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r
4<
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
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