rr^ <*> ^..♦^ ^^fA'; •'^.../ /^^\ -e^ .y /^^ :. '-^o* :' . •jj^SS^^'. . o »*^\ BRIEF TREATISE ON UNITED STATES PATENTS, FOR INVENTORS AND PATENTEES. BY HENRY HOWSON, CIVIL AND MECHANICAL ENGINEER AND SOLICITOR OP PATENTS, CHARLES HOWSON, ATTORNEY AT LAW AND COUNSEL TN PATENT CASES. AUTHORS OF THE "AMERICAN PATENT SYSTEM," "OUR COUNTRY'S DEBT TO PATENTS," ANSWERS TO QUESTIONS OF THE STATE DEPARTMENT RELATINGJ PHILADELPHIA: -^ POKTER AND COATES, 1876. Entered according to Act of Congress, in the year 1876, by PORTER & COATES. in the Office of the Librarian of Congress at Washington. 'v\r' ^ B. M. DUSENBERY, SHERMAN & CO., Stereotyper and Electrotyjger. Pnnters. \ V J^ XJ. S. Patent Office, Washington, D. C, March 17th 1876. Messrs. H. & C. Howson, Philadelphia, Pa. My Dear Sirs : — I have read the proof of your new book, and hasten to express the gratification which the perusal gave me. I have not seen anywhere more information relating to patents, or more accurate information in such compact form. I consider the book a ver}'- valuable one, and should be glad to see it widely circulated. The information it contains would be of the utmost benefit to the inventors in this country. Very truly yours, Ellis Spear, Acting Commissioner of Patents. PREFACE. The Patent Laws of the United States have direct bearing upon the interests of a constantly increasing number of persons, who are desirous of acquiring some knowledge of the principles of those laws. Exhaustive treatises on the subject, and various digests of decisions, have been published for the benefit of profes* sional men, and latterly the Patent OflSce has furnished detailed information concerning the administration of the Patent Laws in the office and in the courts* Pamphlet copies of the text of the law and of the Rules of Practice in the Patent Office, are also published and gratuitously distributed to inventors and patentees who choose to ask for them. The writers of these pages have for some time thought that there was room for a work, occupying middle ground between the publications of the Patent Office, and the lengthy and elaborate treatises and digests which have be^n published by private enterprise. '. Inventors and patentees desire to be reasonably fami- (V) VI PREFACE. liar with at least the outlines of a subject so intimately concerning them, but few have either the time or inclina- tion to seek the information in the pages of lengthy works of technical character and style. It is chiefly for this class that the present work has been designed, and the object aimed at has been to present the subject in terms as plain as possible, and briefly, without meagreness. The details of Patent Ofiice practice have not been minutely dwelt upon, because they are to be obtained from the printed and published rules and regulations of that office, nor has it been considered as properly within the scope and object of the w^ork to treat at any length upon the technicalities of such subjects as actions for infringement. The endeavor has been to give a com- pact and correct statement of the law as to the persons to whom, and the subjects for which, patents may be granted — as to what constitutes patentable invention or disco- very — as to when the right to a patent is acquired, and how it may be lost — as to the nature of the right which a patent confers — how that right may be transferred or distributed — what acts are violations of the right, and w^hat remedies may be had for such violations. The plan pursued has been to give the text of the law upon the various heads treated, with comment upon the sections quoted, and with citatians from decisions of the United States courts. CONTENTS. CHAPTER I. Introductory. Origin of Patents. Patents not monopolies. Equity of Patents. Policy and utility of Patents. Patents and Capital, ....... p. 9-18 CHAPTER II. To whom Patents are granted. Who is first Inventor or Dis- coverer in Law. Relation of employer and employee in re- spect of invention. Diligence in perfecting Invention, and adapting it to use. Prior invention, knowledge or use. Prior Patent or printed publication. Abandonment. Public use or sale for more than two years before application. Rights of pur- chaser before application for Patent, . . . 19-33 CHAPTER III. For what Patents are granted. Art. (Process.) Machine. Manufacture. Composition of Matter. What are Patentable Discoveries. Patents not granted for abstract principles. New Principles, how patentable, . ^ . . 34-44 CHAPTER IV. Functional claims bad. Mechanical processes. New use of 6ld device or process. Double use. Substitution of material. Changes of form. Equivalents, .... 45-56 CHAPTER V. Combinations. Parts must co-operate. Parts may be new or old. Number, character and relation of parts, how material. Equivalents in cases of combination. Articles of Manufacture. Compositions of matter. Improvements, . . . 57-69 CHAPTER VI. . Application for Patent. What is required of the inventor. Drawing. Model. Oath of invention. Effect of prior foreign Patent, ..... . 70-74 (vii) Ylii CONTENTS. CHAPTER VH. Specifications and claims. The description. Effect of inten- tional concealment or misstatement. Claims, how interpreted. What faults in description or claim will make Patent invalid, p. 75-63 CHAPTER VIII. Application for Patent. Proceedings in the Patent Office. Official examination. Appeals to Board of Examiners-in-cbief — to Commissioner — to Supreme Court, District of Columbia. Remedy for refusal of Patent, by bill in Equity. Abandoned applications. Renewed application. Forfeiture of Patent by non-payment of second fees. Renewal of application, . 83-95 CHAPTER IX. Interfering applications and interfering Patents. Interference proceedings in Patent Office. Power of Commissioner in cases of interference. Bnl in Equity against holder of interfering Patent, 96-lQO CHAPTER X. Remedies for defective Patents. Disclaimer. To what casea applicable. How and by whom made. Unreasonable neglect or delay to file. Nature and efi"ect of disclaimer. Re-issue. To what cases applicable. Who may obtain. Nature and effect of, 101-112 CHAPTER XL Assignments. Grants. Licenses. Assignment before Patent. After Patent. Difference between assignment and grant of ex- clusive right. Relations of assignor and assignee. Grants of exclusive right. Requisites of assignment or grant. Record- ing of. Effect of failure to record within three months. . Licensee, who is. Rights of licensees. Licensor and licensee, relations of. Rights of purchasers of patented articles, . . 113-125 CHAPTER XIL Infringement. Actions for infringement, in what courts brought. Action at law. In Equity. Powers of Equity Courts. Who may sue for infringement. When State Courts may inquire into validity of Patent. Defences to action for infringement. Special defences. Notice of. Preliminary injunction. Appeal to Supreme Court. Writ of error. Marking patented articles. Penalty for fraudulent marking, .... 126-140 CHAPTER XIIL Caveats. Who may file. What requisite. May be renewed from year to year. Object and effect of, . . . 141-145 CHAPTER XIV. Design Patents. Terra of. What constitutes similarity of design. Meaning of useful design, . . . 141-156 TREATISE ON PATENTS. CHAPTER I. Introductory, The familiar word "Patent," an abbreviation of the term ** Letters Patent," is suggestive of the origin to which our Patent Laws, in common with those of Great Britain, are to be traced. The granting of exclusive privileges to make or vend differ- ent commodities, was an incident of the control which, from the earliest times, the English crown exercised over the trade of the country, and these grants were made by Letters Patent, i. e., open letters, sealed with the great seal, and addressed by the crown to the subjects at large. It was the doctrine of the common law, as expounded by the courts, that the prerogative of granting such exclusive privi- leges was vested in the crown as the supreme executive power of the state, to be exercised in behalf of and for the benefit of the public, and was limited to the granting of temporary exclusive privileges to the introducers of new manufactures. But the prerogative, so long as its object was not defined, nor its exercise regulated by statute, was grossly abused. (ix) 10 INTRODUCTORY. ^' By degrees," we are informed, '' the powers confided to the executive were perverted from their proper use, and, under the pretence of the better government of trade, the prerogative of the crown was employed in sanctioning, in return for pecu- niary aid, individuals and corporations in very oppressive monopolies." Patents of monopoly, as they were termed, presented a con- venient mode of rewarding royal favorites at the expense of the subjects at large. The practice reached its height during the reign of Elizabeth, who granted many such patents to her servants and courtiers, giving them exclusive privileges to make, or trade in, the most ordinary articles, even some of the very necessaries of life, the prices of which were thus raised enormously. At last, the famous '' Statute of Monopolies,'^ 21 James I., c. 3, put an end to the mischief, by declaring that all monopo- lies theretofore granted, or thereafter to be granted, of or for the sole buying, selling, making, working or using of anything within the realm, contrary to law and utterly void and of no effect." But from this general condemnation the act excepted *' Letters Patent for limited periods of the sole working or making of any manner of neiv manufactures within the realm, to the true and first inventor and inventors of such manufac- tures, which others, at the time of making such Letters Patent and grants, shall not use.'' This clause of exception is the basis of the present English Patent Laws, and is the earliest legislative recognition of the public policy of allowing tempo- rary exclusive privileges to the inventors of new manufactures. PATENTS, TO WHOM GRANTED. H A century and a half later this policy was recognised in that clause of the Constitution of the United States which em- powers Congress to " promote the progress of science and the useful arts, by securing for limited times to authors and inven- tors the exclusive right to their respective writings and dis- coveries." Congress, in pursuance of this power, passed the Patent Act of 1790, entitled '' An Act to promote the progress of the useful arts," which was repealed and replaced by the Act of 1793. This in turn gave way to the Act of 1836, the provisions of which were amended and added to by several subsequent acts, and finally the Act of July 1870 was passed ^' to revise, consol- idate and amend the statutes relating to patents and copy- rights," and is embodied, with little change, in the Revised Statutes approved June 22d 1874. The tracing of the relationship betvreen modern Patents and the old English grants of monopoly has been objected to, as tending to give rise to erroneous impressions. It is said that a patent is not a monopoly, since it does not take from the public at large, the enjoyment of anything which they before possessed. And certainly, a patent is not a monopoly in that odiouS sense, which, from the abuses we have briefly mentioned, the word acquired. It restrains the public at large from confiscating the fruits of individual ingenuity, labor and expense, and so far, it does not deprive them of any freedom which they can rightly claim to enjoy, but is simply an enforcement of the principles of natural equity. It can only be said to partake of the nature of a monopoly, 12 INTRODUCTORY. in the sense of taking anything from the public, in so far as it restrains not only the mere copyist, but any original inventor, who is not also the first. This last efiect is in restraint of natural freedom, for being the first to make an invention or discovery confers no natural right to prevent others from making themselves, and if they make, using the same inven- tion or discovery. But to confer that right by positive law upon the first inventor, is a price which the public can well afibrd to pay for the benefits which they derive from the con- cession, and a comparison of modern Patents with the old grants of monopolies furnishes an instructive contrast between mischievous and beneficial restraints upon the public at large, in favor of individuals, restraints, in form the same, but in spirit and effect totally at variance. Modern Patent Laws are in fact an adaptation to the promo- tion of important public interests of an old governmental power, originally employed — if not devised — as a means of preying upon the public, and the " Statute of Monopolies" by limiting the power to the granting of exclusive rights for spe- cified periods to the first inventors of new manufactures wrought the change. In this limitation resides the whole equity of Patents ; a new or improved useful art or manufacture is an important addition to the wealth and power of the community and at the same time generally costs the originator more or less thought, labor and pecuniary expense. Granting that the disclosure of any such useful novelty of EQUITY OF PATENTS. 13 which he may be possessed is one of the duties which the indi- vidual owes to the society of which he is a member ; he may claim for this kind of .useful production the same return to which any other kind is acknowledged to entitle him, i. e., payment proportionate to its value to society and its cost to himself. And in this connection it is important to remember that it is not a mere abstract conception which of itself makes the valuable consideration, but the physical embodiment of the conception in a way to demonstrate its utility, and make it practically available. Production of this kind being at once most useful to the public, and apt in proportion to that utility to be expensive to the producer, merits a substantial return, and if the prospect of such a return is not held forth, will not flourish. A better and more equable method of providing such a return could not be devised than that of a temporary monopoly, since it leaves the payment of the inventor to time, which must deter- mine the real value of a new thing to the public. It is just and proper that a new and useful invention should be paid for by the public in proportion to its proven value to them, and that the mode of valuation should be the same as in the case of other products of individual skill and labor. The public verdict, as evidenced in demand, is the best general test of the value of an article, and the profit derived from manufacture and sale, if these be carried on with proper enterprise and discretion, will be in proportion to the value. 14 INTRODUCTORY. To use the words of Bentham " It (a patent of invention) is an instance of a reward peculiarly adapted to the nature of the service, and adapts itself with the utnuost nicety to those rules of proportion to which it is most difficult for reward, artificially instituted by the legislature to confer. If confined, as it ought to be, to the precise point in which the originality of the inven- tion consists, it is conferred with the least possible waste of expense. It causes a service to be rendered, which, without it a man would not have a motive for rendering, and that only by forbidding others from doing that, which were it not for that service, it would not have been possible for them to have done. Even with regard to such inventions, for such there will be, where others besides him who possesses the reAvard have scent of the invention, it is still of use by stimulating all parties and setting them to strive which shall first bring the discovery to bear. AYith all this, it unites every property that can be wished for in a reward. It is ^' variable, equable , commensura- ble, characteristic, frugal, promotive of perseverance, subser- vient to compensation, popular and reasonable." That patents have been an effective means of promoting the progress of the useful arts, no one conversant with the subject will deny ; but there are those who think or afiPect to think, that when the arts have reached a high state of development, their further progress may safely be intrusted solely to the spur of private competition. But in the absence of protection by law, for an inventor to disclose his improvement is to give competitors something which they can then probably use to better advantage than POLICY OF PATENTS. 15 himself, because they are relieved of the labor and expense attending the first practical application of an idea, and also because they may have more capital than himself. Secrecy is his only alternative, and one which cannot be depended upon, and is besides detrimental to the public, since it deprives them for a time at least of useful information, which it is to their interest to have speedily disseminated, and tends more- over to destroy mutual confidence in business. Free competition means competition in which the parties can pursue their business upon terms as equal as respective skill, industry and means will allow. It is not, therefore, free competition, in the true sense, if the invention which has cost one man an expense of thought, time and money, is available without any expense to his competitors. That is to make a man's own labor the very means of destroying the equality. It is no answer to say that the experience of one competitor to- day may be that of another to-morrow, that the risk is equal. There could be no real equality of risk, but the risk, obviously enough, would weigh most heavily upon the most meritorious, the greatest producers would be the greatest losers by such a system of exchange, or reciprocal piracy. But it may be said again, the inventor would derive from his ingenuity the like advantage as from his skill, in the reputa- tion it would give his productions, and the consequent demand for them. The laws of all civilized nations have recognised that species. of property which consists in the reputation of a trader, acquired by his skill and industry, and have provided means by which that property may be secured. A simple 16 INTRODUCTORY. mark, to the use of which in connection with specific goods the law gives its appropriator an exclusive right, will serve to dis- tinguish those goods in the market, and enable him to reap the just reward of his skill. But skill differs from invention, inasmuch as simple mental apprehension will not pass the pos- session of it from one to another. The skill upon which a trader's reputation is built does not pass from him with the goods which it has produced. Others may acquire equal or greater skill, but only by equal or greater exertion of the same qualities, by which his own skill has been acquired. But the original thought embodied in a process, machine or device is thereby exposed for any ordinary intelligence to copy ; it passes with the thing in which it has found expres- sion, and after the idea has passed into the possession of com- petitors, the only question with the public is where they can buy what they want most advantageously to themselves. In very rare cases, the answer to this question may be such as to maintain a monopoly in the hands of the originator. This can only arise from some accident of power, the possession of great means, special skill and facilities, and a monopoly of pro- duction, depending solely upon power to shut out or crush competition by superior resources, is fortunately rare. Those, however, who might possess such power would have no incen- tive to invent, but every temptation to let well enough alone. Small producers would find but a poor compensation for their ingenuity, time and labor in the reputation which a transient exclusive possession, resting merely on priority in PATENTS AND CAPITAL. 17 time, might give them. They would not be slow to discover, that to invent was actually to feed at their own expense the reputation of more formidable rivals. Thus the relative posi- tions of different classes of trading producers would operate to prevent inventive activity in any. Turning to the class of non-trading producers, employees having no direct business connection with the public, a class from which a large, perhaps the largest, proportion of the most useful invention proceeds. To talk to them of the advantage reputation would give them, is mockery. Reputation can be of moment to them as workmen, only as it affects their ability to obtain employment at good wages. This their repute for skill will do, because by purchase their skill becomes the secure property of the purchaser so long as the connection lasts. But of what service to them would a reputation for ingenuity be, if employers could appropriate the fruits of that ingenuity without payment, but could not, by payment, secure them as property ? If employers could not find their account in the personal exercise of invention, they would hardly consider its exercise by employees an element of value. Concentration of capital, based upon patents, though not without its attendant mischiefs, is upon the whole exceedingly beneficial, since it commands for the practical development of useful inventions, all the resources of skill and the advantages of commercial credit. As a rule, the first forms of the most valuable inventions are comparatively crude, cumbersome, costly and inefficient, and so 18 INTRODUCTORY. without the aid of capital, they would be likely to remain. It is, as well to the wealthy manufacturing firms and corpora- tions, as to individual genius that we owe the compact, durable and cheap labor-saving devices of to-day and the constant im- provements which are being made in them. Patents have made wealth directly tributary to the progress of the useful arts by making it possible to employ great capital profitably in mechanical production. Let the law cease to extend its protection to the labor of the inventor, and the wealth of the capitalist will no longer extend its necessary aid to that labor ; useful discoveries will be few, those made generally available still fewer, until finally the practical arts will come virtually to a stand-still. Certain it is that a field of labor in which none can be secure of finding profit, will soon cease to be culti- vated by any. The true purport of Patent Laws is perhaps not quite cor- rectly designated by the common saying, that they recognise an invention as property. It seems more correct to say that they recognise its conception, completion and disclosure as value received by the public for which the donor is entitled to pay- ment, and for the purpose of securing him this payment they endow him with a temporary property in the invention. The first to disclose an invention \s^ prima facie, the party entitled to this artificial property, since to him the public is appa- rently indebted for a forward step in the progress of the useful arts. The exceptions to this proposition, under the Patent Laws of the United States, will be mentioned in the body of the treatise. PATENTS, TO WHOM GRANTED. 19 CHAPTER II. To whom Patents are Granted. " Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication, in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale 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, obtain a patent therefor:'' Sect. 4886 R. S. Considering the question, who are entitled to patents under this section, it will be noticed that '' inventors and disco- verers'' only are named, but by sect. 4895, it is provided that *' patents" may be granted and issued or re-issued to the assignee of the inventor or discoverer, the assignment thereof being first entered of record in the Patent Office. As we shall see hereafter, however, the application for an original patent must always be made by the inventor, if living, or, if he be dead, by his executor or administrator. Grantees of Letters Patent, therefore, must be '^ inventors or discoverers, their legal representatives or assigns.'^ 20 PATENTS, TO WHOM GRANTED. The words any person indicate that aliens as well as citizens are entitled to the benefit of the law. VV^ho is an inventor or discoverer within the meaning of the law? To this question the section quoted replies, he whose invention or discovery was not, before he made it, known or used by others in this country, nor patented or described in a printed publication in this or any foreign country. In such a case he is the first inventor or discoverer within the meaning of the law, and is entitled to a patent, if he has not surrendered the right by abandonment of his invention to the public, or by allowing it to be in public use or on sale for more than two years before applying for the patent. The invention, besides being new, must be useful, i. e., it must be capable of being used, which implies that it has been brought to that state of perfection or completeness, that if fully and correctly described in the specification, those skilled in the art may from the information thus given, without experiment or invention of their own, be able to practise the invention. Crude and imperfect experiments do not confer a right to a patent : Agawam Co. v. Jordon^ 7 Wallace 583 ; Washburn et al. V. Gould, 3 Story 133 ; Seymour y. Osborne^ 11 Wallace 516. Inventions or discoveries contemplated by the law as patent- able, are such as are perfected and adapted to use. Not that an inventor or discoverer, before he can obtain a patent must have actually practised his invention or discovery ; that is not requisite, nor usually the case, but to obtain a valid patent, it must appear that his invention or discovery can be practised FIRST INVENTOR. 21 from his specification or description of it, by those skilled in the art, without other aid than their own judgment and skill. The grant of a patent raises a prima facie presumption that the applicant is the true and first inventor or discoverer of an invention perfected and adapted to use, and therefore the Com- missioner of Patents, before issuing a patent, must be satisfied that the specification properly discloses such an invention — one that is not only new, so far as the records of the ofiice show, but useful in the sense of being capable of use. And as the right to a patent rests upon the presumption that the claimant was the first to produce, and make beneficially known, some useful thing, so to defeat a patent granted on the ground of a prior invention by some other person it must be shown that the alleged prior inventor had actually produced the thing and made it capable of use. A prior conception will not suffice, nor mere experiments, if not carried to the point of perfecting the invention and adapting it to actual use. *' If a person hav- ing some vague idea of a principle make numerous trials and experiments, if those trials and experiments do not result in such knowledge upon his part as enables him to put in suc- cessful practice the idea of which he has such vague notion, he does not become an inventor in the sense of the patent law. Such a person has never embodied the principle so as to make it available for practical use, and the party who embodies the principle and makes it available for practical use, is the party who is entitled to a patent and protection :" Ransom v. Mayor, 1 Fisher 252. " Though others may have liad similar ideas and may have 22 PATENTS, TO WHOM GRANTED. experimented upon them, the person who first perfected the idea, and made it capable of practical use, is the inventor, and entitled to a patent.'^ The many decisions of like tenor, proceed upon the principle that the Patent Law is intended to encourage useful inven- tions, that is, improvements, which are in condition to be prac- tised or used. An undeveloped, umembodied conception, however suggestive or valuable in itself, is not such an in- vention. But the rule is not to be understood as meaning that as be- tween two independent inventors, claiming the same thing, the right necessarily belongs to the one who may have first reduced the invention to practice. On the contrary, although a patentable invention within the meaning of the law is one perfected and adapted to actual use, the right of a party who has produced such an invention, is referred to the time of his conception of the invention, provided he has perfected it and adapted it to actual use with reasonable diligence. In actions for infringement the defendant may prove that the patentee had surreptitiously or unjustly obtained the patent for that which was first invented by another, who was using reasonable diligence in adapting and perfecting the same : Sect. 4920 R. S. This provision applies to two classes of cases, that where the patent has been obtained in fraud of the true inventor, and that also where the later of two independent in- ventors has been the first to apply for and obtain the patent. " It is the right and privilege of a party, when an idea enters his mind in the essential form of invention, inasmuch as most INVENTION — CONCEPTION. 23 inventions are the result of experiment trial and eifort, and few of them are worked out by mere will — to perfect, by ex- periment and reasonable diligence, his original idea, so as not to be deprived of the fruit of his skill and labor by a prior patent, if he is the first inventor. But there must be reasona- ble diligence, looking to all the facts of the case : Cox v. Griggs^ 2 Fisher 174. And though an imperfect and incomplete invention, resting in mere theory, or in intellectual notion or in uncertain experi- ments is not patentable, yet the invention, i. e., the finding out of something new by an operation of the intellect, is the basis of the right, which by perfection and adaptation to actual use is completed, so that he who invents first will have the prior right, if he is using reasonable diligence in adapting and per- fecting the same, although the second inventor has in fact first perfected the same, and reduced it to practice in a positive form. As to what constitutes invention in the sense of intellectual origination, there must have been more than the mere idea of accomplishing a certain result, there must have been a concep- tion of substantially the means or method involved of attaining that result, and the conception it would seem must have been so far clear and mature that the inventor is prepared to give explanations, sufficing to enable one skilled in the art to carry out the invention. The person who is the first to conceive and give expression to the idea of an invention, in such clear and intelligible man- ner that a person skilled in the business could construct the 24 EMPLOYER AND EMPLOYEE. thing, is entitled to a patent provided he used reasonable dili- gence in perfecting it.'^ The right of the first to invent, in the sense of conceiving a new thing, is well illustrated by the cases touching the often recurring question of the relation of employer and employee. " Where a master workman, employing other people in his service, has conceived the plan of an invention and is engaged in experiments to perfect it, no suggestions from a person em- ployed by him, not amounting to a new method or arrangement which ill itself is a complete invention, is sufficient to deprive the employer of the exclusive property in the perfected im- provement. No one is entitled to a patent for that which he did not invent, unless he can show a legal title to the same from the inventor, or by operation of law ; but where a person has discovered an improved principle in a machine, manufac- ture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discoveries ancillary to the plan and pre-conceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who dis- covered the original improved principle, and may be embodied in his patent as a part of his invention.'^ '^ Suggestions from another made during the progress of such experiments, in order that they may be sufficient to defeat a patent subsequently issued, must have furnished such in- formation to the person to whom the communication was made that it would have enabled an ordinary mechanic, without the PATENTS, TO WHOM GRANTED. 25 exercise of any ingenuity and special skill on his part, to con- struct and put the improvement in successful operation :'' Ag- awam Wool Co. v. Jordan^ 7 Wallace 583. Invention is the work of the brain, and not of the hands. If the conception be practically complete, the artisan who gives it reflex and embodiment in a machine is no more the inventor than the tools with which he wrought : Blandy v. Griffith, 3 Fisher 609. The adoption by an inventor of a suggestion made in the course of experiments, of something calculated more easily to carry his conceptions into effect, does not affect the validity of the patent: Allen v. Rawson, 1 C. B. 551 (English case). The originator of an invention is entitled to avail himself of the skill of a mechanic in perfecting his device, and does not lose his right to it. because he adopts suggestions made by the mechanic which do not relate to the gist of the invention : Cogswell and Judson v. Burke, 1 0. G. 380. In cases arising out of conflicting claims of employer and employee, to the same invention, if it appear that the em- ployment of the latter were special to assist in developing and putting into practice ideas of the employer, all the presump- tions as to the invention and every material part of it are with the employer. But in cases where the employment has been a merely general employment to labor in that branch of the arts in which the employee may be skilled, no presumption of the kind exists. As'to the question, what is reasonable diligence in adapta- tion and perfection necessary to enable a party to maintain a 26 DILIGENCE IN ADAPTING AND PERFECTING. claim of prior invention, obviously no general rule can be given. It is purely a question of fact, to be determined only by consideration of the nature of the invention, and the cir- cumstances in which the claimant may have been situated. There must have been reasonable diligence looking to all the facts of the case. To preserve the right of the first to originate, he must have been using reasonable diligence in adapting and perfecting the same, at the time of the subsequent invention : Reed v. Cutter, I Story 599 ; Agawam Co. v. Jordan, 7 Wallace 583. If he does not use reasonable diligence to perfect the invention, after the idea of it is conceived, and in the meantime another not only conceives the idea but perfects the invention, and practically applies it to public use, the latter is the first and original inventor, and a patent granted to the former vrill be void, as he is not the first and original inventor : Ransom v. Mayor, 1 Fisher 252. The first to invent then, i. e., to clearly conceive the idea of a new thing, will have the prior right, if he uses reasonable diligence to perfect his invention and adapt it to actual use, and by perfecting the law means not that an invention should be carried to a point where there could not be any subsequent improvement, but that it should be completed so as to be of some practical utility : Johnson v. Root^ 2 Fisher 291. This is in accordance with the object of the Patent Laws which is the encouragement of useful invention. The party entitled to the benefit of the law is he who has been first to produce and be able to commmunicate to the pub- FIRST INVENTOR. 27 lie some new thing capable of being used. So the presump- tion raised by the possession of a patent that the applicant was the first inventor may bo rebutted by proof, either that the thing shown and described in the patent cannot be prac- tised or used, or, that before the invention or discovery of it by the patentee it was known or used by others in this country, or patented or published here or abroad. According to the words of the section, the thing invented or discovered, to entitle the claimant to a patent, must not, prior to his invention or discovery, 1. Have been known or used by others in this country ; or 2. Have been patented, or described in a printed publication in this or any foreign country. And Sect. 4920 R. S. specifies as one of the defences which may be made to an action for infringement, the defence that the patentee was not the original and first inventor or disco- verer of any substantial and material part of the thing patented. The rulings of the courts as to the force and effect of these words are referable to the general principle that to defeat the presumption that a patentee was the first to produce and confer upon the public the benefit of some new and useful thing described and claimed in his patent, it must appear that prior to his invention or discovery, knowledge of the same or substantially the same thing existed among other members of the public. So, it has been held, that the prior knowledge and use meant by the statute is prior knowledge and use in a manner accessi- ble to the public {Gayler v. Wilder, 10 Howard 496 ; Cahoon 28 PATENTS, TO WHOM GRANTED. V. Ring J 1 Fisher 397), not that there must have been any- general knowedge or use by the public, for a patent may be de- feated by showing that the thing claimed in it as new had been * discovered and put into actual practical, open use prior to the discovery of the patentee, however limited the use or know- ledge of the prior discovery might have been : Bedford v. Hunt^ 1 Mass. 302; Rich y. Lippincott, 2 Fisher 1. Prior knowledge and use by a single person is sufficient; the num- ber is immaterial. And there are decisions that the defence of prior invention may be established by proof of the prior maJdng of a device, in condition for practical use, without proof of actual use: Woodman v. Stimpson, 3 Fisher 98 ; Pitts v. Wemple, 2 Fisher 10. But, probably, in most cases, actual use can be the only- satisfactory proof of the completeness and utility of an alleged prior invention. The prior knowledge which will defeat a patent must have been substantially such knowledge as the patent itself gives, " To defeat a patent which has been issued, it is not enough that some one, before the patentee, conceived the idea of effect- ing what the patentee accomplished. To constitute such a prior invention as will avoid a patent that has been granted, it must be made to appear that some one, before the patentee, not only conceived the idea of doing what the patentee has done, but also that he reduced his idea to practice and embodied it in some useful and practical form. The idea must have been carried into practical operation. Mere experiments, which were unsatisfactory, and have been abandoned, are not enough : PRIOR KNOWLEDGE OR USE ABROAD. 29 Ellithorpe v. Robinson, 2 Fisher 83 ; CaJioon v. Ring, 1 Fisher 397; Howe v. Underwood, 1 Fisher 160; Many v. Jagger, 1 Blatch. 372 ; Coffin v. 0^c^6?^, 18 Wallace 120. In brief, it would appear to be the general rule that the pre- sumption in favor of a patentee as first inventor must prevail as against a defence of prior invention, knowledge or use, un- less it appear that some one, before his invention or discovery, had not only conceived but perfected the thing, and adapted it to practical use, and this had been evidenced by actual use. Prior knowledge or use in a foreign country are not of themselves a bar to a patent here to a hondjide inventor and applicant. Whenever it appears that the patentee, at the time of making his application for the patent, believed himself to be the origi- nal and first inventor of the thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country, before his invention or discovery thereof, if it had not been patented or described in a printed publication ; Sec. 4923. Unpatented and unpublished inventions, existing in foreign countries, are not presumed to be known here, and therefore as the first to convey to the public a knowledge of the in- vention, a person who, independently, though subsequently, invents and patents the same thing here, may fairly be re- garded as the first inventor within the true meaning and intent of the law. But if one should obtain a patent, as inventor, for something 30 PATENTS, TO WHOM GRANTED. which he has derived from abroad, or even though it may have been original with himself, if at the time of his applica- tion he was aware that it had been known or used abroad prior to his own invention, his patent would be void, although such prior knowledge or use abroad were not publicly known here. Therefore, although the general rule is that prior invention, knowledge or use in a foreign country can be proved only by a patent or published description, there is an exception to the rule, where it is proposed to show that the patentee, at the time of his application, knew of such prior foreign invention, knowledge or use. For the purpose of bringing such know- ledge home to the applicant, oral proof is admissible : For- hush V. Cook, 2 Fisher 2. An invention or discovery, to be patentable, must not have been patented or described in a printed publication, in this or any foreign country, prior to the invention of the claimant. As to the requisite character of a prior patent or printed publication, domestic or foreign, invoked to bar or defeat a patent, it has been held by the Supreme Court that to do so " it must 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 practise the invention patented." Th^t is, it must substantially answer the purposes of such a specification as our law requires: Sq/mour y. Os- bornej 11 Wallace 516. Furthermore, by a printed publication which will bar or defeat a patent, is meant a work of a public USE BEFORE APPLICATION. 31 character, intended for the public, and made accessible to the public by publication before the discovery of the invention by the patentee. A printed book or pamphlet intended merely for private circulation is not sufficient : Reeves v. Keystone Bridge Com- pany^ 0. G., vol. 1, 466. Finally, the inventor to entitle him to a patent must not have caused or allowed his invention to be in public use or on sale in this country for more than two years before applying for a patent, and must not at any time before application have aban- doned the invention to the public. Public use or sale of an invention by the inventor, or with his knowledge and consent, for more than two years before ap- plication for a patent, is conclusive evidence of abandonment. By '^ public use" is here meant an open use of a completed invention for ordinary purposes of business. Experimental use, for the purpose of testing an invention and discovering what modifications or improvements may be necessary to entire practicability, is not construed as abandonment, even though such use may have been in public and may have been con- tinued for more than two years : Birdsell v. McDonald, 0. G. vol. 6, 682. On the other hand, the public use for more than two years, which will bar the inventor's right to a patent, is not necessa- rily a public use continued during more than two years 5 but any public use of the kind indicated will, notwithstanding it may have l)eeh inextensive and not continued, have that efi'ect, if it occurred more than two years before application. 32 PATENTS, TO WHOM GRANTED. What use for more than two years will be regarded as ex- perimental, and therefore not fatal to the inventor's right, must depend upon such circumstances as the particular character of the invention, its degree of radical novelty, the necessity of lengthened use to test its practicability, the need of a public use for that purpose, the expressed intention of the inventor in causing or allowing the use, and the reservation or non-re- servation of his rights. Similar questions enter into the consideration of how far public use or sale for less than two years can be received, as evidence tending with other circumstances to show abandon- ment. It is never of itself evidence of abandonment, but may be considered in connection with other acts or with declara- tions of the inventor. Abandonment, which may occur at any time, is never pre- sumed except from public use or sale for more than two years before application, and can be otherwise proved only by positive and unmistakable declarations or acts of the inventor, showing his deliberate intention not to claim the benefit of the Patent Law. The burden of establishing by satisfactory evidence the fact that a patented invention was on sale for two years, or was abandoned prior to application, is upon the defendant. Sect. 4899, R. S., provides — That every person who may have purchased of the inventor, or with his knowledge and consent may have constructed any newly-invented or discovered machine, or other patentable article, prior to the application by USE BEFORE APPLICATION. 33 the inventor or discoverer for a patent, or sold or used one so constructed, shall have the right to use and vend to others to be used, the specific thing so made or purchased without lia- bility therefor. The object of this section is to prevent any unjust interference by a patentee with the rights of third par- ties acquired from him, either by positive purchase or implied consent, before his application for a patent^ and is limited to the right to use without liability therefor the particular machine or other thing which they may have bought from him, or with his knowledge and consent have made and pat into use. Mere wrongdoers, those who may have taken advantage of knowledge communicated to them by the inventor, or otherwise acquired from him, to make and use the invention before his application without his knowledge, or though with his know- ledge, yet without his consent, either positive or to be implied from his failure to object or assert his right, are plainly ex- cluded by the language of the section. Such parties become infringers from the moment the patent is granted. 3 34 PATENTS, FOR WHOM GRANTED. CHAPTER III. For what Patents are granted. Patents are granted for any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof. It would seem that the word " manufacture" is used here in the sense of an article of manufacture, a " thing" made or manufactured by hand or by machine, and not itself a *' ma- chine" or a '' composition of matter" in that limited sense in which the latter term is used. The term "art" appears to be intended to cover those inventions which relate to the process of manvifacture, i, e., of reducing materials by hand or by machine into a form or condition fit for use, but which are not susceptible of being classed as machines. A ** process" is not named by the law as the subject of a patent, but is included under the general term " useful arc." An art may require one or more processes or machines in order to produce a certain result or manufacture : Corning v. Burden^ 15 Howard 267. The term •' machine'^ includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result ; Ids DISCOVERIES — NEW PRINCIPLE. 35 The term " composition of matter/' as distinguished from the term ^'manufacture," appears to designate especially those compounds, chemical or mechanical, which are used in medicines or in the arts : Curtis on Patents 28. It will be noticed that the statute expressly includes not only new arts, manufactures and compositions of matter, but improvements upon existing subjects of any of these classes. From the context, it is evident that the word ^^ discovery^' in this section is used, not in its ordinary sense as applied in science. A discovery of a scientific truth, a law of nature, a property of matter, is not in itself patentable, but a patentable discovery is one which is usefully applied, and the patent is based upon the useful application made of it in some art or manufacture or in some mechanical construction. Patents are granted, not for ideas merely, however valuable, but for things or modes. This explains from one point of view the common saying that '* principles" are not patentable, i. e., they are not patentable as abstracted from means by which they are made to answer some useful purpose in the practical arts. '^ A mere abstract principle is unsusceptible of appro- priation by patent. The applicant must show how the princi- ple is to be used and applied to some useful purpose:" Evans V. Eaton, Pet. C. C. 341, 342. '' In its .naked, ordinary sense, a discovery is not patenta- ble. 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 36 PATENTS, FOR WHAT GRANTED. of the new principle, force or law, and connected it with some particular medium, or mechanical contrivance, by which, or through which, it acts on the material world, that he secures 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 embraces 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 and eludes his grasp :'^ Morton v. iV". Y, Eye Infirm- ary, 2 Fisher 320. The patent in the last-cited case was for the famous and valuable discovery of the efifect of sulphuric ether in produc- ing nervous quiet and insensibility to pain, especially during surgical operations. The specification admitted it to be well known that the substance had a peculiar effect upon the nervous system, when breathed or introduced into the lungs of an animal, but claimed that it had not been known prior to the discovery of the patentee that the inhalation of such vapors would produce insensibility to pain. This, the specification stated, was the discovery •, and the combining it with, or apply- ing it to, any operation of surgery, constituted the invention, no special or new means of administering the vapor being claimed. The court said, '' it is not important to inquire here whether this was the discovery of an increased and more perfect effect, or of an entirely new effect. The effect discovered was prO' DISCOVERIES — PRINCIPLES. 37 duced hy old agents ^ operating by old means upon old subjects. The effect aloDe was new, and to that only can the term dis- covery apply." '^ The inhalation of the ethers had long been known. By increasing their quantity it was discovered that a new or more complete effect was produced by which the sub- ject was rendered wholly insensible. This can be no more patentable than the discovery that increased quantity of liquors taken into the stomach would produce a like result. In both cases there is only a naked discovery of a new effect, resulting from a well-known agent, working by a well-known process. The effect is a temporary suspension of sensibility and motion in the animal body. Here what is new in the alleged inven- tion begins and ends. The fact that the surgeon can operate upon the body in the condition to which it is thus reduced, forms no part of the invention or discovery. ^^ This case, as thus presented in the opinion of the court, furnishes £i forcible illustration of the case of an abstract dis- covery, most valuable, yet not patentable. That in a certain general sense it was an improvement in the art of surgery, in the same sense that an improved lancet or saw might be, did not avail, for, as pointed out by the court, the patentability of an invention or discovery must depend upon its intrinsic novelty, irrespective of the use to which it may be applicable. " It can borrow no element of patentability from the art in which it is designed to be used, except the element of utility. The sole element of novelty in the case, therefore, was the dis- covery of the new or greater effect produced, not by any new instrument by which the agent is administered, nor by any 38 PATENTS, FOR WHAT GRANTED. different application of it to the body of the patient, but simply by the inhalation of an increased quantity of the vapor/' *^ Even this quantity is to be regulated by the discretion of the operator and may vary with the susceptibilities of the patient to its influence. It is nothing more in the eye of the law, than the application of a well-known agent, by well-known means, to a new or more perfect use, which is not sufficient to support a patent." The doctrine seems to be indicated in this decision that a patentable discovery must be one which also involves inven- tion in the sense of devising either new means or some special adaptation of existing means for the practical application of the discovery. But in Foote v. Silsbi/, 2 Blatch. 260, the court said : ^' Where a party has described a new application of some pro- perty in nature never before known or in use, by which he has produced a new and useful result, the discovery is the subject of a patent independent of any new or peculiar arrangement of machinery for the purpose of applying the new property in nature ; and hence the inventor has a right to use any means, old or neio, in the application of the new property to produce the new and useful result, to the exclusion of all other means. Otherwise a patent would afford no protection to an inventor in cases of this description ; because, if the means used by him for applying his new idea must necessarily be new, then, in all such cases, the novelty of the arrangement used for the purpose of effecting the application would be involved in every instance of infringement, and the patentee would be bound to PRINCIPLE, FIRST APPLICATION OF. 39 make out not only the novelty in the new application, but also the novelty in the machinery employed by him in making the application. Novs^, in this case, as I understand the claim of the patentee, h^ claims the application of the principle of ex- pansion and contraction in a metallic rod to the purpose of re- gulating the heat of a stove. This is the new conception which he claims to have struck out ; and, although the mere abstract conception would not have constituted the subject- matter of a patent, yet when it is reduced to practice by any means old or new, resulting usefully, it is the subject of a patent, independently of the machinery by which the appiica- cation is made. I think, therefore, that in examining the first question presented to you, you may lay altogether out of view the contrivance by which the application of the principle is made, and confine yourselves to the original conception of the idea carried into practice by some means ; hut whether the means be old or new is immaterial^ for although old means he used for giving application to the new conception^ yet the patent excludes all persons other than the patentee from the use of those means and of all other means in a similar application.^^ Similar doctrine has been enunciated by the English courts in Househill Company v. Neilson, Webster's Patent Cases, and in sundry other cases. In Parker v. Hulme, 1 Fisher 44, the court said : ** The pro- pulsive effect of the vortical motion of water in a re-action wheel, operating by its centrifugal force, and so directed by mechanism as to operate in the appropriate direction, is patent- able." He who first discovers that a law of nature can be ap- 40 PATENTS, FOR WHAT GRANTED. plied to produce a particular result, and having devised machin- ery to make it operative, introduces it to the knoAvledge of his fellow men, is a discoverer and inventor of the highest grade. lie may assert and establish his property, not only in the formal device for which mechanical ingenuity can at once, as soon as the principle is known, imagine a thousand substi- tutes ; but in the essential principle which his machine was the first to embody, to exemplify, to illustrate, to make opera- • tive and to announce to mankind. This is not to patent an abstraction, but rather the invention as the inventor has given it to the world in its full dimensions and extent. In Detmold v. Reeves^ 1 Fisher 127, the court said : ^'he who has discovered some new element or property of matter, may secure to himself the ownership of the discovery as soon as he has been able to illustrate it practically and to demonstrate its value. His patent in such case will be commensurate with the principle which it announces to the world, and may be as broad as the conception itself Narrower doctrine, however, appears in the opinion of the Su- preme Court in Le Roy v. Tatham^ 14 How. 175. *^ A principle in the abstract,^' said the court, " is a fundamental truth, an origi- nal cause, a motive ; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered, as steam, electricity, or any other power of nature. In all such cases the processes used to extract, modify and concentrate natural agencies, constitute the invention. The elements of the power exist 5 the invention is not in discovering them, but in applying PRINCIPLE, FIRST APPLICATION OF. 41 them to useful objects. The rigid of the inventor is secured against all who use the same mechanical power^ or one substan- tially the same/^ In O'Beilly v. Morse^ 15 How. 120, the eighth claim of the patent was, " I do nob propose to limit myself to the specific machinery, or parts of machinery, described in the specification, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-mag- netism, however developed, for marking or printing intelligible characters, signs or letters, at any distances, being a new appli- cation of that power, of which I claim to be first inventor or discoverer." In regard to this claim the court said, *' The pro- sions of the Acts of Congress in relation to patents may be summed up in a few words. Whoever discovers that a certain useful result will be produced in any art, machine, manufac- ture or composition of matter, by the use of certain means, is entitled to a patent for it, provided he specifies the means used in a manner so fall and exact that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void, and if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination, or by the application of discoveries or princi- ples in natural philosophy, known or unknown before bis in- 42 PATENTS, FOR WHAT GRANTED. vention, or by machinery acting altogether on mechanical principles. In either case, he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infring- ing the patent, if he uses means substantially different from tbose described. Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification further than to say that he had discovered that, by using the niotive-power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands that no patent could have issued on such a speci- fication. Yet this claim can derive no aid from the specification filed. It is outside of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above mentioned were a sufficient description and entitled him to a patent in terms equally broad. In our judg- ment, the Act of Congress cannot be so construed.'^ If, as the two decisions last quoted appear to hold, the dis- coverer of a new application of a principle, force, or property of matter to a useful purpose in the arts, can obtain a patent only for the means or mode which he may have described for effecting such application, or their mechanical equivalents, it is pretty clear that the Patent Laws are inadequate for the pro- tection of some of the very highest and most valuable concep- tions. The consequence of such doctrine must be as indicated in Silsbi/ V. Foote, that ^' there must be novelty in the means, or the patent will be bad ; while, if the means be new, the patent PRINCIPLE, FIRST APPLICATION OF. 43 is effective only to protect the discoverer in a monopoly of " the formal device for which mechanical ingenuity can at once, as soon as the principle is known, imagine a thousand substi- tutes/' If the particular means or method employed be old in itself, the patent may be obnoxious to the charge of being merely the putting of an old thing to a new use. Thus in the case of Le Roy V. TatJianij it appeared that the mechanism which the patentees used for the practical application to the art of mak- ing lead pipe of their valuable discovery of a new property in lead, was not in itself substantially new. A good illustration of the point under discussion is furnished by the patent in McChirg v. Kingslaiid, 1 Howard 202, which was for a mode of casting chilled rollers and other metal cylinders and cones. In casting such articles it was desirable to give to the molten metal, as it was introduced into the mould a whirl or rotary motion, so that the dross would be thrown into the centre instead of the surface of the cylinder. This effect it was customary to produce by stirring the molten metal. But the inventor, a workman in a foundry, observed, in pumping water into a bucket, that the water en- tering at and tangent to the circle of the bucket acquired a circu- lar motion, diminishing as it approached the centre, where bits of straw and other lighter materials would be concentrated. It struck him that the application of this principle or law of na- ture might be beneficially made to the casting of rolls by intro- ducing the metal at the bottom of the mould at a tangent. The thought once suggested required little or no skill or invention 44 PATENTS, FOR WHAT GRANTED. to put into practice; all that was required was to change the direction of the gate which conveyed metal to the mould from a horizontal or perpendicular position to an angular one, but it was none the less a striking and valuable improvement in the art of casting rolls, and the patentable element was the application of this natural law to a useful purpose in the arts. The mere mechanical change involved in carrying out this conception, might be regarded as not in itself constituting invention, the application of the principle was the only sub- stantial novelty. Clearly, in such a case, to require that the means employed shall themselves be novel and patentable, and that the claim shall be confined to them, would operate very unjustly. The doctrine most consonant with the general object and spirit of the Patent Law would seem to be that in cases involv- ing the discovery and first application of a particular princi- ple to the efiecting of a useful result in the arts, there should be virtually a patent for the application of the principle, as it is expressed in the English case of Forsyth v. Riviere, Web. P. R. 97 : "A person who discovers a principle, and also some mode of carrying that principle into practice so as to produce or attain a useful effect or result, is entitled to protection against all other modes of carrying the same principle into practice for obtaining the same effect or result.'^ MACHINES, ARTS, PROCESSES. 45 CHAPTER IV. For what Patents are Granted. Abstractions are not patentable, whether they be termed "principles," " functions'^ or modes of operation. Thus in Burr V. Duryee, 1 Wallace 531, the claim of the patent was for *' the mode of operation, substantially as herein described, of forming bats of fur fibres of the required varying thickness, from brim to tip, which mode of operation results from the combination of the rotating picking mechanism, or the equiva- lent thereof, the pervious, ' former,' and its exhausting mechan- ism, or the equivalent thereof, and the means for directing the fur-bearing current, or the equivalent thereof, as set forth. ^' The Supreme Court commented upon this form of claim as *^ an attempt to convert an improved machine into an ab- straction, a principle or mode of operation, or, a still more vague and indefinite entity, an idea." The actual invention was an improved machine for making hat bodies, and the court said '' a machine is a concrete thing, consisting of parts, or of certain devices and combinations of devices. The principle of a machine is properly defined to be its. mode of operation, or that peculiar combination of devices which distinguish it from other machines. A machine is 46 PATENTS, FOR WHAT GRANTED. not a principle or an idea. Because the law requires a patentee to explain the mode of operation of his peculiar machine, which distinguishes it from others, it does not authorize a patent for a mode of operation as exhibited in a machine/' In considering whether in any given case there is a patenta- ble invention, or assuming that there is such, in what way it is to be claimed, great care and discrimination are very frequently required. The classification of the statute is any new and useful art, machine, manufacture, or composition of matter, or improve- ment thereof. The subject of a patent must be either a new thing, or a new mode of action, in the practical arts, not an abstract result, effect or function. What are termed functional claims, i. e., claims for the necessary functions of specified devices, or combinations of devices, are bad. If the devices, or combinations, be new, they are the proper subjects of claim; in such a case function or effect is the consequence, not the substance, of the invention. " It is for the discovery of some practical method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself:" Corning v. Burden^ 15 Howard 268. Portions of this decision have been construed to mean that there cannot be a patentable mechanical process ; that if a re- sult is effected by mechanism, the patent must necessarily be for the machinery. From this it would necessarily follow that, however useful the result, and novel the process in itself, if DOUBLE USE. 47 the machinery were not substantially new, there could be no patent. But a process may be invented which, while involving the use of some, may be effected, by a variety of mechanism, or which, while possible to be carried on by hand, may be more advantageously effected by machinery. That such processes, to which particular mechanism, old or new, may be incidental, are patentable, irrespective of the machinery employed, cannot be doubted. And there seems to be no good reason why a process, which may involve the use of particular old mechan- ism, being in fact the case of a new use of old machinery, should not be patentable. It is plain that in such a case there cannot be a patent for a machine, or improvement thereof, and the only alternatives therefore are, that a discovery or inven- tion of perhaps the greatest merit and importance, must go unrewarded, or the patent must be for a process, or rather for an improvement in that art to which the actual discovery may relate. At this point, we naturally come to the consideration of ^ most important question, that of the patentability of a new use of an old thing, or rather of the use of an old device, ma- chine or process for the attainment of a new result. This involves what is known as the doctrine of '' double use." The doctrine of double use is illustrated by the case of Hoive V. Abbott^ 2 Story 190, The claim of the patent was for a pro- cess of preparing a durable curling " palm leaf or brub grass by reducing the leaf to small filaments or fibres, and likewise spinning, baking or steaming and twisting the same." The defendant used a portion only of the whole process 48 PATENTS, FOR WHAT GRANTED. claimed, and it was proved that the same process, so far as regarded the part of it used by defendant, had, prior to the patentee's invention, been applied to hair-stuffing for mattresses. The court held that the mere application of an old process to the manufacture of an article to which it had never been ap- plied is not a patentable invention, adding that it was precisely the same as if *' a coffee-mill were for the first time used to grind corn." In Bean v. SmaUwood, 2 Story 408, the court said *' a machine, apparatus or other mechanical contrivance, in order to give the party a claim to a patent therefor, must in itself be substantially new. If it is old and well known, and applied to a new purpose, that does not make it patentable, A cotton- gin apparatus, applied without alteration to clean hemp, would not give a title to the gin as new." Where the invention consisted in introducing a wire into the head of a paint-can, to give strength and prevent the walls from collapsing, and a similar wire was proven to have been previously used in ice-cream freezers, the court remarked that *' if a can so constructed was old as a structure, it was of no con- sequence what substance was or was not intended to be car- ried or contained within it :" Brown v. Hallj 3 Fisher 531. Patents are granted for new ** things" or *' modes of action" and not for the particular result or effect which the patentee may contemplate attaining thereby. The inventor of a ma- chine has made it for all the uses to which it is applicable, and no one can obtain a new patent for the machine by applying it to a new use : Conover v. Roach, 4 Fisher 12 ; Woodman v. Simpsonj 3 Fisher 98 ; but in this last case the court took DOUBLE USE. 49 occasion to suggest that, though a party who should discover, for example, that a machine for rubbing or pebbling leather would be equally good to rub pasteboard or something else, could not therefore obtain a patent for a new machine ; he might perhaps obtain a patent for an improvement in the art of manufacturing pasteboard. The proposition, that to use a machine for a different pur- pose from that for which it has before been used, does not make the machine a new one, in a patentable or any other sense, is obvious enough, and even when changes in or additions to the machine are made, to adapt it to its new use, they must be such as to involve in themselves the exercise of invention, as distinguished from ordinary skill and judgment, to afford basis for a " machine " patent. If a machine, although designed to separate smut from wheat, embodies the principle of a machine afterwards patented to separate flour from bran, and without the exercise of invention could be changed so as to perform the same functions as the latter, in substantially the same way, the patent would be void : Swift V. Whisen, 3 Fisher 343. That is to say, the particular use to which it may be put has no bearing whatever upon the patentability of a machine ; that must depend upon the essential novelty of its construction and mode of operation. In Tucker v. Spalding^ 0. G. vol. 1, 144, the patent was for an improvement in saws, and consisted substantially in the use of detjachable teeth, secured in sockets in the saw plate. A patent had previously been granted for a new and useful method of se- 4 50 PATENTS, FOR WHAT GRANTED. curing cutters to rotary disks for the purpose of cutting tongues and grooves, mortices, &c., the mode of attaching the cutters being substantially the same as plaintiflPs. The Circuit Court rejected this patent as evidence of prior invention, seemingly on account of the different use, and because no mention was made in the prior patent of the adaptability of the instrument as a saw. But the Supreme Court said, ''if what it actually did is in its nature the same as sawing, and its structure and action suggested to the mind of an ordinarily skilful mechanic this double use, to which it could be adapted without material change, then such adaptation to the new use is not a new in- vention," and this, as a question of fact, should have been submitted to the jury. In Piper v. Moore et al.^ 0. G. 4, a claim for preserving fish or other articles in a close chamber by means of a freezing mixture, having no contact with the atmosphere of the pre- serving chamber substantially as set forth, was held to be an- swered by a process in previous use for preserving ice-cream by the means and under the conditions specified. In N. W, Fire Extinguisher Co. v. Philadelphia Fire Extin- guisher Co, 0. G., vol. 6, 34, a patent for apparatus in which the acid and alkaline solutions for forming carbonic acid gas were kept separate until required to extinguish a fire, when they could be readily nringled, was held void on its appearing that similar apparatus had been employed in soda fountains for the supply of beverages. But it is by no means the case that there cannot be a patent for the use of an old contrivance for a new purpose, under any NEW USE OF OLD SUBJECTS. 51 circumstances, or that all such cases come in the category of *' double use." A mode of distinction between such cases as are patentable and such as are not is indicated in Tucker v. Spalding. If what the machine or process did before was in its nature the same as the new use, and the character of the machine or process be such as to suggest to the mind of one skilled in the art adapt- ability to the new use without material change, then such adaptation is not a patentable invention. If there be a mate- rial change in the process or machine to adapt it to its new use, there is patentable invention, and in judging as to what may be a material change in such cases, attention being had to the essentiality of the change to effect the new purpose, and appa- rently slight departure from, or addition to, the old conditions of the machine or process may confer patentability. But the use of old machines or processes, without material change, may it seems be patentable as an improvement in an art, if the new use be not so analogous to the old as to be within the judgment of one skilled in the art. "' To support the argument of non-patentability of a process by reason of double use, it must be shown that the process de- scribed in the specification was known as a process before the patent was issued, and that it had been applied in the same way to some use cognate to that to which the patentee applies it:-' Roberts v. Dickey, 1 0. G. 4. In the case of The National Filtering Oil Co. v. Arctic Oil Co., 1 Fisher 514, a patent for refining coal oil or petroleum by filtering it through bone-black was sustained, notwithstanding 52 PATENTS, FOR WHAT GRANTED. prior printed publications stating that animal charcoal was useful for rendering filthy water inodorous 5 and for depriving rancid oils of smell and taste ; and for removing color from water or oils, since — said the court — it was impossible to tell, without experiment, whether coal oil or petroleum could be filtered through bone-black at all, much less so as to produce a useful efi'ect. This case may seem to carry to an extreme point the patenta- bility of the application of an old thing or process to a new use. Where old machines or processes are used to produce a new efi'ect differing in kind from any produced before by the same or similar machines or processes, the essence of the discovery or invention is evidently in the new application, and the case is one of a new art, or an improvement in an art. To many such cases the term " new process'' is applied, so that this word is made to signify not a " mode of treatment" intrinsically new, but " a mode of treatment new as regards the particular art concerned, or material dealt with." Questions somewhat similar are presented where the alleged novelty of an invention consists in the substitution of one material for another, in the construction of some known arti- icle of manufacture, or device. In Hotchkiss v. Greenwood^ 11 Howard 266, the patented invention as claimed was the manufacturing of knobs, attached to their spindle in a particular way, of potter's clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning and glazing. The only novelty SUBSTITUTION OF MATERIAL. 53 involved was the substitution in the manufacture of door-knobs of a particular construction, of potter's ware or procelain for the glass, wood, brass and other materials previously used for the purpose. The mode of attaching the knob to the spindle appeared to be old in itself, and it also appears that other construction of door-knobs had previously been made of porcelain. The Su- preme Court held that the patent did not disclose a patentable invention, although the change of material produced a better and cheaper knob. In considering the effect of this case, however, it is to be observed that the patentee does not seem to have had the merit of being the first to suggest the applicability of pottery ware or porcelain to the manufacture of any kind of door-knobs, but only to knobs constructed or rather attached to their spin- dle in a particular way, which way was old. In Hicks v. Kelsey^ 18 Wallace 670, the patent was for an improved wagon reach. Previously these had been made of wood, strengthened by straps of iroo. The patentee made the curve of his reach of iron, thereby gaining undoubtedly in strength, while the ends, for the sake of lightness, were of wood alone. The Supreme Court, recognising no substantial change in the mode of construction or operation or effect of the reach as being- involved in the case, and regarding the alleged inven- tion as consisting of the mere substitution of a particular mate- rial for another material which had previously been used for the same purpose in the same way, held the patent invalid. This case may be regarded as going a little farther than 54 PATENTS, FOR WHAT GRANTED. that of HotcJiJciss v. Greenwood, inasmuch as it does not appear to have been shown that iron had previously been used in any structure of the same class performing a similar office. The court said the use of one material instead of another in constructing a known machine is in most cases so obviously a matter of mere mechanical judgment and not invention, ^' that it cannot be called invention unless some new and useful result, an increase of efficiency or a decided saving in the operation, is clearly attained." And, in referring to the case before them, they add, '' some evidence was given to show that the wagon reach of the plain- tiff 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 cheap in the end than those made of beech and pine, but the first application of hickory to the purpose would not therefore be patentable." It is clear that to make the substitution of one material for another in a given structure patentable, there must be some- thing more than a mere substitution, some new result beyond excellence of construction, and something either in the result or mode of application indicative of the exercise of more than skillful selection. As mere changes of material are not patentable, so also with mere changes in the form or structure of machines or device ; that is, such changes as are not attended with any new or improved result, or do not involve a new mode of operation. EQUIVALENTS. 55 The change may be an improvement in one sense of the word, in the same sense that a mere substitution of metal for wood may be, i. e., in excellence of construction, but there must be something more in order to constitute patentable invention. The statute provides for patents for improvements in old machines, as well as for machines entirely new. In either case, the inventor is entitled to a patent covering not only the pre- cise devices or forms which he may specify, but such as can be substituted therefor by one skilled in the art, from his know- ledge of the art, without the exercise of the inventive facul- ties : Johnson v. Root^ 1 Fisher 351 ; Burden v. Corning, 2 Fisher 447. This is what is called the doctrine of equivalents, the word equivalent being used in a broader sense than its tech- nical meaning among mechanics. ^* The doctrine of the use of mechanical -equivalents is not confined to those elements which are strictly such in the science of mechanics. There are different well-known devices, any one of which may be adapted to effect a given result according to the judgment of the constructor. The mere substitution of one of these for an- other does not belong to the subject of invention, but of con- struction : Foster v. Moore, 1 Curt. 294 ; and in Smith y. Down- ing, 1 Fisher 64, mechanical equivalents are defined as meaning the substitution of merely one mechanical power for another, or one obvious and customary mode for another of effecting a like result. But in determining what are or what are not mechanical equivalents, reference must be had not merely to the function 56 PATENTS, FOR WHAT GRANTED. or office of the machine or device, but to the way in which it is designed to perform that function. The ^' principle" of a new machine, or of an improvement therein, consists of those pecu- liarities of construction and mode of operation which consti- tute its distinguishing character, and equivalents must be such things as can be substituted without material departure from this ^' principle." '^ To assume that every combination of devices in a machine which is used to produce the same effect, is necessarily an equivalent," is a flagrant abuse of the term ** equivalent" [Bxirr v. Duryee)^ and in Cahoon v. Ring^ 1 Fisher 397, an equivalent is defined as meaning *' something that does the same thing in substantially the same way." COMBINATIONS. 57 CHAPTER Y. For what Patents are Granted. Most inventions relating to machines, or improvements in machines, as well as many of those which are to be classified as '* manufactures/' belong to the class known as combina- tions. A machine is essentially a combination of devices, and if at all complex in character, as if the functions of a number of devices are necessary to produce a given efi"ect upon the material which the machine is to operate on, and the material is to undergo successive changes from the operation of the ma- chine, a number of combinations may be involved in one machine. And there may be a combination between several machines, as well as between several parts of one machine : Barrett v. Eall, 1 Mass. 474 ; Evans v. Eatoii, 3 Wheat. 454. A combination in the sense of the patent law does not mean simply a collection or aggregation of parts, nor does the mere fact that an improved result may follow from a new aggrega- tion of old elements or devices make a patentable combination. The rule is thus stated by the Supreme Court in Hailes et al. v. Van Woermer et al.j 5 0. G. 89; "A new combination is patentable if it produces a new result, although all the ele- ments were previously known and in use, but the result must be something additional to the results which were separately 58 FOR WHAT PATENTS ARE GRANTED. produced complete before by the different parts ; a mere aggre- gation of those results is not such a new result, and does not render a combination legitimate. No one can prevent others from using certain specified devices, either singly or together, because he was the first to use them together, unless he thereby produced a new and useful result which was due to the joint action of the constituent parts, and was not merely an aggre- gate of the effects which were produced by those parts when operating by themselves.^' That is, to bring together the best points of several machines or articles of manufacture, so as to produce a machine or manu- facture uniting their several excellencies, does not make a patentable combination, except some result further than this be attained, a result the consequence not of the character of the parts individually considered, but of their co-operation. " To select the best elements previously embodied in similar articles, and embody them in one which is superior only be- cause the best elements are united in it, may be a meritorious exercise of judgment, but involves no invention ; the whole is a mere aggregate of devices, and not a legitimate combination, and is not patentable :'' John H. Coes, 6 0. G. 1. A patentable combination is one of which the several parts co-operate to produce a certain result, not that their operation must be simultaneous, but they must co-operate in the sense that the function of each part aids and is aided by those of the other parts. " A combination is legitimate when all the elements co- operate in producing a result, and are necessary to it, though COMBINATIONS. 59 their several functions are not performed simultaneously ; if performed in immediate succession it is sufficient :" Birdsell v. MeDonald et al., Birdsell v. The Ashland Machine Co. et ah, 6 0. G. 682. The doctrine on the subject is clearly stated in Forhush v. Cook, 2 Fisher 669. " To make a valid claim for a combination, it is not neces- sary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributes to pro- duce some one practical result, vrhich result, when attained, is the product of the simultaneous or successive action of all the elementary parts vievred as one entire v^hole, a valid claim for thus combining those elementary parts may be made.^^ That is, a patentable combination involves some one result, which must be that of the combination as a whole, an entirety. A combination may consist of elements themselves new, or of some new and some old, or all the elements may be old. In either of the first two cases, the new elements may themselves be patented, as well as the combination of them ; but in the last case there can of course be a patent only for the combina- tion. Whether, the elements be new or old is not material to the question of the patentability of a combination. If the com- bination is new, viewing it as an entirety, i. e., if there has not exist.ed before an assemblage, similar or substantially so, of the same or substantially the same devices, accomplishing the same 60 PATENTS, FOR WHAT GRANTED. or substantially the same result, in the same or substantially the same way, there exists a patentable combination. As it is expressed in Watson v. Cunningham^ 4 Fisher 528, *^ a combination is to be regarded as a unit, and if all its essen- tial elements have not before been embodied and employed together, it is to be taken as an original invention." As has been before observed, a machine or article of manu- facture may embrace several combinations, and these may be capable either of being used together, or some may be used without the others, or with substitutes for them. Although each of such combinations may be in itself a patentable improvement, yet if all are embodied or susceptible of embodiment in one machine, or article of manufacture, they may be included in one patent, and made the subject of several claims. Although in relation to the question of novelty, a combina- tion is to be viewed in its entirety, to ascertain the character of that entirety, reference must be had to the character, num- ber and mutual relation of its component parts. As a patentable combination must have some one given result or ofl&ce, which result or office must be the consequence of the co-operation of all the parts, the question of identity, or difference of two combinations, must depend upon whether they bring about the same result, by the co-operation of the same or similar parts, so arranged as to co-operate in the same or a substantially similar way. They may obtain the same result and yet be very different ; nor is the possession of similar co-operative parts decisive COMBINATIONS. 61 evidence of identity, for they may be so differently arranged as to co-operate differently. Thus, inquiry must be directed first to the result, and next to the number, character and mutual relation of parts con- tributing to the result. A different result indicates different means ; but a like result is also consistent with very different means, and patents are granted not for results, but for means of obtaining them. As to the number of parts : a combination of say three ele- ments is not the same as a combination which, employing two of the same elements, dispenses with the third : Gould v. Rees^ 15 Wallace 187. As to the character and mutual relation of the parts : two combinations are not the same, if one substantially differs from the other in any one of its parts. In Prouty v. Ruggles^ 16 Peters 341, where the patent was for the combination of certain parts of a plow, the Supreme Court said, " None of the parts are new and none are claimed as new, nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all arranged and combined together in the manner described, and this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the plow in the manner therein described, is stated to be the improvement, and is the thing patented. The use of any two of these parts only, or of two combined with a third, which is substantially different in form, or in the 62 PATENTS, FOR WHAT GRANTED. manner of its arrangement and connection with the others, is therefore not the thing patented;" and in Brooks v. Fiske, 15 Howard 212, the court said, " if a combination has three dif- ferent known parts, and the result is proposed to be accom- plished by the union of all the parts arranged with reference to each other, the use of two of these parts only, combined with a third which is substantially different in the manner of its arrangement and connection with the others, is not the same combination and no infringement." And in Fames v. Godfrey^ 1 Wallace 79, '' where a patent is for a combination of distinct and designated parts, it is not infringed by a combination which varies ffora that patented in the omission of one of the opera- tive parts, and the substitution therefor of another part, sub- stantially different in construction and operation, but serving the same purpose." These decisions show that a patentable combination implies a given number of parts of a given character, co-operating in a given way to the attainment of a given result. And as there cannot be a patent for a result, neither can there be a patent covering any and every mode of combining certain elements for the attainment of a result. In Case v. Browrij 2 "Wallace 230, the claim was *' in combination with a corn-plant- ing machine that is constantly moved over the ground and drops the grain intermittently, the so combining of two slides, one of which is at or near the said hopper, and the other at or near the ground, or their equivalents, with a lever, as that the operator or attendant on the machine can open said slides at COMBINATIONS. 63 the proper time to deposit the seed and prepare a new charge by the double dropping herein specified.'' Literally construed, this claim would have covered any mode of combining the two slides with the corn-planting machines and with any lever, so as to produce the effect or result described. The Circuit Court, however, charged that the claim was to be construed as for a combination, of which a lever of the de- scribed mode of connection and operation with the slides was an essential part, and this ruling was affirmed by the Supreme Court. In brief, a patentable combination must be a definite or- ganism of definite parts, having a defined relation to and mode of co-operation with each other. It is not to be understood, however, that the patentee of a combination is confined to an assemblage of the precise parts which he may have specified. He is entitled to the equivalents of those parts, and what is understood by the word " equiva- lents" in this connection is thus stated by the Supreme Court, in Seymour v. Osborne, 11 Wallace 876, and Gould v. Bees, 15 Wallace 187 : " A combination is not infringed unless by a ma- chine containing all the material ingredients patented, or proper substitutes for one or more of such ingredients, well known to be such at the time when the patent was granted. An alteration in a patented combination, which merely substi- tutes another old ingredient for one of the ingredients in a patented combination, is an infringement of the patent if the substitute performs the same function, and was well known at the date of the patent as a proper substitute for the omitted in- 64 PATENTS, FOR WHAT GRANTED. gredient ; but the rule is otherwise, if the ingredient substituted was a new one, or performs a substantially different function, or was not known at the date of the plaintiff's patent as a proper substitute for the one omitted from his patented combination." Stated briefly, this doctrine of equivalents, as applied to the case of a combination, appears to be that devices which will perform substantially the same function in the combination are equivalent, providing they are known as such at the time of the patent. Devices which will not perform the same func- tion in the combination are not equivalents, whether known or not at the time of the patent, nor unless known at that time will they be regarded as equivalents, though they perform the same function. In the language of the court, in Gould v. Rees, ''inventors of combinations may claim equivalents as well as any other class of inventors, and they have the same right to suppress every subsequent improvement, not substantially different from what they have invented and secured by Letters Patent ; but they cannot suppress subsequent improvements, which are substantially different from this invention, whether the new improvement consists in a new combination of the same ingredients or of some newly-discovered ingredients, or even of some old ingredients performing some new function, not known at the date of the Letters Patent, as a proper substitute for the ingredient withdrawn." In speaking of the result or function of a combination, a com- plete or commercially useful result is not necessarily meant. '' The patentee of a machine by which an article is fabricated ARTICLES OF MANUFACTURE. 65 may distribute the several mechanisms embodied in it into groups, each embracing such as co-operate in producing a definite eiBPect upon the material, although no one of them is capable of any commercially useful result by itself; and the conjoined operation of every one or an equivalent is necessary to accomplish the object :" Wells v. Jacques j 5 0. G. 364. Thus, as stated at the beginning of this chapter, a number of combinations contained in one machine or organization may be made the subjects either of several patents or of several claims in one patent. Patentable manufactures, i. e., articles of manufacture, are 8uch as in themselves involve invention and novelty, and are distinguishable from other manufactures of the same class Their patentability in no way depends upon the method of pro- ducing them ', that may be old, but if the article produced possesses in itself novel characteristics, and is useful, it may be patented. Lacking these requisites, however, it cannot be patented as a new thing, because it may have been produced by new instrumentalities or process. Product and process are entirely independent, and neither can borrow patentability from the other, but must, to be patentable, possess the requisite properties of novelty, utility, and invention, as distinguished from mere, s^ill or judgment. So the greater utility of an article of manufacture, unless that utility depend upon defina- ble intrinsic differences of structure or composition, is not evidence of patentability. In the case of The Milligan atentable, what is, 47-54. Drawings, when requisite, 71. to accompany caveats when practicable, 142. Employer and employee, relation of in respect to invention, 24-25. Equity, bill in, in case of rejected applicatian, 88. to annul interfering patent, 99-100. court of, may award dam acres, 134. of patents in limiting grants to first inventors, 12, 13. suit in, for infringement, 133, 134. INDEX. 15T Equivalents, doctrine of, as applied to composition of matter, 68. in case of combination, what are, 63, 64. of devices or things described and claimed by the patentee covered by the patent, 55, what are, 55-56. Error, writ of, 139. Evidence, caveats as, 143, 144. Examiners, duties of, 84-85. in chief, appeal to, 85. Examiner of Interferences, duties of, 96-98. Examination, official, of application for patent, 84-95. official, restricted as a rule to prior patents and printed publica- tions, 90. Executor. See Administrator. Experiment, philosophical, held no infringement, 131. crude and imperfect, do not entitle to a patent, 20. Experimental use for more than two years before application, not a bar to a patent, 32. Fee, final, to be paid within six months after allowance of patent, 95. Fees, table of, 152. First to apply for patent considered first inventor, in absence of testi- mony, 98. Foreign patent, effect of, on application, 72-73. prior invention will not defeat United States patent, unless patented or published, or known to patentee at the time of his application : Sec. 4923, R. S., 29-30. vessels, use of patented inventions on, 131. Forfeited application, 95. Form, mere, changes of, not patentable, 54. Fraudulent use of patent marks, penalty for, 140. Functional claims, bad, 46. Government does not guarantee validity of patents, 101. Grant of exclusive right, difference between, and assignment, 116. meaning and effect of, 118. must be recorded (see Assignment), 119. no particular form required, 118, 119. Grantee of exclusive right can file disclaimer, 103, 105. may sue for infringement, or give exclusive license, 118, 134, 135. Improvements on existing subjects, patented or not, are themselves patentable, 68. patent for, does not entitle patentee to use the original without consent, 69, 129. Infringements, 127-132. action for, in what courts brought, 132. defences to, 136-138. action on the case for, 132-133. 158 INDEX. Infringements, by making, using or selling, 127-129. not avoided by addition or improvement, 129. of combination, 128. design patents, 147. one of several claims, action may be sustained for, 129. patentee, assignee or grantee of exclusive right may sue for, 134, 135. restrained by injunction, 133. sale by sheriff of materials of patented machine is not, 130. sale or use of product of patented machine is not, 131. substantial identity, 130, 131. suits for, can be brought by executor or administrator, 135. suit in equity for, 133-134. to make without using, 127. court may treble damages for, 132-133. Infringer cannot defend on the ground of fraud in obtaining re-issue, 112. Infringers, jointly and severally liable, 127-128. Injunction, granted by United States courts of equity, to restrain in- fringement, 133. preliminary, grant of, discretionary with court, 138. when granted, 138. Interference, cannot be declared between a patent and application for re-issue of earlier patent, 111. concession of priority in, 98. examiner, duties of, 96-98. not authorized for purpose of determining questions of abandon- ment or public use, 90-91. preliminary, 97. proceedings in, 96-99. testimony in, 97-98. Interfering applications, 96-99. patents, 99, 100. Introductory, 9. Invention, not abstract conception, subject of patent, 13. abandonment of, what is, and how proved, 31, 32. future not assignable, 115. incomplete, caveat not conclusive evidence of, 143. may be assigned before patent, 113-115. perfection of, means making it capable of practical use, 26. prior, defence of, what is meant by, 27-29. to defeat or bar a patent, must have been reduced to practice, 21. abroad, not patented or published, will not defeat United States patent, 29. reasonable diligence in perfecting, what is, 25, 26. relation of employer and employee in regard to, 24, 25. 159 Invention, to be patentable must not have been known or used before by • others in this country, or patented abroad, or described in any publication, 20, 27. to be patentable, must be useful, 20. what constitutes in the sense of intellectual conception, 23. Inventor, first is he who first perfects with reasonable diligence; if not, a later inventor who may be first to reduce to practice, 26. to make oath or afl&rmation, 71. what is required of him in making application, 70-75. License, assignable only as an entirety, 120, 121. confined to a certain person or place to be exercised only by grantee or in that place, 121. exclusive, and grant of exclusive right, diiSference between, 120. kinds of, 120. need not be recorded, 120. not assignable unless expressly made so, 120. purchase of does not estop licensee from averring and proving invalidity of patent, 122. to use one machine implies right to build it and repair it, 121. Licensee cannot sue in his own name, 135. when estopped by covenants and recitals in license from con- testing validity of patent, 122. when he may be treated as infringer, 121, 122, 128, 129. who is, 120. Machine, meaning of word in statute, 34. new, or improvements on old, patentable, 34. principle of, what is, 78. Manufacture, articles of, what are patentable, 65. what the meaning of the word in statute, 34. Marking pa.tented articles, effect of neglect, 139. what required, 139. Material, mere substitution of one for another not patentable, 52-54. Models, 71. Monopolies, abolition of, 10. difference between, and patents, 11, 12. statute of, 10. Neglect in filing a disclaimer, what is, and what is not, 104. unreasonable, in filing disclaimer, effect of, 103. New matter, not part of original invention, not admissible in re-issues, 106-108. Notice of special matter of defence, 135-137. Novel invention, what is, 20. Novelty of invention necessary to patent, 19, 34. Oath, before whom it may be taken, 71. for caveat, 142. or affirmation of invention, what it must include, 71, 72. Patent Act of 1790, 11. 160 INDEX. Patent Act of 1793, 11. 1836, 11. 1870, now in force, 11. application for, 70-95. to be made by inventor, if living; if dead, by executor or administrator, 19. assignment of, 116, 117. cannot cover any and every mode of combining certain elements to attain a result, 62. grant of, raises presumption that patentee is inventor of per- fected and useful invention, 21. granted to assignees of inventor or discoverer, 19. interfering, bill in equity to annul, 99. laws, power of Congress to enact, 11. purport of, 18. marks, fraudulent use of, 139, 140. may contain as many claims as there are novel points in the in- vention, 82. meaning of, 91. not anticipated by rejected and abandoned application, 94. not for abstract inventions, but for embodied inventions, 13. not invalidated by the invalidity of one of several claims, 82. prior invention which will defeat must have been reduced to practice, 21. recital of, that applicant has complied with provisions of the law, conclusive in absence of fraud, 74. re-issued, effect and operation of, 112. for the unexpired term of original patent, 106. right to, lost by abandonment of invention, or public use or sale for more than two years before application, 19, 31, 32. second for same invention, when may issue, 99. surrender of, takes effect on grant of re-issue, 112. when validity of may be inquired into by state courts, 135. Patentable combination, what is, and what is not, 57-65. may consist of new or old parts, 59. invention, one perfected and adapted to use, 20. new use of old device or process, one not analogous to previous uses of the same device or process, 51. subjects, new and useful arts, machines, manufactures, or com- positions of matter, or improvements thereof, 19, 34. Patented article must be marked, 139. articles, marking of, 139. neglect to mark, 139. purchasers of, 124-126. Patentee of combinations entitled to equivalents, 63. Patents and capital, 17, 18. as promoters of the useful arts, 15-17. 161 Patents, defective, remedies for, 101-112. duration of, 113. design, 146. equity of, in limiting grant to first inventors, 12, 13. for articles of manufacture, 65-67. combination, 57-65. defeated by what prior use, 27, 28. for composition of matter, 67, 68* designs, 146, 151. discoveries, 35-44. improvements, 68, 69. must be distinctly limited to the improve- ments, 69. do not entitle patentee to use the original in- vention without consent, 69. for inventions previously patented abroad, 72, 73. what granted, 34, 69. government does not guarantee validity of, 101. granted for useful inventions, 20. new things or processes in the practical arts, 46. to inventors and discoverers, 19. interfering, 99, 100. cancellation of either or both may be decreed by court having jurisdiction, 100. justice and utility of, 13-17. may be obtained by aliens, 20. not granted for abstract " principles or functions," 45. to be considered monopolies in the odious sense of the word, 12. obtainable by bill in equity, 88. of monopoly, 10. origin of, 9. to whom granted, 19-33. when may be re-issued in several divisions, 110, 111. Penalty for fraudulent use of patent marks, 139, 140. Perfected invention, caveat not evidence of, 144. Perfecting invention with reasonable diligence necessary to preserve rights, 22-26. invention means completion so as to be of some practical utility, 26. Philosophical experiment, held no infringement, 130. Practice, reduction to, 21-29. Preliminary injunction, grant of, discretionary with eourt, 138. when granted, 138. interference, 97. ' questions decided by commissioner, 87. statement in interference, 97. 11 162 Preliminary statement not evidence for party making it, 98. Principles, abstract, not patentable, 35. first application of, 38-44. Prior invention, defence of, what is meant by, 27-29. knowledge and use abroad will not of themselves defeat a patent, unless patented or published, or known to patentee at the time of making application: Sec. 4923, R. S., 29, 3a. patent or printed publication, requisite character of, to defeat patent, 30, 31. use not by the public generally, but in public by a single per- son, sufficient to defeat a patent, 28. use to defeat a patent must have been in manner accessible to the public, 27. Priority, concession of, interferences, 98. Privileges, exclusive, at common law, 9. Processes, new, patentable, whether carried on by tand, or old or new mechanism, 47. patentable, included under general term " useful art,*' 34. Purchasers of patented articles under extended term, 125. Product of patented machine, sale or use of, no infringement if product is not patented, 130. Protection afforded by caveats, 144, 145. Publication (printed), here or abroad prior to invention, a bar to a patent, 20-27. prior printed, means work intended for and made accessible to public, 30-31. Public use for more than two years before application for patent, effect of, and what is, 31, 32. use, interference not declared to inquire intoy 90, 91. Purchaser, of invention, before application for patent, rights of, 33. patented articles, rights of, 124-126. machine by sheriff's sale does not by purchase take right to use, 131. Reasonable diligence in perfecting invention, meaning of, 25, 26. Recording assignment, not pre-requisite to operation, 119". Reduction to practice, 21-29* Re-issue, 106-112. application cannot be put in interference with a later patent. 111. model and drawings not to be altered excepting each by the other, 110. applications to undergo examination. 111. as a remedy for claims too broad, 106, 107. defective and insufficient specification, 108. fraud in obtaining cannot be set up as a defence in action for infringement, 112. 163 Re-issue, inventor must make application for^ if living, unless patent assigned prior to July 8th 1870, 110. of patent, abandonment of all claim under original, 112. remedy for claim too limited, 107, 108. specificjation must not contain new matter not part of original invention, 106-108. to be for same invention as described in original patent, 106-111. to what eases applicable, 106-108. Re-issued patent, effect and operation of, 112. patents granted for the unexpired term of original patent, 106. in several divisions may be granted for distinct and separate parts of the thing patented, 110, 111. patent pre&umed by the courts to be for the same invention as the original, unless clearly repugnant as matter of legal con- struction, 112. Rejection, notice of, ta be given ta applicant, *84:, 85. of application, 85. Rejected application, prosecution of by bill m equity, 8S, 89. Remedies for defective patents, 101-112^ Renewal of caveat, 142. applications, 93, 91. Rights of purchaser, before application for patent, 32, 33, to patent lost by abandonment, or public use or sale for more than two years before application, 19, 31, 32. of inventor, referred to time of conception if perfected and adapted to use with reasonable diligence, 22. Sale by sheriff does not confer right on purchaser to use patented ma- chine, 131. of m*aiterials of patented machines is no infringement, 131. infringement by, 127. Specifications and claims, 76-83'. construed by the courts liberally, 79, 80. defective remedy by re-issue, 106. in case of machine mrust explain principle and best mode of applying principle, 78, 79. must unable those skilled in the art to make the invention, 77. must not conceal anything necessary to carry out the invention, 77. need not detail those things within the ordinary knowledge of those billed in the art, 77. need not be intelligible to the members of the public generally, 77. of re-issued patent, not to contain new matter, 106-108. re-issue when new matter admissible on proof satisfactory to commissioner, 110. Spcciftcation, vague or erroneous, as a whole, is bad, 80. 164 INDEX. State courts have jurisdiction of actions upon contracts concerning patents, where parties are residents of same state, 135. no jurisdiction in actions for infringements, 135. when they may inquire into validity of patent, 135. Statute of monopolies (English), patents for new inventions excepted from, 10. Substitution, mere, of one material for another, not patentable, 52-54. Suits for infringement, 134. may be brought by executor or administrator, 134. Supreme Court, District of Columbia, appeals to, 85. United States, appeals to, 1.S8. Surrender of patent takes effect on grant of re-issue, 112. Testimony in interference cases, 97, 98. Use, double, what is, 47-50. infringement by, 127. new, of old things, when not patentable, 47-50. of patented article by purchaser, 124-126. Useful arts, patents as promoters of, 15-17. meaning of, as regards design patents, 148-151. Utility, capability of being used, 21. of invention necessary to patent, 20. Validity of patents not guaranteed by government, 101. Vessels, foreign, use of patented inventions on, 130. Witnesses in interference cases, 97. Witness in interference cases not compelled to disclose secret inven- tion of his own, 97* THE END. gOl 'q -ji- • »> ' • ^ ^. Deacidified using the Bookkeeper process. O S^ ^J^/OTTPz^ *^ Neutralizing agent: Magnesium Oxide ^^ A **gl^M^^^n^^ Treatment Date: Sept. 2003 xO-^i. o PreservationTechnologies A WORLD LEADER IN PAPER PRESERVATION 1 1 1 Thomson Park Drive P.ranhisrrv/ TruA/nchin PA IfinRfi s.-^ ^^B^"' ',*°'S. "^P^'° *>•* %„ '*^!^''' „o r WERT ^^, BOOKBINDING Granrville. Pa tuly — Aug 1%7 .0^ ^ - • • - a\