An assignment of a patent right, made and recorded in the Patent
Office before the patent issued, which purported to convey to the
assignee all the inchoate right which the assignor then possessed,
as well as the legal title which he was about to obtain, was
sufficient to transfer the right to the assignee, although a patent
afterwards was issued to the assignor.
When an assignment is made under the fourteenth section of the
act of 1836 of the exclusive right within a specified part of the
country, the assignee may sue in his own name, provided the
assignment be of the entire and unqualified monopoly. But any
assignment short of this is a mere license, and will not carry with
it a right to the assignee to sue in his own name.
Therefore, an agreement that the assignee might make and vend
the article within certain specified limits, upon paying to the
assignor a cent per pound, reserving, however, to the assignor the
right to establish a manufactory of the article upon paying to the
assignee a cent per pound, was only a license, and a suit for an
infringement of the patent right must be conducted in the name of
the assignor.
Where a person had made and used an article similar to the one
which was afterwards patented, but had not made his discovery
public, using it simply for his own private purpose, and without
having tested it so as to discover its usefulness, and it had then
been finally forgotten or abandoned; such prior invention and use
did not preclude a subsequent inventor from taking out a
patent.
The defendant in error who was plaintiff in the court below
brought an action against Gayler and Brown the plaintiffs in
Page 51 U. S. 478
error, for an alleged infringement of a patent right for the use
of plaster of Paris in the construction of fire-proof chests.
In the declaration it was averred that one Daniel Fitzgerald was
the original and first inventor of a new and useful improvement in
fire-proof chests or safes, and that letters patent were granted
him therefor bearing date 1 June, 1843. The patent was in the usual
form, and was set out in the declaration, the specification annexed
to which was as follows:
"
To all whom it may concern:"
"Be it known that I, Daniel Fitzgerald, of the City, County, and
State of New York, and a citizen of the United States, have
discovered and made an improvement, new and useful, in the
construction of iron chests, or safes, intended to resist the
action of fire, and for the safe-keeping and preserving books and
papers, and other valuables, from destruction by fire, which I call
a Salamander safe or chest."
"The following is a full and exact description of the safe or
chest, with my improvement combined therewith:"
"I make two iron chests, in the common and ordinary way of
making iron chests, which is well known to those engaged in this
branch of business, one smaller than the other, which, when the
safe is put together, forms the inner chest, or inner part of the
safe. The other chest is made about three inches larger than the
inner one, and so as, when put together, it will form the outer
part or crust of the safe, and leave a space between the inner and
outer chests of the safe of about three inches, which space may
vary a little, more or less, when the chests are put together, but
should be the same all round, and in every direction. The inner and
outer doors, where two doors are used, are prepared in the same
way, leaving a space, as above, between the inner and outer crust
of each door, which space is left for a like purpose with that left
between the inner and outer chest of the safe. Where one door is
used, it should be made in the same manner, leaving a like space
between the inner and outer crust or face of the door, and for a
like purpose, and should be fitted to the chest or safe with great
accuracy. The edges and openings for the doors are to be neatly
finished, as in other chests. I then take plaster of Paris or
gypsum, and, having boiled it or baked it in an oven, and calcined
it, and reduced it to a powder, I mix it with water till it is
about the consistency of cream or thin paste, so fluid as that it
may readily be poured into the space left as above to receive it,
and I then fill all the space with the plaster of Paris, putting in
some sheets of mica between the inner and outer chest, to aid, if
necessary, in checking the progress of the heat. "
Page 51 U. S. 479
"But where pains are taken to have all the space left for the
purpose properly filled with the plaster of Paris, as above, so
that when set it will expand and adhere firmly to the surrounding
parts, and completely fill the whole space, and all the cracks and
joints, the mica may be dispensed with, and every other substance,
and the plaster may be used alone. It may also be reduced to a
powder, without being prepared as above, and used in that state,
but I have not found it as good."
"The inner case or chest may be made of wood instead of iron, as
for a bookcase, and if the space left between that and the outer
chest be filled in the manner and with the materials above named,
it will make a very durable safe, that will effectually resist the
fire, as I have found by experience, but the safe may not be so
strong or durable, though somewhat cheaper."
"The above composition or preparation of gypsum may be mixed
with several other articles not contrary to its nature, with a view
to increase its efficacy in resisting the action of fire, but from
my experience I doubt if they have much effect. The gypsum alone,
when properly prepared, and properly placed in the space left to
receive it, and made to fill it completely, is quite sufficient to
resist, for a long space of time, the most intense heat. The
chemical properties of this article are such, that, by the
application of intense heat, it imparts a vapor or gas, or some
other properties, which effectually stay the progress of the fire,
and arrest the influence and effects of the heat; this I have
ascertained by various experiments; and I believe I am the first
man that discovered the utility, and devised the method of applying
gypsum, or plaster of Paris, to increase the safety of an iron
chest. I am not aware that this article was ever used for the
purposes above set forth, until I used it in the manner above
described."
"I therefore claim as my discovery and invention and
improvement, the application and use of plaster of Paris or gypsum
in its raw state or prepared as above, either alone or with mica,
in the construction of all iron chests or safes in the manner above
described or in any other manner substantially the same."
"DANIEL FITZGERALD"
"Witnesses:"
"G. H. PATTERSON"
"BEVERLEY R. HENSON, Jr."
It was also averred in the declaration that before the date of
said letters patent, to-wit, on 7 April, 1839, the said Daniel
Fitzgerald made an assignment, which was duly recorded in the
Patent Office of the United States, on 1 June, 1839, as
follows:
Page 51 U. S. 480
"Whereas I, Daniel Fitzgerald, of the City, County, and State of
New York, have invented certain improvements in safes, which
invention I call the 'Salamander safe,' for which I am about to
make application for letters patent of United States."
"And whereas E. Wilder, of New York aforesaid, has agreed to
purchase from me all right and title, and interest which I have or
may have in and to the said invention in consequence of the grant
of letters patent therefor, and has paid to me, the said
Fitzgerald, the sum of five thousand dollars, the receipt whereof
is hereby acknowledged, "
"Now this indenture witnesseth that for and in consideration of
the said sum to me paid, I have assigned and transferred to E.
Wilder aforesaid the full and exclusive right to all the
improvements made by me, as fully set forth and described in the
specification which I have prepared and executed preparatory to
obtaining letters patent therefor. And I hereby authorize and
request the Commissioner of Patents to issue the said letters
patent to the said E. Wilder and his legal representatives."
"In testimony whereof, I have hereunto set my hand, and affixed
my seal this 11 April, 1839."
"DANIEL FITZGERALD [SEAL]"
"Witnesses:"
"OWEN G. WARREN"
"CHARLES H. FOSTER"
The declaration then proceeded as follows:
"And the said plaintiff further saith that the said Enos Wilder,
in his lifetime, after the making of the said assignment by the
said Daniel Fitzgerald to the said Enos Wilder as afore mentioned
and before the committing of the several grievances hereinafter
mentioned, to-wit, on the first day of September, in the year of
our Lord 1843, and within the Southern District of New York
aforesaid, did execute a certain instrument or agreement to the
said plaintiff whereby the said Enos Wilder, in consideration of
the agreement made with the said plaintiff, and of one dollar to
him, the said Enos Wilder, in hand paid by the said plaintiff,
bargained, sold, conveyed, and assigned to the said plaintiff all
the right, title, and interest of him, the said Enos Wilder, in and
unto the patent granted to the said Daniel Fitzgerald, for an
improvement in fire-proof safes and chests by the use of prepared
gypsum, dated June 1, 1843, and of which patent he, the said Enos
Wilder, was the sole owner and assignee, as will appear by the
records of the Patent Office, and which patent he, the said Enos
Wilder, had good right to sell and convey to the said plaintiff, to
be by him, the said plaintiff, held as his own property, free from
all
Page 51 U. S. 481
claims from the said Enos Wilder or anyone claiming under him,
the said Enos Wilder, as by the said instrument or agreement,
sealed with the seal of the said Enos Wilder, ready in court to be
produced, will, reference thereunto being had, fully and at large
appear."
This last-mentioned instrument was averred to have been recorded
in the Patent Office of the United States on 10 October, 1843.
It was then averred that by virtue of the last-mentioned
instrument, plaintiff became, and ever since hath been, sole owner
of said improvement &c., yet, the defendants well knowing
&c.
The defendants pleaded the general issue, and gave notice that
they would offer evidence that Daniel Fitzgerald was not the first
and original inventor of the improvement patented.
The bill of exceptions was as follows:
"
BENJAMIN G. WILDER v. CHARLES J. GAYLER AND LEONARD
BROWN"
"Be it remembered that, on the trial of the aforesaid issue, the
plaintiff, to maintain the same, after having read said patent in
evidence as set forth in the declaration, read the following
conveyance and agreement, which was duly recorded, and a copy of
which was, at the date of said patent, endorsed on the same,
viz.:"
"[Here was inserted the conveyance from Fitzgerald to Enos
Wilder of 11 April, 1839, already set out in full in the
declaration.]"
"And thereupon the defendants insisted that said instrument did
not convey the legal title of said patent to the said Enos Wilder,
and that, upon such conveyance, he could not have brought a suit on
the same, but said court decided that said instrument operated to
convey the interest in said patent to said Enos Wilder, so that
during his life he could have maintained an action at law on the
same, to which opinion of said court the counsel for the defendants
then and there excepted."
"
1st Exception"
"And the plaintiff then read the conveyance from said Enos
Wilder to him, as stated in his said declaration, which he insisted
made out a right in him to sustain his aforesaid action, but the
defendants, to show that, after the date of the conveyance to the
plaintiff, and before he commenced this action, he made, executed,
and delivered to Silas C. Herring, Esq., the following agreement
and conveyance, namely:"
" Benjamin G. Wilder agrees with Silas C. Herring to grant to
him the sole and exclusive right to make the safe, called the
Page 51 U. S. 482
Salamander safe, according to the terms and upon the plan
pointed out and described in the patent and specification of Daniel
Fitzgerald, which patent is dated June 1, 1843, and was assigned to
Enos Wilder, and by him to Benjamin G. Wilder, who now owns the
same; and this license is to be for the City, County, and State of
New York, and said Herring is to have and enjoy the full and
exclusive right to make and vend said safes in the City, County,
and State of New York, and nowhere else; the said Herring is to
have the same for the residue of the unexpired term of said patent,
with all the improvements which may be made in the manufacture of
said safes which said B. G. Wilder may have a right to use during
said term, and said Herring agrees that said Wilder may use all the
improvements which he may make or have a right to use during said
term. In consideration whereof, said Herring agrees with said
Benjamin G. Wilder to pay to him, for the use of the right
aforesaid, one cent a pound for each and every pound said safes may
weigh when finished and sold, which sum is to be paid monthly so
long as said patent remains in full force and until the same has
been set aside by the highest court of the United States to which
the same may be carried; but said Herring agrees to pay the one
cent a pound for the space of two years at all events and whether
said patent shall be declared good or not. If sustained, then said
Herring is to pay as aforesaid for the full term as aforesaid. All
the safes so made and sold by said Herring are to have said
Wilder's patent marked thereon, the same as heretofore, in a plate,
or cast in letters, 'Wilder's patent safe.' Said Herring agrees to
keep an accurate account of all the safes by him made or caused to
be made under said contract and patent, with the weight of each
when sold, and the names of the persons to whom sold, and their
places of abode, and to render said account monthly, if so often
called on for it, and to pay accordingly. Said Herring is to
manufacture all the safes he may sell or offer to sell under and
according to said patent, with such improvements as he may have a
right to use, and be marked as above with the words, in large,
legible letters, 'Wilder's patent safe.'"
" Said Wilder reserves to himself the right to manufacture, in
this City and State of New York or elsewhere, safes to sell out of
this state and city, but if sold within this state or city, then
said Wilder is to pay said Herring one cent a pound on each safe so
made and sold within this city or state. Said Wilder is not himself
to set up or establish nor authorize anyone else to set up and
establish any manufactory or works for making Salamander safes or
safes similar to said Salamander safes at any place within fifty
miles of this city. Said
Page 51 U. S. 483
Herring is to make all safes like Wilder's, and not vary in any
substantial part therefrom, with such improvements as may be
added."
" In presence of"
"S. P. STAPLES,
Witness to both signatures"
"New York, January 6, 1844"
" If said patent should not be decided to be good till the end
of three years, then for the time over the two years, till decided
good, said Herring pays nothing. It is further understood and
agreed that all safes made by said Herring or in the making of
which or the selling thereof he shall in any way be directly or
indirectly concerned, consisting of a double case or box with the
intermediate space filled with plaster or any nonconducting
substance, shall be considered within this agreement, and be paid
accordingly."
"B. G. WILDER"
"SILAS C. HERRING"
"(Received and recorded 30 January, 1844)"
"
2d Exception"
"And thereupon the defendants insisted that the plaintiff had
parted with all his interest in said patent by virtue of said
agreement, so that he could not sustain his aforesaid action. But
said court decided that the plaintiff had not in and by said
agreement so far parted with his interest in said patent as to
deprive him of the right to sustain his aforesaid action, to which
opinion of said court the defendants did then and there
except."
"
3d Exception"
"And the defendants then and there objected that the invention
and improvement set forth and claimed in said patent as the
invention of the patentee was not the subject of a patent; that it
was the mere application of an old, well known material to a new
purpose, which they insisted could not be the subject of a patent.
But said court overruled said objection and instructed the jury as
herein set forth, to which, as well as to the said instructions to
said jury, the defendants excepted."
"And the plaintiff, to maintain his aforesaid issue, called
sundry witnesses to prove, and claimed that he had proved, that he
made the discovery which was the foundation of his invention and
improvement as early as some time in the year 1830, that he made
experiments in various ways, to test the utility of his discovery
and improvement at different times in the different years from 1830
to 1836, when he applied for his
Page 51 U. S. 484
patent, and that he pursued with due diligence that application
until he obtained his aforesaid patent, and that the delay which
had arisen in obtaining said patent was not caused by the fault or
negligence of the patentee, or his assignee, Enos Wilder, nor
anyone else, but arose from the burning of the Patent Office and
other causes not under the control of the applicants for the
patent, and that the defendants had infringed said patent as set
forth in said declaration."
"And the defendants introduced evidence to prove and claimed
that they had proved that said Daniel Fitzgerald was not the first
and original inventor of what he claimed in said patent as his
improvement. Among other witnesses, James Conner testified that,
between 1829 and 1832, he was engaged in business as a stereotype
founder and, knowing that plaster of Paris was a nonconductor of
heat, he constructed a safe with a double chest, and filled the
space between the inner and outer one with plaster of Paris -- the
same, substantially, as testified to and claimed by Fitzgerald,
except there was no plaster used on the top of the safe. It was
made for his own private use in his establishment, and was used by
him as a safe from the time it was made till 1838, when it passed
into other hands. It was kept in his counting room while he used
it, and known to the persons working in the foundry."
"This testimony was confirmed by his brother, John Conner,
except that he fixes the time of constructing the safe in the year
1831 or 1832. But one safe was made by Conner, and since it passed
out of his hands he has used others of a different
construction."
"The defendants also claimed that if said Daniel Fitzgerald was
the first and original inventor of said improvement, as he claimed,
yet that he had made said iron safes, and sold them, under such
circumstances as that he had thereby abandoned the same and
suffered the same to go into public use in such manner as to lose
all right to said invention and improvement, if any he ever
had."
"And the court thereupon instructed the jury that if they found
that Daniel Fitzgerald, the patentee, was the first and original
inventor of the said improvement claimed in said patent, and that
the use of plaster of Paris, in combination with and in the
construction of an iron safe, is new and useful, as in the
specification of said patent is set forth and claimed, then they
would find that the patent was valid, and protected the invention
and improvement as claimed, unless the plaintiff or those under
whom he claimed had abandoned said improvement to the public and
suffered the same to go into public use before the application for
said patent, of which facts the jurors were the judges. "
Page 51 U. S. 485
"And said court further instructed said jury that if they found
that the use made by James Conner of plaster of Paris was confined
to a single iron chest, made for his own private use after said
Fitzgerald's discovery and experiments, then it was not in the way
of Fitzgerald's patent, and the same was valid, but if the jury
found that said James Conner made his said safe as claimed, and
tested it by experiments before Fitzgerald's invention and
improvement and before he tested the same, then said Fitzgerald was
not the first inventor, as claimed, and was not entitled to said
patent."
"The court further charged that, independently of these
considerations, there was another view of the case as it respected
the Conner safe: that it was a question whether the use of it by
him and been such as would prevent another inventor from taking out
a patent; that if Conner had not made his discovery public, but had
used it simply for his own private purpose, and it had been finally
forgotten or abandoned, such a discovery and use would be no
obstacle to the taking out of a patent by Fitzgerald or those
claiming under him if he be an original, though not the first,
inventor or discoverer of the improvement."
"
4th Exception"
"And said court, in summing up said case to said jury, further
instructed them that if they found that Daniel Fitzgerald was the
first and original inventor of said improvement, as set forth in
said patent, and had not abandoned or dedicated the same to the
public, but had with reasonable diligence pursued his invention
till he had perfected the same, and used due diligence in applying
for, and in pursuing his application for a patent, until he
obtained the same, and if they found the defendants had made and
sold safes, as charged in the plaintiff's declaration, then they
would find their verdict for the plaintiff for such actual damages
as they judged just and reasonable; but if they found otherwise,
then they would find for the defendants. To each and all of these
instructions given to the jury the counsel for the defendants
excepted."
"And forasmuch as the facts aforesaid and the decisions of the
court thereon do not appear of record, the defendants pray that
this their bill of exceptions may be allowed."
"Filed 23 February, 1848."
"S. NELSON [SEAL]"
Page 51 U. S. 492
MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.
Three objections have been taken to the instructions given by
the circuit court at the trial, and none of them is perhaps
entirely free from difficulty.
The first question arises upon the assignment of Fitzgerald to
Enos Wilder. The assignment was made and recorded in the Patent
Office before the patent issued. It afterwards issued to
Fitzgerald. And the plaintiffs in error insist that this
Page 51 U. S. 493
assignment did not convey to Wilder the legal right to the
monopoly subsequently conferred by the patent, and that the
plaintiff who claims under him cannot therefore maintain this
action.
The inventor of a new and useful improvement certainly has no
exclusive right to it until he obtains a patent. This right is
created by the patent, and no suit can be maintained by the
inventor against anyone for using it before the patent is issued.
But the discoverer of a new and useful improvement is vested by law
with an inchoate right to its exclusive use, which he may perfect
and make absolute by proceeding in the manner which the law
requires. Fitzgerald possessed this inchoate right at the time of
the assignment. The discovery had been made, and the specification
prepared to obtain a patent. And it appears by the language of the
assignment that it was intended to operate upon the perfect legal
title which Fitzgerald then had a lawful right to obtain, as well
as upon the imperfect and inchoate interest which he actually
possessed. The assignment requests that the patent may issue to the
assignee. And there would seem to be no sound reason for defeating
the intention of the parties by restraining the assignment to the
latter interest and compelling them to execute another transfer
unless the act of Congress makes it necessary. The Court thinks it
does not. The act of 1836 declares that every patent shall be
assignable in law, and that the assignment must be in writing and
recorded within the time specified. But the thing to be assigned is
not the mere parchment on which the grant is written. It is the
monopoly which the grant confers -- the right of property which it
creates. And when the party has acquired an inchoate right to it,
and the power to make that right perfect and absolute at his
pleasure, the assignment of his whole interest, whether executed
before or after the patent issued, is equally within the provisions
of the act of Congress.
And we are the less disposed to give it a different construction
because no purpose of justice would be answered by it, and the one
we now give was the received construction of the act of 1793 in
several of the circuits, and there is no material difference in
this respect between the two acts. As long ago as 1825, it was held
by Mr. Justice Story that in a case of this kind, an action could
not be maintained in the name of the patentee, but must be brought
by the assignee. 4 Mason 15. We understand the same rule has
prevailed in other circuits, and if it were now changed, it might
produce much injustice to assignees who have relied on such
assignments, and defeat pending suits brought upon the faith
Page 51 U. S. 494
of long established judicial practice and judicial decision.
Fitzgerald sets up no claim against the assignment, and to require
another to complete the transfer would be mere form. We do not
think the act of Congress requires it, but that when the patent
issued to him, the legal right to the monopoly and property it
created was, by operation of the assignment then on record, vested
in Enos Wilder.
The next question is upon the agreement between the defendant in
error and Herring. Is this instrument an assignment to Herring for
the State or City of New York, upon which he might have sued in his
own name? If it is, then this action cannot be maintained by the
defendant in error.
Now the monopoly granted to the patentee is for one entire thing
-- it is the exclusive right of making, using, and vending to
others to be used, the improvement he has invented, and for which
the patent is granted. The monopoly did not exist at common law,
and the rights, therefore, which may be exercised under it cannot
be regulated by the rules of the common law. It is created by the
act of Congress, and no rights can be acquired in it unless
authorized by statute and in the manner the statute prescribes.
By the eleventh section of the act of 1836, the patentee may
assign his whole interest or an undivided part of it. But if he
assigns a part under this section, it must be an undivided portion
of his entire interest under the patent, placing the assignee upon
an equal footing with himself for the part assigned. Upon such an
assignment, the patentee and his assignees become joint owners of
the whole interest secured by the patent, according to the
respective proportions which the assignment creates.
By the fourteenth section, the patentee may assign his exclusive
right within and throughout a specified part of the United States,
and upon such an assignment the assignee may sue in his own name
for an infringement of his rights. But in order to enable him to
sue, the assignment must undoubtedly convey to him the entire and
unqualified monopoly which the patentee held in the territory
specified -- excluding the patentee himself, as well as others. And
any assignment short of this is a mere license. For it was
obviously not the intention of the legislature to permit several
monopolies to be made out of one, and divided among different
persons within the same limits. Such a division would inevitably
lead to fraudulent impositions upon persons who desired to purchase
the use of the improvement, and would subject a party who, under a
mistake as to his rights, used the invention without authority, to
be harassed
Page 51 U. S. 495
by a multiplicity of suits instead of one, and to successive
recoveries of damages by different persons holding different
portions of the patent right in the same place. Unquestionably a
contract for the purchase of any portion of the patent right may be
good as between the parties as a license, and enforced as such in
the courts of justice. But the legal right in the monopoly remains
in the patentee, and he alone can maintain an action against a
third party who commits an infringement upon it. This is the view
taken of the subject in the case of
Blanchard v. Eldridge,
J. W. Wallace 337, and we think it the true one.
Applying these principles to the case before us, the action was
properly brought by the plaintiff below, and could not have been
maintained by Herring.
The agreement is singularly confused and complicated. It
purports to grant to Herring the exclusive right to make and vend
the Salamander safe in the City, County, and State of New York, and
Herring agrees to pay to the defendant in error a cent a pound for
every pound the safes might weigh, to be paid monthly. But at the
same time it reserves to Wilder the right to set up a manufactory
or works for making these safes in the State of New York, provided
it is not within fifty miles of the city, and to sell them in the
State of New York, paying to Herring a cent a pound on each safe so
sold within the state.
It is evident that this agreement is not an assignment of an
undivided interest in the whole patent, nor the assignment of an
exclusive right to the entire monopoly in the State or City of New
York. It is therefore to be regarded as a license only, and under
the act of Congress does not enable Herring to maintain an action
for an infringement of the patent right. The defendant in error
continues the legal owner of the monopoly created by the
patent.
The remaining question is upon the validity of the patent an
which the suit was brought.
It appears that James Conner, who carried on the business of a
stereotype founder in the City of New York, made a safe for his own
use between the years 1829 and 1832 for the protection of his
papers against fire, and continued to use it until 1838, when it
passed into other hands. It was kept in his counting room and known
to the persons engaged in the foundry; and after it passed out of
his hands, he used others of a different construction.
It does not appear what became of this safe afterwards. And
there is nothing in the testimony from which it can be inferred
that its mode of construction was known to the person into whose
possession it fell, or that any value was attached
Page 51 U. S. 496
to it as a place of security for papers against fire, or that it
was ever used for that purpose.
Upon these facts, the court instructed the jury
"That if Connor had not made his discovery public, but had used
it simply for his own private purpose, and it had been finally
forgotten or abandoned, such a discovery and use would be no
obstacle to the taking out of a patent by Fitzgerald or those
claiming under him, if he be an original, though not the first,
inventor or discoverer."
The instruction assumes that the jury might find from the
evidence that Conner's safe was substantially the same with that of
Fitzgerald, and also prior in time. And if the fact was so, the
question then was whether the patentee was "the original and first
inventor or discoverer" within the meaning of the act of
Congress.
The Act of 1836, ch. 357, § 6, authorizes a patent where the
party has discovered or invented a new and useful improvement, "not
known or used by others before his discovery or invention." And the
15th section provides that if it appears on the trial of an action
brought for the infringement of a patent that the patentee "was not
the original and first inventor or discoverer of the thing
patented," the verdict shall be for the defendant.
Upon a literal construction of these particular words, the
patentee in this case certainly was not the original and first
inventor or discoverer if the Conner safe was the same with his and
preceded his discovery.
But we do not think that this construction would carry into
effect the intention of the legislature. It is not by detached
words and phrases that a statute ought to be expounded. The whole
act must be taken together, and a fair interpretation given to it
neither extending nor restricting it beyond the legitimate import
of its language and its obvious policy and object. And in the 15th
section, after making the provision above mentioned, there is a
further provision that if it shall appear that the patentee at the
time of his application for the patent believed himself to be the
first inventor, the patent shall not be void on account of the
invention or discovery's having been known or used in any foreign
country, it not appearing that it had been before patented or
described in any printed publication.
In the case thus provided for, the party who invents is not
strictly speaking the first and original inventor. The law assumes
that the improvement may have been known and used before his
discovery. Yet his patent is valid if he discovered it by the
efforts of his own genius, and believed himself to be
Page 51 U. S. 497
the original inventor. The clause in question qualifies the
words before used, and shows that by knowledge and use the
legislature meant knowledge and use existing in a manner accessible
to the public. If the foreign invention had been printed or
patented, it was already given to the world and open to the people
of this country, as well as of others, upon reasonable inquiry.
They would therefore derive no advantage from the invention here.
It would confer no benefit upon the community, and the inventor
therefore is not considered to be entitled to the reward. But if
the foreign discovery is not patented nor described in any printed
publication, it might be known and used in remote places for ages,
and the people of this country be unable to profit by it. The means
of obtaining knowledge would not be within their reach, and as far
as their interest is concerned, it would be the same thing as if
the improvement had never been discovered. It is the inventor here
that brings is to them and places it in their possession. And as he
does this by the effort of his own genius, the law regards him as
the first and original inventor and protects his patent although
the improvement had in fact been invented before and used by
others.
So too as to the lost arts. It is well known that centuries ago
discoveries were made in certain arts the fruits of which have come
down to us, but the means by which the work was accomplished are at
this day unknown. The knowledge has been lost for ages. Yet it
would hardly be doubted, if anyone now discovered an art thus lost
and it was a useful improvement, that, upon a fair construction of
the act of Congress, he would be entitled to a patent. Yet he would
not literally be the first and original inventor. But he would be
the first to confer on the public the benefit of the invention. He
would discover what is unknown, and communicate knowledge which the
public had not the means of obtaining without his invention.
Upon the same principle and upon the same rule of construction,
we think that Fitzgerald must be regarded as the first and original
inventor of the safe in question. The case as to this point admits
that although Conner's safe had been kept and used for years, yet
no test had been applied to it, and its capacity for resisting heat
was not known; there was no evidence to show that any particular
value was attached to it after it passed from his possession or
that it was ever afterwards used as a place of security for papers,
and it appeared that he himself did not attempt to make another
like the one he is supposed to have invented, but used a different
one. And upon this state of the evidence, the court put it to the
jury to say whether this safe
Page 51 U. S. 498
had been finally forgotten or abandoned before Fitzgerald's
invention, and whether he was the original inventor of the safe for
which he obtained the patent, directing them, if they found these
two facts, that their verdict must be for the plaintiff. We think
there is no error in this instruction. For if the Conner safe had
passed away from the memory of Conner himself and of those who had
seen it, and the safe itself had disappeared, the knowledge of the
improvement was as completely lost as if it had never been
discovered. The public could derive no benefit from it until it was
discovered by another inventor. And if Fitzgerald made his
discovery by his own efforts, without any knowledge of Conner's, he
invented an improvement that was then new and at that time unknown,
and it was not the less new and unknown because Conner's safe was
recalled to his memory by the success of Fitzgerald's.
We do not understand the circuit court to have said that the
omission of Conner to try the value of his safe by proper tests
would deprive it of its priority; nor his omission to bring it into
public use. He might have omitted both, and also abandoned its use,
and been ignorant of the extent of its value; yet if it was the
same with Fitzgerald's, the latter would not upon such grounds be
entitled to a patent, provided Conner's safe and its mode of
construction were still in the memory of Conner before they were
recalled by Fitzgerald's patent.
The circumstances above mentioned, referred to in the opinion of
the circuit court, appeared to have been introduced as evidence
tending to prove that the Conner safe might have been finally
forgotten, and upon which this hypothetical instruction was given.
Whether this evidence was sufficient for that purpose or not was a
question for the jury, and the court left it to them. And if the
jury found the fact to be so, and that Fitzgerald again discovered
it, we regard him as standing upon the same ground with the
discoverer of a lost art or an unpatented and unpublished foreign
invention, and like him entitled to a patent. For there was no
existing and living knowledge of this improvement or of its former
use at the time he made the discovery. And whatever benefit any
individual may derive from it in the safety of his papers he owes
entirely to the genius and exertions of Fitzgerald.
Upon the whole, therefore, we think there is no error in the
opinion of the circuit court, and the judgment is therefore
Affirmed.
MR. JUSTICE McLEAN.
I dissent from the opinion of a majority of the judges in this
case. The point of difference, I think, is essential to the
maintenance of the rights of the public and also of inventors.
Page 51 U. S. 499
It was proved by James Conner, as appears from the bill of
exceptions,
"that between 1829 and 1832 he was engaged in business as a
stereotype founder, and knowing that plaster of Paris was a
nonconductor of heat, he constructed a safe with a double chest,
and filled the space between the inner and outer one with plaster
of Paris, the same, substantially, as testified to and claimed by
Fitzgerald, except there was no plaster used on the top of the
safe. It was made for his own private use in his establishment, and
was used by him as a safe from the time it was made till 1838, when
it passed into other hands. It was kept in the counting room while
he used it, and was known to the persons working in the
foundry."
This evidence was confirmed by another witness.
By the sixth section of the patent act of 1836 it is
provided
"That any person or persons having discovered or invented any
new or useful art, machine, manufacture, or composition of matter,
or any new or useful improvement on any art, machine, manufacture,
or composition of matter,
not known or used by others before
his or their discovery or invention thereof"
may apply for a patent &c. The applicant is required to
"make oath or affirmation that he does verily believe that he
is the original and first inventor," &c., "and that he does not
know or believe that the same was ever before known or
used."
The seventh section authorizes and requires the commissioner of
Patents
"to make or cause to be made an examination of the alleged new
invention or discovery, and if on such examination it shall not
appear to the commissioner that the same had been
invented or
discovered by any other person in this country prior to the alleged
invention or discovery thereof by the applicant, or that it had
been patented or described in any printed publication in this or
any foreign country,"
&c., the commissioner may grant a patent.
In the fifteenth section it is provided,
"That whenever it shall satisfactorily appear that the patentee,
at the time of making his application for the patent, believed
himself to be the first inventor or discoverer 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 before been
known or used
in any foreign country, it not appearing
that the same or any substantial part thereof had before been
patented or described in any printed publication."
From the above extracts it is seen that the patentee must be the
inventor of the machine or the improvement of it or he can have no
right. If the thing was known or used by others, he cannot claim a
patent. Or if it was patented in a foreign country or described in
any publication at home or in any
Page 51 U. S. 500
foreign country, he has no right to a patent. To this there is
only the exception in the fifteenth section above cited. But this
can have no influence in the present case.
Let these provisions of the statute be compared with the last
two paragraphs of the charge of the court, as stated in the third
exception:
"And said court further instructed the jury, that if they found
that the use made by James Conner of plaster of Paris was confined
to a single iron chest, made for his own private use after said
Fitzgerald's discovery and experiments, then it was not in the way
of Fitzgerald's patent, and the same was valid; but if the jury
found that said James Conner made his said safe, as claimed,
and tested it by experiments, before Fitzgerald's
invention and improvements,
and before he tested the same,
then said Fitzgerald was not the first inventor, as claimed, and
was not entitled to said patent."
This charge stands disconnected with any other facts in the case
except those named, and in my judgment it is erroneous. If Conner's
safe were identical with Fitzgerald's, and though it was of prior
invention,
yet if it were not tested by experiments before
Fitzgerald's improvement and before he tested the same, the jury
under the instruction were bound to find for Fitzgerald. And the
case was thus made to turn, not on the priority of invention only,
but upon that
and the fact of its having been tested by
experiments. This introduces a new principle into the patent
law. The right under the law depends upon the time of the
invention. An experimental test may show the value of the thing
invented, but it is no part of the invention.
"The court further charged that independently of these
considerations, there was another view of the case as it respected
the Conner safe; that it was a question whether the use of it by
him had been such as would prevent another inventor from taking out
a patent; that if Conner had not made his discovery public, but had
used it simply for his own private purpose, and it had been finally
forgotten or abandoned, such a discovery and use would be no
obstacle to the taking out of a patent by Fitzgerald or those
claiming under him if he be an original, though not the first,
inventor or discoverer of the improvement."
If there be anything clear in the patent law, it is that the
original inventor means the first inventor, subject only to the
provision stated in the fifteenth section. This instruction
presupposes that the safes are the same in principle. Now if the
invention was patented abroad or was described in a foreign
publication, both of which were unknown to the inventor in
Page 51 U. S. 501
this country, still his patent is void. So it is void if such
invention has been known to any person in this country. The
instruction says if Conner's invention "had been forgotten or
abandoned," it was no obstacle to Fitzgerald's right. Can a thing
be forgotten or abandoned that was never known? If known before
Fitzgerald's invention, it is fatal to it. By whom must it have
been forgotten? By the inventor, or the public, or both? And how
must it have been abandoned? When an invention is abandoned, it is
said to be given up to the public, and this is the sense in which
the term abandonment is used in the patent law. Such an abandonment
would be fatal to the right of Fitzgerald.
Conner's safe, as appears from the bill of exceptions, was used
in his counting house, being accessible to everyone, some six or
eight years. In 1838, it passed into other hands, but into whose
hands it does not appear. In 1843, Fitzgerald obtained his patent.
How long before that he made experiments to test the invention is
not proved. At most, the time must have been less than five years.
This is a short period on which to found a presumption of
forgetfulness. The law authorizes no such presumption. It can never
become the law. It is not founded on probability or reason. The
question is was Conner's invention prior to that of Fitzgerald?
That it was of older date by some ten or twelve years is proved.
And the instruction, it must be observed, was founded on the
supposition that both inventions were similar.
The instruction seems to attach great importance to the fact
that Conner's safe was used only for his private purpose. This is
of no importance. The invention is the question, and not the manner
in which the inventor used it. The safe was constructed at the
foundry, and must have been known to the hands there employed. How
can it be ascertained that Fitzgerald was not informed by some of
these hands of the structure of Conner's safe, or by someone of the
many hundreds who had seen it in his counting house in the City of
New York? It was to guard against this, which is rarely if ever
susceptible of proof, that the act is express --
if the thing
patented was known before, the patent is void. If the fact of
this knowledge in anyone be established, it is immaterial whether
the patentee may have known it or not -- it avoids his patent.
The law on this subject is not founded upon any supposed notions
of equity. A foreign patent for the same thing, or a description of
the thing in a foreign publication, is as effectual to avoid the
patent as if the patentee had seen the prior invention. Notice to
him is not important. The law is adopted on
Page 51 U. S. 502
a settled public policy which, while it is just to inventors,
protects the rights of the public. Any other basis would open the
door for endless frauds by pretended inventors, without the
probability of detection. And especially does this new doctrine of
forgetfulness, or abandonment, used in any other sense than as
recognized in the patent law, leaving such matters to a jury,
overturn what I consider to be the settled law on this subject. Of
the same character is the fact that the invention was used for
private purposes. A thing may be used in that way and at the same
time be public, as was the case with the Conner safe, and yet the
jury are necessarily misled by such an instruction.
MR. JUSTICE DANIEL, dissenting.
Differing from the majority in the decision just pronounced, I
proceed to state the grounds on which my dissent from that decision
is founded.
On two essential points in this cause, it seems to me that the
learned justice who tried it at the circuit has erred and that the
decision here should therefore have been for a reversal of his
judgment. Those points involve first the right of the plaintiff
below to maintain his action upon the title or right of action
deduced from Fitzgerald through Enos and Benjamin Wilder, and
secondly a right to, or interest in the subject of the suit on the
part of the plaintiff below, admitting to have been originally
invented and used by some other person than Fitzgerald -- a right
founded upon an assumption that this subject had been used in
private only, or had, in the language of the learned justice, been
"finally forgotten or abandoned" by such first inventor. These
points are presented by the first and third exceptions of the
plaintiffs in error to the rulings at the trial below. The
plaintiff in the circuit court claimed by assignment from B. G.
Wilder, assignee of Enos Wilder, assignee of Daniel Fitzgerald,
alleged to have been the inventor of the Salamander safe. By the
paper deduction of title it appears that, on 11 April, 1839,
Fitzgerald, alleging that he had invented an improvement called the
Salamander safe, for which he was about to apply for letters
patent, for the consideration of five thousand dollars, sold the
interest he then had or might thereafter have in this invention to
Enos Wilder; that Enos Wilder, on 1 September, 1843, for the
consideration of one dollar, assigned and transferred to the
plaintiff all the right, title, and interest which he had derived
from Fitzgerald under the agreement of 11 April, 1839; that no
patent issued for this Salamander safe until the year 1843, when a
patent was granted to Daniel Fitzgerald,
Page 51 U. S. 503
as the original inventor; that no patent for this invention has
ever been granted either to Enos or B. G. Wilder, either as
inventor or assignee of this safe; that the title, whatever it may
be, rests upon the agreement between Fitzgerald and Enos Wilder of
11 April, 1839, before the patent to the former.
It must be recollected, that this is an action at law, and in
order to maintain it, the plaintiff was bound to set out and to
prove
a legal title. Has he done either? What was the
character of the interest or title transferred from Fitzgerald to
Enos Wilder? This could not transcend the interest or title
possessed by Fitzgerald himself, and what was this? A title to any
specific machine which he may have constructed, and of which no
person could rightfully deprive him, and a claim upon the goodwill
and gratitude of the community, if in truth he should have
conferred upon them a benefit by the discovery and construction of
his machine. I speak now in reference to rights derivable from the
common law, and independently of the Constitution or of statutory
provisions. The mere circumstances of inventing and constructing a
machine could no more inhibit its imitation than would the
structure or interior arrangement of a house of peculiar ingenuity
or convenience prevent the like imitation by anyone who could
possess himself of its plan. The mere mental process of devising an
invention enters not into the nature of property according to the
common law; it forms no class or division in any of its
enumerations or definitions of estates or property, and is a matter
quite too shadowy for the practical character of that sturdy
system.
A doctrine contrary to this, though with some discrepancy
amongst the judges as to its extent, seems at one time to have
obtained in the King's Bench, as propounded in the case of
Millar v. Taylor, in 4 Burr. 2305, in opposition to the
profound and unanswerable reasoning of Mr. Justice Yates; but upon
a review of the same question in the Lords, in the case of
Donaldsons v. Becket, the doctrine of the King's Bench was
repudiated and that of the common law, as asserted by Yates,
Justice, vindicated and restored. And indeed if, according to the
opinions of some of the judges in the case of
Millar v.
Taylor, the mere mental process of invention constituted an
estate or property at the common law, and property vested
in
perpetuo, except so far as it should be transferred by the
owner, it is difficult to perceive the necessity of a cautious and
complicated system for the investment and security of interests
already perfect and surrounded with every guard and protection
which is inseparable under the
Page 51 U. S. 504
common law from every right it has created or recognized. But if
the mere mental and invisible process of invention, apart from the
specific, sensible, and individual structure, can be classed at all
as property at law, it must partake of the character of a chose in
action, much more so than an obligation or contract, the terms and
conditions of which are defined and assented to by the contracting
parties. To choses in action, it can scarcely be necessary here to
remark, assignability is imparted by statutory enactment only, or
by commercial usage. To hold that the single circumstance of
invention creates an estate or property at law and an estate and
legal title transmissible by assignment appears to me a doctrine
not merely subversive of the common law, but one which contravenes
the origin and course of legislation in England in relation to
patent rights, and renders useless and futile both the
constitutional provision and all the careful enactments of Congress
for the security and transmissibility of the same rights. For why,
as has been already remarked, should that provision and these
enactments have been made for the establishment and security of
that which was established and safe independently of both? I hold
it, then, to be true, that the circumstance of
invention
invests no such perfect estate or right of property as can be
claimed and enforced at law or in equity against the
user
of the same invention, either by subsequent inventors or imitators,
and that any estate or property in the mere mental process of
invention must be traced to and deducible from the Constitution and
the acts of Congress alone. I cannot but regard as mischievous and
alarming an attempt to introduce a
quasi and indefinite,
indefinable, and invisible estate, independently of the
Constitution and acts of Congress and unknown to the rules and
principles of the common law.
It is the
patent alone which creates an estate or
interest in the
invention known to the law, and which can
be enforced either at law or in equity, either by the inventor or
by the person to whom, by
virtue of the statute, he may
assign his rights. Down to the Act of Congress of 1837, nothing but
the estate, interest, or property created or invested by
the
patent itself was made assignable. The language of the law is
that
"every patent," "the exclusive right under any patent,"
"the thing patented," may be assignable. The fact or existence
of
a patent is in every instance inseparable from the
right given. It is this fact and this only which impresses the
quality of assignability. Of course, under these provisions there
could be no transfer of the legal title previously to a patent.
By section sixth of the Act of Congress approved March
Page 51 U. S. 505
3, 1837, it is provided that
thereafter any patent
to be issued may be made to the assignee of the inventor
or discoverer, upon the conditions set forth in that section. Yet
still it is presumed that until the issuing of a patent, so far is
it from being true that a legal estate or title existed in such
assignee, it is clear, on the contrary, that no
legal
title existed before the patent in the inventor himself, for
it is the patent which constitutes his title. Of course, then, the
assignee can at most hold nothing but an equity under such an
assignment, which he may insist upon under this assignment against
the inventor or against the government; but he has no legal title
by force merely of such an assignment, and
a fortiori he
has no legal title, if the patent, notwithstanding such an
assignment, is in fact issued to the inventor, but is thereby
entirely excluded from all pretension to a legal title. Thus, in
the case before us, the patent under which the plaintiff claims
was, subsequently to the agreement between Fitzgerald and Enos
Wilder, issued to Fitzgerald, the inventor, and according to the
proofs in the cause has never been renewed to Enos Wilder, nor to
any claimant under him, nor been assigned to any such claimant, but
remains still in the alleged inventor, Fitzgerald. It seems to me,
then, indisputable that the legal title indispensable for the
maintenance of this suit
at law never was in the
plaintiff, and that he could not maintain the action.
The second instance in which I hold the learned justice who
tried this cause to have erred is that in which he instructed the
jury as follows:
"That if Conner had not made his
discovery public, but
had used it simply for his own private purpose, and it had been
finally forgotten or abandoned, such
discovery
and use would be no obstacle to the taking out of a patent by
Fitzgerald, or those claiming under him, if he be an original,
though not
the first, inventor or discoverer of the
improvement."
In considering this instruction of the learned judge, the first
vice with which it appears to be affected is its violation of a
rule thought to be universally applicable to instructions to juries
in trials at law, and that rule is this -- that instructions should
always arise out of, and be limited to, the facts or the evidence
in the cause to which the questions of law propounded from the
bench should be strictly applicable, and that instructions which
are general, abstract, or not springing from and pertinent to the
facts of the case are calculated to mislead the jury and are
therefore improper. Tried by this rule, the instruction of the
learned judge, so far as it relates to Conner's not having made his
discovery
public or having finally forgotten or abandoned
it, is certainly irrelevant to and unsustained by any evidence in
the record. So far is the
Page 51 U. S. 506
existence of such testimony from being shown, the converse is
proved and is justly inferable throughout, for although it does not
appear that Conner advertised his invention in the public papers or
claimed a patent for it, it is admitted that he used this safe in
an extensive business establishment to which it is certain from the
nature of his business the public had access, and it is not
pretended that he made any effort at concealment of what he had
invented, and the record is entirely destitute of evidence of an
abandonment of his invention.
As to the assumption of his having forgotten it, there is
neither a fact, an inquiry, nor conjecture in the testimony
pointing to such a conclusion. The instruction appears to me to be
wholly gratuitous and irrelevant. But supposing this instruction to
have been founded upon testimony introduced before the jury, let us
consider for a moment its correctness as a rule of law applicable
to this cause. This charge, it must be recollected, admits that
Conner was or might have been the first inventor, and
notwithstanding, asserts that Fitzgerald, though posterior in time,
might, upon the conditions and considerations assumed by the judge,
become the owner of the right. Are these conditions warranted
either by the rules of public policy or by the terms and language
of legislative provisions on such subjects?
It is said that patent privileges are allowed as incitements to
inventions and improvements by which the public may be benefited.
This position, that may be conceded in general, should not be made
a means of preventing the great and public purposes its legitimate
enforcement is calculated to secure. The admission of this
principle leaves entirely open the inquiries whether he is more the
benefactor of the public who makes a useful improvement which he
generously shares with his fellow citizens or he who studies some
device which he denies to all and limits by every means in his
power to a lucrative monopoly, and still more whether the latter
shall be permitted to seize upon that which had already as is here
admitted been given to the public, thereby to levy contributions,
not only on the community at large, but upon him even who had been
its generous benefactor.
It was doubtless to prevent consequences like those here
presented that the
priority and
originality of
inventions are so uniformly and explicitly insisted upon in all the
legislation of Congress, as will presently be shown. The tendency
of the learned judge's charge to mislead the jury from its want of
precision and its failure to define any certain predicament upon
which the action of the jury should be founded is of itself an
insuperable objection to that charge. Thus it is said, if Connor
"had not
made his discovery public." In what mode? it may
be asked. What form of publicity did
Page 51 U. S. 507
the learned judge intend the jury should require? It is shown
that Conner used his safe publicly -- that is, he concealed it from
no one, and if any mode or kind of publication or concealment was
requisite either to establish or conclude the right of Conner or to
conclude common right a delinquency in the nature of a forfeiture,
surely that mode, if found either in any statute or in the rules of
the common law, ought to have been clearly laid down so as to guard
the rights of all. In the next place, it is said by the learned
judge that if Conner had
abandoned this improvement which
the charge admits him to have invented, this would justify a patent
to another who had not known of the improvement, although a
subsequent inventor. I have always understood it to be indisputable
law, that wherever an inventor abandons or surrenders an invention
or improvement which he has certainly made, and neither claims and
exclusive right in himself nor transfers it to another, the
invention or improvement is given to the public; but by the charge
in this case, such an abandonment transfers
an exclusive
right to one who, by the case supposed,
is admitted not to
be the first inventor. So too with respect to the hypothesis
of the learned judge that the invention had, or might have, been
forgotten. To this the same objections of vagueness and
uncertainty, and the graver objection of injustice to the real
inventor or to the public, are applicable. By whom and for what
interval of time must this improvement have been forgotten in order
to transfer it from the originator thereof? For a term of years?
And if so, for how long a term? But suppose he forgets it for his
lifetime, shall his executor or his posterity, upon the exhibition
of indisputable proofs of the invention -- yea, the very machine
itself, perfect in all its parts and in its operation -- be cut
off? This surely cannot be; but at any rate the jury should have
been furnished with some rule or measure of obliviousness if this
was to be made the substantive cause of deprivation as to the
original inventor or the foundation of right and of exclusive right
in one confessedly not the first inventor.
An attempt has been made to compare the doctrine propounded by
the Court to what it might be thought is the law as applicable to
the discovery, or rather
recovery, of the processes
employed in what have been called "the lost arts." This
illustration is in itself somewhat equivocal, and by no means
satisfactory, for if that process could certainly be
shown
to be the same with one claimed by the modern inventor, his
discovery could scarcely have the merit of originality or be the
foundation of exclusive right. But in truth the illustration
attempted to be drawn from a revival of a lost art is not apposite
to the present case. The term "lost art" is applicable
peculiarly
Page 51 U. S. 508
to certain monuments of antiquity still remaining in the world,
the process of whose accomplishment has been lost for centuries,
has been irretrievably swept from the earth, with every vestige of
the archives or records of the nations with whom those arts
existed, and the origin or even the identity of which process none
can certainly establish. And if a means of producing the effect we
see and have amongst us be discovered, and none can either by
history or tradition refer to a similar or to the identical
process, the inventor of that means may so far claim the merit of
originality, though the work itself may have been produced possibly
by the same means. But not one principle drawn from such a state of
things can be applied to a recent proceeding which counts from its
origin scarcely a period of fifteen years. In fine, this ruling of
the learned judge is regarded as being at war not less with the
policy and objects than it is with the express language of all the
legislation by Congress upon the subject of patent rights, which
legislation has uniformly constituted
priority of
invention to be the foundation and the test of all such
rights. Thus, in the Act of April 10, 1790, the first patent law, 1
Stat. 109, it is declared by the first section,
"That upon the application of any person or persons &c.,
setting forth that he, she, or they hath or have invented or
discovered any useful art &c.,
not before known or
used,"
&c.; and the second section of the same statute, requiring a
specification of any invention or discovery, declares that it shall
be so described "as to distinguish it from all other things known
or used."
The Act of February 21, 1793, 1 Stat. 318, provides that when
any citizen or citizens of the United States shall allege that he
or they have invented any
"new and useful art &c., not
known or used before the application," &c.
By the Act of April 17, 1800, 2 Stat. 38, which extends the
privilege of patents to aliens, proof is required that the art,
invention, or discovery hath not
been known or used in
that or any foreign country. It is true that this requisition has
been so far relaxed as to admit of the patenting in this country
inventions which had been invented and used abroad, but with
respect to this country, the invention &c., must still be
original.
The act of July 4th, 1836, 5 Stat. 117, reorganizing the Patent
Office, the language of the sixth section is as follows: "That any
person or persons having discovered or invented any new and useful
art &c.,
not known or used by others before his or their
discovery," &c. The language and import of the laws here
cited are too plain to require comment,
Page 51 U. S. 509
and I think that the production of a single instance from the
statute book may safely be challenged by which the requisites above
mentioned have been dispensed with. Every law, on the contrary, has
emphatically demanded originality and priority as indispensable
prerequisites to patent privileges, and every aspirant to such
privileges is expressly required to swear to these prerequisites,
as well as to establish them. These tests ordained by the laws are
not only founded upon the true reason for the privileges conferred,
but they are simple and comprehensible, whereas the innovations
permitted by the ruling of the learned judge not only conflict with
the true reason and foundation of patent privileges, but tend to an
uncertainty and confusion which cannot but invite litigation and
mischief. I think that the judgment of the circuit court should be
reversed and the cause remanded for a
venire facias de
novo.
MR. JUSTICE GRIER also dissented.
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the Southern
District of New York, and was argued by counsel. On consideration
whereof, it is now here ordered and adjudged by this Court that the
judgment of the said circuit court in this cause be and the same is
hereby affirmed with costs and damages at the rate of six percentum
per annum.
