- 
ture and sell the article patented upon the condition that the 
assignee shall charge a certain amount for such article." The 
decision is, that a condition on the right to enjoy the patentee's 
monopoly, requiring the maintainance of a stipulated sale price, 

The restriction of a license to make and sell such flour, but not to sell the 
acid itself was upheld. 
*28 186 U. S. 70. 



Conditions and Restrictions 257 

is not invalid because of the Sherman Anti-trust Act. There 
seems to have been no question, even, but that except for that 
act, the condition was perfectly valid and enforcible. 

Again, in Henry v. A. B. Dick Co.,*^^ the patentee had sold 
a mimeograph machine, embodying his invention, upon condi- 
tion that the buyer should use it only with ink made by the 
seller. The seller sought to enjoin a third party from induc- 
ing the buyer to use other ink in breach of the condition. In 
granting the injunction the court not only said that the agree- 
ment not to use other inks was valid as a contract, but it held 
that inasmuch as the buyer's right to use had been limited to 
use with the seller's inks, any other use was an unauthorized 
invasion of the seller's exclusive patent right. The opinion 
explicitly says, "We repeat. The property right to a patented 
machine may pass to a purchaser with no right of use, or with 
only the right to use in a specified way, or at a specified place, 
or for a specified purpose. The unlimited right of exclusive 
use which is possessed by and guaranteed to the patentee will 
be granted if the sale be unconditional. But if the right of 
use be confined by specific restriction, the use not permitted is 
necessarily reserved to the patentee. If that reserved control 
of use of the machine be violated, the patent is thereby in- 
vaded. This right to sever ownership and use is deducible 
from the nature of a patent monopoly and is recognized in the 
cases." This statement makes a clear distinction between the 
ownership of the right to enjoy th-e invention and the owner- 
ship of a chattel embodying the invention.*^^ Although it is 
obvious from the whole opinion that the court does rather con- 

*29 224 U. S. I. 

*3o Accord, Heaton-Peninsular Co. v. Eureka Co., 77 Fed. 288 ; National 
Phonograph Co. v. Schlegel, 128 Fed. y^z- To the effect that even absolute 
ownership of a chattel embodying a patented invention does not save the 
owner from liability for infringement if he makes use of his chattel, see 
Birdsell v. Shaliol, 112 U. S. 485. It would not be denied that one who 
makes a machine of his own materials is the owner of it, yet it is equally 
undeniable that his use of the machine would be infringement of a patent 
covering such machines, unless he had permission of a patentee. Dicker- 
son V. Sheldon, 98 Fed. 621; Rcdgers v. Torrant, 43 Mich. 113. 



258 Patents and Inventions 

fuse the two and think of the tangible machine as being itself 
the invention.*^^ 

Thus the law stood until it was upset by the decision in 
Bauer v. O'Donnell.*" The defendant in that case had pur- 
chased packages of "Sanatogen,'' a preparation protected by 
the plaintiff's patent. On each package was a notification — 
knowledge of which the defendant did not deny — to the effect 
that no one was authorized to sell such packages at less than a 
stated price, and anyone selling at less than that price would 
be guilty of infringing the patent monopoly. The defendant 
did resell at less than the stated price. The issue in the case 
was whether this sale, at a price less than that authorized by 
the patentee, constituted infringement. The court held that it 
did not.*^® This decision was followed in a few years by that 
of The Motion Picture Co. v. Universal Film Co.,*^* which 
specifically overruled Henry v. Dick Co., supra. The plaintiff^ 
as patentee of a device for operating motion picture films, had 
given the right to manufacture machines embodying his inven- 
tion to one who in turn sold such a machine to defendant. At- 
tached to the machine was a notice that its use was permitted 
by the patentee only with certain films also controlled by the 

*3i So late as 1913, in United States v. Winslow, 227 U. S. 202, it was 
very strongly implied that a condition that the licensee should use no other 
machines than those furnished by the licensor was valid. In the English 
case of Incandescent Gas Lt. Co. v. Cantelo, 12 Rep. Pat. Cas. 262, the 
court said, "The patentee has the sole right of using and selling the arti- 
cles, and he may prevent anybody from dealing with them at all. Inas- 
much as he has the right to prevent people from using them or dealing 
in them at all, he has the right to do the lesser thing, that is to say, to 
impose his own conditions." Accord, British Mutoscope Co. v. Homer, 
I Ch. Div, 671 (1901); National Phonograph Co. v. Menck (1911), L. R. 
36 A. C. 236. 

«2 229 U. S. I. The court "distinguishes" this case from that of Henry 
V. Dick Co., supra, but the reality of the distinction is illuminated by the 
fact that the four judges who constituted the majority in Henry v. Dick 
Co. (only seven judges took part) were all opposed to the decision in 
Bauer v. O'Donnell, and the majority in that decision included the three 
judges who had dissented in the earlier one. 

438 Accord, Straus v. Victor Talking Machine Co., 243 U. S. 490. 

434 243 U. S. 502. 






Conditions and Restrictions 259 

plaintiff. The defendant did not deny knowledge of this 
restrictive condition, and admitted that he had not conformed 
to it. The court did not discuss the validity of a contract be- 
tween the patentee and his licensee imposing restrictions on 
the licensee's right, saying that such a question was outside 
the scope of patent law. This left the issue squarely, whether 
the unauthorized use of the device with other than the speci- 
fied films constituted an infringement of the patentee's mo- 
nopoly. The court held that it did not.. 

This development of the law may be perfectly sound as a 
matter of public policy and economic utility.*^^ But the opin- 
ion of the court is a most confusing admixture of justification 
of its decision upon the strength of its economic effect and 
attempt to justify it as a logical development of the existing 
law. As is usual when courts override existing law for the 
sake of public advantage, without frankly admitting that they 
are so doing, the pretense of reasoning given is, to say the 
least, irritating. 

The real issue is, to use the court's own language, whether, 
"since the patentee may withhold his patent altogether from 
public use, he must logically and necessarily be permitted to 
impose any conditions which he chooses upon any use which 
he may allow of it." As the court says, this is not specifically 
answered by the patent statute, which in terms merely gives 
him the exclusive right to enjoy his invention. It is therefore 
» purely a question of public policy whether, if he allows others 
to invade his monopoly at all, he must allow them to invade it 



f \, , *35 The possible economic harm that might result from a patentee's un- 

limited power to restrict the right to use embodiments of his invention is- 

indicated by the not infrequent cases in which the holder of a valid 
patent, covering something essential to a particular trade, has secured a 
practical monopoly of profit in lines not covered by his patent. An ex- 
cellent presentation of the methods by which patents are used to secure 
monopolies wholly unrelated to the patent, is given by Mr. W. H. S. 
Stevens in his "Unfair Competition," Chap IV. 

On the other hand, the United States Chamber of Commerce has gone on 
record as favoring some plan by which resale prices may lawfully be 
sustained. See Chicago Herald, May ig, 1916, p. 13. 




26o Patents and Inventions 

without restriction/^^ As we have seen, the consistent custom 
of the courts, until the case of Bauer v. O'Donnell, supra, had 
been to allow the patentee to restrict and limit the extent to 
which he would allow others to enjoy his monopoly. But, be- 
ginning with that case, the court decided not to permit the 
patentee to restrict the extent to which his monopoly might be 
invaded by purchasers of chattels embodying his invention. 
This is clear enough, and probably satisfactory as a matter 
of public policy. The confusion arises because the court has 
endeavored to place such purchaser's right to invade the mo- 
nopoly on the fact of his ownership of the chattel. This ab- 
sence of distinction between the ownership of a chattel em- 
bodying an invention, and the owner's right to Itse it in con- 
travention of another's patent was foreshadowed in' Henry v. 
Dick Co., supra, and carried to an extreme in the subsequent 
cases.*®^ The sum total of the decisions, however, is clearly 
that a patentee who, by selling an embodiment of his invention 
authorizes the buyer to invade the monopoly, can not limit 

*36 That public policy is the motivating reason for the decisions is indi- 
cated by the statement in the Motion Picture Co. case, 243 U. S. 515, that 
"The perfect instrument of favoritism and oppression which such a sys- 
tem of doing business, if valid, would put into. control of the owner of 
such a patent should make courts astute, if need be, to defeat its operation." 

*37 In Motion Picture Co. v. Universal Film Co., 243 U. S. 502, for in- 
stance the court says, p. 516, "The right to vend is exhausted by a single, 
unconditional sale, the article sold being thereby carried outside the mo- 
nopoly of the patent law. . . ." This is true enough; a patentee who has 
sold a tangible chattel embodying his invention has given up all control 
whatsoever over the .ownership and, directly, of the use of that chattel. 
But has he given up his monopoly of the use and enjoyment of the 
invention? The chattel sold was not the invention, nor was it the pat- 
entee's monopoly of the invention ; that still remains in the patentee. The 
buyer of the chattel has no right whatsoever to infringe the patentee's 
monopoly of enjoyment of the invention, except such right as the patentee 
expressly or impliedly gave him by the sale. The fact that the patentee 
sold the chattel is, therefore, in no way whatever a reason for the decis- 
ion; on the contrary it is merely a fact in the case, the effect of which is 
the thing to be decided, and in this case the effect of the sale on the 
monopoly was expressly limited. See note 430. 



Conditions and Restrictions 2bi 




that right as to the prke at which the embodiment may be re- 
sold nor as to the way in which it may be used,*^^ 

The existing decisions as to the time during which the right 
may be exercised, or the place where it must be exercised, have 
not yet been overruled. 

The question as to whether a patentee, as the price of a li- 
cense to enjoy his invention, can impose conditions upon the 
licencee's conduct in no way connected with the invention 
seems not to have been directly passed on. It was more or 
less discussed, however, in United States v. United Shoe Ma- 
chinery Co/^° That was a siiit to have the defendant com- 
pany dissolved as an illegal combination. Suit was dismissed 
on the ground that such combination as existed was not illegal. 
One of the ways by which the company was alleged to* have 
improperly restrained trade was in granting licenses, to use 
machines covered by its patents, only on condition that the 
licensee should not use similar machines not covered by the 
licensor's patents and also that the Hcensees should rent from 
the licensors, and from them only, certain entirely different 
machines not covered by any patent. It was this **tying" to 
the license of terms which had no relation to the invention at 
all that the government objected to as an improper restraint 
of trade. The majority of the court held that there was noth- 
ing illegal in these ''tying clauses" and that the owner of a 
patent may license persons to enjoy the invention on such terms 
as he sees fit. There was, however, a strong dissenting opin- 
ion in which the right of a patentee to restrict the conduct of 
a licensee in ways unrelated to the invention was flatly denied. 
Logically, if it is sound public policy to preclude a patentee 
from putting restrictions upon the buyer of embodiments of 
the invention, it should be equally sound to forbid his putting 
such restrictions upon the lessee. (As we have seen the buyer 
is as truly a licensee in respect to the monopoly as is a lessee 

438 Pqj. a more extended discussion of this topic see the excellent article 
by T. R. Powell in 17 Columbia Law Rev. 663, and that by the author in 
15 Michigan Law Rev. 581. 

439247 U. S. 32. It is answered by implication, also in United States 
V. Winslow, 227 U. S. 202. 



262 Patents and Inventions 

of the embodiment.) And in view of the tendency of the 
court it is very doubtful if such restrictions would be actually 
enforced. 

Restrictions by contract. Since the patentee, if he opens 
his monopoly at all by sale of chattels embodying the patent, 
must open it entirely, at least so far as resale price and use are 
concerned, and can not protect himself by virtue of his patent, 
it becomes a very natural question whether he can restrict the 
buyer of such chattels by a valid contract. 

In Bement v. National Harrow Co.,***^ the issue was whether 
a contract between the patentee and his licensee, whereby the 
latter agreed not to sell below a stipulated price the chattels 
which he should make embodying the invention, was valid and 
enforcible. The court held that it was enforcible and did not 
contravene the federal anti-trust statute, (the Sherman Act). 
Likewise in Henry v. Dick Co.**^ it was clearly indicated that 
the buyer's agreement to use the machine with the seller's ink 
only, would be enforcible as a contract. However, these de- 
cisions were so far interwoven with the idea of the patentee's 
right to partially release his monopoly, that the basic reason ex- 
pressed in the opinions has been removed by the decision in 
Bauer v. O'Donnell, supra. The only issue now possible is 
whether, regardless of the patent monopoly, or, indeed, with- 
out any such monopoly, a seller of goods can, by express con- 
tract, restrict the buyer's disposal or use of them. 

In Dr. Miles Medical Co. v. Park & Sons Co.,*" the action 
directly involved the validity of a contract whereby one pur- 
chasing certain chattels from the plaintiff had agreed that he 
would not sell below a stated price. No patent right was in- 
volved at all. The contract was one of a great number of 
similar ones between the plaintiff and other dealers, constitut- 
ing ''a system of interlocking restrictions by which the com- 
plainant seeks to control not merely the prices at which its 
agents may sell its products, but the prices for all ^ales by all 



**o 186 U. S. 70. 

**l224 U. S. I. 

442 220 U. S. 2,72,' 



Conditions and Restrictions 263 

dealers at wholesale or retail, whether purchasers or sub-pur- 
chasers, and thus to fix the amount which the consumer shall 
pay, eliminating all competition." The court held that the 
fact that the articles were made under a "secret process'' did 
not affect the issue; that the secret itself might be protected 
against fraud or breach of contract, but this had nothing to 
do with protection relating to specific articles made by the 
process. Of the contract itself the court said, ''General re- 
straint in the alienation of articles, things, chattels, except 
when a very special kind of property is involved, such as a 
slave or an heirloom, have been generally held void. If a 
man,' says Lord Coke, in Coke on Littleton, section 360, 'be 
possessed of a horse or any other chattel; real or personal, and 
give his whole interest or property therein, upon condition that 
the donee or vendee shall not alien the same, the same is void, 
because hiB whole interest and property is out of him, so as 
he hath no possibility of reverter ; and it is against trade and 
traffic and bargaining and contracting between man and man.' " 
"The present case is not analogous to that of a sale of good 
will, or of an interest in a business, or of the grant of a right 
to use a process of manufacture. The complainant has not 
parted with any interest in its business or instrumentalities of 
production. It has conferred no right by virtue of which pur- 
chasers of its products may compete with it. It retains com- 
plete control over the business in which it is engaged, manu- 
facturing what it pleases and fixing such prices for its own 
sales as it may desire. Nor are we dealing with a single 
transaction, conceivably unrelated to the public interest. The 
agreements are designed to maintain prices, after the com- 
plainant has parted with the title to the articles, and to pre- 
vent competition among those who trade in them." Accord- 
ingly the restriction in the contract was declared void. 

This case, together with Bauer v. O'Donnell and those sub- 
sequent to it, makes it clear that a patentee can not, even by 
contract, preclude one who purchases from him from reselling 
or using the chattel as he chooses :.af least, if the contract is 



264 Patents and Inventions 

one of a number whose tendency is unreasonably to restrain 
trade.*'^ 

A single contract, not part of an elaborate attempt to re- 
strain trade, is probably valid. Those which are part of a sys- 
tem are held invalid because they unreasonably restrain trade. 
A single contract restricting resale or use would hardly be an 
unreasonable burden on commerce, and such contracts have, in 
fact, been held valid by the courts.*** Even one of a number of 
contracts affecting the resale price has been held valid, when 
the restriction affected only a small part of the total commerce 
in the articles concerned.**^ One state court has even gone so 
far, so late as 191 7, as to uphold a wide spreading system of 
such contracts. In Ingersoll & Bro. v. Hahne,**^ the issue went 
directly to the validity of a contract precluding dealers in In- 
gersoll watches from selling at a price of less than $1.35. ''On 

443 Accord, United States v. Kellogg, etc. Co., 222 Fed. 725 ; Ford Motor 
Co. V. Union Motor Co., 244 Fed. 156; Hill Co. v. Gray & Worcester, 163 
Mich. 12; Compare, Ford Motor Co. v. B. E. Boone Co., 244 Fed. 335; 
16 Michigan Law Rev. 127. 

Contra, Ingersoll & Bro. v. Hahne & Co., 88 N. J. Eq. 222, loi Atl. 1030. 

The federal statutes, 38 Stat. 730, make it unlawful for any person en- 
gaged in interstate commerce to sell, or contract to sell, or lease, any 
goods, whether covered by patent or not, on condition that the buyer or 
lessee shall not use goods of a competitor, etc. 

Although such a system of contracts makes them illegal and, hence, 
unenforcible, it has been held by a lower court, at least, that it is not a 
criminal offense for a manufacturer, not acting in concert with other 
manufacturers, to enter into such contracts. United States v. Colgate & 
Co. 253 Fed. 522. But see the implied limitation on this in United States 
v. Colgate & Co., 39 Sup. Ct. Rep. 465 (June, 1919). 

Since the foregoing was written the Supreme Court, in United States v. 
A. Schrader's Sons, Inc., 64 Law Ed., has "distinguished" the Colgate case 
on the ground that the Colgate Co. did not make contracts that its cus- 
tomers would not resell below the stipulated price, but only refused to 
sell to those who would not adhere to the fixed price. In the Schrader's 
Sons case the making of such contracts was held to be criminal. 

4** Garst v. Harris, 177 Mass. 72 ; Clark v. Frank, 17 Mo. App. 602 ; 
This distinction between a single contract and a system of contracts was 
indicated in Hill Co. v. Gray & Worcester, 163 Mich. 12. 

445 Ghirardelli Co. v. Hunsicker, 164 Cal. 355. 

*46 88 N. J. Eq. 222. 



Conditions and Restrictions 265 

the argument there was, and in counsers brief there is, a long 
discussion as to whether the contract against price cutting, 
evidenced by the notice, is contrary to public policy, and de- 
fendant relies upon cases in the supreme court of the United 
States. I am now considering the public policy of the State 
of New Jersey as distinguished from any public policy of the 
United States. Unless the article is the subject of interstate 
commerce, I am not bound by the opinions of the supreme 
court of the United States. They are entitled to great weight 
and careful consideration, but it must not be overlooked that 
the effect of the case of Motion Picture Patents Co. v. Uni- 
versal Film Co., decided April 9th, 191 7, is a complete re- 
versal of Henry v. Dick 224 U. S. i. To consider in detail 
the reasoning of the court in the very numerous cases which 
have been decided bearing upon this question would unduly ex- 
tend this opinion. Suffice it to say, that after careful con- 
sideration, I have come to the conclusion that upon the general 
proposition, I agree with the dissenting opinion of Mr. Justice 
Holmes in Dr. Miles Medical Co. v. John D. Parks & Sons Co., 
220 U. S. (at p. 411)." Accordingly, the contracts were held 
to be valid and en forcible. 



CHAPTER IX 

Protection of the Monopoly 
§ I. Jurisdiction of the Courts 

Patent monopoly within jurisdiction of Federal 
COURTS^ The rights and privileges conferred by a patent are 
protected and enforced by the Federal courts, and these have 
jurisdiction that is exclusive' of the state courts in such mat- 
ters.**' 

Patent right, as property, is within jurisdiction of 
State Courts. This does not deprive the State courts of 
jurisdiction of matters which do not determine rights granted 
by a patent, even though the ownership of such rights, what- 
ever they may be, is involved. Whenever the patent is in- 
volved in controversy merely as a piece of property, without 
calling into question the effective value of such property, the 
state courts have the same jurisdiction that they would have 
in any other cases involving the ownership and control of 
property. Contracts concerning the patent right are likewise 
subject to the same jurisdiction that other contracts are. In 
many instances the owner of a patent who has contracted with 
another in regard to its enjoyment has a choice of remedies. 
The wrongful act of the defendant may be a branch of the 
contract, through a use of the invention which has been clearly 
forbidden by the terms of his agreement. This same act, being 
done without the patentee's permission, would also be an in- 
fringement of the patentee's exclusive right. If the owner 
chooses to treat the wrong as a breach of the contract, his 
suit is not within the limited jurisdiction of patent law but 
must be brought in the courts having proper jurisdiction of 
breaches of contract. If however he chooses to treat the mat- 
ter as an unauthorized infringement of his patent monopoly, 

**7 Act of March 3, 1911 (Judicial Code) §24, §256. 



r 



Jurisdiction of Courts 267 

action must be in the Federal courts. As the court has put 
j^ 448 "\Yhen a contract is made respecting a right under a 
patent, and the parties get into litigation, confusion has some- 
times arisen over the question whether the cause of action 
originates in the contract or in the patent laws. The test is 
this: If the plaintiff is seeking a judgment for debt or dam- 
ages, or a decree for cancellation or specific performance, pn 
account of the defendant's breach of his covenants, the cause 
of action arises out of the contract ; and, though the determina- 
tion of the issue of breach or no breach may involve the in- 
terpretation of the patent and of the prior art, the insistence of 
the defendant that his device, according to the true construc- 
tion of the patent and of the prior art, is not within the patent 
right granted him in the contract, cannot change the nature of 
the action. Standard Sewing Machine Co. v. Leslie, 118 Fed. 
S57> 55 C. C. A. 323. On the other hand, if the plaintiff is 
seeking a judgment for damages, or a decree for an injunction 
and an accounting, on account of the defendant's unauthorized 
use of the patent right in making or using or selling the device 
without license, the cause of action arises out of the patent 
laws ; and, though the determination of the issue of infringe- 
ment or no infringement may involve the interpretation of the 
contract, the insistence of the defendant that his act was 
within his rights under the contract, if properly construed, 
cannot change the nature of the action."**® 

*** Victor Talking Machine Co. v. The Fair, 123 Fed. 424. Accd., Carle- 
ton V. Bird, 94 Me. 182. 

**o A suit for specific performance of a contract to furnish money for 
development purposes, in consideration of an interest in the profits of an 
invention, and for an injunction against claiming title to the patent under 
a fraudulent assignment, was held not to give the federal courts any 
jurisdiction. Kurtz v. Straus, 106 Fed. 414, 

On the other hand, in Henry v. Dick Co., 220 U. S. i, where the licensee 
had expressly contracted not to use anything but plaintiff's ink with the 
patented mimeograph but had used other ink, it was held that even though 
suit might have been brought in the State courts for breach of contract 
it might also be brought in the Federal courts for infringement of the 
patent. Wilson v. Sanford, 10 How. 208; Hartell v. Tilghman, 99 U. S. 
547; Albright v. Teas, 106 U. S. 613, to recover royalties— no invalidity of 



268 Patents and Inventions 

Care must be taken to distinguish those cases in which the 
remedy is optional from those in which the wrong done is not 
something actually precluded by the contract but something 
outside of it and not covered by it at all. In this latter type 
of case there can be no action on the contract, and the suit 
must be in the Federal courts, for infringement. 

Remedies. The Federal courts have authority ; — to protect 
the owner of the patent by awarding him compensation for the 
damages he has suffered by infringement, with a penalty added 
in certain cases; to award him the amount of profit the in- 
fringer has made; and to prevent further infringement by in- 
junction.*^" The procedure by which these remedies are se- 
cured is not discussed in this book. It requires a knowledge 
of federal procedure in general, and should properly be stud- 
ied as a part of that subject. To separate that part of the 
federal procedure which pertains particularly to patents, would 
still leave so much of the common fundamentals to be eluci- 
dated as to necessitate almost another volume. This treatise is, 
therefore, confined to the substantive part of the patent law. 

Whichever remedy the plaintiff may choose to ask for, the 
defendant is privileged by the statute*'^ to show as a defense 
that the patent on which suit is brought was secured by fraud 
of some sort and is void on that account; that it is void because 
the right to it had been lost through abandonment, or public 
use or sale more than two years prior to the application ; that 
the patentee was not in fact the first inventor or any inventor 
at all and therefore was not entitled to a patent; and that even 
if the patent be valid the defendant has not infringed it.*^^ The 

patent set up; U. S. v. Palmer, 128 U. S. 262; Excelsior Wooden Pipe 
Co. V. Pacific Bridge Co., 185 U. S. 282. 

4s<>The courts can not award the patentee title to the things unlaw- 
fully made by an infringer of the patent. Belknap v. Schild, 161 U. S. 10. 

^•'^i R. S. § 4920. 

*52 This broad statement covers practically the entire range of patent 
law. Since the defendant may attack the validity of the patent, he may 
do it on any ground — anticipation, public use, fraud, or anything else. 
Likewise he may set up anything that supports his defense of non-infringe- 
ment. These matters are all discussed under their appropriate headings, 



Remedies 269 

defendant is not restricted to any one of these defenses but 
may avail himself, so far as his evidence allows, of them alL 
In short, the defendant may both attack the validity of the 
patent and deny infringement of its monopoly. 

The patent as evidence. The burden of proof in his at- 
tack on the patent is thrown upon the defendant, because the 
existence of the patent is prima facie evidence of its own 
validity in whartever respect it may be attacked. In the ab- 
sence of any evidence to the contrary the legal conclusion is 
that it was issued without fraud, to the proper person, for a 
real invention. *^^ This presumption of validity has been car- 
ried in judicial statement to the extent that "every reasonable 
doubt should be resolved against'' the person attacking the 
validity and effectiveness of the patent.*'^* 

Patent not real evidence of invention. But while the patent 
is prima facie evidence of its own validity, the evidence is not 
strong enough to have much real effect on the issue when 
countervailing evidence is given.*^^ This lack of evidenciary 
force in a patent has been a potent cause of the often ex- 
pressed opinion, that a patent is never worth much of anything 
and the patent statute is a delusion and snare. There can be 
no doubt but that the layman believes the fact that a patent 

and it is quite unnecessary to repeat that discussion under the title of 
"defenses", as is done by at least one text writer who states, and parti- 
ally re-discusses, twenty-nine defenses. 

*53 Condit V. Bush, 132 U. S. 39; Am. Caramel Co. v. Mills & Bro., 149 
Fed. 743; Parks v. Booth, 102 U. S. 96, "Neither damages nor profits can 
be recovered unless the complaining party alleges and proves that he or 
the person under whom he claims was the original and first inventor of the 
patented improvement, and that the same has been infringed by the party 
against whom the suit is brought. Both of those allegations must be 
proved to maintain the suit; but the patent, if introduced in evidence by 
the complaining party, affords him prima facie evidence that the patentee 
was the original and first inventor. That presumption, in the absence of 
any satisfactory proof to the contrary, is sufficient to entitle him to re- 
cover if he proves the alleged infringement." West v. Frank, 149 Fed. 423. 

*5* Coffin V. Ogden, 18 Wall. 120, 124; Cantrell v. Wallick, 117 U. S. 689. 

*55 Palmer v. Corning, 156 U. S. 342; Hollister v. Benedict Mfg. Co., 113 
U. S. 59, 71 ; N. Y. Belting Co. v. Sierer, 149 Fed. 756, 770 ; Warren Bros. 
V. Owosso, 166 Fed. 309. 



270 Patents and Inventions 

has been granted is legally supposed to be proof of its valid- 
ity, and that a successful defense to an infringement suit 
amounts to some sort of an evasion of the law, and of the pro- 
tection which the statute intended a patent should give. If it 
were the intent of the statute that the granting of a patent 
should be anything more than the merest prima facie evidence 
of its validity, the feeling that patents are generally undesir- 
able, because useless, would be justified by' the great number 
of them which the courts have declared worthless, in compari- 
son with those which have been held valid. 

But the statute clearly never intended any such effect of ab- 
solute validity to follow the issue of a patent. The procedure 
of the Patent Office is necessarily such that the prior art can 
not be examined for existing knowledge except as that knowl- 
edge has been recorded in the office, and the issue of a patent 
can signify nothing whatever as to the novelty of the alleged 
invention, except as to such recorded knowledge. A particular 
device might have been on sale in every shop in San Francisco, 
or even in Washington, for years and a patent nevertheless be 
issued for it, if the prior patents recorded in the Patent Office 
did not show it. The Patent Office does not purport to be 
omniscient in any respect. Furthermore, since the statute was 
not intended to give a monopoly for every bright idea and me- 
chanical change in the prior art, and the decision of the Com- 
missioner of Patents is not final as to what amounts to such 
narrow change from even the recorded art, it is obvious that 
the issue of a patent means nothing as to whether the patentee 
was really entitled to the monopoly he claimed. The patent 
simply gives him the right to a monopoly so long as no one 
disputes it, and then a right to prove the validity of his claim 
in court. When one realizes the number of persons who, hav- 
ing conceived what appears to be a new and useful idea of 
means, immediately ask for a patent on it, without any com- 
petent investigation of existing knowledge, the number of 
patents found by the courts to be invalid is not in the least de- 
rogatory of the protection which the patent law gives to real 
and original inventors. 



Infringement 271 

§ 2. Proof of Infringement 

Thus far we have been discussing the various matters relat- 
ing to the patent itself and its validity. We come now, as- 
suming the existence of a valid patent, to a discussion of in- 
fringement of the patent monopoly. 

Issues which arise. This involves two fundamental ques- 
tions in each case; first, what is the invention that is covered 
by the patent ; second, has the defendant made, used or vended 
anything embodying this particular invention. 

The form claimed. The first of these is a question of law, 
to be decided by the court,*^^ and it involves, in itself, two dis- 
tinct possibilities of issue. The simpler of these inquiries is, 
what is the invention literally set out and claimed. In other 
words, what is the formal embodiment described in the patent. 
It is possible that the patent is so defective in its description as 
not to set out anything definite at all.*^® Or there may be well 
founded dispute as to the thing actually described in words and 
phrases. To determine this seems to be a matter of interpre- 
tation of the instrument by the court. 

The ordinary rules for the construction of contracts apply 
here. The literal scope of the patent is limited by the claims 

457 Winans v. Dennead, 15 How. 329, 337; Corning v. Burden, 15 How. 
252; Parker v. Hulme, i Fish Pat. Cases 44, Fed. Cas. No. 10,740; Coupe 
V. Royer, 155 U. S. 565, syll. "In letters patent No. 77,920 granted to 
Herman Royer and Louis Royer, May 12, 1868, for "an improved machine 
. for treating hides," the first claim, viz., for a "vertical shaft," and the 
second claim, viz., for a "groved weight," are restricted to a shaft and 
crib in a vertical position, and to a weight operating by the force of 
gravity aided by pressure; and they cannot be extended so as to include 
shafts and cribs in a horizontal position, and pressure upon the hides by 
means of false heads, actuated and controlled by gearing wheels, springs, 
and a crank. In jury trials in actions for the infringement of letters 
patent, it is the province of the court, when the defense denies that the 
invention used by the defendant is identical with that included in the 
plaintiff's patent, to define the patented invention, as indicated by the lan- 
guage of the claims; and it is the province of. the jury to determine whe- 
ther the invention so defined covers the art or article employed by the 
defendant." 
*58 xhis is discussed supra. 



272 Patents and Inventions 

and these are to be construed with the interest of both the in- 
ventor and the pubHc in mind.*^^ 

The meaning and extent of the claim may be interpreted by 
reference to the description and drawings/*^*^ although it can 
not be expanded to include matter described but not claimed. 

The idea claimed. But the monopoly of the patent is not 
necessarily limited to the device as literally set out in the de- 
scription. If it were so limited, the inventor of any device 
w^ould be compelled to foresee and describe all the forms in 
which his idea might be materially embodied, and anyone who 
was able by mere mechanical skill to construct a device dif- 
fering in material form from those described in the patent 
would not be an infringer. But, as we have said before, 
it is not the n\aterial device actually described in the patent 
that constitutes the invention protected by it. And nowhere 
does it more clearly appear, that it is the idea of an art, ma- 
chine, etc. that really constitutes the invention, than it does in 
decisions upon infringement. 

In a very large proportion of cases one form of material 
embodiment is set forth in the patent, and only one; yet the 
courts have held that the patent was infringed by the use of a 
material device quite unlike, in substantial form, the one de- 
scribed. In Tilghman v. Proctor,*^^ for instance, the claim of 
the patent was for'"The manufacturing of fat acids and glycer- 
ine from fatty bodies by the action of water at a high temper- 
ature and pressure." The only material means of accompHsh- 
ing this separation pointed out in the description, consisted of 
a long coil of strong iron pipe passing through an oven or 
furnace where it was subject for 10 minutes to a temperature 
of 612° F., that of melting lead. The defendant accomplished 
the same result by an obviously different material means; he 
used a boiler in which the fatty substances were subject for 
several hours to a temperature of only 400° F. The same 
patent had been considered, on these facts, in the case of 

450 Cases supra. O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340, 343. 
*«<^ O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340. 
*«i 102 U. S. 707. 



Infringement 273 

Mitchell V. Tilghman,*^^ and the court in that case found that 
the patent was limited to the means pointed out in the specifi- 
cation and that there was no infringement because of this dif- 
ference in material means of accomplishing the result. This 
decision was overruled in the Proctor case and the court held 
that the device used by the defendant was in fact an infringe- 
ment of the patent despite its material difference. This de- 
cision of the court was based on the ground that the patent was 
"for a process, and not for any specific mechanism for carrying 
such process into effect.'' Exactly what a ''process" is the 
court does not explain, save that it comes within the meaning 
of *'art'' as used in the patent statute. But, whatever the 
meaning of the terms employed, it is clear that Tilghman was 
given protection beyond the limits of the material embodi- 
ment described in his patent. In the case of Expanded Sletal 
Co. V. Bradford*^^ the court went so far as to hold that no 
material means need be described at all if what the court called 
the "method'' of reaching the specified result be so clearly 
set out that-anyone skilled in the art could find the substan- 
tial means of accomplishing it. 

Even where the invention purports to be the concept only 
of a machine, in its strict sense, and not an art or a process, 
the monopoly of the patent is not restricted to the mere de- 
scription given, but the patentee is often protected against the 
use of machines quite dissimilar in material form to the one 
described. As an illustration is the case of Ives v. Hamilton.*^* 
The patent was for a saw mill, consisting of the combination 
of a saw, levers, rods, guides, etc., constituting a machine 
which gave to the saw a rocking or rolling motion desirable 
for certain purposes. The defendant secured the same rock- 
ing motion by using two straight guides set at an angle, where 
the plaintiff used a single, curved one, and by reversing the 
plaintiff's connections, at' two places, so that the ultimate mo- 



*«2 19 Wall. 287. 
*«3 214 U. S. 366. 
«4 92 U. S. 426. 



274 Patents and Inventions 

tion was the same. This formally and substantially different 
device was held to be an infringement of the patent.*^^ 

Neither is the scope of a patent limited to the particular use 
described, A patentee is entitled to all uses to which it may be 
put, which do not themselves involve invention. 

The changes in form which do not in fact evade the 
monopoly of the patent are usually spoken of as "equiva- 
lents." Customarily, the proposition set out in the foregoing 
paragraphs is reversed, and it is said that the substitution of 
equivalents does not constitute invention, nor avoid infringe- 
ment. Some writers have even attempted to lay down "rules'' 
as to what will constitute an "equivalent." But, on examina- 
tion, it appears that these rules are only the statements of in- 
dividual cases. The truth is that the existence of invention 
and -non-infringement is not ascertained from the fact that 
a change is an equivalent; it is an equivalent because its sub- 
stitution did not require inventive genius. There is no such 
thing as a definite "equivalent" from which non-inventioii may 
be predicated; its limits and scope can no more be defined 
than can the concrete inclusiveness of "invention." The so- 
called "doctrine of equivalents" means nothing more than that 
the protection of a patent is not limited to the precise ma- 
terial embodiment of the invention as described. 

It appears, therefore, that whatever the invention may be 
called by the inventor or the courts, it may be, in its scope, 
something more than the concept literally depicted by the 
words of the description Just how much more, if any, the 
invention as patented does cover, constitutes the second di- 
vision of the first issue referred to above, and is the real issue 
in most patent litigation. This question is one to be answered 
by the court, and is therefore a question of law, so-called. 

*65Acc. Water-Meter Co. v. Desper, loi U. S. 332, "It is equally well 
known that if any one of the parts is only formally omitted, and is sup- 
plied by a mechanical equivalent, performing the same office and produc- 
ing the same result, the patent, is infringed"; Westinghouse v. Boyden 
Power Brake Co., 170 U. S. 537» 5^8, "We have repeatedly held that a 
charge of infringement is sometimes made out, though the letter of the 
claims be avoided." 



Infringement 275 

It is obvious that the whole actual scope of the invention 
can not be decided in any one case. The courts can not f orsee 
all the formal changes, the substitution of mere equivalents, 
which may be made, any more than the inventor himself could. 
The only matter, therefore, that can be decided is, whether 
the scope of the invention covers the particular device which 
is alleged, in the suit, to infringe. The question therefore 
takes the true form of an inquiry whetJur the defendcmfs 
device is zvithin the scope of the patent, and not, what is the 
scope of the patent. Some courts have made it appear as 
though there were two distinct questions, namely, the scope of 
the patent and, whether the defendant's device comes within 
it. They have said that the first is of law, the second of fact. 
Properly, there is no such distinction. As the first question 
can not be answered except by reference to the particular in- 
stance, its determination settles ipso facto the other question, 
and there is nothing left by way of further inquiry. Obvi- 
ously, if the scope of the patent is broad enough to include the 
defendant's device, the defendant's device is within the Scope 
of the patent, and there is nothing further to be decided. It 
is important to realize this, in order not to be confused by 
the apparently different cases in which the courts are deciding 
"the scope of the patent" and tho'se in. which they are deciding 
"whether the defendant has infringed." 

Unless the alleged infringing device is identical with the 
description of the patent, this decision, any way it is looked at, 
can be nothing else than a matter of opinion. It can not be 
treated as a matter that is governed by "rules," for, by the 
very nature of the subject, the circumstances of two cases will 
never be precisely alike. Even the value of other decisions as 
persuasive guides is less than in other branches of substantive 
law, because of the essential dissimilarity of facts. The most 
that can be said for the value of precedents in affecting this 
decision is, that certain circumstances appear to have been 
given more weight than others by the courts and should, there- 
fore, be of similar effect upon the opinions of later courts. 



276 Patents and Inventions 

Particular cases, holding one way or other on particular facts 
need not be given here as they can be found, classified, in the 
digests. 

Factors influencing the decision. The circumstances 
which affect the finding of infringement or non-infringement 
are, in theory, the same as those which affect a finding of in- 
vention or anticipation. If a production is so like something 
that preceded it as to lack the inventive quality, and be antici- 
pated, it logically follows that it would be an infringement of 
the earlier device were that protected by a patent. Converse- 
ly, were a device held not to be anticipated by an earlier one, 
it would, theoretically, be held not to be infringed by it were 
the suit to come up in that way. Even the courts have said 
that **that which infringes, if later, would anticipate if earl- 
j^j. »»466 Conversely,. it is said, "A device which, if existent be- 
fore the making of a patented invention, w'ould not anticipate 
it, cannot if made after the issue of the patent, be said to 
infringe it."*®^ In Cook v. Sandusky Tool Co.*®^ the opinion 
of Mr. Chief Justice Waite is short and to the point, being in 
its entirety, "If the hoe made by the Tool Company infringes 
the patent of the appellant, it was an anticipation of. the in- 
vention, and the patent is void, for the testimony leaves no 
doubt whatever in our minds that the company made and sold 

*^«Knapp V. Morss, 150 U. S. 221, 228; Peters v. Active Mfg. Co., 129 
U. S. 530, 537; Miller v. Eagle Mfg. Co., 151 U. S. 186, 203. 

*^^ Cleveland Pneumatic Tool Co. v. Chicago Pneu. Tool Co., 135 Fed. 
783. In this case a certain tool existent before the patent had been held 
not to make it void by anticipation and the court held the defendant's tool 
not to be an infringement because it was materially identical with the 
prior one. In Peerless Rubber Co. v. White, 118 Fed. 827, the court pro- 
ceeded on the assumption that a device which would not have anticipated 
an invention could not reasonably be held to infrinsje it. To the writer 
this seems fallacious. It is quite conceivable that a device might be such 
an improvement on old ones as to be an invention, while if it had come 
first, in its entirety, the faulty one, constructed later, would be merely a 
clumsy infringement of the invention. 

«8 28 L. Ed. 124. 



Infringement 2yj 

its hoes long before the date of the invention patented. If it 
is not an anticipation, it is not an infringement." The bill 
was therefore dismissed. 

It does not appear in this case whether the dismissal was be- 
cause there was no infringement, or because the patent was 
void for anticipation. The case is unique and it seldom ap- 
pears that the alleged infringing device has actually existed 
prior to the patented invention. Ordinarily a decision of in- 
fringement or non-infringement must be made. Judging from 
many of these decisions, one may reasonably doubt, in actual 
practice, whatever be the theory, that what would have an- 
ticipated if earlier will infringe if later. In a great number 
of cases the defendant's device has been found not to be an 
infringement, although one is morally certain that it would 
have been held sufficient to anticipate the plaintiff's invention 
had the case arisen under different circumstances. As a per- 
haps extreme illustration may be cited the case of Poirier v. 
Clementson.*®^ The plaintiff in this case held a patent for an 
improvement in pack-straps. One of its claims was for a bag 
having shoulder straps secured to a piece of leather across the 
top of the bag and their other ends arranged to fasten, after 
passing across the shoulders, to buckles on the lower corners 
of the bag. He contended that defendant's pack differed from 
his only in the fact that the straps were attached at a some- 
what lower point. Defendants insisted that the method of at- 
tachment was different and that the load w^as carried in a dif- 
ferent position. The validity of the patent w^as not disputed 
by the defense and the court dismissed the bill on the ground 
that there was no infringement. If the validity of the patent 
had been attacked and the device of the defendant had been 
set up as pre-existing, it seems incredible* that the court w^ould 
not have held the patent void as exhibiting only mechanical 
change from the earlier device.*^® 

It appears often that the case is determined on a finding of 

4«9 70 Fed. 617. 

*^^ See also Bragg v. Fitch, 121 U. S. 478; Crawford v. Heysinger, 123 
U. S. 589; Boyd V. Janesville Tool Co., 158 U. S. 260. 



278 Patents and Inventions 

non-infringement in order that, by a narrow construction, the 
court may evade the actual invalidity of the patent which would 
follow a construction broad enough to make the subsequent de- 
vice an infringement.*^^ Because of this, it is not safe to 
rely on cases in which a certain similarity has been held to 
constitute anticipation, as precedents for the contention that 
the same degree of similarity should be held to constitute in- 
fringement. 

Another matter that is judicially declared to affect the 
court's conclusion as to the scope of a patent is the patentee's 
own acquiescence in its delimitation by the Commissioner of 
Patents. The courts have "often held that when a patentee, 
on the rejection of his application, inserts in his specification, 
in consequence, limitations and restrictions for the purpose of 
obtaining his patent, he cannot, after he has obtained it, claim 
that it shall be construed as it would have been construed if 
such limitations and restrictions were not contained in it."*®° 
"If an applicant, in order to get his patent, accepts one with 
a narrower claim than that contained in his original applica- 
tion he is bound by it. If dissatisfied with the decision reject- 
ing his application, he should pursue his remedy by appeal."*®^ 
Although these statements are not infrequent, it may fairly be 
said that they are not adhered to, except when the court is 

• «• 

*7i Scaife & Sons Co. v. Falls City Woolen Mills, 209 Fed. 210; Roemer 
V. Peddie, 78 Fed. 117. 

*80 Roemer v. Peddie, 132 U. S. 313. In this particular case the lower 
court had reached the same conclusion of narrow scope in order to escape 
the necessity of holding the patent void, as it would have been if a wider 
scope had been ascribed to it. Roemer v. Peddie, 78 Fed. 117. It is not 
at all certain that the Supreme Court would have followed the letter of its 
own statement had there not been this additional reason. 

*8i Shepard v. Carrigan, 116 U. S. 593. Here again it appears that if 
the scope claimed had been allowed, the patent would undoubtedly have 
been void for lack of novelty. Ace. Phoenix Caster Co. v. Spiegel, 133 
U. S. 360; Sutter v. Robinson, 119 U. S. 530; Sargent v. Hall Safe & Lock 
Co., 114 U. S. 63; Singer Mfg. Co. v. Cramer, 192 U. S. 265; Computing 
Scale Co. v. Automatic Scale Co., 204 U. S. 609; Morgan Envelope Co. v. 
Albany Perforated Wrapping Paper Co., 152 U. S. 425; Ventilated Cush- 
ion & Spring Co. v. D'Arcy, 232 Fed. 468. 



Infringement 279 

influenced toward a narrow construction by other reasons, such 
as that a wider scope would invalidate the patent. 

Occasional statements are also found to the effect that 
*'When the terms of a claim in a patent are clear and distinct*®^ 
the patentee, in a suit brought upon the patent, is bound by it. 
He can claim nothing beyond it."*®^ **It is his (the paten- 
tee's) province to make his own claim and his privilege to re- 
strict it. If it be a claim to a combination, and be restricted to 
specified elements, all must be regarded as material, leav- 
ing open only the question whether an omitted part is sup- 
plied by an equivalent device or instrumentality/'*®* As 
has already been said, the scope of a patent is not limited to 
the material form of the embodiment of the invention as de- 
scribed. Such statements as these are in general merely loose 
expressions of the fact that the particular invention is not de- 
serving of a range of equivalents or protection outside of its 
literal description. It is not impossible that a patentee who is 
ignorant of the principle embodied in his device, or who is 
careless in the very precision of his language, may limit him- 
self so expressly to the specific formal embodiment claimed, 
that the other forms to which his protection might have been 
spread can only be looked upon as dedicated to the public. But 
the cases are few, in which a patentee who might have had 
greater protection under a proper claim is deprived of it be- 
cause of the wording of his actual claim. 

Pioneer patents. Another thing which has materially af- 
fected courts in their decisions as to the scope of an invention 
is the distance of relationship between it and the knowledge 
which preceded it, or, in other words, the length of the step 
forward which the inventor has made. The thing patented is 
not the substantial thing actually described in the patent, but 
the idea embodied in that substantial form. It appears from 
the cases that, in a figurative sense, this idea must be symmetri- 
cal; it can reach so far forward to cover improvements, and 

*82As they always should be. 

*83 Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274. 
*84 Fay V. Cordesman, 109 U. S. 408. The court had already found that 
"this patent stands on very narrow ground" in view of the prior art. 



28o Patents and Inventions 

only so far, as it is itself in advance of the prior state of the 
art. If it is but a slight improvement upon the known art, it 
has but a narrow scope of protection against infringements; 
if it be a long step forward, its monopoly has a wide scope of 
inclusiveness. Such an invention, far in advance of the known 
art, is usually spoken of as a "pioneer." 

The reports are replete with statements of the broad scope 
of protection which is to be given to such patents. ''If one 
inventor precedes all the rest, and strikes out something which 
includes and underlies all they produce, he acquires a monopoly, 
and subjects them to tribute. But if the advance toward the 
thing desired is gradual, and proceeds step by step, so that no 
one can claim the complete whole, then each is entitled only 
to the specific form of device which he produces, and every 
other inventor is entitled to his own specific form, so long as 
it differs from those of his competitors and does not include 
theirs. These general principles are so obvious, that they need 
no argument or illustration to support them."*" Another 
opinion says, "If he (the patentee) be the original inventor 
of the device or machine called the divider, he will have a right 
to treat as infringers all who make dividers operating on the 
same principle, and performing the same functions by the same 
or analogous means or equivalent combinations, even though 
the infringing machine may be an improvement of the origi- 
nal, and patentable as such. But if the invention claimed l>e 
itself but an improvement on a known machine by a mere 
change of form or combination of parts, the patentee can not 
treat another as an infringer who has improved the original 
machine by use of a different form or combination perform- 

*72 Railway Co. v. Sayles, 97 U. S. 554, 556. The patent in this case was 
for a double-acting railway car brake. The plaintiff's invention was of 
such excellence as to supersede other types of brakes, but it did not em- 
body an unprecedented idea. Other double-brakes had been earlier in- 
vented, employing the same fundamental principle as his. His new idea 
of means was therefore only an improvement in the manner of utilizing 
that principle. The court restricted him therefore to a range of equiva- 
lents limited by the particular novelty of the mere improvement which 
he had engrafted upon the known principle. 



Infringement 281 

ing the same functions. The inventor of the first improve- 
ment can not invoke the doctrine of equivalents to suppress 
all other improvements which are not mere colorable invasions 
of the first/'*'^ 

Just what constitutes a pioneer invention is not capable of 
precise delimitation. "This word (pioneer)/' says Mr. Justice 
Brown, "although used somewhat loosely, is commonly un- 
derstood to denote a patent covering a function never before 
performed, a wholly novel device, or one of such novelty and 
importance as to mark a distinct step in the progress of the 
art, as distinguished from a mere improvement or perfection 
of what had gone before. Most conspicuous examples of such 
patents are: The one to Howe of the sewing machine; to 
Morse of the electric telegraph; and to Bell of the telephone. 
The record in this case would indicate that the same honor- 
able appellation might be safely bestowed upon the original 
air-brake of Westinghouse, and perhaps also upon his auto- 
matic brake.''*^^' The inventions referred to, all embodied the 
use of a theretofore unrecognized principle of nature, or the 
utilization of a natural force, for a function or purpose not 
before conceived of in connection with it. This fact and the 
verbiage of all the statements in regard to pioneer patents in- 
dicate, that a true pioneer invention is the idea of accomplish- 
ing a result by means of a principle which is sufficiently funda- 
mental to come within that vaguely limited term "law of na- 
ture'' and which has never before been thought of as useful 
for the particular end desired. Morse used the principle of 
electro-magnetism, which while well known in itself had not 
been used for the particular purpose. In Bell's invention, the 
various electrical actions and reactions had been known, but 
the idea of using them to reproduce articulate sounds at a 
distance from their place of utterance, was inchoate. Westing- 

*73McCormick v. Talcott, 20 How. 402, 404; Morley Machine Co. v. 
Lancaster, 123 U. S. 263; Royer v. Coupe, 146 U. S. 524, Morton v. Jen- 
sen, 49 Fed. 859; Miller v. Eagle Mfg. Co., 151 U. S. 186, 207; Paper Bag 
Patent Case, 210 U. S. 405; Kokomo Fence Machine Co. v. Kitselman, 
189.U. S. 8; Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 492. 

473a Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 561. 



282 Patents and Inventions 

house's application of pneumatic pressure was to produce a 
result never practically connected with it. So all other ad- 
mittedly pioneer inventions are found to be such as for the 
first time connect a desired result with any defimte means of 
accomplishing it. Such connection of means and desideratum 
may be imperfect, and later inventions may excel it in utility, 
but those more successful ones are not the first to make the 
connection ; they follow the pioneer. The ''result" can not be 
patented, its accomplishment is open to other persons by means 
of other principles ; neither can the "principle" be patented, it 
is said;*^* but the means of utilizing a principle for a result 
may, if sufficiently novel, be given a scope of protection prac- 
tically equivalent to the principle itself when used for the par- 
ticular result. 

Not all pioneer patents are given the same scope, of course. 
An inventor, like a homesteader, may be a discoverer of the 
unknown; may "pioneer" into a known but unexplored land; 
or into a merely unsettled territory. And his reward differs in 
accord with what he has done. Bell and Morse went into a 
practically unknown land and were given a wide monopoly.*^'' 
Tilghman was the real discoverer of the fact that fatty sub- 
stances would separate into their constituent parts under the 
action of water at a high temperature and pressure, and he was 
accordingly awarded the monopoly of that process.*^^ As the 
court said, "Had the process been known and used before, and 
not been Tilghman's invention, he could not then have claimed 
anything more than the particular apparatus described in the 
patent; but being the inventor of the process, as we are satis- 
fied was the fact, he was entitled to claim it in the manner he 
did." But the fact that the ground has been fairly well ex- 
plored and its possibilities realized does not deprive an in- 
ventor, who first effectuates a utilization of those possibilities, 
of a comparative range of equivalents. In the Paper Bag 

*7*As in O'Reilly v. Morse, 15 How. 62, see the explanation of this 
case in Tilghman v. Proctor, 102 U. S. 707, 727 ff. 
475 The Telephone Cases, 124 U. S. i ; O'Reilly v. Morse, 15 How. 62. 
*76 Tilghman v. Proctor, 102 U. S. 707. 



Infringement 283 

Patent Case*" it was contended by the defendants that the in- 
vention, not being first in its line, could not be infringed by a 
device materially different from the one described in the 
patent. The court, however, decided that, in the words of the 
syllabus, "The previous decisions of this court are not to be 
construed as holding that only pioneer patents are entitled to 
invoke the doctrine of equivalents, but that the range of equiva- 
lents depends upon the degree of invention ; and infringement 
of a patent not primary is therefore not averted merely because 
defendant's machine may be differentiated." "The more meri- 
torious the invention, the greater the step in the art, the less 
the suggestion of the improvement in the prior art, the more 
liberal are the courts in applying in favor of the patentee the 
doctrine of equivalents. The narrower the line between the 
faculty exercised in inventing a device and mechanical skill, 
the stricter are the courts in rejecting the claim of equivalents 
by the patentee in respect of alleged infringements."*^® 

In cases where the invention is scarcely more than a me- 
chanical change from the art which preceded it, and is given 
validity at all only by the narrowest margin, its range of 
equivalents is so correspondingly narrow as to be practically 
nothing. In such cases infringement occurs only when the un- 
authorized device corresponds precisely with the formal de- 
scription of the patent.*^® 

Summary. The other factors, extraneous to the patent it- 
self, such as the personality of the judge, earlier opinions, etc., 
which were discussed under the head of invention, influence the 
findings on infringement just as they do those on invention. 
When allowance is made for the influence of these factors, 
particularly the tendency to find non-infringement rather than 

4" 210 U. S. 405. 

*^8 Judge Taft, in Penfield v. Chambers Bros. Co., 92 Fed. 630, 649, Ace. 
Benbow-Brammer Mfg. Co. v. Straus, 166 Fed. 114; Boston & R. Elec. St. 
Ry. Co. V. Bemis Car-Box Co., 80 Fed. 287; Roemer v. Peddie, 78 Fed. 
117; Mallon V. Wm. C. Gregg & Co., 137 Fed. 68; Diamond Rubber Co. v. 
Consolidated Tire Co., 220 U. S. 438. 

*7® Poirier v. Clementson, 70 Fed. 617; Roemer v. Peddie, 78 Fed. 117; 
Ball & Socket Fastener Co. v. Ball Glove Fastener Co., 58 Fed. 818. 



284 Patents and Inventions 

to construe a patent- so broadly that it would be void for lack 
of novelty, and the desire to reward a pioneer inventor as 
completely as possible, then the issue of infringement or non- 
infringement is practically the same as that of invention or 
anticipation. The answer to both depends upon the opinion of 
the court as to whether the apparent difference between the 
earlier device and the later one is the result only of mechanical 
skill or proceeded from the inspiration of inventive genius 
The cases involving infringement can therefore be to a certain 
extent grouped according to characteristic material changes 
which have or have not been held sufficient to avoid a charge 
of infringement. But, again be it said, these cases can not be 
analyzed into "rules," because of the intrinsic and inevitable 
difference of facts. Thus, it is said in many cases and by some 
text writers, that "mere change of form does not avoid in- 
fringement." It can not possibly be said flatly that no change 
of form will so amount to invention in itself as not to consti- 
tute infringement, and to say that "mere" change of form does 
not, still leaves open the same question in different verbiage — 
when is change of form "mere change," and when is it "in- 
vention" and no infringement? The nearest to any positive 
generalization that can be made is well expressed by one 
court.*®^ "Mere changes of form of some of the mechanical 
elements of a patented combination do not avoid infringement, 
when the principle of the invention is adopted and form is not 
its essence. But the rule that changes of form do not avoid 
infringement has at least two exceptions — when the form of 
the mechanical element is the distinguishing characteristic of 
the invention, and when the change in the form of the ele- 
ment changes the principle or mode of operation of the com- 
bination." By these expressed exceptions the question is thus 
left as unanswered as before, being merely put into a different 
form of expression. 

The same impossibility of positive generalization holds true 
of all the other types of apparent change, and nothing defi- 
nite by way of rule or statement can be deduced as a help in 

*87 O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340, 346. 



Infringement 285 

deciding an issue of infringement. This can only come from 
a fundamental comprehension of the whole subject of inven- 
tion and non-invention. Beyond the suggestion of classifica- 
tion of cases which is discussed under invention, nothing fur- 
ther need be said about them. They stand only as separate 
cases and any good digest can present them more usuably than 
a work of this kind. 

§ 3. Who May Be An Infringer 

There is no restriction either by statute or by the courts as 
to who may be guilty of infringement. Such a suit stands 
upon the same footing as every other type of civil action, and 
any person or corporation capable of being sued may be liable 
to action. The United States government was made liable to 
suit for infringement by Act of June 25, 1910."^ This pro- 
vides "Whenever an invention described in and covered by a 
patent of the United States shall hereafter be used by the 
United States without license of the owner thereof or lawful 
right to use the same, such owner may recover reasonable 
compensation for such use by suit in the Court of Claims: 
Provided, however, That said Court of Claims shall not en- 
tertain a suit or reward compensation under the provisions of 
this Act where the claim for compensation is based on the use 
by the United States of any article heretofore owned, leased, 
used by, or in the possession of the United States: Provided 
further. That in any such suit the United States may avail 
itself of any and all defenses, general or special, which might 
be pleaded by a defendant in an action for infringement, as 
set forth in Title Sixty of the Revised Statutes, or otherwise ; 
And provided further. That the benefits of this Act shall not 
inure to any patentee, who, when he makes such claim is in the 
employment or service of the Government of the United 
States; or the assignee of any such patentee; nor shall this 
Act apply to any device discovered or invented by such em- 
ployee during the time of his employment or service.*'*®^ 

*85 Ch. 423, 36 Statutes at L. 851. 

•488 As to the liability of the government prior to this act, see Farnham 



286 Patents and Inventions 

§ 4. What Acts Constitute Infringement 

The second issue referred to at the beginning of the chap- 
ter, namely, whether the defendant has infringed or not, needs 
now to be considered only briefly. It is clear that a decision 
upon the first issue will have swallowed most of the possible 
forms of the second. If the court has decided that the scope 
of the patent is such as to include the particular form of de- 
vice used by the defendant, there is no question but that the 
defendant's device is an infringement of the patent. The only 
further issue possible is, whether or not the defendant did 
make, use or vend the device, which he is alleged to have made, 
etc. This is a pure issue of fact, depending wholly upon the 
evidence adduced. As a general rule it would precede the con- 
sideration of the other issue, for if no use of the device alleged 
had actually been made by the defendant it would be futile to 
determine the relation of such a device to the patent. In using 
for any purpose the cases which make reference to the question 
of whether the defendant has infringed, care should be taken 
to distinguish between the issue of the infringing character of 
the device, and that of whether he did use the device com- 
plained of. The term ''infringement" is used indiscriminately 
of both the acts of a defendant and of the material device with 
which he acts.*®® 

The intent with which the defendant did the acts alleged 
is not material in determining his liability as an infringer, un- 
less the charge be merely that he is a contributory infringer. 
Real absence of intent to infringe may in some circumstances 
reduce the amount of damages recoverable under R. S. § 4919. 
But the fact that the defendant was unaware that any patent 
had been issued for the device, or honestly believed that his 
own device was not an infringement of the one patented, does 
not prevent an adjudication of infringement.*®^ 

V. United States, 240 U. S. 537; U. S. v. Societe Anonyme, 224 U. S. 309; 
Croziei* v. Krupp, 224 U. S. 290; Russell v. U. S. 182 U. S. 516; U. S. v. 
Berdan Arms Co., 156 U. S. 552; Schillinger v. U. S. 155 U. S. 163; 
Belknap v. Schild, 161 U. S. 10. 

*88 Haselden v. Ogden, 3 Fish. 378, Fed. Cas. No. 6190. 

489 Parker v. Hulme, i Fish Pat. Cases 44, Fed. Cas. No. 10,740 ; Globe 



Infringement 287 

The statute*®^ provides expressly that no damages shall be 
recovered for infringement, when the defendant has not had 
due notification before the acts on which suit is predicated, un- 
less the plaintiff has given general notice to the public by mark- 
ing articles covered by the patent with the word "patented," 
and the date on which the patent was issued. If the article 
itself can not be so marked, it is provided that a label may be 
affixed to it, or to the package in which it is enclosed, con- 
taining the notice.*^^ The fact that a defendant had no actual 
notice of the patent, and that the articles covered by it had 
not been marked "patented" so as to give him constructive 
notice, would not preclude the granting of an injunction in 
otherwise proper circumstances. The mere fact of notice of 
the suit for injunction would in itself constitute the notice, that 
the device was patented, necessary to render the defendant 
liable for all future infringement. If he would be liable for 
damages in the future, he might properly, so far as the matter 
of notice is concerned, be enjoined from causing them.*^^ In 
one case it was urged by the defendants, that the infringing 
articles had been accidentally made in the course of other 
manufacturing and unintentionally sold. The court held an 
injunction against any further manufacturing or sale to be 
proper nevertheless. ^^^ 

Making, using and vending not all necessary. The 
monopoly given by the patent is the right to exclude others 
not only from making things covered by the patent but also 
from using or vending such things. One is guilty of infringe- 

Wernicke Co. v. Fred Macey Co., 119 Fed. 696; Cimiotti Unhairing Co. 
V. Bowsky, 143 Fed. 508; It has been held to affect the patentee's right to 
an injunction, as distinct from mere damages, Sheridan-Clayton Paper 
Co. V. U. S. Envelope Co., 232 Fed. 153. 

490 R. s. § 4900. 

*3i On the subject see Sessions v. Romadka, 145 U. S. 29; Coupe v. 
Royer, 155 U. S. 565, 583. 

*S2 It has been declared that a single unauthorized sale of the patented 
article will justify an injunction when the circumstances are such as to 
indicate a readiness to make other sales. Hutter v. De Q. Bottle Stopper 
Co., 128 Fed. 283; Johnson v. Foos Mfg. Co., 141 Fed. 73. 

*93 Thompson v. Bushnell, 96 Fed. 238. 



288 Patents and Inventions 

ment who does any one of these prohibited acts ; it is unneces- 
sary that he shall have done them all.*®* 

A more difficult proposition is presented in regard to the 
use or sale of the product of a patented device. Is one who 
neither makes, uses, or sells the device covered by the patent 
guilty of infringement, if he does use or sell something made 
by the device, without authority from the patentee? Of course 
if he himself makes something with the device, he is guilty of 
using the device. But if he merely buys, directly or indirectly, 
something that another made unauthorizedly with the patented 
device, and uses it without himself having anything to do with 
the patented device does that constitute infringement? 

There seems to be no direct decision upon this point. Un- 
less this product of the device can be considered a part of the 
patented invention, the person using it but not himself using 
the device, is not logically guilty of making, using, or vending 
the invention covered by the patent. At most he would be a 
contributory infringer. The Supreme Court in referring to 
the question "whether, when a machine is designed to manu- 
facture, distribute or serve out to users a certain article, the 
article so dealt with can be said to be a part of the combina- 
tion of which the machine itself is another part,'' said, "If this 
be so then it would seem to follow that the log which is sawn 
in the mill ; the wheat which is ground by the rollers ; the pin 
which is produced by the patented machine; the paper which 
is folded and delivered by the printing press, may be claimed 
as an element of a combination of which the mechanism doing 
the work is another element.''*®^ The question itself the court 
does not specifically answer, on the ground that it is not perti- 

*®* The manufacturing in this country of articles covered by the patent 
is an infringement of the monopoly granted thereby even though the 
articles are intended for use outside of this country only, Dorsey Revolv- 
ing Harvester Rake Co. v. Bradley Mfg. Co., 12 Blatch. 202; Fed. Cas. 
No. 4015; A^riance Piatt & Co. v. McCormick Harvesting Mach. Co., 55 
Fed. 288; Bullock Elec. & Mfg. Co. v. Westinghouse Elec. & Mfg. Co., 
129 Fed. 105. 

*»5 Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 431, 



Infringetnent 289 

nent to the case, but the implication is that the article pro- 
duced is not protected by a patent for its means of produc- 
tion/^« 

The author is not aware of any case in which it has been 
held that one who buys articles not themselves covered by a 
patent is guilty of contributory infringement merely because 
the articles were made by a machine or process whose use was 
itself an infringement. 

Repairs. When a patented device has been sold by the 
patentee, or its use and enjoyment has been licensed, the pur- 
chaser or user acquires ^yith the device the implied right to re- 
pair it. Such repair, unless expressly restricted by agreement, 
does not constitute infringement. As a matter of law, the 
proposition is settled. The practical application of the rule is 
troublesome, however, and the statements in regard to it are 
confused. The difficulty lies in the impossibility of distin- 
guishing definitely, and definitively, between "repair** and "re- 
placement." While the vendee is entitled to repair the ma- 
chine, or other device, which he has bought, he has no right 
to make a new one under the guise of repairing the old one. 
It is obvious that the line between repair and remaking is im- 
possible of theoretical allocation in advance of the various in- 
stances that may arise. Its determination must of necessity 

*®^ So declared in a reference to this case in the later case of Heaton- 
Peninsular Button Fastener Co. v. Eureka Specialty Co., 77 Fed. 288, 
35 L. R. A. 728, 735. In Merrill v. Yeomans, 94 U. S. 568, it was held that 
a patent for a process for making certain heavy oils v/as not infringed by 
one who did not manufacture but did vend such oils which he had bought 
from an unauthorized maker. The case is not so close in point as would 
appear from the holding, because the court specifically found that the oil 
sold by the defendants was manufactured by a totally different process 
from that of the patent. The case might well have been decided on the 
simple ground that the oil sold by defendants was not the same oil as 
that of the patent, having been made by a different process. A some- 
what distant analogy to the questions here suggested is found in the 
cases holding that the selling to a licensee of goods which might be put to 
infringing use is not of itself contributory infringement. See authorities 
cited under that subject; Cf. Sheridan Clayton Paper Co. v. U. S. Enve- 
lope Co., 232 Fed. 153. 



290 ' Patents and Inventions 

follow the fact, not precede it, and be dependent upon the cir- 
cumstances. Like so many other issues of the patent law, it 
is fundamentally a matter of judicial opinion in the particular 
case. It is capable of very little guidance from precedent in- 
stances, although an inductive and comparative study of many 
cases in which the issue has been passed upon may serve to 
reduce somewhat the width of "debatable ground, as is true of 
other matters of judicial opinion.*^^ The whole matter can 
not be better discussed than by quoting at length from the 
opinion in the case of Goodyear Shoe Machinery Co. v. Jack- 
son."^' The defendants in this case were engaged in a small 
way in the business of general machinery repair work. Sev- 
eral persons who had purchased from the plaintiff shoe ma- 
chines made under the patent, sent their machines to defend- 
ants to be repaired. In this work, the defendants replaced a 
number of parts by making new ones. The plaintiff contended 
that this constituted an infringement of his patent. The court 
was of opinion that, under the particular circumstances — which 
need not be set out here — there was no infringement. In the 
course of the opinion it said, ^^Infringement by the purchaser 
of a patented machine consists in the substantial rebuilding of 
such machine. A contribtitory infringer necessarily only makes 
or sells a part of the patented invention. The purchaser of a 
patented machine, in order to infringe, must make or repro- 
duce, in substance, the whole patented invention. To .prove in- 
fringement, in one case, it is only necessary to show a partial 
infringement in aid of an unlawful complete infringement, 
while in the other case a substantially full and complete in- 
fringment must be established. The rule that a person may 
be guilty of contributory infringement by making or selling a 
material element of the patented combination has no applica- 
tion to infringement by the purchaser of a machine embodying 
such patented combination. A purchaser stands in no differ- 

*S7 The cases in point are not cited here for the reason that, the prob- 
lem being analyzed and understood, they can be found under appropriate 
headings in a digest much more satisfactorily and fully than it would be 
possible to give them here. 

497-II2 Fed. 146. 



Infringement 291 

ent position from an ordinary infringer, except in the circum- 
stance that he has bought a patented machine, and, conse- 
quently, his infringement does not consist in the construction 
of a wholly new machine, but in the reconstruction of such 
machine after it is worn out or substantially destroyed. The 
essence of the infringement is the same in both cases. 

*The ordinary infringer makes the entire patented machine ; 
the infringing purchaser begins with what remains of the 
patented machine, and rebuilds it. To show infringement in 
the case of an ordinary infringer, where the patented invention 
comprises several elements in combination, it is necessary to 
prove that the alleged infringing machine contains all the ele- 
ments (or their equivalents) which make up the combination, 
although some of the elements may not be material, or of the 
essence of the invention. To show infringement by the pur- 
chaser in such a case, the same strictness of proof is not re- 
quired, for the reason that it may not be necessary for him to 
make the immaterial or unessential elements of the patented 
combination, because they may not be worn out or destroyed 
in his machine when the work of reconstruction begins. A 
practical reconstruction of the patented machine, and not nec- 
essarily a literal reconstruction of the patented combination, is 
all that is required to constitute infringement by the purchaser. 
For example, where the patent is for an improved lamp, and 
the whole invention resides in the burner, but the claim is for 
the combination of the burner and a chimney, in an ordinary 
suit for infringement it must be shown that the defendant 
made or used or sold the patented combination, namely, the 
burner and chimney; while in a suit for infringement against 
a purchaser of the lamp it would only be necessary to prove 
that he replaced the old burner with a new one, because, mani- 
festly, that would constitute a substantial reconstruction of the 
patented invention. If a person other than the purchaser 
should make or sell the burner with the intent and purpose of 
its use by another in combination with the chimney, it would 
be a clear case of contributory infringement. 



292 Patents and Inventions 

"In approaching the question of infringement by the pur- 
chaser of a patented machine, it is important to bear in mind 
what the patentee sold and the purchaser bought. The patentee 
has parted with his machine and the monopoly that goes with 
it, and the purchaser has bought the machine with the right 
to use the patented invention until the machine is worn out 
or destroyed. When the machine is worn out, or substantially 
destroyed, his right to use the patented invention ceases ; and 
when he rebuilds his machine, and thereby makes substantially 
a new machine, it becomes subject to the patentee's monopoly, 
the same as in the case of any other person who unlawfully 
makes the patented machine. When the patented machine has 
passed outside the monopoly by a sale and purchase, the pat- 
entee has no right to impose any restrictions on its use for his 
own benefit. He cannot forbid the further use of the machine 
because it is out of repair in consequence of the wearing out 
or breaking of some of its parts, and so oblige the purchaser 
to buy a new machine. The purchased machine has become 
the individual property of the purchaser and is like any other 
piece of property which he owns. He may sell it, or he may 
use it so long as its usefulness lasts, and then throw it away, 
or dispose of it for junk. He may prolong its life and use- 
fulness by repairs more or less extensive, so long as its origi- 
nal identity is not lost. He is only prohibited from construct- 
ing a substantially new machine. He cannot, under the pretext 
of repairs, build another machine. 

"A purchaser, then, may repair, but not reconstruct or re- 
produce, the patented device or machine. Repair is 'restora- 
tion to a second, good, or complete state after decay, injury, 
dilapidation, or partial destruction.' Reconstruction is *the act 
of constructing again.' Reproduction is 'repetition,' or /the 
act of reproducing.' These definitions are instructive in bring- 
ing home to the mind that repair carries with it the idea of 
restoration after decay, injury, or partial destruction, and that 
reconstruction or reproduction carries with it the idea of a 
complete construction or production over again. 



Infringement 293 

"But the difficult question still remains, what is legitimate 
repair, and what is reconstruction or reproduction as applied 
to a particular patented device or machine ? When does repair 
destroy the identity of such device or machine and encroach 
upon invention? At what point does the legitimate repair of 
such device or machine end, and illegitimate reconstruction 
begin ? 

"It is impracticable, as well as unwise, to attempt to lay 
down any rule on this subject, owing to the number and in- 
finite variety of patented inventions. Each case, as it arises, 
must be decided in the light of all the facts and circumstances 
presented, and with an intelligent comprehension of the scope, 
nature, and purpose of the patented invention, and the fair 
and reasonable intention of the parties. Having clearly in 
mind the specification and claims of the patent, together with 
the condition of decay or destruction of the patented device 
or machine, the question whether its restoration to a sound 
state was legitimate repair, or a substantial reconstruction or 
reproduction of the patented invention, should be determined 
less by definitions or technical rules than by the exercise of 
sound common sense and an intelligent judgment. 

"When the patent is for a single thing, like a knitting 
needle, for example, and not for a device or machine com^ 
posed of several things or elements combined, it is obvious 
that the replacement of an old needle by a new one in a knitting 
machine is not repair, but a reproduction of the patented thing. 

"When the patent is for a device embracing the combina- 
tion of several elements, a purchaser will infringe by recon- 
structing the device after it has fulfilled its purpose and is sub- 
stantially destroyed. Where, for instance, the patent was for 
a cotton-bale tie, consisting of a band and buckle, and 'licensed 
to use once only,' it is manifest that the severance of the band 
at the cotton mill was intended to operate as a destruction of 
the tie, and that to roll and straighten the pieces of the band 
and rivet the ends together, at the same time using the old 
buckle, was a reconstruction of the tie, and not repair. 



^ I 



294 Patents and Inventions 

"Again, where the subject of the patent was an electric lamp, 
and the invention resided in the discovery that an attenuated 
carbon filament, if operated in a high vacuum; would with- 
stand disintegration, and the claim was for the combination of 
carbon filaments with a receiver made entirely of glass, and 
conductors passing through the glass, from which receiver the 
air is exhausted, it is plain that, when the filament is destroyed, 
and the vacuum is destroyed by making a hole in the receiver, 
and nothing remains but a perforated glass bulb and the con- 
ductors, the lamp is practically destroyed, and that to replace 
the old filament with a new one, and again exhaust the air in 
the receiver, and again seal it, is substantially the making of 
a new lamp. 

"Where the patent is for a machine, which commonly em- 
braces the combination of many constituent elements, the ques- 
tion of infringement by the purchaser will turn upon whether 
the machine is only partially worn out or partially destroyed, 
or is entirely worn out, and so beyond repair in a practical 
sense. In the case of a patent for a planing machine composed 
of many parts it was held that the replacement of the rotary 
knives, *the effective ultimate tool' of the machine, was re- 
pair, and not reconstruction.*'*^* 

If the construction is such as the owner of the machine has 
himself a right to perform by way of repair, it is not in- 
fringement for some one else to do the work for him.**^ 

§ 5. Contributory Infringement 

It is a settled principle of the Common Law that one who 
wrongfully induces another to break a contract with a third 
person, or who induces another to commit a tort against a 
third person, is himself guilty of a tort and liable to a suit for 
damages. We have already seen that a patentee may license 
another to invade his monopoly, and utilize his invention, with 
a limitation upon the extent or character of the licensee's en- 

498 Morrln v. Robert White Engineering Co., 143 Fed. 519. Burguieres 
Co. V. Deming Co., 224 Fed. 926. Many cases are cited in the opinion. 
See especially, Wilson v. Simpson, 9 How. 109. 

*s»Morrin v. Robt. White Engr. Co., 143 Fed. 519, 



Infringement 295 

joyment. The limitation may take the form simply of a limit- 
ed license, or it may be considered as a contract by the licensee 
not to do certain things, or it may have both forms. If the 
licensee exceeds the permission in his license and does what 
he has agreed not to do, he is not only guilty of infringing the 
patentee's monopoly, but he is also guilty of breach of con- 
tract.'^"" 

One who induces the commission of such an infringement or 
the breach of such a contract, or aids therein, is himself liable 
in damages to the patentee, under the Common Law.*^®^ This 
tortious conduct, whether it be by way of inducement to in- 
fringe, or to break a contract limiting the extent of use, is 
comprehensively called "contributory infringement/' No dis- 
tinction is made, in terms, of the particular alternative forms 
which it takes. It is not material, except as to jurisdiction in 
certain cases, whether the act of the principal wrong doer be 
looked upon as a true infringement or merely a breach of the 
contract. 

One can not be held liable as a contributory infringer unless 
the acts which he induced were in themselves wrongful. 
Therefore exactly the same questions, and all of them, may 
arise in suits against contributory infringers as may come up 
in any action for infringement or breach of contract of license. 
The validity of the patent, the reality of the alleged infringe- 
ment, the validity of the contract, the fact of its breach, and 
the legality of the condition in general, are all as pertinent is- 

500 For a discussion of this matter see, ante, 

501 "An infringement of a patent is a tort analogous to trespass or 
trespass on the case. From the earliest times, all who take part in a 
trespass, either by actual participation therein or by aiding and abetting 
it have been held to be jointly and severally liable for the injury in- 
flicted." Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 Fed. 712, 721. 
The opinion explains the case of Morgan Envelope Co. v. Albany Per£. 
Wrapping Paper Co., 152 U. S. 425, Dr. Miles Medical Co. v. John D. 
Park & Sons Co., 220 U. S. 373, syl. i. "An actionable wrong is commit- 
ted by one who maliciously interferes with a contract between two parties 
and induces one of them to break the contract to the injury of the other, 
and in the absence of an adequate remedy at law equitable relief will be 
granted." (Dictum.) 



296 Patents and Inventions 

sues in suits against a contributory infringer as* they are in 
suits against a principle wrong doer. The fact that the de- 
fendant is merely contributory to the wrong does not affect 
the issues respecting the wrong itself, and as they have al- 
ready been discussed they need not be reconsidered in this 
connection. 

But when suit is against one who is merely a contributory 
infringer, there is the additional issue as to whether he, as a 
contributor only, is liable for the wrongful acts which the 
party has committed. This depends upon the established Com- 
mon Law doctrines of contributory wrong doing and not on 
any rules appertaining particularly to patent law. 

Intent necessary. The existence of a wrongful intent is 
necessary to constitute liability for contributory infringement, 
and its immateriality in cases of principal infringement must 
not be confused with this. A possible source of confusion is 
in the fact that circumstances might arise in which one could 
be treated as either a principal infringer or a contributory one. 
Suppose, for instance, one should so work upon the machine 
of another, under the pretense of ''repairing" it, that his work 
would be held actually a "replacement.'' If in such case the 
owner of the machine had been under contract with the paten- 
tee not even'to repair it, he would be guilty of breach of con- 
tract and the one who had done the work might be guilty of 
contributing to the breach if it were shown that he intention- 
ally induced it. But certainly, if the machine had been prop- 
erly marked "patented,'' his making of a new one, although 
done at the request of the licensee would be, in itself, an in- 
fringement of the patent regardless of his intent. The differ- 
ence in intent requisite to liability in the two grounds of action 
must be kept clear. It is only when the cause of action is not 
the infringement or breach itself, but the indticing of the in- 
fringement or breach, that the intent is material. 

The intent need not have been expressed by the defendant, 
for the real mental intent of a man is not demonstrable. It 
will be inferred by the court from the circumstances under 
which the acts complained of took place. "One is legally pre- 



Infringement 297 

sumed to intend the natural consequences of his act/'^®^ It is 
therefore the acts themselves and not any verbal expression of 
intent to which the courts will look. In the case just quoted 
from the court formed its opinion, that the defendant intended 
to assist in an infringement, from the fact that the articles he 
sold could be used only in such a way as would constitute an 
infringement and that, as persons do not ordinarily buy arti- 
cles except for normal use, he must have known they would 
be used in an infringing way and have intended it/®^ 

But the intent necessary to constitute contributory infringe- 
ment will not be deduced merely from the fact that the de- 
fendant has sold to an infringer articles which can be used for 
infringement, when such articles are not in themselves covered 
by the patent and have a recognized use quite unconnected with 
any infringement. Some further knowledge on the part of 
the defendant of the purpose to which they are to be put by 
the purchaser must be shown before a wrongful intent will 
in such case be inferred.^^* 

502 Thomson-Houston Co. v. Ohio Brass Co., 80 Fed. 712, 721. 

503 Ace. Canda v. Mich. Malleable Iron Co., 124 Fed. 486. 

50* Rumford Chemical Works v. Hygienic Chem. Co., 148 Fed. 862 ; quot- 
ing, Edison Elec. Lt. Co. v. Peninsular Lt. Co., 95 Fed. 673; App'd Leeds 
& Catlin Co. v. Victor Talking Mach. Co., 154 Fed. 58; Cortelyou v. John- 
son, 207 U. S. 19$; Edison Elec. Lt. Co., v. Peninsular Lt. Co., loi Fed. 
831 ; Sheridan-Clayton Paper i^o. v. U. S. Envelope Co., 232 Fed. 153. 
The purchasing of the various elements that go to make up a patented 
combination was said as dictum not in itself to be an infringement in 
Seim V. Hurd, 232 U. S. 420. 

"What contributory infringement is, and why it should be enjoined, was 
clearly shown in Wallace v. Holmes, 9 Blatch. 65, Fed. Cas. No. 17,100, — 
the earliest case in this country upon the subject, and upon which the 
subsequent cases of contributory infringement rest. The complainant's 
patent in that case was for an improved lamp, which consisted of an im- 
proved burner, or metallic portion, and a glass chimney. The defendant 
made and sold the improved burner, which must be used with a chimney, 
and, in order to make sales, exhibited the burners with chimneys to cus- 
tomers; and the circuit judge thought that a concert with others to use 
the patented article, as a whole, was a certain inference from the ob- 
vious facts in the case, and the efforts of the defendant to solicit sales by 
showing the operation of the whole patented artide. The willingness of 
the defendant in this case to aid other persons in any attempts - which 



298 Patents and Inventions 

It does not appear to be necessary for the alleged contributor 
to have actual knowledge that the action or device to which he 
is contributing is covered by a patent. The fact that devices 
made under the patent are duly marked "patented" probably 
serves as constructive notice to a contributory infringer as 
completely as to a direct infringer. 

Making^ using, etc. not necessary. Since the cause of 
action against a contributory infringer is his wrong in induc- 
ing another to infringe or to break a contract, it follows that 
the contributor need not himself have done anything at all by 
way of making, using or vending the device covered by the 
patent. One who should induce another to infringe by mere 
verbal incitement and moral encouragement would undoubted- 
ly be as fully liable to suit as though he had actively assisted 
by mechanical means. There is no lack of cases in which the 
defendant has been held liable without having himself directly 
infringed in any way. An example — ^notable because of the 
amount of popular discussion it evoked — is the case of Henry 
V. Dick Co.'^®'* The complainant's patent covered a mimeo- 
graphing device. One of the machines had been sold to Skou 
with the express limitation that it might be used only with ink 
made by the complainant. The ink itself was not patented. 
Defendant Henry sold ink to Skou with the undeniable intent 
that it should be used on the machine, in breach of the limita- 
tion. The defendant had perfect right to make, use and vend 
his ink, unrestricted by any patent monopoly on it. Its use by 
Skou, however, in contravention of his agreement with the 

they may be disposed to make towards infringement is also apparent. 
Its trolley stands are designed to be used in the patented system, and to 
be the means , of enabling the trailing pole to perform its distinctive and 
novel part in the combination. It sufficiently appears from the defendant's 
advertisements and affidavits that it was ready to sell to any and all pur- 
chasers, irrespective of their character as infringers. A proposed con- 
cert of action with infringers, if they presented themselves, is fairly to 
be inferred from the obvious facts of the case; and an injunction order is 
the proper remedy against wrongful acts which are proposed, or are justly 
to be anticipated." Thomson-Houston Elec. Co. v. Kelsey Elec. Ry. 
Spec. Co., 75 Fed. 1005, 1007. 
505 224 U. S. I. 



Infringement ^99 

Dick Co,, was held by the court to be an infring^ement of that 
company's patent* and the defendant was held liable as a con- 
tributor to such infringement on the ground that he had in- 
induced it/^" 

A somewhat different type of contributory infringement 
was the cause of action in Trent v. Risdon Iron & Locomotive 
Works/®^ An ore crushing mill had been erected which was 
held to be an infringement of complainant's patent. The de- 
fendant denied any liability for this infringement on the 
ground that he was neither owner nor instigator of it, that his 
sole connection with it was as architect and building con- 
tractor for hire. It developed on trial, however, that he had 
himself furnished the plans and specifications for the crusher. 
He was held liable as a contributing infringer. Many other 
cases may be found in which a defendant has been held guilty 
of contributory infringement although he did not himself 
actually make, use or vend the patented invention. 

In summary of the whole matter of a patentee's rights un- 
der his patent, it may be said that the courts have protected 
him, not narrowly nor half-heartedly, but to the fullest extent 
possible under the statute. 

§ 6. Practical Value of Void Patents 

Even when an idea is of such character that the courts would 
in all probability refuse to hold it an invention, there is, never- 

^^^' The furnishing by defendant of unpatented fasteners for use on a 
patented button fastening machine, whose use had been permitted by pat- 
entee on condition that it be operated only with fasteners purchased from 
him, was held to be contributory infringement, in Heaton-Peninsular 
Button-Fastener Co. v. Eureka Specialty Co., 77 Fed. 288, 35 L. R. A. 
72S. Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 Fed. 712, furnish- 
ing one part of a combination held contributory infringement. "They 
have infringed the process of Johnson because they supplied the apparar 
tus adopted to employ Johnson's process with the ii-.tent that the plant 
should be or would be operated as that put in for the Genessee Fibre Co. 
It was therefore guilty of contributing to the infringement of the first 
claim of the Johnson patent," Johnson v. Foos Mfg. Co., 141 Fed. 73, 88; 
Leeds & Catlin Co. v. Victor Talking Machine Co., 154 Fed. 38. 

607 102 Fed. 635. 



300 Patents and Inventions 

theless, an undoubtedly very practical advantage in having it 
patented. As has been said, the Patent Office is not in posi- 
tion to examine the prior art except to the extent that it is 
covered by patents, and even to that extent the policy seems 
to have been to allow new patents wherever superficial differ- 
ence appears. The Patent Office does not assume the difficult 
task of determining when apparent change is merely mechan- 
ical. A patent, therefore, of absolutely no legal value what- 
ever, is not particularly difficult to secure, and gives the right 
to mark articles "patented." The ethics of doing this, unless 
the patentee really believes his idea of means to be an inven- 
tion, the author does not discuss, but it is seldom that the 
most conscientious of would be inventors fails so to believe. 
The advantage of the "patented" mark is obvious when one 
contemplates the number of manufacturers who are paying 
small royalties "rather than stand the trouble and cost of even 
a successfully defended suit," and of others who refrain from 
manufacturing certain small articles, for the same reason.**^® 

5<>8The enormous total of royalties paid by the American League of 
Automobile Manufacturers to the owners of the "Seldon Patent," before 
it was declared ineffective in Col. Motor Car Co. v. Duerr, 184 Fed. 893, is 
an example. It is common rumor that the owners of the transmission 
patents on which the present association of automobile manufacturers is 
founded fear to sue the Ford Co. for infringement lest the patent be 
avoided. Yet the others are paying royalties rather than assume the ex- 
pense of a fight. 

Because our system of legal remedies does not provide for a "declaratory 
judgment" the owner of patent has not only protection if his patent be 
valid, but he has also an obnoxious means of annoying legitimate business 
even if his patent be probably void. The only way other persons, who 
desire to use his alleged invention, can find out whether his patent is 
valid or not. is to expend enough money in infringing to force him to 
bring suit. If his suit is sustained the infringer's loss in invested capital, 
to say nothing of damages awarded the patentee, may be tremendous. 
Thus the financial risk involved in ascertaining whether a dubious patent 
is really good, may make practically effective many an unjust monopoly. 
For a discussion of the desirability of some method of securing a decla- 
ratory judgment, see the article by E. R. Sunderland, in 16 Michigan Law 
Rev. 69. 



CHAPTER X 



Designs 



The statute provides/^® "Any person who has invented any 
new, original, and ornamental design for an article of manu- 
facture, not known or used by others in this country before 
his invention thereof, and not patented or described in any 
printed publication in this or any foreign country before his 
invention thereof, or more than two years prior to his appli- 
catiori, and not in public use or on sale in this country for 
more than two years prior to his application, unless the same is 
proved to have been abandoned, may, upon payment of the 
fees required by law and other due proceedings had, the same 
as in cases of invention or discoveries covered by section forty- 
eight hundred and eighty-six, obtain a patent therefor. The 
Commissioner may dispense with models of designs when the 
design can be sufficiently represented by drawings or photo- 
graphs. Patents for designs may be granted for the term of 
three years and six months, or for seven years, or for four- 
teen years, as the applicant may, in his application^ elect. All 
the regulations and provisions which apply to obtaining or 
protecting patents for inventions or discoveries not inconsistent 
with the provisions of this title shall apply to patents for de- 
signs." "Hereafter, during the term of letters patents for 
a design, it shall be unlawful for any person other than the 
owner of said letters patent, without the license of such owner, 
to apply the design secured by such letters patent, or any color- 
able imitation thereof, to any article of manufacture for the 
purpose of sale, or to sell or expose for sale any article of 
manufacture to which such design or colorable imitation shall, 
without the license of the owner, have been applied, knowing 
that the same has been so applied. Any person violating the 
provisions, or either of them, of this section, shall be liable in 

509 R. S. §4829-3€-33, and "Act of Feb. 4, 1887." 



302 Patents and Inventions 

the amount of two hundred and fifty dollars; and in case the 
total profit made by him from the manufacture or sale, as 
aforesaid, of the article or articles to which the design, or 
colorable imitation thereof, has been applied, exceeds the sum 
of two hundred and fifty dollars, he shall be further liable for 
the excess of such profit over and above the sum of two hun- 
dred and fifty dollars; and the full amount of such liability 
may be recovered by the owner of the letters patent, to his own 
use, in any circuit court of the United States having jurisdic- 
tion of the parties, either by action at law or upon a bill in 
equity for an injunction to restrain such infringement." 

As the section providing for a patent is in the same phrase- 
ology precisely as the section^^® providing for patents for the 
invention of an art, machine, etc., it is evident that the same 
inquiries and issues must arise in regard to design patents as 
come before the courts in other patent cases. It follows equal- 
ly that the decisions should be arrived at upon the same prin- 
ciples and by the influence of the same factors. 

Distinction between designs and manufactures., The 
greatest difficulty in discussion involving designs, so far as the 
law and not mere fact is concerned, is to distinguish between 
a design and a manufacture or composition of matter. A de- 
sign is broadly definable in its patent law use, as well as in com- 
mon parlance, as the delineation or configuration of matter. 
It depends for its effect, for its distinction from anything else, 
upon arrangement of matter. Every design is necessarily con- 
stituted by the contour of substance or the relation of various 
substances, the relation of ink and paper for instance. A 
design, to be patentable, is undeniably artificial. In a certain 
sense, and wholly proper use of the terms, a design is there- 
fore both a manufacture and a composition of matter. In 
common parlance, the name of design is probably restricted to 
the idea of outline as projected upon a plane surface ; the silhou- 
ette contour or arrangement, of matter. Even the "design of 
a church" and similar phrases convey the meaning not of three 
dimentional substance, but of planes, of flat outlines, which 

wo R. S. § 4886. • 



Designs 303 

may however be so arranged dihedrally that the whole forms 
a three dimentional body. It is difficult for the average mind 
to think of "desigo/' in any other way. The patent law, how- 
ever, extends the ^cope of the section allowing design patents 
to solid as well as to plane contour.'^" 

One of the comparatively few elements by which one manu^ 
facture can be distinguished from another is its physical out- 
line, its contour. One collar button, for instance, may be of 
the same material as another and its static purpose the com- 
mon one of holding a collar to the collar band, but its essen- 
tial idea of means for accomplishing that purpose may be so 
different from that of known collar buttons as to amount in 
itself to an invention. Yet its only perceptible difference from 
other collar buttons may be its physical contour. More funda- 
mentally, its essential difference is in its idea of means and 
in the method of manufacturing which gave its peculiar shape. 
Both of these elements are considered in determining identity, 
but the only direct impression of difference comes from its 
sensible contour. As the effectuation of its peculiar purpose 
is also the result of its peculiar configuration, it might be said 
that the configuration of the collar button was the invention, 
the essential idea of means. Is this invention then, this con- 
figuration, which constitutes an idea of means and which, in 
its tangible embodiment, is a new manufacture, to be patented 
as a "design,'* or as a "manufacture'* embodying a new idea 
of means. If it be assumed that the design is "ornamental," 

511 Prior to 1902 the statute itself read, "Any person who has invented 
any new, original, and ornamental design for an article of manufacture, 
not known or used by others in this country before his invention thereof, 
and not patented or described in any printed publication in this or any 
foreign country before his invention thereof, or more than two years 
prior to his application, and not in public use or on sale in this country 
for more than two years prior to his application, unless the same is proved 
to have been abandoned, may, upon payment of the fees required by law 
and other due proceedings had, the same as in cases of invention or dis- 
coveries covered by section forty-eight hundred and eighty-six, obtain a 
patent therefor." The earlier 'statutes expressly included with designs, 
"any new and original shape or configuration of any article of manufac- 
ture." The present statute speaks of "models of designs." 



304 Patents and Inventions 

as required iy the statute, it might be patented under either 
section, in the choice of the patentee/" 

This duplex character of the invention, as a design and a 
manufacture, at once gives rise to the possibility of such ques- 
tions as the following; Automobile "all-year round" tops have 
been known and used for some years; if one should by mere 
mechanical skill evolve certain advantages of shape, the im- 
proved top would not be patentable as a manufacture because 
lacking in invention. This new shape would, however, be in 
ordinary sense a design. Could the mechanic secure a design 
patent, and thereby preclude others from making or using tops 
of that design? If he could, his monopoly would be as effec- 
tive as though he had secured the patent for a manufacture 
from which lack of invention precluded him. Again, if one 
has a design patent for a peculiar shape and contour of a knob 
or stud for hanging pictures on walls, can he preclude others 
from making, using and selling collar-buttons which happen 
to be of that exact contour? An affirmative decision on either 
question would be wholly incongruous with the spirit of the 
patent law. 

The answer to the first type of issue depends upon whether 
a design patent ought to be granted under such circumstances. 
If granted, it would seem to preclude the use suggested. In 
the second type of case the answer depends on the scope of 
protection that a design patent gives. 

The first inquiry, then, is for what designs a design patent 
may be issued. It is impossible to make any exact distinction 
between those manufactures and compositions of matter which 
may be patented as designs only under § 4929 and those which 
may be patented as nominally manufactures or compositions 
of matter under § 4886. Broadly it may be said that those 

"2Cl^rk V. Bousefield, 10 Wall, (77 U. S.) 133; Williams Calk Co. v. 
Neverslip Mfg. Co., 136 Fed. 210; Bradley v. Eccles, 126 Fed. 945; It 
should be noted, however, that "ornamental" is synonymous, with "visi- 
ble" and nothing, practically speaking, has been refused patentability under 
§ 4929, except when, as in the last case cited, where the design was for a 
packing for a joint, it is by the nature of its purpose invisible. Dominick 
& Haff V. Wallace & Sons Co., 209 Fed. 223. 



Designs ^^^ 

de'^'th^^^^^^ ': '" ^^"'' ?' ''' ""^^ ^ P^^-^^d as 
is oLn fc i^'^ ?* P^^P^.^^ f^her than pleasure to the eye, 
i^y ;,5i3 ^^^y and confusingly spoken of as "lack of util- 

As it is impOw;, , 
composition and co^ ^"^ dissociate visual impression from the 
it is impossible to s?!'''^^'^'^ ^^ ^^tter out^of which it arises, 
gives it concrete existeiiL^^ ^ .^^s^g" from 'the matter which 
sition or configuration or ^^ therefore the peculiar compo- 
whether the thing covered b^^*^^ that is really patented, 
concrete idea of means or the p^P^tent be looked upon as a 
Crete idea."* So, even those creatfi?^ embodiment of a con- 
purpose may be patented as designs, sfyhich, because of their 
as those whose less esthetic purpose retj^the same character 
ented under section 4886. It is impossibWhem to be pat- 
manufacture or composition of matter to say^'he case of a 
patented under either section. "^ must be 

513 The lack of distinction to be drawn from the use of **on* 
is referred to above. The interrelation of patentability is also sho.,|,> 
the fact that a design patent will serve to anticipate a mechanical pau 
— Williams Calk Co. v. Neverslip Mfg. Co., 136 Fed. 210 — and a mechani- 
cal patent will serve to anticipate a design patent — Roberts v. Bennett, 
136 Fed. 193. ~ 

51* N. Y. Belting Co. v. N. J. Rubber Co., 137 U. S. 445, "There is one 
feature of this patent which presents an interesting if not a novel aspect. 
We are in the habit of regarding a design as a thing of distinct and 
fixed individuality of appearance — a representation, a picture, a delinea- 
tion, a device. A design of such a character, of course, addresses itself 
to the senses and the taste, and produces pleasure or admiration in its 
contemplation. But, in the patent before us, the alleged invention is 
claimed to be something more than such a design. It is claimed to have 
an active power of producing a physical effect upon the rays of light, so 
as to produce different shades and colors according to the direction in 
which the various corrugated lines are viewed — a sort of kaleidoscope 
effect. It is possible that such a peculiar effect, produced by such a par- 
ticular design, impressed upon the substance of india-rubber, may consti- 
tute a quality of excellence which will give to the design a specific charr 
acter and value and distinguish it from other similar designs that have not 
such an effect. As this is a question which it is not necessary now to de- 
cide, we express no opinion upon it." Pelouze Scale & Mfg. Co. v. Am. 
Cutlery Co., 102 Fed. 916 ; Hammond v. Stockton, etc. Works, 70 Fed. 716. 



3o6 Patents and Inventions 

This identity of character is hardly demonstrable by refer- 
ence to cases, but it is clearly the implication through^^t them. 
Ass^uftiing it to be the fact, it follows that the sap^ principles 
and influencing factions ought to be followed in decisions upon 
design patents as upon others. The cases s^te that the same 
ones are followed. "The law applicable t^ design patents does 
not materially differ from that in case^ of mechanical patents, 
and all the regulations and provisi^^s which apply to the ob- 
taining or protection of patents ^or inventions or discoveries 
shall apply to pa,tents for de^/gns."^^ 

Inventive quality REj?tJiRED. It follows, therefore, that, 
like all other patentabi^ creations, a design to be patentalde 
must be the product oi inventive genius. Mere skillful adap- 
tation, readjustm^^^t, or development of known designs is not 
pf iiself suffk^^fit to warrant a patent, there must be present 
in the new production the same psychological factor of in- 
vention ^hat is requisite fpr other patents.*^^® It sequentially 
folloi»'s that the same factors are active in determining the 
psychological fact, that is to say, in inducing the opinion as 
to the presence or absence of invention.^" 

515 Mr. Ch. Justice Fuller in Smith v. Whitman Saddle Co., 148 U. S. 
674, 679, quoting^ from Northrup v. Adams, 12 O. G. 430, 2 Bann & Ard. 

567. 
5i« Smith V. Whitman Saddle Co., 148 U. S. 674; Foster v. Crossin, 44 

Fed. 62; Ripley v. Elsom Glass Co., 49 Fed. 927; N. Y. Belting, etc. Co. 
V. N. J. Car Spring Co., 53 Fed. 810; Soehner v. Favorite Stove Co:, 84 
Fed. 182; Westinghouse Elec. & Mfg. Co. v. Triumph Electric Co., 97 
Fed. 99, "utility" not necessary; Cary Mfg. Co. v. Neal, 98 Fed. 617; Am. 
Elec. Novelty Co., v. Newgold, 113 Fed. 877; Mygatt v. Schauffer-Flaum 
Co., 91 Fed.. 836 ; Chas. Boldt Co. v. Turner Bros. Co., 199 Fed. 139 ; 
Bergner v. Kaufman, 52 Fed. 818, aggregation held not to be invention ; 
Post V. Richards Hardware Co., 26 Fed. 618, mere substitution of ma- 
terials held not invention; Dominick & Haff v. Wallace & Sons Co., 
209 Fed. 223. 

517 In Smith v. Whitman Saddle Co., supra, it was expressly declared that 
**where a new or original shape or configuration of an article of manu- 
facture is claimed, its utility may be also an element for consideration." 
The statute under which this case was determined provided for the pat- 
enting not only of "new and original designs" but also of "New, useful 
and original shapes." Lehnbeuter v. Holthaus, 105 U. S. 94, holding also 
that the design patent is, like other patents, "prima facie evidence of both 



'I 



f 



. 



Designs 307 

To revert to the possible questions suggested, it would ap- 
pear that whether the desjgn for an automobile top could be 
patented or not would depend on whether it was the product 
of inventive genius or merely the result of mechanical skill. 
The issue would be precisely the same as if the patent had 
been sought under § 4886 instead of the section allowing pat^ 
ents for designs. If it did not involve invention to produce 
the new shape it could not be patented. If it had been pat- 
ented, its use by another for purposes other than pleasure to 
the eye would be merely the usual question of infringement. 
Such would be the issue, also, in the suggested case of a collar- 
button made in the configuration of a picture-knob whose de- 
sign had been patented. The patentee of the design would be 
entitled to all analogous uses for which matter revealing his 
design might be used, just as a patentee under § 4886 is en- 
titled to all analogous uses to which the matter embodying his 
idea of means may be put. But in any case, one is not pre- 
cluded, by another's patent for one idea of means, from using 
the precise substantial embodiment of that idea for an un- 
analogous purpose. It is the concept, as we have said before, 
that is patented, not the particular form of matter. So the 
fact that matter of a certain design is used for a purpose not 
ascriptable to the design itself might take the use out from 
the preclusion of the design patent. The actual decision in 
any particular case depends upon the opinion of the particular 
court, but the law itself is definite enough, if the distinction 
between the concept and the matter upon which it is impressed 
be kept in mind. The question of whether a design patent has 
been infringed is also the same as the question of infringe- 
ment in other cases. 

Objective designs. As a design patent covers, theoretic- 
ally, an idea of means for pleasing the eye, and those out of 

novelty and utility." In accord on point that patent is prima facie evi- 
dence of novelty is Ripley v. Elson Glass Co., 49 Fed. 927. Scofield v. 
Browne, 158 Fed. 305, reception of the improvement by the public may 
aid in determining its inventive quality; Chas. Boldt Co. v. Turner Bros. 
Co., 199 Fed. 139, public reception may be considered in determining pres- 
ence of invention. 



3o8 Patents and Inventions 

which litigation most frequently arises are actually of this 
sort, all factors determinative of the presence of invention or 
the fact of infringement are usually omitted from considera- 
tion except that of the effect on the eye. Other factors may 
be considered, but the cases in which they do not appear and 
could not have a part are so frequent that they are usually 
ignored in judicial expression. In very many cases, there- 
fore, the .inventive quality of a design seems to have depended, 
and probably did depend, solely upon its visible similarity to 
those already known, or its difference from them. So also 
the infringement of a later design seems to have been decided 
wholly by the distinction between them which could be per- 
ceived through the eyes. 

In regard to this identity of visible characteristics the rule 
is probably that laid down in Gorham Co. v. White ;^" "the 
thing invented or produced, for which a (design) patent is 
given, is that which gives a peculiar or distinctive appearance 
to the manufacture, or article to which it may be applied, or 
to which it gives form. ... It is the appearance itself, there- 
fore, no matter by what agency caused, that constitutes main- 
ly, if not entirely, the contribution to the public which the 
law deems worthy of recompense. "^^® It must be remembered 
that the court is here expressing itself in regard to a design 
whose sole purpose was its effect upon the eye. It was defi- 
nitely stated by the later case of Smith v. Whitman Saddle 
Co.,^^® ill direct reference to the statement of rule just quoted, 
that appearance is not the only criterion, but that such ele- 
ments as the more material usefulness of a design, or its effect 
upon other senses, than sight, may be considered if they enter 
into its character. But to the extent that visible character is 
the test of invention or infringement, the court held that it is 
the appearance to the eye of "an ordinary observer.'* It said, 
"The court below was of the opinion that the test of a patent 
for a design is not the eye of an ordinary observer. The 

518 14 Wall. 511. 

5i»Accd. Dobson v. Dorman, 118 U. S. 10; Braddock Glass Co. y. Mac- 
beth, 64 Fed. 118. 
520 148 U. S. 674. 



Designs ' 309 

learned judge thought there could be no infringement unless 
there was substantial identity *in view of the observation of 
a person versed in designs in the particular trade in question — 
of a person engaged in the manufacture or sale of articles 
containing such designs — of a person accustomed to compare 
such designs one with another, and who sees and examines 
the articles containing them side by side.' There must, he 
thought, be a comparison of the features which make up the 
two designs. With this we cannot concur. Such a test would 
destroy all the protection which the act of Congress intended 
to give. There never could be piracy of a patented design, 
for human ingenuity has never yet produced a design, in all 
its details, exactly like another, so like, that an expert could 
not distinguish them. No counterfeit bank note is so identical 
in appearance with the true that an experienced artist cannot 
discern a difference. It is said an engraver distinguishes im- 
pressions made by the same plate. Experts, therefore, are 
not the persons to be deceived. Much less than that which 
would be substantial identity in their eyes would be undistin- 
guishable in the eyes of men generally, of observers of ordi- 
nary acuteness, bringing to the examination of the article upon 
which the design has been placed that degree of observation 
which men of ordinary intelligence give. It is persons of the 
latter class who are the principal purchasers of the articles to 
which designs have given novel appearances, and if they are 
misled, and induced to purchase what is not the article they 
supposed it to be, if, for example, they are led to purchase 
forks or spoons, deceived by an apparent resemblance into the 
belief that they bear the 'cottage' design, and, therefore, are 
the production of the holders of the Gorham, Thurber, and 
Dexter patent, when in fact they are not, the patentees are 
injured, and that advantage of a market which the patent was 
granted to secure is destroyed. The purpose of the law must 
be effected if possible; but, plainly, it cannot be if, while the 
general appearance of the design is preserved, minor differ- 
ences of detail in the manner in which the appearance is pro- 
duced, observable by experts, but not noticed by ordinary ob- 



3IO Patents and Inventions 

servers, by those who buy and use, are sufficient to relieve an 
imitating design from condemnation as an infringement. We 
hold, therefore, that if, in the eye of an ordinary observer, 
giving such attention as a purchaser usually gives, two de- 
signs are substantially the same, if the resemblance is such as 
to deceive such an observer, inducing him to purchase one 
supposing it to be the other, the first one patented is infringed 
by the other.""^ 

As the principles which apply to design patents are identical 
with those which have already been discussed throughout the 
book nothing further need be said of them in this connection. 



521 Accord. Jennings v. Kibbie, lo Fed. 669, holding that testimony of 
witnesses as to apparent identity is not necessary, and that the trial judge 
may properly reach a decision as a result of the impression on his own 
visual senses only. 

The very slight difference of appearance necessary to constitute novelty 
in some cases where the appearance is the real purpose of the invention 
is illustrated by the case of Pelouze Scale & Mfg. Co. v. Am. Cutlery Co., 
102 Fed. 916. 

Ripley v. Elson Glass Co., 49 Fed. 927 Byram v. Friedberger, 100 Fed. 
963; Macbeth-Evans Glass Co. v. Rosenbaum Co., 199 Fed. 154, the eye 
of the ordinary observer decides the question. 



CHAPTER XI 

Epilogue 

Aaron Burr is- reputed to have defined **Iaw" as ^'whatever 
is boldly asserted and plausibly maintained/' However in- 
correct this definition may be, it is more nearly true of the law 
respecting patents than of any other branch. In all litigation 
it is seldom the law itself that is in dispute. It does occasion- 
ally happen that the substance of a rule is in doubt and must 
be ascertained by the court. But in the overwhelming ma- 
jority of cases, it is the proper application of undisputed rules 
to the particular facts, or, in other form of expression, it is 
the choice of the rule proper to the particular facts, on which 
attorneys and, often, the judges can not agree. 

In patent law, however, the essential dissimilarity of sensible 
circumstance precludes the possibility of rules and the influ- 
ence of other precedent cases. All of the characteristic issues 
are those of judicial opinion only. By the statute the de- 
fendant may attempt to show in answer to the suit both that 
the plaintiff's patent is invalid and that his own device does 
not in fact infringe it. 

The complainant in a case is, therefore, ever attempting to 
convince the court that his idea of means is unlike anything 
that has preceded it, but that it is so like the defendant's device 
as to make the latter an infringement. Conversely, the de- 
fendant bends all his energies to demonstrating the essential 
similarity of the plaintiflf's invention to prior knowledge and 
the real dissimilarity of his own device to that of the plantiff. 
For this, a "knowledge of the law" is not enough. He who 
would succeed in patent practice must, more than in any other 
branch of law, be able to analyze his case. He must see not 
only the presence of facts on which rules of law have already 
been predicated, but also the actual issues on which personal 
opinion may be divided, and the most forceful relationship of 



312 Epilogue 

his facts thereto. If he has the ability of a detective in fer- 
reting out facts and in construing their true bearing upon 
the proposition he would like to demonstrate, so much the 
better. As even judicial* opinion can not be wholly removed 
from the influence of personality, it is peculiarly well for the 
patent practitioner if to his knowledge of law and of fact he 
adjoins a power in persuasive argument and a magnetic per- 
sonality. 



♦ 



INDEX 



A 

Abandonment I54 

Abandoned applications 210 

Abandoned experiments 86 

Acknowledgment 227 

Actions to invalidate patents 217, 218 

(see "Remedies") 
Administrator, may apply 

for patent 118 

patent descends to 225 

Aggregation 46 

Amendment . '. 209, 213 

Anticipation 76, 275 

(see "Prior Knowledge," 

"Novelty," etc.) 

abandoned experiments ..... 86 

use not necessary 85 

Appeal ' 213 

Application, amendment 209 

by whom made 118 

form of 165 

how filed 169 

new 210 

Art 24, 26 

Assignment 

(see "licenses") 

before invention made 237 

before patent issues 235 

how made 225 

partial 232 

recording of 226 

undivided interest 234 

Avoidance of patents 217 

B 
Better materials 42 

C 

Claim 186, 272, 279 

Change of form 51.274 

Concept 15. 24 

invention is 37» 89, 272 

Combination 50 

Common Law i 

Composition of matter 24 

Conditions 

by contract 262 

in licenses 255 

in transfer of patent 232 



Constitution 5 

Contracts 

patent as 9 

to assign inventions 237^ 247 

inducing breach of. 294 

imposing restrictions on en- 
joyment 262 

jurisdiction of courts.. 239, 254 
to pay royalties 253 

Contributory infringement.. 294, 296 
what constitutes 298 

Conveyance of patents 
(see "Assignment") 

Correction of errors... 196, 198, 209 

Courts 

jurisdiction of ...3, 214, 266, 285 
contracts respecting inven- 
tions 239 

contracts respecting royalties 254 

Creation essential to invention... 15 

D 

Date of prior knowledge 98 

Date of invention 98 

Death of inventor 118 

Dedication to public 164 

Defenses 268 

title of plaintiff 238, 239, 251, 311 

Demand long existing 59 

Dependent inventions 186 

Description , 170 

need not state principle 179 

by drawings 272 

Designs 301 

Distinguishing inventions 15, 23, 37, 84 

Disclaimer 196 

Discovery 13 

Drawings 

as proof of prior knowledge 87 

as proof of invention loi 

as part of application 165 

as part of description 183 

Duplication 44 

Duration of monopoly 222 

E 

Employees 

as inventors .' . 124 

Employers 

rights in employee's inventions 238 



314 



Index 



Enlargement 43 

Errors, correction of . . . 196, 198, 209 

Estoppel 241, 245 

Evidence, patent as 269 

of invention 98 

Excellence of workmanship 41 

Executor (see "Administrator") 

Experimental sale 152 

Experimental use 145 

Experiments, earlier 86 

Experts, opinions of 68 



Foreign publications ^77 

Foreign patents 77 

Foreign use 76 

Form of application 165 

Form, change of 51, 274 

Forgotten knowledge 92 

Factors influencing decisions 276 

Failure to apply for patent 157 

Failure to pay fee 212 

Fee, final 212 

Frivolous devices 107, 115 

Function 22 



Government, 

action to avoid patent. 217 

liability for infringement... 285 

Guardian, may apply for patent 118 

H 
Harmful inventions 115 

I 

Idea, invention is... 15, 24, 37, 89, 272 

Ignorance, of patent 287 ^ 2g6 

of prior art • 36, 79 

Importation 76^ 12 

Impractical devices 109 

Infringement 271 

by whom 285 

change of form as 274 

contributory 294 

factors influencing decision. 276 

intent 296, 286 

knowledge of patent 287 

what constitutes 286 

Inoperative devices 109 

Inoperative patents iq8 

Insane inventor 118 

Intent, in infringement 286 

in contributory infringement 296 

Interferences 215 

Interpretation of statutes 7 



Invalidating patents 217 

Invention, abandonment of 154 

(see "Originality," "Prior 
Knowledge," "Novelty," 
"Anticipation") 

characteristics of .15, 34 

date of 98 

designs as 306 

evidence of 269 

factors indicating 

long demand 58, 59 

public acceptance . . . . 62 

utility 62 

opinions of experts 68 

joint 130 

prior decisions as to 72 

proof of 98 

related inventions 189 

Invention, what constitutes 15, 272 

Inventive quality 34 

personaHty in decisions. .69, 311 

rules for ascertaining 38 

Inventor, affected by own prior 

revelations 97 

must apply for patent 118 

who is 124 



joint inventions 120, 130 

Joint ownership 234 

Jurisdiction of courts (see "CTourts") 

K 

Knowledge (see "Prior Knowledge") 
of patent by infringer 2S7 



Law of nature 15, 20 

Loss of rights to patent 136, 154 

Lost arts _ 92 

Licenses * * 248 

(see "Assignment") 

buyers of patent affected by 230 

restrictions 255 

M 

Machine 24 

Manufacture 24 

Marking "patented" :. 2S7 

Mechanical skill 55 

Mental process 31, 100 

Mistake, correction of.. 196, 198, 209 
Model, as proof of prior knowl- 



as 



edge 81,^7 

proof of existence of in- 



vention 



99 



Index 



315 



Monopoly, by Royal grants 2 

none at Common Law i 

by statute 3» 5 

origin of i 

justification for 4 

character of 7, I7^» 223 

design patents 301 

division of 232 

duration of 222 

must be claimed 186 

patent as evidence of 269 

protection of 266 

scope of 272, 279 

N 

New applications 210 

purpose or use 53 

what is ^ 34. 7^ 

Novelty 76 

(see "Prior Knowledge") 

what is 34 

Notice of monopoly 287 



O 



166 



Oath 

Omissions 

correction of 163 

from application 159 

Opinion of experts 68 

Origin of patent rights i 

Originality 76 

Ownership of patent 222- 

joint 234 

of physical embodiment...!, 257 



Patent, as evidence of patentabil- 
ity 82 

as property 222 

avoidance of 217 

construction of 7, 271, 279 

failure to apply for 157 

monopoly given by 223 

inoperative 198 

interfering .213, 218 

in whose name issued 122 

is a monopoly 7 

is a reward or contract 9 

loss of right to 136 

meaning of 2 

ownership of 222 

purpose of 34 

related inventions 189 

scope of 272, 279 

separation of rights 232 

value of 219, 269 



what covered by 272, 279 

who entitled to 118 

Patents, foreign 77 

Patentability, creation essential.. 15 
not every idea patentable ... 33 

usefulness 107 

inoperativeness 107 

Patentable inventions 12 

character 12 

source 12 

importation 12 

discovery 13 

Personality 

of attorney 311 

of judge 69 

Pioneer patents 279. 

Practical value of void patents.. 299 

Precedents 38, 72 

Principle 

as distinguishing inventions 179 

as part of invention 179 

means of utilizing 

of nature 15 

of operation 22 

Prior decisions 38, 72 

Prior Art, (see "Prior Knowledge") 

Patent Office search of 270 

presumed to be known... 36, 79 

Prior. Knowledge 76 

abandoned experiments 86 

date of 98 

drawings ; . . . 87 

models 87 

extent of 79 

lost arts 92 

forgotten knowledge . » 92 

in foreign countries 76 

patentee's own prior revela- 
tions 97 

proof of 80, 81 

scattered knowledge 96 

unrecognized results 95 

use not necessary 85 

Prior use or sale 136, 155 

Process . .*. 26 

mental 31 

Proof of invention 98 * 

Property, embodiment as i, 257 

patent as 222, 226 

transfer of ownership 225 

Protection of the monopoly 266 

Protest against issue 216 

Public acceptance of device 62 

Public use or sale 136, 155 

Purpose of invention 107 

of monopoly 7, 34 



I 



316 



Index 



L 



R 



Recording of transfer 226 

Reissue 198 

Related inventions 189 

Remedies 217, 266 

insufficiency of 219 

protest against issue 216 

Repairs 289 

Restrictions, in conveyance 227 

in license 255 

in sale of patent 2^2 

Resale, restrictions as to 255 

Result 22 

Royal grants 2 

Royalties, 

not dependent on validity of 

patent 253 

obligation to pay is personal 228 
not transferred by sale of 

patent 230 

Rules, for determining invention 

or non-invention 38 

of Patent Office 166 



Sale, experimental 152 

(see "Public sale" and 'Trior 

sale") 
of patents 225 

Scattered knowledge 96 

Secret inventions 

protected by Common Law.' i 
patentability may be lost 144 

Secret use 139 

Statutes 3, 5 

interpretation of 7 



Tangible embodiment, not inven- 
tion 15, 24, 100 

essential to patentability 120 

ownership of I, 257 

as affecting prior knowledge 89 



Tangible form, not indicative of 

invention 37 

Time, for action on rejection... 210 

for appeal 215 

for completing application.. 210 

for filing new application 211 

for which patent runs... 222, 301 

required for invention 58 

in which reissue may be had 206 

Title of invention 167 

Tool ....;. 24 

Transfer, (see "Assignment")- 

U 

Uncertainty of 4ecision 69 

Undivided interests 234 

Unrecognized results 95 

Use, as proof of prior knowledge 84 

experimental " 145 

in foreign countries 76 

not essential to anticipation. . .85 

public 136, 155 

secret 139 

restrictions on 255 

Useable 107 

Useful 107 

United States (see Government) 

Utility 107 

as distinguishing inventions 

84, 112 

as indicating invention 62 

V 
Validity of patent 

as between assignor and as- 
signee 253 

Value of void patents 219, 299 

Void patents, value of 219, 299 

W 

What may be patented 12 

Witness, to prove prior knowl- 
edge 81 

expert 68 



V. 



i 



CLAWAXUp 




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