The record contains, embodied in the bill of exceptions, the
whole of the testimony and evidence offered at the trial of the
cause by each party in support of the issue. It is very voluminous,
and as no exception was taken to its competency or sufficiency,
either generally or for any particular purpose; it is not properly
before this Court for consideration, and forms an expensive and
unnecessary burden upon the record. This Court has had occasion in
many cases to express its regret on account of irregular
proceedings of this nature. There was not the slightest necessity
of putting any portion of the evidence in this case upon the
record, since the opinion of the court, delivered to the jury,
presented a general principle of law, and the application of the
evidence to it was left to the jury.
It is no ground of reversal that the court below omitted to give
directions to the jury upon any points of law which might arise in
the cause, where it was not requested by either party at the trial.
It is sufficient for us that the court has given no erroneous
directions.
If either party considers any point presented by the evidence
omitted in the charge of the court, it is competent for such party
to require an opinion from the court upon that point. The court
cannot be presumed to do more in ordinary cases than to express its
opinion upon questions which the parties themselves have raised on
the trial.
It has not been and indeed it cannot be denied that an inventor
may abandon
Page 27 U. S. 2
his invention, and surrender or dedicate it to the public. This
inchoate right, thus gone, cannot afterwards be resumed at his
pleasure, for when gifts are once made to the public in this way,
they become absolute. The question which generally arises on trials
is a question of fact, rather than of law; whether the acts or
acquiescence of the party furnish in the given case satisfactory
proof of an abandonment or dedication of the invention to the
public.
It is obvious that many of the provisions of our patent act are
derived from the principles and practices which have prevailed in
the construction of the law of England in relation to patents.
Where English statutes, such for instance as the statute of
frauds and the statute of limitations, have been adopted into our
own legislation, the known and settled construction of those
statutes by courts of law has been considered as silently
incorporated into the acts, or has been received with all the
weight of authority. This is not the case with the English statute
of monopolies, which contains an exception, on which the grants of
patents for inventions have issued in that country. The language of
that clause in the statute is not identical with the patent law of
the United States, but the construction of it adopted by the
English courts, and the principles and practice which have long
regulated the grants of their patents, as they must have been
known, and are tacitly referred to in some of the provisions of our
own statute, afford materials to illustrate it.
The true meaning of the words of the patent law "not known or
used before the application" is not known or used
by the
public before the application.
If an inventor should be permitted to hold back from the
knowledge of the public the secrets of his invention; if he should
for a long period of years retain the monopoly and make and sell
the invention publicly, and thus gather the whole profits of it,
relying upon his superior skill and knowledge of the structure, and
then and then only, when the danger of competition should force him
to procure the exclusive right, he should be allowed to take out a
patent, and thus exclude the public from any further use than what
should be derived under it during his fourteen years, it would
materially retard the progress of science and the useful arts and
give a premium to those who should be least prompt to communicate
their discoveries.
If an invention is used by the public with the consent of the
inventor at the time of his application for a patent, how can the
court say that his case is nevertheless such as the act was
intended to protect? If such a public use is not a use within the
meaning of the statute, how can the court extract the case from its
operation and support a patent when the suggestions of the patentee
were not true and the conditions on which alone the grant was
authorized do not exist?
The true construction of the patent law is that the first
inventor cannot acquire a good title to a patent if he suffers the
thing invented to go into public use or to be publicly sold for use
before he makes application for a patent. This voluntary act, or
acquiescence in the public sale or use, is an abandonment of his
right, or rather creates a disability to comply with the terms and
conditions of the law on which alone the Secretary of State is
authorized to grant him a patent.
Page 27 U. S. 3
In that court, the plaintiffs in error had instituted their suit
against the defendants for an infringement of a patent right for
"an improvement in the art of making tubes or hose for conveying
air, water, and other fluids." The invention claimed by the
patentees was in the mode of making the hose so that the parts so
joined together would be tight and as capable of resisting the
pressure as any other part of the machine.
The bill of exceptions, which came up with the record, contained
the whole evidence given in the trial of the cause in the circuit
court. The invention for which the patent right was claimed was
completed in 1811, and the letters patent were obtained in 1818. In
this interval, upwards of
13,000 feet of hose constructed
according to the invention of the patentees had been made and sold
in the City of Philadelphia. One Samuel Jenkins, by the permission
of and under an agreement between the plaintiffs as to the price,
had made and sold the hose invented by the plaintiffs, and supplied
several hose companies in the City of Philadelphia with the same.
Jenkins, during much of the time, was in the service of the
plaintiffs, and had been instructed by them in the art of making
the hose. There was no positive evidence that the agreement between
Jenkins and the plaintiffs in error was known to or concealed from
the public. The plaintiffs, on the trial, did not allege or offer
evidence to prove that they had delayed making application for a
patent for the purpose of improving their invention, or that from
1811 to 1818 any important modifications or alterations had been
made in their riveted hose. The plaintiffs claimed before the jury
that all the hose which had been made and sold to the public prior
to their patent had been constructed and vended by Jenkins under
their permission.
Upon the whole evidence in the case, the circuit court charged
the jury:
Page 27 U. S. 4
"We are clearly of opinion that if an inventor makes his
discovery public, looks on and permits others freely to use it,
without objection or assertion of claim to the invention, of which
the public might take notice; he abandons the inchoate right to the
exclusive use of the invention, to which a patent would have
entitled him had it been applied for before such use. And we think
it makes no difference in the principle that the article so
publicly used and afterwards patented was made by a particular
individual, who did so by the private permission of the inventor.
As long as an inventor keeps to himself the subject of his
discovery, the public cannot be injured, and even if it be made
public, but accompanied by an assertion of the inventor's claim to
the discovery, those who should make or use the subject of the
invention would at least be put upon their guard. But if the
public, with the knowledge and the tacit consent of the inventor,
is permitted to use the invention without opposition, it is a fraud
upon the public afterwards to take out a patent. It is possible
that the inventor may not have intended to give the benefit of his
discovery to the public, and may have supposed that by giving
permission to a particular individual to construct for others the
thing patented, he could not be presumed to have done so. But it is
not a question of intention, which is involved in the principle
which we have laid down, but of legal inference, resulting from the
conduct of the inventor, and affecting the interests of the public.
It is for the jury to say whether the evidence brings this case
within the principle which has been stated. If it does, the court
is of opinion that the plaintiffs are not entitled to a
verdict."
To this charge the plaintiffs excepted, and the jury gave a
verdict for the defendant.
Page 27 U. S. 14
MR. JUSTICE STORY delivered the opinion of the Court.
This is a writ of error to the Circuit Court of Pennsylvania.
The original action was brought by the plaintiffs in error for an
asserted violation of a patent, granted to them on 6 July, 1818,
for a new and useful improvement in the art of making leather tubes
or hose for conveying air, water, and other fluids. The cause was
tried upon the general issue, and a verdict was found for the
defendant upon which judgment passed in his favor, and the
correctness of that judgments is now in controversy before this
Court.
At the trial, a bill of exceptions was taken to an opinion
delivered by the court in the charge to the jury, as follows,
viz.,
"That the law arising upon the case was that if an inventor
makes his discovery public, looks on and permits others freely to
use it, without objection or assertion of claim to the invention of
which the public might take notice; he abandons
Page 27 U. S. 15
the inchoate right to the exclusive use of the invention, to
which a patent would have entitled him had it been applied for
before such use. And that it makes no difference in the principle
that the article so publicly used and afterwards patented was made
by a particular individual, who did so by the private permission of
the inventor. And thereupon did charge the jury
that if the
evidence brings the case within the principle which had been
stated, that court was of opinion that the plaintiffs were not
entitled to a verdict."
The record contains, embodied in the bill of exceptions, the
whole of the testimony and evidence offered at the trial, by each
party, in support of the issue. It is very voluminous, and as no
exception was taken to its competency, or sufficiency, either
generally or for any particular purpose; it is not properly before
this Court for consideration, and forms an expensive and
unnecessary burden upon the record. This Court has had occasion in
many cases to express its regret on account of irregular
proceedings of this nature. There was not the slightest necessity
of putting any portion of the evidence in this case upon the
record, since the opinion of the court delivered to the jury,
presented a general principle of law, and the application of the
evidence to it was left to the jury.
In the argument at the bar, much reliance has been placed upon
this evidence by the counsel for both parties. It has been said on
behalf of the defendants in error that it called for other and
explanatory directions from the court, and that the omission of the
court to give them in the charge furnishes a good ground for a
reversal, as it would have furnished in the court below for a new
trial. But it is no ground of reversal that the court below omitted
to give directions to the jury upon any points of law which might
arise in the cause, where it was not requested by either party at
the trial. It is sufficient for us that the court has given no
erroneous directions. If either party deems any point presented by
the evidence to be omitted in the charge, it is competent for such
party to require an opinion from the court upon that point. If he
does not, it is a waiver of it.
Page 27 U. S. 16
The court cannot be presumed to do more in ordinary cases than
to express its opinion upon the questions which the parties
themselves have raised at the trial.
On the other hand, the counsel for the defendant in error has
endeavored to extract from the same evidence strong confirmations
of the charge of the court. But for the reason already suggested,
the evidence must be laid out of the case, and all the reasoning
founded on it falls.
The single question then is whether the charge of the court was
correct in point of law. It has not been, and indeed cannot be
denied, that an inventor may abandon his invention, and surrender
or dedicate it to the public. This inchoate right, thus once gone,
cannot afterwards be resumed at his pleasure, for where gifts are
once made to the public in this way, they become absolute. Thus, if
a man dedicates a way or other easement to the public, it is
supposed to carry with it a permanent right of user. The question
which generally arises at trials is a question of fact, rather than
of law; whether the acts or acquiescence of the party furnish in
the given case, satisfactory proof of an abandonment or dedication
of the invention to the public. But when all the facts are given,
there does not seem any reason why the court may not state the
legal conclusion deducible from them. In this view of the matter,
the only question would be whether, upon general principles, the
facts stated by the court would justify the conclusion.
In the case at bar it is unnecessary to consider whether the
facts stated in the charge of the court would, upon general
principles, warrant the conclusion drawn by the court independently
of any statutory provisions, because we are of opinion that the
proper answer depends upon the true exposition of the act of
Congress under which the present patent was obtained. The
Constitution of the United States has declared, that Congress shall
have power
"to promote the progress of science and useful arts by securing
for limited times to authors and inventors the exclusive
right to their respective writings and discoveries."
It contemplates, therefore, that this exclusive right shall
exist but
Page 27 U. S. 17
for a limited period, and that the period shall be subject to
the discretion of Congress. The Patent Act of 21 February, 1793,
ch. 11, prescribes the terms and conditions and manner of obtaining
patents for inventions, and proof of a strict compliance with them
lies at the foundation of the title acquired by the patentee. The
first section provides
"That when any person or persons, being a citizen or citizens of
the United States, shall allege that he or they have invented any
new or useful art, machine, manufacture, or composition of matter,
or any new or useful improvement on any art, machine, or
composition of matter,
not known or used before the
application, and shall present a petition to the Secretary of
State signifying a desire of obtaining an exclusive property in the
same and praying that a patent may be granted therefor, it shall
and may be lawful for the said Secretary of State to cause letters
patent to be made out in the name of the United States, bearing
teste by the President of the United States, reciting the
allegations and suggestions of the said petition and giving a short
description of the said invention or discovery, and thereupon
granting to the said petitioner, . . .
for a term not exceeding
fourteen years, the full and exclusive right and liberty of
making, constructing, using, and vending to others to be
used, the said invention or discovery,"
&c. The third section provides
"That every inventor, before he can receive a patent, shall
swear, or affirm, that he does verily believe that he is the true
inventor or discoverer of the art, machine, or improvement for
which he solicits a patent."
The sixth section provides that the defendant shall be permitted
to give in defense, to any action brought against him for an
infringement of the patent, among other things,
"that the thing thus secured by patent was not originally
discovered by the patentee,
but had been in use, or had
been described in some public work,
anterior to the supposed
discovery of the patentee."
These are the only material clauses bearing upon the question
now before the court, and upon the construction of them, there has
been no inconsiderable diversity of
Page 27 U. S. 18
opinion entertained among the profession, in cases heretofore
litigated.
It is obvious to the careful inquirer that many of the
provisions of our patent act are derived from the principles and
practice which have prevailed in the construction of that of
England. It is doubtless true, as has been suggested at the bar,
that where English statutes, such for instance as the statute of
frauds and the statute of limitations, have been adopted into our
own legislation; the known and settled construction of those
statutes by courts of law, has been considered as silently
incorporated into the acts, or has been received with all the
weight of authority. Strictly speaking, that is not the case in
respect to the English statute of monopolies, which contains an
exception on which the grants of patents for inventions have issued
in that country. The language of that clause of the statute is not,
as we shall presently see, identical with ours, but the
construction of it adopted by the English courts, and the
principles and practice which have long regulated the grants of
their patents, as they must have been known and are tacitly
referred to in some of the provisions of our own statute, afford
materials to illustrate it.
By the very terms of the first section of our statute, the
Secretary of State is authorized to grant a patent to any citizen
applying for the same, who shall allege that he has invented a new
and useful art, machine, &c.,
"not known or used before the
application?" The authority is a limited one, and the party
must bring himself within the terms, before he can derive any title
to demand, or to hold a patent. What then is the true meaning of
the words
"not known or used before the application?" They
cannot mean that the thing invented was not known or used before
the application by the inventor himself, for that would be to
prohibit him from the only means of obtaining a patent. The use, as
well as the knowledge of his invention, must be indispensable to
enable him to ascertain its competency to the end proposed, as well
as to perfect its component parts. The words then, to have any
rational interpretation, must
Page 27 U. S. 19
mean, not known or used by others, before the application. But
how known or used? If it were necessary, as it well might be, to
employ others to assist in the original structure or use by the
inventor himself, or if before his application for a patent his
invention should be pirated by another, or used without his
consent; it can scarcely be supposed, that the legislature had
within its contemplation such knowledge or use.
We think, then, the true meaning must be not known or used by
the public before the application. And, thus construed, there is
much reason for the limitation thus imposed by the act. While one
great object was, by holding out a reasonable reward to inventors,
and giving them an exclusive right to their inventions for a
limited period, to stimulate the efforts of genius; the main object
was "to promote the progress of science and useful arts;" and this
could be done best, by giving the public at large a right to make,
construct, use, and vend the thing invented, at as early a period
as possible, having a due regard to the rights of the inventor. If
an inventor should be permitted to hold back from the knowledge of
the public the secrets of his invention; if he should for a long
period of years retain the monopoly, and make, and sell his
invention publicly, and thus gather the whole profits of it,
relying upon his superior skill and knowledge of the structure, and
then, and then only, when the danger of competition should force
him to secure the exclusive right, he should be allowed to take out
a patent and thus exclude the public from any further use than what
should be derived under it during his fourteen years, it would
materially retard the progress of science and the useful arts and
give a premium to those who should be least prompt to communicate
their discoveries.
A provision, therefore, that should withhold from an inventor
the privilege of an exclusive right unless he should, as early as
he should allow the public use, put the public in possession of his
secret and commence the running of the period that should limit
that right would not be deemed unreasonable. It might be expected
to find a place in a
Page 27 U. S. 20
wise prospective legislation on such a subject. If it was
already found in the jurisprudence of the mother country, and had
not been considered inconvenient there, it would not be unnatural
that it should find a place in our own.
Now in point of fact, the statute of 21 Jac. ch. 3, commonly
called the Statute of Monopolies, does contain exactly such a
provision. That act, after prohibiting monopolies generally,
contains, in the sixth section, an exception in favor of
"letters patent and grants of privileges for
fourteen years
or under, for the sole working or making of any manner of new
manufactures within this realm, to the true and first inventor and
inventors of such manufactures, which
others, at the time of
making such letters patent and grants, shall not use."
Lord Coke, in his commentary upon this clause or proviso, 3
Inst. 184, says that the letters patent
"must be of such manufactures, which
any other at the time
of making such letters patent did not use, for albeit it were
newly invented, yet if any other did use it at the making of the
letters patent, or grant of the privilege, it is declared and
enacted to be void by this act."
The use here referred to has always been understood to be a
public use, and not a private or surreptitious use in fraud of the
inventor.
In the case of
Wood v. Zimmer, 1 Holt's N.P. 58, this
doctrine was fully recognized by Lord Chief Justice Gibbs. There,
the inventor had suffered the thing invented to be sold, and go
into public use for four months before the grant of his patent, and
it was held by the court that on this account the patent was
utterly void. Lord Chief Justice Gibbs said
"To entitle a man to a patent, the
invention must be
new to the world. The
public sale of that which
is afterwards made the subject of a patent,
though sold by the
inventor only, makes the patent void."
By "invention," the learned judge undoubtedly meant, as the
context abundantly shows, not the abstract discovery, but the thing
invented; not the new secret principle, but the manufacture
resulting from it.
The words of our statute are not identical with those of
Page 27 U. S. 21
the statute of James, but it can scarcely admit of doubt that
they must have been within the contemplation of those by whom it
was framed, as well as the construction which had been put upon
them by Lord Coke. But if there were no such illustrative comment,
it is difficult to conceive how any other interpretation could
fairly be put upon these words. We are not at liberty to reject
words which are sensible in the place where they occur, merely
because they may be thought, in some cases, to import a hardship,
or tie up beneficial rights within very close limits. If an
invention is used by the public with the consent of the inventor at
the time of his application for a patent, how can the court say
that his case is nevertheless such as the act was intended to
protect? If such a public use is not a use within the meaning of
the statute, what other use is? If it be a use within the meaning
of the statute, how can the court extract the case from its
operation, and support a patent, where the suggestions of the
patentee are not true, and the conditions on which alone the grant
was authorized to be made, do not exist? In such a case, if the
court could perceive no reason for the restrictions, the will of
the legislature must still be obeyed. It cannot and ought not to be
disregarded where it plainly applies to the case. But if the
restriction may be perceived to have a foundation in sound policy,
and be an effectual means of accomplishing the legislative objects,
by bringing inventions early into public and unrestricted use, and
above all, if such policy has been avowed and acted upon in like
cases in laws having similar objects, there is very urgent reason
to suppose that the act in those terms embodies the real
legislative intent, and ought to receive that construction. It is
not wholly insignificant in this point of view that the first
patent act passed by Congress on this subject, Act of 1790, ch. 34,
ch. 7, which the present act repeals, uses the words
"not known
or used before," without adding the words
"the
application," and in connection with the structure of the
sentence in which they stand, might have been referred either to
the time of the invention, or of the application. The addition of
the
Page 27 U. S. 22
latter words in the patent act of 1793, must therefore have been
introduced,
ex industria, and with the cautious intention
to clear away a doubt and fix the original and deliberate meaning
of the legislature.
The Act of 17 April, 1800, ch. 25, which extends the privileges
of the act of 1793 to inventors who are aliens; contains a proviso
declaring,
"That every patent which shall be obtained pursuant to the act
for any invention, art or discovery,
which it shall afterwards
appear had been known or used previous to such application for a
patent, shall be void."
This proviso certainly certifies the construction of the act of
1793, already asserted, for there is not any reason to suppose that
the legislature intended to confer on aliens, privileges,
essentially different from those belonging to citizens. On the
contrary, the enacting clause of the act of 1800 purports to put
both on the same footing, and the proviso seems added as a gloss or
explanation of the original act.
The only real doubt which has arisen upon this exposition of the
statute, has been created by the words of the sixth section already
quoted. That section admits the party sued to give in his defense
as a bar, that "the thing thus secured by patent was not originally
discovered by the patentee, but had been in use
anterior to the
supposed discovery of the patentee." It has been asked if the
legislature intended to bar the party from a patent in consequence
of a mere prior use, although he was the inventor, why were not the
words "anterior
to the application" substituted, instead
of "anterior
to the supposed discovery?" If a mere use of
the thing invented before the application were sufficient to bar
the right, then, although the party may have been the first and
true inventor, if another person, either innocently as a second
inventor or piratically, were to use it without the knowledge of
the first inventor, his right would be gone. In respect to a use by
piracy, it is not clear that any such fraudulent use is within the
intent of the statute, and upon general principles it might well be
held excluded. In respect to the case of a second invention, it is
questionable
Page 27 U. S. 23
at least, whether, if by such second invention a public use was
already acquired, it could be deemed a case within the protection
of the act. If the public were already in possession and common use
of an invention fairly and without fraud, there might be sound
reason for presuming that the legislature did not intend to grant
an exclusive right to anyone to monopolize that which was already
common. There would be no
quid pro quo -- no price for the
exclusive right or monopoly conferred upon the inventor for
fourteen years.
Be this as it may, it is certain that the sixth section is not
necessarily repugnant to the construction which the words of the
first section require and justify. The sixth section certainly does
not enumerate all the defenses which a party may make in a suit
brought against him for violating a patent. One obvious omission is
where he uses it under a license or grant from the inventor. The
sixth section in the clause under consideration may well be deemed
merely affirmative of what would be the result from the general
principles of law applicable to other parts of the statute. It
gives the right to the
first and true inventor and to him
only; if known or used before his supposed discovery, he is not the
first, although he may be a true inventor, and that is the
case to which the clause looks. But it is not inconsistent with
this doctrine that although he is the
first as well as the
true inventor, yet if he shall put it into public use or
sell it for public use before he applies for a patent, that this
should furnish another bar to his claim. In this view, an
interpretation is given to every clause of the statute without
introducing any inconsistency or interfering with the ordinary
meaning of its language. No public policy is overlooked, and no
injury can ordinarily occur to the first inventor, which is not in
some sort the result of his own laches or voluntary inaction.
It is admitted that the subject is not wholly free from
difficulties, but upon most deliberate consideration we are all of
opinion, that the true construction of the act is that the first
inventor cannot acquire a good title to a patent; if he suffers the
thing invented to go into public use or to be
Page 27 U. S. 24
publicly sold for use before he makes application for a patent.
His voluntary act or acquiescence in the public sale and use is an
abandonment of his right, or rather creates a disability to comply
with the terms and conditions on which alone the Secretary of State
is authorized to grant him a patent.
The opinion of the circuit court was therefore perfectly
correct, and the judgment is
Affirmed with costs.
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the District of
Pennsylvania and was argued by counsel, on consideration whereof it
is the opinion of this Court that there is no error in the judgment
of the said circuit court. Whereupon it is considered, ordered, and
adjudged by this Court that the said judgment of the said circuit
court in this cause be and the same is hereby affirmed with
costs.
