A Collection of the Most Important Cases Respecting Patents of Invention and the Rights of ...

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Preface

The collector of these cases having been upwards of thirty years in the office of the Rolls Chapel, has frequently had his attenlion drawn to patents and specifications of inventions, that being one of the offices in which such specifications are enrolled; and having for many years been concerned for inventors, in soliciting patents for their inventions, he has consequently been led to think much upon the subject, and has felt great surprise, and regret; that no book of the kind, now proposed, has ever been produced by any gentleman versed in this sort of business, and competent to- the work.

He has mentioned his plan to several gentlemen in the profession of the law, to others^

VI PREFACE.

who, like himself, are employed as agents for procuring patents, and also, to some scientific and mechanical persons, who have uniformly approved of the idea; and spoken in the strongest terms, both of the necessity and utility of such a woi:k as is now offered to the public.

He has, it is true, in some degree, been anticipated by Mr. Colher's " Essay on the * Law of Patents for Inventions,'' and by Mr. Hands's book on " The Law and Practice of Patents for Inventions f but as appears to the compiler and those whose opinion he has been favoured with upon the subject, not in siich a manner as to preclude the necessity of the present undertaking, as they are neither of them regular reports of cases, , shewing the arguments of counsel, and giving the dicta of the judges setthng the various points ; besides which, one has given much extraneous matter, and the other is almost exclusively confined to forms, with many of which the patentee or his agent has nothing to do, it being the duty of the oflficers in the offices through which the patent passes^ in

PREFACE. VU

its progress, to draw most of the instruments there given.

Those books, however, are now nearly, if not quite out of print, having met with a

very rapid sale, from the want experienced

*

not only by patentees, but by the profession, of a work which would bring the whole of the law of patents into one point of view; the compiler, therefore, is induced to offer the present collection to the public, not from any confidence in his superior qualifications for such an undertaking, as he is aware that the only merit he can claim is that of diligence in collecting the materials. A great deal of laborious research, and he hopes due diligence, has been given, in collecting from various sources, what appeared to him to be the most important decisions upon the subject, and he takes this ' opportunity of expressing his grateful thanks to those gentlemen of the profession who have kindly furnished him with the papers in many of the cases here reported, which he had no means of bringing before the public without their liberal assistance ; but still many cases may.

Vlll PREFACE.

and certainly do remain, of which no report is given, and which the parties interested may consider as important as those included in this work. To such he has only to observe, that he has inserted every case he has been able to procure,- which contained any new points resj>ecting patents, or which had acquired notoriety by the magnitude and importance of the invention ; but if his labours should be so well received as to require a second edition, he respectfully solicits the communication of papers in any causes which may be omitted in this collection ; and he will, with thankfulness to the communicator, insert a report of any important or new decision in a future edition, or should he be furnished with sufficient matter, he intends to lay it before the public in a supplemental volume, so that the purchasers of the present edition need not incur any more expense than necessarily arises by the increased bulk of the work, or be under the necessity of purchasing the second edition. Some cases might perhaps have been added from the Chancery reports, and it may be

PREFACE. IX

thought an error of judgment to have wholly omitted them, but they would have swelled the size of the book beyond his wish, and as most, if not all of them, have been referred to the courts of law, it is hoped that every requisite information upon the subject will be obtained by confining the work to decisions in those courts ; besides which, the Court of Chancery never decides upon the validity of a patent, the practice there being nothing more than to grant an injunction, at the prayer of the patentee, against any person infringing his patent, and to order an account of profits ; but if any question arises upon the validity of the patent, the novelty of the invention^ or the sufficiency of the specification, it is uniformly referred to a court of law.

Rolb Chapel Office^ August, 1816.

Index To The Cases

The Cases printed in Italics are cited hy the Judges or

Counsel in the following Reports.

Arkwright, Ex parte 141 Arkwright v. Mordaunt 6q Arkwright v. Nightingale 37 Boulton v. Bull l62

Bircot*s Case 201 , 205, 233 Browning v, Wright 251, 254,

' 257, 261 Bovill V. Moore 36l

Cameron v. Gray 220

Cartwright v. Amatt 240

Cartwright y. Toplis 241

Chippendale y. Tondinson 253 Cochrane, Lord, v. Smethurst

175, 19 J, 199* 203 Edgeberry v. Stephens 36 Evans v. Martin 255

Fielder V. Studley 25 1, 258 Harmar v. Playne 311

Hartley's Case 170, 208> 267 Hayne v. Maltby 156

Hesse v. Stevenson 244

Hornblower v. Boulton 221 Huddart v. Grrimshaw 265

James% Dr,f Casfi 199« 208 Jessop's Case 182, 203

The King v. Arkvnright 61

v. Else 144

Koops, Exjtarte 11

La Roche Y. fVakeman 254^255 Leicester, Earl of, v. Heydon

318 833 827 46 176 159

Marches Case Miller y, Taylor Mitchell V. Reynolds

Morris y. Branson 202, 233 Oldham v. Langmead I57> 16O Pugh y. Duke of Leeds 326

Smith V, Dickenson 299

Tennant's Case 429

Thomas v. Fopham 326

Turner v. Winter 145

Watson V* Pears 825

JVilUams y. Brodie 97

fFoocT^ C«e 182

ERRATA.

Page n5, line '5, for in effisct, r^^ an eftct.

fBg^ 362, lines 5 and 8^ for Mr. Cumden, read Mr. Crunden,

Introduction

Rejecting Monopolies^ and the History of Patents

for Inventions.

The system of monopoly as exercised prior to tbe statute of 21 Ja. L cap. 3, was not only a means of rewarding favourites of the Crown, and faithful servants of the public, but had also become a source of revenue to the Crown, arising from the rents sometimes reserved by the Letters Patent granting monopolies to individuals and companies, who, by having the sole privilege of making or vending any article granted to them, were enabled to obtain great advantage to themselves, and such monopolies by their' abuse had become a serious grievance to the public.

These monopolies have been at various times the ground of complaint on the part of the public ; and great inconvenience having been experienced from them, Queen Elizabeth, in order to prevent an act being brought into Parliament for that purpose, called in some of the most offensive grants. But the principle of granting such exclusive privileges, although perhaps in a limited degree, still continued in use until near the end of the reign of King James the First, notwithstanding that monarch, soon after his coming to

B the crown, had declared himself an enemy to them. The House of Commons however, at this period, ga^ie great attention to the subject, and after much investigation, and many complaints of this and other abuses of the Prerogative, a bill passed that house in the 19th year of this reign, for the purpose of restraining monopolies, and which bill was ordered to be carried to the Lords with a special recommendation ; but it was by them rejected.

In the Parliament which met IQth Feb. 21 Ja. I. the Commons, profiting by the union which for a short time seemed to subsist between the King and his new Parliament, lost no time in bringing in another bill for restraining monopolies, the former bill having been, as Hume says, ^* encouraged by the King, but had failed by the rupture between him and the Commons :* for although the King was stated to have recalled all Patents of Mono* poly, yet the Commons were not satisfied without a declaratory law against them. But it does not appear that the King really intended to put an end to grants of this description, if the act had not passed ; as many grants are recorded in this veiy year, and during the progress of the bill, of sole privilege for twenty-one years and other terms, not only for new inventions, but for matters which are not stated in the grants to be new inventions ; some of them reserving rents to the Crown, and one in particular, extending the privilege to Scot-, land and Ireland ; a practice not in use at the present day, as Patents of Invention for each of the three parts of the United Kiagdom now pass under distinct seals.

The act was made a declaratory, rather than an enacting statute, as monopolies had at all times been considered contrary to the ancient and fundamental laws of the realm, as well as to Magna Cbarta ; and many had, at different times previous to the passing of this act, beein set aside in the courts upon those grounds. They were also found by experience to be very prejudicial to an extension of commerce.

This bill was read a first time in the House of Commons, on the 24th Feb. and passed that house on the 13th March ; when it was ordered " to be carried up to the House of Lords alone, by Mr. Glanvyle well attended, with a special recommendation from the House of Commons of the good attention thereof to it.*'

The fate of this bill was more fortunate tliafi that of its precursor ; as, after much consideration and delay, and several amendments by the Lords, and some conferences between them and the Commons, it passed the Upper House, and having re« ceived the Royal Assent on the 2d Nov. 1624. 22 Jac. 1. became the law of the land, upon which all subsequent patents for the sole use of inven* lions are grounded, and from this period our present law of patents may properly be said to com« mente.

It is not the object of this work to make a dis« play of learning, by defining the word '* Monopoly ;" or to give an account of the different flMnopolie» which have been practised in Greece and elsewhere, or even in England, prior to thci Statute of James, or to give the opinion of Gra*

b2 tius^ or other learned authors of antiquity upon the subject, as hatb been done by the late essayist *.* on the Law of Patents for new Inventions." SuflSce it to say, that Sir Edward Coke, in his 3 Inst. 181, gives the following definition of a monopoly. — ^^ A monopoly is an institution or allowance by the King, by his grant, commission, or otherwise, to any person or persons, bodies politic or corporate, of or for the sole buying, selling, making, working, or using of any thing, whereby any person or persons, bodies politic or corporate, are sought to be restrained of any freedom or liberty that they had before, or hin*- dered in their lawful trade ;^ which definition was certainly correct, according to the practice before the passing of the statute now in force upon that subject : but a more just definition of the word, according to the present state of the law, is given by Hawkins, in his Pleas of the Crown, L 470, where he says, ^^ A monopoly is an allowance by the King to any person^ for the sole making, selling, &c. any thing, so that no person be restrained in what he had before, or. in using his lawful trade."

. The principle of the kind of monopolies under consideration, namely Patents for Inventions; is now pretty well understood ; and it is generally flowed, that though it would be infinitely mis* chievous to the public, if useful discoveries were to be for ever locked up and made the property of private individuals, yet it is equally useful to the public, that the first inventor of such useful discoveries should have, the benefit of them fot a

INTRODUCTION. D

limited time ; for it is plain, that the public would have no benefit, that there could be no improvement in the manufactures of the country, unless the labour, the time, and the expense of ingenious men were applied to the purpose of new discoveries and improvements.

It is well known that the most useful discoveries that have been made in the arts and manufactures of the country have not been made by speculative and recluse philosophers in their closets ; but by ingenious mechanics, practically ac* quainted with the subject matter of these discoveries, h therefore follows, that those persons whose only means of getting their subsistence is by the exercise of their own labour, skill, and ingenuity, must necessarily be prompted by an expectation of advantage to themselves, to spend much time and labour, and incur the expense of experiments in stepping out of the beaten track; and endeavouring to bring forward any great or essential improvement in the branch in which they are concerned. Such improvements frequently require not only ingenuity, but much thought, long attention, great labour, and repeated experiments ; not only requiring labojaf, but attended with considerable expense. It could not therefore be expected, that the most ingenious men of this description should sacrifice their time %nd labour in seeking improvements which, although of great benefit to their country, would be ruinous to themselves, unless some mode was devised to secure to them an advantage from their invention.

The most fair and equitable mode for doing ^ this seems to be that which t}]^ statute of 21 Jac. has provided, which enables the Crown to' secure to the inventor of any new and useful discovery, the exclusive benefit and profit of it for a limited time. It is fair and equitable for this plain reason, because if the invention is of no use, or has no ingenuity^ and produces no beneficial effect, the exclusive enjoyment of it will produce no profit to the inventor. On the contrary, if it is of great ingenuity, and a considerable improvement' to manufactures, and benefit to the public, the exclusive profit for the time limited will be of consequence to the inventor ; and therefore this mode of encouraging ingenuity seems calculated to produce its effect, without violating any principle of commerce or of justice ; because the reward is exactly proportioned to the merit and utility of the invention : the more meritorious and beneficial to the public any discovery will be when laid open, the more beneficial it is likely to be to the inventor while he has the exclusive enjoyment of it. It takes nothing from the public of which they were before in possession ; while it tends greatly to promote the general interest of the community. The justice and equity of such monopolies cannot therefore surely be disputedi and still less their utility.

Many instances might be adduced to prove that, without the hope of such reward^ ingenious persons would not sacrifice their time and property in bringing their ideas into practical use ; but it vrill be sufficient to mention the very im-

INTRODUCTIOIC. 7

portant improTements of Mr. Watt upon the steam-engine, who devoted many years, and spent a very considerable sumofmoneyin making experiments before he could effect his object^ which it is not in the natbre of things to suppose he would have done, if he was not to have an exclusive privilege so as to prevent the world at large from availing themselves of his skill, labour, and expense, the moment he had brought bis invention to maturity. But it is unnecessary to say any thing more in defence of the restricted monopoly now in use aiider this statute ; as^ however odious in former times such monopolies were looked upon, and which, indeed, when carried to the extent they were previous to the statute, were extremely pernicious to the public weal ; they are now become very advantageous to the commercial prosperity of the country, and manufacturers and others are ikOt only not ashamed, but even proud of having their manufactures and inventions called ^^ Patent,'' and themselves styled " Patentees."

In order that the law of patents, and the foundation and meaning of such grants may be clearly understood, and the whole law upon the subject brought into one point of view, it has been thought proper to give, at the end of this introductory chapter, the declaratory statute by which the law of patents of invention is now determined, and upon which alone they rest ; and there might also have been added, the explication of the more material parts of it^ by that great luminary of the law, Sir Edward Coke ; in whose time, and with whose assistance (he having been chairman of the committee .to ^ whom the bill was referred), this act was. framed and passed (and who of course must have been fully competent to explain the meaningand intent of it), as given in 3 Inst. 182 ; but as his comment relates mostly to the parts of the act with which we have at present nothing to do, it is omitted.

There is also added, the form of letters patent for inventions, as now in use; although, it may be observed, that the powers and provisoes contained in these patents have varied frdm time to time, agreeably to the suggestions of the Attorney or Solicitor General for the time being, whose duty it is to draw these instruments, and who, by the * King's warrant, is directed ** to insert therein all such clauses, prohibitions, and provisoes, as are usual and necessary in grants of the like nature, and as he shall judge requisite.'^

The most material alteration that has takcfn place in these grants, is the addition of the proviso for enrolling a specification within a given time ; which was not introduced into these letters patent until near the end of Queen Anne's reign ; although we find that proviso spoken of in the ar* guments in some of the following cases, as a legislative measure ; but no provision whatever is made in the act, for enrolling any description which should enable the public to practise the inven* tion at the end of the monopoly granted to the patentee^

There was, indeed, a sort of specification generally contained in the patent, which must, have been given in the petition praying for the exclu* sive privilege ; but it was not such a specification as is now requisite, and which would enable the public to manufacture the article when the patent-right had expired ; and there was no clause or proviso inserted in the patents that if the descrip-n lion given therein should be insufficient for that purpose, the patent should be void ; consequently the world was entirely dependent upon the fidelity, and it may be said in many cases, the generosity of the patentee, whether the invention should become public at the end of his term or not, as it is evident that mp,ny very important inventions, without a proper and sufficient specification for the benefit of the public, might still be withheld from the world as to their public use and exercise.

Hence, no doubt, and either from the conviction and experience that fraud and concealment had been made use of by patentees, in order to keep their inventions from being brought into public use upon the expiration of their patents, or perhaps from its having been discovered that it waa unsafe for the inventors to give a full description of their inventions before their patents had passed the Great Seal (as their privilege only commences at that period, and if by any means, however fraudulent, the invention should previously have been made public, the patent would be void), the law, officers of the Cro^wn found it expedient; and even necessary, both for the advantage of the public and the patentee, to introduce tiiis proviso.

The time allowed for enrolling the specification was varied at difierent periods, having at

10 IRTJeUHMlCTl«jr«

first usually been four months from the day of tbe date of the letters patent ; but when the latl^ Lord Alranley was Attorney General, he reduced the time to one month, under the idea, it is pre* sumed, that the invention should be perfected without further experiments before the patent was obtained, and that one month was amply sufficient to put the specification in due form; but tibie time given for this purpose has lately been extended to two months, probably on acoouBt of the difiiculty of drawing such a specifietttioii in matters of great importance as shall etiable a patentee to support his patent if brought into a court of law, as most of the actions upon patents have turned upon the insufficiency of the i^ecification.

This time however is sometimes enlarged to ittch longer period as may be thought proper by the Attorney or Solicitor General, according to the citeumstances of the case, upon a request to him at Ae time he is applied to for his report upon the petition for a patent, particularly if the inventot In his affidavit of his invention makes oath that it is his intent to apply for patents for Scotland and Ireland, in which case it is usual to allow six ICionths, as patents take longer time to be completed in those countries than in England; and if tbe specification was enrolled here within the usual time, the invention might perhaps be brought into public use in those countries before such patents had passed the respective seals, whereby the inventor would lose the benefit of them. But it should be observed^ that if the application is

INTRODUCTIOir. 11

not made at the time beforementioned, and an order procured accordingly, the King's warrant vfill be made out with the proviso for enrolling a specification in the usual time, and it will then be too late to have the time enlarged without incurring the expense and loss of time (which is often a greater object with inventors than tbe expense) of beginning the process of soliciting the patent de nwo^ as the Lord Chancellor him-» self has not the power of dispensing with the pro^ viso, or enlarging the time limited for enrolling the specification, if the patent has passed the great seal.

In the case, ex parte Koops, 6 Ves. &&di 22d Jan. 1802, a petition was presented by the patentee of an invention of making paper of straw, and the object of it was, that the Lord Chancellor would dispense with the enrolment, or that some precautions should be taken to pre-» vent the specification firom being made public, suggesting the danger that foreigners might obtain copies of the specification in consequence of snch enrolments

. Lord Eldon, C ^^ How can I do this ? Eithw upon this or some other case in the last session a clause for this purpose was inserted in an act of parliament ; and upon the motion of Lord Thor* I0W5 upon reasons applying not only to that but to all cases, and seconded by Lord Rosslyn^ the clause was universally rejected, and rejected, at it appears to me, upon very substantial grounds^ in which I readily concur. As to the worth of the sqpprehension suggested, a man has nothing mone to do than to pirate your invention in a single instance, and he will then force you to bring an action, and then the iq;>ecification must be. produced.

" But with regard to the King's subjects a very strong objection occurs, which makes it necessary that the specification should be capable of being produced. They have a right to apply to the OflSce to see the specification, that they may not throw away their time and labour, perhaps at a great expense, upon an invention, upon which the patentee might afterwards come with his specification, alleging an infiringement of his patent, when if those persons had seen the ^ecification, they never would have engaged in their project. The enrolment is therefore for the benefit of the public/'

It was then desired that the time, which would expire on the 17th of the next month, might be enlarged, in order that the petitioner might apply to parliament.

Lord Eldon, C. '^ I cannot do that if the patent has passed ; for the patent is void, if the proviso is not complied with. You should have applied to the Attorney General before the patent passed, for a longer time upon the special circumstances. I cannot take the Great Seal firom a patent,, and repeal it in the most essential point : it is a legal grant, with a proviso for the benefit of all the King's subjects. . You can do nothing, except by an act of parliament to enlarge the time men« tioned in the proviso."

The. petition was dismissed.

It may, perhaps, upon a first view, excite some surprise on referring to the cases hereafter given, that although the statute upon which the legality of these patents is founded, passed at so early a period as the reign of King James the first, yet the decisions (with the single exception of the first case) are all of so recent a date as the present reign ; and the compiler fears he may, on that account, be accused of professing more than he has performed, or of want of due diligence in searching for cases ; in answer to which he has only to refer to the following expression of one whose diligence and knowledge will not, he is ▼ery confident, be disputed, viz. the late Lord Chief Justice of the Court of Common Pleas, Shr James Eyre, who, so recently as the 16th May, 1796, in the case of Boulton v. Bull, after stating that patent-rights are no where accurately discussed in our books, said; that-*^ the case of Edgeberry v. Stephens is almost the only case upon the patent-right under the saving of the statute of James the first that is to be found/' Under the sanction of so high an authority, it might have been deemed unnecessary to make much research into the old books, in fiill confidence that it would be totally useless; such research has, however, been made through the books of reports subsequent to James the first, and, as might have been predicted, without finding any other important cases upon patent-rights than those which are hereafter given. But when it is considered that these grants were not so much in use in former periods as they have been of late years, sometimes not more than eight or ten, and frequently not so many, having passed in a year, although at present there are seldom so few as one hundred ;. it is by no means sunprising that more subjects of litigation should arise now than in former times. Whether the great increase in the number of patents in the present age has arisen from the increased inge- ^ nuity, or from the greater spirit of speculation of our -cotemporaries, or from what other cause, is not for us to inquire, but such is the.* fact.

Another reason why so few cases upon thi» subject are reported is, that many, or perhaps most of the trials upon this subject, have been at Nisi prius, and therefore it has not been prac-' ticable to give so many of those decisions as could have been wished ; the books in general only having those cases which have come before the Court upon motions for new ti4al, upon cases reserved at Nisi prius for the opinion of the Court or some other reason, making it necessary to be heard in full Bench. Some instances, however^ which appeared important, have been reduced into the form of reports from papers obligingly fur* nished by gentlemen of the profession who were concerned in the causes ; and as all the points of law which were considered as settled, are given* either in the arguments of counsel, or the opinions of the judges in the cases reported in this work, particularly in the elaborate reports of the cases of Boulton V. Bull, and Homblower v. Boulton, which occupied so much of the time of the Courta of King's Bench and Common Pleas, it is hoped

INTAOOUCTION. 15

that all the decided points respecting patents of invention and the rights of patentees, will be by this work brought at once before the public.

It may, however, be proper to observe, for the information of those not acquainted with law proceedings, that a cause tried at Nisi prizes is^ not in itself final, although the parties frequency think it advisable, from the nature of the evidence adduced upon the trial, to acquiesce in the verdi<$ of the jury ; but it is still competent to them to move for a new trial ; or other parties, upon a similar case arising, may think proper to resort to the court. Yet it seldom happens that when parties to a suit have acquiesced in a verdict at Nisi prius, other parties will think it expedient to bring the same point before the court; and therefore, under such circumstances, the point in question may be considered as established. .