A summary of the law of patents for useful inventions: with forms

Prefatory Note

In A. D. 1874, I published a Manual of Patent Law, smaller even than the present volume and intended mainly for unprofessional readers. The edition being exhausted — largely by sale to the profession— and the patent law having had' important additions made to it, by the action of the courts, I have rewritten the whole into a substantially new book, intending to make it more useful to lawyers than the former one, without, I trust, making the greater part less useful to unprofessional readers.

August, 1883.

W. E. S.

Chapter I. History And Nature Of The Patent Law

" I ^ HE patent law of these United States is, in some * sort, the offspring of the pre-existing system of Great Britain, which arose, not from positive enactment, but from a negative provision in a statute passed during the reign of James I, A. D. 1624,, curtailing the power of the Crown to grant monopolies, but excepting " Letters Patent and grants of privilege for a term of twenty-one years or under, heretofore made, of the sole working or making of any manner of new manufacture, within this realm, to the first and true inventor or inventors of such manufacture," etc. '

Although the patent laws of these two countries, statutory and constructive, are not identical in all respects — notably in the fact that the British courts construe an introducer, as well as an originator, to be an inventor — they are in many points, the same : in the earlier years of the republic the English cases were freely cited in our courts, and such citation, both to and by our courts, is still practiced to some extent ; but the mass of American patent litigation is so large in later years that there is little occasion to go to English courts for precedents.

SUMMARY OF PATENT LAW.

During our colonial existence, patents for invention granted by the crown were sometimes extended to have effect in these colonies.1

One colony, at least, had what was virtually a patent law.2

After the Declaration of Independence, and before the adoption of the present constitution, various of the states exercised the right of granting patents.3

1 An example is that of Thomas Masters, of Philadelphia, who, in A. D. 1 717, petitioned William Keith, Lieutenant Governor of Pennsylvania, setting forth that his majesty had graciously granted to his wife, Sybella Masters, two patents, one for curing corn, and another for weaving chip hats, and praying that the same might be recorded in Pennsylvania, which prayer was granted.

2 Witness the following from the printed statutes of Connecticut for the year 1672, page 52 : — " It is ordered that there shall be no monopolies granted, or allowed among us but of such new inventions as shall be judged profitable to the country and for such time as the general court shall deem meet." As early as 1716 this colony granted to Ebeneazer Fitch, of SufBeld. a monopoly of slitting mills for fifteen years ; and afterward kept up what was for those times an active business in granting patents of this sort, sometimes advancing to the grantee the funds necessary to put his invention into practice. Massachusetts, in 1641, granted to Samuel Winslow a monopoly of salt making after his peculiar method, for ten years.

3 New Hampshire, in 1786, granted to Benjamin Dearborn, a virtual patent for a printing press and for a book printed on it called the " Pupil's Guide." The next year Dearborn procured another exclusive grant covering a water throwing engine and weighing scales. John Fitch, from Philadelphia, and James Rumsey, from Virginia, contended before several of the state legislatures for the exclusive rights to propel boats by steam. There was no need of a contest from our modern stand point for the two systems were as different as could well be : Fitch had paddles at the sides of his boat worked by an engine within, while Rumsey attained propulsion by forcing a stream of water out at the stern and against the water of the river.

Rumsey founded a jRuniseian Society with Benjamin Franklin as president, procured the endorsement of Gen. Washington and generally prevailed over Fitch.

HISTORY AND NATURE.

The framers of the constitution of these United States, therefore, acted in the light of experience when they made provision for patents upon new and useful inventions, in the fundamental law of the nation. The constitutional provision for patents is contained in Article I, Section 8 :

" The Congress shall have power * * * : To promote the progress of science and the useful arts, by securing, for limited times, to authors and inventors the exclusive right to their respective writings and discoveries : * * * also to make all laws which shall be necessary and proper for carrying into execution the foregoing powers."

The first patent law of these United States was approved April 10, 1790, and, though it has been amended and changed many times since, there has been no radical departure from the system as originally founded.

The first patent law of these United States, approved April 10, 1790, prescribed a petition to the Secretary of State, the Secretary of War, the Attorney General, and demanded a fee of five dollars. February 21, 1793, the Act of 1790 was repealed and a new one passed permitting the merger of the existing state grants in regular national patents, and raising the fee to thirty dollars. By Act of July 4, 1836, the Patent Office and the office of Commissioner of Patents were created ; patents ran fourteen years, conditionally extensible for seven more ; provision for examination into the novelty of alleged inventions was made ; the fee for citizens was kept at thirty dollars with a drawback of twenty dollars if the patent was not allowed. The Act of August 29, 1842, made designs patentable. The Act of March 2, 1861,

SUMMARY OF PATENT LAW.

abolished extension and made the term of patents seventeen years ; the application fee was made fifteen dollars and the final fee twenty dollars. The later acts are substantially codifications of the Act of 1861 as modified by construction.

The language of the provision for patents contained in the constitution is worthy of careful attention, for it states the reasons why patents are granted ; which reasons are not the ones that the popular understanding supposes them to be. The belief is very generally entertained that inventors have a natural right to the exclusive use of their inventions, that the passage of the patent statute is but a recognition of this natural right and that the chief end and aim of the law is to give rewards to the inventors. Such is not the |pct : an inventor has no natural right to the exclusive use of his invention.1

It is a tolerably self-evident proposition that one natural right of a man is to have an equal chance with his fellow-man to amass wealth. When, of two neighbors in the state of nature as nearly as may be, rudely cultivating the soil with primitive and awkward tools, one of them invents an improved implement, there is no principle of natural justice which forbids the neighbor, on seeing how well the new implement works, to make and use one like it. The neighbor's act does not injure the inventor in any possible way. If the neighbor has not the right to make and use the improved tool he is shut off from an equal chance with the inventor of making gains, and this when his hindrance is no help to the

HISTORY AND NATURE.

inventor. It is not uncommon to urge upon this point that as the inventor confers a benefit on his neighbor by giving him knowledge of the invention, the neighbor is bound by that gratitude which is natural to the race, to make some return therefor : this may be admitted, but the principle is not so strong as the one that the inventor is bound in common justice to his fellow, to allow him an equal chance with himself to amass wealth, when doing so entails no injury on himself. Not only this but the neighbor, at the time the inventor brought out his new tool, might have already begun to ponder upon the poor work done with the old one, and very soon would have invented the improvement himself and thus acquired as good a title to the exclusive use thereof as the prior inventor, a use, however, from which he would be debarred by a person having no better title than himself, a thing clearly unjust.

This is by no means a suppositious or fanciful case ; it is a very common one. On an average about 20,000 applications for patents are made yearly to the United States Patent Office and only about 12,000 patents are granted thereupon ; the remainder are generally rejected for want of novelty ; that is, because some one has invented the same thing previously. At a first glance this may seem surprising but on further consideration it ceases to be so, for it is a recognized fact that the mind is governed by laws of action just as much as the body ; so that given a certain mechanical desideratum to be produced and two minds of similar knowledge and habits to produce it, and they will be quite likely to travel the same road to the same result.

SUMMARY OF PATENT LAW.

As a learned judge has said : — " An inventor has no right to his invention at common law. He has no right of property in it originally. The right which he derives is a creature of the statute and of grant, and is subject to certain conditions incorporated in the statutes and in the grants. If to-day you should invent an art, a process or a machine, you have no right at common law, nor any absolute natural right, to that for seven, ten, fourteen, or any given number of years against him who invents it to-morrow, without any knowledge of your invention, and thus cut me and everybody else off from the right to do to-morrow what you have done to-day. There is no absolute or natural right at common law that I, being the original and first inventor to-day, have to prevent you and everybody else from inventing and using to-morrow or next day the same thing."1

If an inventor has a natural exclusive right for his invention for one moment he has it forever ; and if any limit of time can be set to such a right only infinite wisdom is adequate to so delicate a task. To state the doctrine of natural right thus is to show that it does not exist. The law has never recognized the doctrine of natural right for it cannot recognize what does not exist.

The Policy of the Patent Law is primarily a selfish one on the part of the public. The benefit of the inventors is a secondary consideration ; it is only a means to an end.

The constitution of these United States gives Congress power to enact patent laws for a definite purpose, which iAm. H. & L. S. & D. Co. v, Am. Tool & Machine Co., 4 Fisher's Patent^Cases, 294.

HISTORY AND NATURE.

is " to promote the progress of science and the useful arts," and the means to be used are, " by securing, for limited times, to authors and inventors the exclusive right to their respective writings and discoveries." The reason for enacting patent statutes is clearly stated in the fundamental law.1

The theory of the law is that the promotion of science and the useful arts is of great benefit to the community at large and that such promotion can be attained by securing to inventors and authors for limited times the exclusive right to their inventions and writings. That such theory is correct it is needless to say. It is almost self-evident, or at any rate susceptible of proof, that there has been no more powerful factor in the production of the magnificent material prosperity of the United States of America than wise patent laws and their kindly construction by the courts. A Commissioner of Patents held, after careful estimate, that one-half of the manufacturing investments of the whole country are based upon patents. A later official opinion puts patents as the basis of two-thirds of the manufactures of the nation. It needs but little observation to learn that there is hardly an important manufacturing industry in the Union that has not hact its success assured at some time by one of these qualified monopolies. After making due allowance for that versatility and vigor produced and stimulated in a people by its growth in a new country, the wisely framed and kindly construed patent law remains a

1 Day v. Union Rubber Co., 3 Blatcliford, 500 ; Kendal v. Winsor, 21 Howard, 322.

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factor as potent as any, if not more potent than any other, in the production of our unrivaled national prosperity.1

It might be supposed that the advance in prosperity due to inventions would be confined to patent owners, during the existence of the monopoly, but such is not the case ; the general public is benefited, even while the patents are in force, more than the patent owners, in the cheapened price of manufactured goods and the like.3

It has not rarely been said that the invention and introduction of labor saving machinery has lessened the demand for manual labor and lowered the wages thereof. Statistics show that in the whole result the demand for labor is enlarged and wages raised by such inventions 3

1 The production of woolen goods in Massachusetts in 1865 was 46,008,141 yards, the number of employees 18,753; the production in 1875 was 98,208,280 yards, number of employees 19,036; an increase in proportion of 96^ per cent., and in employees of l£ per cent. The number of pairs of. boots and shoes made in Massachusetts in 1865 was 31,870,581, and in 1875 was 59,762,866, with no increase in the number of employees. The production of carpeting in Massachusetts in 1875 was four-fold the production of 1865, while the number of employees only doubled. Patented labor-saving machinery was the chief agent in all this increased production. Massac htisetts Census of Manufactures, 1875.

In twenty years after Hayward of Connecticut discovered the use of sulphur in rubber the annual sale of goods made under the invention was over $2,500,000 in Boston alone, a vast industry created by one invention. The profits of the Lowell Company on carpets made upon the Bigelow loom from 1859 to 1863 were nearly $700,000, the profits of the Hartford Company from the same source from 1855 to 1863 were over $1,000,000. Rep. Com. Pats,. 1863, Vol. I.

2 The average value of the boots and shoes, mentioned in the last foot note, was $1.80 per pair in 1865 and $1.50 per pair in 1875. The value of the carpets mentioned was $2.00 per yard in 1865 and less than 73 cents per yard in 1875. Massachusetts Census of Manufactures, 1875.

3 In 1850 there were 52,069 tailors in the United States in a population of 33,191,876, or one tailor to 445 inhabitants. In 1870,

HISTORY AND NATURE.

The patent laws promote the progress of useful arts in different ways, prominent among which are : 'first, by stimulating inventors to constant and persistent effort in the hope of producing some financially valuable improvement ; second, by protecting the investment of capital in the development and working of a new invention from ruinous competition till the investment becomes remunerative •/ and third, by accustoming large numbers of mechanics to the use of machinery requiring more than ordinary intelligence, thus educating them not only in mechanical knowledge but also in practical skill and deftness.2 notwithstanding the introduction and use of many thousands of sewing machines, there were 106,679 tailors in a population of 38,558,571 ; or, one tailor to 361 inhabitants. Meanwhile, the manufacture and sale of sewing machines had practically given profitable employment to about fifty thousand persons — that industry employed 17,372 mechanics in the sewing machine shops in 1870. The following table shows the hands employed in the factories of the United States in the years named.

YEAR. HANDS. WAGES. POPULATION.

An innumerable number of labor saving machines were introduced between 1850 and 1870, but the number of laborers employed more than doubled, and the wages nearly quadrupled, while the population only increased about 67 per cent. — Census Reports.

1 The Bigelow loom before referred to in a foot note, required the investment of a million dollars in one instance before it could be remunerative. The scarcity of capitalists who would make such an investment experimentally with a certainty that competition would ensue the moment the invention was taken to be a practical success exceeds computation ; it must be left for the imagination. — Rep. Com. Rat. 1863, Vol. 1.

2 Again and again full sets of American labor-saving machinery, notably watch machinery, boot and shoe machinery and gun machinery, have been set up abroad and put under the attendance of the

IO

SUMMARY OF PATENT LAW.

The efficacy of our patent laws in all these directions is not only well understood by native observers but is admitted, understood and acted upon by prominent foreign manufacturers, journals and governments.1

A Patent is a Contract between the inventor and the government representing the public at large.3

The consideration moving from the inventor is the production of a new and useful invention and the full disclosure thereof to the public — which disclosure is embodied in the application for patent — -whereby the public is enabled to freely practice the invention when the patent expires. The consideration moving from the government is the grant of an exclusive right, for a limited time, which grant the government allows the inventor to protect and enforce through its courts.

It is necessary to a clear understanding of the patent law and the decisions of the courts that it should always be remembered that an inventor is not entitled to a patent giving him an exclusive right to the use of his invention as a matter of natural right but that the governbest foreign mechanics, particularly Swiss and English artisans, and they have always failed to give anything like the results achieved here, because of the lack of skill and deftness of the foreign workmen as compared with our native artisans.

1An article to this effect in the London Times, of August 21, 1878, is a sample of a number which have appeared in that journal on our patent system. See also the address of M. Edouard Favre-Perret at. Chaux-De Fonds, Nov. 14, 1876, Swiss Commissioner to the Centennial Exposition, printed in — among other papers — the Hartford- Daily Times, of January 2, 1877. The German patent law and German patents are obviously modeled after those of the United States. Switzerland deliberately adopted the policy of not granting patents and is now agitating for a law like ours.

2Ransom y. New York, 1 Fisher's Patent Case, 252.

HISTORY AND NATURE.

II ment acting in behalf of the public, grants the patent only on condition that the applicant produces a new and useful invention and makes a full disclosure of it to the public.

It is not uncommon, when this topic is under consideration, for the inquiry to be made why the government does not protect inventors in their exclusive rights at its own expense. There are many answers to such a question. The government does not protect any right of property in a citizen at its own expense. The law gives a man the right to have debts due him paid, but it does not collect those debts at its own expense. A practical answer to the question is that if the government were to attempt to carry on, at its own cost, all suits for infringement that patentees should request, it would require such a number of courts and such a host of advocates that the whole national revenue would hardly suffice to pay them, and the whole patent system would break with its own weight. Another practical answer is that the government would find in many such suits that the alleged inventor had not given the consideration demanded for his patent, in that his invention was not new ; and the public would be unjustly taxed to pay the expense of suits which the patentee had no right to have brought. There are other answers of equal force.

The government provides the machinery of the courts to enforce the rights of inventors. This machinery can be set in motion by the patentee ; and by the provision of this machinery the government practically does its whole duty in the premises.

The method followed by the United States in the granting of patents for new and useful inventions seems,

SUMMARY OF PATENT LAW.

in the light of experience, to be the best in the world. Foreign journals freely admit this ; so do foreign governments, in assimilating to our system in greater or less degrees.

Few of the foreign governments make an examination into the novelty of an alleged invention presented as subject matter for a patent ; none of them make the thorough and systematic examination that is made here.

The. small sum of money paid by the applicant for a patent is not a payment for the franchise — regarded in that light the fee is absurdly small — but it is money paid to support trained experts kept to examine into the novelty of alleged inventions and to prevent inventors from going away from the Patent Office with clearly invalid patents. Were it not for this governmental examination no one would purchase a patent or risk capital in working under it, except after a thorough and expensive search and vindication by a private professional expert. The government really does a large amount of expert work for a small sum of money.

That the examination made is not always perfect is not surprising when the vast number of applications acted on is taken into account, there being about twenty thousand applications per year. The matter for surprise is not that so many mistakes are made by the Examiners of the Patent Office but that they make so few.

Chapter II. Patentable Subject Matter

r I ^ HE statute enacts that: — "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by "law, and other due proceedings had, obtain a patent therefor."1

He who understands each and every part of the foregoing section, as the same is construed by the courts, has a good knowledge of a large part of the patent law ; but it is not likely that the English language contains another collocation of the same number of words upon the construction of which the amount of skill, acumen, research and learning has been expended that has been lavished upon these paragraphs. The section requires —

i. That a patentable thing must be "invented or discovered " by the patent taker.

1 Title LX. Chap. I, Sec. 4886, Revised Statutes,

2. That it must be "new," a matter or topic hereinafter treated in a subsequent chapter upon " Novelty."

3. That it must be " useful," a topic treated in a subsequent chapter entitled " Utility."

4. That it must be an "art, machine, manufacture or composition of matter" or an "improvement thereof," a topic treated in this present chapter under the head of " Patentable Subject Matter."

5. That it must be " not known or used by others in this country before his invention or discovery thereof," a topic treated in a subsequent chapter entitled " Novelty — Prior Use."

6. That it must be " not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof," a topic hereinafter treated in the chapter entitled "Novelty — Prior Patent or Publication."

7. That it must be "not in public use or on sale for more than two years prior to his application," a topic hereinafter treated in the chapter entitled ' ' Public Use — Two Years."

8. That it must not " have been abandoned," a topic hereinafter treated in the chapter entitled "Abandonment."

The words " invented " and " discovered " are for the purposes of the patent law synonymous.1

An invention to be patentable in these United States must be original with the applicant therefor. Some countries, notably Great Britain, allow the first introducer of an invention to take a patent therefor, holding

1 Morton v, New York Eye Infirmary, 2 Fisher's Patent Cases, 321.

PATENTABLE SUBJECT MATTER.

such an introducer to be the first inventor within the realm. Under our law the applicant must be really the inventor — the invention must be original with him. Although the statute specifies " any person " this is construed to permit joint inventors, no matter how many in number, to apply for and take a patent for a joint invention. Minors can take patents as well as adults ; likewise married women as well as single persons.

The patent law does not protect every new and useful invention or discovery : a discovery in mathematics, such as a new method of squaring a circle, or computing the area of an irregular figure, is not a patentable invention ; neither is an invention in finance, such as a new method of banking; nor an invention in the science of government, such as a new method or principle of laying taxes ; and it was held by a really learned judge that the art of producing insensibility in the human frame by means of inhalation of etheric vapors, although the discovery of the anaesthetic powers of ether was original with the patentee, is not a patentable invention.

He said : — " a discoverer of a new principle, force, or law, operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent. It is only when the explorer has gone beyond the domain of discovery and has laid hold of the new principle, force, or law and connected it with some particular medium or mechanical contrivance by which or through which it acts on the material world, that he can secure the exclusive control of it under the patent laws. He then controls his discovery through the means by which he has brought it into practical action or their equivalent and only l6 SUMMARY OF PATENT LAW.

through them. It is then an invention although it embraces a discovery."1

The inventions (aside from matters of design) specified as patentable, are :

1. An art, or an improvement of an art.

2. A machine, or an improvement of a machine.

3. A manufacture, or an improvement of a manufacture.

4. A composition of matter, or an improvement thereof.

An Art in the sense of the patent law is substantially the same thing as a process or method : a patent for an art is for a way or manner of doing something in distinction from the means made use of in the process, and in distinction from the product of a process. That which is substantially a single invention, not rarely presents subject matter for patentability as an art, a machine and a manufacture; for instance, there is at this writing a patent in existence for an improvement pertaining to the manufacture of car-wheels ; the body of the wheel is of cast-iron and the tire of steel both poured while molten into the same mold, at or about the same time, the two metals being kept separate by an annular gate of sheet iron put into the matrix of the mold.

In this case the inventor had his choice to patent the process, the mold or the wheel, all being new ; or he might patent all three, thus covering an art, a machine and a manufacture in what is really a single . invention.

1 Morton v. New York Eye Infirmary, 2 Fisher's Patent Cases, 321.

PATENTABLE SUBJECT MATTER.

He chose to patent the art, claiming the process of casting a wheel having a body of one kind or quality of metal and a tire of another kind or quality of metal by pouring both metals into the same mold at or about the same time, the two metals being kept apart while molten by, a circumferential band in the mold.

It may be remarked here that when a new principle in nature has been discovered and a way devised of practically applying the principle — probably in all those cases which admit of it — it is advisable to claim the invention as a process or art if it is susceptible of being thus claimed ; for then the use of any agencies involving the application of the principle will be an infringement of the patent, while if only the particular means — as the machine made use of — are patented, another person may devise some other means which are not legal equivalents therefor, to accomplish the same result, and thus avoid infringement while really making use of the invention.

A process may be put in practice by means of mechanical or chemical agencies according to its nature ; in either case new agents may be employed to produce a new result, new agents may be employed to produce an old result, or old agents may be used in new relations to reach an old or a new result, and in either case the process will be patentable.