Action for an alleged violation of a patent for an improvement,
in guns and firearms.
The letters patent were obtained in 1822, and in 1829, the
patentee having surrendered the same for an alleged defect in the
specification, obtained another patent. This second patent is to be
considered as having relation to the emanation of the patent of
1822, and not as having been issued on an original application.
The holder of a defective patent may surrender it to the
Department of State and obtain a new one, which shall have relation
to the emanation of the first.
The case of
Grant v.
Raymond, 6 Pet. 220, cited and affirmed.
A second patent granted on the surrender of a prior one being a
continuation of the first, the rights of a patentee must be
ascertained by the law under which the original application was
made.
By the provisions of the Act of Congress of 17 April, 1800,
citizens and aliens, as to patent rights, are placed substantially
upon the same ground. In either case, if the invention was known or
used by the public before it was patented, the patent is void. In
both cases, the right must be tested by the same rule.
What use by the public, before the application is made for a
patent, shall make void the right of a patentee.
From an examination of the various provisions of the acts of
Congress relative to patents for useful inventions, it clearly
appears that it was the intention of the legislature, by a
compliance with the requisites of the law, to vest the exclusive
right in the inventor only, and that on condition that his
invention was neither known nor used by the public before his
application for a patent. If such use or knowledge shall be proved
to have existed prior to the application for the patent, the act of
1793 declares the patent void, and the right of an alien is vacated
in the same manner, by proving a foreign use or knowledge of his
invention. That knowledge or use which would be fatal to the patent
right of a citizen would be equally so to the right of an
alien.
The knowledge or use spoken of in the Act of Congress of 1793
could have referred to the public only, for the provision would be
nugatory if it were applied to the inventor himself. He must
necessarily have a perfect knowledge of the thing invented and of
its use before he can describe it, as by law he is required to do
preparatory to the emanation of a patent.
There may be cases in which a knowledge of the invention may be
surreptitiously obtained and communicated to the public that do not
affect the right of the inventor. Under such circumstances, no
presumption can arise in favor of an abandonment of the right to
the public by the inventor, though an acquiescence on his part will
lay the foundation for
Page 32 U. S. 293
such a presumption. It is undoubtedly just that every discoverer
should realize the benefits resulting
from his discovery for the period contemplated by law. But those
can only be
reserved by a substantial compliance with every legal requisite.
This exclusive right does not rest alone on his discovery, but also
upon the legal sanctions which have been given to it and the forms
of law with which it has been clothed.
No matter by what means an invention may have been communicated
to the public before a patent is obtained, any acquiescence in the
public use by the inventor will be an abandonment of the right. If
the right were asserted by him who fraudulently obtained it,
perhaps no lapse of time could give it validity. But the public
stands in an entirely different relation to the inventor. His right
would be secured by giving public notice that he was the inventor
of the thing used, and that he should apply for a patent.
The acquiescence of an inventor in the public use of his
invention can in no case be presumed where he has no knowledge of
such use. But this knowledge may be presumed from the circumstances
of the case. This will in general be a fact for a jury, and if the
inventor do not, immediately after this notice, assert his right,
it is such evidence of acquiescence in the public use, as forever
afterwards to prevent hint from asserting it. After his right shall
be perfected by a patent, no presumption arises against it from a
subsequent use by the public.
A strict construction of the act of Congress as it regards the,
public use of an invention before it is patented is not only
required by its letter and spirit, but also by sound policy.
The question of abandonment to the public does not depend on the
intention of the inventor. Whatever may be the intention, if he
suffers his invention to go into public use through any means
whatsoever without an immediate assertion of his right, he is not
entitled to a patent, nor will a patent obtained under such
circumstances protect his right.
At the October term, 1829, of the circuit court, the plaintiff
in error, Joseph Shaw, instituted an action against the defendant,
Joseph Cooper, for an alleged violation of a patent granted to him
by the United States, dated 7 May, 1829, for
"a new and useful improvement in guns and firearms, which
improvement consisted in a priming head and case applied to arms
and firearms for the purpose of priming and giving them fire by the
means or use of percussion, fulminating, or detonating powder,"
by which patent, the plaintiff alleged that there was granted to
him, &c., for the term of fourteen years from 19 June,
Page 32 U. S. 294
1822, the exclusive right to the said invention, and by virtue
of which he became entitled to the same, for the residue of the
term unexpired on 7 May, 1829. The declaration averred that the
defendant had violated the patent right of the plaintiff on 1
August, 1829, and afterwards between that day and the institution
of the suit.
The defendant pleaded not guilty and gave the following notice
of the matters of defense.
"Please to take notice that on the trial of the above cause, the
above-named Joseph Cooper will, under the plea of the general issue
aforesaid, insist upon and give in evidence that the pretended new
and useful improvement in guns and firearms mentioned and referred
to in the several counts of the said Joshua Shaw's declaration was
not originally discovered or invented by the said Joshua Shaw; also
that the said pretended new and useful improvement, or the material
or essential parts or portions thereof, or some or none of them,
had been known and used in this country,
viz., in the City
of New York and in the City of Philadelphia, and in sundry other
places in the United States, and in England, and in France, and in
other foreign countries, before the said Joshua Shaw's application
for a patent, as set forth in his said declaration, and also before
the alleged invention or supposed discovery thereof by the said
Joshua Shaw. And further, that the said alleged new and useful
improvement, or the material or essential parts or portions
thereof, or some or one of them, or the principle thereof, was the
invention or discovery of a gunmaker or of some other person
residing in England. And further that the said patent was void
because in and by the specification or description therein referred
to, no distinction or discrimination is made between the parts and
portions previously known and used as aforesaid and any parts or
portions of which the said Joshua Shaw may be the inventor or
discoverer, the said Joseph Cooper at the same time protesting that
he, the said Joshua Shaw, has not been the inventor or discoverer
of any part or portion of the said alleged improvement. And further
that the said patent is void because the said specification or
description does not describe the improvement
Page 32 U. S. 295
of which the said Joshua Shaw claims to be the inventor or
discoverer, in such full, clear and exact terms, as to distinguish
the same from all other things before known, nor so as to enable a
person skilled in the art or science of which it is a branch or
with which it is most nearly connected to make and use the same.
And further that the said patent is void because it was not
granted, issued, or obtained according to law. And further that the
said patent is void because it was surreptitiously obtained by the
said Joshua Shaw."
The cause was tried in January, 1832, and a verdict and judgment
given for the defendant. The plaintiff prosecuted this writ of
error. The following bill of exceptions was tendered by the counsel
for the plaintiff and sealed by the court.
"The plaintiff, to maintain the issue on his part, gave in
evidence the letters patent of the United States of America, as set
forth in the declaration of the said plaintiff, issued on 7 May,
1829, and also that the improvement for which the said letters
patent were granted, was invented or discovered by the said
plaintiff in the year 1813 or 1814, and that the defendant had sold
instruments which were infringements of the said letters patent.
And thereupon the said defendant, to maintain the said issue above
joined on his part, then and there proved by the testimony of one
witness that he had used the said improvement in England and had
purchased a gun of the kind there, and had seen others use the said
improvement and had seen guns of the kind in the Duke of York's
armory in 1819, and also proved by the testimony of five other
witnesses that in 1820 and 1821 they worked in England at the
business of making and repairing guns, and that the said
improvement was generally used in England in those years, but that
they never had seen guns of the kind prior to those years, and also
proved that in 1821 it was known and used in France, and also that
the said improvement was generally known and used in the United
States of America, after 19 June, 1822. Whereupon the said
plaintiff, further to maintain the said issue on his part, then and
there gave in evidence that the said plaintiff, not being a worker
in iron, in 1813 or 1814 employed his brother
Page 32 U. S. 296
in England, under strict injunctions of secrecy, to execute or
fabricate the said improvement for the purpose of the said
plaintiff's making experiments. And that the said plaintiff,
afterwards, in 1817, left England and came to reside in the United
States of America, and that after the departure of the said
plaintiff from England,
viz., in 1817 or 1818, his said
brother divulged the said secret, for a certain reward, to an
eminent gunmaker in London; that the plaintiff, on his arrival in
this country in 1817, disclosed his said improvement to a gunmaker,
whom he consulted as to obtaining a patent for the same and whom he
wished to engage to join and assist him. That the plaintiff made
said disclosures under injunctions of secrecy, claiming the
improvement as his own and declaring that he should patent it. That
the said plaintiff treated his invention as a secret after his
arrival in this country, often declaring that he should patent it,
and that he assigned as a reason for delaying to patent it that it
was not so perfect as he wished to make it before he introduced it
into public use, and that he did make alterations in his invention
up to about the date of his patent, which some witnesses considered
as improvements and others did not. That in this country, the said
invention was never known or used prior to the said 19 June, 1822;
that on that day letters patent were issued to the said plaintiff,
being then an alien, for his said invention, and that the said
plaintiff immediately brought the said invention into public use
under the said letters patent. That afterwards, and after suits had
been brought for violation of the said letters patent, the said
plaintiff was advised to surrender them on account of the
specification's being defective, and that he did accordingly, on 7
May, 1829, surrender the same into the Department of the Secretary
of State of the United States of America, and that thereupon the
letters patent first above mentioned were issued to the said
plaintiff."
"And the said plaintiff also gave in evidence that prior to the
said 19 June, 1822, the principal importers of guns from England,
in New York and Philadelphia, at the latter of which cities the
plaintiff resided, had never heard anything of the said invention,
or that the same was known or used in England, and that no guns of
the kind were imported
Page 32 U. S. 297
into this country until in the years 1824 or 1825. And that
letters patent were granted in England on 11 April, 1807, to one
Alexander J. Forsyth for a method of discharging or giving fire to
artillery and all other firearms, which method he describes in his
specification as consisting in"
"the use or application, as a priming, in any mode, of some or
one of those chemical compounds which are so easily inflammable as
to be capable of taking fire and exploding without any actual
fire's being applied thereto, and merely by a blow or by any sudden
or strong pressure of friction given or applied thereto without
extraordinary violence -- that is to say, some one of the compounds
of combustible matter such as sulphur or sulphur and charcoal, with
an oxmuriatic salt -- for example, the salt formed of
dephlogisticated marine acid and potash (or potasse), which salt is
otherwise called oxmuriate of potash, or such of the fulminating
metallic compounds as may be used with safety -- for example,
fulminating mercury or of common gunpowder -- mixed in due quantity
with any of the above-mentioned substances or with any oxmuriatic
salt as aforesaid, or of suitable mixtures of any of the
before-mentioned compounds,"
"and that the said letters patent continued in force for the
period of fourteen years from and after granting of the same. (It
is understood that the patent and specification of Forsyth, may be
at any time referred to on the argument, for correction or
explanation of the bill of exceptions.) And thereupon the
defendant, further to maintain the said issue on his part, gave in
evidence a certain letter from the plaintiff to the defendant dated
in December, 1824, from which the following is an extract,"
" Sometime since, I stated that I had employed counsel
respecting regular prosecutions for any trespasses against my
rights to the patent; I have at length obtained the opinions of Mr.
Sergeant of this city, together with others eminent in law, and
that is that I ought (with a view to insure success) to visit
England and procure the affidavits of Manton and others, to whom I
made my invention known, and also of the person whom I employed to
make the lock, at the time of invention, for it appears very
essential that I should also prove that I did actually reduce the
principle to practice; otherwise a verdict might be doubtful. It is
therefore my intention to visit
Page 32 U. S. 298
England in May next for this purpose; in the meantime,
proceedings which have commenced here are suspended for the
necessary time."
"And the said judges of the said court did thereupon charge and
direct the said jury that the patent of 7 May, 1829, having been
issued, as appeared by its recital, on the surrender and cancelment
of the patent of 19 June, 1822, and being intended to correct a
mistake or remedy a defect in the latter, it must be considered as
a continuation of the said patent, and the rights of the plaintiff
were to be determined by the state of things which existed in 1822,
when the patent was obtained. That the plaintiff's case, therefore,
came under the act passed 17 April, 1800, extending the right of
obtaining patents to aliens, by the first section of which the
applicant is required to make oath that his invention has not, to
the best of his knowledge or belief, been known or used in this or
any foreign country. That the plaintiff most probably did not know
in 1822 that the invention for which he was taking out a patent had
before that time been in use in a foreign country, but that his
knowledge or ignorance on that subject was rendered immaterial by
the concluding part of the section, which expressly declares that
every patent obtained pursuant to that act for any invention which
it should afterwards appear had been known or used previous to such
application for a patent should be utterly void. That there was
nothing in the act confining such use to the United States, and
that if the invention was previously known in England or France, it
was sufficient to avoid the patent under that act. That the
evidence would lead to the conclusion that the plaintiff was the
inventor in this case, but the court was of opinion that he had
slept too long on his rights, and not followed them up as the law
requires to entitle him to any benefit from his patent. That the
use of the invention by a person who had pirated it or by others
who knew of the piracy would not affect the inventor's rights, but
that the law was made for the benefit of the public as well as of
the inventor, and if, as appeared from the evidence in this case,
the public had fairly become possessed of the invention before
plaintiff applied for his patent, it was
Page 32 U. S. 299
sufficient in the opinion of the court to invalidate his patent,
even though the invention may have originally got into public use
through the fraud or misconduct of his brother, to whom he
entrusted the knowledge of it. "
Page 32 U. S. 310
MR. JUSTICE McLEAN delivered the opinion of the Court.
This writ of error brings before this Court for its revision a
judgment of the Circuit Court of the United States for the Southern
District of New York. An action was brought in the circuit court by
Shaw against the defendant Cooper for the violation of a certain
patent right claimed by the plaintiff. The defendant pleaded the
general issue and gave notice that on the trial he would prove
"that the pretended new and useful improvements in guns and
firearms mentioned and referred to in the several counts in the
declaration, also that the said pretended new and useful
improvements or the essential parts or portions thereof or some or
one of them, had been known and used in this country,
viz., in the City of New York and in the City of
Philadelphia and in sundry other places in the United States and in
England, in France, and in other foreign countries before the
plaintiff's application for a patent, as set forth in his
declaration,"
&c. On the trial, the following bill of exceptions was
taken.
"To maintain the issue joined, the plaintiff gave in evidence
certain letters patent of the United States, as set forth in the
declaration, issued on 7 May, 1829, and also that the improvement
for which the letters were granted was invented or discovered by
the plaintiff in 1813 or 1814, and that the defendant had sold
instruments which were infringements of the said letters patent.
And the defendant then proved by the testimony of one witness that
he had used the said improvement in England and had purchased a gun
of the kind there, and had seen others use the said improvement,
and had seen guns of the kind in the Duke of York's armory in 1819.
And also proved by the testimony of five other witnesses that in
1820 and 1821, they worked in England at the business of making and
repairing guns, and that the said improvement was generally used in
England in those years, but that they had never seen guns
Page 32 U. S. 311
of the kind, prior to those years, and also proved that in the
year 1821, it was used and known in France, and also that the said
improvement was generally known and used in the United States after
19 June, 1822."
"And the plaintiff, further to maintain the issue on his part,
then gave in evidence that he, not being a worker in iron, in 1813
or 1814, employed his brother, in England, under strict injunctions
of secrecy, to execute or fabricate the said improvement, for the
purpose of making experiments. And that the plaintiff afterwards,
in 1817, left England and came to reside in the United States, and
that after his departure from England, in 1817 or 1818, his said
brother divulged the secret, for a certain reward, to an eminent
gunmaker in London. That on the arrival of the plaintiff in this
country, in 1817, he disclosed his said improvement to a gunmaker,
whom he consulted as to obtaining a patent for the same, and whom
he wished to engage to join and assist him. That the plaintiff made
this disclosure, under injunctions of secrecy, claiming the
improvement as his own, declaring that he should patent it. That
the plaintiff treated his invention as a secret, after his arrival
in this country, often declaring, that he should patent it, and
that this step was only delayed, that he might make it more
perfect, before it was introduced into public use, and that he did
make alterations which some witnesses considered improvements in
his invention, and others did not. That in this country, the
invention was never known or used, prior to the said 19 June, 1822;
that on that day, letters patent were issued to the plaintiff,
being then an alien, and that he immediately brought his invention
into public use. That afterwards, and after suits had been brought
for a violation of the said letters patent, the plaintiff was
advised to surrender them, on account of the specification being
defective, and that he did accordingly, on 7 May in the year 1829,
surrender the same into the Department of the Secretary of State,
and received the letters patent first above named."
"And the plaintiff also gave in evidence, that prior to 19 June,
1822, the principal importers of guns from England in New York and
Philadelphia, at the latter of which cities the plaintiff resided,
had never heard anything of the
Page 32 U. S. 312
said invention, or that the same was used or known in England,
and that no guns of the kind were imported into this country until
in the years 1824 or 1825. And that letters patent were granted in
England, on 11 April, 1807, to one Alexander J. Forsyth, for a
method of discharging or giving fire to artillery and all other
firearms, which method he described in his specification as
consisting in the"
"use or application as a priming, in any mode, of some or one of
those chemical compounds which are so easily inflammable as to be
capable of taking fire and exploding, without any actual fire being
applied thereto, and merely by a blow, or by any sudden or strong
pressure or friction given or applied thereto, without
extraordinary violence; that is to say, some one of the compounds
of combustible matter, such as sulphur, or sulphur and charcoal,
with an oxmuriatic salt; for example, the salt formed of
dephlogisticated marine acid and potash (or potasse), which salt is
otherwise called oxmuriate of potash; or such of the fulminating
metallic compounds as may be used with safety; for example,
fulminating mercury, or of common gunpowder mixed in due quantity
with any of the above-mentioned substances, or with any oxmuriatic
salt, as aforesaid, or of suitable mixtures of any of the
before-mentioned compounds,"
"and that the said letters patent continued in force for the
period of fourteen years from the time of granting the same."
"And the defendant, further to maintain the issue on his part,
gave in evidence a certain letter from the plaintiff to the
defendant, dated in December, in the year 1824, from which the
following is an extract:"
" Sometime since, I stated that I had employed counsel
respecting regular prosecutions for any trespass against my rights
to the patent; I have at length obtained the opinion of Mr.
Sergeant of this city, together with other eminent in the law, and
that is that I ought (with a view to insure success) to visit
England, and procure the affidavits of Manton and others, to whom I
made my intention known, and also of the person whom I employed to
make the lock, at the time of invention, for it appears very
essential that I should prove that I did actually reduce the
principle to practice, otherwise a verdict might be doubtful. It is
therefore my intention to visit England in May next for this
purpose; in the meantime,
Page 32 U. S. 313
proceedings which have commenced here are suspended for the
necessary time."
"And the court, on these facts, charged the jury that the patent
of 7 May, 1829, having been issued, as appears by its recital, on
the surrender and cancelment of the patent of 19 June in the year
1822, and being intended to correct a mistake or remedy a defect in
the latter; it must be considered as a continuation of the said
patent, and the rights of the plaintiff were to be determined by
the state of things which existed in the year 1822, when the patent
was first obtained. That the plaintiff's case therefore came under
the act passed 17f April, 1800, extending the right of obtaining
patents to aliens, by the first section of which the applicant is
required to make oath, that his invention has not, to the best of
his knowledge or belief, been known or used in this or any foreign
country. That the plaintiff most probably did not know in the year
1822 that the invention for which he was taking out a patent had,
before that time, been in use in a foreign country; but that his
knowledge or ignorance on that subject was rendered immaterial by
the concluding part of the section, which expressly declares that
every patent obtained pursuant to that act, for any invention
which, it should afterward appear, had been known or used previous
to such application for a patent, should be utterly void. That
there was nothing in the act confining such use to the United
States, and that if the invention was previously known in England
or France, it was sufficient to avoid the patent under that act.
That the evidence would lead to the conclusion that the plaintiff
was the inventor in this case, but the court was of opinion that he
had slept too long on his rights and not followed them up as the
law requires to entitle him to any benefit from his patent. That
the use of the invention by a person who had pirated it, or by
others who knew of the piracy, would not affect the inventor's
rights, but that the law was made for the benefit of the public as
well as of the inventor, and if, as appears from the evidence in
this case, the public had fairly become possessed of the invention
before the plaintiff applied for his patent, it was sufficient in
the opinion of the court to invalidate the
Page 32 U. S. 314
patent, even though the invention may have originally gotten
into public use through the fraud or misconduct of his brother, to
whom he entrusted the knowledge of it."
Under this charge, the jury found a verdict for the defendant on
which a judgment was entered. There is a general assignment of
errors, which brings to the consideration of the court the
principles of law which arise out of the facts of the case, as
stated in the bill of exceptions.
It may be proper in the first place to inquire whether the
letters patent which were obtained in 1829, on a surrender of the
first patent, have relation to the emanation of the patent in 1822,
or shall be considered as having been issued on an original
application? On the part of the plaintiff, it is contended that
"the second patent is original and independent, and not a
continuation of the first patent." That in adopting the policy of
giving, for a term of years, exclusive rights to inventors in this
country, we adopted at the same time the rules of the common law,
as applied to patents in England, and that by the common law, a
patent, when defective, may be surrendered to the granting power,
which vacates the right under it, and the King may grant the right
de novo either to the same or to any other person. This
being the effect of the surrender of a patent in England, it is
insisted that the same consequence should follow a surrender in
this country. On this subject, it is said that the decisions of the
English courts are uniform, and that not even a
dictum can
be found that a second patent is a continuation of the first.
The counsel seems to consider this point of great importance, as
the plaintiff was an alien when the first patent was obtained, but
had become naturalized before the date of the second, and
consequently that this right under the second patent cannot be
governed by the law applicable to aliens. As the inquiry on this
head is whether the second patent has relation to the first, it is
not necessary to look into the laws, to ascertain the respective
rights of aliens and citizens on this subject. In regard to the
right of the patentee to surrender a defective patent and take out
a new one, there can be no difference between a citizen and an
alien.
Page 32 U. S. 315
That the holder of a defective patent may surrender it to the
Department of State and obtain a new one, which shall have relation
to the emanation of the first, was decided by this Court at the
last term in the case of
Grant v.
Raymond, 6 Pet. 220. THE CHIEF JUSTICE, in giving
the opinion of the Court says
"but the new patent, and the proceedings on which it issues,
have relation to the original transaction. The time of the
privilege still runs from the date of the original patent. The
application may be considered as appended to the original
application, and if the new patent is valid, the law must be
considered as satisfied if the machine was not known or used before
that application."
As this decision must be considered as settling the construction
of the patent laws on this point, it is conclusive in the present
case, and it is therefore unnecessary to examine the argument of
the plaintiff's counsel, which was designed to lead to a different
conclusion.
The second patent being a continuation of the first one, the
rights of the plaintiff must be ascertained by the law under which
the original application was made.
This law was passed on 17 April, 1800, and provides
"That all and singular the rights and privileges given to
citizens of the United States, respecting patents for new
inventions, &c., shall be extended to aliens who, at the time
of petitioning, shall have resided for two years within the United
States, &c., provided that every person petitioning for a
patent for any invention, art, or discovery pursuant to this act
shall make oath or affirmation before some person duly authorized
to administer oaths, before such patent shall be granted, that such
invention, art or discovery hath not, to the best of his or her
knowledge or belief, been known or used, either in this or any
foreign country, and that every patent which shall be obtained
pursuant to this 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 utterly void."
By the Act of 21 February, 1793, which limits patent rights to
citizens, it is provided,
"that every person or persons,
Page 32 U. S. 316
in his or their application for a patent, shall state that the
machine, &c., was not known or used before such
application."
The sixth section of this act provides that a defendant, when
prosecuted for a violation of a patent right, may give in evidence,
under a notice, among other matters,
"that the thing 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, or
that he had surreptitiously obtained a patent for the discovery of
another person, in either of which cases, judgment shall be
rendered for the defendant with costs, and the patent shall be
declared void."
It would seem from the above provisions that citizens and
aliens, as to patent rights, are placed substantially upon the
ground. In either case, if the invention was known or used by the
public before it was patented, the patent is void. In both cases,
the right must be tested by the same rule.
From the facts in the case, it appears that the plaintiff, while
residing in England, in 1813 or 1814, invented the instrument
secured by his patent. That before the came to the United States,
he made known his invention to his brother, to Mr. Manton, a
gunmaker in London, and to others. That shortly after he came to
the United States in 1817, he disclosed his invention to a gunmaker
in Philadelphia, and that in 1817 or 1818, the plaintiff's brother
sold the invention to a gunmaker in London. That in 1819, the
invention was sold and used in England, and that in the two
following years it was in public use there, and in the latter year,
also in France. That on 19 June, 1822, his first patent was
obtained. It also appears that in April, 1807, a patent was granted
in England to one Forsyth for fourteen years for an invention on
the same subject. This fact was shown by the plaintiff, it is
presumed, as a reason why he did not take out a patent in England.
The question arises from these facts and others which belong to the
case whether there was such a use in the public of this invention
at the date of the plaintiff's first patent as to render it
void.
Page 32 U. S. 317
By the plaintiff's counsel it is insisted that if an invention
has been pirated or fraudulently divulged, the inventor cannot
thereby lose his right to his own invention and property, and it
makes no difference that the public has acquired the use of the
invention without any participation in the fraud unless the
inventor has acquiesced in such use. The right of the plaintiff to
his invention is compared to his right to other property, which
cannot be divested by fraud or violence, and the case of
Millar
v. Taylor, 4 Burr. 2303, where seven judges against four held
that at common law, an author, by publishing a literary
composition, does not abandon his right, is referred to as
illustrative of the principle.
Several decisions by the circuit courts of the United States are
cited to sustain the right of the plaintiff. In the case of
Whittemore v. Cutter, 1 Gallis. 482, the court said
"It will not protect the plaintiff's patent that he was the
inventor of the improvements if he suffered them to be used, freely
and fully, by the public at large, for so many years, combined with
all the usual machinery, for in such case he must be deemed to have
made a gift of them to the public, as much as a person who
voluntarily opens his land as a highway, and suffers it to remain
for a length of time devoted to public use."
In the case of
Goodyear v. Mathews, 1 Paine 301, the
court in substance said "that if the plaintiff be the inventor, it
is immaterial, that the invention has been known and used for years
before the application." And in the case of
Morris v.
Huntington, 1 Paine 354, the court said that
"No man is to be permitted to lie by for years, and then take
out a patent. If he has been practicing his invention with a view
of improving it, and thereby rendering it a greater benefit to the
public, before taking out a patent, that ought not to prejudice
him. But it should always be a question submitted to the jury, what
was the intent of the delay of the patent, and whether the allowing
the invention to be used without a patent, should not be considered
an abandonment, or present, of it to the public."
This was a case where a second patent had been obtained, the
first being defective, and this, it would seem, was deemed
sufficient to protect the right of the plaintiff, though the
public
Page 32 U. S. 318
had been in possession of the invention for six years before the
emanation of the second patent.
Of the same import are the cases cited from 4 Mason 108, and 4
W.C.C. 438, 703.
The question what use in the public, before the application is
made for a patent, shall make void the right of the patentee, was
brought before this Court by the case of
Pennock v.
Dialogue, 2 Pet. 1. In this case, the Court said
that
"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 gone, cannot afterwards be
resumed at his pleasure, for when gifts are once made to the public
in this way, they become absolute."
And again,
"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
courts 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,"
the Court said
"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."
In this case it appeared that the thing invented had been in use
by the public, with the consent of the inventors, and through which
they derived a profit, for seven years before the emanation of a
patent. And this use was held by the court to be an abandonment of
the right by the patentees.
The policy of granting exclusive privileges in certain cases was
deemed of so much importance in a national point of view, that
power was given to Congress in the federal Constitution
"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."
This power was exercised by Congress, in the passage of the acts
which have been referred to. And from an examination of
Page 32 U. S. 319
their various provisions, it clearly appears that it was the
intention of the legislature, by a compliance with the requisites
of the law, to vest the exclusive right in the inventor only, and
that on condition that his invention was neither known nor used by
the public before his application for a patent. If such use or
knowledge shall be proved to have existed prior to the application
for the patent, the act of 1793 declares the patent void, and as
has been already stated, the right of an alien is vacated in the
same manner, by proving a foreign use or knowledge of his
invention. That knowledge or use which would be fatal to the patent
right of a citizen would be equally so to the right of an
alien.
The knowledge or use spoken of in the act of 1793 could have
referred to the public only, for the provision would be nugatory if
it were applied to the inventor himself. He must necessarily have a
perfect knowledge of the thing invented and its use, before he can
describe it, as by law he is required to do, preparatory to the
emanation of a patent. But there may be cases in which a knowledge
of the invention may be surreptitiously obtained, and communicated
to the public, that do not affect the right of the inventor. Under
such circumstances, no presumption can arise in favor of an
abandonment of the right to the public by the inventor, though an
acquiescence on his part will lay the foundation for such a
presumption.
In England it has been decided that if an inventor shall suffer
the thing invented to be sold and go into public use for four
months, and in a later case, for any period of time, before the
date of his patent, it is utterly void. In that country, the right
emanates from the royal prerogative; in this it is founded
exclusively on statutory provisions. But the policy in both
governments is the same in granting the right and in fixing its
limits. Vigilance is necessary to entitle an individual to the
privileges secured under the patent law. It is not enough that he
should show his right by invention, but he must secure it in the
mode required by law. And if the invention, through fraudulent
means, shall be made known to the public, he should assert his
right immediately, and take the necessary steps to legalize it.
Page 32 U. S. 320
The patent law was designed for the public benefit, as well as
for the benefit of inventors. For a valuable invention, the public,
on the inventor's complying with certain conditions, give him, for
a limited period, the profits arising from the sale of the thing
invented. This holds out an inducement for the exercise of genius
and skill, in making discoveries which may be useful to society,
and profitable to the discoverer. But it was not the intention of
this law, to take from the public, that of which they were fairly
in possession.
In the progress of society, the range of discoveries in the
mechanic arts, in science, and in all things which promote the
public convenience, as a matter of course, will be enlarged. This
results from the aggregation of mind, and the diversity of talents
and pursuits, which exist in every intelligent community. And it
would be extremely impolitic, to retard or embarrass this advance,
by withdrawing from the public any useful invention or art, and
making it a subject of private monopoly. Against this consequence,
the legislature have carefully guarded in the laws they have passed
on the subject.
It is undoubtedly just that every discoverer should realize the
benefits resulting from his discovery, for the period contemplated
by law. But these can only be secured by a substantial compliance
with every legal requisite. His exclusive right does not rest alone
upon his discovery, but also upon the legal sanctions which have
been given to it and the forms of law with which it has been
clothed.
No matter by what means an invention may be communicated to the
public before a patent is obtained, any acquiescence in the public
use, by the inventor, will be an abandonment of his right. If the
right were asserted by him who fraudulently obtained it, perhaps,
no lapse of time could give it validity. But the public stand in an
entirely different relation to the inventor.
The invention passes into the possession of innocent persons,
who have no knowledge of the fraud, and at a considerable expense,
perhaps, they appropriate it to their own use. The inventor or his
agent has full knowledge of these facts, but fails to assert his
right; shall he afterwards be permitted to assert it with effect?
Is not this such evidence of
Page 32 U. S. 321
acquiescence in the public use, on his part, as justly forfeits
his right?
If an individual witness a sale and transfer of real estate
under certain circumstances, in which he has an equitable lien or
interest, and does not make known this interest, he shall not
afterwards be permitted to assert it. On this principle it is that
a discoverer abandons his right if, before the obtainment of his
patent, his discovery goes into public use. His right would be
secured, by giving public notice that he was the inventor of the
thing used, and that he should apply for a patent. Does this impose
anything more than reasonable diligence on the inventor? And would
anything short of this be just to the public?
The acquiescence of an inventor in the public use of his
invention, can in no case be presumed, where he has no knowledge of
such use. But this knowledge may be presumed from the circumstances
of the case. This will, in general, be a fact for the jury. And if
the inventor do not, immediately after this notice, assert his
right, it is such evidence of acquiescence in the public use, as
forever afterwards to prevent him from asserting it. After his
right shall be perfected by a patent, no presumption arises against
it from a subsequent use by the public.
When an inventor applies to the Department of State for a
patent, he should state the facts truly, and indeed, he is required
to do so, under the solemn obligations of an oath. If his invention
has been carried into public use by fraud, but for a series of
months or years, he has taken no steps to assert his right; would
not this afford such evidence of acquiescence as to defeat his
application, as effectually, as if he failed to state that he was
the original inventor? And the same evidence which should defeat
his application for a patent would, at any subsequent period, be
fatal to his right. The evidence he exhibits to the Department of
State is not only
ex parte, but interested, and the
questions of fact are left open, to be controverted by anyone who
shall think proper to contest the right under the patent.
A strict construction of the act, as regards the public use of
an invention, before it is presented, is not only required
Page 32 U. S. 322
by its letter and spirit, but also by sound policy. A term of
fourteen years was deemed sufficient for the enjoyment of an
exclusive right of an invention by the inventor; but if he may
delay an application for his patent, at pleasure, although his
invention be carried into public use, he may extend the period
beyond what the law intended to give him. A pretense of fraud would
afford no adequate security to the public in this respect, as
artifice might be used to cover the transaction. The doctrine of
presumed acquiescence, where the public use is known, or might be
known to the inventor, is the only safe rule which can be adopted
on this subject.
In the case under consideration, it appears, the plaintiff came
to this country, from England, in the year 1817, and being an
alien, he could not apply for a patent, until he had remained in
the country two years. There was no legal obstruction to his
obtaining a patent in the year 1819; but it seems that he failed to
apply for one, until three years after he might have done so. Had
he used proper diligence in this respect, his right might have been
secured; as his invention was not sold in England, until the year
1819. But in the two following years, it is proved to have been in
public use there, and in the latter year, also in France. Under
such circumstances, can the plaintiff's right be sustained?
His counsel assigns as a reason for not making an earlier
application, that he was endeavoring to make his invention more
perfect, but it seems, by this delay, he was not enabled
essentially to vary or improve it. The plan is substantially the
same as was carried into public use through the brother of the
plaintiff in England. Such an excuse, therefore, cannot avail the
plaintiff. For three years before the emanation of his patent, his
invention was in public use, and he appears to have taken no step
to assert his right. Indeed, he sets up, as a part of his case, the
patent of Forsyth as a reason why he did not apply for a patent in
England. The Forsyth patent was dated six years before.
Some of the decisions of the circuit courts which are referred
to, were overruled in the case of
Pennock v. Dialogue.
They made the question of abandonment to turn upon the
Page 32 U. S. 323
intention of the inventor. But such is not considered to be the
true ground. Whatever may be the intention of the inventor, if he
suffers his invention to go into public use through any means
whatsoever, without an immediate assertion of his right he is not
entitled to a patent, nor will a patent, obtained under such
circumstances, protect his right. The judgment of the circuit court
must be
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 Southern
District of New York and was argued by counsel, on consideration
whereof it is adjudged and ordered by this Court that the judgment
of the said circuit court in this cause be and the same is hereby
affirmed with costs.
