The inventor's manual of legal principles, and guide to the Patent office

Preface

This little work has been abridged from, the author's larger Treatise on Patent Law, for the use of inventors. In the experience of ingenious men, engaged in prosecuting discoveries and inventions, there often occurs, in the first place, the interesting and important question, what constitutes a patentable invention ? This is a question, upon which, in many, if not in most cases, no inventor will do well to trust entirely to his own judgment, even for the preliminary purpose of an application to the Patent Office. But it must be a great aid to any inventor, in presenting to counsel in the first instance the nature of his discovery or invention, to have some knowledge of the general principles of that system of law whose protection he wishes to invoke. Such a general knowledge may save him many useless experiments, and will enable him to present the case, on which he wishes advice, clearly and intelligibly, and perhaps save him from the consequences of an infringement on the rights of others. It will also enable him to know what diligence he must use, in a case where he supposes himself to be in danger of rivalry from the simultaneous efforts of other persons.

In regard, too, to the very important step of presenting to the Patent Office the claim on which he is to found his patent, every inventor, whether he undertakes to prepare his own specification, or prepares it under professional advice, will find himself assisted by some knowledge of the rules on which the safe and correct structure of that instrument depends. Such knowledge will not — or, at least, should not in important cases — lead him to trust solely to his own judgment for the application of those rules ; but it will be likely to guard him against the error oi proposing to include in his claim things which ought to be rejected, and will enable him to present to his adviser the real subject-matter of his invention, with reference to which the claim is to be drawn.

Every person, also, who is interested, or proposes to become interested, in a patent right, needs to have at hand the means of ascertaining the modes and forms of transacting business at the Patent Office, and the Acts of Congress by which this whole subject is regulated : and these will be found in the following Manual. The great numbers of persons in the United States interested in these subjects, and the growing importance and extent of these interests, seemed to the author to render it desirable to present the general principles of the law in a condensed and accurate form, together with proper directions for making applications to the Patent Office, divested of the learning which can be useful only to members of the legal profession. The general diffusion of a correct knowledge of the leading principles of patent law, among practical inventors, may do something to promote their convenience, and the security of this species of property, which involves the interests of a very large class of persons throughout this country.

Boston, May 1, 1851.

Part I. The Subject-matter Of Patents

AND THE

PARTIES ENTITLED THERETO.

PART I.

THE SUBJECT-MATTER OF PATENTS, AND THE PARTIES ENTITLED THERETO.

Chapter I. Novelty And Utility

§ 1. The Patent Act now in force in this country requires that the subject of every patent should be "new and useful," whether it be an art, machine, manufacture, or composition of matter, or an improvement on any of these things.^ The inquiry that meets every inventor on the threshold is, what constitutes novelty, and what constitutes .utility, in the sense of the statute ?

^ 2. It is one of the first principles of patent law, that a patent cannot be obtained for a mere philosophical or abstract theory, be the subject what it may : it can only be for theory reduced to practice. If, therefore, the subject of the patent be an art, it must be an art actually put in practice and unknown before; — if it be a machine, it must be substantially new in its structure and mode of operation, and not merely changed in form or in the proportion of its parts : — if it be a manufacture, or composition of matter, it must be something actually made and substantially different from anything the making of which was before known.

§ 3. In machinery, if a patent is claimed for a whole machine, it must in substance be a new machine ; that is, it must be a new mode, method, or application of mechanism, to produce some new effect, or to produce an old effect in a new way. In cases of difficulty, where the machinery is complicated, and many of the elements employed are powers and instruments of motion long known, the test, which is to determine the boundaries between what was known and used before, and what is new, is, to observe what is new in the mode of operation. If the principles of a machine, that is, the peculiar device or manner of producing the given effect, be new, although the effect itself be old, a patent may be claimed for the machine.

§ 4. On the other hand, the mere purpose or effect of a machine, however novel, can furnish no ground for a valid patent, unless the machine itself, the instrument by which the purpose is effected, is substantially new. The application of what is old to a new purpose is not patentable.

^ 5. It is necessary, however, to consider somewhat in detail what amount of invention is essential to support a patent.

<5> 6. It is often laid down, that, provided the invention is substantially new, it is of no consequence whether a great or small amount of thought, ingenuity, skill, labor, or experiment has been expended, or whether it was discovered by mere accident. Still it is sometimes necessary to ascertain what bearing the amount of thought, design, or ingenuity that may have been expended, has upon the question of novelty. It may not be necessary that there should be positive evidence of design, thought, or ingenuity; but if it is necessary that the possibility of these qualities having been exercised should not be excluded by the character of the supposed invention, then such possibility becomes one test of the sufficiency of invention. While the law does not look to the mental process by which the invention has been reached, but to the result, it may still require that the result should be such as not to exclude the possibility of some skill or ingenuity having been exercised. It requires this, because it requires that the subject-matter of a patent should be something that has not substantially existed before. While such a thing may have been produced by mere accident, and not by design, yet it may also have been the fruit of design and study. If, however, the character of the alleged invention be such, that no design or study could by possibility have been exercised in its production, then its character is strong proof that it does not differ substantially from what had been produced before. We must look, therefore, to the character and purposes of the invention, and not to the actual process by which it was produced, in order to see that the possibility of thought, design, ingenuity, or labor having been exercised, is not excluded.

§ 7. Thus, if an alleged invention is absolutely frivolous and foolish, though it may have the element of novelty, in one sense, it is not the subject of a patent. So, too, mere colorable variations, or slight and unimportant changes, will not support a patent ; as the immersion of cloth in a steam bath, with the view of damping it, instead of immersing it in hot water ; and the substitution of steam as the means of heating hollow rollers over which wool was to be passed, instead of heating them by the insertion of hot iron bars. In such cases, if the consequences resulting from the change are unimportant, and the change consists merely in the employment of an obvious substitute, the discovery and application of which could not have involved the exercise of the inventive faculty, in any considerable degree, then the change is treated as merely a colorable variation, or a double use, and not as a substantive invention.

§ 8. On the other hand, the utility of the change, and the consequences resulting therefrom, may be such, as to show that the inventive faculty may have been at work ; and in such cases, though, in point of fact, the change was the result of accident, its utility and importance will afford the requisite test of the amount of invention involved in the change. Thus the mere substitution of one metal for another, in a particular manufacture, might be the subject of a patent, if the new article were better, more useful, or cheaper than the old. In Crane's patent, the invention consisted in the use of anthracite and hot air-blast, in the manufacture of iron, in the place of bituminous coal and hot air-blast ; and it was held that if the result produced by such a combination be either a new article, or a better article, or a cheaper article, to the public, than that produced before by the old method, that such a combination is an invention or manufacture intended by the statute, and may well become the subject of a patent. But if the change be immaterial and productive of no beneficial result, so that the end can be attained as well without as with the supposed improvement, it will not support a patent.

^ 9. There are many cases where the materiality and novelty of the change can be judged of only by the effect on the result ; and this effect is tested by the actual improvement in the process of producing the article, or in the article itself, introduced by the alleged invention. To these cases this test is directly applicable. Thus, in Lord Dudley's patent, the change consisted in the substitution of pit coal for charcoal in the manufacture of iron, and it was new both in the process of manufacture and in the constitution of the iron. In Neilson's patent, the change consisted in blowing the furnace with hot air instead of cold ; and in Crane's, the substitution of anthracite as fuel, in combination with the hot blast. Both these processes were great improvements, leading to a cheaper production of iron of as good or a better quality. In Derosne's patent the invention was by the application of charcoal in the filtering of sugar, being a change in the process of manufacture, so as to produce sugar in a way unknown before. In Hall's case, the use of the flame of gas, to singe off the superfluous fibres of lace, effected completely what had been done before in an imperfect manner.

^ 10. In these cases the subject of each invention was not the particular machinery or apparatus by which the new application was to be made available, but it was the new application itself of certain known substances or agents, to produce a particular result, differing, either in the process or in the article produced, from the former methods of producing the same thing, and thereby producing a better article, or producing it by superior and cheaper processes. It is obvious that the result, in such cases, furnishes a complete test of the sufficiency of invention; because the importance of the result shows that whether actually exercised or not, the possibility of the exercise of thought, design, ingenuity, and skill is not excluded. The merit is the same, whether the invention was the fruit of accident or design ; because the merit consists in having realized the idea and carried it out in practice. But if the idea and the practice involve no beneficial results, superior to what had been before attained, there could have been no scope for the exercise of the inventive faculty, because the result excludes the supposition of its having been exercised.

§ 11. The same test is also indirectly applicable to another class of cases, where a particular instrument or machine, or combination of machinery, is the subject of the patent. As in Arkwright's case, the gist of the objection was, that -the-alleged new machinery did not serve the purpose of spinning cotton better than the machinery formerly used. And wherever this objection lies to a particular machine or instrument,. there cannot be said to be a sufficiency of invention to support a patent. In .the case of Brunton's patent, which covered two inventions, the one was for an improvement in the construction of chain cables, and the other for an improvement in the construction of anchors. As to the first invention, chain cables had been formerly made with twisted links, a wrought-iron stay being fixed across the middle of the opening of each link to keep it from collapsing. The alleged improvement consisted in making the links with straight sides and circular ends, and in substituting a cast-iron stay with broad ends, adapted to the sides of the link, and embracing them. This combination of the link and the stay was calculated to sustain pressure better than the old form. The substitution of a broad-headed stay in the link, in place of a pointed stay, under the circumstances, was a sufficient invention to support a patent, on account of the utility of the substitution, in connection with the principles to be carried out, viz., the resistance of pressure according to the action of forces.

§ 12. In respect of the anchor, the invention consisted in making the two flukes in one, with such a thickness of metal in the middle that a hole might be pierced through it for the insertion of the shank, instead of joining the two flukes in two distinct pieces by welding to the shank. The hole was made conical or bell-mouthed, so that no strain could separate the flukes from the shank, by which means the injury to the iron, from repeated heating, was avoided, only one heating being necessary to unite the end of the shank perfectly with the side of the conical hole. But it appeared at the trial, that the improvement in the anchor was the avoiding the welding, by means well-known and practised in cases extremely similar. It was a case of the simple application of a mode known and practised for a similar purpose in other like cases ; and it did not appear that anchors so made were superior to those which had been made before. The patent, therefore, in respect of the anchor, could not be sustained.

KOVELTY AND UTILITY. 13

§ 13. In like manner, where the substance of an invention consisted in spinning with a much less distance between the retaining and drawing rollers, than had been before practised, the spinning at a particular distance did not constitute a new manufacture, it having been the previous practice to spin at variable distances,

^ 14. It appears, then, that the amount of invention maybe estimated from the result, although not capable of being directly estimated on a view of the invention itself.

§ 15, The utility of the change is the test to be applied for this purpose. As there cannot be a decidedly useful new result, without some degree of invention in producing the change which effects that result, when a real utility is seen to exist, a sufficiency of invention may be presumed. And whenever utility is proved to exist in a very great degree, a sufficiency of invention to support a patent may be presumed.

§ 16. These principles may now be applied to the statute. It requires that the subject of a patent should be " new and useful," The word " useful" is used for the purpose of establishing general utility as the test of a sufficiency of invention to support a patent. It had been held, upon the use of the same word in the same connection in the old patent act of 179.3, that it was used merely in contradistinction to what is frivolous or mischievous to society. This term was held to be satisfied, if the alleged invention was capable of use, and was not injurious to the well-being, good policy, or sound morals of society.

§ 17, But'the subject of a patent must not only be " useful," in this sense, that is, capable of use and not mischievous, but it must also be a " new " art, machine, manufacture, or composition of matter, or " a new improvement " upon 2 one of these things, " discovered or invented " b^r the patentee, and " not know^n or used by others " before. It is obvious, therefore, that the subject-matter of a patent must be something substantially different from anything that has been known or used before; and this substantial difference, in all cases where analogous or similar things have been previously known or used, must be the measure of a sufficiency of invention to support a patent.

§ 18. In determining whether alleged inventions of various kinds possess the necessary element of novelty, the character of the result, and not the apparent amount of skill, ingenuity or thought exercised, is to be examined ; and if the result is substantially different from what had been effected before, the invention is entitled to a patent ; otherwise it is not.

§ 19. Thus, where there was a patent for an improvement in copperplate printing of bank notes, by printing copperplate on both sides of the note, or copperplate on one side, and letter-press on the other, or letter-press on both sides, as an additional security against counterfeiting ; and other parties had used steel plate printing ; the question was, whether " copperplate printing " included " steel plate printing." It was contended, that even if copperplate did not include steel plate printing, still the use of the latter, applied to bank notes, to produce the effect stated in the patent, was a mere invasion and virtually an infringement. But it was held that if the use of steel plates was an ivipromment upon printing from copperplates, for which a patent might have been obtained by the inventor, the use of steel plates could with no propriety be considered as an infringement of the patent, unless it appeared that the patentee's improvement had also been used.

^ 20. In other words, if the process of printing by steel plates was an improvement in the manufacture of notes, upon the process of printing- by copperplates, so as to be a benefit to the trade of manufacturing notes, it would have been a substantive invention, and therefore not an infringement upon the plaintiff's patent, if standing alone.

§ 21. But where there was a patent for an alleged invention in folding and putting up thread and floss cotton, in a manner different from the ordinary mode, so that it would sell quicker and for a higher price than the same cotton put up in the common way; the article itself was imported, and underwent no change. The whole of the improvement consisted in putting up the slceins or hanks in a convenient quantity for retailing, with a sealed wrapper, and a label containing the number and description of the article. The invention, upon the patentee's own showing, was frivolous ; it was in no way beneficial to the public, not making the article itself any better, or altering its quality in any way. In other words, it was no " improvement of the trade " of making the article sold, but it was a mere improvement in the art of selling it, by which the retailer could get a higher price for the same article than could be obtained by putting it up without the label.

§ 22. So, too, where the question was whether, in a patent for a machine for making wool cards, the patentee had not claimed what had been substantially done before, his claim being for the whole machine, which comprehended several distinct operations or stages in the manufacture ; the question was, whether either of these effects had been produced in the machines formerly in use by a combination of machinery or mode of operation substantially the same as in the machine of the patentee. It would not be sufficient to protect the plaintiff's patent — it being for the whole machine — that his specific machine, with all its various combinations and effects, did not exist before ; he^ cause, if the different effects embraced in it were all produced by the same application of machinery, in separate parts, and he merely combined them, or added a new effect, such combination would not sustain his patent for the whole machine ; that is to say, without looking at the apparent amount of skill or invention involved in bringing these several modes of operation into one machine, which was not the invention claimed, if the result accomplished thereby did not differ substantially, in respect to the processes embraced in it, from what had been done before in separate machines, the subject-matter claimed as the invention v^as not new.

§ 23. On the Other hand, where a patent claimed, as the invention of the party, a new and useful improvement in the making of friction matches, by means of a new compound, and it was said that the ingredients had been used before in the making of matches, the true question was, whether the materials had been used before in the same combination, and if not, the combination was patentable, however apparently simple it might be. That is to say, if the result at which the inventor had arrived, the production of a friction match by a particular combination of materials, was new, there was a sufficiency of invention, without looking at the apparent facility or difficulty of accomplish-

§ 24. But where an invention was claimed to be a mode by which the back of a rocking-chair could be reclined and fixed at any angle required, by means of a certain apparatus, the patent was declared void, because the same apparatus or machinery had been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. An examination of the result attained by the plaintiff show^ed that he had accomplished nothing which had not been done before, but had merely applied an old contrivance to a new purpose.

NOVELTY AND ITTILITY. 17

^ 25. This last case furnishes a clear line of demarkation between invention and a mere application to a new use. It shows that the end, effect or result attained must be new ; and that if the same end, effect or result has been attained before, it is not new, and there has been no invention, but merely an application of means before known to produce an effect before known, on a new occasion. The purpose itself, which is to be accomplished, is not patentable ; but the adaptation of materials to the execution of the purpose, or the apparatus by which the purpose is accomplished, is the true subject of the patent ; and if the same purpose has in other instances been accomplished by the same means, the use of those means on a new occasion does not constitute a sufficiency of invention. In other words, the machinery, apparatus, or other means, is not new.

^ 26. The doctrine in relation to utility, being, in this country, that the subject-matter of a patent must not be injurious or mischievous to society, or frivolous or insignificant ; it follows that every invention, for which a patent is claimed, must be, to a certain extent, beneficial to the com munity ; it must be capable of use, for some beneficial pur pose ; but when this is the case, the degree of utility, whether larger or smaller, is not a subject for consideration, in determining whether the invention will support a patent But it is obvious that the capability of use for some bene ficial purpose is a material element, in determining whether there is a sufficiency of invention to support a patent ; the force of the word " useful," introduced into the statute in connection with the epithet "new," being to determine whether the subject-matter, upon the whole, is capable of use, for a purpose from which any advantage can be derived to the public. General rules will not decide this question in particular cases, but the circumstances of each case must be carefully examined, under the light of the principles on which general rules are founded. 2*

§ 27. In connection with the subject of novelty, it is further to be renuembered, that the statute also requires that the subject-matter of a patent should not have been " known or used by others before the discovery or invention thereof " by the patentee.

§ 28, The time of the knowledge or use of an invention by others which is to vitiate a patent, is a very important point. In England, such knowledge, obtained at any time and in any mode, before the application for a patent, is sufficient to invalidate it. But in this country, it was settled as the true construction of the act of 1793, which used the words, " not known or used before the application," that these words, taken in connection with other provisions of the statute, meant that the invention should not have been known or used before the discovery by the patentee. This construction was afterwards adopted by Congress in the act of 1836, in so many terms.

^ 29. The word " others," though used in the plural in this statute, was used to denote that the use should be by some other person or persons than the patentee ; and therefore the prior use by one person other than the patentee is sufficient to show that the patentee was not the first inventor.

^ 30. The expression " first inventor," as used in our statute, means that the patentee must have been the inventor first in point of time before all others. The English law is somewhat different from ours, on this point, for although it is requisite in England that the patentee should be the first inventor, yet the courts have so construed the expression, as to admit of a valid patent in a variety of cases, where the patentee was not absolutely the first person to make or discover the thing ; as where it had been made previously, by another person who had concealed it from every one else ; and generally, in England, the question whether the patentee is the true and first inventor or not, depends on whether he borrowed the invention from a source open to the public. But in this country, these distinctions are rejected ; and it is held, under our statutes, that the patentee must have been the first inventor, as against all other persons, whether they have made known their inventions or not. The previous knowledge and actual application of the thing by any one person, however privately, is sufficient to defeat the patent.

^ 31. We have already se n that there are two issues with respect to novelty ; one, whether the patentee is the first inventor ; the other, whether the invention, at the time of his application, be new as to public use and exercise. These issues may be involved together, because, if the last is negatived, it may be negatived by evidence which shows that the patentee v/as not the first inventor. But in point of law and fact, these are distinct issues. The patentee may have been the first inventor, and yet he may have allowed the invention to get into public use and exercise, before his application ; or the invention may never have been in public use, and yet the patentee may not be the first inventor, by reason of his having learned it from some one else, or from some published work, or from some other source open to the public.

§ 32. It is an important question of construction, therefore, to determine when a claimant is the first inventor, in the sense of the statute. This depends upon the nature and extent of the knowledge which any other person may have had of the subject of the patent.

§ 33. It is not sufficient to defeat a patent, already issued, that another person has conceived the possibility of efiecting what the patentee has actually accomplished. To constitute a prior invention, the party alleged to have made h must have proceeded so far as to have entitled himself to a patent, in case he had made an application ; or, in othei words, he must have reduced his idea to practice, and embodied it in some distinct form. It is true, that in a race of diligence between two independent inventors, our law provides for the priority of conception, by allowing the one who first invents to obtain the patent, if he was using reasonable diligence in adapting and perfecting his invention, although a second inventor has, in fact, first perfected the invention, and reduced it to practice. But where a patent has been granted to a patentee, who did not surreptitiously obtain his knowledge from a prior inventor, who was using reasonable diligence to perfect and adapt the invention, in order to defeat it on the ground that the patentee was not the first inventor, some previous inventor must not only have had the idea, but must also have carried the idea into practical operation ; for he is entitled to a patent, who, being an original inventor, has first perfected and adapted the invention to actual use.