§ohvi p^ttrtj ®hut;iSit0tt ^ mn to 1303 Cornell University Library arV19415 Patent office and patent laws: Q -1024 031 220 654 Cornell University Library The original of this book is in the Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924031220654 PATENT OEFICE AND PATENT LAWS: A GUIDE TO INYENTOES AND A BOOK OF REFERENCE rOK JUDGES, LAWIEES, MAGISTRATES AND OIHEES. WITH APPENDICES. BY J. G. MO OEE AumoB OF "china and the indies," "the"elkctric telegraph," etc.; member OF the historical and philosophical societies of PENNSYLVANIA; and LATE of the INTERIOR DEPARTMENT OF THS IT. STATES. PHILADELPHIA: PARRY & M'MILLAN, SUCCESSORS TO' A. HART. 1855. 3^ Entered according to Act of Congress, in the year 1855, hy PARRY & M'MILLAN, In the Clerk's Office of the District Court of the United States, in and for the Eastern District of Pennsylvania. PHILADELPHIA: STEREOTYPED BY GEORGE CHARLES, PRINTED BY T. K. & P. 0. COLLINS. PREFACE. In the arrangement of the subject-matter of the following pages, care has been taken to present it in such a form as to ensure con- Teuience, while the object has been to give the entire spirit, if not the actual language, of the laws. This was deemed, in the prepa- ration of the work, the more judicious mode, as by these means a complete Guide to the /nuenior could be embraced within reasonable limits, and the entire sense of the laws, as a companion of the law student, and booh of reference for the magistrate, be preserved at the same time. Nothing in any respect has been omitted or over- looked that would contribute to enhance the value of a work of the kind, and little, it is assumed, has been introduced, which could with propriety be rejected. A work on a much larger scale might be made to contain more matter, and of a more attractive cha- racter ; but it is doubtful whether anything new could be imbodied, that would better serve the purposes for which this volume is in- tended. It aims to direct the patentee how to proceed in obtaining a patent for an invention or design ; it explains to him the relative bearings of the laws on all classes of discoveries ; it indoctrinates him into the spirit of those laws, and points out to him the way to seek redress, and how to combat grievances. It informs the magis- trate of his duties, and prescribes forms which it is essential for him to adopt, in his capacity of a magistrate, when called upon to act for parties in an invention. It shows how far infringers may proceed in infringements with impunity, and what safeguards are thrown around the productions of patentees. It addresses itself to the law student, in furnishing him with an Index to the de- cisions of courts in patent cases, and opinions delivered in appeals from the decisions of the Commissioner of Patents. Finally, it may be worthy the notice of the judge on the bench, since its (3) 4 PREFACE. pages supply a brief record of precedents, whicli may not be found in a form so readily convenient. This is all the author has attempted to accomplish ; and how well this has been done, must depend on the judgment of others. It would, however, be affectation to claim, that the volume ia complete, and might not be amended. But it must be borne in mind, that the principal object in view has been to produce a Pa- tent Office guide and companioij to those interested in patents, and not to dignify the work with the title a code, or that of a systematic and logical digest. Grateful acknowledgements are tendered to Hon. Edmund Bubke, late Commissioner of Patents, for suggesting the form and plan of preparing the accompanying pages, and for many of the most important data inserted in the volume, which he had already col- lated to hand. Similar acknowledgements are due to John William Wallace, Esq., member of the Philadelphia bar, and the accom- plished reporter of the Third Judicial Circuit of Eastern Pennsyl- vania, for the aid extended by him to the author in furnishing ma- terial from his third volume of Reports, in press, the omission of which would have been felt as a serious deprivation. J. Or. M. Philadelphia, January, X855. CONTENTS. - — 4** PAOE Introductory, 7 Patents issued from 1827 to 1852, 22 Fee Table 23 Patents issued to States, 24 Abstract of Patent Laws of foreign countries, 26 Patents issued, and caveats and applications filed, 1841 to 1854, 33 The Patent OrFiCE, 34 Requisites insisted on from inventors, 44 Patent Laws of the United States, 68 PAKT FIRST.-INTENTOR'S GUIDE.-AETS AND MANUFACTURES. L General Conditions, 59 IL Application for a Patent, 62 IIL Form of petition for a Patentj 63 lY. Specification, 63 V. Form of Specification, 64 VI. Drawings, 67 VIL Models, 68 VIII. New Improvements, 69 IX. Form of Oath for applicants, 72 X. Re-issue to correct a defective Specification, 72 XI. Granting anew Lost Patent, 75 XII. Disclaimers, 76 XIII. Form of Surrender of a Patent for Re-issue, 77 XIV. Form of Disclaimer 78 XV. Withdrawals, etc., ." 79 XVI. Form of -Withdrawal, 80 XVII. Proceedings on application for Patents, and on appeals from the Commissioner's decision, 80 XVIIL Remedy in Equity for Patentees, 86 XIX. Orders in Appeals from the Commissioner of Patents, 88 XX. Recovering money paid for a Patent not taken out, 90 XXI. Form of Oath on restoring certain papers, models, &e., 90 XXII. Interfering Patents, 90 XXIIL Caveats, 92 XXIV. Form of Caveat, 94 XXV. Patent Extensions, 95 XXVI. Rules for Transmitting Evidence, 99 XXVII. Rules on Extending Patents, 101 XXVIIL Form of Deposition, 103 XXIX. Assignment of a Patent, 105 XXX. Form of assigning a Patent, 106 XXXI. Form of assignment before obtaining a Patent, ;....107 XXXII. Form of Addition of new Improvements, 108 XXXIII. Instructions regarding fees and deposits of inventions, 109 XXXIV. Form of Receipt for money paid, 112 XXXV. Models deposited, 112 (5) CONTENTS. PART SECOND.-BESIGNS page I. General Conditions, 113 II. Form of petition for Design, 116 III. Specification of Design, 116 IV. Form of Oath to Speoiiioation, 118 v. Penalty for Infringements, 119 VI. Patent Agents, 121 ART THIRD.-JTJDICIAL DECISIONS. I. Interpretation and Construction of Letters Patent, Forms and Subject of Patents. Invention or Discovery. Utility of the Invention, 122 II. Specification and Description of the Invention or Discovery. The Claim, 149 III. Infringement of Patent Rights. Damages, 162 IV. Proceedings and Pleadings in Actions for Violations of Patent Rights, 1?6 V. Evidence in Actions for Violations of Patent Rights, 194 VI. Surrender and Re-issue of Letters Patent, 205 VII. Extension of Letters Patent, 215 VIII. Repeal of Letters Patent, 218 IX. Abandonment and Dedication to Public use, 220 X. Assignment of Letters Patent and Patent Rights, 227 XI. Patents Issued to Aliens and Foreigners, 230 PART EOURTH.-PATENT LAWS OE ENGLAND AND ERANCE. England, 237 France, 256 PART EIETH.-OPINIONS ON APPEALS EROM THE COMMISSIONERS *0E PATENTS. Technical points of law Decided on which appeals have been brought to the United States Circuit Court for the District of Columbia, 259 APPENDIX I.-EARLT AMERICAN INVENTIONS AND DISCOVERIES. Settlement of the States, and Density of Population in 1800, 300 Population in 1800, and Patents issued from 1790 to 1800, 301 Early inventions in Connecticut, 302 Virginia, 306 Rhode Island, 308 N"ew Jersey, Vermont, Louisiana, Kentucky, Georgia, Florida, Ohio, and Massachusetts,.,. ,311 New Hampshire, 314 Delaware, 314 New York, 316 Pennsylvania, 317 APPENDIX n.-CHR0N0L0G1. Of Steam Discoveries, 335 Of Cotton Data, 337 Of Miscellaneous Discoveries, 34I Mmk m\ %t labul f to> INTRODUCTORY. It is a question that admits of discussion, whether the granting of patents to inventors is not as in- jurious to one class of persons, as beneficial to another ; and whether the general good resulting therefrom, is not fully counterbalanced by the evil entailed. It is not our purpose, however, to under- take a settlement of the dispute, which has already elicited much skilful argument, and been attempted in vain by pens eminently qualified for the task. The information here sought to be conveyed, is of a more practical character, and relates to the pro- gress of inventive genius, the manner of conduct- ing applications in this country and in Europe, and tojudicial and technical points involved. In- formation of the kind is much needed; for no active relation of life is without some permanent interest in the afiairs of the Patent Ofiice, which, in the scope of its jurisdiction, exerts a powerful (7) 8 PATENT OPPICB AND PATENT LAWS. influence in developing or restraining the genius of the nations This is done by the construction it gives to the laws that are enacted for the welfare of science and the protection of inventors, and by its adjudication of cases over which it exercises paramount authority, and from which there is no appeal to other tribunals. The fact that the issuing of patents has become an almost universal custom with enlightened com- munities, indicates the prevalence of a master spirit, which by the age has been designated genius ; but a genius that requires more mental adaptation than the employment of the hands and will, and a more intimate knowledge of the sciences than has ever before been vouchsafed to mankind, wise as the evidences of the past show the world at various periods to have been. Genius cannot thrive in fetters. It must feel itself free ; and though it may be beset by obsta- cles of a conventional character, these it surmounts, and derives fresh inspiration from every interrup- tion. History is a consecutive record of 1^'annies and of despotic reigns — the weak yielding to the strong, and the mind debased to ignoble depend- ence on power. Genius, until the spread of letters caused men to think, and thought gave birth to entei-prise, rarely exhibited itself in any of the useful arts, or attained to originality over the pro- ductions of a thousand years. Its progress had been almost imperceptible from the dawn of Chris- tianity until the close of the fourteenth century ; A GUIDE TO INVENTORS. " 9 and before the Christian era, improvements in some of the useful arts had been fully counterbal- anced by retrograde movements in others ; so that the genius of riper antiquity, for a protracted lapse, remained almost stationary. Mere ingenuity does not express the full sense or measure of genius. The Colossus of Ehodes, the Sepulchre of Mausolus, the Palace of Cyrus, the Pyramids of Egypt, the Statue of Jupiter Olympia, the Temple of Diana of Ephesus, and the "Walls and Hanging Gardens of Babylon, were wonders of art ; yet the people whose artistic in- genuity contrived them, and set them up as en- during monuments of genius, could not construct a common arch, or adapt one piece of mechanism to another. Though Archimedes, by means of an invention of his own, hurled huge rocks upon the besieging army of Marcellus, and fired the fleets of the invader by a skilful combination of lenses, neither himself nor his posterity has brought man- kind under obligation for a single original discovery worth preserving. The cotton-gin will be apprecia- ted more highly than ever, when Archimedes and his engines are forgotten ; and the seven wondei-s of the world dwindle into insignificance, when their merits, as works of useful art, are considered in connection with the steam motion and electric telegraph, triumphs of an age still wrapt in the partial mental gloom of semi-enlightenment. The past, down to the fifteenth century, was a period hostile to the exercise of the inventive mind. 10 " PATENT OFFICE AND PATENT LAWS. Kings held the world in abeyance ; and the nobility stood between the potentate and the people. Ig- norance in the titled few, was encouraged by ignorance in the anointed head ; and the masses, held fast in the iron embrace of feudal fetters, were made the subservient creatures of both in all things. But the spread of letters struck a death- blow to the empire of physical tyranny. The coming of William the Conqueror to England, and the opening of the avenues of the East by the crusades, had operated to overcome the stubborn- ness and lethargy of the age. Learning came to be esteemed in exalted ranks; for "the martyrdom of virtue had been frustrated by the powerful resist- ance of Eoger Bacon : and then followed a series of the conquests of reason over prejudice and superstition, which laid the foundation for the illustrious triumphs of more modern genius. The discovery of gunpowder, the successful experiment of the mariner's compass, and the establishment of the printing press, were the stupendous realiza- tions of the inquiring mind, then first freed of its unnatural restraints. Still active traces of the feudal system remained — not the struggle of power, endea- vouring to maintain itself over the weak, for that contest had ended with the fall of Warwick, the last of the barons — ^but of arrogant caste against the lofty aspirations of intellect. It was a war between an ignorant aristocracy and enterprise ; between ranks and moneyed interests ; between citizens, artists, and burghers, and titled orders. But an A SUIDE TO INVENTORS. 11 age that had witnessed the annihilation of serf slavery, was not destined to close without witness- ing also the spectacle of mind conquering will — the sceptre passing from the grasp of the latter into the possession of the former, by which the empire of genius became amalgamated with the empire of letters ; and the star of orders and castes, eclipsed by the new sun,' paled as it declined to- ward the horizon, and dropped from the social firmament forever. But genius, while it successfully combated ma- lignant opposition, still laboured in the morning twilight. Although it might now address itself with conscious power to kings and potentates, it required the broad full flood of day, in which to consummate its grandest schemes. It toiled some- times without reward. It needed method, and failed to establish it. The pale student too often devoted hiraself to the vague and undefined out- lines of his project, without being able to imbue the strange and mysterious inertia with life. It stood before him, in the palpable guise of reality, wanting only the sensate gift of motion. Eureka it was to the optical senses, but to these only ; for it would not obey his will, and defied his sublime efforts to control it. Francis Bacon came, gifted with the sagacity, the penetration, and the intelligence of a divine preceptor, if bowed down with moral infir- mities sufficient to crush one less eminent in wis- dom and earnest in the advocacy of knowledge. He comprehended at a glance how genius had been 12 PATENT OFFICE AND PATENT LAWS. led astray. He undertook to correct its faults, and to lay the foundation of true method. He com- pleted his task and published his Novum Organum. . Yet the world hesitated for a while to accept his inductions ; for the wisest, still wedded to abstrac- tions, had pronounced against them, and the less observant had paused on the threshold of his inves- tigations, declaring their inability to follow him. But this hesitancy and doubt were the natural results of a powei'ful reaction of mind. Mental research had gone as far as it was possible to go in error ; and when at length so bright a light fell full upon the pathway of genius, directing its way to the mines of inexhaustible wealth it was in quest of, no wonder that, for a moment, it was blinded by the glare, and stood appalled at the revealed images of the unexplored realm. But when expe- riments were made on the basis of his theorj', and their scientific truthfulness had been ascertained beyond doubt, mankind hesitated no longer; a mighty revolution set in, sweeping in its course from hemisphere to hemisphere, until the whole scientific world unites in paying tribute to one man, whose genius was enabled to soar aloft, into the arcana of nature, despite the infirmities which threatened to sink it to that lower level to which had descended the principles of the man. Genius had now a clear field in which to apply art to useful inventions. Questions, that had defied the powers of analysis of the ancients, and the learned deductions of the moderns throughout the A GXJIDB TO INVESTORS. 13 preceding ages, were solved with the greatest ease ; and what had been deemed physical impossibilities in art, up to that time, constituted no bar to the researches of mind far beyond. Drebel soon after invented the thermometer ; Inigo Jones was enabled to simplify architectural rules ; Kepler could write with more apparent ease his Astro- ■nomia Nova Oelestis ; air-guns were introduced ; en- graving in mezzotinto followed; railroads with wooden rails were constructed; the air-pump was invented; and thus at once the stimulus became general to turn thought and action to useful ac- count, and not confine either to the channels of absurd speculation, such as had sufficed the im- practicable philosophy of the past. And it would be difficult to determine to what extent genius has carried invention, or the amount of indebtedness mankind have incurred for its numberless contributions to human welfare. Every succeeding generation is more fruitfal of expe- dients and fertile in imagination than the pre- ceding; and the advent of discoveries is no longer heralded as an epoch, but the history of one day written in juxtaposition with another. "Were it not for invention, the progress of scientific truth would be slow. By the artificer's skill, two simple contrivances have brought the extremes of creation within the range of human observation; and the grandest secrets, of nature and of philosophy are thus subjected to the critical examination of the optical view. By the use of the microscope, we 2 14 PATENT OFFICE AND PATENT LAWS. may detect animated worlds in a drop of water, and perhaps ultimately discover reduced atoms in the most attenuant of the gases. By the use of the telescope, the same eye roams at will through- out the wide domain of heaven, wandering from star to star, until the whole celestial host is com- passed, and the eye has pierced a distance beyond what once was deemed an archangel's flight. The struggle between the aristocracy and the masses, when genius first essayed to break its trammels, was not the only real contest in which it has been involved. Another, but a more dis- graceful feud, calculated to weaken enterprise, and betray the interests of those who had coped with obstacles in planning the future greatness of in- ventive mind, grew out of the misunderstanding of suspicious ignorance. The inventor and the operator had all along fraternized, and regarded their interests as identical. It was such identity that took issue with the aristocracy, and pre- vailed against it. But it was not possible that, with ample scope for the exercise of his will, the inventor would continue to adapt his triumphs in art to the necessities of the hands, and persist in clogging his genius with mere personal considera- tions, when the whole arcana of scientific know- ledge were within reach, and open to exploration. "When, therefore, the boldest of the few hazai'ded the experiment of a labor-saving -machine, the operator, alarmed at the seeming attempt to de- prive him of his rights, and exaspei'ated with what A GUIDE TO INVENTORS. 15 he conceived to be the perfidy of a coadjutor, rose up in arms, and demanded an immolation of all genius that dared to transgress the hounds which early concession and long forbearance had pre- scribed, and time had sanctioned as a law. No argument could appease, and no reason withstand, the clamorous appeals of those who poured from their dwellings into the open streets, ripe for riots and desperate for vengeance. Such a scene was presented in England, when, to the consternation of the stocking-weavers, machinery was first in- troduced, not for the purpose of superseding, as the weavers believed, but facilitating, the labor of their hands; and their fiery indignation was vented on every stocking-frame they could find. A similar demonstration occurred in France, when, instead of continuing to employ the hand to delineate, calico fabricators chose to have their muslins stamped by the process of machinery. Riots en- sued, and Paris for a while was in a state of siege ; yet^ curious enough, at a later day, many of those who had been loudest in invective and denuncia^ tion, were foremost among those who came for- ward and acknowledged their folly in an address to the throne. Genius survived this second shock, and it will doubtless be the last that will assail it ; for experience has demonstrated that machinery, instead of lessening the demand for manual labor, really increases it. The policy of issuing letters patent, to cover the rights of inventors, having been questioned, we 16 PATENT OIFICE ASJD PATENT LAWS. shall not make this a point to dwell upon. The object of such patents iu the United States, Judge Kane, of the Federal District Court of Pennsylva^ nia, has defined in an opinion delivered in 1851. He says : " The contract of the public is not with him who has discovered, but him who also makes his dis- covery usefully known. If he has discovered much and discloses little — if there has been revealed to him one of the arcana of nature, and he communi- cates to the world only, some one or more of its de- rivative and secondary truths — he patents no more than he has proclaimed. He will not be allowed afterward, when the extent of his right shall be the subject of controversy, either by expanding into a general expression what was limited before in a particular form, or by tracing out for us the line that leads back from consequences to their re- moter cause, to initiate us inferentially into the radical history of his invention, and then argue that he has described it by implication from the first, and so claim ownership of it in his patent. "The more comprehensive truths of all phi- losophy, whatever specific name we give to it, cannot be specially appropriated by any one. They are almost elements of our being. We have not reasoned them out perhaps, and may even be unconscious of their action ; yet they are about us, and within us, entering into and influencing our habitual thoughts and pursuits, and modes of life as well as contributing to our safety and happi! A GUIDE TO INVENTORS. 17 ness ; and tliey belong to us as effectively as any of the gifts of heaven. K we could reach the laws of nature, they would be, like water and the air, the conamon property of mankind; and those theories of the learned, which we dignify with this title, partake, just so far as they are true, of the same universally diffused ownership. It is their application to practical use, which brings them within the domain of individuals ; and it is the novelty of such an application that constitutes to it the proper subject of a patent." This admirable disquisition disposes of the whole question of a right to patent-monopolies, and explains briefly how far the inventor may go in asserting a claim. The rule of action laid down by the Board of Decision in 1845, of which Mr. Buchanan was chief, was essentially as fol- lows, in allowing the extension of a patent. And the rule which applied in extensions, applied in original claims, only that questions 4 and 5 were necessarily omitted : 1. Is the invention novel? 2. Is it useful ? 3. Is-it valuable and important to the public ? 4. Has the inventor been adequately remune- rated ? 5. Has he used due diligence in introducing the invention ? The right, therefore, to appropriate any "truth of philosophy," as an individual monopoly, depends not merely on its practical utility, — for air or water 2* IS PATENT OFFICE AND PATENT LAWS. could with equal propriety be patented, — but on the novelty of the invention, that declares it a dis- covery, which air and water are not, since these, being coeval and common with creation, had their ordinary usefulness disclosed in primeval concert with time. Yet air and water, put to extraordi- nary uses, would be novel; nevertheless, as novelty alone does not suffice, no more than usefulness per se, some kind of mechanism is requisite to consti- tute a claim, as proving the existence of novelty in conjunction with usefulness. The progress of the business of the United States Patent Office, since 1790, is a valuable re- ference, as indicating the rapid development of inventive genius, a,nd the profound wisdom dis- played in its works. From 1790 to 1811, but 77 IDatents on an average were issued annually — only 1613 having been allowed during a period of twenty-one years. The country, meanwhile, had been in no condition to present brilliant "evidences of mind in inventive pursuits. The Eevolution had its growth with a people united in political sentiment, but not in moneyed interests ; and as co- lonies, newly planted, and remote from the grand theatre of European civilization, the States were not prepared, on attaining to political and social independence, to project schemes of a labor-saving nature, except they could be adapted to the level- ling of forests, and opening the natural channels of intercourse, Then came, after the sanguinary fttorin had passed over, the embargo act, entailing A GUIDE TO INVENTOIIS. 19 its necessary but bitter fruits upon industry', fol- lowed by the brief but bloody war of 1812, the consequences of which lingered, in the prostration of enterprise and the cessation of labor, lono- after the clang of battle had ceased in the land. Re- lieved at last from the hardships and horrors of war, the country awoke to the enjoyments of repose ; and then, for the first time, it was in a condition to appreciate the arts of peace, but without the ability to promote them. The rubbish of two wars had to be removed, and the evils of the embargo act to be remedied, before men could discard the axe, abandon the plough, and betake themselves to de- vising, without the prospect of immediate reward. The following was the number of patents issued from 1811 to 1817, when the nation began to enjoy the privileges of free thought and free action. 1790 to 1811 1613 1812 237 1813 179 1814 207 1815 166 1816 201 1817 173 Total, 2776 The annual average during this period was 194, or, for the entire period of seventeen years, 163.. But for the next ten years no material advance- ment was perceptible in the patented ingenuity or inventive skill of the people. This, however, can be accounted for. Cessation from strife and re- stored confidence had dispelled apprehension; and. public feeling was in favour of settling down to physical activity. Although a market ofiered for 20 PATENT OFFICE AND PATENT LAWS. inventive genius at home, the profits accruing on manual labour, in the markets abroad, imbodied stronger temptations to sacrifice the former in order to secure the latter, than the latter in order to secure the former. Besides, agriculture, as essential to the domestic welfare, could not be neglected ; nor could labour afford to devote its time to scientific employments, however much it may have aspired to do so, while bread was denied it. ISTew projects, more favourable to the realiza- tion of food and means than dabbling in theories, were started : furnaces, mills, and manufactories, were erected, and "hands, not heads," were re- quired to fill and control them. The seas were partially covered with our fieets of merchant- vessels, and high wages tempted the landsman from the shore to encounter the dangers of the billows. The nation was animated with a master- spirit, and had yji-oraptly set to work to lay the foundation of a durable social sti'ucture ; but as yet there had been little demand for the exercise of inventive genius in unexplored fields, and little disposition to encourage original inquiry, while so much remained unfinished of substantial purposes founded on discoveries already tried and adopted. We find, therefore, that in 1827, but 320 were issued. Still this was an increase over the average from 1811 to 1817. Subsequently, as exigencies arose at home, and Europe became more attached to the arts of peace than the quar- rels of kings, a more general demand was made A GUIDE TO INVENTORS. 21 upon the resources of genius, and inventive skill was promised those rewards which an earlier period had been unprepared to allow. Eveiy- where throughout- the world a new era dawned upon lahour ; and an intelligent system was esta- blished, in concert with that of mere manual em- ployment, w*hich served to lessen physical drudgery, while it originated fresh wants that nothing but discovery could supplj^ This system, constituted of earnest enterprise and ambitious persevei'ance on the part of moneyed classes, and of untiring application on the part of the learned and un- learned to simplify the machinery of toil, has operated with surprising results, and led to mar- vellous manifestations of the will over besetting obstacles. Nor is the genius of the nation con- fined to a locality, or encountered only in solitary districts. Whether we penetrate- to the wilds of Oregon, or linger on the seaboard, amid populous cities and dense communities, the same lofty spirit of inquiry and inventive skill, that characterize the pursuits of the town-bred denizen, ai'e identi- cal in the hunter of the plains in his wigwam, or the boatman floating joyously in the ark of his own construction, on the lordly bosom of the dis- tant Colorado. Invention is an instinct as natural to an American, as is his love of liberty, and his detestation of tyranny. Below is presented a comparative table of the patents issued in 1827 and in 1852 by States. By this statement, it will be seen that many changes 22 PATENT OFFICE AND PATENT LAWS. have occurred, not only in the general progress of discovery, but in the relative rank of the States. In the same table is furnished a column designa- ting the proportion of patents issued to the total number of white inhabitants of each state : TABLE A.— Statement of Patents Issued. Maine, New Hampshire, Vermont, Massachusetts, Rhode Island, Connecticut, New York, New Jersey Pennsylvania, Delaware, Maryland, District of Columbia, Virginia, North Carolina, South Carolina, G-eorgia, Florida, Alabama, Mississippi, Louisiana, Texas, Arkansas, Tennessee, Kentucky, Missouri, Illinois, Indiana, Ohio, Michigan, Wisconsin, Iowa, California, Foreign,.. Year. 1827. 11 3 10 38 5 16 103 G 33 2 16 4 15 24 3 1 3 15 320 Year. ies2. 16 19 142 13 56 362 21 154 2 18 9 14 1 3 7 "3 3 4 "3 6 r 3 25 15 81 6 3 2 1006 14 1020 PropoTlion of Fatenia IiMtued lo tolal While Po- pulEtlion, 18^. 72,726 19,841 16,499 6,968 11,067 6,484 8,420 22,072 14,663 35,584 23,219 4,216 63,914 553,028 91,521 74,510 142,171 91,906 63,872 54,063 126,132 108,774 197,335 33,841 65,143 24,124 65,845 101,685 95,840 A GUIDE TO INVENTORS. 23 This statement imbodies material for profitable reflection, but we shall pass it over 'without comment. ISText is presented a table which exhibits the character of the inventions for which patents have issued ; and to this more particular attention is invited, as sho-wing the nature of the predominat- ing genius of the States respectively. [See table B, next page.] The existing laws in the United States, relative to patents are contained in the acts of 1836, 1837, 1839, 1842, and 1848— all laws previous to 1836 being repealed by the operations of that act. Much complaint is entertained against these statutes ; but whether well-founded in reason or justice, it is diffi- cult to determine. The period for which an inventor can take out a patent, is fourteen years ; but an exten- sion is granted, provided it be satisfactorily shown, that the inventor has not been remunerated for his time, trouble, and expense in maturing his scheme. The fees paid for obtaining a patent, are as follows : If a citizen of the United States, patent fee, . . . $30.00 If a foreigner -who has "declared his intentions," . 30.00 If a subject of Great Britain, 500.00 All other foreigners, 800.00 On entering a caveat, . . . . . . .20.00 On entering an appeal, ...... 25.00 On extending a patent, 40.00 For adding specification of subsequent improvement, . 15.00 Additional patent for re-issue, .... 30.00 Correcting a patent, ....... 15.00 On application for a design, 15.00 For a disclaimer, 10.00 24 PATENT OFFICE AND PATENT LAWS. HM ;iOiO^0t>HOi :W : : : 1=0 H C) ; O lO : CT :o :-j'aa°"rtt£-g:g s ^5 .s I II I g" 11^ II J 1 1 1^ i I s ^ I I s ; I ^ 1 i -s •=? ^ £ r 1 "^ ■« i ^ i^ S' I 1 4 3 f g a ^ - -8 -.^ II £'ii i-r^^ll 111 si i »-»'&| 1 1 II I M I I I I I I I I I. I I I I I I I. I. I. pq q «!-. p^ ,^ 1 .■^ a 26 PATENT OFFICE AND PATENT LAWS. Foreigners are charged in accordance witii the Patent Office regulations of the countries of which they are natives. The form of application and the mode of pro- cedure are generally understood ; but it is essential that the fees be paid, and the specification, model, and drawings filed, before the proper officers of the Patent Office will proceed to pass on an application. Specifications are required to be ample and explicit; and new improvements are subjected to an exami- nation similar to that instituted in original cases. Drawings of a design are requisite, but not indis- pensable ; but the law is imperative in requiring models to be delivered in the Patent Office. Caveats express the purpose of the inventor to take out a patent of an invention at as early a day as practicable ; and in order that he may not be frustrated by another, whose earlier completed in- vention may involve principles comparatively iden- tical, he files a drawing and specification of his discovery, until such time as he can furnish a model thereof. This anticipated action secures to him the right of original discovery, although his design or invention may only have been developed as a dream of the mind. Patents in Geeat Britain are issued for four- teen years ; but if the inventor, as in the United States, can show that his expectations have not been realized in remunerating him for his loss of time, trouble, and expense, an extension is allowed for a period not exceeding seven years. The A GUIDE TO INVENTOKS. 27 inventor shall reside in England at the time of making application ; but it is not necessary that his discovery shall have been made in the kingdom. His right to a patent is not impaired if the inven- tion be established on discoveries communicated to him from abroad. JSTo description or specifica- tion is required when application is preferred; neither is it essential that the patentee shall prac- tise his invention. England, Ireland, and Scotland, in respect to patents, constitute three distinct king- doms ; and in order to secure a right in all, a separate patent must be obtained for each. If, however, within seven* months after a patent issues, the inventor does not enroll a full specification of his invention in the Court of Chancery, all the privileges it grants are rendered null by a rule of law in force. Patent fees amount as follows : England, |532.40; Scotland, |387.20; Ireland, $653.40; making a total of |1.573. Additional charges are made, in certain cases, which increase the cost of obtaining a patent $30 to $90. The outrage upon Ireland, in thus virtually depriving it of labour-saving discoveries, may be readily ex- plained. England prefers to monopolize the manu- facturing industry of the United Kingdom, and chooses that Ireland shall confine itself to the drudgery of the soil. Fkance. — In the continental states of Europe, * The Lord Chancellor has extended to seven months the time allowed (formerly six months) to patentees to file their specifica- tions. [Re Simpson, 21 L. T. Eep., 81.] 28 PATENT OFFICE AND PATENT LAWS. full specifications, as in this country, must accom- pany the application. In some, prolongations and extensions are allowed ; but if the invention has been patented outside the dominions, the patent usually terminates with the period for which it was originally issued. French patents are granted for five, ten, or fifteen years, at the option of the applicant; but no applications for extension are entertained by the ofiicial bureau. Drawings and copies of the specification must accompany the application for a patent, and a power of attorney be furnished when one party is designated to act for another. Certificates of addition are granted for improvements ; but the patent itself expires with the period originally specified. It is required also that the article patented shall be brought into operation within two years from the date of the patent, or otherwise it is proscribed in law. The charges are — for a patent for ten years, $196 ; for fifteen years, $294, payable in advance in annual instalments of $19.60. Belgium. — ^Patents are granted in Belgium for five, ten, or fifteen years, at the option of the in- ventor ; but no prolongation for any period is al- lowed. The charges are, respectively, $62.92, $125.84, and $246.84. Two sets of drawings and two copies of the specification must accompany the demand, and a power of attorney be conferred as in France. If the patent be one of importa- tion, the agent must have the name of the foreign patentee, the exact date, the title, and the number A GUIDE TO INVENTORS. 29 of years for which it has been granted. Patents of addition can be obtained, the charge for which consists only of the stamp fees, which are tri- fling. Belgian patents are required to be put in operation within two years after their date, unless a prolongation of the term has been granted, which is sometimes done, when sufficient cause therefor can be shown. A Belgian patent, how- ever, becomes void, if, after obtaining it at home, the inventor or patentee takes out a patent in another country in his own name. Holland. — The patent laws and practice in Hol- land are essentially the same as those of Belgium. "While in the latter it is not arbitrarily necessary that the application shall be made in the language of the country, in Holland it is. AirsTRiA. — ^Patents are granted in Austria for one or fifteen years, or for any intermediate number of years. Prolongations are authorized, but patents of addition are not granted. A patent for one year costs 25 florins; for two years, 35 florins ; for ten years, 190 florins ; for fifteen years, 440 florins. A florin is worth about twenty-five cents of our money ; so that a patent for one year costs $6.50, and for fifteen years, fllO.OO. . Pay- ments are demanded at the time of making appli- cation ; and an annual tax is required to be paid of $4.84. One set of drawings, and one copy of the specification in German, must be deposited, and a power of attorney furnished. Unless the annual tax be paid regularly, the patent become^ 3* 30 PATENT OFFICE AND PATENT LAWS. void if not put in operation within the year next ensuing after its date. Pbussia. — The term of a patent in Prussia is at the option of the government, and not the in- ventor; but the usual time for which they are granted is eight years. The cost is nominal — rarely exceeding, all fees included, five dollars. One set of drawings, and one specification in German, are demanded, and the patent must issue in the name of a resident, whom the agent will provide, if requested. It is expedient that the pa- tent shall go into operation within six months thereafter; but the government is lenient in en- forcing the rule. Russia. — The Russian government grants pa- tents of invention for ten years, but those of im- portation for periods ranging from one to six years, at the option of the applicant. Prolongations are not usually granted. The charges are:— for one year, $50; two years, |100; three years, $145; four years, $190 ; and so on in proportion to these rates. Drawings and specifications are required. 'No patent of addition is ever issued ; so that addi- tional improvements must be covered by additional patents. The government reserves the right to grant or refuse patents, and when granted, they must be put in operation mthin six months thereafter. ^ Bavaria.— Bavaria allows patents from two to fifteen years, and prolongations at pleasure. The charges are not fixed by schedule, but relate to the character or nature of the invention. The average A GUIDE TO INVENTORS. 31 charge is about eight dollars per annum. Drawings and a specification are necessary. Patents of im- provement are not granted on the original ; but new ones must be obtained, subject to the original fees. Two years is the period within which pa- tents shall go into operation ; and such instruments are granted, whether the applicant be a resident or not. Saxony. — The government of Saxony exercises its own discretion in limiting the term for which a patent shall issue. The ordinary papers are re- quired to accompany the application, besides a statement setting forth whether the invention has been patented in any other country ; and if so, the date of the patent, and the number of years it has to run. Patents of addition are not granted ; but improvements on the original may be secured. The invention shall go into operation within one year of the date of the patent. The Patent Office fees average $5 or $50 according to circumstances. WuRTEMBURG. — The government does not grant patents of importation for a longer term than ten years, but the legislature may. Patents may be obtained for any period less than ten years, and subseqxiently prolonged, provided the application therefor is made six months before the expiration of the original. The government charges are $12.50 or 150.00, according to the nature of the invention, and its apparent utility ; but payment is made in annual instalments, the first being re- quired at the time of making application. The 32 PATENT OFFICE AND PATENT LAWS. accompanying documents are simply a description and a tracing. Patents of addition are granted without additional charges ; and patents of either character are issued, without respect to residence or place of birth. The invention must go into operation within two years from the time it is se- cured to the inventor or importer. Sardinia. — The government of Sardinia grants patents of invention and importation; the term and fees being fixed by the Patent Office, at its discretion. Proof has to be furnished the govern- ment every year, under penalty of forfeiture, that the invention is kept in operation. Rome. — Roman patents are extended to all per- sons, whether natives or foreigners, residents or otherwise ; and these, at the option of the appli- cant, are granted for five or fifteen years, l^o fees are demanded, but an annual tax of $20 must be paid. Infringement is severely punished. Portugal. — The laws and regulations of Portugal are much the same, in respect to patents, as those of Rome, with this difference, that the patent may issue for one year, and the annual tax is $5. In- fringement is punished as piracy, being so declared by law. Sweden. — Sweden grants patents of invention or importation for five or fifteen years. Specifications must be published in the government newspaper, within three months after the grant, and the in- vention itself go into operation within two years. No government fees are charged. A GUIDE TO INVENTORS. 33 Spain. — Spain grants patents to residents or foreigners, for five, ten, or fifteen years, at an an- nual charge of $15. Disuse of the thing pa- tented for a year and a day renders the patent void. Conflicting applications are determined in favour of the applicant first in the order of time. An instructive chapter on early American dis- coveries might be appended to this paper, but it has already exceeded in length what we designed for it, and we shall therefore biing it to a close by subjoining a tabular statement of the progress of the Patent OflB.ce since 1841, when a complete re- organization took place in its several departments. TABLE C- -Patents Issued Fiscal Years, 1841 to 1854, r.iir.. Applica- tions rited. Caveats Filed. Patents Issued. Cash Heceived for Fees, Se. REMARKS. 1841 847 312 495 $40,413.01 1842 761 291 517 36,505.68 1843 819 315 531 35,315.81 1844 1045 380 502 42,509.26 The Patent Office is a 1845 1246 462 502 51,076.14 self-sustaining branch 1846 1272 448 619 50,264.16 of the general govern- 1847 1531 633 572 63,111.19 ment, its expenditures 1848 1628 607 660 67,576.69 falling short of its rev- 1849 1955 595 1076 80,752.78 enues 30 and 40 per 1850 2193 602 995 86,927.05 cent, annually. 1851 2258 760 869 95,738.61 1852 2639 996 1020 112,056.34 1853 2673 901 958 121,527.45 THE PATENT OFFICE. The Patent Office building at Washington is an object well worthy of the admiration bestowed upon it. As an architectural work, it compares favourably with any public edifice in the United States ; and as a resort, for purposes of intellectual improvement, few places offer stronger induce- ments. The building is partially occupied by the Interior Department, of which it is nominally a subordinate branch ; but it is mainly devoted to the exclusive affairs of the Patent Office, and to the reception of the collections of natural history from time to time brought home by our Government cruisers abroad. The general outline of the edifice, corresponds with that of the Royal Louvre at Paris. The fa9ade, which is seen to advantage fi'om the eleva- ted position of the building, is derived from the Parthenon at Athens ; and the whole forms an imposing and splendid structure. It occupies an entire square of ground, and is furnished with three distinct and independent main entrances — one designed to lead to the Interior Department, one to the Mechanical Department of the Patent Office, and one to the Agricultural Bureau of the same. (34) A GUIDE TO INVENTORS. 36 In respect to the latter divisions, it has of late years been the object of Commissioners to keep them entirely separate ; and in this they seem to have succeeded. "While the duties of the mechani- cal bureau have been conducted with a view to the benefit of inventive talent, the agricultural bureau, under efficient management, has been made a valuable auxiliary to the agricultural and manu- facturing industry of the country. The latter annually receives large quantities of seeds, &;c., from different sections of the Union, and from foreign countries, through the agency of our ministers plenipotentiary and consular agents, and distributes them to Members of Congress, who in turn distribute them to their constituents, who are thereby enabled to improve their crops, and add to their knowledge of husbandry. An annual report is furnished to Congress of the doings of the Patent Office each year ; and this report comprised in two large volumes, is divided between the mechanical and agricultural branches of industry, and details specifically whatever is deemed of interest to the community. The duties of the Commissioner of Patents, as may be supposed, ai-e onerous, arduous, and re- sponsible. Formerjy the Patent Office was by law placed under the control of the Secretary of State ; but by the act establishing the Department of the Interior, it became attached to the latter, and is consequently under the nominal control of the Home Secretary. But all authority of the Secretary 36 PATENT OFFICE AND PATENT LAWS. of the Interioi" in the matter of granting or refus- ing patents, is superseded by the powers conferred on the Commissioner, who is really the chief head. Even the power to extend patents, formerly vested in a Board, consisting of the Secretary of State, Commissioner of Patents, and Solicitor of the Trea- sury, is now possessed by him exclusively ; and as this is a particular point, worth remembering, the wording of a portion of the act is repeated. " Sect. i. * * * Provided, That the power to extend patents, now vested in the Board, * * * * shall hereafter be vested solely in the Com- missioner of Patents : and when application is made to him for the extension of a patent * * * he shall refer the case to the principal Examiner having charge of the class of inventions to which said case belongs, who shall make a full report to said Commissioner of the said case, and particu- larly whether the invention or improvement se- cured in the patent was new and patentable when patented; and thereupon the said Commissioner shall grant or refuse the extension of said patent, upon the same principles and rules that have governed said Board, [See 'Rules on Extending Patents,' marked XXVII., page 101;] but no pa- tent shall be extended for a longer term than seven years." [Proviso sect. 1, act 1848. This relates to refusals of extension; but the Commissioner may even refuse to issue patents in original cases, when remedy by the applicants must DC had to the United States Courts. The first appeal shall be made to the United States Circuit A GUIDE TO INVENTORS. 37 Court for the District of Columbia, to either of the three judges thereof, at the election of the ap- pellant. Preliminary to which, the appellant must notify the office of such an appeal, which he may do simply by filing a prayer for one ; and must also file in the office a statement of the reasons for such appeal, accompanied with the sum of $25, being the fee charged thereon. It is unfortunately true that parties applying for patents, and being refused, imagine that an appeal to the Circuit Court for the District of Columbia, for redress is all the step necessaiy to finally deter- mine their claims. Under other circumstances it would be ; but the business of this character, which has accumulated before the court, cannot be dis- posed of for many years ; and thus appeals are apt to be postponed for the natural lifetime of the appellant. Some provision of law is called for to meet this great evil ; and one of greater magnitude it is liable to become as whims or personal preju- dices of the Commissioner may dictate, in treating the applications for patents. On this score, how- ever, no occasion for complaint will probably ever arise ; but this view of probabilities, does not lessen the necessity for some safeguard of law in the premises. When, at length, a decision is had in the Circuit Court for the District of Columbia, for or against the appellant, he may contend farther for his assumed right in other of the courts of the United States, to wit : "Sect. 11. * * * Frovided, That no opinion 4 38 PATENT OFFICE AND PATENT LAWS. or decision of the judge, in any sueli case, shall preclude any person interested in favour or against the validity of a patent which has, or may here- after be, granted, from the right to contest the same in any judicial court in any action in vehich its validity may come in question." [Proviso, sect. 11, act March 3, 1839. The ground f the Commissioner's refusal to grant a patent must depend — 1. On a "want of novelty and usefulness in the thing designed to be patented." 2. " Conflicting claims to ownership of the thing presented." The final disposition of all cases, in which appeals are taken, is noticed hereafter, [See " Orders in Appeals from the Com- missioner of Patents," marked XIX., page 88.] By the 12th section of the act of 1839, the " Commissioner of Patents shall have power to make all such regulations, in respect to the talcing of evidence to be used in contested cases before him, as may," in his opinion, "be just and reason- able ;" and by a legal construction of this clause, he may reject or admit such evidence only as, in his view, may "be just' and reasonable," whatever pai-ties to the contrary may think. The duties of this functionary, therefore, as has been said, are not only onerous and arduous, but responsible ; and it must depend mainly upon his general business capacity, sound discretion, and practical talents, if the office is made available and useful to the public. Incapacity, or abuse of the powers entrusted to him, would prove highly de- A GUIDE TO INVENTORS. 39 trimental in retardiog the progress of inventive genius in this country, and entail needless litiga- tions, to the great injury of individuals. All applications for information to the Patent Office, should be addressed in writing to the Com- missioner, who alone is authorized to furnish such information. And it is requisite to observe, that letters addressed to the office, whether directed to the Commissioner or otherwise, are rarely answered, if the application be to ascertain whether a certain article, contrivance, or invention has been patented ; for such information cannot be furnished, except by the sacrifice of more time and labour than the office is willing to bestow. A party, however, is not debarred from corre- sponding with the department through an interme- diate agent, provided such agent is furnished with a power of attorney, duly executed, and filed of record in the Patent Office. But when a party has thus conferred the trust upon another, the Com- missioner reserves the right of treating with him alone. Still if the principal becomes dissatisfied, he may revoke the power of attorney ; and the Commissioner, on receiving a notification of the same, will continue the correspondence with the principal. For the reason which influences the Commissioner to establish this rule, the assignee of the entire interest in an invention, is alone entitled to hold correspondence with the office, to the exclu- sion of the inventor. Letters to and from the Com- missioner go through the mails free of postage. 4Q PATENT OFFICE AND PATENT LAWS. The brief digest and general explanations wMch follow, supply all the information necessary, to enable an applicant to prosecute any claina under the patent laws of the United States. But, that there may be no misleading, as to technical terms, it is deemed expedient to. farnish illustrations of the spirit of the laws from actual examples. Thus, " the discovery of any new principle, merely, is not entitled to a patent. It must be reduced to practice; and must be made available in some practical form. To have found out that a blast of hot air, instead of cold, would increase the product of the furnace, and change the nature of the iron, was not enough. But when one set of machinery had been contrived, by which this was carried into effect, it was held that the patentee was protected, not onlyin the use of the particu- lar machinery employed by him, but in the use of the hot blast in every form." The principle had been put to practical use, which not only secured the right to the discovery, but the machinery em- ployed in adapting the principle. More than this, " other machinery, better calculated for the purpose was held to be an infringement." Again, " the dis- covery of any new natural substance" is also pre- cluded by the above language, and " entitles no one to the exclusive use of it," unless "new properties are imparted to the substance by an, artificial pro- cess," in which case a patent would issue to the discoverer, and secure to him all the benefits re- sulting therefrom. Likewise, " a mere change of A GUIDE TO INVENTORS. 41 proportions is not regarded," unless some new and useful property is established, or something equiva- lent thereto. For example, " a patent having been obtained for an improvement in making friction matches, with a new compound, objection was made to it because the same ingredients had been used for the purpose before ; but the objection was overruled, and the patent sustained, on the ground that they had never been employed in the same combination" — namely, the production of the article at a cheaper rate. So " the mere substitu- tion of one well known mechanical equivalent for another, as of cog-wheels for belting, is not regard- ed as an improvement within the meaning of the act ," for neither the principle nor the practice of the discovery, could be regarded as being strictly new, or entitling to the benefit of a patent. IsTeverthe-/ less, a new combination, instead of substitution, of well-known mechanical contrivances, for a certain purpose, may form the basis of a claim for a patent, if the purpose, by the means proposed, is better ac- complished, or is accomplished at a reduction of cost. "And when a combination would be thus protected, if all the parts were old, and it embraces some new device, both the combination and device may be protected under the same patent." The " application of any known process to effect a new result, entirely different from any former one for which it has been employed," is patentable. For example, the use of the flame of gas " to singe off the superfluous and loose fibres of lace," was deemed 4* 42 PATENT OFFICE AND PATENT LAWS. an application of the kind, and on this deciding was declared susceptible of being patented. Yet, on the other hand, it has been determined that "the new object, to which the process is applied, must not be analogous to the old one" but it is difficult for ordinary sagacity and penetration to draw a line of distinction. For example "to curl palm leaf for mattresses, by the same process, which had been used before to curl hair for mattresses," was held to be a " mere double use of the process, and entitled to no protection." These citations will suffice to prove to the reader the niceties of distinction which are sometimes submitted to be decided by the Commissioner of Patents, and how difficult it frequently is for that functionary to discriminate, when, if he relies upon precedent, such questions as these are presented. Whether any discovery, under the circumstances, will justify expectation of a patent, must be deter- mined by the inventor himself. In an age so pro- lific of the results of genius, it would seem as if the store of ingenuity had been exhausted ; and yet we see that annually the increase of patents obtained is steady and progressive.* * Yet, on the other hand, the slow progress made by the human mind in solving the great problems of nature and of philosophy, is aptly stated by Lord Brougham : "It is very fit your lordships should guard against the inference being drawn, from the small amount of any step made in improvement, that you are disposed to undervalue this in importance. If a new process is invented if new machinery is invented, if a new principle is found out, and applied so as to become the subject of a patent right, imbodied in a A GUIDE TO INVENTORS. 43 The patent act of 1836, is tlie grand structure of the system of granting protection to inventors in the United States — the subsequent laws being amendatory thereof. The formei-, however, only relates to discoveries in art and manufactures; but it was found expedient at a later day to extend equal protection to a new class of applicants, namely, for designs. Congress, accordingly, in 1842, passed an act which comprehends this class alone ; and the law, in its general scope, bears a close analogy to the law of copyright, passed in 1831. ITeither foreigners nor aliens who contemplate becoming citizens, and have taken preliminary steps to that end, are entitled to its benefits : they are only in- cluded after they have become citizens. The Q-eneral Conditions and Forms of this law are given in the digest ; but it may be remarked here, that if the application for a patent under its provisions is rejected, (contrary to the rule in other cases,) no part of the fee money paid into the Treasury is re- new manufacture ; then, however small it may be in advance of the state of science or of art previous to the period of that step being made, that is no reason whatever for undervaluing the merits of the person who makes a discovery in science, or an in- vention in art; for the whole history of science, from the discov- ery of the system of gravitation, and the fractional calculus itself, down to the most trifling steps that have ever been made, is one continued illustration of the slow progress by which the human mind makes its advance in discovery. It is hardly perceptible, so little has been made by any one step in advance of the former state of things; because generally you find that just before, there was something very nearly the same thing discovered or invented." [Soame's Pat., Webster's Rep., p. 735.] 44 PATENT OFFICE AND PATENT LAWS. funded, nor will it be credited to an application subsequently made to bave tbe article patented under the bead of Arts and Manufactures, l^o provision is made, as the statute is generally inter- preted, for a reissue or an extension of the pa- tent, an additional improvement, or a disclaimer. Whether this was, or was not, an oversight on tbe part of the framers of the act, does not appear. There is, in fact, very little in common between this class of subjects and those which are contem- plated in the great bulk of the Patent laws. The course of proceeding, to obtain a patent for a design, is, notwithstanding, the same as if applica- tion were made under the head of Arts and Manu- factures. Parties should bear this fact in mind. Besides, it is not generally known that females are entitled to the benefits of the act, nor that, by pa- tenting their inventions, they may prevent in- fringements with impunity. Applications for patents, under any of the pa- tent laws, should be accompanied by six requisites uniformly insisted on ; and if these were always borne in mind, they would save the applicant much loss of time and expense, and the office much trouble and annoyance. They are : 1. The petition. 2. The specification. 3. The oath. 4. The drawings. 6. The model, or specimens, where the case admits of them. A GUIDE TO INVENTORS. 45 6. The payment of the fees. And if the following questions can be answered affirmatively, before transmitting the papers, few applications will be returned for correction or omission. 1. Is the fee transmitted ? 2. Is the petition signed and addressed to the Commissioner of Patents ? 3. Is the specification signed, and witnessed by two witnesses ? 4. Are the drawings described and referred to in the specification? If not, are they signed before two witnesses who have subscribed their names, and are they accompanied by written references ? 6. Are duplicated drawings sent? 6. Has the inventor made oath to his being a citizen, and that his invention is new, &c. ? 7. Does the specification contain a specific claim ? 8. If an alien and resident, is this affirmed and sworn to ? 9. Has the model been sent? If so, how? or where deposited? 10. Is the name of the inventor durably affixed to the same ? 11. In case of reissue, is the old patent sur- rendered ? 12. Has the oath of invention been renewed, before appealing from the decision of the Com- missioner ? 13. Have the fees been remitted in coin, or by certificate of deposite ? 46 PATENT OFFICE AND PATENT LAWS. 14. In case of reissue, disclaimer, addition of an improvement, or patent for ad improvement, on an existing patent to inventor, assignee, or pos- sessor of the original patent, have model and drawings of the original patent (if granted before the 15th of December, 1836,) been transmitted? [jRules of the Patent Office. Some suggestions are necessary with respect to the Specification, independently of those which ac- company the form in the Digest. This instrument constitutes "the contrast between the patentee and the public ;" and all subsequent proceedings are, in fact, but its appendages. It not unfrequently hap- pens, that patents are impeached, or annulled, owing to errors in the specification ; though these do not constitute a ground for assailing a patent when they exist in the appendages. Consequently, the importance of that instrument is not easily overrated. Perhaps the safest reliance parties can have, will be on the experience of those who have obtained patents, and who can readily supply sug- gestions. It would be impossible to describe here, how specifications should be drawn up, so as to cover every point embraced in the claim, since the subject of every patent varies and is essentially different from another. By reference to the act of 1836, sect. 6, [seeposi, " Specification," marked IV., page 63, and " Form of Specification, jjosf, marked v., page 64,] it will be perceived that " one principal object intended to be secured by the specification, is Buch a full description of the invention or discovery, A GUIDE TO INVENTORS. 47 that the public may know how to avail themselves of it with reasonable facility, after the patent has expired. It is not necessary for this that the de- scription should be so minute and full that any man, however ignorant on the subject, shall be able to use it. It is enough if, to adopt the ex- pressions of the statute, it will ' enable any person, skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same.' I^I'either, on the other hand, will it suffice, if couched in such terms that none but experts of the highest skill and ingenuity can understand it, or reduce it to practice. A person of ordinary capacity and skill must be able to follow it, and put it in operation, Mdthout contriving anything new of his own, with- out making any additions beyond what is pre- scribed, and, it has been decided, without resorting to repeated experiments.* The latter rule. should, however, be qualified. Where, for instance^ ma- terials are to be wrought upon, which are variable in their nature, and require that the ingredients employed in producing the result should be used in diflerent proportions, it is very possible that the inventor himself could not determine upon the proper proportions without experiment. A patent * This principle is illustrated in the opinion of Judge Kane, de- liTcred in the United States District Court of Pennsylvania, Det- niold V. Eeeves, Motion for an injunction, 1851. The opinion, ■which is able, forcible, and lucid in many respects, is frequently alluded to in this volume. 48 PATENT OFFICE AND PATENT LAWS for a vraluable flux would not be vitiated because the quantity to be used, with a new combinati.on of ores, could be ascertained only upon trial. Sucli alterations, also, in the dimensions or propor- tions of the different parts of a machine, as an ordinary mechanic would readily see were needed to make it operate successfully, would not impair a patent. The materials to be employed must be such as are well known to persons conversant with the subject; and if they are described in terms calculated to mislead, it will be deemed a fraud. In fine, care must be taken to disclose everything which is essential towards accomplishing the object to the best advantage, as far as is known.* On the other hand, nothing must be introduced as a part of the invention, which does not contribute to the result. No secret improvement must be kept in reserve to enable the inventor to command the market after his patent has expired;" for this would be deemed and taken as equally fraudulent, lif ei- ther "must he impair the usefulness of his dis- covery by inducing others to employ something as necessary to success, which really serves no useful purpose." The act of Congress also requires that the inventor shall, in the case of a machine, "fully explain the several modes in which he has contem- plated the application of the principle" of his in- vention. " The safer way to comply with this, is, to describe expressly one or more methods of ap- plication, such as have been found to be most ad- * Detmold v. Beeves, Kane, J. 1851. A GUIDE TO INVENTORS. 49 vantageous, and to mention others wHcli are con- templated, as some that may be adopted. Where the invention consists of an improvement upon machinery, ah-eady patented, this instruction can- not be relied on. The claim must then be confined to the precise improvement intended. If any method of ejffecting the object is claimed, which proves ineffectual, or which has been, anticipated, it may invalidate the patent. The usual and ap- proved course is, to describe all the apparatus em- ployed, whether old or new, as far as is requisite to make the operation of the invention perfectly clear. Such machinery as is already well known to persons of ordinary skill in the business, and in which no alteration is proposed, needs only to be referred to by name ; as, for instance, the valves of a pump. Where alterations in the usual forms are necessary, they should be pointed out, and especially everything that is new. All that con- tributes to the new result, and forms a part of the in- vention, should be particularly described." The act further requires that the applicant should " particu- larly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery." This is usually done by what is tech- nically called a "claim," in which, after describing the whole mechanism or materials employed, old as well as new, the invention relied on is set out with precision, and especially claimed. It is usual also to expressly disclaim everything else so de- scribed, which might be supposed to be embraced 50 PATENT OFFICE AND PATENT LAWS. in the claim, to the prejudice of the patent. [ODi- cial Report, 1852.] The Patent Office is not required, neither does it engage, to make drawiiigs to accompany applica- tions for a patent. But it furnishes copies . of the same, after the patent is complete, not before ; and in the latter case, the expense must be borne by the applicant. The records and models of the office, are always open to inspection. When specifications and drawings are found to be defective, they are returned to the patentee, or inventor, with instructions to amend the same; and this process is repeated, until the papers con- form to the requirements of the office. Drawings, of which there should be duplicates, must be one on strong and stiff paper, of the dimensions of 18 or 19 inches from top to bottom, and not less than 13 nor more than 25 inches across, unless more space is absolutely necessary ; and the other, of similar dimensions, should be on parchment, capable of being folded,_and have a convenient margin on one side, in order to allow of its being attached to the model. The model should be of durable materials. If made of soft wood, it should be painted and var- nished, and finished in artistic style. Models can- not be withdrawn from the office; but they are often returned to the inventor, for the purpose of being corrected in some of their parts, to agree with the specification. On the subject of transmitting models by mail, the First Assistant Postmaster A GUIDE TO INVENTORS. 61 General (Major Hobby) has decided that " neither models of machines, nor the substance of which they are usually composed, (as, wood, glass, tin, or other metals,) are entitled by law or regulation to transmission in the mail; and the mailing and forwarding of them will be refused in every in- stance." But this decision does not affect the transmission of certain designs, as comprehended by the act of 1842. The Patent Office building, with all its contents, was destroyed by fire on the 15th of December, 1836 ; and that disaster led to inquiry into the con- dition of the affairs of the bureau, and the ex- pediency of amending the existing statutory system. Hence the act of 1836, and the subsequent acts of 1889 and 1842. But copious as is the act of 1836, and important as are the laws adopted since, re- lating to patents, the system is by no means perfect or complete. The need of a registry law is espe- cially felt. On this score, the Commissioner, in an official communication to Congress, in 1852, remarks : " It is not easy to perceive why two classes, so analogous to each other as those pro- tected under the law of copy-right, and those which are patented as designs, should not be embraced under one statute. An engraving on paper, or in any publication, needs only to be registered with the clerk of a district court, at a fee of fifty cents, and, upon depositing a copy with the Secretary of State, it is secured against infringement for twenty- eight years. If the same design is printed on silk, 52 PATENT OFFICE AND PATENT LAWS. and sold aa a handkerchief, or upon paper-hangings, or a fire-screen, a formal application must be made to this office, a patent prayed out, costing $15, beside the expenses attendant on procuring papers, drawings, and model; and, after all, an exclusive privilege in them inures but seven years." All this is strictly and emphatically true ; and in addition to the period first allowed for the copy- right, an Extension may be obtained of fourteen years. The manifest injustice caused by the law, as pointed out above, should be remedied in a way that, while the law of copy-right remained as it is, the formality of a patent should in matters of de- sign be dispensed vrith, or embraced in the pro- visions of the former act. Finally, in regard to the limitations prescribed for obtaining patents, whether issued for designs, or arts and manufactures, something is wanted to guard against loss to inventors, when, owing to misfortunes or poverty, they are not able to comply with the requisitions of the law within the time named therein. Although the law, to some extent, provides for such eases, the protection is not enough; for an array of evidence may deter- mine a judge to declare a patent abandoned, while in reality no wilful abandonment has taken place. ^^ And he it further enacted, That every person, or corporation, who has, or shall have, purchased or constructed any newly invented machine, manu- facture, or composition of matter, prior to the application by the inventor or discoverer for a A GUIDE TO INVENTORS. 63 patent, shall be held to possess the right to use, and lend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the in- ventor, or any other person interested in such in- vention; and no patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application [by the inventor] for a patent as aforesaid, except on proof of abandonment of such invention to the public, or that such purchase, sale, or prior use, has been for more than two years prior to such application for a patent." [Sect. 7, act 1839. First, An inventor, struggling with poverty or misfortune, may be compelled either to abandon his invention in fact, or sell its use to enable him to complete his application for letters patent. Second, Such sale gives to the purchaser the vir- tual n^t forever to use his invention, but does not preclude him from obtaining a patent. Now, of what avail is a patent to an inventor, if a large monopoly is enabled to control the mar- ket? Or, how will his discovery benefit him if, owing to drawbacks on his part, over which he has had no control, he is delayed in procuring his patent until after the two years have expired ? Again, in the matter of extensions, the laws are incomplete. Judge Kane, in a case tried before him, (Blanchard v. Eldridge,) points out their in- sufficiency. " The first specification of Blanchard's machine 5* 54 PATENT OFFICE AND PATENT LAWS. was filed in tTie year 1819, and nearly thirty years have elapsed since the promulgation of the in- vention to the world. If Mr. Blanchard's patent is invalid, [the reader should remember that patents . only issue from the date of the final addition to the specification,] it is monstrous that he should have heen permitted this long to hold a recognized 'scare-crow,' to deter the mechanics of this country from the exercise of their right. If, on the other hand, the patent is valid, after thirty years, it would seem reasonable that he might expect from the law repose in the enjoyment of his title, especially under the patent laws, which give ex- clusive property only for a limited time. The time has been extended twice ; and we are now, ■>,fter the first extension has expired, engaged in litigation on the subject. You are aware that, in the ordinary afiairs of men, a debt, not claimed within six years, is considered as not due. The peace of men requires that lapse of time shall settle something. In real estate, twenty-years give title by possession ; but the patent laws provide that, up to the end of the term, the right granted by them may be rendered valueless by a series of litigations. These remarks are not intended to apply to the defendants now before you. These persons may have been honestly exercising their rights, or what they supposed to be their rights; but I have al- luded to these defects of our patent system, since all of us, you, as citizens, each in his own sphere of action, may contribute to the amendment of A GUIDE TO raVENTOES. 55 wtat ia thus defective in tliem." \_Opimon, June 1, 1848. The two cases forcibly illustrate the point in "question : while it is within the power of a mono- poly to claim and control the use of an invention for thirty years, by the force of circumstances, another inventor, perhaps more meritorious, may he constrained to abandon his claim, or lose it after the expiration of fourteen years. The law provides a remedy for infringements, and other innovations of patented rights. But it is unfortunately true, that this very protection, which is thrown around them, serves to make the poor inventor poorer, and the rich invader richer. The metaphysics of social life, which are denomi- nated the law, rarely challenge more refined and intricate discussions, than some of the questions which arise under our patent system. The difficulty which embarrasses the learned, in both sciences — > law and physics — is not that which interposes in determining upon those abstract truths, called fundamental principles, for to the learned these are simple if not always obvious ; but is that which besets them in endeavouring to select, from out the chaotic mass of such truths, those which apply more directly to the particular case submitted to their consideration, and in assigning to each its appropriate share of influence or control in deciding their verdict. And if an obstacle of this kind operates to encumber or cloud the judgment of the skilled and wise, what chance is there for a rea- 56 PATENT OFFICE AND PATENT LAA7S. sonable or just conclusion to be arrived at by tbe ignorant and unlearned, who are taken pro- miscuously fl'om the body of the community, and installed into the jury-box, to determine the rights of a claimant who sues for damages in an infringe- ment, and submits his patent, containing a tech- nical detail, as evidence of right and possession ? "Imagine," says an eminent jurist, "the feelings of a conscientious juryman, who is required to decide a question upon his oath, while he is ab- solutely ignorant of the very terms in which the question is expressed ! And imagine, too, what confidence, what hope even, there can be for a party, that his rights will be understood and established by any action of twelve jurymen, se- lected without reference to their superior mental or scientific qualifications ! Except to compute the damages which a patentee has sustained, after his claim to damages has been made out, it is often difficult to comprehend what possible good office is to be rendered by a jury in a patent cause. Does it not savour of the grotesque, to call upon such men as compose our juries, to consider of the sci- entific controversies of chemists and mechanicians, to follow Professor Henry, perhaps, upon inductive electricity, in some dispute between the telegraphs, or to analyze the merits of Mr. Tilghman's method for the alkaline chromates!" The implied sug- gestion in this is, that in all matters of conflicting claims or infringements of patents, remedy shall not be had for damages before a court and jury, A GUIDE TO INVENTORS. 57 but that the cases should be submitted to arbitra- ment, the parties chosen for that office being qualified for the task. In France this is the law, and in England the principle is recognized by the judges in Admiralty, who, in disputes involving questions of nautical skill, call to their aid experts in the art of navigation, and are indoctrinated by their counsels. ate uf fB Ittibii §Mu m "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 : To make all laws which shall be ne- cessary and proper, for carrying into execution the foregoing powers, and all other powers vested by this constitution in the government of the United States, or in any department or office thereof" [Federal Constitution, Art. I. Sect. 8. PAET FIRST. AKTS AND MANUFACTURES. The act of July 4, 1836, repealed all acts passed prior to that period. The acts subsequently passed were approved March 3, 1837, March 3, 1839, August 29, 1842 and May 27, 1848. (58) A GUIDE TO INVENTORS. 59 I. General Conditions. 1. "Any person or persons, having discovered or invented any new and useful art, machine, manufacture, or composition of matter ; or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his ap- plication for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer ; and shall desire to obtain an exclasive property therein, may make application in writing to the commissioner of patents, expressing such desire, and the commissioner, on due proceedings had, may grant a patent therefor." — [Clause sect. 6, act 1836. But] "IsTo patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public, or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent." [Clause sect. 7, act March 3, 1837.] 2. Patents are "granted for the term of fourteen years ; but for cause shown, as herein after speci- fied," extensions are authorized for a term of seven years. 3. Patents shall be granted to citizens of the United States, and to aliens, who shall have been residents of the United States one year next pre- ceding [application,] and who shall have made 60 PATENT OFFICE AND PATENT LAWS. oath of their intention to become citizens thereof. [Sect. 12, act 1836.] And the same rights are ac- corded to foreigners, who are inventors or dis- coverers, and who are not citizens, nor design to become such ; provided they pay the fees prescribed, [see Fee Table, page, 23 Introductory,] and submit to the general conditions. 4. A patent may be taken out by the inventor or discoverer, in a foreign country, without affect- ing his right to a patent in the United States, pro- vided the invention or discovery has not been introduced into the United States, and is in com- mon use, prior to such application. In every case of the kind, the patent is limited to the period of fourteen years from the date of the letters patent obtained abroad. Observe, farther, that " a patent is not granted upon the introduction of a new in- vention from a foreign country, unless the person who introduced it be the inventor or discoverer. If an alien neglects to put and continue on sale, the invention in the United States, to the public, on reasonable terms, for eighteen months, the patentee loses all benefit of the patent." [Ibid^ and sect. 6, act 1839. 5. The benefit of patents extends to works of fine art, as well as works of useful art; and to aliens who have " declared their intentions," as well as citizens of the United States. [Sect. 3, act 1842. 6. Joint inventors or discoverers may apply and obtain a patent ; but neither, as joint partners, can claim one separately. [Act 1836. A GUIDE TO INVENTORS. 61 7. An inventor or discoverer can assign liis right, before a patent is granted, so as to allow the assignee to take out letters in his own name ; but the assignment must first be entered of record, and the application therefor be duly made in form, and the specification be sworn to and subscribed by the inventor. [And when the assignment is made by a foreigner, the same fee will be charged as if the patent had issued to the inventor. [Ibid. 8. An assignment of a patent may relate to " the whole or to an undivided part, according to the terms of any instrument in writing." All assign- ments, and also the grant or conveyance of the use of the patent in any state, county, town, or dis- trict, must be recorded in the Patent Office within three months of the date of the same. Neverthe- less, assignments, if recorded after the lapse of the three months specified, will remain on record as notice to protect against subsequent purchases. Patents, grants, and assignments, recorded prior to the 15th of December, 1836, must be recorded anew before they can be valid as evidence of any title. [Sect. 3, act 1837.] And the privilege of renewing patents lost prior to the period named, is extended to patents granted prior to the same period, though they may have been lost subse- quently; provided that the same shall not have been recorded anew under the provisions of the act of 1837. [Sect. 2, act 1842. 9. In case of the decease of an inventor, before be has obtained a patent for his invention, pro- 6 62 PATENT OFFICE AND PATENT LAWS. vided lie has made application therefor, " the right of applying for and obtaining such patent shall devolve on the administrator or executor of such person, in trust for the heirs at lavs^ of the deceased, if he shall have died intestate ; but if otherwise, then in trust for his devisees, in as full and ample manner, and under the same conditions, limita- tions, and restrictions, as the same was held, or might have been claimed or enjoyed, by such per- son in his or her lifetime ; and when application for a patent shall be made by such legal represen- tatives, the oath or affirmation shall be so varied as to be applicable to them." [Sect. 10, act 1836. 10. All patentees, and assignees of Patents, are required to stamp, engrave, or impress the article or articles patented and vended, with the date of the patent, under a penalty of one hundred dollars, and the cost of suit instituted for the recovery thereof. [Sect. 6, act 1842. II. Application for a Patent. 1. No application can be entertained or ex- amined until the fees for the patent are paid, and the specification, model, and drawings are filed in the Patent Office, 2. Application for a patent must be made to the Commissioner in writing, [in the form of petition annexed,] which application or petition should be signed by the inventor, even in case of assignment or otherwise : GUIDE TO INVENTORS. 63 III, Form of Petition for a Patent. " To the Commissioner of Patents, " Washington City, D. C. : " The petition of John Fitch, of Philadelphia, in the county of Philadelphia, and state of Penn- sylvania — " Respectfully represents : " That your petitioner has invented a new [and improved mode of propelling vessels hy < steam] which he verily believes has not beeni^ known or used prior to the invention thereof by your petitioner. He therefore prays that letters patent of the United States may be granted to him therefor, vesting in him and his legal representa- tives the exclusive right to the same, upon the terms and conditions expressed in the act of Con- gress in that case made and provided ; your peti- tioner having paid "Ihwty dollars into the Treasury, and complied with other provisions of the said act. " John Fitch." IV. Specification. 1. "Before any inventor shall receive a patent for any such new invention or discoveiy, he shall deliver a written description of his invention or discovery, and of the manner and process of mak- ing, constructing, using, and compounding the sariie, in such full, clear, and exact terms, avoid- ing unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to 64 PATENT OFFICE AND PATENT LAWS. make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions ; and shall particularly spe- cify and point out the part, improvement, or com- ■ bination, which he claims as his own invention or discovery." [Act 1836, clause sect. 6. See "Form of Specification" annexed, marked V.] 2. It is desirable in all cases to have the speci- fication describe the sections of the drawings, and refer by letters {a, b, c, d, ^e.) to the parts respec- tively. Duplicate drawings are also required. 3. A defective specification or drawing may be amended at any time before a patent has issued, in which case the applicant will be required to make oath anew. If papers be withdrawn from the Patent Ofiice with a view to their alteration, amendment, or modification, the reapplication will take its turn as if it were an original case, and date from the day on which the said papers, as amended or modified, are again placed on the files of the ofiice. V. Form of Specification. 1. " To all whom it may concern : " Be it known that I, John Fitch, of Phila- delphia, in the county of Philadelphia, and state of Pennsylvania, have invented a new and improved mode of preventing steam-boilers from bursting ; A GUIDE TO INVENTORS. 65 and I do hereby declare that the following is a full and exact description, to wit : " The nature of my invention consists in provid- ing the upper part of a steam-boiler with an aper- ture, in addition to that for the safety-valve; which aperture is to be closed by a plug, or disc of alloy, which will fuse at any given degree of heat, and permit the steam to escape, should the safety- valve refuse to perform its functions. " To enable others skilled in the art to make and use my invention, I will proceed to describe its construction and operation. I construct my steam-boiler in any of the known forms, and apply thereto guage-cocks, a safety-valve, and the other appendages of such boilers ; but, in order to ob- viate the danger arising from the adhesion of the safety-valve, and from other causes, I make a second opening in the top of the boiler, similar to that made for the safety-valve, as shown at A in the accompanying drawing ; and in this opening I insert a plug (a) or disc of fusible alloy, securing it in its place by a metal ring, or screws, or other- wise. This fusible metal I in general compose of a mixture of lead, tin, and bismuth, in such pro- portions as will ensure its melting at a given tem- perature, which must be that to which it is in- tended to limit the steam, and will, of course, vary with the pressure the boiler is intended to sustain. I surround the opening containing the fusible alloy by a tube B, intended to conduct off any steam which may be discharged therefrom. "When 6* 66 PATENT OFFICE AND PATENT LAWS. - the temperature of the steam, in such a boiler, rises to its assigned limit, the fusible alloy will melt, and allow the steam to escape freely, thereby securing it from all danger of explosion. " "What I claim as my invention, and desire to secure by letters patent, is the application to steam- boilers of a fusible alloy, which will melt at a given temperature, and allow the steam to escape, as hereinbefore described — using for that purpose any metallic compound which will produce the intended effect. " John Fitch. "Witness [Jo^^^oe, witness \ jiichard Eoe." [Form adopted by Commissioner of Patents, 1849.] The signatures of two witnesses are required by clause of sect. 6, act of July, 1836. Or, should the application be for a machine, the specification should read as follows : 2. "Be it known that I, John Fitch, of Phila- delphia, in the county of Philadelphia, and state of Pennsylvania, have invented a new and useful machine for;" and then annex a full description thereof, as in the preceding example. Or, should the application be for an improve- ment on something already patented and intro- duced to the public, the specification should read thus : 3. " Be it known that I, John Fitch, of Philadel- phia, in the county of Philadelphia, and state of A GUIDE TO INVENTORS. 67 Pennsylvania, have invented a new and useful im- provement on ;" giving a description and the name or title of the machine improved on ; and then, in either case, should follow a description of the ma- chine or invention, for which an application for a patent is m^de, as follows : 4. " And I do hereby declare that the following is a clear, full, and exact description of the con- struction and operation of the same, reference being had to the annexed drawings, making a part of this specification, in which figure 1 is a perspective view, figure 2 a longitudinal eleva- tion, figure 3 a transverse section," &c., being par- ticular to describe each part, as indicated in the drawing, by a letter ; as, a, b, c, or d. After which the description should be completed, by particu- larizing the construction and operation of the ma- chine or improvement, ending with the claim which should express the nature and character of the invention, and identify the part or parts claimed, separately or in combination. JVote. If the specification is for an improvement, the original invention should be disclaimed, and then the claim be confined to the improvement. [Ibid. VI. Drawings. 1. The law requires (sect. 6, act July 4, 1836,) that the applicant for a patent shall " accompany the whole [application] with a drawing or draw- ings, and written references, where the nature of the case admits of drawings." Thus, while the 68 PATENT OFFICE AND PATENT LAWS. law is not imperative on this score, it does not leave the question of drawings entirely optional with the inventor or applicant. By a rule of the Patent Office, the drawings are required to be exe- cuted in "perspective, and neatly done; and such parts as cannot be shown in perspecti,ve, must, if described, be represented in section or detail." Duplicates, when there are any, of the drawings are required, as one must accompany the Patent when issued, as explanatory of the same, and one is re- tained on file in the Patent Office. 2. Drawings, (Ibid,) must be signed by the patentee, and attested by two witnesses, " except when the specification describes the sections or figures, and refers to the parts by letters, in which case they are neither required to be signed, nor accompanied by written references upon the draw- ings, the whole making one instrument." 3. " An examination, as to originality of inven- tion, may be made on a single drawing; but duplicates will be required before the patent issues." VII. Models. 1. The law (Ibid) farther requires that the pa- tentee shall "furnish a model of his invention in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts." "The model," (Eule as before,) " should be neatly made, and as small as a dis- tinct representation of the machine or improve- A GUIDE TO INVENTORS. 69 ment, and its characteristic properties, will ad- mit;" and "the name of the inventor should be printed or engraved upon, or affixed to it, in a durable manner." Models forwarded without a name are disregarded by the commissioner; and are "not entered on record, and are therefore liable to be lost or mislaid." [^Note. — By a rule recently adopted, models are not allowed to exceed in size twelve inches square.] 2. And when the invention is of a " composi- tion of matter," the law requires (Ibid) that ap- plicants shall furnish " specimens of the ingredi- ents sufficient in quantity for the purpose of experiment," and also specimens of the matter as composed. VIII. New Improvements, 1. "Whenever the original patentee shall be desirous of adding the description and specifica- tion of any new improvement of the original in- vention or discovery, which shall have been in- vented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original ap- plications, and on the payment of fifteen dollars, as hereinbefore provided, have the same annexed to the original description and specification ; and the commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded ; and the ro PATENT OFFICE AND PATENT LAWS. same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specifica- tion." [Clause sect. 13, act 1836. 2. " In all such cases, the claim in the original patent is subject to a re-examination; and if it shall appear that any part of the claim was not original at the time of granting the patent, a dis- claimer of said part must be filed in the Patent Office, or the specification of claims restricted, by having the patent re-issued before the improve- ment can be added. And if there is not anything which can be claimed, the improvement cannot be added, but may be secured by a separate patent, by the payment of the fee of thirty dollars." [See Fee Table, page 23.] " If the patent was granted before the 15th of December, 1836, a model and drawings of the invention, as first patented, veri- fied by oath, must be furnished, unless dispensed with by the Commissioner. 3. "'So patent for an improvement can be granted to the original inventor, assignee, or pos- sessor of a patent granted before the 15th of De- cember, 1836, until a model and drawings of the invention, as originally patented, verified by oath, shall have been deposited, unless dispensed with by the Commissioner. [Sect. 5, act 1837, and Eules of Patent Office. 4. '! Every inventor, before he can receive a pa- tent, must make oath or affirmation [see "Form of Oath," marked IX., page 72,] that he does verily A GUIDE TO INVENTORS. 71 believe he is the original and first inventor or dis- coverer of the art, machine, manufacture, composi- tion, or improvement, for which he solicits a pa- tent; and that he does not know or believe that the same was ever before known or used; and also of what country he is a citizen. [Clause sect. 6, act 1836. 5. The " oath or affirmation may be made be- fore any person authorized by law to administer oaths," [Ibid ;] but the Eules of the Patent Office assert that "justices of the peace have not in all cases this general power." Oaths, therefore, should be taken before persons who do possess such " ge- neral power." 6. If the applicant be an alien, and has resided one year in the United States next preceding the application, and has given legal notice of his in- tention to become a citizen of the United States, he must make oath to these facts before he can apply for a patent for the same fees as those paid by a citizen. [See " Form for Addition of ITew Improvements," marked XXXII., page 108.] 7. The " oath required for applicants for patents, may be taken, where the applicant is not for the time being residing in the United States, before any minister plenipotentiary, charge d'affaires, consul, or commercial agent, holding commission under the government of the United States, or be- fore any notary public of the foreign country in which such applicant may be." [Sect. 4, act 1842. n PATENT OFFICE AND PATENT LAWS. Iss: IX. Form of Oath for Applicants. 1. " County of Philadelphia, State of Pennsylvania, " On this tenth day of July, 1805, before the subscriber, a [insert official title,] personally ap- peared the within named John Pitch, and made solemn oath [or affirmation] that he verily believes himself to be the original and first inventor of the mode herein described for preventing steam-boilers from bursting, and that he does not know or be- lieve the same was ever before known or used; and that he is a citizen of the United States. Signed, "A. B." [Wote. — ^If a foreigner, the applicant should state of what country he is a citizen ; and an alien ap- plying as a citizen, should make oath that he has been a resident of the United States " one year next preceding his application for letters patent, and has made oath of his intention to become a citizen thereof." The form may be so changed as to embrace such facts.] X. Re-issue to Correct a Defective Description. 1. "When an applicant wishes to cancel an old patent, and to correct a mistake or error, which has arisen from inadvertence, he should state this fact in his application for re-issue, and in express words surrender the old patent, [see "Porm of Surrender of a Patent for Pe-issue," marked XTDL, page 77,] which must be transmitted to the Patent Office before a new patent will be issued. And no A GUIDE TO INVENTORS. 73 improvement or alteration, made subsequent to the filing of the application upon which the original patent was granted, can be introduced into a pa- tent upon re-issue. For example : " whenever any patent, which has heretofore been granted, or which shall hereafter be granted, shall be inopera- tive or invalid, by reason of a defective or insuf- ficient description, or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new, if the error has, or shall have, arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive inten- tion, it shall be lawful for the Commissioner, upon the surrender to him of such patent, and the pay- ment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor for the same invention for the residue of the period, then unexpired, for which the original patent was granted, in accordance with the patentee's cor- rected description and specification." [Sect. 13, act 1836. 2. When the original patent has been lost, the law provides that, before a re-issue can be granted, "the original patent shall be restored," [as see " Granting Anew Lost patents," marked XI., page 75,] and then surrendered. 3. The claim in the re-issue is subject to similar examination as in the case of original patents ; and "if it shall appear that any part of the claim 74 PATENT OFFICE AND PATENT LAWS. was not original, at the time of granting the patent, the re-issue will not be granted, unless said part be omitted in the claim, or a disclaimer filed in the patent office." [See "Disclaimers," marked XH., page 76.] " And if there is not anything which can be claimed, the re-issue cannot be granted, and the surrendered patent cannot be returned." \_Observe, this latter is one of the most important clauses in the body of the patent laws.] "Where the patent was granted before the 15th of Decem- ber, 1836, a model and drawings of the invention, as originally patented, verified by oath, must be deposited in the patent office, before a re-issue can be granted, unless dispensed with by the Com- missioner." [Sect. 3, act March, 1837. 4. "In case of the death" of the inventor, "or any assignment by him made of the original patent, a similar right shall vest in his executors, admin- istrators, or assignees ; and the patent so re-issued, together with the corrected description and speci- fications, shall have the same eflect and operation in law, on the trial of all actions hereafter com- menced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing of the original patent." [Clause Sect. 13, act 1836. 5. On the surrender of a patent, several patents may be issued for distinct and separate parts of the invention, upon the payment of thirty dollars for every additional patent issued. A GUIDE TO INVENTOKS. 75 XI. Granting Anew Lost Patents. 1. "Whenever it shall appear to the Com- missioner that any patent was destroyed by the burning of the patent office building, on the aforesaid fifteenth day of December, or was other- wise lost prior thereto, it shall be his duty, on ap- plication therefor by the patentee, or other person interested therein, to issue a new patent for the same invention or discovery, bearing the date of the original patent, with his certificate thereon, that it was made and issued pursuant to the provisions of the third section of this act, and shall enter the same of record ; provided, however, that before such patent shall be issued, the applicant therefor shall deposit in the patent office a duplicate, as near as may be, of the original model, drawings, and descriptions, with specifications of the invention or discovery, verified by oath, as shall be required by the Commissioner; and such patent, and copies of such drawings and descriptions, duly certified, shall be admissible as evidence in any judicial court of the United States, and shall protect the rights of the patentee, his administrators, heirs, and assigns, to the extent only in which they would have been protected by the original patent and specification." [Sect. 3-, act March, 1837. 2. Copies of patents issued prior to the date named, and which have not been recorded anew, are inoperate by law until they are so recorded. [See "Form of Oath on Restoring Drawings," &c., marked XXI., page 90. 78 PATENT OFFICE AND PATENT LAWS. XII. Disclaimers. 1. The object of disclaimers has been adverted to already, [X. 3, page 74.] The law provides " that whenever any patentee shall have, through inadvert- ence, accident or mistake, made his specification of claim too broad, claiming more than that of which he was the original or first inventor, some material or substantial part of the thing patented being truly and justly his own, any such patentee, his administrators, executors, and assigns, whether of the whole or of a sectional interest therein, may make disclaimer of such parts of the thing pat- ented, as the disclaimant shall not claim to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent; which disclaimer shall be in writing, attested by one or more witnesses, [See "Form of Disclaimer," marked XIV., page 78,] and recorded in the patent ofiice, on payment by the person disclaiming, in manner as other patent duties are required by law to be paid, of the sum of ten dollars. And such disclaimer shall thereafter be taken and considered as part of the original specification, to the extent of the interest which shall be possessed in the patent or right secured thereby, by the disclaimant, and by those claiming by or under him subsequent to the record thereof. But no such disclaimer shall effect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing the same." [Sect. 7, act 1837. A GUIDE TO INVENTORS. IT 2. It is only when the administrators, executors, or assigns become parties to the disclaimer, that they can derive any benefit from it. 3. In cases of patents granted before the 15th of December, 1836, no disclaimer will be admitted for record, until a model and drawings of the in- vention, as originally patented and verified by oath, shall have been deposited, unless dispensed with by the Commissioner. XIII. Form of Surrender of a Patent for Ee-issue. " To the Commissioner of patents : "The petition of John Filch, of Philadel- phia, in the county of Philadelphia, and state of Pennsylvania — " Respectfully represents, "That he did obtain letters patent of the United States for an improvement in the boilers in steam engines, which letters patent are dated on the first day of March, 1835: that he now believes that the same are inoperative and invalid, by reason of a defective specification, which defect has arisen from inadvertence and mistake. He therefore prays that he may be allowed to surrender, and he hereby does surrender, the same, and requests that new letters patent may issue to him, for the same invention, for the residue of the period for which the original patent was granted, under the amended specification herewith presented; he having paid fifteen dollars into the Treasury of the United 7* 78 PATENT OFFICE AND PATENT LAWS States, agreeably to the requirements of the act of Congress in that case made and provided. (Signed) " J ohn Fitch. " XIV. Form of Disclaimer. "To the Commissioner of patents :. " The petition of John Fitch, of Philadel- phia, in the county of Philadelphia, and state of Pennsylvania — " Respectfully represents, " That he has by assignment, duly recorded in the Patent Office, become the owner of a right for the several states of Pennsylvania, l^Tew Torlc, and Maryland, to certain improvements in the steam engine, for which letters patent of the United States were granted to John Dow, of Boston in the state of Massachusetts, dated on the first day of March, 1835 : that he has reason to believe that, through inadvertence and mistake, the claim made in the specification of said letters patent is too broad, including that of which the said patentee was not the first inventor. Your petitioner, there- fore, hereby enters his disclaimer to that part of the claim in the aforenamed specification, which is in the following words, to wit : ' I also claim the particular manner in which the piston of the above described engine is constructed, so as to. ensure the close fitting of the packing thereof to the cylinder, as set forth;' which disclaimer is to operate to the extent of the interest in said letters patent vested in your petitioner, who has paid ten A GUIDE TO INVENTORS. 79 dollars into the Treasury of the United States, agreeably to the requirements of the act of Congress in that case made and provided. (Signed,) "John Fitch." [Note. — li the disclaimer is put in by the pat- entee on his own invention, the instrument should be worded accordingly.] XV. Withdrawals, &c. 1. The law authorizes the withdrawal of an ap- plication for a patent, and the return to the appli- cant of twenty dollars of the fee paid by him into the Treasury. But no money is refunded on the withdrawal of an application after an appeal has been taken from the decision of the Commissioner of Patents. And no part of the fees paid for caveats, and on application for the addition of im- provements, re-issues, and appeals, is refunded or can be withdrawn. 2. " "Whenever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, * * * the certificate thereof of the Commissioner shall be a sufficient warrant to the Treasurer to pay back to such applicant two-thirds of the duty he shall have paid into the Treasury on account of such applica- tion." [Sect. 2, act 1837. See "Form of With- drawal," marked XVI., page 80.] 80 PATENT OFFICE AND PATENT LAWS. XVI. Form of Withdrawal. " To the Commissioner of Patents : " Sir — I hereby withdraw my application for a patent for improvements in the steam-boiler now in your office, and request that twenty dollars may be returned to me, agreeably to the provision of the act of Congress authorizing such withdrawal. (Signed) "John Fitch. ' ' [Note. — A receipt should accompany the en- closure, of which the following is the form : " Keceived of the Treasurer of the United States, per Hon. Charles Mason, Commissioner of Patents, twenty dollars, (|20,) being the amount refunded on withdrawing my application for a patent. , (Signed) " ." Dated, " ."] XVII. Proceedings on Application for Patents, and on Appeals from the Commissioner's Decision. 1. The leading principle of the Patent Office is, that " applications shall be taken up by the Ex- aminer within whose province they .fall, in the order in which they have been rendered complete, by a compliance with all the requisites. He may, notwithstanding, take up one out of its turn, if it belongs to a class upon which he is engaged, and he finds that it will facilitate his labours. In cases of supposed interference between two or more ap- plications, they must necessarily be considered to- gether when the first comes up. If the inventor has already obtained a patent in another country, A GUIDE TO INVENTORS. 81 Lis application is entitled to immediate considera- tion, if the business on hand will permit it ; be- cause the patent issued here can run but fourteen years from the date of his foreign patent, and every day's delay is a loss to him. Applications for additional improvements, re-issues, and ex- tensions, are entitled to a priority for a similar reason. 2. "If the specification, drawings, or models, are found defective, they will be returned, with directions how to correct them. If, however, they are altered at any stage of the proceedings, they are not entitled to the consideration of the Ex- aminer anew, until all the cases are disposed of which have been filed before the amended docu- ments were received back. The ofB.ee reserves the right to take up each case, when once reached, as often as it comes back, and to bring it to a final determination with all despatch, provided it is satisfied that due pains have been taken to perfect it, and to save labour. 3. " Should the applicant, instead of amending his papers, have new ones prepared, he must re- turn the originals to the oflB.ce. Until that is done, the case will receive no farther consideration. 4. " K the Examiner finds that the claims ad- vanced are not patentable, the applicant will be notified of their rejection and of the reasons. If the rejection rests upon the particular invention having been previously known, he will be fur- nished with a reference to the patent, the book, or 82 PATENT OFFICE AND PATENT LAWS. other works in which he has been anticipated ; or with other sufficient information." He may ex- amine (or cause to be examined) the references in the office ; or, if he prefers, he will be furnished at a distance with copies or extracts, on payment of the legal fee. "If he is not satisfied upon an examination of the references, he may, upon sub- mitting his views, in answer to them, have a re- examination. He may also, if he desires, have an interview with the Examiner, for the purpose of farther explanation. 5. "After a second rejection, the case is not en- titled to any farther examination," and will not receive one, unless " under peculiar circumstances." "When it has twice been deliberately pronounced upon, these circumstances must be strong to war- rant additional consideration of a claim ; and then the Commissioner gives to it his attention in per- son. The decision of one Commissioner is rarely reversed by his successor in office. 6. " If the applicant esteems the claim, as modi- fied by the decision of the Commissioner, so valua- ble as to warrant his taking out a patent, he must amend his specification and claim pursuant to the instructions given to him." [Kules of the Patent Office. 7. The law provides what other action shall be taken. " On the filing of any such application, description, and specification, [or petition, draw- ings, or model,] and the payment of the duty hereinafter provided, the Commissioner shall A GUIDE TO INVENTORS. 83 make, or cause to be made, an examination of the alleged new invention or discovery; and if, on any such examination, it shall not appear to the Commissioner that the same had been invented or discovered by any other person in this country, prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale, vpith the applicant'-s consent or allowance, prior to the application, if the Commissioner shall deem it to be sufficiently useful and important, it shall be his duty to • issue a patent therefor. But whenever, on such examination, it shall appear to the Commissioner that the applicant was not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented, or discovered, or patented, or described in any printed publication in this or any foreign country, as aforesaid, or that the de- scription is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and references as may be useful in judging of the propriety of renewing his ap- plication, or of altering his specification to embrace only that part of the invention or discovery which is new. In every such case, if the applicaltit shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back twenty dollars, [see " Withdrawals," marked XV., page 79, and "Form of Withdrawals," 8i PATENT OFFICE AND PATENT LAWS. marked XVI., page 80,] part of the duty required by this act, on filing a notice in writing of such election in the Patent Office, a copy of which, certified by the Commissioner, shall be a sufficient warrant to the Treasurer for paying back to the said applicant the said sum of twenty dollars. But if the applicant in such case shall persist in his claims for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, in manner as aforesaid ; and if the specification and claim shall not have been so modified as, in the opinion of the Com- missioner, shall entitle the ap^jlicant to a patent, he [the applicant] may " appeal to the Chief Jus- tice of the District Court of the United States for the District of Columbia, by giving notice thereof [in writing] to the Commissioner, and filing in the Patent Office, within such time as the Commis- sioner shall appoint, his reasons of appeal, and specifically set forth in writing, and also paying into the Patent Office, to the credit of the Patent Fund, the sum of twenty-five dollars. And it shall be the duty of said Chief Justice, on petition, to hear and determine all such appeals, and to re- vise such decisions [of the Commissioner] in a summary way, on the evidence produced before the Cctomissioner, at such early and convenient time as he may appoint, first notifying the Com- missioner of the time and place of hearing, whose duty it shall be to give notice thereof to all parties who appear to be interested therein, in such man- A GUIDE TO INVENTORS. 85 ner as said Judge shall prescribe. The Commis- sioner shall also lay before the said Judge all the original papers and evidence in the case, together "with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined. And at the request of any party in- terested, or at the desire of the Judge, the Com- missioner and the Examiners in the Patent Office may be examined, under oath, in explanation of the principles of the machine, or other thing for which a patent in such case is prayed for. And it shall be the duty of the said Judge, after a hearing of any such case, to return all the papers to the Commissioner, with a certificate of his proceedings and decision, which shall be entered of record in the Patent Office ; and such decision, so certified, shall govern the farther proceedings of the Com- missioner in such case ; provided, however, That no opinion or decision of the Judge, in any such case, shall preclude any person interested in favour or against the validity of any patent which has been, or may hereafter be, granted, fi'om the right to contest the same in any judicial court, in any ac- tion in which its validity may come in question." [Sect. 7, act July, 1836 ; sect. 11, act March, 1839.J (See " Orders in Appeals," &e., marked XIX., page 88.) 86 PATENT OFFICE AND PATENT LAWS. XVIII. Remedy in Equity for Patents. 1. "Whenever there shall be two interfering patents, or whenever a patent or application shall have been refused on an adverse decision of" the Commissioner of Patents, " on the ground that the patent applied for would interfere with an unex- pired patent previously gi'anted, [or for any cause whatever,] any person interested in any such pa- tent, either by assignment or otherwise in the one case, and any such applicant in the other case, may have remedy by bill in equity [either against the decision of the Commissioner, or that of the Chief Justice of the United States District Court for the District of Columbia ;] and the Court hav- ing cognizance thereof, on notice to adverse parties, [and when there are no adverse parties, a copy of the bill shall be served on the Commissioner,] and other due proceedings had, may adjudge and declare either [of] the patents void in the whole or in part, or inoperative and invalid in any par- ticular part or portion of t£e United States, accord- ing to the interest which the parties to such suit may possess in the patent, or the inventions pa^ tented ; and may also adjudge that such applicant is' entitled, according to the principles and pro- visions of this act, to have and receive a patent for his invention, as specified in his claim, or for any part thereof, as the fact of prioi'ity of right or in- vention shall, in any such case, be made to appear. And such adjudication, if it be in favour of the right of such applicant, shall authorize the Com- A GUIDE TO INVENTORS. 8? missioner to issue such patent on his [the appli- cant] fihng a copy of the adjudication, and other- wise complying with the requisitions of this act : provided, however, That no such judgment or ad- judication shall affect the rights of any person, except the parties to the action, and those deriving title from or under them subsequent to the rendi- tion of such judgment." 2. For further proceedings in law or equity, the law provides, " That all actions, suits, controversies, and cases arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries, sliall be originally cognizable, as well in equity as at law, by the Circuit Courts of the United States, or any District Court having the powers and juris- diction of a Circuit Court; which courts shall have power upon a bill in equity, filed by any party aggrieved, in any such case, to grant injunctions, according to the course and principles of courts of equity,, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and conditions as said courts may deem reasonable; provided, however, that from all judgments and decrees from any such court, rendered in the premises, a writ of error or appeal, as the case may require, shall lie to the Supreme Court of the United States, in the same manner, and under the same circumstances, as is . now provided by law in other judgments and decrees of Circuit Courts, and in all other cases in 88 PATENT OFFICE AND PATENT LAWS. whicli the court shall deem it reasonable to allow the same." [Sections 16, 17, act July, 1836. XIX. Orders in Appeals from the Commissioner of Patents. 1. It has been ajudged that the decision of the Commissioner, granting a new patent, is not sub- ject to an appeal, even in cases of interference. When he refuses to grant a patent, and in that in- stance only, an appeal may be taken by the aggrieved party to either of the judges of the District Court of the District of Columbia. But this opinion should not deter proceedings being instituted in either case. 2. It has been decided in the District Court of Eastern Pennsylvania, that all proceedings in Equity against the Commissioner of Patents, must be commenced and prosecuted in the courts of the District of Columbia; no court out of the District having jurisdiction over the subject-matter. [But Observe, this only relates to appeals from the de- cisions of the Commissioner, and does not affect the cases embraced in XVIII., 2.] 4. " In every case desired to be tried before me, the petition must be addressed to me as Assistant Judge of the Circuit Court of the Disti'ict of Columbia. Previous to any action by me, and preparatory to the hearing of any appeal, the party must comply with the requisites of the law in the Patent Office ; and his petition to me must state concisely the application for the patent ; its nature ; and (if a case of interference) the residence of the party interested; the Commissioner's refusal [to A GUIDE TO INVBNTOKS. 89 issue a patent;] the prayer of an appeal, and notice thereof to the Commissioner; the filing of the reasons of appeal in the Patent Office; and the payment into the office of the sum required by the law. To every petition must be annexed a certificate of the proper officer that the requisitions of the law have been complied with, or an affidavit of the truth of the facts stated in the petition. No notice to the Commissioner will be issued until such certificate or affidavit be made or produced. The appeal will be tried upon the evidence which was in the ease and produced before the Commissioner. All applications must be in writing. The cause will be heard upo-n written arguments only, unless otherwise specially directed; which arguments must state the points of fact and law relied on, and the authorities in support of the same. Five days will be allowed, after the filing of the Com- missioner's report, to the appellant to file his ar- gument; and the like period will be allowed for any answer and reply — at the expiration of the last of which periods, the case will be taken up and decided, and the papers returned, with the decision, to the office of the Commissioner. Copies of the Commissioner's report, or grounds of de- cision, and of the arguments filed, can be had if desired, from the secretary to be appointed, upon the payment of the usual fees for such services." [^Note. — The preceding rules, issued by Justice Morsell, are the rules generally adopted by the court.] 90 PATENT OFFICE AND PATENT LAWS. XX. Recovering Money Paid for a Patent not Taken Out, [See "Form of Withdrawals,"&c., marked XVI., page 80, "Remedy in Equity for Patents," marked XVin., page 86.] XXI. Form of Oath on Restoring Drawings, or Sketches from which Drawings may be made, to replace the Originals destroyed in the office. [" See " Granting Anew Lost Patents," marked XL, page 75.] In such cases, the law requires an oath or affir- mation, of which the following should be the form. " County of Philadelphia, 1 " State of Pennsylvania, j " On this first day of March, 1838, before the subscriber, a , personally appeared John Fitch, of Philadelphia, in the county of Philadelphia, and state of Pennsylvania, and made solemn oath [or affirmation] that he is the in- ventor, [or is interested in the invention as admin-; istrator, &c.,] of an improved mode of preventing the explosions of steam boilers, for which letters patent of the United States were granted to him, dated the first day of January, 1835, and that the annexed drawing [or sketch] is, as he verily believes, a true delineation of the invention described in the said letters patent." XXII. Interfering Patents. 1. " Whenever an application shall be made for a patent, which in the opinion of the Commis- A GUIDE TO INVENTORS. 91 sioner would interfere with any other patent for which an apphcation may be pending, or with any unexpired patent which shall have been granted, it shall be the duty of the Commissioner to give notice thereof to such applicants, or patentees, as the case may be ; and if either shall be dissatisfied with the decision of the Commissioner, on the question of priority of right or invention, on a hearing thereof, he [the patentee or other party] may appeal from such decision, on the like terms and conditions as -are provided in the preceding section of this act [see "Proceedings," &c., marked XVII., page 80;] and the like proceedings shall be had to determine which, or whether either, of the applicants is entitled to receive a patent as prayed for." [Sect. 8, act 1836. 2. The Commissioner of Patents declares an in- tei'ference, when in his opinion claims conflict; and all proceedings in both cases are suspended, until final decision determines the question at issue. So, likewise, if there is reason to appre- hend that an application confiicts with a caveat, filed or renewed within a year, the caveator is forthwith required to complete and file an applica- tion within three months, [see " Caveats," marked XXIII., page 92 ;] and if, on its coming in, the parties are found to claim the same discovery or invention, an interference will be declared, as in the other instance. [Eules of Patent Office. 3. In the matter of taking evidence, the mode pf proceeding is the same as in "Eules for Taking 92 PATENT OFFICE AND PATENT LAWS. and Transmitting Evidence," &c., marked XXVT., page 99. The documents and testimony must be filed in the Patent Office on or before the day ap- pointed by the Commissioner for a hearing. The Commissioner may, however, at his discretion, ad- journ the hearing to suit the convenience of parties. 4. "When the interference arises between an ap- plication and a patent already issued, the office has no power over the patent, though it decides in favour of the other party; but recource may be had in law for infringement. A reasonable time is always allowed by the Commissioner, in which for the unsuccessful applicant to appeal, should he desire to do so. XXIII. Caveats. 1. " Any citizen of the United States, or alien who shall have been a resident of the United States one year next preceding, and shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, ma- chine, or improvement thereof, and shall desire farther time to mature the same, may, on paying to the credit of the Treasury, in manner as pro- vided in the ninth section of this act, .the sum of twenty dollars, file in the Patent Office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right, till he shall have matured his invention ; which sum of twenty dol- lars, in case the person filing such caveat shall A GUIDE TO INVENTORS. 93 afterward take out a patent for the invention therein mentioned, shall be considered a part of the sum herein required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if applica- tion shall be made by any other person, within one year from the time of filing such caveat, for a pa- tent of any invention with which it may in any re- spect interfere, it shall be the duty of the Commis- sioner to deposit the description, specifications, drawings, and model in the confidential archives of the office, and give notice (by mail) to the per- son filing the caveat of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specification, drawings, and model ; and if, in the opinion of the Commissioner, the specifications of claim interfere with each other, [as stated in XXII., page 90,] like proceedings may be had in all respects as are in this act pro- vided in the case of interfering applications." [Sect. 7, act July, 1836. 2. The caveat " should describe something more than the mere effect to be produced. It is quite common to receive one which merely claims the accomplishment of some object, without explain- ing the means to be employed. This is not enough. It should also disclose the mode of ef- fecting the object, so far, at least, as it has been matured in the inventor's mind." And it would be well, where practicable, to accompany it with a 94 PATENT OFFICE AND PATENT LAWS. model and drawings, thougli these are not indispen- sable. " As fast as the inventor makes any progress in maturing his contrivance, and adopts means for securing its successful operation, he may file ad- ditional papers describing them, which will be kept with the original caveat;" but they must relate to the subject of the caveat only. 3. It should be observed, that "the year is reckoned from the time the caveat is made com- plete, and the fee paid, and not from the time of filing any additional papers." 4. The papers "filed upon a caveat cannot be withdrawn or altered; neither are they open to the inspection of the caveator himself, except in the presence of a sworn officer. He may have copies of them, as may others who have his per- mission in writing. Without such, permission, no information respecting them will be furnished to strangers, except to a limited extent in certain controversies which may arise respecting them." [Rules of Patent Office. XXIV. Form of Caveat. 1. " To the Commissioner of Patents : " The petition of John Fitch, of Philadel- phia, in the county of Philadelphia, and state of Pennsylvania — " Respectfully represents, "That he has made certain improvements in the mode of constructing the boilers of steam engines, and that he is now engaged in making A GUIDE TO INVBNTOES. 95 experiments for the purpose of perfecting the same, preparatory to his applying for letters patent therefor. He therefore prays that the subjoined description of his invention may be filed as a caveat in the confidential archives of the Patent Ofl&ce, agreeably to the provisions of the act of Congress in that case made and provided, he hav- ing paid twenty dollars into the Treasury of the United States, and otherwise complied with the requirements of the said act. (Signed) " John Fitch." 2. Note. — Here should follow a description of the general principles of the invention, as far as it has been completed, according to XXTH., 2, page 92. XXV. Patent Extensions. 1. " Whenever any patentee of an invention or discovery shall desire an extension of his patent beyond the term of its limitation, he may make application therefor, in writing, to the Commis- sioner of the Patent Ofiice, setting forth the grounds thereof; and the Commissioner shall, on the ap- plicant's paying the sum of forty dollars to the credit of the treasury, as in the case of an original application for a patent, cause to be published in one or more of the principal newspapers in the City of "Washington, and in such other paper or papers as he may deem proper, and published in the section of country most interested adversely to the extension of the patent, a notice of such ap- 96 A GUIDE TO INVENTORS. plication, and of tlie time and place when and where the same will be considered, that any per- son may appear and show cause why the extension should not be granted. And the Commissioner of Patents shall constitute a board to hear and de- cide upon the evidence produced before him, both for and against the extension, and shall sit for that purpose at the time and place designated in the published notice thereof. The patentee shall fur- nish to the Commissioner of Patents a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expendi- tures, sufficiently in detail to exhibit a true and faithful account of loss and profit in any manner accruing to him from and by reason of said in- vention. And if, upon a hearing of the matter, it shall appear to the full and entire satisfaction of the Commissioner, having due regard to the pviblic interest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault on his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the Commissioner to renew and extend the patent, by making a certificate thereon of such extension, for the term of seven years from and after the expiration of the first terra ; which certificate of the Commissioner shall be entered on record in the Patent Office; and A GUIDE TO INVENTORS. 97 thereupon the said patent shall have the same effect in law as though it had been originally granted for the term of twenty-one years ; and the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein ; Provided, however, That no extension of a patent shall be granted after the expiration of the term for which it was originally issued." [Sect. 18, act 1836, and sect. 1, act 1848. 2. The authority, formerly vested in a Board, to extend patents, having been, by the act of 1848, transferred to the Commissioner of patents, that functionaiy alone exercises the power in such cases. And in this connection, Justice Story has virtually decided that the decisions of the Com- missioner cannot be inquired into and corrected elsewhere. [Woodworth v. Stone, 3 Story's Rep., 789 ; and Allen v. Blunt, ih., 742. 3. The law [Sect. 12, act 1839,] authorizes the Commissioner to prescribe the rules and regulations for taking testimony in contested cases, of which applications for extending patents (when contested) are among the most important class. These rules and regulations, including depositions, and oaths or affirmations, are the same as are prescribed and required in "Interfering Patents," [see XXII., page 90,] "Appeals," [see XIX., page 88,] &o., &c. They are given in their order. [See " Rules for Taking and Transmitting Evidence to the Com- missioner," &c., marked XXVI., page 99, and 9 98 PATENT OFPICB AND PATENT LAWS. "Rules on Extending Patents," marked page 101. 4. "As the extension cannot be granted after the patent expires, the application should be made early enough to allow not only for advertising sixty days, but for giving the case due consideration after hearing. Without ample opportunity for doing this, it cannot be expected that the Com- missioner will undertake to decide so important a matter, and grant an extension. He may be bound to receive the application, and act upon it, when- ever it is in season for advertising a hearing before the patent expires ; but unless he can appoint the day, so as to secure time for deliberation after- ward, he will not feel bound to grant it." [Eules of the Patent Office. 5. The applicant must make oath to his state- ment of receipts and expenditures, as required by law, and witnesses will be examined to show whether or not he has used due diligence in the bringing of his invention into use. And when parties desire to resist the extension, a notice of their intention with a statement of their reasons, should be filed twenty days before the time ap- pointed for the hearing. " They will then be en- titled to a copy of the application [for extension] and of the account, [as rendered,] and of any other papers in the case on file. They will also be entitled to a list of the names and residences of the witnesses whose depositions have been taken by the applicant previously, and they must be notified A GUIDE TO INVENTORS. 99 of the time and place of taking testimony after- ward. And they may proceed to take testimony themselves, giving like notice to the applicant." [Eules of the Patent Office. XXVI. Eules for Taking and Transmitting Evidence to the Commissioner. 1. All statements, declarations, evidence, &c., shall be in vpriting, setting forth minutely and particularly the point or points at issue, and shall be verified by oath or affirmation. 2. All statements, declarations, proofs, and evi- dence, shall be filed in the Patent Office by the parties, respectively, before the day of hearing. 3. Before the deposition of a witness or wit- nesses be taken by either party, notice shall [or should] be given to the opposite party of the time and place when and where such deposition or depositions will be taken, so that the opposite party, either in person or by attorney, shall have full opportunity to cross examine the witness or witnesses. [See "Form of Deposition," marked XXVIII., page 103.] And such notice shall, with proof of service of the same, be attached to the depo- sition or depositions, whether the party cross ex- amine or not ; and such notice shall be given in sufficient time for the appearance of the opposite party, and for the transmission of the evidence to the Patent Office before the day of hearing. 4. ISTo evidence, statement, or declaration, touch- ing the matter at issue, will be considered upon 100 PATENT OFFICE AND PATENT LAW,S. the said day of hearing, which shall not have been taken and filed in compliance with these rules ; provided, that if either party shall be unable, from good and sufficient reasons, to procure the testi- mony of a witness or witnesses, within the above stipulated time, then it shall be the duty of the said party to give notice of the same to the Com- missioner of Patents, accompanied with statements of the cause of such inability, which last mentioned notice to the Commissioner shall be received by him on or before the day of hearing. 5. All evidence, &c., shall be sealed up, and ad- dressed to the Commissioner of Patents, by the persons before whom it shall be taken, and so certified thereon. 6. The certificate of the magistrate taking the evidence, shall be substantially in the following form, and written upon the envelope, viz : "I hereby certify that the depositions of A. B., C. D., &c., relating to the matter of interference between E. F. and Or. H., were taken, sealed up, and addressed to the Commissioner of Patents by me, "I. K, " Justice of the peace for ." 7. The notice of taking testimony should be signed by the party, or the magistrate before whom it is taken, and should contain the names of the witnesses to be examined. 8. It must be served by delivering the adverse party a copy, and exhibiting the original, if he A GUIDE TO INVENTORS. 101 desires it. If lie cannot be found, it may be served upon his agent, or attorney of record in the Patent Office, or by leaving a copy at the party's usual place of business, proof being adduced that it was so left; and it must be annexed to the deposition. 9. The testimony, taken in interrogatories, must be committed to vs^riting by the magistrate, or under his direction, by some one not interested in the issue, nor the agent of one who is. The depo- sition, when complete, must be signed by the witness. 10. The magistrate must append to the deposi- tion his certificate, stating the time and place of taking it, the names of the witnesses, the adminis- tration of the oath, at whose request the testimony is taken, the occasion on which it is intended to be used, and the names of the adverse parties, if any, and whether they were notified and attended. XXVII. Bules on Extending Patents. 1. The questions which arise on each application for an extension are — (1.) Is the invention novel ? (2.) Is it useful? (3.) Is it valuable and important to the public ? - (4.) Has the inventor been adequately/ remuner- ated for his time and expense in originating and perfecting it ? (5.) Has he used due diligence in introducing his invention into general use ? 2. The first two questions will be determined 9* 102 PATENX OFFICE AND PATENT LAWS. upon the result of an examination in the Patent Office, as will also the third to-some extent. 3. To enable the Commissioner to come to a correct conclusion in regard to the third point of inquirj'^, the applicant should, if possible, procure the testimony of persons disinterested in the in- vention, which testimony should be taken under oath [in the form of interrogatories, as in form, marked XXVIH., page 103. 4. In regard to the fouHh and fifth points of in- quiry, in addition to his own oath, showing his receipts and expenditures on account of the inven- tion, by which its value is to be ascertained, the applicant should show, by the testimony of dis- interested witnesses on oath that he has taken all reasonable measures to introduce his invention into general use, and that, without default or ne- glect on his part, he has failed to obtain from the use and sale of the invention a reasonable re- muneration for the time, ingenuity, and expense bestowed on the same, and the introduction thereof into use. 5. The report of the Examiner upon the novelty and utility of the invention will be ready fifteen days before the day appointed for the hearing, which report will be open for inspection at the Patent Office, copies of which will be furnished to all parties interested, if desired, on payment of the usual fees for copies. 6. In cases of opposition by any person to the extension of a patent, both parties may take testi- A GUIDE TO INVENTORS. 103 mony, &c., [as previously related in cases of " In- terference."] 7. G-enerally, the monopoly of an invention is secured by law to the inventor for a period of four- teen years. This is done with a view to compen- sate him for his time and expense in originating and perfecting it. At the end of the time for which his patent runs, the monopoly ceases, and the invention becomes public property, unless the patentee can show good reasons to the contrary. The presumption is always against his application ; and if he cannot show that his invention is novel, useful, valuable, and important to the public, and that, having made all reasonable effort to introduce it into general use, he has not been adequately re- munerated for his time and expense in discovering and perfecting it, the Commissioner cannot grant an extension. Rarely, indeed, are patents ex- tended in this country. Some instances have oc- curred, when, against the decisions of the Commis- sioner, or owing to informalities, resort has been had to Congress for extensions; but, besides the impolicy to the public, of seeking this channel for redress, itself of doubtful expediency, it is a ques- tion how far Congress can control the final action of the Commissioner in such cases. XXVIII. Form of Deposition. 1. A. B., being duly sworn, doth depose and say, in answer to interrogatories proposed to him by C. D., counsel for E. F., as follows, to wit : 104 PATENT OFFICE AND PATENT LAWS. (1.) ^^Interrogatory. "Wliat is your name ? Your age? residence? occupation? (1.) " Answer. My name is A. B. ; my age thii'ty years ; I am a carpenter ; reside in Boston, Mas- sachusetts." [Then follow other interrogatories and answers.] And in answer to cross-interrogatories proposed to him by G. H., counsel for I. K., doth depose and say as follows, to wit : (1.) ^^Interrogatory. (1.) ^^ Answer." [&c., &c. (Signed by the deponent) "A. B." 2. State of ISTew York, I Rensselaer county, j At Troy, in the said county, on the first day of January, 1855, before me personally ap- peared the above named A. B., and made oath that the foregoing deposition, by him subscribed, contains the whole truth, and nothing but the truth. The said deposition is taken at the request of E. F., to be used upon the hearing of an inter- ference between the claims of the said E. F., and those of I. K., before the Commissioner of Patents of the United States, at his office, on the day of next. The said I. K was duly notified, as appears by the original notice hereto annexed, and attended by Gr. H., his counsel. "L. M., "Justice of the Peace." 3. After which, the magistrate shall seal up the deposition and accompanying papers, according to A GUIDE TO .INVENTORS. 105 the manner described and directed in XXVI., page 99. XXIX. Assignment of a Patent. 1. Any iiiventor may, " by any instrument in writing," assign tbe whole or a part of his interest in such invention or discovery before or after he obtains a patent therefor. The language of the law is, " That every patent shall be assignable in law, either as to the whole interest, or any undi- vided part thereof, by any instrument in writing ; which assignment, and also every grant and con- veyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office witbin three months from the execution thereof, for which the assignee or grantee shall pay to the Commissioner" " a fee of one dollar for recording any assignment, grant, or conveyance, of the whole or any pai't of the interest in letters patent, or power of attorney, or license to make or use the thing patented, when such instrument shall not exceed three hundred words ; the sum of two dollars when it shall ex- ceed three hundred, and shall not exceed one thousand words ; and the sum of three dollars when it shall exceed one thousand words ; which fees shall in all cases be paid in advance." [Sect. 11, act 1836, and sect. 2, act 1848. 2. " The assignee of the entire interest in an in- 106 PATENT OFFICE AND PATENT LAWS. vention which has not been patented, may have the patent issued to himself on recording the as- signment. 3. " The receipt of assignments for recording is not usually acknowledged, it being intended to have them recorded and returned in season to answer the same purpose." [Rules of Patent Office. [iVbfe. The act of 1836 authorized a charge for recording assignments, but the clause was subse- quently repealed. The special act of 1848 restored the clause, as modified above ; but as the provisions of that law are not generally understood, an er- roneous impression prevails, that the recording is done gratuitously. For forms of assignments, see post XXX., page 106, and XXXI., page 107.] XXX. Form of Assigning a Patent " Whereas I, John Fitch, of Philadelphia, in the county of Philadelphia, and state of Pennsylvania, did obtain letters patent of the United States for certain improvements in steam engines, which let- ters patent bear date the first day of March, 1835 ; and whereas, John Doe, of Philadelphia, as afore- said, is desirous of acquiring an interest therein, Wow this indenture witnesseth, That for and in con- sideration of the sum of two thousand dollars, to me in hand paid, the receipt of which is hereby acknowledged, I have assigned, sold, and set over, and do hereby assign, sell, and set over, all the right, title, and interest which I have in the said A GUIDE TO INVENTORS. 107 invention, as secured to me by the said letters pa- tent, for, to, and in the several states of New York, New Jersey, and Pennsylvania, and in no other place or places. The same to be held and enjoyed by the said John Doe for his own use and behoof, and for the use and behoof of his legal representa- tives, to the full end of the term for which said letters patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not been made. " In testimony whereof, I have hereunto set my hand and affixed my seal, this first day of January, 1838. (Signed,) " John Fitch, [Seal.] " "Witness, "A. B., "C. D. ^ } XXXI. Form of Assignment before Obtaining a Patent. " "Whereas I, John Fitch, of Philadelphia, in the county of Philadelphia, and state of Pennsylvania, have invented certain new and useful improve- ments in the boilers of steam engines, for which I am about to make application for letters patent of the United States; and whereas, John Doe, of Philadelphia, as aforesaid, has agreed to purchase from me all the right, title, and interest which I have, or may have, in and to the said invention, in consequence of the grant of letters patent there- for, and has paid to me, the said John Fitch, the 108 PATENT OFFICE AND PATENT LAWS. sum of five thousand dollars, the receipt of which is hereby acknowledged, Now this indenture wit- nesseth, That for and in consideration of the said sum to me paid, I have assigned and transferred, and do hereby assign and transfer, to the said John Doe, the full and exclusive right to all the im- provements made by me, as fully set forth and de- scribed in the specification which I have prepared and executed, preparatory to the obtaining of let- ters patent therefor. And I do hereby authorize and request the Commissioner of Patents to issue the said letters patent to the said John Doe, as the assignee of my whole right and title thereto, for the sole use and behoof of the said John Doe and his legal representatives. " In testimony whereof, I have hereunto set my hand and aflixed my seal, this first day of March, 1838. (Signed,) " John Fitch, [Seal.] " "Witness, "A. B., 1 "CD." / XXXII. Form for Addition of New Improvements. 1. "To the Commissioner of Patents: "The petition of John Fitch, of Philadel- phia, in the county of Philadelphia, and state of Pennsylvania — " Respectfully represents, "That your petitioner did obtain letters patent of the United States for an improvement in A GUIDE^TO INVENTOKS. 109 the boilers of steam engines, wliieh. letters patent are dated on the first day of March, 1835 ; that he has since that date made certain improvements on his said invention; and that he is desirous of adding the subjoined description of his said im- provements to his original letters patent, agreeably to the provisions of the act of Congress in that case made and provided, he having paid fifteen dollars into the Treasury of the United States, and otherwise complied with the requirements of the said act. (Signed,) "John Fitch." 2. To this form should be appended a de- scription of the additions made to the improvements, specifically set forth. XXXIII. Table of Fees. 1. [See Fee Table, " Introductory," page 23.] In addition to the charges contained in the Fee Table, the office exacts ten cents for every hundred words in a copy of a patent, when copies are claimed. A charge* is also made for copies of drawings, according to the cost of material and labour bestowed on them. For recording, the charges are mentioned under the head of " Assign- ments," &c., ante XXIX., page 105. 2. " The expense of any copies will be commu- nicated to those who apply for them. All fees must be paid in advance, and in specie, at this office, or to some one of the officers named below, [3. J If sent by mail, it must be at the risk of 10 110 PATENT OFFICE AND PATENT LAWS. those who send it. The office -would, however, advise, when this is attempted, to confine the money closely to the letter enclosing it, by pasting over it a piece of firm paper, or thin cloth, so that it cannot move around, and wear its way out, as sometimes happens. If paid to one of thB officers' named below, [3,] duplicate receipts should be taken, which should specify the particular object for which it is advanced; one of which should be forwarded to this office, and will be treated as a payment here." piules of Patent Office. See "Form of Receipt," &c., marked XXXTV., page 112.] 3. Officers who are authorized to receive Patent Fees on account of the Treasury of the United States, and to give receipts or certificates of deposit therefor. Massachusetts — Assistant U. States Treasurer, at Boston. New TorJc — Assistant United States Treasurer, at New York City; Collector of the port, at Buffalo creek. • Pennsylvania — Treasurer of the Mint, at Philadel- phia ; Surveyor and Inspector, at Pittsburg. South Carolina — ^Assistant U. States Treasurer, at Charleston. Maryland — Collector of the port, at Baltimore. Virginia — Collector of the port, at Richmond. Virginia — Collector of the port, at Il^orfolk. North Carolina — Collector of the port, at "Wilming- ton. A GUIDE TO INVENTORS. Ill Georgia — Collector of tlie port, at Savannah. Alabama — Collector of the port, at Mobile. Louisiana — Treasurer of Branch Mint, at IsTew Orleans. Missouri — ^Assistant TJ. S. Treasurer at St. Louis. Tennessee — Surveyor of the Customs, at IsTashville. Ohio — Surveyor of the Customs, at Cincinnati. Arlcansas — Receiver of public money, at Little Rock. Indiana — ^Receiver of public moneys, at Jefferson- ville. Illinois — ^Receiver of public moneys, at Chicago. Michigan — Receiver of public moneys, at Detroit. California — Collector of the port, at San Francisco. Florida — The Depository of the TJ. S., at Talla- hasse. 4. "In cases of withdrawal, [see ante XVI., page 79, and XVII., page 80,] the money will be paid in specie only, and at the office, to the person en- titled to it, or his authorized agent, or on his authorized order, unless he directs it to be sent by mail, when it will be at his risk. 5. "Money will be refunded in the same way which has been paid in by mistake. The office is not permitted [by law] to disburse anything but specie, and will not be responsible in any case for money sent by mail." [Rules of Patent Office. [Note. — The above authorized agents to receive money on account of patents, are also authorized, by the act of 1848, to receive and forward models 112 PATENT OFFICE AND PATENT LAWS. of Designs to the Patent Office. See "Models Deposited," post, marked XXXV., page 112. XXXIV. Form of Receipt for Moneys Received by Depositors. " Office of the , ■» ,185../ " The Treasurer of the United States [or other officer'] has credit at this office for dollars in specie, deposited by of the city, [town, or township,] in the county of , and state of , the same being for a patent [or name for what object] for a steam boiler. (Signed,) "A. B., "United States Treasurer." XXXV. Models Deposited. 1. Models may be deposited with any United States Collector of Customs, Assistant Treasurer, or other parties similarly in the government em- ploy, [see ante XXXIII., page 110,] who will for- ward the same, without cliarge, to the Patent Office. 2. Money, as deemed an expedient mode of sending it, is sometimes enclosed in the model, which is highly improper, and is prohibited by the rules of the office. 3. " The transmission of models by the agents extends to those for new applications, as well as those restored in consequence of the destruction of the originals." [Rules of the Patent Office. PART SECOND. DESIGNS. The act of August 29, 1842, determines the class of inventions or discoveries which belong under this head. The fees for obtaining a patent under it, are but half what is required in other cases, and, when obtained, it enures but half as long. I. General Conditions. 1. The act authorizes the Treasurer of the United States to repay any money which had been paid into the Treasury by actual mistake, as for patent fees ; thus precluding the necessity of spe- cial application to Congress for relief The cer- tificate of the Commissioner to that effect, suffices for the Treasurer to pay back such moneys. 2. The privilege of renewal of lost patents is now extended to those granted before the fire of December, 1836. Previously, it had been limited to those actually lost before the fire, thus excluding 10* (113) 114 PATENT OFFICE AND PATENT LAWS. many lost subsequently, and before they were re- corded anew in the office, leaving the inventor without remedy. 3. Protection by this act is extended to a new class of objects, namely, those not included under the head of Arts and Manufactures. They are therefore classed as Designs, and are so considered by the act. It declares that " any citizen, or citi- zens, or alien, or aliens, having resided one year in the United States, and taken the oath of his or their intention to become a citizen or citizens, who by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials ; or any new and original design for the printing of woollen, silk, cotton, or other fabrics; or any new and original design for a bust, statue, or bas-relief, or composition in alto or basso-relievo; or any new and original impression or ornament; or to be placed on any article of manufacture, the same being formed in marble or other material ; or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture ; or any new and original shape or configuration of any article of manufacture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclu- A GUIDE TO INVENTORS. 115 Bive property or right therein to make, use, and sell and vend the same, or copies of the same, to others, by them to be made, used, and sold, may make application in writing to the Commissioner of Patents, expressing such desire ; and the Com- missioner, on due proceeding had, may grant a patent therefor; Provided, That the fee in such cases, vs^hich by the now existing laws would be required of the particular applicant, shall be one- half the sum, and that the duration of said patent shall be seven years ; and that all regulations and provisions, which now apply to the obtaining or protection of patents, not inconsistent with the provisions of this act, shall apply to applications under this section." [Sect. 3, act August, 1842. 4. American ministers and consular agents, re- siding abroad, may administer the oath. 5. The stamping or affixing the name of any patentee on any article, without authority so to do, or the affixing the word patent or letters patent, or the stamp, mark, or devise of any patentee, on any unpatented article, for the purpose of deceiving the public, is forbidden under a penalty of not less than one hundred dollars; and this penalty ap- plies in all cases of fraud or deception in arts and manufactures, as well as in matters of design under this act. 6. Patentees, or their assignees, are now re- quired to affix the date of the patent on each article vended or offered for sale, under a like penalty; thus affording to the public, notice of the duration 116 PATENT OFFICE AND PATENT LAWS. of the patent. "When the article is of such a na- ture that the date cannot be printed thereon, it should be affixed to the case or package contain- ing it. • 7. Before the grant of any patent under this act, the application must be made by petition to the Commissioner of Patents, signed by the inventor. [See "Form of Petition for Design," marked 11., page 117.] He shall also furnish a written de- scription or Specification [see " Specification of Design," marked m., page 117,] of his invention or production, in which the same shall be fully and clearly described; such specification to be signed by the inventor, witnessed by two wit- nesses, and verified under oath, or affirmation. [See "Form of Oath to Specification for Design," marked IV., page 118.] 8. In all cases which admit of representation by drawings, the application must be accompanied by duplicate drawings and a specimen, and in other cases by duplicate specimens. Obse7-ve, the provisions of penalty, &c., contained in section 6, ante, do not apply to patents granted prior to the passage of this act. And the penalty, &c., enforced in matters of Design, are also en- forced in matters of Art and Manufacture. [^Ifote. — It will be seen that this act does not re- peal or change the law under which patents have been heretofore granted, (that is, prior to August, 1842,) but is merely additional thereto — all pa- tents, except for Designs, being granted for the A GUIDE TO INVENTORS. 117 term of fourteen years, and tlie fees, as hereto- fore, being thirty dollars.] n. Form of Fetition for Design. "To the Commissioner of patents : " The petition of John Fitch, of Philadel- phia, in the county of Philadelphia, and state of Pennsylvania — " Eespectfully represents, " That your petitioner has invented or pro- duced [a new design or figure to be stamped or printed on fabrics, which, when thus printed, are termed calicoes,] which he verily believes has not been known prior to the production thereof by your petitioner. He therefore prays that letters patent of the United States may be granted to him therefor, vesting in him and his legal representa- tives the exclusive right to the same, upon the conditions expressed in the act of Congress in that ease made and provided; he having paid fifteen dollars into the Treasury, and complied with other provisions of the said act. (Signed) " John Fitch." III. Specification of Design. " To all whom it may concern : " Be it known that I, John Fitch, of Phila- delphia, in the county of Philadelphia, and state of Pennsylvania, have invented or produced a new [design or figure to be printed on fabrics, which, when thus printed, are termed calicoes ;] and I do 118 ATENT OFFICE AND PATENT LAWS. hereby declare that the following is a full and exact description of the same, " l^amely, [Here should follow a description of the design or figure, with reference to the speci- men, or a drawing of it, in all cases which admit of representation by drawings — the specification to conclude with declaring what the inventor or producer claims, to be expressed in terms which will give the character of the design, &c., &c.] (Signed,) "John Fitch." "Pd' f^^itii^sses." IV. Form of Oath to Specificatioii for a Design. " County of Philadelphia, i "State of Pennsylvania, / " On this day of 185 , before the subscriber, a , personally ap- peared the within-named John Fitch, and made solemn oath [or affirmation] that he verily beheves himself to be the original and first inventor or pro- ducer of the design for figures to be printed on fabrics, which, when thus printed, are termed calicoes; and that he does not know or believe that the same was ever before known or used, and that he is a citizen of the United States. (Signed,) "A. B., " Justice of the Peace for ." A GUIDE TO INVENTORS. 119 V. Penalty for Infringements, &c. 1. "if any person or persons shall paint, or print, or mould, cast, carve, or engrave, or stamp, upon anything made, used, or sold by him, for the sole making or selling which he hath not, or shall not have, obtained letters patent, the name or any imitation of the name of any other person who hath or shall have obtained letters patent for the sole making and vending of such thing, without consent of such patentee, or assigns, or legal repre- sentatives ; or if any person, upon any such thing not having been purchased from the patentee, or some person who purchased it from or under such patentee, or not having the license or consent of such patentee, or his assigns, or legal representa- tives, shall write, paint, print, mould, cast, carve, engrave, stamp, or otherwise make or affix the word "patent," or the words "letters patent," or the word "patentee," or any word or words of like kind, meaning, or import, with the ^^ew or intent of imitating or counterfeiting the stamp, mark, or device of the patentee, or shall affix the same, or any word, stamp, or device of like import, on any unpatented article, for the purpose of deceiving the public, he, she, or they, so offisnding, shall be liable for such offence to a penalty of not less than one hundred dollars, with costs, to be recovered by action in any of the Circuit Courts of the United States, or in any of the District Courts of the United States having the power and jurisdiction of a Circuit Court; one half of which penalty, as 120 PATENT OFFICE AND PATENT LAWS. rvcovered, shall be paid to the patent-fund, and the other half to any person or persons who shall Bue for the same." [Sect. 6, act 1842. Observe, like- ■wisej " Whenever, in any action for damages [for] making, using, or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or by any patent which may hereafter be granted, a verdict shall be rendered for the plaintiiF in such action. It shall be in the power of the Court to render judgment of any sum above the amount found by such verdict, as the actual damages sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case, with costs; and such damages may be recovered by action on the case, in any Court of competent jurisdiction, to be brought in the name or names of the person or persons interested, whether as patentee, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States." [Sect. 14, act 1836. 2. All actions for damages on infringements or violations of patented rights, shall be instituted in the Circuit Courts of the United States, or pro- ceedings may be had in any District Court having similar powers, from which, in either case, appeals may be taken to the Supreme Court of the United States. A GUIDE TO INVEi^TOES. 121 VI. Patent Agents. Misapprehension exists with respect to Patent Agents; persons being led to regard them as having an ojfficial connection with the Patent Office. To disabuse this opinion, the following has been issued by the Commissioner. " The Patent Office recognizes no official or confidential relations with Patent Agents or Attor- neys whatever. It does not concede to them any favours or privileges which are not granted to all other persons; and any pretensions to the con- trary, (if any such are made,) are, of course, with- out foundation. The only class of agents em- ployed by the Office, are those persons who have been authorized, in several cities of the Union, to receive and forward models, &c., to the Patent Office; and their connection begins and ends with that employment only. This explanation is not made with any design to reflect upon such persons as have undertaken the business of Patent Agents, in this City, ["Washington,] or elsewhere, but only with the view of vindicating the Patent Office from any imputation which may grow out of the circumstances above alluded to, and of asserting the integrity and impartiality of its administration, which challenges and defies the most rigid scru- tiny." [See, ante, the places of deposit for models, &c., pages 110, 111. 11 PART THIRD. JUDICIAL DECISIONS. 1. Interpretation and Construction of Letters Patent. Forms and Subjects of Patents. Invention or Dis- covery. UtUity of the Invention. 1. A patent may be for a new and useful art; but it must be practicable and explicable, and re- ferrable to something which may prove it to be useful. [Evans v. Eaton, 1 Pet. C. C. R., 322. 2. A mistake of the word painting for printing in the patent is immaterial, if explained by other parts of the patent or specification, so that there can be no mistake. [Kneass v. The Schuylkill Bank, 4 Wash. C. C. R. 3. By the expression "true inventor" in the statute, is undoubtedly meant the sole and ex- clusive inventor; for if the machine were the joint invention of several persons, neither of them could claim to be the true inventor, having an ex- clusive right to the patent; but the interest would be a joint or common interest in the whole. In such a case, therefore, if a party were to obtain a (122) A GUIDE TO INVBNTOKS. 123 patent for the invention, having svi^orn that he was the true inventor, he would, in the language of this act, obtain it upon "false suggestion;" and as such false suggestion would be a surprise and fraud upon the government, it might well also be declared to be obtained "surreptitiously." [Stearnes v. Barret, 1 Mason, 153. 4. The material question in patent causes is, not whether the same elements of motion, or the same component parts are used, but whether the given effect is produced substantially by the same mode of operation, and the same combination of powers in both machines. Mere colourable differ- ences or slight improvements cannot shake the right of the original inventor. [Odiorne v. Wink- ley, 2 Gallis, 51. 5. A patent can, in no case, be for an effect only, but for an effect produced in a certain man- ner, or by a peculiar operation. For instance, no patent can be obtained for the admeasurement of time, or the expansive operations of steam ; but only for a new mode or new applications of ma- chinery to produce these effects ; and therefore, if new effects are produced by an old machine, in its unaltered state, no patent can be legally supported, for it is a patent for effect only. [Whitemore v. Cutter, 1 Gallis, 476. 6. But on the other hand, if well known effects are produced by machinery, in all its combinations entirely new, a patent may be claimed for the whole machine. [Ibid. 124 PATENT OFFICE AND PATENT LAWS. 7. So if the pi-iueiples of the maeliine are new, either to produce a new or an old effect, the in- ventor may well entitle himself to the exclusive right of the whole machine. [E^id. 8. Bv the principles of a machine, as these words are used in the statute, is not meant the original elementaiy principles of motion, which philosophy and science have discovered, but the modus operandi, the peculiar device or manner of producing any ■ given ett'ect. The expansive power of steam, and the mechanical powers of wheels, have been understood for ages ; yet a ma- chine may well employ either the one or the other, and yet be so entirely new in its mode of applying them, as to entitle a party to his patent for his whole combination. [Ibid. 9. By " useful invention," in the patent act of the United States, is meant an invention which may be applied to a beneficial use in society, in conti'adistinetion to an invention which is injuri- ous to the morals, the health, or the good order of society. [Bedford v. Hunt et al., 1 Mason, 302; Kneass v. Schuylkill Bank, 4 Wash. C. C. Eep. 10. It is not necessary that the invention should be of such general utility as to supersede all other inventions, previously in practice, to accomplish the same purpose. [Ibid, 1 Mason, 302. 11. :N^or is it important that its practical utility should be very limited, for the law does not look to the degree of utility. [Ibid. 12. If one, who has invented merely an im- A GUIDE TO INVENTORS. 125 provemeiit, take out a patent for the whole ma- chine, his patent is too broad, and is utterly void. [Whittemore v. Cutter, 1 Gallis, 476. 13. "When a specific machine already exists, pro- ducing certain effects, if a mere addition is made to such machine, to produce the same effect in a better manner, a patent cannot be taken for the whole machine, but for the improvement only. [Ibid. 14. In like manner, if to an old machine some new- combinations be added to produce new effects, the right to a patent is limited to the new com- bination. [Ibid. 15; It is not sufficient to give validity to a pa- tent that the specific machine, with all its com- binations and effects, did not exist before ; for if the same effects were at all produced by the same application of machinery, in separate parts, and the party merely combined them together, or ad- ded a new effect, such combination would not sus- tain the patent ; as the artist, who added a second- hand or repeater to a watch, could not have been entitled to a patent for the whole watch. [Ibid. 16. Although it is not settled whether, under the general patent law, improvements on different machines can be comprehended in the same pa- tent, so as to give an exclusive right to the use of the several machines in combination, yet the act of January 21st, 1808, ch. 117, for the relief of Oliver Evans, authorizes the issuing to him of a patent for his invention, discovery, and improve- 11* 126 PATENT OFFICE A\D PATENT LAWS. ments in the art of manufacturing flour, and in tlie several machines applicable to that puipose. [Evans v. Eaton, 3 ^^heat., 454; 1 Pet., 322. 17. The first inventor is entitled to the benefit of his invention, if he reduces it to practice, and obtain a patent therefor; and a subsequent in- ventor cannot, by obtaining a patent, oust the first inventor of his right, or maintain an action against him for the use of his own invention. [Woodcock V. Parker et al., 1 Gallis, 488 ; Bedford v. Hunt, 1 Mass. 302 ; Evans v. Weiss, 2 Wash. C. C. E., 342. 18. If two machines be substantially the same, operating in the same manner to produce the same result, though they vary in forms, proportions, and degrees of utility, they are the same in principle ; and the discoverer of the latter is entitled to a pa- tent only for an improvement. [Evans v. Eaton, 3 Wash. C. C. K, 443. 19. To warrant a patent, the invention must be useful, that is, capable of some beneficial use, in contradistinction to pernicious, or frivolous, or worthless. [Dickinson v. Hall, 14 Pick., 217. 20. An inventor may sell the thing invented before the same shall have been patented, and may stipulate for the sale of his invention before it is completed, without vitiating his claim. [Spark- man et al. V. Higgins et al., C. C. R. IS". T. 21. The study of courts has usually been, and especially since the patent acts of 1836 and 1839, to carry out the protection of the law to inventors, A GUIDE TO INVENTOnS. 127 SO as to secure them the full benefit of their inven- tions. The inventors are bound to notify the public of the claim, by an application for a patent. This is a matter of nicety; and men of great ex- perience are often in difficulty as to the precise mode of getting up their papers. Correspondence ensues between the officers at "Washington and the patentee, which consumes time. But if the claim, thus put forward, although originally informal, be followed up with reasonable diligence, and if eventually the patent is granted, it excludes strangers interfering in the meantime, pbid. 22. If a patent is for an improvement, it must be substantially new, and one capable of applica- tion by the means pointed out by the patent, specification, drawing, model, and old machine. [Whitney v. Emmett, 1 Bald., 303. 23. And if, by these means, the invention, and the mode of using it, are intelligible to persons of mechanical skill in the subject-matter, the re- quisites of a specification, by the third section of the act of 1793 are complied with. [Ibid. 24. A controversy, respecting the validity of a patent right, is one strictly between the parties immediately concerned, although the public may have an eventual interest in it. [Wood v. Wil- liams, Gilpin, 517. 25. Some months before the patent issued, the inventors issued their manufactured goods as pa- tent goods, or registered patterns. IS'ow, although "registered pattern" is not a term at law, yet it 128 PATEXT OFFICE A^D PATENT LAWS. may well indicate them to be claimed by the in- ventors as their design, and for which they were preparing to take out a patent. [Betts, J., C. C. K T., Jan. T., 1847. 26. The assignment of a patent, though not re- corded in the patent] Oflice, is still valid, except as against creditors and subsequent purchasers without notice. [Holden v. Curtis, 2 ]^. H., 61. 27. A mere nominal variance between the pa- tent itself and the description of it in the convey- ance, does not make the assignment of it invalid. Xor is the patent itself void, because the elemen- tary principles of it were previously known and used, unless the application of them is similar to others. [Ibid. 28. A patent issued by the United States, secur- ing the exclusive right to manufacture and use certain medicines, does not authorize a person to administer them in the character of a practising physician, unless he is regularly licensed to prac- tice, and in other respects conforms to the laws of the state where the medicines are administered. [Jordan v. Overseers of Dayton, 4 Ham., 294. 29. Congress has general power, under the Con- stitution of the United States, to grant patents to inventors ; and it rests in the sound discretion of Congress to say when, and for what length of time, and under what circumstances, the patent for an invention shall be granted. Therefore, an act of Congress, granting a patent, was not unconstitu- tional, though it operated respectively to give a PATENT OFFICE AND PATENT LAWS. 129 patent for an invention which, though made hy the patentee, was in public use, and was enjoyed by the community at the time of the passage of the act. [Blanchard v. Sprague, 3 Sumner, 535. 30. Patents are entitled to a liberal construction, since they are not granted as restrictions upon the rights of the community, but " to promote science and the useful arts." [Ibid. 31. A patent is not to jDrotect a monopoly of what existed before, and belonged to others, but to protect something which did not exist before, and which belongs to the patentee. [DavoU v. Brown, 1 "Woodbury, 58. 82. A construction of patents, liberal for the pa- tentees, is proper. But the description of the pa- tent must be so certain as to be understood by those acquainted with the subject-matter. [Ibid. 33. But the whole of the specification, as well as the summary and the drawings, are generally to be examined and compared, and not one alone looked to, in order to decide what new part or new combination is claimed to be invented and pro- tected. [Ibid. 34. In coming to a result, practical views, rather than subtle distinctions, must govern. [Ibid. 85. There is no doubt that he who has dis- covered some new element or property of matter, may secure to himself the ownership of his dis- covery, so soon as he has been able to illustrate its practicability, and to demonstrate its value. 130 PATENT OFFICE AND PATENT LAWS. pDetmold v. Reeves, U. S. D. C. Pa., Kane, J., motion for an injunction, 1851. 36. His patent, in such a case, will be commen- sui-ate with the principle which it announces to the world, and may be as broad as the mental concep- tion itself, pn^id. 37. But the mental conception must have been susceptible of imbodiment, and must, in fact, have been imbodied in some mechanical device in some process or art. [Ibid. 38. The abstract must be resolved into the con- crete. The patent must be for a thing, not for an idea merely. [Ibid. 39. If the patentee has discovered much, and discloses little — if there has been revealed to him one of the arcana of nature, and he communicates to the world only some one or more of its deriva- tive and secondary truths, he patents no more than he has proclaimed. [Ibid. 40. He will not be allowed afterwards, when the extent of his right shall be the subject of con- troversy, either by ex]3anding into a general ex- pression what was limited before in a particular form, or by tracing out for us the line that leads back from consequences to their remoter cause, to initiate us inferentially into the radical history of his invention, and then argue that he had described it by implication from the first. [Ibid. 41. Under the sixth section of the patent law of February 21, 1793, ch. 156, if the thing secured by patent had been in use, or had been described in a A GUIDE TO INVENTORS. 131 public work, anterior to the supposed discovery, the patent is void, v^^hether the patentee had a knowledge of this previous use or not. [Evans v. Eaton, 3 Wheat., 454 ; 1 Peters, 322, S. C. 42. A party cannot entitle himself to a patent for more than his own invention ; and if the patent be for the whole of a machine, he can maintain a title to it only by establishing that it is substan- tially new in its structure and mode of operation. Evans v. Eaton, 7 Wheat., 356. 43. Where a patent is taken out for an improve- ment, the specification ought to describe what the improvement is, and the patent should be limited to such improvement. [Ibid, 1 Peters, 322, S. C. ; 3 Wash. C. C. E., 443. 44. If the machine for which the patent was ob- tained, substantially existed before, and the plain- tiff made an improvement only therein, he is en-' titled to a patent for the improvement only, and not for the whole machine ; and when, under such circumstances, the patent comprehends the whole machine, it is too broad, and therefore void. [Woodcock V. Parker et al., 1 Gallis, 438 ; Bed- ford V. Hunt, 1 Mass., 302; Evans v. Weiss, 2 Wash., C. C. E., 342. 45. If the combinations existed before in ma- chines of the same nature, up to a certain point, and the party's invention consists in adding some new machinery, or some improved mode of opera- tion, to the old, the jDatent should be limited to such improvement; for if it includes the whole 132 PATENT OFFICE AND PATENT LAWS. macMDeiy, it includes more than his invention, and therefore cannot be supported. [Evans v. Watson, 7 Wheat, 356. 46. The taking of the oath required by the pa- tent act, previous to the issuing of a patent, is but a prerequisite to the granting of a patent, and is in no degree essential to its validity ; and if not taken, still the patent is valid. [Whittemore v. Cutter, 1 Gallis, 429. 47. A mere nominal variance between the pa- tent itself and the description of it, in the convey- ance, does not make the assignment of it invalid. ISTor is the patent itself void, because the elemen- tary principles of it were previously known and- used, unless the application of them is similar to others. [Holden v. Curtis, 2 N. Hamp., 61. 48. A patent issued to an assignee stands on the same footing, as to remedy, as if issued to the party originally entitled. [Wallace v. Minor, 7 Ham., 249, Part First. 49. The provisions of the 10th section of the act of 21st of February, 1793, apply only to cases, in which a patent has been obtained by fraud, sur- reptitiously, or by false suggestions, and are in- tended to protect the public from imposition. [Delano v. Scott, Gilpin, 489. 50. Where two patents are granted for the same thing, the second patent is inoperative until the first is set aside. [Jackson v. Lawton, 10 Johns- ton, 23. 51. Inventors cannot be stripped of their prop- A GUIDE TO INVENTORS. 133 erty, the fruit, oftentimes, of great toil, ingenuity and expense, by slight and unimportant alterations in the machine, alterations which the description of the invention would of itself naturally, if not necessarily, suggest, without the aid of much in- genuity and skill. [Gibson v. Harris, C. C. N. T., Chambers, !N"elson, J., Nov., 1846. 52. Though a patentee believes himself bona fide to be the original inventor of an improvement patented, yet the fact of his not being so, if it does not constitute a false suggestion in obtaining it, appears to be a sufficient ground for repealing it. [Delano v. Scott, Gilpin, 489. 53. Patents may be interpreted by a considera- tion of the whole instrument, and it is to be there- by determined what thing is invented to be pa- ented. [Carver v. Braintree Manuf. C, 2 Story, 433. 54. The exclusive grant in a patent, is the con- struction and use of the thing patented. [Boyd v. Brown, 3 M'Lean, 295. 55. "Where the right consists in certain instru- ments, by which a bedstead of a particular struc- ture is made, the structure or use of these instru- ments is prohibited. [Ibid. 56. A patentee of a flouring mill of a certain structure, has an exclusive right to make and use such mill ; but he can claim no monopoly in the sale of the flour he manufactures. [Ibid. 57. "Whether the usefulness of an invention be matter of fact, to be left to the jury, or whether the court is to decide it, as a matter of law, is a 12 134 PATEXT OFFICE AND PATENT LAWS. query, piiangdon v. De Groot et al., 1 Paine, 203. 58. It seems, however, that if, in the plaintiff's own showing, the invention appeal's to be useless, and an imposition on the public, the Court should so direct the jary. pbid. 59. An invention of an ornamental mode of putting up thread, which gave to it no additional value, but merely made it sell more readily at retail, and for a larger price, is not a useful in- vention within the meaning of the law.* [Ibid. 60. It is not necessary to defeat the plaintiff's patent that a machine should previously have ex- isted in every -respect similar to his own: for a mere change of former proportions will not entitle a party to a patent. Woodcock v. Parker et al., 1 Gallis, 438 ; Bedford v. Hunt, 1 Mass., 802 ; Evans V. Weiss, 2 Wash. C. C. R., 342. 61. If he claim a patent 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 pro- duce an old eftect in a new way. [Ibid. 62. A joint patent may well be for a joint in- vention, but not for a sole invention of one of the patentees. If each of the patentees obtain sepa- rate patents for the same invention, as his exclusive invention, and afterward both obtain a joint patent for the same as their first invention, they are * But may be patented as a design. [See act of 1842. A GUIDE TO INVENTORS. 135 estopped by the joint patent from asserting any title under the several patents. [Barret et al. v. Hall et al., 1 Mason, 447. 63. If several patents are taken out by several patentees, for a several invention, and the same patentees afterward take out a joint patent for the same as a joint invention, the parties are not ab- solutely estopped from asserting the invention to be joint, but the former patents are very strong evidence against a joint invention. [Ibid. 64. A patent cannot embrace various distinct improvements or inventions ; but in such a case, the part}' must take out separate patents ; and if the patentee has invented certain improved machines, which are capable of a distinct operation, and also has invented a combination of those machines to produce a connected result, the same patent cannot at once be for the combination and for each of the improved machines ; for the inventions are as dis- tinct as if the subjects were entirely different. [Ibid. 65. "Where two machines are substantially the same, and operate in the same manner, to produce the same result, they must be in principle the same. [Gray et al. v. James et al., 1 Peters, C. C. R., 394., 66. A patent "for an improvement in the art of making nails, by means of a machine which cuts and heads the nail at one operation," is not a grant of an abstract principle, nor is it the grant of the different parts of any machine, but of an 136 PATENT OFFICE AXD PATENT LAWS. improvement applied to a practical use, effected by a combination of various mechanical powers to obtain a new result. [Ibid. 67. It is not sufficient to invalidate a patent, that the specification is materially defective,* un- less the patentee intended by concealment of parts of the machine to deceive ; and where practical mechanics are enabled to supply any omission in the specification, such an intention will not be pre- sumed. [Ibid. 68. A machine is only patentable when it is substantially new; but the application of an old machine to a new process is not patentable. [Bean V. Smallwood, 2 Story, 408. 69. Hence in the present case the invention was held not to be patentable, because it was merely the application of an old apparatus to a new pur- pose. [Ibid. 70. Where a patent for an improvement on looms sets forth, as the invention claimed, "the communication of motion from the reed to the yard-beam, in the connection of the one with the other, which is produced as follows," describing the mode, it was held that the invention was limited to the specific machinery and mode of communicating the motion, kc, specially described in the specification. [Stone v. Sprague, 1 Story, 270. • It has howevor, been decided dififerently by the Commissioner of Patents. A GUIDE TO INVENTORS. jj;^ 71. But if it were otherwise constructed, as in- cluding all modes of communicating the motion, &c., it would be utterly void, as being an attempt to patent an abstract principle, or for all possible and practical modes of communication of motion whatsoever, though invented by others, and sub- stantially different from the mode stated in the patent. [Ibid. 72. The language of the patent act of 1836, ch. 358, sec. 6, " not known or used by others before his or their discovery thereof," does not require that the invention should be known or used by more than one person, but merely indicates that the use should be by some other person or persons than the patentee. [Reed v. Cutter, 1 Story, 590. 73. Under the patent laws of the United States, the applicant for a patent must be the first, as well as the original inventor; and a subsequent in- ventor, although an original inventor, is not en- titled to a patent, if the invention is perfected and put into actual use by the first and original inventor ; and it is of no consequence whether the . invention is extensively known or used, or whether the knowledge or use thereof is limited to a few persons, or even to the first inventor himself, or is kept a secret by the first inventor. [Reed v. Cut- ter, 1 Story, 590. 74. "Where the plaintiff, in the specification of 5 his patent, claimed as his invention " an improve- ment in the construction of the axles or bearings ■' of railway, or other wheeled carriages," and it ap- 12* \ 13S PATEXT OFFICE AND PATEXT LAWS. peared that the improvement, though it had never before been applied to railway carriages, Avas well known, as applied to other carriages, it was held that the patent was not good. [Winans v. Provid. \ E. R. Co., 2 Story, 412. 75. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually re- duced to practice, and imbodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not patentable under the laws of the United States. [Reed v. Cutter, 1 Story, 590. 76. He is the first inventor, in the sense of the patent act of the United States, and entitled to a patent for his invention, who has first perfected and adapted to use something reduced to practice, or imbodied in some distinct machinery, apparatus, manufacture, or composition ; and until the in- vention is so perfected and adapted to use, it is not patentable. 77. The power of Congress to grant patents to inventors is general, and discretionary. [Blanchard V. Sprague, 2 Story, 164. 78. Congress has power to pass an act, which operates retrospectively, to give a patent for an in- vention already in public use ; but no act will be construed to operate retrospectively, unless such a construction is unavoidable, pbid. 79. In this case it was held that the patent was for a machine, and not for a principle or function ; and was, therefore, valid. [Ibid. A GUIDE TO INVBNTOKS. 139 80. It seems that, in a race of diligence between two independent inventors, he who first reduces his ihvention to a fixed and positive form, is en- titled to a priority of right to a patent therefor. [Eeed v. Cutter, 1 Story, 590. 81. By " useful invention" in the patent act of the United States, is meant an invention which may be applied to a beneficial use in society, in contradistinction to an invention which may be frivolous, or injurious to the moral health or good order of society. [Bedford v. Hunt, 1 Mason, 302. 82. The decision in Dolland's Case, that a first and original inventor, who had kept his invention a secret, so that the public had no benefit thereof, may be a correct exposition of the statute of Mo- nopolies, (stat., 21 James I., ch. 3, sect. 6 ;) but it is not applicable to the patent law of the United States. [Eeed v. Cutter, 1 Story, 590. 83. A machine or an improvement may be new, and entitled to a patent, although parts of it were before known and used. [Evans v. Eaton, 1 Pe- ters, C. C. E. 322. 84. By the provisions of the act of Congress of April 17, 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 pa- tented, the patent is void. In both cases, the right must be tested by the same rule. [Shaw v. Cooper, 7 Peters, 202. 85. To constitute an inventor, it is not necessary 140 PATENT OFFICE AND PATENT LAWS. to have the manual skill to make the draughts, &c., if the ideas are famished for produciug the result aimed at. [Sparkman et al. v. Higgins et al., C. C. ISr. Y., Betts, J., Jan., 1847. 86. Patents for inventions are not granted as monopolies- or restrictions upon the rights of the community, hut " to promote science and the useful arts," and are to he literally [q., liberally^ construed. [Blanchard v. Sprague, 2 Story, 164. 87. The application of an old process to produce a new result, is not a patentable invention ; there 1 must also be some new process or mode. But the production of an old result by a new process is patentable. [Howe v. Abbott, 2 Story, 190. 88. An inventor cannot, under the patent laws of the United States, have two subsisting valid pa- tents at the same time, for the same invention. The first that he obtains, while it remains unre- pealed, is an estoppel to any future patent for the same invention, founded upon the general patent act. [Odiorne v. The Amesbury Nail Factory Co., 2 Mason, 28. 89. It is no objection to the validity of a patent that the mode of performing an operation, com- mon and well known, is not described. [Kneass V. The Schuylkill Bank, 4 Wash. C. G. R. 90. The first section of the patent act of Feb- ruary 21, 1793, ch. 156, construed in connection with the other sections of the act, means that the invention should not be known or used as the in- vention of any other person than the patentee, A GUIDE TO INVENTORS. Ul before the application of the patent. [Morris v. Huntingdon, 1 Paine, 348. 91. If the invention has got into use while the inventor was practicing upon it, with a view to improve it before applying for a patent, such use does not invalidate the patent, and the motive for delay is a question for the jury. [Ibid. 92. It is a sufficient objection to the validity of a patent that the allegations and suggestions of the petition are not recited in it. [Evans v. Cham- bers, 2 Wash. C. C. E., 125. 93. A patented invention is deemed useful if it is not frivolous. The want of utility is good cause for not granting the patent, but not for setting it aside. [Whitney v. Emmett, 1 Bald., 303. 94. A court cannot pronounce a patent worth- less merely from the specification, without evi- dence of any experiments.- [Case v. Money, 1 !N". Hamp., 347. 95. Under the acts of 1836 and 1839, the earliest invention is to prevail over any subsequent one, unless allowed to ,go into public use, or on sale, for two years before taking out a patent. [Allen V. Blunt, C. C. Mass., "Woodbury, J., November, 1846. 96. An invention, to be as valid as the first, must be seasonably reduced to practice, and put in use. [Ibid. 97. The original inventor of a machine is ex- clusively entitled to a patent for it. Mere colour- able differences, or slight improvements, will not 112 PATENT OFFICE AND PATENT LAWS. affect his rights. [Odiorne v. Winkley, 2 Gal- lis, 51. 98. If another person invent an improvement on a machine, he can entitle himself to a patent for the improvement only, and does not thereby acquire a right to patent and use the original ma- chine ; and if he obtain a patent for the whole machine, and not for the improvement only, his patent is too broad, and therefore void. [Ibid. 99. The law allows a party a patent for a new and useful invention; and by "useful invention" is meant, not an invention, in all cases superior to the modes now in use for the same purpose, but useful in contradistinction to frivolous and mis- chievous inventions. [Lowell v. Lewis, 1 Mason, 182. 100. As among inventors, he who is first in time has a prior right to the patent for the inven- tion. [Ibid. 101. The combination of old machines to pro- duce a new and useful result, is a discovery for which a patent may be granted. [Evans v. Eaton, 1 Peters, 0. C. R., 322. 102. To obtain a patent under the laws of the United States, the party must be the original in- ventor in reference to the whole world. It is not sufficient that he be the first inventor within the United States. [Reutgers v. Canowers et al., 1 Wash. 0. C. R., 168 ; Evans v. Eaton, 1 Peters, 0. 0. R., 323. 103. There are defects in the plaintiff's title, A GUIDE TO INVENTORS. 143 apparent upon the face of the documents on which the title is founded. On the same ground, defen- dant may object that the patent is broader than the discovery; that it is for an improvement which is not distinguished in the specification from the original invention ; that the suggestions of the petition are not recited substantially in the patent. [Kneass v. The Schiiylkill Bank, 4 Wash. C. C. K, 9, 106. 104. One who is the inventor of an improve- ment in the principle of a machine, has the same right to the use of it as the inventor of the original machine had to that; aliter, if it be only in the form or proportion. [Reutgers v. Canowers et al., 1 Wash. C. C. R., 168 ; Evans v. Eaton, 1 Peters, C. C. R., 323 ; Gray et al. v. James et al., 1 Pe- ters, C. C. R., 394. 105. Under the patent act of February 21, 1793, ch. 156, a patent is valid, although the invention may have been in use for years anterior to the date of the patent, if the patentee was the inventor. [Goodyear v. Mattheus, 1 Paine, 300. 106. A patent for an entire machine is valid, although the invention consists only of an im- provement on such machine ; but the patentee is entitled to an exclusive use of no more than his improvement. [Ibid. 107. An invention or improvement, for which a patent has been obtained, must be useful, within the meaning of the patent law, or the patent is void. [Langdon v. De Groot et al., 1 Paine, 203. 144 PATENT OFFICE AND PATENT LAWS. 108. AVTioever finally perfects a machine, and renders it capable of useful operation, is entitled to a patent, altlaough others may have had the idea, and made experiments toward putting it into pi-actice; and although all the component parts may have been known under a different combina- tion, or used for a different purpose. [Washing- ton V. Gould, 3 Story, 122. 109. A patent will not be valid which is simply a principle or function detached from machinery. [Blanchard v. Sprague, 3 Sumner, 535. 110. Patents are entitled to a liberal construc- tion, since they are not granted as restrictions upon the rights of the community, but " to pro- mote science and the useful arts." pbid. 111. A patent was granted by act of Congress of 1834, ch. 213, but declared void by the court, on the ground of a defect in the act. Afterwards, the grant of the patent was renewed by another act of Congress, (1839, ch. 14.) Qucere, whether the latter act would be constitutional, if it gave damages for the construction or use of the ma- chine before the grant of the patent under the act. [Ibid. 112. It is not necessaiy to the validity of a pa- tent for a new and useful invention that any of the ingredients should be new or unused before for that purpose. The true question is, whether the combination of materials by the patentee is sub- stantially new. [Ryan v. Goodwin, 8 Sumner, 514. PATENT OFFICE AND PATENT LAWS. 145 113. An invention, to be valid, must be sub- stantially different from any machine or thing in use. [Stanley v. Whipple, 2 M'Lean, 35. 114. A patent is invalid, if described in a foreign publication. pSrooks & Morris v. Jenkins et al., 3 M'Lean, 250. 115. A difference in form or proportions only, makes no difference in the principle of a machine. [Ibid. 116. If the thing claimed to have been invented has been before made, or described in any public work, the patent is void. [Boyd v. Brown, 3 M'Lean, 295. 117. The true meaning of the words of the pa- tent law, "not known or used before the applica- tion," is, not known or used by the public before the application. [Pennock et al. v. Dialogue, 2 Peters, 19. 118. The principle of a machine depends upon its peculiar structure, by which a certain effect is produced. [Boyd v. Brown, 3 M'Lean, 295. 119. A patent, to be valid, must be of some utility. [Stanley v. Cooper, 7 Peters, 202. 120. The words, " any newly invented machine, manufacture, or composition of matter," in the 7th section of the act of 1839, have the same meaning as "invention" or "thing patented." [M'Clurg et al. V. Kingsland et al., 1 Howard, 202. 121. A similar rendition. [Smith v. Pearce, 2 M'Lean, 176. 122. Under the patent act of 1836, oh. 357, sect. 13 146 PATENT OFFICE AND PATENT LAWS. 15, an inventor, who has first actually perfected his invention, will not be deemed to have sur- reptitiously or unjustly obtained a patent for that which was in fact invented by another, unless the latter was, at the time, using reasonable diligence in adapting and perfecting the same ; yet he who invents first shall have the prior right, if he is using reasonable diligence in adapting and per- fecting the same, although the second inventor has, in fact, first perfected the same, and first re- duced the same to practice in a positive form. [Eeed v. Cutter, 1 Story, 590. 123. An alteration, merely formal, or a slight improvement, will give no right. [Smith v. Pearce, 2 M'Lean, 176. 124. If we could reach the laws of nature, they would be, like water and air, the common property of mankind; and those theories of the learned, which we dignify with this title, partake, just so far as they are true, of the same universally dif- fused ownership. It is their application to prac- tical use which brings them within the domain of individuals ; and it is the novelty of such an ap- plication that constitutes to it the proper subject of a patent. [Detmold v. Eeeves, motion for an injunction, D. C. Penn., Kane, J., Sept., 1851. 125. It is not necessary for the protection of a patent that the patentee should be the first person who conceived the practicability or existence of the thing patented, but who, though making im- portant experiments, was unable to bring them to A GUIDE TO INVENTORS. 147 any successful or valuable result. [Groodyear v. Day, 2 Wallace, 283. 126. He who reduces speculation to practice, whose experiments result in discovery, and who then afterward first puts the public into practical and useful possession of the compound, art, ma- chine, or product, is entitled to the patent right. [Ibid. 127. When a full and candid description of the manner and process of making and compounding any invention or discovery, describes such manner in a concrete and illustrative, rather than in an abstracted and essential way, the description will cover every kind of application which was meant to come within, and which men of science can see is really involved in, the principle attempted to be described. And so conversely, where an abstract description or abstract term is used, or an agent is described generally, rather than in its forms, the application of the thing, and not the form of the thing, being patented — this is enough. The last point is the one adjudged, the other being as- serted. [Goodyear v. The Eailroad, 2 Wallace, 356. 128. Patents are benignly construed in favour of inventors ; and in considering the validity of a patent, objected to for want of a proper "descrip- tion of the invention or discovery" having been filed previously to its issue, this description, even if quite wide of truth when taken literal!}', may be aided and made good by the description of " the 148 PATENT OFFICE AND PATENT LAWS. manner and process of making, constructing, using, and compounding the same. [Goodyear v. The Raih-oad, 2 Wallace, 356. 129. The public has rights to be guarded ; and these exact that the specification of the patentee shall set forth his invention so fully and definitely that it cannot readily be misunderstood. [French et al. V. Rogers et al., C. C. Penn'a., Grier and Kane, Jj., Ifovembei«, 1851. 130. It is still contended, and with much of elegant research into the radical meaning of the term, that an art, as such, cannot be made the sub- ject of a patent. But, interpreting language as men use it around us, and as it reflects ideas, the question can hardly be regarded as doubtful. The constitutional provision, under which our patent laws are framed, looks to the promotion of "useful arts." The act of Congress places "a new and useful art" among the discoveries it professes to protect, and assigns to it the fii'st place on the list. The statute of 21 James, ch. 3, from which the patent sj'stem of England has grown up, speaks only of "new manufactures/' yet the judges in that Kingdom find a warrant in this limited expression for sustaining patents for an art, and even for the renewed discovery of an art that had been lost. [Hot Blast Case, Webster, P. C, 683, 717, 736 ; Hindmarch, 77-102 ; Kane J., French et al. v. Rogers et ah, C. C. Pa., 1851. A GUIDE TO INVENTORS. 149 n. Specification and Description of the Invention or Discovery. Tie Claim. 1. In the present case, the patent and specifica- tion claimed for the patentee, as his invention, was the cutting of ice of a uniform size, by means of an apparatus worked by any other power than human. It claimed, also, not only the invention of this art, but also the particular method of the application of the principle, stated in the specifica- tion, which was by two machines described therein, called the saw and the cutter. It was held by the court, that the specification, so far as it claimed the art of cutting ice by means of an apparatus worked by any other power than human, was the claim of an abstract principle, and void ; but so far as it claimed the two machines described in the specification, it might be good, if a disclaimer were made of the other parts, according to the pa- tent act of 1837, (ch. 45., sects. 7, 9,) within a reasonable time, and before the suit were brought. But a disclaimer, after the suit was brought, would not be suflacient to entitle the party to a perpetual injunction in equity, whatever might be his right to maintain a suit at law on the patent. [Wyeth V. Stone, 1 Story, 273. 2. A patent for an improvement in a machine must describe the machine in use, of which it is an improvement, so that it may be known in what the improvement consists ; and a note given for a patent, defective in that respect, is void for want 13* 150 PATENT OFFICE AND PATENT LAWS. of a consideration. [Cross v. Himtly, 13 "Wendell, 3S5. I 3. If the patentee claims, as a part of his in- vention, some things which are old, and some new, I he_c anno t jucceed, without disclaimi ng what is old! [Hovey v. Stevens, 1 WoodBury, 290. 4. It should appear also, with reasonable cer- tainty, whether the complainant in his patent claims a new combination of old parts and things, or a new invention of new parts ; and if not in- telligible as to what is claimed, the patent may be void for uncertainty. [Ibid. 5. The court will give a liberal construction to the language of all patents and specifications, and will, in all cases, by taking the whole together, adopt that intei'pretation of a specification which will give the fullest effect to the nature and extent of the claim made by the inventor. [Ryan v. Goodwin, 3 Sumner, 514. 6. The inventor of a new compound, wholly un- known before, is not limited to the use always of the same precise ingredients in making that com- pound ; and if the same purpose can be accom- plished by him by the substitution in part of other ingredients in the composition, which have never been so used before, he is at liberty to extend his patent so as to embrace them also. [Ibid. 7. "Where an inventor claimed as his invention the combination of phosphorus with chalk, or any other absorbent earth or earthy material, and glue, or any other glutinous substance, using the ma- A GUIDE TO INVENTORS. 151 terials in the proportions as substantially set forth in the specification, in making matches, it was held that the patent was not void as being too broad and comprehensive. [Ibid. 8. 'No defect or concealment in the specification will void the patent, unless it arises from an in- tention to deceive the public. [Whittemore v. Cutter, 1 GaUis, 429. 9. A patent for an improvement should describe f the machine in use, that it may be known in what' the improvement consists. [Sullivan v. Redfield\ et al., 1 Paine, 112. 10. A party had patented "a new and useful improvement in a steam tow-boat;" but the specifi- cation did not mention the invention as an im- provement, but simply described a tow-boat; and the court held that the specification was broader than the patent, and therefore bad. [Ibid. 11. The specification described the invention as " consisting essentially in attaching the packet to the steamboat, with ropes, chains, or spars, so as to communicate the power of the engine from the towing vessel to the vessel taken in tow, and kept always at convenient distance, the manner of ap- plying the power varying with the circumstances in some measure." It was held, bad,tov uncer- tainty. [Ibid. 12. The invention should be so clearly described , as to enable the public to put it in use. [Ibid. / 13. If the patentee has assigned his patent in part, and a joint suit is brought in equity for a 152 PATEXT OFFICE AND PATENT LAWS. perpetual injunction, a disclaimer by the patentee alone, without the assignee uniting in it, -will not entitle the parties to the benefit of the 7th and 9th sections of the act of 1837, ch. 45. [Wyeth v. Stone, 1 Story, 273. 14. A single patent may be taken for several improvements on one and the same machine, or for two machines, which are invented by the pa- tentee, and conduce to the same common purpose and object, although they are each capable of a distinct use and application, without being united together. [Ibid. 15. But a single patent cannot be taken for two distinct machines, not conducing to the same com- mon purpose or object, but designed for totally different and independent objects. [Jhid. 16. Amendments to the specification made upon a re-issue of letters patent, came to the benefit of the grantees of rights under said letters patent, as well as to the grantee. [Smith & Sloat v. Mercer & Pechin, C. C. Penn'a., Kane, J., October, 1846. 17. If an amended specification describes a dif- ferent improvement fi'om that which was embraced in the original patent, the new patent vnll not be invalidated by variance. For the purpose of an injunction, if for nothing else, the invention must be taken to be the same in both patents, after the Commissioner of Patents has so decided by gran1>- ing a new patent. [Ibid. 18. If a patentee claims more than he has in- vented, his patent is not void, as under the former A GUIDE TO INVENTORS. 153 law ; but, so far as his invention goes, he is pro- tected. [Peterson v. Wooden, 3 M'Lean, 248. 19. But where the patent is for the improve- ment of a machine, the patentee must show in what the improvement consists. [Ibid. 20. In order to obtain a patent, the specification must be in such full, clear, and exact terms as to enable any one, skilled in the art to which it ap- pertains, to compound and use the invention, with- out making any experiments of his own. [Wood V. TJnderhill, 5 Howard, 1. 21. K the patent be for a new composition of matter, and no relative proportions of the in- gredients are given, or they are stated so ambigu- ously and vaguely that no one could use the in- vention without first ascertaining, by experiment, the exact proportion required to produce the re- sult, it would be the duty of the court to declare the patent void. [Ibid. 22. But the sufficiency of the description in pa- tents for machines, or for a new composition of matter, where any of the ingredients do not always possess exactly the same properties in the same degree, is generally a question of fact, to be deter- mined by the jury. [Ibid. 23. A disclaimer, to be effectual for all intents and purposes, under the act of 1837, ch. 45, sec- tions 7 and 9, must be filed in the Patent Office before the suit is brought. Unless it is filed before the suit, the plaintiff will not be entitled to recover costs in such suit, even if he should establish at 154 PATENT OFFICE AND PATENT LAWS. the trial that a part of the inrention, not dis- claimed, had been infringed by the defendant. [Reed v. Cutter, 1 Story, 590. 24. TMiere a disclaimer has been filed, either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof, if he has un- reasonably neglected or delayed to enter the same at the Patent Office ; but an unreasonable neglect or delay -vdll constitute a good defence and objec- tion to the suit. pbid. 25. "Wliere the plaintiff, in the specification of his patent, described his invention to be " a new and useful improve nient," whereas, in fact, it con- sisted of a combination of several improvements, distinctly set forth in the specification, it was held that the patent was good, not only for the combi- nation, but each distinct improvement, so far as it was his invention ; and that the descriptive words were to be construed in connection with the speci- fication. [Pitts V. Whitman, 2 Story, 609. 26. Where the plaintiff' claimed, as his inven- tion, "the construction and use of an endless apron, divided into troughs and cells, in a ma^ chine for cleaning grain, operating substantially in the way described," it was held that the claim was for a combination of the endless apron with the machine for cleaning grain ; and that, if the com- bination was new, it was patentable, although a part of the apparatus was old. [Ibid. 27. It is not necessary under our patent laws, as in England, that the disclosure of tlie secret in the A GUIDE TO INVENTORS. 155 specification should be such as to enable the public to use the invention after the patent has expired. [Whitney v. Emmett, 1 Bald., 303. 28. If the patent be for an improved machine, or for an improvement of a machine, (for the meaning of the term is substantially the same,) then the patent must state in what the improve- ment specifically consists, and it must be limited to such improvement. [Barrett et al. v. Hall et al., 1 Mason, 447. 29. If the terms be so obscure or doubtful that the court cannot say which is the particular im- provement that the patentee claims, and to what it is limited, the patent is void for ambiguity ; and if it covers more than the improvement, it is void, because it is broader than the invention. [Ibid. 30. It is not enough that the thing designed to be embraced by the patent should be made ap- parent on the trial, by a comparison of the new with the old machine. The patent or specification must distinguish the new from the old, so as to point out in what the improvement consists. [Dixon V. Moyer, 4 Wash. C. C. E., 68. 31. Under the former law, a patent was void if the patentee claimed more than he had invented. [Stanley v. Whipple, 2 M'Lean, 35. 32. Where a patent was obtained for a new im- provement in the mode of making brick, tile, and other clay ware, and the process described in the specification was, to mix pulverized anthracite coal with the clay before moulding it, in the proportion 156 PATENT OFFICE AND PATENT LAWS. of three-fourths of a bushel of coal dust to one thousand bricks, some clay requiring on^eighth more, and some not exceeding half a bushel, this degi-ee of vagueness and uncertainty was not suf- ficient to justify the court below in declaring the patent void. [Wood v. TJnderhill, 5 Howard, 1. 83. The court should have left it to the jury to say from the evidence of persons skilled in the art whether the description was clear and exact enough to enable such persons to compound and use the invention. [Ibid. 84. If the claim of the patentee on letters patent does not expressly refer to another portion of his specification, he will be confined to the particular thing specifically described in his claims ; but if he does not refer to another portion of the speci- fication for a definition of his invention, such por- tion of the specification becomes a part of his claim, as really as if it had been incorporated into it in the very words of the part referred to. [Ho- very v. Stevens, C. C. INIass., Sprague, J., Nov., 1846. 35. If there be a false suggestion in any of the several material facts set forth in a specification, the patent is invalid. [Delano v. Scott, Gilpin, 489. 36. The thing invented must be accurately de- scribed. [Boyd V. M'Alpin, 3 M'Lean, 427. 37. It is the duty of the court, rather than of the jury, to construe the language used in a specifi- cation of a patent, if no parol evidence is offered in A GUIDE TO INVENTORS. 157 explanation, or none which is contradictory. [Da- voll V. Brown, 1 "Woodbury, 53. 38. The patentee must describe in his patent in what his invention consists, with reasonable cer- tainty ; otherwise it is void for ambiguity. [Howell V. Lewis, 1 Mason, 182. 39. If the patent be for an improvement in an existing machine, the patentee must in his patent distinguish the new from the old, and confine his patent to such parts only as are new ; for if both are mixed up together, and a patent is taken for the whole, it is void. [Ibid. 40. Where a patentee, in his specification, states and sums up the particulars of his invention, and his patent covers them, he is confined to such sum- mary, and he cannot afterward be permitted to sustain his patent by showing that some part which he claimed in his summing up, as his invention, though not in fact his invention, is of slight value or importance in his patent. His patent covers it ; and if it be not new, the patent must be void. [Moody V. Fiske et al., 2 Mason, 112. 41. The schedule annexed to letters patent is part of the patent, so far as it is a description of the machine, but no farther. [Evans v. Eaton, 1 Peters, C. C. E., 322. 42. The grant of an exclusive privilege by the patent can be only for the discovery recited and described in the patent and specification. [Ibid. 43. Where the invention is so loosely and in- accurately described in the specification that the 14 158 PATENT OFFICE AND PATENT LAWS. court cannot, without resorting to conjecture, gather what it is, then the patent is void ; but if the court can clearly see the nature and extent of the claim, however imperfectly and inartificially it may be expressed, the patent is good. [Ames v. Howard, 1 Sumner, 482. 44. A patent contained the following words in the description of the invention : " I do not claim the felting, vats, rollers, presses, wire-cloth, or any separate parts of the above-described machinery, or apparatus, as my invention : What I do claim as new, and my invention, is the construction and use of the peculiar cylinder above described, and the several parts thereof in combination, for the purpose aforesaid;" and it was held, that it was not the cylinder alone, nor its several parts, which were claimed per se, but that they were claimed in their actual combination with the other machinery to make paper. [Ibid. 45. "Where the original patent was for "a new and useful improvement in the ribs of saw-gins for ginning cotton," and the renewed patent was for "a new and useful invention in the manner of forming the ribs of saw-gins for ginning cotton," and in the renewed patent was claimed, in addi- tion to the thickness of the rib, the sloping up of it, so as to leave no shoulder, it was held that the claim in the renewed patent was not for two dis- tinct improvements, but for additional parts of the same improvement, and that the same thing was A GUIDE TO INVENTORS. 159 patented in botli patents. [Carver v. Braintree Manuf. Co., 2 Story, 432. 46. An original patent being destroyed by the burning of the Patent Office, and the only record ! of the specification being a publication in the Franklin Journal, the claim is not limited by that publication, because the whole of the specification is not set forth in it. [Simpson v. W. Chester E. R. Co., 4 Howard, 380. 47. An inventor is bound to describe in his spe- cification in what his invention consists, and what his particular claim is. But he is not bound to any precise form of' words, provided their import can be clearly ascertained by fair interpretation, even though the expressions may be inaccurate. [Wyeth V. Stone, 1 Story, 273. 48. "Where the plaintiff, in a patent for " a new and useful improvement in the ribs of the cotton gin," claimed, as a part of his invention, the in- creasing of the space between the upper and lower surface of the rib, either "by making the ribs thicker at that part, or by a fork, or by any other variation of the particular form," it was held that the claim was sufficiently accurate as a matter of law, and that it was not necessary that he should describe all possible modes by which the rib might be varied, but only the most important ; and that mere formal variations therefrom would be viola- tions of the patent. [Carver v. Braintree Manuf. Co., 2 Story, 432. 49. The specifications of an improvement of a 160 PATENT OFFICE AND PATENT LAWS. macliine must be so clear as to enable a person, acquainted with the structure of such machine, to build one. [Brooks & Morris v. Jenkins et al., 3 M'Lean, 250. 50. In the case of Woodworth's Planing Ma- chine, the patent granted to the administrator was founded upon a sufficient specitication, and proper drawing, and is valid. [Wilson v. Rosseau, 4 Howard, 646. 51. If the invention is definitely described in the patent, so as to distinguish it from what is before known, the patent is good, although the specifica- tion does not describe the invention in such full and exact terms that a person, skilled in the art and science of which it is a branch, would con- struct or make the thing invented, unless such de- fective description or concealment was with an intent to deceive the public. [Gray v. Osgood, 1 Peters, C. C. P., 374. 52. Where a combination of machinery already exists up to a certain point, and the patentee makes an addition or improvement to the ma- chinery, he must confine his patent to the im- provement. [Barrett et al. v. Hall et ah, 1 jSIason, 447. 53. If an invention consists in a new combina- tion of machiueiy or in improvements upon an old machine to produce a new effect, the patent should be for the combined machinery or improvement on the old machine, and not for a mere mode or A GUIDE TO INVENTORS. 161 device for producing such effects detached from the raachiaery. [Ibid. 54. Drawings, not referred to in the specification of a patent, may be treated as a part of the specifi- cation, and used to explain and enlarge it. [Wash- burn V. Gould, 3 Story, 122. 55. It is for the jury to decide whether the spe- cification discloses the whole truth relative to the discovery, or whether anything material has been concealed, with intent to deceive. [Reutgers v. Canowers et al., 1 "Wash. C. C. R., 168 ; Evans v. Eaton, 1 Peters, C. C. K, 323; Gray et al. v. James et al., 1 Peters, C. C. B., 394. 56. It is the purpose of the statute to reconcile seeming conflicts ; and it effects it by allowing the inventor to amend the mistakes he has honestly fallen into in his description and claim of title as soon and as often as he discovers them. [French et al. V. Rogers et al., C. C. Penn'a., Grier and Kane, Jj., November, 1851. 57. The order in which the subjects of claim are marshalled, is not the same throughout. A phrase is more concise in one, in another more popular; in one a scientific term, or a general expression, takes the place of the descriptive or the defining language, or the detailed particulars of another: in a word, they are unequal as specimens of artistic writing, and a close examination may detect defects in the first two which are repaired in the last spe- cification. But they all describe the same thing essentially ; and we should find it easier to argue 14* 162 PATENT OFFICE AND PATEXT LAWS. that neither the first nor the second specification could be rightfully regarded, as " inoperative or in- valid," for v?ant of precision and clearness, than that there was an important variance in the second from the first, or in the third from either. [French et al. v. Rogers et al., C. C. Pa., Grier and Kane, Jj., N'ov. 1851. III. In&ingemeiit of Patent Eights. Damages. 1. The sale of the product of a patented machine, is not an infringement of the right. pBoyd v. M'Alpin, 3 M'Lean, 427. 2. But if the person who sells is connected with the use of the machine, it may be an infringement. [Ibid. 3. Woodworth's right consists of a combination of known mechanical powers. [Ibid. 4. The use of any part of these, less than the whole, is no infringement. [Ibid. 5. To constitute an infringement, the defendant must have used the same combination, constructed and operating substantially in the same way. [Gorham v. Mixter et al., Sprague J., C. C. Mass., 1848. 6. "Whereas, if he had used but two of the three elements of combination, it was not an infringe- ment. [Ibid. 7. A mere change in form or proportions, or substitution of mechanical means, or equivalents, in any one or all the elements, producing the same result, would not constitute a substantial A GUIDE TO INVENTORS. 163 difference within the meaning of the patent law. [Ibid. 8. ITor would it be a difference in infringement, that the party had added to the combination, or any elements thereof, and made improvements, provided they used plaintiff's combination, con- structed and operating substantially in the same way. [Ibid. 9. Such additions and improvements, though meritorious, give no right to appropriate what be- longs to another, without making compensation. [Ibid. 10. The plaintiffs in the Circuit Court, claimed damages for the infringement of their patent for a "new and useful improvement in the construction of a plough." The claim of the patentees was, for the combination of certain parts of the plough, not for the parts separately. The Circuit Court charged the jury, that unless it is proved that the whole combination is substantially used in the de- fendant's plough, it is not a violation of the plain- tiffs' patent, although one or more of the parts specified in the letters patent may be used in com- bination by the defendant. The plaintiffs, by their specification and summing up, treated the parts described as essential parts of their combina- tion, for the purpose of brace and draught, and the use of either alone by the defendant would not be an infringement of the combination patented. It was held that the instructions of the Circuit Court were correct. [Prouty v. Ruggles, 16 Peters, 336. 164 PATENT OFFICE AND PATENT LAWS. 11. It is not a defence that the plaintiff was not himself the original projector of the improvement, if the patent was taken out with the knowledge and assent of the original projector, and not in fraud of his right. [Dixon v. Moyer, 4 Wash. C. C. R., 68. 12. The plaintiff must in all cases prove an in- fringement of his right subsequent to the date o'f his application, or patent ; but if the defendant at- tempts to avoid the patent, by showing that the plaintiff was not the original discoverer, the patent will be considered as relating back to the original discovery. [Ibid. 13. tt lies on the defendant to show that some other person than the patentee was the original inventor: it is the point of his defence, and he must substantiate it. [Ibid. 14. The act of Januaiy 21, 1808, ch. 117, for the relief of Oliver Evans, does not authorize those who erected his machinery, between the expiration of his old patent and the issuing of the new one, to use it after the issuing of the latter. [Evans v. Jordan et al., 9 Cranch, 199. 15. If the patent is broader than the invention, or if it is not sufficiently descriptive, taken in connection with the specification, the plaintiff cannot recover in an action for its violation. If however, the patent is to.o broad, in its general terms, it may be limited by a surrender and a disclaimer, if they show the thing intended to be patented, and that no claim is made to anything A GUIDE TO INVENTORS. 165 before known or used. [Whitney v. Eminett, 1 Bald., 308. 16. In an action in the Circuit Coui't of the United States, for the violation of a patent, the court cannot give judgment, declaring the patent void, only in the cases provided for in the 6th sec- tion of the act of 1793. If the patent is defective for any other cause, the court can only render judgment generally for the defendant. [Ibid. 17. A patent right is infringed by making the thing patented, though employed by another to do so. [I3oyce v. Dorr, 8 M'Lean, 582. 18. But where the thing was made without the knowledge of its having been patented, more than nominal damages should not be given. [Ibid. 19. An assignee of an exclusive right to use machines within a particular district, can maintain an action for an infringement of the patent within that district, even against the patentee. [Stimp- son V. "Westchester E. E. Co., 4 Howard, 380. 20. Under the act of Congress of January 21, 1808, ch. 117, and a patent taken out pursuant to it, Oliver Evans might recover damages for the use of a machine violating his patent, after notice of the patent, although the machine might have been constructed prior to the passing of the act. [Evans V. Weiss, 2 Wash. C. C. E., 342 ; 3 Hall's Am. Law Journ., 108, S. C. 21. Under the general patent law, the plaintiff' has a right to recover against a person who erected lf.6 PATENT OFFICE AND PATENT LAWS. a machine prior to the issuing of a patent, and made use of it afterward. [Ibid. 22. The patent is for a combination, and the improvement consists in arranging different por- tions of the plough, and combining them together in the manner stated in the specification, for the purpose of producing a certain effect. None of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described ; and this combination, composed of all the parts mentioned in the specification, and ar- ranged with reference to each other, and to other parts of the plough, in the manner therein de- scribed, is stated to be the improvement, and is the thing patented. The use of any two of these parts only, or of two combined with a third, which is substantially different in the form, or in the manner of its arrangement and connection with the others, is, therefore, not the thing patented. It is not the same combination if it substantially differs from it in any of its parts. [Prouty v. Bug- gies, 16 Peters, 336. 23. A mere workman, employed by a person, who is not the patentee, to make parts of a pa- tented machine, is not liable to a penalty under the statute of the 21st of February, 1793. [Delano V. Scott, Gilpin, 489. A GUIDE TO INVENTORS. 167 24: An assignment of an exclusive right to use a machine, and to vend the same to others for use, within a specified territoiy, authorizes the assignee to vend elsewhere, out of the said territory, the product of said machine. [Stimpson v. Wilson, 4 Howard, 709. 25. The prior knowledge and use of an inven- tion, which avoids a patent, relates to the time of the application, not the discovery ; and to public use, with the knowledge and privity of the pa- tentee, not to a private or surreptitious use, in fraud of the patent. [Whitney v. Emmet, 1 Bald., 303. 26. If the application is made in a reasonable time after the discovery, an intermediate know- ledge or use will not, of itself, affect the patent. The invention, however, must be new to-alLj ihe world. [Ibid. 27. A. having obtained a patent for a new and useful improvement, to-wit, a machine for making watch chains, brought an action under the 3d sec- tion of the patent act of April 17, 1800, ch. 179, against B. for an alleged violation of his patent right. On the trial, an agreement was proved be- tween the defendant and C, by which the former agreed to purchase of the latter all the watch chains, not exceeding five gross a week, which he might be able to manufacture in six months, and C. agreed to devote his whole time and attention to the manufacture of watch chains, and not to sell or dispose of any of them so as to interfere 168 PATENT OFFICE AND PATENT LAWS. with the exclusive privilege, secured to the defen- dant, of purchasing the whole quantity which it might be practicable for C. to make ; and it was proved that the machine used by C, with the knowledge and consent of the defendant, in the manufacture, was the same as that invented by the plaintiff, and that all the watch chains thus made by C. were delivered to the defendant, according to the contract — it was held, that if the contract was real, and not colourable, and if the defendant had no other connection with C. than that which grew out of the contract, the facts proved did not amount to a breach by him of the plaintiff's patent right. [Keplinger v. De Toung, 10 "Wheat., 358. 28. Under the patent act of February 21, 1793, ch. 156, if the patentee has sold out a moiety of his patent right, a joint action lies with himself and his patentee for a violation of it. [Whitte- more v. Cutter, 1 Gallis, 429. 29. If there be a mere making, and no user proved, nominal damages are to be recovered. Where the law gives au action for a particular act, that doing the act imports of itself a damage, pbid. 30. Every violation of a right imports some damage; and if none other be proved, the law allows a nominal damage. [Eiid. 31. By the terms " actual damage," which the plaintiff" may recover under the patent law, are meant such damages as he can actually prove, and has in fact sustained, as contradistinguished from A GUIDE TO INVENTORS. 169 mere imaginary or vindictive damages, wliich. in personal torts are sometimes given. [Ibid. 32. Tlie rule of damages, where the user of a , machine is proved, should be the value of the use ■ of such a machine during the time of the illegal user. [Ibid. 33. In an action for a violation of a patent right, the plaintiff can recover for actual damages only, and not for a vindictive recompense. [Ibid. 34. Where merely the making of the machine is proved, as no actual damages have been sus- tained, the jury should give only nominal damages. [Ebid. 35. Where a party claims several distinct and independent improvements in the same machine, and procures a patent for them in the aggregate, he^i s enti tled-to- re.caver.--ag^nst any person who ' sh all use _ajiy of the imp ragfiments sa . patentedr notwithstanding there has been no violation of the other improvements. [Moody v. Fiske et al., 2 Mason, 112. 36. Where a patent is for a new combination of existing machinery or machines, and does not specify or claim any improvements or invention, except the combination, unless that combination is substantially violated, the patentee is not en- titled to any remedy, although parts of the ma- chinery are used by another ; because the patent, by its terms, stands upon the combination only. [Ibid. 37. Where a patent was taken out for a combi- 15 170 PATENT OFFICE AND PATENT LAWS. nation and an entire process, it was held that a use of a part of the process and combination was not an infringement thereof. [Howe v. Abbott, 2 Story, 190. 38. In order to entitle the plaintiff to recover for a violation of his patent right, the fact must be made out to tbe satisfaction of the jury that he was the original inventor in relation to every part of the world. Nor is it material, provided the same invention had been previously made anywhere else, that the plaintiff knew of any such prior dis- covery. [Dawson v. Fallon, 2 Wash. C. C. E.., 311. 39. Where the plaintiff claimed the combination of three things, as his invention, in a patent for an improvement in the construction of ploughs, it was held that the patent was for the entire combina- tion of the three, and not for a combination of any two of them, and that, therefore, it was no in- fringement of the patent to construct ploughs con- taining two of them. [Prouty v. Draper, 1 Story, 568. 40. The provisions of the 6th section of the act of February 21, 1793, are intended to declare the defence that shall be available to a party charged by a patentee with a violation of his right. [Delano V. Scott, Gilpin, 489. 41. The decision of the court in the two cases, namely, that where a patent is renewed under the act of 1836, an assignee under the old patent has a right to continue the use of the machine which A GUIDE TO INVENTORS. 171 he is usiug at the time of the renewal, is again af- firmed. [Wilson V. Turner, 4 Howard, 712. 42. To indemnify a patentee in damages, the jury may allow actual cost and counsel fees, if reasonable in amount, and this court, under the act of Congress, will award treble what is found by the jury, if deemed proper to protect useful in- ventors from combinations and ruin. [Allen v. Blunt, C. C. Mass., "Woodbury J., ISTovember, 1846. 43. In causes for a violation of a patent the jury are at liberty to give such reasonable damages as shall vindicate the rights of the patentee, and shall indemnify him for all expenditures necessarily ac- crued in the suit beyond what the taxable costs will repay. [Pearson v. The Eagle Screw Co., 3 Story, 402. 44. One who has obtained a patent for a com- bination, cannot recover in an action against one for using one of the known machines of which the combination is formed. [Evans v. Eaton, 1 Peters, C. C. R., 322. 45. Where a suit is brought against A. & B., for the infringement of a patent right, the plaintifi^ may recover against one, though no proof is given against the other ; for all torts are joint and several, and plaintiff may recover against one defendant, though the other be acquitted. Gray et al. v. James et al., 1 Peters, C. C. R., 394. 46. Where the patentee grants the machine, or agrees to deliver it, he cannot recover damages for ir2 PATENT OFFICE AND PATENT LAWS. the use of it against his grantee ; for the agreement implies necessarily the right to use it in any man- ner the grantee pleases, or to rent it to another. [Ibid. 47. The patentee of an invention, notwithstand- ing he had given the benefit of his invention to another, may recover for the violation of his patent, not having assigned away his whole title and in- terest in it, and no deed of assignment having been recorded in the office of the Secretary of State, [Patent Office.] Park v. Little et al., 3 Wash. C. C. R., 196. 48. If the defendant use a substantial part of the invention patented, although with some mo- difications of form or apparatus, that is a violation of the patent right. So, if the patent be of two machines, and each is a new invention, and the defendant use only one of the machines. [Wyeth V. Stone, 1 Story, 273. 49. An objection to the validity of Woodworth's patent for a planing machine, namely, that he was not the first and original inventor thereof, is not sustained by the evidence offered in this case. [Woodworth v. Wilson, 4 Howard, 712. 50. ISTor is the objection well founded, that the specifications accompanying the application for a patent are not sufficiently full and explicit, so as to enable a mechanic of ordinary skill to build a machine. [Ibid. 51. The restriction upon the assignee is only, that he shall use the machine within the specified A GUIDE TO INVENTORS. 173 territory. There is none as to the sale of the pro- duct. [Stimpson v. "Wilson, 4 Howard, 709. 52. A court will not set aside a verdict for al- leged excessive damages, unless they are so large as to be palpably unreasonable. [Allen v. Blunt, C. C. Mass., Woodbury J., JSTov. 1846. 63. Such a contract, connected with evidence from which the jury might legally infer, either that the machine to be employed in the manufacture of the patented article was owned wholly or in part by defendant, or that it was hired to defendant for the time specified : under colour of a sale of the articles to be manufactured with it, and with in- tent to invade the plaintiff's patent right, would amount to a breach of his right. [Keplinger v. Be Young, 10 "Wheat., 358. 54. The jury are to estimate the plaintiff's single damages, and the court will treble them in award- ing the judgment. [Whittemore v. Cutter, 1 Gallis, 429 ; Gray and Osgood v. James, 1 Petei's, C. C. R., 394. 55. The jury may, in a case for infringing a pa-v tent, give the plaintiff", as part of his actual damage, such expenses for counsel fees, &c., as have been necessarily incurred in vindicating the plaintiff''s right by a suit, and which are not taxable in the bill of costs. [Boston Manuf. Co. v. Fiske et al., 2 Mason, 119. 56. A patent may be for a new combination of machines to produce certain effects, and this whether the machines constituting the combina- 15* 174 PATENT OFFICE AND PATENT LAWS. tion be new or not. Bat in such case, the patent, being on the combination only, it is no infringe- ment of the patent to use any of the machines separately, if the whole combination be not used. [Barrett et al. v. Hall ct al., 1 Mason, 447. 57. The sale of the materials of a patented ma- chine by the sheriff, on an execution against the owner, is not such a sale as subjects the sheriif to an action for an infringement of the patented right, under the patent act of April 17, 1800, ch. 179. [Sawin et al. v. Guild, 1 Gallis, 485. 58. The statute declares it to be a good defence to an action for the infringement of the patent right, that the thing secui'ed by the patent was not originally discovered by the patentee, but had been in use, or had been described in some public Iwork, anterior to the supposed discovery of the patentee. [Kneass v. The Schuylkill Bank, 4 Wash. C. C. E., 106. 59. Any patent may be defeated by showing that the thing secured by the patent had been dis- covered and put into actual use prior to the dis- covery of the patentee, however limited the use or the knowledge of the prior discovery might have been. [Ibid. 60. In an action for the infringement of a pa- tent right, the law gives to the plaintiff treble the actual damages sustained by him ; and the rule is, to allow him treble the amount of the profits actually received by the defendant, in consequence A GUIDE TO INVENTORS. ^ IfS of his using the plaintiff's invention. [Lowell v. Lewis, 1 Mason, 182. 61. The making of a patented machine, to be i an offence within the purviews of the patent act, i must be the making with intent to use for profit, \ and not for the mere purpose of philosophical ex- ' periment, or to ascertain the verity and exactness of the specification. [Sawin et al. v. Guild, 1 Gal- lis, 485 ; "Whittemore v. Cutter, Ibid, 478. 62. The jury are to find the single damages, and the court is to treble them in awarding judg- ment. [Gray et al. v. James et al., 1 Peters, C. C. K., 394. 63. Where a court of equity, having heard a case on full proofs, is well satisfied of the origi- nality of an invention, the regularity of a patent, and of the facts of infringement, it will not send the case to a jury to have its verdict, prior to granting a perpetual injunction. It will grant it at once, especially if the questions in the case, though questions of fact, are of that kind that a court can decide them on the testimony of men of science, as well as, or better than, a jury ; and where a jury trial would be long, costly, or trou- blesome. [Goodyear v. Day, 2 Wallace, 283. 64. Thus, where the " description of the inven- tion or discovery" described a process, and did not describe a product, but the description of "the manner and process" showed that the purpose and merit of the process was the production of a valua- ble "fabric," it was held, in a suit for infringing 176 . PATENT OFFICE AND PATENT LAWS. the patent, by improperly using ttie product, to be no objection that the "description of the discovery or invention" described not it, but a process, the "description of the manner and process" showing that the purpose and merit of the process was the production of a "fabric." [Goodyear v. The Eail- road, 2 "Wallace, 356. 65. A jury cannot allow the plaintiff in a patent case, as part of his actual damages, any expendi- ture for counsel fees, or other charges, even though necessarily incurred to vindicate the rights given him by his patent, and though not taxable costs. [Stimpson v. The Eailroad, 3 Wallace, (in press.) IV. Proceedings and Pleadings in Actions for Violations of Patent Rights. 1. The defendant in the Circuit Court, in his plea, assigned the particular defect supposed to exist in the specification, and then proceeded to answer in the very words of the act, that it does not contain a written description of the plaintifts' invention and improvement, and manner of using it, in such full, clear, and exact terms as to dis- tinguish the same from all other things before known, so as to enable any person skilled in the art to make and use the same. The plea alleged, in the words of the act, was, that the prerequisite to issuing a patent bad not been complied with. The plaintiffs denied the facts alleged in the plea, and on this, issue was joined. At the trial, the counsel for the defendants, after the evidence was A GUIDE TO INVENTORS. 177 closed, asked the court to instruct the jury, that if they should be of opinion that the defendants had maintained and proved the facts alleged in their pleas, they must find for the defendants. The court refused this instruction, and instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specifi- cation or description arose from design, or for the purpose of deceiving the public. By the Court : The instruction was erroneous, and the judgment of the Circuit Court ought to be reversed. [Grant et al. V. Raymond, 6 Peters, 218. 2. Courts did not, perhaps, at first sight, dis- tinguish clearly between a defence, which would authorize a verdict and judgment in favour of a defendant in an action for the violation of a pa^ tent, leaving the plaintiff free to use his patent, and to bring other suits for its infiingement ; and one which, if successful, would require the court to enter a judgment, not only for the defendant in the particular case, but one which declares the pa- tent to be void. This distinction is now well settled. [Ibid. 3. An action of the case will lie for representa- tions made by the defendant, knowing them to be false, as to the validity of a patent right claimed by him, whereby the plaintiff was induced to pur- chase. [Bull V. Pratt, 1 Conn., 342. 4. If the counsel assert that, in his argument, he expressed a wish for the court to instruct the jury on some points, and it was not done, but it 178 PATENT OFFICE AND PATENT LAWS. appeared that he omitted to state verbally, after the charge had been delivered, that any point had been omitted, or that farther directions were de- sired, a new trial will not be granted. [Allen v. Blunt, C. C. Mass., Woodbury, J., November, 1846. 6. It is not the duty of the court to instruct the jury on abstract or irrelevant questions, but only on such as arise on the evidence in the case. [Ibid. 6. If incompetent evidence admitted became immaterial, a new trial will not be granted. [Ibid. 7. If, on the whole case, notwithstanding an erroneous ruling or instruction, the verdict does not seem to have been influenced by them, or to be against the justice of the case, a new trial will not be granted. [Ibid. 8. A motion for an allowance of a bill of ex- ceptions, under the authority given by the patent act, to this court, in all cases under it, where it seems "i-easonable," in order to enable the parties to carry questions contained in it to the Supreme Court, where the damages are less than $2000, ought to be granted, in the exercise of a sound discretion, as to points which arise in the con- struction of the patent law itself, where these are important in their character, and really doubtful, but as to no others. [Ibid. 9. Under the patent laws, the United States are not a party, and cannot be substituted as a party, in a litigation respecting the validity of any rights A GUIDE TO INVENTORS. 179 claimed or denied by virtue of those laws. ["Wood V. Williams, Gilpin, 517. 10. Under the patent act of February 21, 1793, ch. 156, if the patentee has sold out a moiety of his patent right, a joint action lies by himself and his patentee for a violation of it. [Whittemore v. Cutter, 1 Gallis, 429. 11. In patent causes, the rule is to grant an in- junction on filing of the bill, and before a trial at law, if the bill state a clear right, and verifies it by affidavit. [Isaacs v. Cooper, 4 "Wash. C. C. E,., 259. 12. If it state an exclusive possession of the- in- vention, the injunction is granted, though the court may entertain doubts as to the validity of the patent. [Ibid. 13. But if there be glaring defects in the patent or specification, it is refused. [Ibid. 14. "Where the patent is modern, and objections are made to the patent or specification, the court will not act till the right is established by law, which the court will order. [Ibid. 15. If the bill does not set forth a possession by the plaintifif of his invention at any particular time, it is defective. [Ibid. 16. If the answer denies that the defendant uses the plaintifi"'s invention, the injunction will be re- fused. [Ibid. 17. In the case of a rule, before the district judge, to show cause why a patent shall not be repealed, a record is to be made of the proceedings 180 PATENT OFFICE AND PATENT LAWS. antecedent to the rule to show cause vrhj process should not issue to repeal the patent, and upon which the rule is founded. \\Ex parte, "Wood, 9 Wheat., 603. 18. On an application for an injunction to re- strain the infringement of a patent right, it should he stated, in the bill or by affidavit, that the com- plainant is the inventor, and the bill must be sworn to. [Sullivan v. Eedfield et al., 1 Paine, 441. 19. It is not sufficient that this fact was sworn to when the patent was obtained. [Ibid. 20. To obtain the injunction, the case should be such as to leave little, if any, doubt in the mind of the court as to the validity of the patent, especially if it rests upon the complainant's own showing, without any opposing testimony. [Ibid. 21. The act of February 15, 1819, ch. 430, does not alter the principles on which injunctions are issued, but merely extends the jurisdiction of the Circuit Courts to parties to whom it did not before extend. [Ibid. 22. The established rules which govern courts of equity, on such applications, are, that where there has been an exclusive possession of some duration under the patent, an injunction will be granted without putting the party previously to estabhsh the validity of his patent at law; but where the patent is recent, and it is attempted to be shown that the specification is bad, or otherwise that the patent ought not to have been granted, A GDIDB TO INVBNTOES. 181 the court will not take the decision upon itself, but will send the party to establish his patent at law. [Ibid. 23. An injunction granted on an original bill, before the surrender of a patent, cannot be main- tained upon the new patent, unless a supplemental bill be filed, founded thereon. [Woodworth v. Stone, 3 Story, 749. 24. To support an action at law, for the breach of a patent, it is indispensable to prove a breach before the action is brought; but if the patent right be established or admitted, a bill in equity quia timet will lie for an injunction upon well- grounded proof of any apprehended intention of the defendant to violate it. [Ibid. 25. If the party is content with defending him- self, he may either plead specially, or plead the general issue, and give the notice, required by the sixtja section, of any special matter he means to use at the trial. [Grant et al. v. Raymond, 6 Pe- ters, 218. 26. If he shows that the patentee- has failed in any of those prerequisites, on which the authority to issue the patent is made to depend, his defence is complete. He is entitled to the verdict of the jury, and the judgment of the court. [Ibid. 27. But if, not content with defending himself, he seeks to annul the patent, he must proceed in precise conformity with the sixth section. If he depends on evidence "tending to prove that the specification filed by the plaintiiF does not contain 16 182 PATENT OFFICE AND PATENT LAWS. the whole truth, relative to his discovery, or that it contains more than is necessary to produce the desired effect," it may avail him so far as respects himself, but vdll not justify a judgment declaring the patent void, unless " such concealment or ad- dition shall fully appear to have been made for the purpose of deceiving the public; which purpose must be found by the jury, to justify a judgment of vacatur. [Ibid. 28. The defendant is permitted to proceed ac- cording to the sixth section, but is not prohibited from proceeding in the usual manner, so far as re- spects his defence ; except that special matter shall not be given in evidence on the general issue ; un- accompanied by the liOtice which the sixth section requires. [Ibid. 29. The sixth section is not understood to con- trol the third section. The evidence of fraudulent intent is required only in the particular case, and for the particular purpose stated in the sixth section. [Ibid. 30. Where a bill is filed for an injunction against the use of a patent, and the answer denies the use of it, and also the originality of the in- vention, if the denial is supported by affidavits, bringing the originality of the patent into doubt, an injunction will not issue till the parties settle the right in an action, which is pending between them at law, for a violation of the patent, unless the complainant shows that he has, for some time, been in the undisturbed use and sale of his patent, A GUIDE TO INVENTORS. 183 or has recovered damages against others for the use of it. [Hovey v. Stevens, 1 Woodbury, 290. 31. l^or can a patent be aided in respect to such an use or such recoveries, if it be one useful in re- spect to another patent for another invention vs^here such an use and such recoveries have been had, unless it is connected in law with that patent, and is a part of it. [Ibid. 32. Where a bill in chancery asks for an in- junction against the use of a patent stove, and for an account of sales, and on proof of former re- coveries of others and long possession an injunction had been granted, the court will not dissolve it merely on an answer denying the validity of the patent ; but it will, if requested, direct an issue to be tried at law on that point, or, if not requested, continue the injunction, and dissolve it at the next term, if, in the meantime, a suit at law is not brought to test the title. [Orr v. Merrill, 1 Woodbury, 376. 33. An answer is sufficient for this purpose, though it do not set out the names of the persons who used the stove patented, or knew it before the patentee did ; nor the names of the places where it was used or known. [Ibid. 34. But the answer at law should set them out, and so should the answer and notice on which, in chancery, an issue is asked to be formed and tried at law. [Ibid. 35. All proceedings in equity, authorized by the 16th section of the act of July 4, 1836, and the 184 PATENT OFriCE AXD PATENT LAWS. lOtli section of tlie act of March 3, 1839, to wMcli the Commissioner of Patents is made a party, must be commenced and prosecuted before some court of competent jurisdiction in the District of Co- lumbia, no tribunal out of said District having jurisdiction over the person of the Commissioner, as such, and the Patent Office. [Prentiss v. Ells- worth, C. C. Penn'a., EandaU, J., October, 1845. 36. The meaning of technical words of art in commerce and manufactures, used in a patent, as well as the surrounding circumstances which may materially affect their meaning, are to be inter- preted by the jury. [Washburn v. Gould, 3 Story, 122. 37. Every instrument is to be interpreted by a consideration of all its provisions, and its obvious design is not to be controlled by the precise force of single words. [Ibid. 38. Where a grant was made of a right to con- struct and use fifty machines within certain lo- calities, reserving to the grantor the right to con- struct, and to license others to construct, but not to use them therein, it was held that the grant was of an exclusive right under the statute of 1836, in regard to patents, and that suits were to be brought in the name of the assignees, even though agreed to be at the expense of the grantor. [Ibid. 39. Where a patent has been granted, and there has been an exclusive possession of some duration under a patent, an injunction will be granted without obliging the patentee previously to esta- A GUIDE TO INVENTORS. 185 blish the validity of his patent by an action at law. [Ibid. 40. But it is otherwise if the patent be recent, and the injunction be resisted on the ground that the patent ought not to have been granted, or is imperfectly stated in the specification. [Ibid. 41. It was held in the present case, that the pa- tent was, upon the true interpretation of the spe- cification, a patent for an improved machine. [Ibid. 42. It is obvious that many of the provisions of our patent act are derived from the principles and practice which have prevailed in the construction of the law of England in relation to patents. [Pen- nock et al. V. Dialogue, 2 Peters, 18. 43. "Where English statutes — such, for instance as the statute of frauds, and the statute of limita- tions, have been adopted into our own legisla- tion, the known and settled construction of those statutes, by courts of law, has beeri considered as silently incorporated into the acts, or has been re- ceived with all the weight of authority. This is not the case with the English statute of monopo- lies which contains an exception, on which the grants of patents for inventions have issued in that country. The language of that clause in the statute, is not identical with the patent law of the United States ; but the construction of it, adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known, and 16* 186 PATENT OFFICE AND PATENT LAWS. are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it. [Ibid. 44. In this circuit, the practice in patent cases has not been to require the plaintiff to give security for costs. ["Woodworth v. Sherman, 3 Story, 171. 45. If the declaration upon an assignment of a patent right omit to state that the assignment has been duly recorded in the State Department, p^a- tent Office,] the defect is cured by a verdict for the plaintiff. [Dobson v. Campbell, 1 Sumner, 319. 46. The proceedings under the 10th section of the patent act of February 21, 1793, ch. 156, are in the nature of a scire facias at common law, to repeal a patent. [Stearns v. Barrett., 1 Mason, 153. 47. Upon a judgment, rendered in the District Court on such a suit, error lies to the Circuit Court, pbid. 48. The scire facias, in such case, ought to con- tain a direct allegation or suggestion that the pa- tent was obtained surreptitiously, or upon false suggestion, and to call upon the defendant, for that cause only, to show cause why the patent should not be repealed. [Ibid. 49. In an action for the violation of a patent right, the declaration need not aver that the pre- liminary steps to obtain a patent were taken, be- cause, if it aver that the patent was granted in the form prescribed by law, the court, upon demurrei', will presume that everything was rightly done to A GUIDE TO INVBNTOES. 187 obtain it. [Executors of Fulton v. Myers, 4 Wash. C. C. E. 50. But it is fatal, on general demurrer, if the deelai-ation omit to aver that a patent did issue ; it is not sufficient to allege that it was made out in due form, under the seal and in the name of the United States, by which there was granted, &c. The law prescribes that the patent so made out shall be delivered to the petitioner, and that no person can receive it till he has taken the oath and made the disclosure required in the second section. [Ibid. 51. It is necessary to aver the attestation of the president, and it is not to be presumed from the foregoing general allegation. [Ibid. 52. The certificate of the attorney-general forms no part of the patent. [Ibid. 53. It is not necessary that the declaration should particularly designate in what the improve- ment consists : it is sufficient that the breach stated be as broad as the right set forth in the declaration, and granted in the patent. [Ibid. 54. In an action for the violation of a patent right, it is sufficient, under the plea of the general issue, for the defendant to give notice that the plaintiff' is not the inventor of the machine for which the patent is obtained, if that constitutes the defence, without stating in the defence who was the inventor, or who had previously used the machine. [Evans v. Kremer, 1 Peters, C. C. E., 215. 188 PATENT OFFICE AND PATENT LAWS. 55. The assignee of a patent riglit, in part or in wliole, cannot maintain any suit at law, or in equity, either as a sole or as a joint plaintiff therein, at least as against third persons, until his patent has been recorded in the proper department, ac- cording to the requisitions of the patent acts. [Wyeth V. Stone, 1 Story, 273. 56. An administrator of a patentee, residing in one state, may commence an action in the United States District Court of another state for the re- covery of damages for an infringement of the let- ters patent, without taking out letters of adminis- tration in another state. [Smith and Sloat v. Mercer and Pechin, C. C. Penn'a., Kane J., Oct., 1846. 57. The same right attaches to the assignee of such administrator. [Ibid. 58. Where a license to run a machine patented has been abandoned, the holder of the right may file his bill to injoin the defendant. [Brook v. StoUey, 3 M'Lean, 523. 59. The license being conditional, if set up by the defendant, he must show a performance of the conditions on his part. [Ibid. 60. In a suit in equity, for the violation of a pa- tent rightj an injunction will not be granted before a hearing upon the merits, merely upon proof that the complainant has obtained a patent. [Orr v. Littlefield, 1 Woodbury, 13. 61. But proof of undisturbed possession and use of the patent right, for reasonable length of A GUIDE TO INVENTORS. 189 time, by the complainant, is ground for granting an injunction. [Tbid. 62. It is also ground for granting an injunction, that the complainant has prosecuted other persons for violations of the same patent, and recovered judgment against them; and it makes no differ- ence that such judgment was rendered by agree- ment of paii;ies, where there was no collusion, or under a specification of this patent, which has been surrendered as defective, and a new one taken out. [Ibid. 63. An injunction will not be dissolved, as a matter of course, on the coming in of the answer, denying the equity of the bill, if the complainant has adduced auxiliary evidence of his right, as in the pi'esent case. [Ibid. 64. An absolute acquiescence by a patentee in the adverse possession and enjoyment of his rights by a stranger, would, under ordinary circum- stances, for a period much less than six years, ofler a sti'ong argument against the grant of an injunction before final decree. [Sloat et al. v. Plympton et al., C. C. Penn'a., Kane, J., October, 1846. 65. An injunction will not be issued against a respondent's using a machine, unless it is proved that he has used it himself, or employed others to use it for him, or at least has profited by the use of it. [Woodworth v. Hall, 1 Woodbury, 248. 66. Whei-e long possession of a patent has ex- isted, and frequent recoveries are made under it, 190 PATENT OFFICE AND PATENT LAWS. an injunction will be issued, tlie originality of the invention by the patentee not being denied, unless the letters appear, for some cause, illegal or void. [Ibid. 67. Injunctions cannot be granted in the courts of the United States without notice, and hence all of them here are special. If the title of the com- plainant is denied, he must show former recoveries, or long possession, in the case of patents ; and in case of waste and trespass, that there are no facts to warrant the denial, or the injunction will be re- fused till the disputed questions of title are settled at law. [Periy v. Parker, 1 Woodbury, 280. 68. The court will not injoin the sale of a similar- article under the same patent, in a particular dis- trict assigned to an individual, though manu- factured in a different district. [Boyd v. Brown, 3 M'Lean, 295. 69. An injunction once granted, will not be dis- solved on account of any doubts as to the validity of a new patent in such cases, caused by the erroi-s of such ofGlcers, if measures are pending in Con- gress to remove them by legislation. [Woodworth V. Hall, 1 Woodbury, 248. 70. In an action for the violation of a patent, where the patent and specification are so am- biguous as to leave it uncertain whether the grant is for an improvement in making a certain instru- ment or in the mode of using it, the affidavit may be referred to for the purpose of explanation. [Pettibone v. Derringer, 4 Wash. C. C. R, 215. A GUIDE TO INVENTORS. 191 71. If in such notice [that the plaintiff is not the inventor of the machine for which the patent is obtained,] the defendant specifies some persons who used the machine, he may prove the use of it by others not named in the notice. [Evans v. Kremer, 1 Peters, C. C. E., 215. 72. An action for the violation of a patent right may be sustained against a corporation, if, when acting in that character, it directs an act to be done which infringes the patent. [Kneass v. The Schuylkill Bank, 4 Wash. C. C. E., 106. 73. Semble, That no previous notice or claim of a right, to the exclusive use of an invention is necessary to enable a patentee to maintain an ac- tion for an alleged violation of his patent right. [Ames V. Howard, 1 Sumner, 482. 74. A motion having been made in arrest of judgment in this case, on the ground that no de- scription of the patent was set forth in the declara- tion, it was held that the profert of the letters patent made them, when produced, a part of the declaration, and gave the invention all the re- quisite certainty. [Pitts v. "Whitman, 2 Story, 609. 75. Patents, and specifications annexed thereto, should be construed fairly and liberally, and not subjected to any over-nice or critical refinements. [Ames V. Howard, 1 Sumner, 482. 76. There being no act of Congress conferring on the Circuit Courts of the United States a right to take cognizance, as a court of equity, of a case under the patent law, between citizens of the same 192 PATENT OFFICE AND PATENT LAWS. state, that court cannot take cognizance of sucli a cause. [Livingston et al. v. Vaningen et al., 4 Hall's Am. Law Journ., 56. 77. The decision of the Commissioner of Patents is conclusive as to the laws and facts arising under an application for a patent, unless it be impeached for fraud, or connivance between him and the pa- tentee, or unless his excess of authority be mani- fest on the face of the papers. [Allen v. Blunt, 3 Story, 740. 78. An assignee of a part of a patent right can- not maintain an action on the case for the viola- tion of the patent, [Tyler et al. v. Tuel, 6 Cranch, 324. 79. Action for an alleged violation of a patent for an improvement in guns and fire arms. , [See Shaw V. Cooper, 7 Peters, 202. 80. The 14th and 15th sections of the act of 1836, ch. 357, prescribe the rules which must go- vern on the trial of actions for the violations of patent rights, and these sections are operative so far as they are applicable, notwithstanding the pa- tent may have been granted before the passage of the act of 1836. [M'Clurg et al. v. Kingsland et al., 1 Howard, 202. 81. An assignee of the exclusive right to use ten machines within the city of Louisville, for ten miles round, may join his assignor with him in a suit for a violation of the patent right, under the circumstances of this case. [Woodworth v. "Wil- son, 4 Howard, 712. A GTJIDB TO INVENTORS. 103 82. A plaintiff, therefore, wlio claims under an assignment from the administrator, can maintain a suit against a person who claims under the covenant. [Wilson v. Rosseau, 4 Howard, 646. 83. There is no act that requires the jurat to he dated at all ; and the supplementary provision of the 6th section of the act of 1837, that " the ap- plicant shall he held to furnish duplicate draw- ings," though directory in its terms, is not a con- dition ; and it has ohvious reference, in point of time, to the issuing of the patent, and not to the filing of the petition for it. [French et al. v. Eogers et al., Grier and Kane, Jj., C. C. Penn'a., IN'ovember, 1851. 84. If Mr. Morse's patent is invalid on this ground, more than half the modern patents for mechanical inventions must probably fall with it. [Ibid. 85. The grant of a patent at the Patent Office is not of itself, or in virtue of section 7th of the act of July 4, 1836, a bar to an interlocutory in- junction in favour of a person claiming to be a prior patentee of the same thing, such person not having received notice at the Patent Office to ap- pear and be heard, and the court, on a hearing before it, being well satisfied that the last patent is an interference with the one granted before. [Wilson V. Barnum, 8 Wallace, (in press.) 86. The district judge, sitting for the Circuit Court, and being himself well satisfied of an in- fringement — although, of numerous experts ex- amined, a majority thought differently from him 17 194 PATENT OFFICE AND PATENT LAWS. on that point— may grant an interlocutory injunc- tion to restrain the use of a patented machine as an infringement of a prior one, the machine last patented not having been granted, after notice from the Patent Office to the complainant, to ap- pear and he heard. [Ibid. 87. "Where the district judge, sitting for the Circuit Court, and being satisfied of an infringe- ment, had granted an interlocutory injunction till trial, to restrain the use of a machine, and the president judge, after hearing the evidence before the jury on a trial, differed from his brother, who, after hearing the same evidence, still retained his former opinion, and the jury could find no verdict; the full court, in its subsequent action on the in- junction, need not consider itself either as bound ©r as unable to dissolve it ; but the action upon it may be modified, the modification being largely regulated by what probably would have been the original action of a full court, pbid. V. Evidence in Actions for Violations of Patent Eights. 1. Though the competency of an official letter from the Commissioner of the Patent Office, as evidence, may be questionable, yet if subsequent evidence in the progress of the case rendered it unnecessary to prove the fact for which it was offered, a new trial will not be granted on account of the admission of such letter. [Allen v. Blunt, C. C. Mass., Woodbury, J., ISTov., 1846. 2. ISTor where parol evidence of the contents of A GUIDE TO INVENTORS. 195 a letter was rejected, because no satisfactory proof had been furnished of the loss of the letter, or that it had come to the possession of the opposite party. [Ibid. 3. In a question of fact, addressed to the court, to lay the foundation of secondary evidence, of a written paper, a letter will not be presumed to have been received, from the fact that it was put into the post-office, if no answer was returned, and the party to whom it was addressed makes affidavit that it never came to hand. [Ibid. 4. A former verdict between the parties, on an issue out of chancery, and on a different matter, cannot be admitted as evidence. [Ibid. 5. A deposition should not be taken during the session of the court at which the case is to be tried, except by its order of court, or the consent of parties, or taken merely de bene esse in case of death or absence abroad. [Ibid. 6. Where counsel have acted publicly in former trials of a like cause between the parties, and are still employed, though not one of the counsel whose names appear on the record, if living within one hundred miles of the place where the depo- sition was taken, and the party and the other counsel do not, he ought to be notified. [Ibid. 7. A renewal of a patent by a commissioner, with an amended specification, is to be presumed to have been made legally ; but the presumption may be rebutted by evidence submitted to a jury, if requested. [Ibid. 196 PATENT OFFICE AND PATENT LAWS. 8. Where the defendant, in a prima facie case against Hm, undertakes to show that an invention has been known and used, &c., he must turn the scale of evidence in his favour. [Ibid. 9. In an action for fraud, in the sale of a patent, on the ground that A. had a prior patent for the same -invention, the defendant offered in evidence a written agreement with A., for a valuable con- sideration, that neither A. nor his heirs would thereafter sue or disturb the defendant for a breach of A.'s patented right, but that the defendant, without molestation, might freely act under his pa- tent right, as if A.'s had never existed — it was held that this agreement gave to the defendant no right to transfer, and could not be admitted in evidence. [Bull V. Pratt, 1 Conn., 342, 10. In an action on the case for fraud, in the sale of a patent right, the plaintiff proved that a certain patent had been granted previously to a third person, and then offered parol evidence to show that the defendant's patent was for the same invention : held that the evidence was admissible. [Ibid. 11. Under the 6th section of the patent law of Tebruary 21, 1793, ch. 156, the defendant pleaded the general issue, and gave notice that he would prove at the trial that the machine, for the use of which, without license, the suit was brought, had been used previous to the alleged invention of the plaintiff, at several places which were specified in the notice, or some of them, " and also at sundry A GUIDE TO INVENTORS. 19? other places in Pennsylvania, Maryland, and else- where in the United States." The defendant, having given evidence as to some of the places specified, held, that evidence as to other places, not specified, was admissible, but that the court pos- sess the power, which will be exercised, to prevent the plaintiflF from being injured by surprise. [Evans V. Eaton, 3 Wheat., 454; 1 Peters, 322, S. C; 3 Wash. C. C. E., 408. 12. The testimony, on the part of the plaintifij that the persons, of whose prior use of the machine the defendant had given evidence, had paid the plaintiff for licenses to use the machine since his patent, ought not to be absolutely rejected, though entitled to very little weight. [Ibid. 13. On the 26th of September, 1835, a second patent was granted, the original patent, granted in 1831, having been surrendered and cancelled on account of a defective specification — the second patent being for fourteen years from the date of the original patent. The second patent was in the precise form of the original, except the recital of the fact, that the former patent was cancelled " on account of a defective specification," and the state- ment of the time the second patent was to begin to run. It was objected, that the second patent should not be admitted in evidence on the trial of the case, because it did not contain any recitals that the prerequisites of the act of Congress of 1836, authorizing the renewal of patents, had been complied with. It was held that this objection 17* 198 PATENT OFFICE AND PATENT LAWS. cannot in point of law be maintained. The patent was issued under the great seal of the United States, and is signed by the President and counter- signed by the Secretary of State. It is a pre- sumption of law, that all public officers, and espe- cially such high functionaries, perform their proper official duties, until the contrary is proved. [The Philad. and Trenton E.. E. Co. v. Stimpson, 14 Peters, 448. 14. Where an act is to be done, or a patent granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act, in granting the patent, is prima facie evidence that the proofs have been regularly made, and were satisfactory. ISTo other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, where the law has made the officer the proper judge of their sufficiency and competency. [Ibid. 15. Patents for lands, equally with the patents for inventions, have in courts of justice been deemed prima facie evidence that they have. been regularly granted whenever they have been pro- duced under the great seal of the government, without any recitals or proofs that the prerequi- sites of the acts under which they have been issued have been duly observed. [Ibid. 16. In cases of patents, the United States have gone one step farther; and as the patentee ig re- quired to make oath that he is the true inventor before he can obtain a patent, the patent has been A GUIDE TO INVENTOKS. 199 deemed a prima facie evidence that he has made the invention, pbid. 17. To entitle a party to examine a witness in the patent cause, the pm-pose of whose testimony is to disprove the right of the patentee to the in- vention, by showing its use by others prior to the patent, the provisions of the patent act of 1836, relative to notice, must be strictly complied with. [Ibid. 18. The conversations and declarations of a pa- tentee, merely af&rming that at some former period he had invented a machine, may be well objected to. But his conversations and declara- tions, stating that he had made an invention, and describing its details, and explaining its operations, are properly deemed an assertion of his right at that time as an inventor, to the extent of the facts and details which he there makes known, although not of their existence at an anterior time. [Ibid. 19. Such declarations, coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestoe ; and they are legitimate evidence that the invention was then known and claimed by him ; and thus its origin may be fixed at least as early as at that period. [Ibid. 20. An exemplification of a patent, afterward surrendered and cancelled, may be given in evi- dence to show that an improvement subsequently patented is not original. [Delano v. Scott, Gilpin, 489. 200 PATENT OFFICE AND PATENT LAWS. 21. It is no objection to the competency of a witness, in a patent cause, that he is sued in another action for an infringement of the same pa- tent. [Evans v. Hettick, 7 Wheat., 453. 22. The sixth section of the patent act of Feb- ruary 21, 1793, ch. 156, which requires a notice of the special matter to be given in evidence by the defendant under the general issue, does not include all the matters of defence of which the defendant may avail himself; and where the question asked was, whether the machine used by the defendant was like the model exhibited in court of the plain- tiff's patented machine, it was held that no notice was necessary to authorize the inquiry. [Ibid. 23. The patent act contemplates two classes of- persons as peculiarly appropriate witnesses in pa- tent cases, namely, (1) Practical mechanics, to de- termine the sufficiency of the specification, as to the mode of constructing, compounding, and using the patent ; (2) Scientific and theoretic mechanics, to determine whether the patented thing is sub- stantially new in its structure and mode of opera- tion, or a mere change of equivalents : and the second class is by far the higher and the most im- portant of the two. [Allen v. Blunt, 3 Story, 740. 24. In an action for the violation of a patent, the defendant, under the general issue, without notice of the special matter, may give in evidence the act of Congress respecting patents, as well as some other matters than those enumerated in the sixth section — such as, alienage of plaintiff, and A GUIDE TO INVENTORS. 201 license by him to use the invention. But he can- not give in evidence that the invention is not new; nor can that circumstance, however apparent, be judicially noticed by the jury. [Eneass v. The Schuylkill Bank, 4 "Wash. C. C. R., 9, 106. 25. Under the general issue, defendant cannot give evidence of any of the grounds of defence enumerated in the sixth section, but he may make objections to the validity of the patent of a dif- ferent kind — such as, the want of a specification, or written description, as required by the third section, or a specification, ambiguous and unin- telligible, which is the same as no specification. [Ibid. 26. It is immaterial whether an assignment of a patent, offered in evidence, was recorded before or after the suit was brought. [Pitts v. Whitman, 2 Story, 609. 27. In this proceeding, the defendant's posses- sion of the patent is so isjr prima facie evidence of his right, as that the onus prohandi is cast on the plaintiff, who is bound to prove that the patent was obtained surreptitiously, or upon false sugges- tion. [Stearns v. Barrett, 1 Mason, 153. 28. If a patent has been obtained by the plain- tiff, upon the defendant's refusal to submit to an arbitration, according to the ninth section of the act of February 21, 1793, ch. 156, and the de- fendant subsequently obtain a patent for the same invention, this is not conclusive proof that the 202 PATENT OFFICE AND PATENT LAWS. latter was obtained surreptitiously, or upon false suggestions. [Ibid. 29. Tbe sixth section of tbe patent act does not enumerate all the defences of which the defendant may legally avail himself; he may give in evidence that he never did the act attributed to him ; that the patentee is an alien, not entitled under the act ; or that he has a license or authority from the patentee. [Whittemore v. Cutter, 1 Gallis, 476. 30. Where a bill iu equity was brought for an injunction against the defendants, to restrain them from using and selling a planing machine, con- structed according to the specification in the plain- tiff's patent, it was held that, after the lapse of time which had occurred since the patent was granted, taken together with other circumstances of the case, the affidavit of a single witness was not sufficient to outweigh the oath of the patentee, and the general presumption ariging from the grant of the letters patent. [Woodworth v. Sher- man, 3 Story, 171. 31. In an action for an infringement of a patent right, evidence that the invention of the defendant is better than that of the plaintiff, is improper, ex- cept to- show a substantial difference between the two inventions. [Alden v. Dewey, 1 Story, 336. 32. Where the defendant offered evidence to show that the invention was not original with the plaintiff, but that the improvement for which he had taken out letters patent had been suggested to him, although the precise mode of carrying it A GUIDE TO INVENTORS. 203 into operation had not . been suggested, the court instructed the jury that the true question was, whether the improvement was substantially com- municated to the plaintiff, so that, without more inventive power, he could, or could not, have ap- plied it. pbid. S3. In considering the question of the origi- nality of an invention, the oath of the inventor, made prior to the issue of the letters patent, that he was the true and first inventor of the improve- ment, may be opposed to the oath of a witness in the case, whose testimony is offered to show that the invention was not original. [Ibid. 34. It is a presumption of law that, when a pa- tent has been obtained, and specifications and drawings are recorded in the Patent Office, every person who subsequently takes out a patent for a similar machine has a knowledge of the preceding patent. [Odiorne v. Winkley, 2 Galhs, 51. 35. The first inventor who has put the invention in practice, and only he, is entitled to a patent. [Kneass v. The Schuylkill Bank, 4 "Wash. C. 0. K, 9, 106. 36. Every subsequent patentee to him who first puts his invention in practice, although an original inventor, may be defeated of his patent right upon proof of such prior invention being put into use. [Ibid. 37. Objections that a patented invention is old ; or that the specification in a patent does not clearly describe the mode of making the machine ; 204 PATENT OFFICE AND PATENT LAWS. or that the original and the renewed patents are not for the same invention ; or that either was ob- tained with a fi'audulent intent, all involve matters of fact, and are for the jury, upon the evidence ad- duced, to decide. [Carver v. Braintree Manuf. Co., 2 Story, 432. 38. There is no limitation to the period in which the defendant, under the general issue, may give in evidence that the patentee was not the original inventor. [Evans v. Eaton, 1 Peters, C. C. E., 322. 39. Where the evidence is offered to prove that the "acting commissioner," who signs a patent, was not appointed by the President, it is question- able whether it be competent to admit it in con- troversies where he is not a party. [Woodworth V. Hall, 1 Woodbury, 389. 40. Under the patent law of 1836, the chief clerk is held to be the " acting commissioner," as well in the necessary absence of the head of the office, as in case of a vacancy de jure. [Esid. 41. Under a notice that the defendant will prove the prior use of the machine in the United States, he will not be permitted to give evidence of a prior use in England. [Dixon v. Moyer, 4 Wash. C. C. E., 68. 42. A signature to the patent, and a certificate of copies, by a person calling himself " acting com- missioner," is sufficient on its face in controversies between the patentee and third persons, as the A GUIDE TO INVENTORS. 205 law recognizes an acting commissioner to be law- ful. [Woodworth v. Hall, 1 Woodbury, 248. 43. Where Congress granted an extension of the term to an administrator, it was held to be legal, and that the letters of administration need not be produced after such a grant. [Ibid. 44. Where witnesses difier as to the fact of an inft'ingement, an issue should be directed, or an action at law be commenced. [Brooks & Morris V. Jenkins et al., 3 M'Lean, 250. 45. It is doubtful whether a mere change in the mode of fastening knives on a cylinder^ to be ground, or to fasten one, instead of several, is a change in structure from an old machine, suf- j&cient to justify a patent for it. [Hovery v. Ste- vens, 1 Woodbury, 290. ^ 46. If the respondent constructed and used his machine before the complainant took out a patent for his, it is not a justification if he had seen and copied an improvement from the complainant's. [Ibid. 47. Declarations of a party, made before dispute arose, in connection with acts, may be competent evidence for him, as tending to show what inten- tions then existed. [Ibid. VI. Surrender and Re-issue of letters Patent. 1. One who has patented his invention cannot take out a new patent for the same invention, until the first is surrendered, repealed, or declared void. [Morris v. Huntingdon, 1 Paine, 348. 18 206 PATENT OFFICE AND PATENT LAWS. 2. The obstacle of an invalid patent may be re- moved by having it declared void, after a verdict against it, or by having a vacatur entered ex parte in the Department of State, on a surrender of the patent. But the provisions of the sixth section of the act do not enable a patentee to declare his own patent void ; and a verdict in a suit on a second patent, in favour of such patent, does not avoid the first patent. [Ibid. 3. It seems, that on surrendering a patent, and taking out a new one, the latter should be only for the unexpired part of the fourteen years since ob- taining the first patent. [Ibid. 4. A patent, surrendered and renewed, operates as from the commencement of the original patent, except as to causes of action arising before the renewal. [Woodworth v. Hall, 1 Woodbury, 248. 5. If a mistake occurs in a copy of a patent, it can be corrected without causing any inj ury ; but if it exists in the original patent, it cannot be corrected so as to avail without the assent or re- signature of the Secretary of State, [Commissioner of Patents.] [Ibid. 6. But the Commissioner, if correcting it, need not re-sign or re-seal the letters, he being the same officer here who did it before. [Ibid. 7. If the mistake corrected be a material one, the letters cannot operate, except on cases arising after it is made. But if a mere clerical one, quaere ? [Ibid. 8. Where a renewal of patents surrendered is A GUIDE TO INVENTORS. 207 void, perhaps the surrender itself becomes also void, and the original patents remain in force. [Ibid. 9. The sanction of the Secretary of State [Com- missioner of Patents] to a correction of a clerical mistake in letters patent, may be given in writing afterward, and he need not resign the letters themselves. [Ibid. 10. If the correction be of only a clerical mistake, it operates back to the original date of them, un- less, perhaps, as to third persons, who have ac- quired intervening rights to be affected by the al- teration. [Ibid. 11. If a new patent, issued on a surrender of old ones, be void for any cause connected with the acts of public officers, it is questionable whether the original patents must not be considered in force till their terms expire. [Ibid. 12. It was held in this case, that a surrender of the original letters patent rendered void all assign- ments under that patent, so far as regarded those who assented to such surrender ; that the new pa- tent, being issued to the administrator, vested in him the legal title, and therefore it was necessary that the plaintiff should have a new assignment before he could maintain an action at law for an invasion of the patent. [G-ibson v. Richards, C. C. R., K T., Oct., 1845. 13. Where a defective patent had been surren- dered, and a new one taken out, and the patentee brought an action for a violation of his patent 20S PATENT OFFICE AND PATENT LAWS. right, laying the infiingement at a date subsequent to that of the renewed patent, proof of the use of the thing patented during the interval between the original and renewed patents, will not defeat the action. [Stimpson v. The Westchester E.. E. Co.^ 4 Howard, 380. 14. The seventh section of the act of March 3, 1839, has exclusive reference to an original appli- cation for a patent, and not to a renewal of it. [Ibid. 15. Whether a renewed patent, after a surrender of a defective one, is substantially for a different invention, is a question for the jury, and not for the court. [Ibid. 16. As the 13th section of the act of 1836, pro- vides for the renewal of a patent, where it shall be " inoperative or invalid by reason of a defective or insufficient description or specification," "if the error shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or de- ceptive intention," the fact of the granting of the renewed patent closes all inquiry into the existence of inadvertence, accident, or mistake, and leaves open only the question of fraud for the jury. [Ibid. 17. The plaintiff obtained a patent in 1843, for a machine, specifying his invention to be for the manner in which he had arranged and combined certain parts, and not specifying that he had in- vented any of the parts. In 1849 he surrendered his patent, and took out a new one, which de- A GUIDE TO INVENTORS. 209 scribed essentially the same machine as the former one, but claimed, as new, a particular part. The court held, that the new invention having been in public use six years before he claimed it as his own, the period intervening between the first pa- tent and the new patent which claimed in par- ticular the part alluded to, it had become public ; and that, having become public, he could not claim it under his patent of 1849. [Batten v. Tag- gert, 2 Wallace, 101, 102. 18. A patentee can legally take out the re-issued patent for more than is described in the surrendered one, if it does not exceed the actual discovery when the patent was taken out. [Benjamin et al. v.'Lowlen et al., C. C. N. T., l^elson and Betts, Jj., April, 1846. 19. The alien claim in the 15th section of the act of 1836, applies only to alien patentees, and not to American assignees. [Ibid. 20. "Where a defect in the specification, on which a patent has issued, arose from inadvertence or mistake, and vrithout any fraud or misconduct on the part of the patentee, the Secretary of State [Commissioner of Patents] has authority to accept the surrender of the patent, and cancel the record thereof; whereupon, he may issue a new patent, on an amended specification, for the unexpired part of the fourteen years granted under the first patent. [Grant et al. v. Raymond, 6 Peters, 218. 21. The great object and intention of the act is to secure to the public the advantages to be derived 18* 210 PATENT OFFICE AND PATENT LAWS. from the discoveries of individuals ; and tlie means it employs are the compensation made to those in- dividuals for the time and labour devoted to those discoveries, by the exclusive right to make up and sell the things discovered for a limited time. Pbid. 22. That vsrhich gives complete eifect to this object and intention, by employing the same means, for the correction of inadvertent error, vs^hich are directed in the first instance, cannot be a departure from the spirit and character of the act. [Ibid. 23. Qucere, therefore : What would be the effect of a second patent, issued after an innocent mistake in the specification, on those who, skilled in the art for which it was granted, perceiving the vari- ance between the specification and the machine, had constructed, sold, and used the machine? This question is not before the court, and is not involved in the opinion given in the case. The defence, when true in fact, may be sufficient in law, notwithstanding the validity of the new pa- tent, pbid. 24. Under the act of 1836, a corrected patent bas relation back to the emanation of the defective patent. [Stanley v. "Whipple, 2 M'Lean, 35. 25. In such a case, a contract to sell the right is made good by the second patent. [Ibid. 26. The letters patent were obtained in 1822, and in 1829, the patentee having surrendered the same for an alleged defect in the specification, ob- A GDIDB TO INVENTORS. 211 tained another patent. This Becond 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. [Shaw v. Cooper, Y Peters, 202. 27. The holder of a defective patent may sur- render it to the Secretary of State, [Commissioner of Patents,] and obtain a new one, which shall have relation to the emanation of the first. [Ibid. 28. The case of Grant and others against Ray- mond, 6 Peters, 220, cited and affirmed. [Ibid. 29. 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. [Ibid. 30. The patent act of 1836, ch. 357, sect. 13, and the act of 1837, ch. 45, sect. 8, authorizing the re- issue of a patent, because of a defective or redun- dant specification or description, without fraud, or for the purpose of adding thereto an improvement, does not require the patentee to claim, in his re- newed patent, all things which were claimed in his original patent, but gives him the privilege of retaining whatever he deems proper. [Carver v. Braintree Manuf. Co., 2 Story, 432. 31. A patentee cannot, by a surrender of his pa- tent, affect the rights of third persons, to whom he has previously assigned his interest in the whole or a part of the patent, unless the assignees con- 212 PATENT OFFICE AND PATENT LAWS. sent to the surrender. [Woodwortli v. Stone, 3 Storj', 749. 32. The decision of the Commissioner of Pa- tents, in respect to accepting a surrender of an old patent, and granting a new one, is not re-esamina- ble elsewhere, unless it appear on the face of the patent that he has exceeded his authority. [Ibid. 33. Where more is claimed than is invented, a disclaimer must be made in a reasonable time. [Boyd V. M'Alpen, 3 M'Lean, 427. 34. The Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification, and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted, and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term. [Wilson V. Eosseau, 4 Howard, 646. 35. If it be true that the patent is granted to the inventor in consideration of some benefit to be derived by the public from his disclosures, and that the re-issue is in consideration of some more full or more accurate disclosure than that which he had made in his original specification, or some renunciation on his part of an apparently secured right, it is for the public interest that the sur- render and re-issue should be allowed to follow each other just as -often as the patentee is content to be more specific or more modest in his claims. A GUIDE TO INVENTORS. 213 pj'reneli et al. v. Rogers et al., C. C. Penn'a., Grier and Kane, Jj., November, 1851. . 36. It is hardly to be supposed that the merely clerical error of an engrossing subordinate, or the accidental inadvertence of the Commissioner him- self, is not capable of being rectified or supplied now, just as it was before the passage of the act of 1836, sect. 13. And yet the construction which regards this section as superseding the implied power of the Commissioner, might lead to this, since the act makes no provision for correcting such mistakes on the part of the patent officers. [Ibid. 37. It must be conceded, that if the Commis- sioner's power to re-issue is so restricted by the act as to be exhausted by a single exercise, his power to accept the surrender must be equally re- stricted and equally transitory. And the argu- ment then resolves itself only into another form of the question, whether the patent was, for any pui'- pose, a valid one as it stood after the first re-issue ; because, if the second re-issue was invalid, for want of authority to make it, the second surrender was ineffective, for want of authority to accept it ; and so the patent stands as if it had not been sur- rendered the second time. [Ibid. 38. The surrender and the re-issue, no matter how often they recur, are reciprocal, each in con- sideration of the other, and forming together but a single act between the parties. It would be un- conscientious to retain the consideration, while 214 PATENT OFFICE AND PATENT LAWS. denj'ing the validity of the grant. [Ibid ; "Wood- worth V. Hall, 1 Wood 0. & AI., 400. 89. It is not the meaning of the law, that the patentee who applies for a re-issue must, at his peril, describe and claim in his new specification, either in words or idea, just what was described and claimed in his old one. [French et al. v. Rogers et al., C. C. Pa., Grier and Kane, Jj., ITov., 1851. 40. His new specification must be of the same invention, and his claim cannot embrace a dif- ferent subject-matter from that which he sought to patent originally. [Ibid. 41. But "unless we narrow down the correction, which the statute contemplates, till it becomes a mere disclaimer, it is not possible in any case to frame a corrected specification which shall not be broader than the one originally filed. [Ibid. 42. To supply a defect, to repair an insufficiency, is to add, either directly, or by modifying, or strildng out a limitation : in either form, the effect is to amplify the proposition : in the case of a spe- cification under the patent laws, it is to amplify the description and enlarge the claim. [Ibid. 43. The court will hold the grant of the amended patent to be conclusive as to the existence of all the facts which by law are necessary to entitle the Commissioner to issue it — at least, until it is ap- parent, on the face of the instrument itself, without any auxiliary evidence, that the Commissioner was guilty of an excess of authority, or that the patent A GUIDE TO INVENTORS. 215 was procured by a fraud between him and the patentee. [Ibid. VII. Extension of letters Patent. 1. The 18th section of the patent act of 1836, authorizes the extension of a patent on the ap- plication of the executor or administrator of a de- ceased patentee. [Wilson v. Eosseau, 4 Howard, 646. 2. Such an extension does not inure to the benefit of assignees under the original patent, but to the benefit of the administrator (when granted to an administrator) in his capacity as such. [Ibid. 3. But those assignees who were in the use of the machine, as patented, at the time of the re- newal have still. a right to use it. [Ibid. 4. The extension could be applied for and ob- tained by the administrator, although the original patentee had, in his lifetime, disposed of all his interest in the then existing patent. Such sale did not carry anything beyond the term of the original patent. [Ibid. 5. A covenant by the patentee, made prior to the law authorizing extensions, that the covenantee should have the benefit of any improvement in the machinery, or alteration or renewal of the patent, did not include the extension, by an administrator, under the act of 1836. It must be construed to include only renewals obtained upon the surrender of a patent, on account of a defective specification. [Ibid. 216 PATENT OFFICE AND PATENT LAWS. 6. Parties to contracts look to established and general laws, and not to the special acts of Con- gress. [Ibid. 7. The decision of the Board of Commissioners,* to whom the question of renewal is referred by the act of 1836, is not conclusive upon the question of their jurisdiction to act in a given case. [Ibid. 8. The provisions of the 18th section of the act of July 4, 1836, relating to extensions, applies as well to patents granted before the passage of -that act, as to those which have been granted since. [Wilson V. Turner, C. C. Md., ISTov., 1844. 9. The benefits of an extension inure to the as- signees of the patentee, as well as to the patentee himself. [Ibid. 10. After the extension of a patent, under the 18th section of the act of July 4, 1836, the original patent becomes virtually a patent for the term of twenty-one years ; and then, on surrender and re- issue, with an amended specification, the residue of the period unexpired, of the original patent, is the residue of this term. [Gibson v. Harris, C. C. K J., Ifelson, J., ]srov., 1846. 11. The patent for twenty-one years is to be re- garded as the " original patent," within the mean- ing of the 13th section of the act of July 4, 1836. [Ibid. 12. If a patent, extended by the Commissioner, ' * Whose powers haye been transferred to' the Commissioner of Patents, act.of 1848, sect. 1. A GUIDE TO INVENTORS. 217 under the 18tli section of the patent act, be farther extended hy Congress, for seven years, the ex- tended patent becomes a patent for twenty-eight years, instead of the twenty-one years, and may be surrendered and re-issued with an amended speci fication. [Ibid. 13. A legislative grant of an exclusive privilege in an invention, for a definite period, does not im- ply an irrevocable contract with the people, that at the expiration of the period the invention shall become their property. The legislature may re- vive the grant ; but if they refuse to do so, at the end of the period the invention may be used by any one. [Evans v. Eaton, 1 Peters, C. C. E., 322. 14. The patent act of 1836 authorizes the grant- ing of an extended term of a patent to an admin- istrator, as well as to the patentee. [Woodworth V. Sherman, 3 Story, 171. 15. The assignee or grantee, under the original patent, does not acquire any right under the ex- tended patent, unless such right be expressly con- veyed to him by the patentee. [Ibid. 16. The extension of a patent may be granted to an administrator.. [Washburn v. Gould, 3 Story, 122. 17. If a patentee be dead, his administrator may renew the patent. [Brooks & Morris v. Jenkins et al., 3 M'Lean, 250. 18. The board [Commissioner] on whose judg- ment a patent is renewed, is not conclusive as to the right. [Ibid. 19 218 PATENT OFFICE AND . ATENT LAWS. 19. The decision of the court, in the case of "Wilson against Rosseau et al., namely, that where a patent is renewed under the act of 1836, an as- signee under the old patent has a right to con- tinue the use of the patented machine, but not to vend others, is affirmed. [Stimpson v, "Wilson, 4 Howard, 709. VIII. Eepeal of Letters Patent. 1. Under the 10th section of the act of February 21, 1793, ch. 166, upon granting a rule by the judge of the District Court, upon the patentee, to show cause why process should not issue to repeal the patent, the patent is not repealed de facto by making the rule absolute ; but the process to be awarded is in the nature of a scire facias at com- mon law to the patentee, to show cause why the patent should not be repealed with costs of suit ; and upon the return of such process, duly served, he proceeds to try the cause upon the pleadings filed by the parties and the issue joined. If the issue be an issue in fact, the trial is to be by a jury; if of law, then by the court. {Ex parte Wood, 9 Wheat, 606. 2. In such a case, a record is to be made of the proceedings antecedent to the rule to show cause why process should not issue to repeal the patent, and upon which the rule is founded. [Ibid. 3. I do not see the necessity of leaving the pub- lic in uncertainty as to the extent or validity of a patentee's rights, until some one has been daring A GtJIDB TO INVENTORS. 219 enough to violate them, and they have been vin- dicated after the infraction. ISTot only would I be disposed to allow every one to contest the validity of a patent right, in advance of a law-suit, to re- cover damages for infi'inging it, but I would ad- mit no controversy as to the validity of a patent, in a suit founded on its infringement. [_Ojpinion, Kane, J., Oct., 1849. 4. I would hold letters patent under the great seal of the United States to be conclusive evidence of their own validity, so long as they remain un- revoked by a judicial decision. But I would permit the man, who is charged with violating them, as I would permit every other man, to in- stitute proceedings for revoking them at any time. [Ibid. 5. The sole object of such an ahstration is to ascertain who is, prima facie, entitled to the pa- tent ; but when once obtained, the patent is liable to be repealed or destroyed by precisely the same process as if it had been issued without objection. [Stearns v. Barrett, 1 Mason, 153. 6. A judgment against a patentee, on a scire facias, issued to obtain a repeal of a patent, va- cates the same ; but a judgment in his favour will not prevent his right being contested in a suit he may subsequently institute for its violation. [De- lano V. Scott, Gilpin, 489. 220 PATENT OFFICE AND PATENT LAWS. IZ. Abandonment and Dedication to Public use. 1. It is not, and indeed it cannot, be denied, than an inventor may abandon his invention, and surrender or dedicate it to the public. This in- choate right, thus gone, cannot afterward be re- sumed at his pleasure ; for when once gifts are made to the public in this way, they become ab- solute. The question which generally arises on trials, is a question of fact, rather than of law — whether the acts or acquiescence of the party furnish, in the given case, satisfactory proof of an abandonment or dedication of the invention to the public. [Pennock et al. v. Dialogue, 2 Pe- ters, 16. 2. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention ; if he should, for a long period of years, retain the monopoly, and make and sell his invention publicly,- and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure ; and then, and then only, when the danger of competition should force him to procure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their dis- coveries. [Ibid, 19. 3. If an invention is used by the public, with A GUIDE TO INVENTORS. 221 the consent of the inventor, at the time of his ap- plication for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is not a use within the meaning of the statute, how can the court extract the use from its operation, and sup- port a patent, when the suggestions of the patentee were not true, and the conditions, on which alone the grant was authorized, do not exist. [Ibid, 21. 4. The true construction of the patent law is, that the first inventor cannot acquire a good title to a patent, if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. This voluntary act or acquiescence in the public sale or use, is an abandonment of his right, or, rather, creates a dis- ability to comply with the terms and conditions of the law, on which alone the Secretary of State [Commissioner of Patents] is authorized to grant him a patent. [Ibid, 23. 5. 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, be- fore he makes application for a patent. [Earle v. Page, 6 N". Hamp., 477. 6. The public use or sale of an invention, in order to deprive the inventor of his right to a pa- tent, must be a public use or sale by others, with his knowledge and consent, and before his applica- tion therefor. A sale or use of it, with such knowledge or consent, in the intermediate time 19* 222 PATENT OFFICE AND PATENT LAWS. between the application for a patent and a grant thereof, has no such effect. [Ryan v. Goodwin, 3 Sumner, 514. 7. ISTor will the patent he protected, if the pa- tentee was the inventor of all the material improve- ments in the old machine, if he suffered them to be used fully and freely by the public at large, combined with all the usual machinery; for in such case he must be deemed to have made a gift of them to the public. [Whittemore v. Cutter, 1 Gallis, 475. 8. In a bill in equity for a perpetual injunction of the defendants, on account of an asserted viola- tion of a patent right for an invention, it is good defence that prior to the granting of the patent, the inventor had allowed the invention to go into public use without objection. But it should be clearly established by proof, that such public use was with the knoM'ledge and consent of the in- ventor. The mere use by the inventor of his in- vention, in trying experiments, or by his neighbours with his consent, as an act of kindness for tem- porary and occasional purposes only, will not de- stroy his right to a patent, therefor. [Wyeth v. Stone, 1 Story, 278. 9. "Wliat use by the public, before the application is made for a patent, shall make void the right of a patentee ? [Shaw v. Cooper, 7 Peters, 202. 10. From an examination of the various pro- visions of the acts of Congress, relative to patents for useful inventions, it clearly appears that it was A GUIDE TO INVENTORS. 223 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 ex- isted 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 sanae manner, by proving a foreign use or knowledge of his in- vention. 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. [Ibid. 11. 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 de- scribe it, as by law he is required to do preparatory to the emanation of a patent. [Ibid. 12. 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 circum- stances, no presumption can arise in favour of an abandonment of the right to the public by the in- ventor, though an acquiescence on his part will lay the foundation for such a presumption. It is un- doubtedly just that every discoverer should realize the benefits resulting from his discovery for the 224 PATENT OFFICE AND PATENT LAWS. period contemplated by law. But those can only be reserved by a substantial compliance with every legal requisite. The exclusive right does not rest alone on Ms discovery, but also upon the legal sanctions which have been given to it, and the forms of law with which it has been clothed. [Ibid. 13. '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 stand 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. [Ibid. 14. The acquiescence of an inventor in the public use of his invention, can in no case be pre- sumed where he has no knowledge of such use. But this 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 after- ward to prevent him from asserting it. After his right shall be perfected by a patent, no pre- sumption arises against it from a subsequent use by the public. [Ibid. 15. A strict construction of the act of Congress, A GUIDE TO INVENTOKS. 225 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. [Ibid. 16". 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 pa- tent, obtained under such circumstances, protect his right. [Ibid. 17. The patentee need not prove that he has hawked his patented article about for a market, and that he has tried to sell it to any person. Those seeking to defeat the patent must prove that the patentee has neglected or refused to sell for rea- sonable prices, when application was made to him. [Benjamin et al. v. Lowlen et al., C. C. N. Y., lifelson J., April, 1846.' 18. If the patentee, after obtaining his patent, dedicates or surrenders it to public use, or acqui- esces for a long period in the public use thereof, without objection, he is not entitled to the aid of a court of equity to protect his patent ; and such acquiescence may amount to complete proof of a dedication or surrender thereof to the public. [Wyeth V. Stone, 1 Story, 278. 19. But to entitle the defendants to the benefit of such a defence, the facts must be explicitly re- lied on and put in issue by their answer, otherwise the court cannot notice it. [Ibid. 226 PATENT OFFICE AND PATENT LAWS. 20. After a patent has been obtained for an in- vention or discovery, tbe disuse of it by the pa- tentee is not an abandonment of the rights of the patentee to the same, but they continue for four- teen years from the date of the patent. [Gray et al. V. Johns et al., 1 Peters, C. C. K, 394. 21. If an inventor knowingly suffers his inven- tion to go into public and general use without ob- jection, it is a dedication of it to the public, and he cannot afterward resume the exclusive right. [Melius V. Silsbee, 4 Mason, 108. 22. To entitle a person to claim the benefit of the 7th section of the patent act of 1839, eh. 88, he must be a person who is a purchaser, or who has used the patent invention before the patent was issued, by a license or grant, or by the consent of the inventor, and not be a purchaser under a mere Avrongdoer. [Pearson v. The Eagle Screw Co., 3 Story, 402. 28. M'Clurg V. Kingsland, (1 Howard, Sup. Ct. E., 202,) view taken of, commented on and ex- plained. [Ibid. 24. Our patent act differs from the English in several respects. A mere public use by others before taking a patent, on a sale thereof by the inventor, is not decisive against him here as it is in England. (Melius v. Silsbee, 4 Mason, 108; Pennock et al. v. Dialogue, 2 Peters, 1. 25. If a person, employed in the manufactory of another, while receiving wages, makes experiments at the expense and in the manufactory of his em- A GUIDE TO INVENTORS. 227 ployer ; has his wages increased in consequence of the useful result of the experiments ; makes the article invented, and permits his employer to use it, no compensation for its use being paid or de- manded, and he then obtains a patent, these facts will justify a presumption of a license to use the invention. [M'Clurg et al. v. Kingsland et al, 1 Howard, 203. 26. Such an unmolested and notorious use of the invention, prior to the application for a patent, will bring the case within the provisions of the seventh section of the act of 1839, ch. 88. [Ibid. 27. A description by an applicant for a patent of a machine, in which he sets forth his invention to be a combination of machinery, not giving notice that he claims any part as new, is a dedica- tion of that part to the public. [Batten v. Tag- gert, 2 Wallace, 101. 28. After such patent has passed into public use, the dedication cannot be revoked by surrender and re-issue of the patent, nor otherwise ; neither the 13th section of the act of 1836, nor the 7th section of the act of 1837, relating to amending of patents, authorizing a new patent for an inven- tion difierent from that originally patented, pbid. X. Assignments of Letters Patent and Patent Rights. 1. The act of 1836, ch. 357, sect. 11, relating to the recording of assignments of patents, is merely directory for the protection of bona fide purchasers without notice, and does not require the recording 228 PATENT OFFICE AND PATENT LAWS. of an assignment witliin three months as a pre- requisite to its validity. Pitts v. Whiteman, 2 Story, 609. 2. A vendee of a patent right, in the hill of sale, described the machine thus : " One machine for cutting, making, and manufacturing combs, like the machines which I use and improve, and such as I have a patent right for." It was held that this latter clause did not amount to a covenant on the part of the vendor that he had a valid patent right. [Bull V. Pratt, 1 Conn., 342. 3. A patentee of friction matches, by a deed under seal, undertook as follows : " To grant, bar- gain, sell, convey, assign, and transfer to B., his executors, administrators, and assigns, the right and privilege, hereinafter mentioned, of making, using, and selling the friction matches," patented, and to have and to hold " the right and privilege of manufacturing the said matches," and " to em- ploy in and about the same six persons, and no more, and to vend the said matches in any part of the United States." It was held, that this was a license or authority from the patentee, and need not be Mcorded in the Patent Office, under the patent act of 1836, ch. 357, sect. 11. [Brooks v. Byam, 2 Story, 525. 4. A license need not be recorded in the Patent Office, unless there be some positive provision of the p'atent act, which renders it an indispensable prerequisite to its validity. [Ibid. 5. The recording within three months, accord- A GUIDE TO INVENTOES. 229 ing to the statute, is merely directory ; and any subsequent recording of an assignment will be sufficient to pass the title to the assignee, except as to intermediate bona fide purchasers, without notice. [Ibid. 6. The patent act of 1836, ch. 35.7, sect. 11, pro- vides for the recording of three kinds of assign- ments, and of no others; first, an assignment of the whole patent ; secondly, an assignment of any undivided part thereof; and, thirdly, a grant or conveyance of the exclusive right under the patent within any specified part of the United States. [Ibid. 7. It was held, that the right granted by the above deed was a license or authority, coupled with an interest in the execution, to the grantee, and six others, to be employed by him in making matches; that the right was an entirety, incapa- ble of being apportioned or divided among dif- ferent persons ; that, therefore, an assignment by B., of a right to make as man^ matches as one person could roll up, was void. [Ibid. 8. Qumre ? If the license is not such a personal privilege that the entirety cannot be assigned, not- withstanding it was given to B. and his assigns. [Ibid. 9. A contract may be made to convey a future invention, as well as a past one, and for any im- provement or maturing of a past one. [S'esmith V. Calvert, 1 Woodbury, 34. 10. Under the act of 1836, the patentee may as- 20 230 PATENT OFFICE AND PATENT LAWS. sign any part of his right. [Boyd v. M'Alpen, 3 M'Lean, 427. 11. If not recorded, a subsequent assignee, with- out notice, would hold. [Ibid. 12. Where a transfer of certain specified pri- vileges, part of larger privileges secured by patent right, does not confer a legal title to the whole, or to an undivided portion of the right, nor grant the entire or exclusive right within a specified part of the United States, a suit for an infringement of one of the privileges conferred is properly brought at law in the name of the original holder. [Blan- chard v. Eldridge, 3 Wallace, (in press.) 13. For example, B., having a patent for turn- ing irregular forms generally, grants to C. the full and exclusive license, rights, and permission to use it for turning shoe-lasts. D. having infringed the patent by turning shoe-lasts, it was held that suit for the infringement was properly brought at law in B.'s name. [Ibid. XL Patents Issued to Aliens and Foreigners. 1. A patent obtained by an alien upon an oath, ignorantly or inadvertently made, that he is a citi- zen of the United States, is void ; and not voida- ble only. The true representation of citizenship is a condition precedent to the issue of the patent. [JSIini's Assignee v. Adams, 3 Wallace, (in press.) 2. Such a mistake does not fall within such "defective or insufiicient description or specifica- tion" as will allow the Commissioner, under section A GUIDE TO INVENTORS. 231 ISth of the patent act of July 4, 1836, to receive a surrender of the old patent and grant a " re-issue." [Ibid. 3. Neither has that officer any such inherent or judicial power as vrill, independently of the act, enable him to grant a re-issue in correction of the applicant's mistake; nor power of any kind to grant an original patent eight years after the in- vention patented had been in public use. [Ibid.* * Note. — This is a peculiar case, and having a general bearing, it is given here at some length. It ■will serve as a precedent, and a warning to those ■who are or may be similarly circumstanced hereafter. Mr. Mini states, "I have been a resident of the United States for almost thirty-seven years. I have all that time been engaged in the pursuit of industry here, have acquired some pro- perty and owned and occupied for thirty years the house ■which is my present home. Here I have married and reared a large family, and no'w reside among my children and grand-children in Philadel phia, Pennsylvania. During all that time I have never been en- gaged in any public or private controversy, but in peace and order have rendered, and to the end of my life shall continue to render, this country of my adoption, an undivided allegiance and affection. I -was, as above intimated, not born in the United States, but in Paris, France, and brought up to the trade of a colourist. In 1796, at the age of about fifteen years, I ■was forced from my father's house, and compelled, as a conscript, to join the French army. I served under the republic and empire tiU the fall of Na- poleon. I fought at Friedland, Eylau, and Mosoo^w, but not at Waterloo. After the restoration, believing myself unsafe in France, I determined to leave her forever, and settle in these States. For this purpose I procured a passport, the original of ■which is in my possession, and can be seen. For the sake of form it ■was dated June 14th, but not received till June 20th, 1815. The passport ■was respected till my arrival at Bordeaux, though the name of the emperor was erased. At Bordeaux, supposing myself suspected 232 PATENT OFFICE AND PATENT LAWS. by the police, I embarked on board the American Tessel Dayid Moffit, Oct. 15th, 1815. As advised by the consul of this nation at Bordeaux, I assumed the character of a citizen of the United States, from Louisiana, and performed the duties of an American sailor till beyond the reach of the French police. Indeed, the David MofSt was bound to New Orleans, but she touched here at Philadelphia, where I settled, and have ever since been engaged as a colourist since my arrival, Dec. 11th, 1815. Of fuU age on my arrival at Philadelphia, and passionately fond of the study of works on art and science, in the French language, I have learned but little of the English. I was ignorant of the laws of the coun- try and always, till recently, supposed myself a citizen. Having always paid taxes, and performed every other duty of citizenship, I voted once, and only once, and then without question or objec- tion. This was more than twenty years ago, when strongly urged by citizens of the highest character and intelligence, born and bred here. I then supposed my voting entirely legal. Indeed, I have annually, before and since, been solicited to vote by gentle- men of the greatest respectability ; but excepting this once, have never done so. The omission to vote has not been prompted by any doubt of my legal right, but by difBdence and indisposition to engage in political struggles. While engaged as above stated, I discovered, and at a great expense perfected, a new and useful improvement in making lamp black. Honestly believing myself a citizen of the country, at the time of making this discovery, and ignorant of the laws, but acting under the advice of othei'S, I pre- sented my application for letters patent as such citizen. The pa- tent was granted on the 13th of Nov., 1844, on payment of such fees as were then required from citizens of the United States. Since the grant of my patent, about a year ago, I learned for the first time that I was not legally a citizen at the time of my applica- tion, and that my patent for that reason would be void. I most solemnly swear to you, that at the time my application was made, and the patent taken out, I believed myself a citizen, and that I had no thought or design of defrauding the United States of such sum as would have been payable by a citizen of France, to secure the patent. In truth, before the patent was granted, I had as- signed all my interest in the improvement to one who then, before and since, till recently, firmly believed me a citizen of the United A GUIDE TO INVENTORS. 233 States. We paid all that was asked for the cost, trouble and ex- pense of securing the patent, to those who advised us and acted on our behalf. Informed of my error, I very respectfully present you this statement of facts, and come ready to produce such evidence of their truth as you shall require." Opinion; Gkieb, J.: The right of Mini, with the consent of his assignees, to surrender his original patent and to have it cancelled, cannot be doubted, whether it had been obtained by false sugges- tion or not ; and when the invention or discovery had not been in public use more than two years, the Commissioner might probably grant him a new original patent, on an original application alleging, inter alia, "that he does not know or believe that his invention was before known or used." But a new patent, seven or eight years after the application, and after the patentee and others had publicly used the discOTery or invention, would be of little use, unless it can be construed to retro-act by way of confirmation of the first. The patent act of 1793 did not provide for a re-issue of a patent, after a surrender or cancellation of it, by the patentee, on account of a defective or insufloient description or specification. The great difiSculty of making a correct specification which will stand the test of judicial scrutiny, and the very frequent instances in which the most valuable inventions and discoveries have been lost to meritorious patentees through inadvertence, accident, or mis- take, originated the practice of granting re-issues in such cases of hardship, without any statute directly authorizing or regulating them. This practice was confirmed by the decision of the Supreme Court in Grant v. Raymond, in January, 1832. This was a. case of a defective specification, and refers only to the practice of re-issu- ing patents to cure such defects. It had never been suggested to the Patent Office or the court, from anything that appears, that a false or mistaken assertion in regard to a matter of fact of which the applicant is presumed to be peculiarly cognizant, and by which nis patent was obtained for one-tenth of its cost, was ever con- sidered as an inadvertence, accident, or mistake, which could be thus remedied. But in order to confirm the decision of the court, and to define the power of the Patent Office on this subject, the act of July 3d, 1832, was immediately passed. This act gave to the Secretary of State a much more extensive power than previous practice had assumed or the judgment of the Supreme Court had 20* 234 PATENT OFFICE AND PATENT LAWS. confirmed. But though it might have included a case like the pre- sent -within its terms, it left the question of the connection of the new patent with the old, in such a case, wholly unsettled. This act was repealed by the act of July 4th, 1836, which estab- lished a new system, entirely abolishing aJl that preceded it. The power of the Commissioner of Patents to re-issue patents, and the effect of them, are carefully defined by this statute. By defining the conditions under which the power it confers shall be exercised — as this act by its 13th section does — it necessarily excludes it in all other cases, except, perhaps, where necessary for the correc- tion of the department's own clerical errors. It needs no argument to show that this case comes neither within the letter nor the spirit of the 13th section; nor can the case of Grant v. Raymond be cited as authorizing any such general power in the Commissioner to grant a new patent to one who has obtained it by false suggestion, which shall retro-act by way of confirmation of the original, or stand in its place. When a statute defines the extent of power given to one who acts ministerially, the court cannot extend it, or validate acts done without or beyond its authority. I would not be considered as im- puting any moral guilt to Mr. Mini, or intent to commit perjury in hia particular ease. It is possible that men may live thirty years in this country and not know that in order to become a citizen an alien must be naturalized. It is possible, too, that an alien dragged to the polls "by respectable gentlemen," and permitted to vote by a complaisant inspector, without question, may fancy himself to have been thus transmuted into a citizen.* But instances of such amiable ignorance are so rare that it could hardly be expected that Legislatures should anticipate it by providing a remedy for those whose mistakes are the consequence of it. Nor will the hardship of this particular case justify the Commissioner of Pa- tents in assuming a power not granted to him by the statute. He has no power to confirm a patent obtained by a false suggestion, either by pardoning the offence or excusing it on the plea of in- nocent ignorance. A mistake or inadvertence in the specification of a patent can be proved by the face of the paper, and the reason alleged for it. But where a person makes a mistake in his oath * See Mr. Mini's account of himself. Ante, page 231. A GUIDE TO INVENTORS. 235 of citizenship, and enjoys the benefits of it for more than half his term, his innocence can be proved by his own oath alone, and he ought not to be allo-wed to obtain a new patent for the other half by stultifying himself. This would be holding out a premium for profitable mistakes, and an encouragement to double perjury. But it is contended that if the re-issued patent is void, because issued without authority, the original may be set up as a good title — that is not void, but voidable, and that the payment of the additional fees is a matter which concerns the government only, and cannot be alleged as a defence by third persons. This might be true if the applicant had truly disclosed his citi- zenship, and had given his note for the three hundred dollars, which he had afterward neglected or refused to pay. The act of 1836 permits aliens as well as citizens to receive pa- tents for inventions, but under very different conditions. A citizen, or one who has declared his intention of becoming such, pays a patent fee of thirty dollars only. An alien, if he be a subject of the king of Great Britain, must pay five hundred dollars, and all other persons three hundred. An alien patentee is also compelled "to put and continue on sale to the public on reasonable terms, the invention or discovery for which the patent issued." If it were not so, it would be in the power of an alien inventor, by means of his patent, to completely prohibit the use of his invention for fourteen years in the United States. The 6th section of the patent law accordingly provides that "before any inventor shall receive a patent," among other things, he shall make oath "of what country he is a citizen." This, as well as the other duties required by this section, is a condition precedent, without which the Commissioner has no au- thority to grant a patent, and a defendant may allege, in his de- fence, the neglect or fraudulent omission to fulfil these conditions, or any of them, as a sufficient defence, and although the court has no power to avoid or annul a patent by its decree or judgment, the patent, so far as respects that suit, is " inoperative and invalid," to vest a title in the alleged invention. Many of these defects or omissions may, by the act, be given in evidence under the general issue in an action at law : other defences, such as a "license" or " alienage," must be specially pleaded. If, therefore, an alien, either through ignorance or intention, 236 PATENT OFFICE AND PATENT LAWS. falsely represents himself as a citizen, in order to obtain a patent, he not only fails in performing one of the conditions •which the statute imposes, in order to entitle him to a patent, but he com- mits also a fraud "upon the government. And as this fact appears in the complainant's bill, the respondent may avail himself of it as a defence to the title set up under the patent, and allege that the patent thus obtained is "inoperative and invalid." We are of opinion, therefore, that the original patent of 1841 ■was invalid, because the applicant did not comply with the condi- tion of the patent act, in stating truly " of what country he is a citi- zen ;" and that the re-issued patent for 1852, is equally invalid ; the Commissioner of Patents having no power to grant such a pa- tent to act by way of confirmation of the original, nor to grant a new original eight years after the invention has been in public use, which wiU give a valid title to such patentee. Bill dismissed with costs. [Third Circuit, April Sessions, 1850, No. 107 ; October Sessions, 1852, No. 8, Equity Docket. Reported at length in 3 Wallace, (in press.) II afoui Sato xt! f uglau^ aui PAET FOUETH. ENGLAJ!fD. [iVofe. — The Patent law of England is briefly al- luded to in the Introduction; but American in- ventors are beginning so extensively to export their discoveries, that something more specific is required to acquaint them with the rules and regu- lations in . operation in that country. The patent act, framed and passed by Congress in 1836, was modelled after the British law of 1835, and is in some respects identical with that statute. Great Britain imports 90 per centum of the inventions exported by Americans ; France about 4 per cent., and the states of Germany 2 per cent. It is claimed — we do not know with what degree of (237) 238 PATENT OFFICE AND PATENT LAWS. truth — that ten per cent, of the patented ingenuity of the British realm is the result of American disco- very, or for which Americans hold letters patent.] I. Term for wMct Patents are Granted. 1. "Patents are granted for a period of fourteen years. The mode of proceeding is, to address a petition and affidavit to the crown, setting forth that the petitioner has, after great labour and ex- pense, made a certain discovery, which he de- scribes in his specification, and which he believes will be of great public utility, and that, to the best of his knowledge, he is the first inventor. This petition is referred to the Attorney-general or So- licitor-general, who is separately attended by the applicant, and all competitors, if there be any. They explain their projects to him, and he decides on granting or withholding the patent. "VVTien the inventions of two or more conflicting appli- cants coincide, he rejects all the applications. The legal officers of the crown are the sole judges as to what patents should or should not be granted. Their award is final; and they are subject to no responsibility, other than the common remedies against public officers by impeachment, indictment, &c., none of which would be entertained, unless "a corrupt motive were established. 2. " After approval by the law officers, the grant is made out, sealed, and em-olled." [Maccullough. 3. "The Attorney-general, or officer who ad- vises the crown, must, in every case in which the A GUIDE TO INVENTORS. 239 grant of a patent is not opposed, rely solely on the statements of the person petitioning for the patent ; and no one can be present on behalf of the public to controvert any of the statements he may make in support of his claim for a patent. Even in op- posed cases, the party opposing can obtain no in- formation respecting the nature of the invention for which a patent is sought, except v?hat he may acquire from the title of the invention inserted in the petition, vs^hich" may be "couched in the most general and indefinite terms,' and quite insufficient to enable any person to understand precisely what the inventiqfi is. And an opposing party is not allowed to be present to hear the statement of an inventor in support of his claims for a patent, because the opposing party would thus acquire a knowledge of the invention, and would be enabled to defeat the inventor's claim to a patent, by pro- claiming it to the world before the inventor could obtain his patent." [Hindmarch. II. Specification of Inventors. 1. It is a stringent rule, that inventions shall be specifically and particularly described ; and in this respect the British statute and our own coincide. 2. The specification shall be enrolled, under the hand and seal of the patentee, in the Court of Chancery within seven months, from the time the patent is granted; failing to perform which con- dition, the patent ceases, and all the advantages it affords become void. 240 PATENT OFFICE AND PATENT LAWS. HL What Constitutes a Patentable Invention. 1. " The novelty and utility of tlie invention are essential to the validity of a patent. If it can be shown to have been in use previously to the grant of the patent, or to be of no utility, it is void. It must also be for something vendible — something 'material and useful, made by the hands of man.' " [Lord Kenyon, 8 T. E., 99. 2. "A philosophical principle only, neither or- ganized, nor capable of being so, is no ground for a patent, because it is an element and rudiment of science, and which, till applied to some new production from these elements, fcannot, with justice to other inventors, be applied to the ex- clusive use of any of them. In all patents there is required something of a corporeal or substantial nature — something that can be made by man from the matters subjected to his art and skill, or, at the least, some new mode of employing practically his art and skill." [Lord Tenterdon; Godson on the Law of Patents. 3. "Previously to Lord Tenterdon, it had been ruled that a new process or method was not the subject of a patent. But his Lordship, having suggested that the word manufacture (in the sta- tute) may, perhaps, extend to a new process, to be carried on by known implements, or elements, acting upon known substances, and ultimately producing some other known substance, &c., this interpretation has now been adopted." [Godson, p. 83., and T. E. A GUIDE TO INVENTORS. 241 4. A patent for a machine, each part of which was in use before, but in which the combination of the different parts is new, and a new result is ob- tained, is valid. But in order to its being valid, the specification must clearly express that it is in respect of such new combination or application, and of that only, and not lay claim to original in- vention in the use of the materials. 5. A valid patent may be obtained for an in- vention " new in this realm," though it may have been previously practiced in a foreign country. 6. A patent is void if it be for several distinct in- ventions, and any one of them fail of originality. IV. Additions, Extensions, and Ee-issues. 1. "A patent may be granted for an addition to an old invention ; but the patent must be confined to the addition, or improvement, that the public may purchase it without being encumbered with other things. If the patent include the whole, it will be void ; for the property in the addition or improvement can give no right to the thing that has been improved." [Godson, p. 71. 2. " If any person who hath, or shall hereafter, obtain letters patent, shall advertise in the London Gazette three times, and in three London papers, and three times in some country paper published in the town where or near to which he carried on any manufacture .of anything made according to his specification, or near to or in which he resides, in case he carried on no such manufacture, or pub- 21 242 PATENT OFFICE AND PATENT LAWS. lished in the country where he carries on such manufacture, or where he lives, in case there shall not be any paper published in such town, that he intends to apply to H. M. in council for a pro- longation of his term of sole using and vending his invention, and shall petition H. M. in council to that effect, it shall be lawful for any person to enter a caveat at the council office ; and if H. "h,!. refer such petition to the judicial committee of the privy council, and notice shall first be by him given to any person who has entered such caveats, the petitioner shall be heard by his counsel and witnesses to prove his case ; and the persons en- tering caveats shall likewise be heard by their counsel and witnesses: whereupon the judicial committee may report to H. M. that a farther ex- tension of the term in the said letters patent shall be^ranted, not exceeding seven years ; and H. M. is hereby authorized and empowered, if he think fit, to grant new letters patent for the said in- vention for a term not exceeding seven years after the expiration of the first term : provided, that no such extension shall be granted if the application by petition be not made and prosecuted with eftect before the expiration of the original term in such letters patent." [Patent Law, sect. 4 V. Disclaimers and Caveats. 1. The law authorizes patentees from time to time to make such alterations in their specifica- tions as they may deem proper, so that, by the A GUIDE TO INVENTORS. 243 time the period expires for which a patent issued, it is difficult in some cases to tell in what con- sisted the original claim and invention. This right to amend extends throughout the realm— the application to be made to the Clerk of patents in England, Scotland, or Ireland, after permission has been obtained of the Crown officer. " And such disclaimer or memorandum of alteration being filed by the said Clerk of the patents, and' enrolled with the specification, shall be taken to be part of such letters patent or such specification in all courts whatever. 2. "Provided, that any person may enter a caveat, as caveats are now entered, against such disclaimer or alteration; which caveat shall give the party entering, a right to have notice of the application being heard by the Attorney-general, or Solicitor-general, or Lord-advocate, respectively : provided, also, that no such disclaimer or alteration shall be receivable in evidence in any action or suit (except in any proceeding by scire facias) pending at the time when it was enrolled ; but in every such action or suit the original title and specification alone shall be given in evidence, and taken to be the title and specification of the in- vention for which the letters patent have been granted : provided, also, that it shall be lawful for the Attorney-general, or Solicitor-general, or Lord- advocate, before granting such fiat, to require the party applying for the same, to advertise his dis- claimer or alteration, as to the said Attorney-gen- 244 PATENT OFFICE AND PATENT LAWS. era], &c., shall seem right, and shall, if he require such advertisement, certify in his fiat that the same has been duly made." [Patent Law, sect. 1. 3. The caveat in Great Britain is the same as that instrument is with us. VI. Repeal of Patents, Scire Facias, Infringements, &c. [^Rote. — To obtain the repeal of a patent in the United States, is a difficult and 'generally un- successful proceeding. 'Ho instance, that the com- piler is aware of, has occurred of the kind since the act of 1836, which is the fundamental structure of our patent system. Previously to which, how- ever, the process, under the acts of 1790, and 1793, was not so difficult ; and for this reason htigations often ensued, on questions of originality and right, that entailed many grievances on meritorious in- ventors, and encouraged piracies which the law, as constituted, was inadequate to check. But whether the entire omission by Congress to provide for repeals, in abolishing the patent laws anterior to 1836, has not caused quite as much evil as bene- fit, is a question in dispute. If the inventor or claimant can secure a patent, he is safe in his monopoly for fourteen years ; for, even if suit be brought to test its validity, the presumption of the law, according to the evidence adduced in the de- cisions quoted in such cases, is in favour of the original claimant or patentee. The acts of 1790 and 1793, authorized the issuing of a scire facias; but such was the clamour raised against this pro- A GUIDE TO INVENTORS. 245 vision of the law, that it was repealed by the act of 1836. A bill was introduced into the United States Senate in 1850, and was still pending in 1853, which restored this clause* of the law, but it * Sec. 3. And be it further enacted, that upon complaint made upon oath or affirmation, before one of the judges of the Circuit Court of the United States in the district in which the patentee, his executors, or administrators, reside, within seven years after date of issue or of re-issue of any letters patent, hut not after- ward, setting forth that said letters patent was obtained surrepti- tiously, or upon false suggestions, or that the same is invalid by reason of any matter which might before the passage of this act have been given in evidence by the defendant under the general issue, in an action for infringement of the rights of the patentee, or those holding under him, according to the provisions of the fifteenth section of the act of July fourth, eighteen hundred and thirty-six, or, (if the patent has been re-issued on an amended specifi- cation,') that the re-issued patent covers more than the patentee could have claimed at the date of the original issue, or that the patent is in- valid for any matter contained in this act, security for the costs upon such complaint being first given by the complainant, it shall and may be lawful for the judge, or the said court, to grant a rule on the patentee, his executors, or administrators, to show cause why process should not issue to repeal such patent, and on notice being given of said rule to the patentee, and through the post- oflice or otherwise to all persons whose names are recorded in the Patent Office as being interested in said patent ; if no sufficient cause be shown to the contrary, the rule shall be made absolute, and the said court shall award process to be issued against such patentee, his executors, or administrators ; and in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the original inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, or that it had been clearly described in some public work anterior to the supposed discovery thereof by the patentee, or that he had abandoned his invention to the public, or that the patentee, if an alien at the time the patent was granted, had failed and negr 21* 246 PATENT OFPICE AND PATENT LAWS. remains to be adopted or rejected by the national legislature, inventors being much divided in senti- ment as to its expediency.] lected, for the space of two years from the date of the patent, to put and continue the invention in public use in the United States, or that the bona fide use of the foreign invention in the United States had been discontinued for more than two consecutive years, judgment shall, be rendered by such court for the repeal of such patent, in whole or in part, as the case may be. And if the party, at whose complaint the process issued, shall have judgment ren- dered against him, he shall pay all such costs, including reasonable counsel fees, as the defendant in said process shall incur in defending against the same, to be taxed and allowed by the court, and recovered in due course of law; but if he shall succeed in procuring the repeal of said letters patent, the defendant in said complaint shall be adjudged to pay the costs of suit ; and if any issue of fact shall arise between the parties, in the course of the proceedings upon said process, the same shall be tried by jury ac- cording to the practice of the court. And when the party, at whose complaint the process is issued, relies on the fact of a pre- vious invention, knowledge, or use of the thing patented, he shall state in his complaint the names and places of residence of those persons by whom he intends to prove such prior knowledge or use, and in what particular place the same was known and by whom used, and to what particular thing he refers, and in what public work or works, and in what parts thereof it is described ; and such description shall be so clear as to enable any competent person to make or compound the same. Provided, that after the validity of a patent has been bona fide tested and sustained by the judgment of a competent court, and the patentee, his executors, admiuistra- • tors, or assigns, shall again be cited to appear and show cause why the said letters patent shall not be repealed, and the party com- plainant shall have judgment rendered against him, he shall be held to pay treble cost, including reasonable counsel fees. Pro- vided also, that whenever the defendant in such complaint shall fail in his defence against the same, on the ground that in his spe- cification or claim is embraced more than that of which he was the A GUIDE TO INVENTORS. 247 1. " A writ of scire facias may be sued out by any person who is prejudiced by a patent, as well as by the king." [Brewster v. Wild, "Webster on Patents, 125. 2. " The letters patent, so long as they exist — that is, until cancelled by the judgment in a scire facias — entitle the patentee to assert his right at law, notwithstanding his having been defeated in other actions. The writ of scire facias may be sued out by the crown, or by any subject who is prejudiced by the grant ; and if several letters patent be granted, for one and the same subject matter, to several persons, the former patentee may have a scire facias to repeal the subsequent letters patent. The proceedings may be instituted on the grounds of fraud, false suggestion, non-compliance on- the pai't of the patentee with the conditions of the letters- patent, failure of any of the essential requi- sites of novelty, and utility, or abuse of the privi- first inventor, if it shall appear that any part of the invention is justly and truly specified and claimed as new, it shall be in the power of the court to adjudge and award costs as may appear to be just and equitable. Provided farther, that in all eases affecting the validity of letters patent, under the provisions of this act, a writ of error shall lie to the Supreme Court of the United States. And when in any proceedings, for the repeal of letters patent, final judgment shall be rendered against said letters patent, and that the same be repealed, the court rendering said judgment shall certify the same to the Commissioner of Patents, who shall cause said judgment to be entered of record in the Patent Office as evi- dence of the fact that said letters patent have been repealed. [By Senator Turney. 248 PATENT OFFICE AND PATENT LAWS. leges granted by the letters patent. A notice of the objections which it is intended to rely on, must be delivered with the declaration; and if the verdict be against the defendant, judgment will be given that the letters patent be cancelled, and a vacatur will be entered on the enrolment." [Webster on Patents, 32. 3. " The law has given the king a great pre- rogative above any of his subjects, that when by fraud or false suggestions, he is deceived, he him- self shall in such cases avoid his own grant, jure regio." [Magdalen College case. 4. " When, upon false insinuation or pretences, the Idng makes any grant, as of any monopoly, &c., which in truth is to the prejudice of the king and commonwealth, the king jure regio shall avoid such grants; and such letters patent by judgment of law shall be cancelled." [Hindmarch, 378, 379. 5. A scire facias lies to repeal letters patent in three cases : (1.) "When the king, by his letters patent doth grant by several letters patent one and the self- same thing to several persons, the former patentee shall have a scire facias to repeal the second patent. (2.) "When the king granteth anything that is grantable upon a false suggestion, the king, by his prerogative jure regio, may have a scire facias to repeal his own grant. (8.) " When the king doth grant anything which by law he cannot grant, he jure regio, (for .the ad- vancement of justice and right,) may have a scire A GUIDE TO INVENTORS. 249 facias to repeal his own letters patent." [4 Insti- tute, 88. 6. The action of scire facias is a remedy provided by the law, not only for the crown, on behalf of the public, but also for any of her majesty's sub- jects, (or a foreigner, obtaining letters patent under the law,) who can show that a void or illegal pa- tent operates to his prejudice. 7. " A void or illegal patent for an invention, is actually in law prejudicial to every one of her majesty's subjects; for it commands them to ab- stain from all use of the art or invention comprised in it; and indeed, as we have already shown, a patent for an invention deprives every person (except the patentee,) of the right or liberty, which he had before, of inventing and using the par- ticular art which is made the subject of the patent grant. For this reason, every person is presumed to have such an interest in a patent for an invention that, if he alleges that it is illegal or void, he is en- titled, as of right, to a scire facias in the name of the queen, in order to repeal it. It was formerly the practice to present a petition to the crown, praying for leave to sue out a scire facias to repeal a patent containing a grant of land, or of a market, or any similar grant, but that practice never pre- vailed with respect to actions of scire facias to repeal patents for inventions. When the draft writ has been prepared, a fair copy of it is laid befoi'e the Attorney-general by the clerk of the petty bag, together with the statement of facts 250 PATENT OFFICE AND PATENT LAWS. already mentioned, in order to obtain his fiat, which is necessary to authorize the issuing of the writ. The fiat is endorsed upon the back of the copy of the writ, and is always obtained as a mat- ter of course." [Hindmarch, 384-386. 8. Thus the law of England gives to any subject the right to sue out a soire'fqeias to repeal a pa- tent, and it does not limit the process to one per- son, nor does it prevent, by the penalty of addi- tional costs, a second, third, or fourth person, or any number, from subsequently suing out a scire facias to repeal the same patent. On the contrary, in some cases it forces the defendant in an action for infringement to proceed by scire facias to re- peal the patent in controversy. Thus, in a trial for infringement, where the grounds of defence are such as to vitiate the patent, the court will direct the defendant to have a recourse to the proceed- ings by scire facias for a repeal. [Tenterden, Lord Chief Justice, Lewis v. Marling, 4 Car. et P., 52 ; S. C, 5 Man. et Ey., 66 ; Tindall, Lord Ch. Just., Hawworth v. Hardcastle, 1 Bingh., N. C. 189 ; S. C, M. et Sc, 720. 9. In this case, upon a demurrer to a scire facias, to repeal a patent, the Lord Chancellor gave judg- ment for the crown to repeal the patent, and a writ of error was brought to the House of Lords to reverse the judgment. In answer to an objection taken to the writ, it was conceded that a scire facias ought to be founded on a record; but it was resolved by the judges that the writ in that A GUIDE TO INVENTORS. 251 case was founded on a record, for the patent was enrolled in the Court of Chancery. [King v. But- ler, Hindmarch, 381. 10. In the Fourth Institute, Sir Edward Coke says that a scire facias to repeal a patent may be brought in the Queen's Bench, and cites a case in the Year Books, 3 Hen. IV., fol. 6, [2,] pi. 29. In that case it appears that a scire facias was sued in the King's Bench, before Knightly, J., against one L., to repeal a patent granted by the king to L., who alleged that Knightly had in Chancery sued out another scire facias to repeal the same patent which was then pending, and demanded judgment of the writ. But the only point upon which judg- ment was given, was, that the plaintiif might have as many writs of scire facias as he pleased ; and the reason seems to have been, that the effect of all the writs could only be, to repeal the patent. [Hindmarch, 381. 11. Thus, in Sir Oliver Butler's case, Lord Chanceller Finch (who was assisted by two of the judges) said " that where a patent is granted to the prejudice of the subject, the king, of right, is to permit him, upon his petition, to use his name for the repeal of it in a scire facias, as the king's suit, and to hinder multiplicity of actions upon the case, for such action will be, notwithstanding such void patent. " That [multiplicity of actions] means, that the patentee may proceed by action upon the patent, and put the defendant to the cost and vex- ation of having to plead and move the invalidity 252 PATENT. OFFICE AND PATENT LAWS. of it. So in the. Court of Queen's Bench, in the case of the Queen v. Acres, it was said that the crown de jure ought to permit subjects in such cases to sue in the name of the queen. [Ibid. 12. "In any action brought for infringing any letters patent, the defendant, on pleading thereto, shall give to the plaintiff, and in any scire facias to repeal such letters patent the plaintiff shall file with his declaration, a notice of any objections on which he means to rely at the trial of such action ; and no objection shall be allowed to be made in behalf of such defendant or' plaintiff at such trial, until he prove the objections stated in such notice: Provided, always, That it shall be lawful for any judge at chambers, on summons served by such defendant or plaintiff, on such plaintiff or defendant respectively, to show cause why he should not be allowed to offer other objections, whereof notice shall not have been given, to give leave to offer such objections, on such terms as to him shall seem fit." [Patent Laws, sect. 5. 13. " In any action brought for infringing any letters patent, in taxing the costs thereof, regard shall be had to the part of such case proved at the trial, which shall be certified by the judge, and the costs of each part of the case shall be given, according as either party has succeeded or failed therein, and without regard to the general result of the trial." [Ibid, 6. 14. " In this case, which was an appeal from an order of the Master of the Kolls, the question was, A GUIDE TO INVENTORS. 253 wiiether the Attorney-general was warranted in ad- mitting a Mr. Van Wart, a citizen of ITew York, not a subject of, or domiciled in, this country, to sue out a scire facias, for repealing or inquiring into the merits of Mr. Prosser's patent for manu- facturing iron pipes. Another objection to the Attorney-general's fiat for issuing the scire facias was, that the bond given by Mr. Van Wart, for securing the costs, was insufficient, considering that he was an alien. The Master of the Rolls, having decided that the Attorney-general had un- controlled discretion in the whole matter, dis- missed the application to him with costs. The Lord Chancellor, now giving his judgment on the appeal, said he was of opinion during the argu- ment that the Master of the Eolls was right ; and now, after reading the papers and affidavits on the matter, he had no reason to alter that opinion. His lordship, having stated the principal objections made to the course pursued by the Attorney-ge- neral, said the matter was entirely within his dis- cretion. He (the Attorney-general) was himself the prosecutor of the scire facias, and had a right to avail himself of the information of every person he pleased, to investigate the merits of the patent, to defend the prerogatives of the crown and the interests of the public. With respect to the bond for costs,- that was of modern introduction, even within living memory, being first taken by Attorney- general M'Donnell, who considered that, as any person might put the crown in motion to inv«sti- 22 254 PATENT OFFICE AND PATENT LAWS. gate the rights of a patentee, it was but just that the latter, if his rights turn out to be unimpeacha- ble, should have his costs secured to hito. That matter was also in the discretion of the Attorney-ge- neral. If the Attorney-general saw it proper to put this patent in a course of investigation, this court had no jurisdiction to control or regulate his proceedings." [In Chancery, The Queen v. Pros- ser, April, 1849. VII. Injunctions to Restrain. 1. An injunction may be obtained for the in- fringement of a patent in the same way as for a violation of the copyright act. [_Note. — It is not usual in the United States for our courts to grant final and perpetual injunctions, in patent cases, when the answer denies the va- lidity of the patent, without sending the parties to law, for the purpose of having that question de- cided. Ifor is it usual in England for the Chan- cellor^to do the same thing, though in both coun- tries later practice has infringed the rule, and rendered the course not an extra judicial proceed- ing. -The rule was departed from in the case of Goodyear v. Day, 2 Wallace, 283, and in the Morse Telegraph case, decision decreed by Kane, J., (not reported ;) but these may still be regarded as exceptions to the rule, and not the rule itself. A jury trial, though not at all times preferable, is demanded and generally conceded.] 2. "After a cause comes to a hearing, without A GUIDE TO INVENTORS. 255 trial at law, the court may proceed and grarrt an injunction, althougli this is certainly not very likely to happen, and I am not aware of any case in which it has happened." [Lord Cottenham, Bacon v. Jones, 4 Mylne & Craig, 433. 3. " The ultimate object of a bill in equity, to protect a patent, is a perpetual injunction, which can in general only be granted at the hearing; and it has been very lately decided, that where a patentee files a bill, alleging infringement, and praying an account and perpetual injunction, but does not immediately or within any reasonable time apply for an interlocutory injunction, he can- not have a perpetual injunction at the hearing, if the defendant raises a question as to the validity of the title, nor will he be allowed to retain the bill, with liberty to bring an action ; for the court will not permit the plaintiff" to delay to the hearing the trial of the legal right which he might have had at any time after filing the bill, and thus to put the defendant in a position to have a Chancery suit hanging over him for years. The course the court will adopt, in such a case, will be to dismiss the bill with costs." [Drewry on Injunctions, ch. 3, sect. 6. 4. " I can hardly conceive of a case in which the court will at once interfere, by injunction, and prevent a defendant from disputing the plaintiff's legal title." [Lord Cottenham, Motty v. Down- man, 3 Mylne & Craig, 14. 5. On the other hand, " the defendant may put 256 PATENT OFFICE AND PATENT LAWS. in im answer ; he may displace all affidavits which have been filed on both sides. The plaintiff and the defendant may respectively proceed to evi- dence ; they may bring their cause on for hearing ; and upon the hearing of the cause, the whole case, the law regarding the patent, and the facts which will appear upon the depositions, will have to be reconsidered; and that reconsideration may, for anything that can be shown to the contrary, justly end in a result different from that which I have come to upon the present occasion. The defen- dant, having his option to adopt this course of proceeding, has at the bar expressed his desire to have this matter tried at law. It is not the right of parties in every case to have an action tried in a court of law : it is a question of convenience, and the court is to exercise a fair discretion." [Lord Langdale, Wilson v. Tindal, "Webster's P. C, 730. FRANCE. [It is not deemed necessary to enlarge upon the patent law of France ; but it may be important to ,show what proceedings are taken on the repeal of a patent.] 1. Patents are issued in France for (1.) " the in- vention of new industrial productions;" (2.) the " invention of new means, or the new application A GUIDE TO INVENTORS. 257 of means already known for the obtaining of a result in arts or manufactures. 2. " The very moment a patent is granted, every one has a right to bring an action for the repeal of it. The procureur de rot, who acts on behalf of society at large, can bring an action, grounded either on the danger which might result from the practice of the invention, or its being contrary to law. 3. " An action against the patentee, for want of sincerity or omissions in the specification, want of novelty, inactivity during the first two years of his grant, or for the subsequent obtention [obtain- ment] in a foreign countiy of a patent for the same thing, lies with every one. 4. " Every man, before he begins a commercial undertaking, which may require the investment of a considerable capital, has a right to ascertain whether or not the supposed privilege exists ; be- cause, as the patentee proclaims his exclusive right, every one concerned in the trade, with which the patented invention may be more or less connected, is in constant fear of involuntarily infringing the patent right, and running the risk of a prosecution and condemnation for piracy. 5. " In vain would the patentee say to the per- son bringing an action, for the repeal of the pa- tent, 'Where is the necessity for your attacking my privilege. You believe that my patent has been obtained surreptitiously and on false repre- sentations, and that my supposed invention lays 22* 258 PATENT OFFICE AND PATENT LAWS. open to every one. You say that your belief is grounded on material and substantial proofs : if it be so, use the invention, and when I prosecute you, then you may plead the nullity of the patent, and I shall be declared nonsuited.' 6. " Such a defence could never prevail. As the patentee has obtained a monopoly for the inven- tion, and thereby every one is prevented from using it during the existence of the privilege, if the invention was really known prior to the ob- tention of the patent, the patentee has usurped a right which belonged to every one, and an action for its repeal must lay with the public at large, since the public are defrauded of part of their rights by the usurpation of the patentee." [Per- piqua on the French Law of Patents, Lond. Ed., 1832. 7. The law of France, in other respects, is much the same in operation as the patent law of Eng- land. PART FIFTH. OPINIONS OF HON. W. CRANCH, CHIEF JUSTICE OP THE DISTRICT COURT FOR THE DISTRICT OF COLUMBIA, ON APPEALS FROM THE DECISIONS OF THE COMMIS- SIONER OF PATENTS. [Note. — Section 7 of the patent act of 1836, and section 11 of the patent act of 1839, provide for appeals from the decision of the Commissioner of Patents to the Distiict Court for the District of Columbia. This court may review the evidence and proceedings of the Commissioner, and either reverse or confirm his decisions. Appeals have from time to time been taken to the District Court, of which Hon. W. Cranch is Chief Justice ; but it will be seen from the analysis subjoined, that the Commissioner has, as a general rule, been sustained in his opinions. It is of interest to in- ventors and patentees to know on what grounds the Commissioner has proceeded in these cases, as well as the influences, legal and technical, which have borne upon the mind of the Chief Justice in reviewing them — and for this reason they are in- serted. The patentee or claimant will recollect (259) 260 PATENT OFFICE AND PATENT LAWS. that all proceedings of tHs character, according to a decision rendered in the United States Court for the Eastern District of Pennsylvania, must first be instituted in the District Court for the District of Columbia, and that, therefore, it is important to be instructed in the points of law here raised in issue, for their own guidance. The failing health of the venerable Chief Justice, has incapacited him for some time past to sit in cases before his •court ; and this has caused much delay in the ad- judication of recent cases, and may deter the ad- justment of similar questions hereafter.] . Case I. This was an appeal by John F. Kemper from the decision of the Commissioner of Patents. In his petition he recapitulates a part of the specifica- tion of his invention, which is as follows : "I have discovered that, for the purpose of keeping ice for a great length of time, it is neces- sary, in stowing it, to place all the pieces edgewise, as, when placed fiatwise, small openings are formed through it by the percolation of water, or other- wise, and that the injurious effect goes on increas- ing, and eventually producing a rapid destruction thereof. This I obviate by carefully packing all the blocks edgewise, when, as experience has abundantly shown, no such effect is produced. This mode of stowing applies not only to vessels, but also to ice-houses, and wherever ice is to be preserved." A GUIDE TO INVENTOES. 261 In the petition he farther sets forth that he " has invented certain improvements in the manner of constructing vessels for the carrying and stowing of ice, and also an improvement in the manner of stowing the same," as described above in the spe- cification. His application for a patent was for both parts of the invention, and not for either singly. E"© objection was made by the Commis- sioner of Patents to grant letters patent " for the novel construction of vessels for the transportation of ice," as claimed by the applicant, "but the Com- missioner decided that he was not entitled to re- ceive a patent for the manner of stowing the ice edgewise." From this decision an appeal was taken to the District Court. It was for the Chief Justice (act of March, 1839,) to confine his revision to the points involved in the reasons of appeal, and the Commissioner to lay before the court the grounds of his decision touching the same points. Decision. The applicant claims a patent for his vessel, and his manner of stowing ice in vessels and ice- houses, as one invention, and pays thirty dollars as for one patent. The Commissioner denies his right to a patent for his manner of stowing, but admits it for his improvement in the construction of his vessel. The first and principal point involved in the reasons of appeal is, whether the thing for which 262 PATENT OFFICE AND PATENT LAWS. the patent is claimed is the invention or discovery of a new and useful art, or of a new improvement on an art, within the meaning of the constitution and laws of the United States respecting patents. The invention, if it be one, consists only in lay- ing each block of ice on its narrowest side. Can that act be considered as a new thing invented or made ? Was it never done before ? If it has been done before, although the beneficial efiect of so placing it, rather than on its broadest side, had not been discovered, it is not a new thing. The only thing new is the discovery of the beneficial effect, and that is the discovery of a thing which existed before ; for if it is now true that ice so placed keeps longer than when differently placed, it was always true; and that it existed before is shown in the specification, where it is said that the effect was discovered by experience. [The court reviewed the language of the patent laws, on the two points involved, of invention and discovery, and explained the synonimity and rela- tive signification of the two words, as they occur in the constitution and patent laws.] There is nothing farther in these acts, tending to explain the meaning of the word discovery, as used in the constitution and laws of the United States, respecting patents for useful arts. Upon consideration, therefore, I think I may safely say, that the claimant in this case can build no argu- ment upon the supposed difference between a dis- coveiy and an invention, for no discovery will A GUIDE TO INVENTORS. 263 entitle the discoverer to a patent which does not in effect amount to a contrivance or production of something which did not exist before, or, in other words, to an invention. The patent claimed is for " the placing of the prepared blocks edgewise," for the purpose set forth in the specification. The placing of the blocks of ice edgewise is not the contrivance or production of anything which did not exist before. It is not an inven- tion. It is not a discovery, because everybody knew before that blocks of ice might be placed upon their narrowest side; and it is asserted by the Commissioner, in the grounds of his decision, and not denied in argument, that blocks of ice have been so placed — whether by accident or de- sign, is immaterial : the placing is not new. It is not an invention. The discovery of a new effect of that which ex- isted before, is not the subject of a patent. Blocks of ice have been placed on edge before the alleged discovery by the claimant. If they were so placed with intent to retard their dissolution, I presume the claimant would at once abandon his claim. But the intent can be no ground of a patent. The claimant may be the first who placed blocks of ice on edge with that intent, but this cannot justify a patent for doing that which was done without that intent. In truth, the whole merit of the claimant IS, the discovery of a fact which existed long be- fore, namely, that ice placed edgewise kept longer 264 PATENT OFFICE AND PATENT LAWS. than when placed flatwise. This is a mere naked discovery, for which a patent cannot be granted. There is no invention — nothing contrived or pro- duced — which did not exist before. [On that provision of law which declares that a patent shall issue under certain circumstances, the opinion of the court was, that] The 7th section refers to the 6th, by which it appears that a patent is to be issued only to a per- son who has discovered or invented some new and useful art, &c., or some new and useful improve- ment on any art, &c. The Commissioner, there- fore, is to decide, in the first place, whether the invention is new, and whether it is the proper subject of a patent. Upon the whole, I am of opinion, and so decide, that the decision of the Commissioner of Patents, that the applicant, John F. Kemper, was not entitled to receive a patent for the manner of stowing ice, by placing the blocks edgewise, was correct, and the same is hereby confirmed. Case II. This was an appeal from the decision of the Commissioner of Patents, in the case of G-eorge W". Hildreth, appellant, v. George Heath, appellee. In April, 1840, the appellee filed in the Patent OflB.ce an application for a patent for an invention of an improved canal lock-gate. The Commis- sioner being of opinion that the patent thus ap- plied for would interfere with an unexpired patent A GUIDE TO INVENTORS. 26S granted to the appellant, George W. Hildreth, on the 19th of March, 1840, gave notice to that effect to the parties, and, upon a hearing before him, decided that George Heath, the appellee, was the original and first inventor, and entitled -to a patent therefor. From this "decision Hildreth appealed, and brought the question before the court. The reasons for the appeal, as put in by the ap- pellant, embraced eight points, M^hich the court, in its review, reduced to three. These were — 1. "Because Mr. Heath was not the first in- ventor, in the meaning of the patent law, inasmuch as his invention was never reduced to practice, but was the mere speculation of a philosopher or mechanician. 2. "Because he never filed a caveat, pursuant to the 12th section of the act of July 4, 1836, 3. "Because he has forfeited his claim to the invention by his delay in applying for a patent." Decision. 1. None of the patent laws have ever required that the invention should be in use, or reduced to actual practice, before the issuing of the patent, otherwise than by a model, drawings, and specifi- cation, containing a written description of the in- vention, and of the manner of making, construct- ing, and using the same, in such full, clear, and exact terms as to enable any person, skilled in the art to which it appertains, to make, construct, and use the same. In England, it is understood that, 23 266 PATENT OFFICE AND PATENT LA^vTS. if the thing is in use before the issuing of the pa- tent, it is oid; and our act of March 3, 1837, sect. 7, in order to meet an objection, provides that the use of the thing, even by leave of the in- ventor, for two years before his application for a patent, shall not invalidate it ; a fortiori^ the use of by a third person or subsequent inventor, after the first invention, and before the issuing of the patent to the first inventor, without his consent, will not, under our patent laws, be a bar to the issuing of it. If a patent should be issued to Mr. Heath, its validity would be still a question open to the courts, and is one which can be conclusively settled by the courts only. By the seventh section of the act of 1836, the Commissioner is bound to issue a patent in the case, and under the circum- stances there stated. He has in such a case no discretion ; and the present is such a case. * * * It appears by the proceedings before the Commis- sioner, that Mr. Heath regularly filed his applica- tion, description, and specification, and paid the duty; that the Commissioner made the examina^ tion; and that, upon proper examination, it did not appear to him that the same had been invented or discovered by any other person, or had been patented or described in any printed publication in this or any foreign country, prior to the alleged discovery thereof by the applicant ; or that it had been in public use or on sale, with the applicant's consent or allowance, prior to his application. The Commissioner was, therefore, frima facie bound to A GUIDE TO INVBNTOKS. 267 issue the patent to Mr. Heatla. * * * xt is alleged that he was not the first inventor, because he had not reduced his invention to practice. But that objection is ansvsrered by showing that there is no law which requires an inventor to put his inven- tion in practice or use before obtaining his patent ; and it is perfectly immaterial to him whether the subsequent inventor had put it in practice or not. That fact cannot affect the right of the first inven- ^Qj,_ * * * jyfr. Heath was using reasoruible diligence in adapting and perfecting his invention ; and it appears by testimony adduced by Mr. Hil- dreth, that in the winter of 1839, before he ob- tained his patent, Mr. Heath exhibited to the wit- ness, Alfred Barrett, who had in his possession a model of Mr. Hildreth's paddle-gate, his, the said George Heath's, model of his gate, and claimed to be the inventor thereof : it is probable, therefore, that Mr. Hildreth had notice of Mr. Heath's claim before he obtained his patent. * * * H; cannot be just that the prior inventor, who is maturing his invention, and preparing to make application for a patent in a reasonable time, should be de- feated by a subsequent inventor who first obtains a patent. This is not the doctrine of Dollai'd's case, (Boulton v. Bell, Buller, J.,) which was, only that an inventor, who confines his invention to his closet, and does not communicate it to the public, and takes no steps toward obtaining a patent imtil a subsequent original inventor has obtained his patent, thereby forfeits and abandons his claim to 268 PATENT OFFICE AND PATENT LAWS. priority of invention. * * * I do not consider the expression, "reduced to practice," as import- ing the bringing the invention into use. "When applied to an invention, it generally means the reducing it into such form that it may be used, so as not to be a mere theory. If a machine be in- vented and described in such a manner that it may be made and used, and especially if a model be made, the invention may be said to be reduced to practice. In the present case, it is admitted in argument (and such is the evidence) that Mr. Heath, in the summer of 1836, actually made a lock-gate, according to his specification. It was, indeed, a small one, a model only ; but the size is of no importance. The thing was done ; the invention was reduced to practice ; and it was demonstrated thereby that the invention was practicable. 2. The second reason of appeal is, that Mr. Heath never filed a caveat, pursuant to the 12th section of the act of July 4, 1836. That section was introduced for the benefit of the inventor, but was not necessary to the preservation of his right. It only enables him to have notice of any inter- fering application. * * * But this caveat gives no notice to the world, or even to the interfering appli- cant. It is notice to the Commissioner only, and is locked up in the secret and confidential archives of the office. It would not in any manner have strengthened the title of Mr. Heath, nor does the omission of it impair that title, or aid that of Mr. Hildreth. A GUIDE TO INVENTORS. 269 3. The statute does not limit any time in whicli the inventor must apply for a patent; nor does it declare a forfeiture by reason of any dLla3\ The delay, therefore, seems to be unimportant, unless it amounts to evidence of abandonment of the claim. It is not one of the specified grounds for which the Commissioner is, by the 7th section of the act of 1836, authorized to refuse to grant the patent; and it seems to be a matter within the peculiar province of the jury, upon a trial at law, in any action which either of the patentees may » institute against the other. If there be any limit of the time of application, it must be a reasonable limit, and that is proper matter for the considera- tion of a jury ; and I am very much inclined to the opinion, that any matter of defence, which it is the peculiar province of a jury to decide, and which is not, by the 7th section of the act of 1836, made a ground for the refusal of a patent, by the Com- missioner, should be left by him to be decided by the jury in any subsequent action at law, * * * If, therefore, the question of abandonment be cog- nizable by the Commissioner, there is, in my opinion, no evidence to support it; and this reason of appeal must also be overruled. It is, therefore, upon the whole case, my opinion, and I do so de- cide and adjudge, that the decision of the Com- naissioner of Patents in this cause be, and it is hereby, confirmed. 23* 270 PATENT OFFICE AND PATENT LAWS.. Case III. This was an appeal brought by John Arnold to the District Court, from a decision of the Com- missioner of Patents. The apellant, on the 19th of September, 1840, made application for a patent for an invention of a " new and useful manner for forming the web of felt cloth, and web for other purposes," and in the October following complied with the other requisites of the laws. A caveat, however, had been entered by George G. Bishop and John Akin, who claimed to be joint inventors with the said John Arnold, of the same machine ; . and on the 20th of March, 1841, Bishop and Akin made application by petition for a patent for the same invention, in the names of Messrs. Bishop, Akin, and Arnold, averring it to be the joint in- vention of the three. The Commissioner, on the 30th of March, 1841, decided them to be interfering claims; and notice was given to the parties by the Commissioner that he would hear them at an ap- pointed time. The hearing took place, and from the testimony, and other considerations, the Com- missioner decided that the application was to be regarded as a joint one, that neither of the parties could claim the whole invention, and consequently dismissed all the applications. Mr. Arnold's rea- sons for appeal were, that the Commissioner had considered and acted on evidence not competent, according to the general rules of law, and upon testimony not taken according to the regulations prescribed and promulgated by himself; and that, A GUIDE TO INVENTOKS. 271 independently of the evidence thus objected to, there was not sufficient to establish the fact of joint invention. And Mr. Arnold asked leave to be farther heard, if his objections to the evidence should be overruled. Decision. One of the objections to the deposition of Mr. Rowley, [one of the witnesses,] is, that the Com- missioner of Deeds, before whom the deposition was taken, has not certified upon the deposition, accord- ing to the fifth rule, that it w^as sealed up by him ; and there is no evidence that was in fact sealed up by him. By the act of March 3, 1839, sect. 12, it is enacted, "That the Commissioner of Patents shall have power to make all such regulations, in respect to the taking of evidence in contested cases before him, as may be just and reasonable." Under this authority, the Commissioner made out and pro- mulgated the following rules. [Rules cited.] If the witness is interested he is excluded, however small the amount of interest may be. Objection was made to the taking of the deposition of Mr. Rowley, at the time of taking it, because of his in- terest, and because the notice was too short ; be- cause the magistrate was not named before whom the deposition was taken, and because the time was so late that Mr. Arnold would not have time to take countervailing testimony. The interest of Mr. Rowley in the patent right is the same, whether the patent should be granted to Mr. Ar- 272 PATENT OFFICE AND PATENT LAWS. nold alone, or jointly to the three applicants; for his only interest is as a member of the company to whom all the applicants have bound themselves to convey the patent right when obtained. If the covenants do not cover the claim for a patent, then Mr. Rowley is not interested at all. If they do cover it, then it is immaterial to him which of the claimants obtains the patent. The objection to the shortness of the notice is answered by the fact that Mr. Arnold did appear at the time and place, and cross-examined the witness. The late- ness of the time is no, cause for rejecting the depo- sition; but it might, perhaps, have been good ground for an application to the Commissioner of Patents to allow farther time for taking other testimony which he might deem important in the cause. But the objection that the magistrate, before whom the deposition was taken, did not certify therein that it was sealed up by him, is sufficient ground for excluding that deposition from the consideration of the Commissioner of Patents. [After this ruling, on the question of evidence and conflict of rules, the chief justice proceeded to ex- amine the reasons of the Commissioner for dis- missing the respective applications.] It appears by the deposition of Mr. Lounsberry, that the idea of crossing the wool diagonally was suggested^ by Mr. Bishop and Mr. M'Lean, or one of them, be- fore Mr. Arnold was applied to or had any con- nection with the company in which Lounsberry, Bishop, and M'Lean were concerned ; that, upon A GUIDE TO INVENTORS. 273 the recommendation of a Mr. Moulton, Bishop, as agent of the company, applied to Arnold to make the necessary machinery, who undertook the work, and was to have one-fifth of the concern ; that he made a machine for crossing the wool at right angles, and obtained a patent for it in 1829 or 1830, which was afterward improved by him and Bishop, who obtained a patent for the improvement in their joint name ; that Bishop frequently, from 1828 to 1837, urged the building of a machine to cross the wool diagonally, to which Mr. Lounsberry was opposed. The machine however was built in 1837, by Arnold and Akin, for the company, who paid them for building it. It has always been in possession of the company, and owned by them ; that the machine is the same spoken of by Alonzo C. Ai'nold in his deposition, and the model of which was sent to the Patent Office by Bishop in March, 1841. That one objection to adopting the diagonal machine was, that it would interfere with a patent machine then in operation at Catskill ; but the right-angled machine did not interfere, and made a better article. That the claim of Bishop and Akin is made for the benefit of the company ; and that whether the patent be taken out in the joint names of Bishop, Akin, and Arnold, or of Arnold alone, the benefit of it is to be assigned and transferred to the company, &c. Does not know who invented the machine built by Arnold in 1837, but it is the same model which had been agitated by Bishop, and occasionally by Arnold, 2U PATENT OFFICE AND PATENT LAWS. during their connection in business. That Akin suggested alterations while the machine in 1837 was putting up, and after it was up, to make it go better, that Akin did the greater part oi the work. Cannot explain the alterations, nor the difficulties to be overcome ; but it did not operate at all. It seems to me that there is enough in this deposition to show that Mr. Arnold was not the sole inventor of the principle of crossing the wool diagonally, or of the machine for reducing that principle to prac- tice ; and if not the sole inventor, he is not entitled to a patent. * * * The machine did not con- stitute the whole invention. The next material part of the invention was, the principle — that is, the diagonal motion — which was to distinguish this machine from all other felting machines ; and it is the vibratory and rotary motions which pro- duce the diagonal crossing of the wool, which Mr. Arnold claims as his invention, and for which he asks a patent. The man who reduces to practice the theory of another who assists in the reduction of it to practice, cannot be considered as the sole inventor of the machine. Arnold would not have made the machine unless informed by Bishop of the discovery which he had made of the effect of the diagonal crossing of the wool. The invention consisted both of the discovery of the principle and the reduction of it to practice, iffeither Bishop nor Arnold, therefore, could be considered as sole inventor. * * * Upon the whole, then, after rejecting the evidence, I am of opinion that Mr. A GUIDE TO INVENTORS. 275 Arnold has not supported his claim as sole in- ventor ; and that, if he had, he has lost his right to a patent by suffering the machine to be in use* for more than two years before his application for a patent ; and that, therefore, and upon both grounds, the decision of the Commissioner of Pa- tents, rejecting his claim, ought to be, and hereby is, affirmed. Owing to some informality of proceeding, or misapprehension of the facts stated, or miscon- ception of the course desired to be pursued by the counsel for the appellant, a second hearing was allowed by the court in this case, when other points were adduced — one of which was, "that this claim of Mr. Arnold for a patent is not in- cluded in the covenant to the Union Manufacturing Company, of which Mr. Lounsberry is a member; and, therefore, that the interest of Mr. Lounsberry cannot be the same whether the patent should be granted to Arnold, or to the three applicants." The court had ruled, that if Mr. Lounsberry was interested in the manner stated, or intimated, he stood in the relation of Mr. Rowley ; and the ruling, whether he was or was not interested, was es- sentially the same with regard to him. Second Decision. I cannot perceive how the consequence [just * See Explanation in his second decision. 276 PATENT OFFICE AND PATENT LAWS. quoted] should follow. It is only by introducing the assignments and covenants by Mr. Arnold to the Union Manufacturing Company, and by show- ing that these covenants cover the claim, that Mr. Lounsberry is supposed to be interested. If those covenants do not cover this claim, then Mr. Lounsberry is not interested ; and if they do, then, as all the applicants are bound by similar cove- nants, it is not material to him which prevails. The only question for me to decide is that which is suggested by the reasons of appeal, namely, whether Mr. Arnold was the sole inventor of the machine. To that question, it is wholly immate- rial whether it be an entirely new machine, or an improvement upon an old one. But it is suggested that there is no law which authorizes the Com- missioner of Patents to withhold the grant of a patent in the case in question — that is, where the applicant is not the sole inventor; that it is not one of the grounds stated in the 7th section of the act of 1836 which would justify the Com- missioner in refusing the patent; and that the only one of these grounds which can be supposed to apply to this case is, its appearing to the Com- missioner that the same thing has been invented or discovered by some other person prior to the al- leged invention or discovery by the applicant. But by the sixth section of the same act the applicant must be the inventor. One of the three joint in- ventors cannot with propriety be called the in- ventor; and if he applies for the patent, the Com- A GUIDB TO INVENTORS. 277 missioner is bound to refuse it. This seems to be admitted in the reasons of appeal, where it is said that Arnold, who has sworn that he was the original and first inventor, cannot, without ad- mitting that he has been guilty of perjury, ac- knowledge that Bishop and Akin were joint in- ventors with him ; and that, upon their own show- ing, a patent cannot be granted to Bishop and Akin without the concurrence of Arnold. Here, then, is the authority of the Commissioner to with- hold a patent from an applicant who is not the sole inventor. In my former opinion in this case, I stated, as one of the grounds for affirming the decision of the Commissioner of Patents, rejecting the claim of Mr. Arnold, that he had lost his right, if he had any, by suffering the machine to be in use for more than two years before his application for a pa- tent. I should have said, "public use," which are the words of the statute. But, upon reflection, I doubt whether I can decide upon any other matter than that which arises upon the reasons of appeal. The words of the act of 1839, sect. 11, which con- fer the jurisdiction upon the judge, after allowing the applicant a right to appeal, by giving notice thereof to the Commissioner, filing his reasons of appeal, and paying into the office $25 to the credit of the patent fund, are, " And it shall be the duty of the said Chief Justice, on petition, to hear and determine all such appeals, and to revise such de- cisions in a summary way, on the evidence pro- 24 278 PATENT OFFICE AND PATENT LAWS. duced before the Commissioner, at such, early and convenient time as he may appoint, first notifying the Commissioner of the time and place of hear- ing ; whose duty it shall be to give notice thereof to all parties who appear to be interested therein, in such manner as said judge shall prescribe. The Commissioner shall also lay before the judge all the original papers and evidence in the case, to- gether with the grounds of his decision, fully set forth in writing, touching all the points involved in the reasons of appeal, TO WHICH the eevision shall BE confined :" in other words, the revision by the judge shall be confined to the points involved in the reasons of appeal. He is to ^^ hear and determine such appeals;" but he is to revise the decision of the Commissioner only in respect to the points in- volved in the reasons of appeal. If the Commis- sioner did not err in those points, his decision upon those points must be affirmed, although the judge should be of opinion, upon the evidence and the merits of the whole case, that the patent ought to have been granted. So, if the judge should re- verse the decision of the Commissioner upon those points, it tvould seem that the patent must issue, although the judge should be of opinion that, upon the whole case, as it appears in evidence before him, the patent ought not to issue. I say this would seem to be the effect of such a decision ; be- cause the effect of such a decision upon the farther proceedings of the Commissioner would depend upon the question whether the reasons of appeal A GUIDE TO INVENTOKS. 279 tlius affirmed, by the judge, involved the merits of the case. If they did not, the Commissioner might well say, It is true, I erred in those points ; but my objections to the issuing of the patent still exist untouched by the decision of the judge. The words of the act are, that the judge's decision ^^ shall govern the farther proceedings of the Oommis- sioner in such case." This must apply only to so much of the case as is involved in the reasons of appeal; and the appeal itself can be considered only as an appeal to so much of the decision of the Commissioner as is affected by such reasons. If, therefore, after the judge shall have decided in favour of the applicant upon the points involved in his reasons of appeal, other sufficient reasons remain for rejecting the claim for a patent, un- touched by the decision of the judge, it would seem that the Commissioner might properly still reject it. Whether such new rejection would be subject to appeal, is a question which may be left, as well as the effect of the judgment of the judge in regard to the subsequent proceedings of the Commissioner, to future decision, as cases may arise, requiring a decision upon those points. For these reasons, I doubt very much whether it was competent for me to decide in this case, that Mr. Arnold has lost his right to a patent by suffering the machine to be in public use for more than the two years before his application for a patent. So much, therefore, of my former opinion on this ease may be considered as extra-judical and withdrawn, 280 PATENT OFFICE AND PATENT LAWS. [and the remaining part of the former decision stand as the final judgment of the court.] Case IV. This was an appeal brought by Ealph Pomeroy from a decision of the Commissioner of Patents. The features of the case, as they were presented to the judge, were rather of a novel character. It appears that a patent issued to Mr. Pomeroy for an invention, of which he claimed to be the dis- coverer, in 1841. Subsequently to this period, Alexander Connison appeared before the Commis- sioner, and claimed a patent for the same (or a similar) invention ; and, as it appeared to the Com- missioner to be a case of interference, he notified the parties of the facts, and fixed a day for a hear- ing. At this hearing, the evidence and the facts established that Mr. Connison, and not Mr. Pome- roy, was the true inventor; that the patent pre- viously issued to Mr. Pomeroy was prejudicial to the claim of Mr. Connison; and that a patent should issue to the latter. The Commissioner ac- cordingly so ruled, and allowed a patent to Mr. Connison. The question, therefore, was, not an appeal because the Commissioner had refused a patent, but because he had granted one, by which grant the original patentee became an infringer on the subsequent patentee. Decision. There is no section or clause of either of the A GUIDE TO INVENTORS. 281 acts [of 1836 and 1839] whicli gives a patentee a right of appeal from the decision of the Commis- sioner granting a patent to another person, unless that right be given by the 8th section of the act of 1836. [Section of this act cited.] In the case stated in the 8th section of the act of 1836, the judge is only "to determine which or whether either of the applicants is entitled to receive a patent as prayed for." He can only act in a case where there are contending applicants for a patent; and those applicants must have "prayed for" a patent. A patentee is not an applicant. [Mr. Pomeroy had already obtained a patent, and was the appellant.'] He has already obtained all he ashed for. If his patent can be supported at law, he has nothing to fear. The grant of a subsequent patent errone- ously to another cannot affect the validity of his patent. The judge is to determine which or whether either of the applicants is entitled " to receive " a patent. It would be absurd to say that a patentee is entitled to receive the patent after he has already received it. It is true that the 8th section, after speaking of applicants and patentees, says, if either shall be dissatisfied, he may appeal. The word " either" may be explained by applying it to the words, "such applicants ;" i. e., "either" of "such applicants." [Mr. Connison does not ap- peal, and Mr. Pomeroy cannot be regarded as an applicant, because he already holds a patent.] * * * This construction of this section is corroborated by reference to it in the 11th section, which gives 24* 282 PATENT OFFICE AND PATENT LAWS. a right to file a caveat, and where it is said that, " If, in the opinion of the Commissioner, the spe- cifications of claim interfere with each other, like proceedings may be had in all respects as are pro- vided in the case of interfering application's, (i. e., in the 8th section.) * * * j am therefore of opinion that the legislature designedly limited the authority of the judge to the decision of the ques- tion, " which or whether either of the applicants is entitled to receive a patent as prayed for ;" and that as, in this case, there is only one applicant, I have no jurisdiction in it under the 8th section of the act of 1836. The only other case of appeal provided for in the statutes is, where the applica- tion for a patent is rejected; and as the apphca- tion of Mr. Connison was not rejected, but sus- tained, I have no jurisdiction of the appeal of Mr. Pomeroy, who is not an applicant. [Case dis- missed.] Case V. Mr. Benjamin M. Smith was an applicant for a patent for a machine for separating garlic from wheat. A patent, however, had previously issued to Messrs. Flickenger and Krim, and the Commis- sioner was of opinion that the patent asked for would interfere with the one already granted to these parties. He accordingly notified the parties interested, and a hearing was appointed. Certain evidence was taken at this hearing ; but as some informality had occurred in the manner or mode A GUIDE TO INVENTORS. 283 of transmitting it, conflicting with the rules laid down by the Patent Office, the Commissioner ad journed a final hearing to a later day. In his notification to Mr. Smith, the appellant, of post- ponement, he says, "The evidence on their part," the patentees, " being informal," in the manner stated, " the hearing will be resumed on the 27th of February, 1843," and "the case is open for the reception of farther evidence taken and trans mitted according to the rules in the enclosed cir cular." At this final hearing, the evidence being taken and submitted in a formal manner, and it appearing to the Commissioner that the patentees were the true inventors, he decided that they were entitled to their patent. From this decision Mr. Smith appealed, filing two distinct reasons therefor. Decision. The reasons of appeal are : 1. That the Commissioner could not lawfully postpone the hearing of the case from the 19th of December, 1842, to the 27th of February, 1843, on account of any thing appearing in the depositions which had been informally transmitted ; because, by the 4th rule, which he had made in respect to the taking of evidence to be used in contested cases before him, he had precluded himself from considering any "evidence, statement, or declara- tion," "upon the day of hearing, which shall not have been taken and filed in compliance with 284 PATENT OFFICE AND PATENT LAWS. these rules," unless in the case provided for in that rule, which case is not applicable to these patentees. The applicant contends that it was his right to have the case decided on the 19th of De- cember, 1842, (the day assigned for the hearing,) upon such legal and competent evidence as was then before the Commissioner, who had no au- thority, it is contended, to postpone the hearing without the consent of the applicant, .upon any ground appearing in the depositions informally transmitted. 2. The second reason of appeal is, " that the appellees did not give a sufficient time for the ap- pearance of the opposite party to cross-examine the witness, as required by the rules for taking evidence; and that, therefore, the deposition taken by the appellees on the 23d of February, 1843, is not legal ; and should not have been entertained in deciding the case, for the appellant would have been required to travel 400 miles in three days, to appear at the time appointed for taking the evi- dence, which is obviously impossible." * * * The question arising on the first reason of ap- peal is, whether the Commissioner was bound to hear and decide on the merits of the case upon the evidence which was regularly taken and trans- mitted to him, and which, according to his rule for taking and transmitting evidence, he could, on the 19th of December, 1842, have considered upon the hearing of the matter at issue, or whether he had a right to postpone the hearing, to enable the A GUIDE TO INVENTORS. 285 patentees [the appeHees] to cure an informality in the transmission of their evidence, if he should deem stich a postponement necessary to farther the ends of justice — giving, at the same time, to both parties, an opportunity to procure additional testimony. * * * It is contended by the counsel of the appellant, not only that the Com- missioner cannot consider the deposition, inform- ally transmitted, as evidence upon the hearing of the matter in issue, but that he cannot look into it for any purpose, and therefore there was no cause whatever for postponing the hearing; and that, for that reason, the decision of the Commissioner, upon the merits of the case, ought to be reversed. But the prohibition contained in the rule is, not to the Commissioner's looking into the deposition, thus informally transmitted, or to his reading it and ascertaining its contents, but to his consider- ing it on the day of hearing, as evidence, touching the matter at issue. The Commissioner does not CONSIDER it, upon the day of hearing, as evidence, touching the matter at issue, and in that respect complied with his own rule. * * * The rule does not say what the Commissioner shall do, in consequence of such notice, whether he shall re- ceive the testimony, although taken without rea- sonable notice, or whether he shall postpone the hearing ; so that, if the patentees had given such notice to the Commissioner, he would have still been as much without power to postpone the hear- ing as he was on the 19th of December, 1842. 286 PATENT OFFICE AND PATENT LAWS. * * * There is nothing in the laws relating to the Patent Office, nor in the rules adopted hy the Commissioner, to prevent him from postponing the hearing of a cause. * * * ^s to the second reason of appeal, namely, that sufficient time was not given to Mr. Smith to be present at the taking of the deposition on the 23d of Febru- ary, 1843, it is sufficient answer to say, that the objection was not made at the hearing. [Decision of the Commissioner affirmed.] Case VI. This was an appeal from the decision of the Commissioner of Patents, by John Cochrane, re- fusing to grant him a patent for a "machine for steering vessels, styled the " spring tiller self-com- pensating steering machine." Mr. Cochrane de- scribed his invention in his specification as fol- lows : " The nature of my invention consists in applying the endless screw or worm, working in cogs, on the periphery of a quadrant, to the mov- ing or holding of the rudder ; and also in the ap- plication of springs to compensate for the action of the sea on the rudder." The Commissioner refused him a patent for two reasons — first, be- cause as to supposed improvement, namely, " the application of the endless screw to the cogs, on the periphery of a quadrant," it was not the inven- tion of an improvement ; second, because as to the improvement, namely, " the springs on the tiller," it would interfere with a patent abeady granted to A GUIDE TO INVENTORS. 287 Henry "Waterman. From this decision Mr. Coch- rane appealed, grounding his reasons as follows, which will be gathered from the — Decision. 1. That application of the endless screw, &c., is an invention of an improvement on the machinery of steering vessels, within the meaning of the 6th section of July, 1836. 2. That he is the first inventor of the spring tiller, and therefore that the patent ought not to have been granted to Waterman, and ought now to be granted to him, Cochrane. The Commissioner, in stating his reasons for his decision, contends that the substitution of a known mechanical equivalent is not an invention within the patent law; and I think he is right. In some machines, the moving power is com- municated by a band. If I were to substitute a pinion for the band, I do not think it could be considered as an invention for which I could ob- tain a patent. Upon the first point, therefore, the decision of the Commissioner is affirmed. [The second reason was determined by the weight of testimony, and can serve no purpose here.] Case VII. This was an appeal, brought by Solomon C. "Warner, from the decision of the Commissioner, to test the question of originality of invention. The only part of the decision which it is of interest 288 PATENT OFFICE AND PATENT XiAV^S. here to notice, is that relating to. what, in the legal opinion of the Chief Justice, constitutes an inven- tion or discoro-y, within the meaning of the patent act. His decision, thei-efore, on this point, summed up, amounts to this, "that any combination of old inventions in machinery, which produces a new and useful effect in the manufacture of the article, becomes the lawful subject of a patent." Case Vni. This case is similar in its technical bearings. It was an appeal brought by A. D. Perry from the decision of the Commissioner, awarding priority of invention to Samuel G. Cornell for an improve- ment in a machine for making lead pipe. Extract from the — Decision. * * * But it is said that Mr. Cornell is not entitled to a patent because he has never reduced the invention to practice. But reducing to prac- tice diifers from bringing into use. There is no law requiring the applicant to reduce his invention to actual use before he can obtain a patent. On the contrary, the use of the invention, before ob- taining the patent, is one of the reasons for refus- ing it. An inventor has reduced his invention to practice when he has so described it upon paper, with such drawings or model as to enable any person, skilled in the art, to make and use the same. He must show that it is practicable, and A GUIDE TO JNVENTORS. 289 the manner iu which it may be used. But it is not necessary that he should do this until he has perfected his invention, and is ready to apply for a patent. He may have conceived the idea years ago, but is not obliged to furnish drawings or a model until he makes his application. In the pre- sent case, the specification, and drawings, and model, have been filed, showing the invention to be practicable, and the manner in which it can be used. It is suggested that Mr. Cornell has not used " reasonable diligence in adjusting and per- fecting" his invention, &c. * * * There is no law that requires the first inventor to disclose his invention within any limited time before applica- tion for a patent ; and there is no limitation, unless the lapse of time be sufficient to show an abandon- ment of the invention, which is a question for the jury, and not for the Commissioner. Nor does the priority of application for a patent decide the priority of invention. Case IX. This was an appeal by Alexander Bain v. Samuel F. B. Morse, from the decision of the Commissioner of Patents, in refusing Mr. Bain's claim to a patent in a question of interference. Mr. Bain, a subject of G-reat Britain, claimed to have discovered and invented a mode of telegraph- ing, "in which the galvanic current is made to produce marks upon paper, 'chemically prepared,' without the intei-vention of magnets or other ma- 25 290 PATEXT OFFICE AI?D PATENT LAWS. chineiy to be moved." ISTo patent of the kind had been issued in this country, and the specification, as described, had not appeared in any printed pub- lication. But upon an examination of the records of the Patent Office, the Commissioner discovered that an application " had been filed by Samuel F. B. Morse, January 20, 1848," (Bain's application having been made the April subsequently,) " and had there been deposited in accordance -with the provisions of the law." It also appeared that Morse had entered a caveat for the same invention as early as January 27, 1847. Xotice was far nished the parties by the Commissioner of the in terference of their claims, and a hearing was awarded. At that hearing, it appearing by the evidence that Mr. Morse waa entitled to a patent, to the exclusion of Mr. Bain, the latter appealed to the District Court. Decision. It is contended by the counsel for Mr. Morse, that the judge, upon appeal, has no jurisdiction of the question of interference : that an appeal is given only upon the question of priority of invention, and that, upon the question of interference, the decision of the Commissioner is conclusive. [The court held that this view of the law was incorrect : that as the law was particular in specifying what kind of evidence should be laid before the court, in cases of appeal, as well as the manner of furnishing the same, it was evident that the act contemplated A GUIDE TO INVEN^PORS. 291 vesting the same authority in the court, in questions of interference, as in other cases. In support of this rendering, the 8th section of the act of 1836 was cited.] The question of priority of right or invention necessarily implies interference. The Commissioner, before he could decide the question of priority, must have decided that of interference, for without interference, there can be no question of priority. Before I can have jurisdiction of the question of priority, I must be satisfied that there is an interference ; and I must decide the question of jurisdiction, as well as any other question which arises in the cause. * * * One of the reasons of appeal in this case is, " That there is no real and substantial interference between the two ap- plications." The question of interference, there- fore, is involved by the reasons of appeal, and must be decided by the judge. * * * The question then is, does Mr. Bain claim a patent for any matter, now patentable, for which Mr. Morse claims a patent? To answer this question, it is necessary to ascertain for what patentable matter Mr. Morse now claims a patent. In his specifi- cation, filed January 20, 1848, he says : " What I claim as my own invention and improvement is, the use of a single circuit of conductors for the making of my telegraphic signs, already patented, for numerals, letters, words and sentences, by means of the decomposing, colom-ing, or bleaching effects of electricity, acting upon any known salts that leave a mark, as the result of the said de- 292 PATENT OFFICE AND PATENT LAWS. composition, upon paper, cloth, metal, or other convenient and known markable material. I also claim the invention of the machinery, as herein described, for the purpose of applying the decom- posing, colouring, or bleaching effects of electricity- acting upon known salts, as herein before de- scribed." The Commissioner, in his written de- cision, says ; " Such use of a single circuit is not the point at issue ; nor is this claimed by either party." Said IMorse claims using a single circuit of conductors for a certain pui'pose, or in a certain way, &c. ; and also claims the machinery by which he accomplishes this purpose : said Bain does not specifically mention in his claim using a single cir- cuit, though this must be considered an essential part of his invention and claim, and is necessarily in- volved in the final clause of his claim, to-wit, " So that, in either case, these form the received commu- nication substantially in the manner, and with the effects, described and shown." * * * The Commissioner, in his Ma-itten decision, says, "The invention, it will be seen by reference to the spe- cifications of the parties respectively, does not con- sist in the use of the electric current to make marks upon chemically prepared paper, nor making marks through a single line of conductors ; nor could a claim to either of these devices have been entertained as patentable, as they have been long known." Again, it is said by the counsel of Mr. Morse, " It is admitted that neither could pa- tent the lattery, the circuit, the prepared paper, or A GUIDE TO INVENTOKS. 293 the marhing of tlie electro-chemical process ; it was only a new combination of the several parts, so as to produce a new result, or an old result in a bettei- manner, that either could patent." Again, the Commissioner in his decision says, " It is true, as Mr. Bain asserts, that no one can monopolize the use of air, fire, or water; but it is equally true that any one can monopolize the use of air, fire, or water, upon certain principles of operation, which he may have invented or discovered ; and this is precisely what the respective claimants, in this case, demanded as their rights, and gave rise to the interference, namely: each claimed the right to use, and exclude others from using, galvani- power to mark certain signs upon chemically pre pared paper through a single circuit of conductors." A " single circuit of conductors, consisting either wholly of wire, or in part of wire and in part of earth, for telegraphic purposes, was not new. The signs or signals to be marked were not new, the same having been before patented by said Morse ; and chemically prepared paper, for receiving tele- graphic signs by galvanism, was not new, the same having been patented in England in 1838, by Mr. E. Davy. Moreover, the use of a single telegraphic circuit, for marking the aforesaid signs upon paper, was not new, the same having been before patented by said Morse. Neither party claimed any one, or any two, of the above elemental features. The in- vention of each [claimant] was made up of the three combined; and the advantages claimed to have 25* 291 PATENT OFFICE AND PATEN'T LAWS. been discovered by eacb in tbese combined opera- tions were identical.' If, then, tbese matters are not now patentable in tbemselves, there is nothing patentable in !Mr. ]Morse'3 claim left to be inter- fered with, except his claim of a patent for his in- vention of the machinery described in his specifi- cation, or for his combination of machinery and materials, as described therein. The claim of each applicant, therefore, is reduced to the claim for the combination of machinery and materials which he has invented, and does not include any of the matters claimed in his specification which are not now patentable. These combinations seem to me to be far from identical. !Mr. Bain includes in his combination the use of the perfo- rated paper for composing the communication, and of the style which passes the electric current through the perforated paper, and the machinery for transmitting the same communication to several different places at the same time. It is said that the style is not new, but he makes it an ingredient in his combination ; and in that respect his combination difters from that of ^Nlr. Morse; and it is a very important item in connection with the perforated paper. He includes in his combi- nation, new patentable matter with old matter not patentable, and thereby makes a new patentable combination. This new matter, thus introduced into the new combination, is admitted to be pa- tentable in itself, without combination with the old unpatentable matter ; and indeed it seems to be a A GUIDE TO INVENTORS. 295 great improvement in the transmission of tele- graphic information. But it is said that Mr. Bain is only authorized to obtain a separate patent for each of those inventions, and cannot claim a patent for his new combination of the old and new together. If, however, his new combination of old materials be patentable, it seems to be not the less patentable because it includes the new matter in con- nection with the old. The old matter may not, in itself, be patentable, but, joined to the new matter, a combination may be formed which may be pa- tented. He is not obliged to take separate patents for each new patentable matter. He does not now ask for them ; he may be willing to ask only for a limited use of those new matters, to wit, in combi- nation, and not for an exclusive use of them for every purpose to which they may be applicable. * * * The counsel of Mr. Morse, in argu- ment, has said, " It is obvious, and is admitted by our adversaries, that Morse's instrument is a very different thing, in its form and structure, from Bain's." But form and structure are very im- portant matters in machinery ; and if they enable the operator to do the work in a better manner, or with more ease, or less expense, or in less time, it is no interference, but is an improvement for which the inventor may have a patent. When the appli- cation is for a patent for a combination of machinery and materials, form and structure become sub- stance : they are of the essence of the invention ; and an admission that Morse's instrument is a very 296 PATENT OFFICE ANB PATENT LAWS. different thing, in its form and strncture, from Bain's, is an admission of a fact which is prima facie evidence, at least, that there is no interference between the two, and throws the burden of proof on the other side. There was no evidence laid before the Commissioner of Patents upon the question of interference, so that he must have ad- judged the interference upon a comparison of the two specifications; possibly without considering that the only patent which either could obtain would be a patent for his own combination, all the materials of which Mr. Morse's combination con- sists being old, and not now patentable. The question is not now whether the claims of Mr. Bain and Mr. Morse interfere as to matters not now pa- tentable, but whether they interfere as to matters now patentable; and the only matter now pa- tentable in Mr. Morse's specification, is his own combination of machinery and materials. That combination constitutes his machine ; and his ma- chine is admitted to be a very different thing, in its form and structure, from Mr. Bain's. Form and structure constitute the identity of ma- chinery. The combination consists in form and structure, and the patent, if issued, will, I presume, be issued for the form and structure of the instni- ment. It being admitted that the form and structure of Mr. Bain's instrument is very different from Morse's, there can be no interference in that respect ; and if form and structure constitute the identity of machinery, there is no interference in A GUIDE TO INVENTORS. 297 the two instruments ; and if the instruments are the combinations, or the result of the combinations, for which patents are now claimed, there is no in- terference in the two instruments in regard to any matter now patentable. * * * Adjudged that Samuel F. B. Morse is entitled to a patent for the combination which he has invented, claimed, and described in his specification, drawings, and model ; and that Alexander Bain is entitled to a patent for the combination which he has invented, claimed, and described in his specification, draw- ings, and models, &c. APPENDIX I. EAELT AMERICAN INTENTIONS AND DISCOTERIES. " No matter how far man is separated from his fellows, either on the earth or by time j the general uniformity of his organization is stamped on all his normal devices. Primitiye inventions are universally allied. Under similar circumstances and conditions, the same means are hit npon to reach the same ends. Kindred trains of thought, of resources, and results, characterize the origin and early progress of the most essen- tial arts everywhere : beginning in the same wants, they suggest the same ideas, which are carried out in substantially the same manner. Still, when a primitive people is found shut out from communion with others, isolated from the rest of the world, and deriving no thoughts from' it, some shades of difference, more or less strongly defined, often mark devices discovered by them in common with others; and this, whether occupiers of small islands or wide-spread continents. But after all, this is nothing more than what may be named a variety of expression — the same general idea being differently brought out, just as, in speech, utterance is given to the same thoughts after various idioms. All arts and all machines are hut dialects of one language — reasonings and con- clusions represented in tangible forms and figures — a universal speech, and understood by all men." — Ewbank. It may be of interest to preface this historical mention of early American inventions, by subjoining here a tabular state- ment of the recognized dates of the white colonization of the States respectively, their population, according to the census of 1850, and the density of human life to the square mile. All this may be said to have some connection ■with the subject (299) 300 APPENDIX I. treated of, as showing the lapse of time which has intervened from the periods of colonization, the present individual strength of the several States, and the mental space allowed, for inven- tive genius to thrive in. POPULATION AND DESBtTY IN ISSQ. Maine, colonized in 1604 New Hampshire, " 1623 Yermont, " 1724 Massachusetts, n (fir 1607 Bhode Island, SI 1636 Connecticut, it 1635 New York, (( 1609 New Jersey, th 1614 Pennsylvania, ft 1681 Delaware, CI 1610 Maryland, (C 1631 Virginia, " 1607 North Carolina, iS 1585 South Carolina, it set off in 1671 Georgia, tt 1733 Florida, it properly 1562 Alahama,* *' set off in . 1802 Mississippi, n 169S Louisiana, it 1699 Texas, Si 1690 Arkansas, f ''■ 1836 Tennessee, St about 1750 Kentucky, S( 1775 Ohio, ts properly 1750 Michigan, St 1632 Indiana, tt 1702 Blinois, St 1673 MissourijJ IS properly, , 1682 Iowa, ss 1686 ■Wisconsin, ss 1672 California, " 1 , Oeiullr. 583,169 18.36 217,976 34.26 314,120 30.76 994,514 127.50 147.545 112.97 370,792 79.33 3,097,394 65.90 489,555 58.84 2,311,786 50.26 91,532 43.18 583,034 52.41 1,421,661 23,17 869,099 17.14 668,507 22.75 906.185 15.02 87,445 1.48 771,623 15.21 606,326 12.86 517,762 12.55 212,592 0.89 209,897 4.02 1,002,717 21.99 982,405 26.07 1,930,329 49.55 606,326 12.86 988,416 29.24 851,470 15.37 682,044 10.12 192,214 3.78 305,391 5.66 (in 1854) 301,000 * Originally a part of Georgia ; set off in 1802, and became a state in 1820. t Declared a part of Louisiana, by La Salle, in 16S2, and therefbre a possession of the king of France. Colonists arrived the same year. X Originally n part of French Louisiana, Became a state in 1836. EAELT AMERICAN INVENTIONS. 301 The first of our patent laws was enacted in 1790, up to which time there had been no protection afforded to inventors, other than what enterprise might secure in monopolies, achieved by capital. Some of the colonies of New England, and perhaps a majority of those now embraced in the Middle and Southern States, occasionally voted through their general courts or councils bounties on discoveries and inventions ; but although protection was thus afforded, in one form, the necessities of the times frequently urged the expediency of these authorities cancelling their acts almost as soon as passed. Monopolies, even when authorized by law, were always insecure ; so that enterprise, to succeed at all, was compelled to rely upon its own resources. Under the patent acts of 1790 and 1793, the following was the number of patents issued up to 1800, a period of ten years. FopulatloD. FateatB. Pppnlatlon, 1800. 1800. PatMfa. 183,762 New Hampshire, . 10 211,949 New Jersey, , , 19 154,465 Vermont, . . . 9 64,273 Delaware, , . 1 423,245 Massachusetts, . . 50 341,548 Maryland, . , 10 69,122 Rhode Island, . . 5 880,200 Virginia, . . . 14 251,002 Connecticut, . 30 346,691 South Carolina, 5 686,756 New York, . . . 40 162,101 Georgia, . . . ■ 4 602,361 Pennsylvania, . . 65 Foreign, . . . 6 It is not proposed here to notice all such early discoveries or inventions as have come to light, as forming items of in- terest in our colonial history, but only such,- with their rela- tive connections, as may be regarded as establishing epochs in the revolution of industry and trade. The archives of our his- torical societies and state governments, contain rich treasures, in this respect ; and it is to be deplored that generations now pass away without being privileged to see in print more than they do of the achievements and doings of those who have given their name to the foundation of the American manu- facturing system. 26 302 APPENDIX I. Connecticut. InMay,1728, Samuel Higley, of Simsburg, and Joseph Dewey, of Hebron, petitioned the legislative council of the colony for the exclusive right " of practising the business or trade of steel making" for twenty years, alleging that the first-named petitioner had, " with great pains and cost, found out and ob- tained a curious art by which to convert, change, or transmit common iron into good steel, sufficient for any use, and was the very first that ever performed such an operation in Ame- rica/' Several smiths certified to the truthfulness of the claim, setting forth that they had tried the steel, and were prepared to pronounce it a good article. The legislature thereupon granted the prayer, with a proviso that " the petitioners im- prove the art to any good and reasonable perfection within two years from the date of this act." This was probably the earliest manufacture of steel in Ame- rica ; but the process and machinery required were not at the time described. We are, therefore, without this information. The general assembly at Hartford, at a still earlier day, took measures to encourage the development of the mineral resources of the colony. Several acts were passed by it with this view, among which were the following : " For the en- couragement of such as will lay out themselves upon the dis- covery of mines or minerals, for the public good. It is ordered, By authority of this court, that whosoever expend their time or estate upon such discoveries, and purchase them for the country, he shall be honourably rewarded out of what he doth discover, for the same." [Col. Rec, 52, A. D. 1672.] " The court, for the encouragement of any person that will lay out himself for the discovery of any mines, and minerals, &c., Do order, that whosoever shall make such discoveries, and purchase it for the country, he shall be honourably rewarded out of what he doth discover, as aforesaid." [lb., II., 193, A. D. 1663. " It is ordered that there shall be no monopolies granted or allowed amongst us, but of such new inventions as shall be EARLY AMERICAN INVENTIONS. 303 judged profitable to the country, and for such time as the general court shall deem meet," [lb., 52, 2d ; to which was appended, 1715,] " If any person or persons shall set themselves on work to discover any commodities that may be of use for the country, for the bringing in a supply of goods from foreign parts, that is not as yet of use among us, he that discovers it shall have due encouragement granted to him, and the ad- venturers therein," [lb., 5 ;] vague promises of reward at best. The closing words of a memorial on file in the colonial ar- chives, without date, entitled, "Reasons against a general prohibition of the iron manufacture in his majesty's planta- tions, intended by a clause in the bill now pending, entitled, ' A bill for encouraging the importation of naval stores from America,' " are severely caustic : " VI. It seems a, farther hardship that the subjects [of the crown] abroad should be permitted to forge their ore into bars, but not to run or cast it into pots and other ftnplements, because the same fire, and even the same heat, will suffice for both." Samuel Southworth, of Lyme, in the county of New London, erected a furnace in 1741. Ebenezer Keny, Joseph Hull, Jr., and John Wooster, of I?erby, and Thomas Perkins, of Enfield, obtained permission of the Council to purchase a water right of the Indians, for iron works near the falls of Nangatuck river, in 1760. The legislature granted a loan of £1200 to John Patterson, Eph. Patterson, and Thomas Russel, to build a furnace on the Owesatunnuok river, in 1761. A grist mill was erected in Lyme about the year 1743 ; and to keep it going, was deemed of as much public importance as to keep the furnace there in operation. A slitting mill, or nail factory, was authorized to be put up in Suffield in 1716. Iron works were also authorized to be put up in Salisbury in 1734, which were completed three years later. The same improvements became the subject of litigation, and continued to form a subject of legal dispute until the breaking out of the war of independence. A forge and other ironworks were in opera- tion in Colebrook for some years prior to 1780, in which latter 304 APPENDIX I. year " they took fire, and were burned to the ground." In 1775, Nathaniel Niles, of Norwich, addressed a spirited memo- rial to the general court, which contains these opening words : ' ' That, by reason of the present unhappy controversy between Great Britain and British America, and the consequent inter- ruption of trade, it is become of very interesting importance to these colonies that the article of iron wire, on which the woollen and cotton manufactory so greatly depend, should be manufactured in these colonies," &o. Niles built works for the purpose of making wire, and continued the trade until after the re-establishment of peace. A proposition was intro- duced into the legislative council in 1786, offering a premium on the manufacture of nails ; but it was negatived in the upper house. Connecticut seems to have taken the initiative in other branches of inventive talent and industry. " The memorial of Abel Parmlee, of New Haven," dated Oct. 19, 1736, and ad- dressed to the general court, represent* that he " has been at great expense, of both time and money, in order to gain the art and skill of casting large bells for the use of churches, schools, &c.," and desires that the legislature will grant him a monopoly of the trade for twenty years, which that body refuses to do. Parmlee asserts that " this, his own," is the first attempt to cast bells in the colonies. Polishing crystals was an art discovered by Abel Buell, in 1766, who says that his " method of grinding and polishing crystals and other stones of great value, all the growth of this colony," as a discovery, will be " a great saving and advan- tage" to the colony, " against the importation of such stones from abroad." The same person, (who had been pardoned as a convict in the colonial prison for life,) three years after, (1769,) informed the council that he had discovered a process for casting printing type, and prayed that body for a contribu- tion to aid him in his undertaking, (the erection of a foundry,) which was granted. That he succeeded in his enterprise, is evident from specimens of his work still preserved. Leonardus Chester erected a pin factory, and had it in opera- EARLY AMEEICAN INVENTIONS. 305 tion in 1775 ; and in 1783 Benjamin Hauks claimed to have invented a clock " that shall vrind up itself," which appears to have been effected " by help of the air." Barnabas Deane (1786) asked council to appropriate to him a monopoly, or " exclusive right and privilege of erecting and making use of" a steam engine, " touching the manner and method of con- structing vrhich and its use," he professed a perfect familiarity. Subsequent and prior inventions or discoveries, not mentioned, may be summed up briefly as follows : the drill plough, in- vented by Benoni Hilliard of Saybrook, in 1765 ; a pottery proposed to be erected by Samuel Dennis of New Haven in 1789; Thomas Darling (1747) obtains the exclusive right to manufacture glass in the colony for the period of twenty years ; Christopher Leffingwell erects a paper-mill in Norwich in 1768, and on his products is authorized to receive a bounty ; a " torpedo to destroy an enemy's shipping," ' was invented about the year 1775, but the name of the contriver does not transpire ; " a new mode of constructing water-mills," is claimed as a new invention by David Bushnell, of Saybrook, in 1784 ; a tide-mill, for grinding grain, &c., is invented by John Shipman of Saybrook, in 1774 ; Samuel Loomis of Colchester, (1787,) announces that he "is prepared to intro- duce a new epoch" in the " manufacture of wool, cotton, hemp, flax, and silk, upon a new constructed plan ;" James Wallace, (1776,) memorializes council on the subject of stocking making, proffessing to be master of his trade, " both in the silk, cotton, thread, and worsted way." " John Davis, clothier," pro- poses to " instruct the people in the process of woollen manu- facture," 1736 ; Richard Rogers of New London, asks for a premium or monopoly of the trade of making ■" fine linen cloth," and " canvass for shipping," 1724 and 1735 ; John Bulkley of Colchester, in view of the general want, proposes (1753) to import from Scotland a flax dressing machine ; Thomas Barrens " and 31 others" are incorporated into a company to manufacture silk cloths, 1788 ; Edward Hinman had a factory " for making molasses from corn stalks" in 1717 ; John Prout, Jr., produced linseed oil in 1718 ; John Jerom 26* 306 APPENDIX I. and Stephen Jerom, Jr., propose to set up " eyaporating pans for the making of salt," 1746 ; William Pitkin engages in the snuff business, 1784 ; and Samuel Williard and others erect a potash factory, 1741. Speci.ll acts ■were passed respecting silk — one was adopted in 1732, one in 1783, and one in 1784. The last clause of the latter is as follows : " That whoever shall make any raw silk from worms and mulberry trees, of his own raising, within this state, by properly winding the same from bolls or cocoons, after the 1st day of July next, and for ten years next there- after, shall have and receive as a bounty from the treasury of this state 2d. lawful money, for each ounce of such silk, well dried, which such person or persons shall make, as aforesaid ; which bounty shall be paid out of the duties arising on the importation of foreign articles into this state," &e. [May, 1784. Eli Whitney invented the cotton gin, 1793, one of the most important discoveries of any age. Virginia. Virginia was honoured with a saw-mUl, driven by water, at an early day in its colonial history. The following is the title of an old pamphlet issued in 1650. " Virginia's discovery of silk worms, with their benefit, and the implanting of mulberry trees. Also, the dressing and keeping of vines, for the rich trade of making wines there. Together with the making of the saw-mill very useful in Virginia, for cutting of timber and clapboards to build withal, and its conversion to other as pro- fitable uses. By Ed. Williams. London: 1650." What the author means by " other as profitable uses " may be gathered from his — " Explication of the saw-mill, an engine wherewith, hy force of a wheel in tlie water, to cut timber with great speed. " This engine is very common in Norway and mountains of Sweden, wherewith they cut great quantity of Dealbords; which engine is very necessary to be in a great Towne or For- rest, to cut Timber, whether into planks or otherwise. This EARLY AMERICAN INVENTIONS, 307 heer is not altogether like those of Norway, for they make the piece of Timber approach the sawes on certaine wheels with teeth ; but because of reparations which these tooth'd wheels are often subject unto, I will omit that use, and in stead thereof, put two waits (weights) about 2. or 300. pounds weight apiece, whereof one is marked A. the other B. The chords wherewith the said weights doe hauge, to be fastened at the end of the 2-pieces of moving wood, •which slide on two other pieces of fixed wood, by the meanes of cer- taine small pulleys, "which should be within the house ; and so the sayd weights should always draw the sayd peeces of moving -wood, ■which, advancing always toward the sawes rising and falling, shall quickly be cut into 4. 5. or 6. peeces, as you shall please to put on sawes, and placed at what dis- tance you will have for the thicknesse of the planks or bords ye will cut : and wheen a peece is cut, then let one with a Lever turne a Kowler, whereto shall be fastened a strong chord, which shall bringe baoke the sayd piece of wood, and left again the weights ; and after, put aside the peece already cut, to take againe the sawes against another peece of wood. Which once done, the ingenious Artist may easily convert the same to an instrument of threshing wheat, breaking of hemp or flax, and other as profitable uses." A rude engraving represents this primitive contrivance ; and the "portrait" certainly shows it to have been a very different piece of mechanism from the steam mills driven by " ingenious artists" in our time. Who at that day could have conceived that in two centuries the wonderful invention of Williams would have been superseded in the manner it has, by steam saw- mills and M'Cormick reapers, since, until that time, the know- ledge of slitting boards had not been mentioned in history, though Ausonius speaks of the " ripping of marble slabs," by means of machinery driven by contributaries of the river Moselle. The first saw-mill erected in Norway, of which we have any account, (referred to above,) was in 1530. The British Ambassador to Rome, Bishop Ely, mentions the exist- ence of saw-mills in the Papal States in 1555 ; but it is known 308 APPENDIX I. that saw-mills had been in use in Madeira as early as 1420, and at Breslau 1427. James Rumsey, (a Marylander,) as an inventor, contributed much to the early useful arts of this state. His principal claim, that of the steamboat, ■will be treated of under the head " Pennsylvania," " New York," and " Maryland." In Slater's Memoir, Append., p. 446, it is stated that in 1620, " one hundred and fifty persons came out to Virginia to carry on the manufacture of silks, iron, potash, tar, pitch, glass, salt, (fee, but they did not succeed." Rhode Island. . In Hunt's Merchant's Magazine, vol. XIX., page 650, a writer attempts to show that the first regular cotton -factory built in the United States, was at Byfield, Mass., in 1793. He says, " Mr. Samuel Slater had, perhaps, a small spinning establishment previous, at Pawtucket, R. I. ; but the one at Byfield was the first regular factory." In the same work, volume XX., page 107, this statement is denied by another writer, who says that Mr. Slater's establishment at Pawtucket was in active operation in 1790, three years previously. And the writer adds, "Some attempts had been made prior to spin cotton by water-power, and some small machines, of rude con- struction, were shown Mr. Slater on his arrival at Pawtucket, on which cotton had been spun from rolls prepared by hand in families — the improved modes of preparing the cotton for spinning on carding cylinders and roving machines, on the Arkwright plan, being entirely unknown and unattempted." In corroboration of this statement, awarding the credit to Rhode Island, over Massachusetts, of possessing the first cot- ton factory in the colonies and states, Mr. Burgess, an emi- nent citizen of Providence, remarks, in the course of an ad- dress,* " A circumstance, worthy of the attention of the whole nation, and worthy also of a fair page in her history, is the art and mystery of making cloth with machinery moved by * See also Smith Wilkinson's letter, ^osi page 310. EARLY AMEKICAN INVENTIONS. 309 water power. This was introduced into Bhode Island, and commenced in Pawtuoket, four miles from Providence, about the same time that the American system was established, by theimpostlawof July4, 1789. * * * A yard of cloth then, made by the wheel and loom, cost fifty, and never less than forty, cents. It may now (1836) be had for nine or ten cents." Mr. Slater came out to America without drawings, models, patterns, or machinery. He relied solely upon his memory of what he had seen in England, and this intuitive faculty did not forsake him on trial. The following letter is enrolled with the archives of the Historical Society of Rhode Island. " Sir — I herewith present to the society the shears with which the first cold or cut nail was formed in this country, and probably the first ever cut in the world. They were obtained from Mr. Jeremiah Wilkinson, of Cumberland, whom I visited a few months since, in company with Mr. David Wilkinson, for the purpose of obtaining some information relative to the commehcement of the cold or cut nail business in the country. Mr. Wilkinson is eighty-six years of age the present month, and is a very intelligent old gentleman. He informed me that he followed the business of making hand cards in the year 1776, at which time he experienced great difficulty in obtain- ing tacks for the purpose of nailing on his cards, owing to the hostilities between this country and Great Britain, the conse- quent high price of English tacks, and the tediousness of the process in making them in this country in the old mode by hammering. These considerations suggested to Mr. Wilkin- son the idea of making them cold ; and for the purpose of try- ing the experiment, he with these shears cut from the plate of an old chest lock a number of tacks, which he headed in a smith's vice. Succeeding in this experiment, he from that time made all the tacks he required in his business, in the same way, from sheets of iron. Subsequently he made larger nails, such as shingle and lath nails, from old Spanish hoops, which were headed in a clamp, or tool, confined between the jaws of his vice. I obtained one of the heading tools, which 310 APPENDIX I. I also present ■vritli the shears. The first improvements in the method of cutting and heading the nails, •svere made by one Eleazer Smith, from whom I expect soon some farther account of the business, when I will lay it before the society. Jlr. Wilkinson also made during the revolutionary war, pins and darning needles, from wire drawn by himself, samples of which I also present. * * * " Respectfully, Samuel Gkeene. "Pawtucket, July 19, 1827." • Mr. Samuel Slater, to whom Rhode Island owes so much for its manufacturing prosperity, arrived in this country in 1790,* and the same year was engaged by Messrs. Almy & Brown, of Pawtucket, cotton fabricators, to superintend their factory, which was a, wretched affair. Here, by degrees, he laid the foundation of his fame. The following letter from Mr. Smith Wilkinson, written at the request of Slater's biographer, fur- nishes such facts as may be needed to illustrate the opening career of the pioneer, in his line of business : " Mr. Samuel Slater came to Pawtucket early in January, 1790, in company with Moses Brown, William Almy, Obadiah Brown, and Smith Brown, who did a small business in Provi- dence, at manufacturing on billies and jennies, driven by men, as also were the carding machines. They wove and finished jeans, fustians, thicksetts, velverets, &c., the work being mostly performed by Irish emigrants. There was a spinning frame in the building, which used to stand on the southwest abutment of Pawtucket bridge, owned by Ezekiel Carpenter, which was started for trial, (after it was built for Andrew Dexter and Lewis Peck,) by Joseph and Richard Anthony, who are now living at or near Providence. But the machine was very imperfect, and made very uneven yarn. The cotton for this experiment was carded by hand, and roped on a woollen wheel, by a female. Mr. Slater entered into contract with Wm. Almy and Smith Brown, and commenced building * So stated in tis Memoir; but in fact ho ai'rived in December, 1789. EARLY AMEEICAN INVENTIONS. 311 a water-frame of twenty-four spindles, two carding machines, and the drawing and roping frames necessary to prepare for the spinning, and soon after added a frame of forty-eight spindles. He commenced sometime in the fall of 1790 or in " the winter of 1790-1791. I was then in my tenth year, and went to work for him, and began at tending the breaker. The mode of laying the cotton was by hand — taking up a handful, and pulling it apart with both hands, and shifting it all into the right hand, to get the staple of the cotton straight, and fix the handful, so as to hold it firm, and then applying it to the sur- face of the breaker, moving the hand horizontally across the card to and fro, until the cotton was fully prepared. New Jersey, Vermont, louisiana, Kentucky, Georgia, Florida, Alabama, Ohio, &c., &c. Early discOYCries and the application of machinery in these states, are, as constituting an item of historical information, involved in the industrial history of other states, of which they were then either territorial parts or elements of one social and industrial system. It is difficult, therefore, to locate with certainty, early discoveries or inventive adaptations in either of them ; and they are, in consequence, passed over with this explanation. Massachusetts. 1652. — John Clark allowed by th« general court 10s. for three years from every family who should use his invention for saving wood, and warming houses at little cost. After trial for this period, the same privilege was granted him during his natural life. 1641. — The general court enacts that, as Samuel Winslow has invented a method of manufacturing salt, none are to make this article for ten years, except in a manner different from his, provided he set up his works within a year. 1656. — John Winthrop, son of the governor, granted by the same authority, the sole privilege for making salt for twenty years, after his particular method. 312 APPENDIX I. 1671. — Richard Wharton a lawyer, of Boston, and Company, have certain special privileges from the legislature for the manufacture of tar, pitoh, turpentine, &c. 1672. — The general court reply to several hatters, who wished to have as a company peculiar privileges, that these should be " granted to them, when they should make as good hats, and sell them as cheap, as those imported were." 1722. — The legislature offer, by an act passed, a premium for duck and linen made in the province, of domestic material. 1640. — The general court offer 3d. on every Is. worth of linen and cotton cloth made in the colony ; but this act was repealed the same year, " because of the public burdens." 1701. — The legislature, to encourage the sowing and manu- facture of hemp, raised in the province, engage to pay to any company, " who purchase this article at Aid. a pound, a bounty of id. on each pound so purchased." 1766. — In this year Jacob Perkins was born — one of the first of American inventors, in point of time, and among the most ingenious, as regards the triumphs of genius. He took out in this country seventeen patents — the first being for nail making machinery, 1799. His career was an eventful and remarkable one ; but our want of space forbids any attempt here to trace it in detail. He was in turn a bead-maker ; a shoe-buckle manufacturer ; a plater ; a die-sinker ; a nail manufacturer ; an improver of engines and hydraulic machines ; an engraver ; the inventor of the stereotype check-plate ; also of a method of boring out cannon, and perfecting articles of gunnery ; likewise a method of softening and hardening steel, by which engraving was much facilitated ; demonstrated the com- pressibility of water, a problem that had baffled the ingenuity of natural philosophers for centuries ; invented the bathometer and the pleometer ; and finally closed his life in experimenting on the theory of steam, and itg appliances. The first mill in New England was a wind-mill, erected near TVatertown. It was taken down, and subsequently re- built near Boston, 1632. In 1733, some water-mills were put EARLY AMERICAN INVENTIONS. 313 up iu the colony. Printing soon after followed — the Bible being printed at Cambridge as early as 16G4, and translated into the Indian language. In 1786, Eobert and Alexander Barr, brothers from Scotland, were employed by a Mr. Orr to erect carding, spinning, and roping machines in his works at East Bridgewater, where they were made.* On the 16th of November, 1786, the general court, to encourage the machinists, made them a grant of £200 for their ingenuity, and afterward added to the bounty by giving them six tickets in the state land lottery, in which there were no blanks. In March, 1787, Thomas Somers, (an Englishman,) under the direction of Mr. Orr, also constructed a machine, or model ; and by a resolve of the general court, of the same date, £20 were placed in the hands of Mr. Orr to encourage him in the enterprise.. "It is believed," says Slater's biographer, "that the above, in 1786, was the first jenny and stock card made in the United States." Mr. Orr is also said to have been the first to manufacture muskets in the United States ; and it is probably true that he was the first to manufacture nails by machinery. Mr. Hallet, iu a speech some years ago on the subject of opening a railroad communication between Boston and Albany, N. Y., adverted to the early efforts of enterprising individuals in Massachusetts to establish a manufacturing system. He said, "In 1787 the first cotton-mill in this state was gotten up in Beverly, by John Cabot and others ; and iu three years it was nearly given up, in consequence of the difficulties which the first beginning of the development of the vast resources of domestic industry in our state had to en- counter." The proprietors of this mill, in 1790, memorialized the legislature for aid, to " save them from abandoning their scheme altogether." Such was the foundation of the cotton business of Massachusetts — the little mill at Beverly, (Byerly.) '■'^ How far tliis statement conflicts with Mr. Slater's claim to pione<^rship or originality in tbc cotton business, the reader must determine. 27 314 APPENDIX I. New Hampshire. The arohiyes of New Hampshire contain little of. moment, aa a subject of inquiry here. In 1786, Benjamin Dearhorn, of Portsmouth, memorializea the legislature for " encouragement," as the inventor " of a new constructed printing press ;" which prayer the legislature grants hy enacting a law for his benefit. The same individual, the year succeeding, petitioned the legislature for a monopoly of " making and vending a hand engine for throwing water," and also " a balance or scales on a new plan ;" and the council gave him the privileges asked, for a period of fourteen years. 1789. — Oliver Evans, a citizen of the state of Delaware, pe- titions the legislature, in that " he hath invented, discovered, and introduced into exercise, two machines for the use of flour-mills, one of which, denominated by the said Oliver Evans an ' elevator,' is calculated by its own motion to hoist the wheat or grain from the lower floor, and the meal or flour from the stones of any mill, to the upper loft of such mill ; the other, denominated a ' hopper-boy' is so constructed as to spread the meal over the floor of a mill to cool, gather it up again to the bolting hopper, and attend the same regularly without the assistance of manual labour;" and Mr. Evans prayed for a monopoly of the sale of the machines in the state, which was granted, for a period of fourteen years. 1791. — John Young invents a machine for " carrying smoke," which is to be " applied in altering chimneys." It consists in inserting a tube from the outside through the wall into the chimney, on each floor of the building. Monopoly granted for fourteen years. Delaware. Delaware gave birth to Oliver Evans, a name as much honoured in the chronicles of invention and discovery, as any other. He was the inventor of the land-carriage, propelled by Bteam ; and although that contrivance has been superseded by EARLY AMERICAN INVENTIONS. ol5 the railway and locomotive, and the floating steamer, which did not form one and the same combination in his discovery, it is evident that he contributed to the subsequent success of experimenters in steam appliances, by the knowledge conveyed to them through this medium. His fame also rests on the merits of his discoveries in mill improvements, which, as will be seen by recurrence to the preceding chapter, he persevered in extending to other states beside his own. His grand theory was confined to the construction of a steam land-carriage, which excluded him from the conti'oversy between Fitch and Rumsey, or otherwise, it may be, he might have shown a claim to the original application of steam on water quite as strong in proof as the latter. He says : "About the year 1772, being then an apprentice to a wheelwright, or wagon-maker, I laboured to discover some means of propelling land carriages without animal power. All the modes that have since been tried, (so far as I have heard of them,) such as wind, treadles with ratchet wheels, crank tooth, &c., to be wrought [worked] by men, presented themselves to my mind, but were considered as too futile to deserve an experiment ; and I concluded that such motion was impossible, for want of a suitable original power. But one of my brothers, on a Christmas evening, in- formed me that he had that day been in company with a neighbouring blacksmith's boy, who, for amusement, had stopped up the touch-hole of a gun barrel, then put in about a gill of water, and rammed down a, tight wad ; after which they put the breech in the smith's fire, when it discharged itself with as loud a crack as if it had been loaded with powder. It immediately occurred to me that here was the power to propel any wagon, if I could only apply it ; and I set myself to work to find out the means." Being poor, and the country remaining in an embarrassed condition, conse- quent upon the war, until after Fitch, Fulton, and Rumsey appeared, with their claims to a more useful invention or dis- covery, Evans did not succeed in enlisting the popular belief or sympathies : and so perished his grand conception, with few to appreciate its nature or extent, though the world is indebted 316 • APPENDIX I. to him for its uses as a local power for engines, and in driving locomotives over our railway tracks. New York. The early population of New York, as a people, were more attached to the steady manners, customs, and pursuits of their Dutch ancestry, than to speculative progress. Their inventive skill, therefore, was not remarkable. The following petition, entitled " An application to the Governor for aid to perfect an invention to increase the speed of vessels," was presentod by one John Marsh, in 1693 : " These are to acquaint the Governor yt I am about make- ing A small uessell that shall saile faster than all other by Aboundance : " According as I have allreadye acquainted you with-all — Now in as mouch as This Exsolent art that I have found out will bee mightyly for the Honour and profite of the King and Kingdome of England, and Likewise it will be A meaines to Advance New York ; " Therefore my Eequist is, To the Gouernor That he would bee pleased In the King's behalfe to let me haue as much saill cloth as will make me saills and a Little small riggaine, all which will not coste Above seuen pounds. " Now the Chifest reason why I make this Littell Uessell is to make ye Gouenor sencable That I can doe by my art as I have formarly said. And then if the Gouernor will be pleased to acquaint the King therwith. It may doe well. " I pray you Gouernor do not slight This my art. Least it proue to the Kings disaduantaige ; and Hender yor selfe of benifit that may bee got thereby ; for ±her hath been many arts Heretofore found out. That was slighted and thought as Imposable As this cane bee, before thay was discouered ; as for instancs, at first, who could A belieued that ye wide otione [ocean] should be crost by art of shipping as it is at this time, and likewise who could belieue That such Grat things should bee done by art of Gunpowder as is, and was not ye man of famus memory, C. C. which discouered This Amiricay slighted EAELY AMERICAN INVENTIONS. ■ 317 by England, but Imbraced by spaine and pertaingall [Portugal] to their grat Honour and profile ; and many others Grat dis- coueryes of Arts That might bee instans'd that made Europe to flowrish Aboue other parts of ye world that haue not had the aduantage of such Ingenus men Amoungst them ; I pray denie me not of saills, and if I doe not perform what I proposed, Then I will be bound to pay you double for yor damage and yor saills Againe." " The above Marsh was a carpenter. He is the same that submitted an application to Fletcher, relative to some engine he had invented." [N. Y. 0. M., vol. viii. A cotton mill seems to have been in operation in New York city prior to 1789 ; for Mr. Slater, in applying for the situa- tion at Pawtucket, dates his letter from there, and says, " If," addressing Messrs. Almy and Brown, " you are not provided for, [I] should be glad to serve you ; though lam in the New Yorh Manvfactory, and have been for three weeks, since I ar- rived from England. But wo have but one card, two machines, two spinning jennies, which I think are not worth using," &o. A conflict of opinion still prevails, with respect to the origi- nator or inventor of steam as a propelling power — naturally enough, each state, having the slightest claim to the honour, contesting every inch of ground in its favour. This question is, with as much brevity as the case will admit, disposed of under the head " Pennsylvania." [See below.] Some pin makers came to this state in 1812, and established themselves at Greenwich. This was the earliest attempt at pin making in that commonwealth. Pennsylvania. The first great name which presents itself here, if not in the order of time, at least in primitive eminence, is that of John Fitch. Mr. Fitch in the spring of 1785 conceived the idea of applying steam for the purpose of propelling vessels. He di- vested himself of every other occupation, and set to work sedulously to carry his scheme into effect. He applied to Con- gress, and the legislatures of states for aid, to encourage him 27* 31 S APPEXDIX I. in bis undertaking; but without avail. His next step, un- deterred by rebuffs, Tvas to ask of the seveial states the ex- clusive " right to the use of fire and steam to navigation within their territories ;" " to which prayer Pennsylvania, Xew Jer- sey, Delaware, Xew York, and Virginia responded,"' by grant- ing him what he desired — limiting the right to fourteen years. In a memorial to Congress, five years after, (1790,) he says, " he knew there were a great number of ways of applying the power of steam to the propelling of vessels through the water, perhaps all equally effective ; but this formed no part of his consideration, knowing that, if he could bring his steam-en- gine to work in a boat, he would be under no difficulty in ap- plying its force." Of course. Fitch had possessed himself of some knowledge of Evans' scheme, as is shown in their inter- course. Besides, a Treatise, published in America, in 17S5, (the year in which he conceived his own project.) on the sub- ject of " a steamboat constructed on the river So&ne, under the direction of Marquis Jouffroy, in ITSl," must have fallen into his hands, or at least, by being read and circulated, sug- gested the practicability of such a scheme. Even earlier than this, Thomas Paine's recommendation to Congress, (which was in 1778,) to adopt measures for encouraging the building of steamers on Jonathan Hulls' plan, "to go against wind and tide," secured by patent in England, in 1736, may have di- rected his attention to the subject. At all events, Mr. Fitch, as he voluntarily admits, was not ignorant of the fact that such uses had been made of steam: what he sought to ac- complish was, the application of ascertained means to pro- duce an unattained result. He wished to control steam, as Morse has since controlled and rendered beneficent and ef- ficient, the electrical element. How this was to be done, will appear hereafter. Meanwhile, the model of his vessel was but partially completed. Oliver Evans, in a sworn affidavit, before Joseph Forrest, magistrate, of Washington City, declares that " When John Fitch and his company were engaged in con- structing their steamboat in Philadelphia, he, the said Oliver, suggested to the said John Fitch the plan of driving and pro- EARLY AMERICAN INVENTIONS. 319 pelling the said boat hy paddle or jluUer wheels at ilie sides of the boat, when the said Fitch informed him that one of the company had already proposed and urged the use of wheels at the sides, but that he had objected to them." [Dr. "William Thornton was the party who advised the side wheels.*] * * * " The said Oliver also saith, that some time about the years 1786, 1787, or 1788, the said Fitch informed him that he con- templated employing his steamboat on the lakes, and meant to construct them with two keels, to answer as runners ; and when the lakes should freeze over, he would raise his boat on the ice, and hy a wheel on each side, with spikes in the rims, to take hold of the ice, he calculated it would be possible to run thirty miles an hour." The steamboat had thus far been developed by Fitch between 1786 and 1788. That a model of his invention, perfect or imperfect, existed as early as 1785, is shown by reference to the Minutes of the American Philoso- phical Society,! September 27, 1785 ; also the Minutes of the same, December 2, 1785. At this special meeting. Fitch was personally presented to the members. Desirous of having the opinions of men of weight at that period, he consulted Mr. Daniel Longstreth, Rev. Nathaniel Irwin, and a number of others, of Bucks county ; and sub- sequently Mr. Henry, of Lancaster, " who informed me,'' says Mr. Fitch, " that he was the first person who had thought of applying steam to vessels ; that he had conversed with Mr. Andrew EUioott, as early as the year 1776, and that Mr. Paine, author of Common Sense, had suggested the same thing to him in the winter of 1778 ; that some time after, he (Mr. Henry) thinking more seriously of the matter, was of opinion it might be easily perfected, and accordingly made some drafts, which he proposed to lay before the Philosophical Society, and which he then showed me, but added, as he had neglected to bring them to the public view, and as I had first published the plan to the world, he would lay no claim to the invention." «• Subsequently Superintendent of the Patent Office, f Philadelptiia. 320 APPENDIX I. Mr. Ellicott makes affidavit, that the Bubstance of the conver- Bation referred to by Mr. Henry, as had vith him, is correct and true. Thomas Johnson, in a letter to Governor Small- wood, of Virginia, whom he succeeded in office, dated Novem- ber, 1785, says, " Mr. John Fitch, of Bucks county, in Penn- sylvania, called on me on his way to Richmond. * * * But his genius is not confined to this alone : he has spent much thought on an improvement of the steam engine, by which to gain a first power," &c. The object of Mr. Fitch's journey to Virginia, was to obtain certain navigation privileges, which have been already mentioned. In May, 1788, Samuel Briggs, under oath, makes affidavit, that " in the summer of 1786, I performed some turning work for John Fitch, being patterns for castings for his steamboat." One year later, December, 1787, David Rittenhouse certifies that he " has frequently seen Mr. Fitch's steamboat, which, with great labour and perseverance, he has at length com- pleted, and has likewise been on board when the boat was worked against both wind and tide, with a very considerable degree of velocity, by the force of steam only." John Ewing, " having also seen the boat urged by the force of steam, and having been on board of it when in motion, concurs " with Mr. Rittenhouse. Andrew Ellicott, to whom Mr. Henry refers, in the interview with Fitch two years prior, in 1787, " is gratified to perceive that he has brought his invention to a successful issue.'' Finally, we have the testimony of Dr. Thornton, Fitch's associate in the enterprise. His evidence is given twenty-three years after these events, in 1810, when, as Com- missioner of Patents, and being a gentleman of integrity, he could not have been guilty of perverting facts ; there remained no motive to do so. In his vindication of his former friend and confederate, he expressly declares that he is impelled to the step only as an act of justice to the dead, for whoso honours, as the originator of the steam vessel, Mr. Fulton was then con- tending. " We worked," he says, alluding to his connection with the enterprise, " incessantly at the boat, to bring it to perfection ; and some account of our labours may be seen in the EARLY AMEBIC AN INVENTIONS. 321 ' Travels of Brissot de Warville' in this^country ; and under the disadvantages of never having seen a steam engine, on the principles contemplated, and of not having a single engineer in our company or pay : we made engineers of common black- smiths ; and after expending many thousands of dollars, the boat did not exceed three miles an hour. Finding great un- willingness in many to proceed, I proposed to the company to give up to any one the half of my shares, who would, at his own expense, make a boat to go at the rate of eight miles an hour in dead water, in eighteen months, or forfeit all the ex- penditures on failing ; or, I would engage, with any others, to accept these terms. Each relinquished one half his shares, by making the forty shares eighty, and holding only as many of the new shares as he held of the old ones, and then subscribed as far as he thought proper, to enter on the terms by which many relinquished one half. I was among the number who pro- ceeded ; and in less than twelve months we were ready for the experiment." Everything, meanwhile had been carried on at the instance and under the superintendence of Mr. Fitch " The day was appointed, and the experiment made in the following manner. A mile was measured in Front street, (or "Water street,) Philadelphia, and the bounds projected at right angles, as exactly as could be, to the wharves, where a flag was placed at each end, and also a stop watch. The boat was ordered under way at dead water, or when the tide was found to be without movement. As the boat passed one flag, it was struck, and at the same instant the watches were set off; as the boat reached the other flag, it was also struck, and the watches instantly stopped. Every precaution was taken before witnesses : the time was shown to all ; the experiment declared to be fairly made ; and the boat was found to go at the rate of eigTit miles an liour, or one mile within the eighth of "an hour : on which, the shares were signed over with great satisfaction by the rest of the company. It (the same boat) afterward went eighty miles in a day," or nine miles an hour. This statement refers to the year 1787, still in corroboration of the 322 APPENDIX L testimony already adduceJ. We therefore have these facts to rely upon. 1st, That the original idea of the steamboat was entertained by Mr. Ktoh in 1785, no matter whence or how suggested. 2d, That Oliver Evans called upon him, while the boat was constructing, (which could not have been later than 1786, as in the year following it was completed,) and suggested to him the propriety or expediency of adapting the side wheels; that he was informed Mr. Fitch had already thought of the measure, but had rejected it. 3d, That in KoKemher, 1785, he proceeded to Tirginia, and asked for legislative protection, and a grant of privileges, for navigating the rivers of the commonwealth. 4th, That in the summer of 1786, Samuel Briggs had made the patterns of the castings for his boat, not for his model. 5th, That in 1787, David Rittenhouse, John Ewing, Andrew EUicott,* and others, had been on Mr. Fitch's boat, and had been witnesses of its trial. 6th, That in 1787, Mr. Thornton was one of the number who participated on the occasion, when, to the entire satis- faction and delight of hundreds, the boat performed at the rate of eight miles an hour, at dead water. These facts being established, by voluminous records of the day, but which here have sufBcient foundation in the testimony adduced, we wiU turn to another claimant, who comes forward as Mr. Fitch's real antagonist in the dispute. James Rumsey, a Tirginian by adoption, but a native of Maryland, undertook to maintain a right to originality in the appliance of steam to navigation ; and without doubt there are some yet who advocate this view. Mr. Rumsey was fortunate in attracting the notice of the great men of the day, and was thus formidable to Fitch, who persevered in comparative ob- scurity. Even in Philadelphia, Fitch's home, an association was formed, styling itself the "Rnmseian Society," which em- * Professor of Mathematics and Astronomy, in the Episcopal Academy of Philadelphia. EARLY AMERICAN INVENTIONS. 323 braced such names as Benjamin Franklin, Arthur St. Clair, William Bingham, Benjamin Wynkoop, James Tunchard, John Jones, Levi HoUingsworth, Joseph James, John Wilson, George Duffield, Keed & Forde, Woodross & Sims, William Redwood & Son, agents for Robert Barclay of London, William Turner, John Ross, John Vaughn, Burgis Allison, Charles Vancouver, Mierg Fisher, Adam Kuhn, Samuel Magaw, Samuel Wheeler, Richard Adams, and William Barton. Mr. Rumsey gave John Fitch some trouble and more anxiety of mind, by endeavouring to supplant him, not only in the estimation of the public, but by contesting his right in the legis- latures of the states. Mr. Rumsey's first application to the legislature of New York, was in the autumn of 1788. About the same time, the Rumseian Society of Philadelphia addressed a memorial in his favour to the same body, which was read in the House of Assembly, December 18, 1788, and referred to a committee of three. Opposed to this, was a petition in favour of Fitch, signed by John Ewing, Robert Patterson, Andrew Ellicott, John Smilie, David Redick, James Hutchinson, T. Y. Matlaok, Charles Petit, J. B. Smith, David Rittenhouse, John Poor, and John Ely. John Heart, " Captain 1st U. S. Regt., was on board Mr. Fitch's steamboat on the river Delaware, (on the 16th of Oct., 1788,) saw it perform, and I do certify that it was impelled by the force of steam, at the rate of at least four miles an hour, against the strengtTi of tide ;" and these facts he communicates to the legislature. Other petitions and certificates, of like tenour, poured in ; but Rumsey urged his suit with pertinacity, to which weight was given by the eminent names he had secured to his interest. Meanwhile another claimant appeared. Mr. Henry Voight, of Philadel- phia, professed to have suggested to Fitch the kind of boiler to be used by him, and requested that this part of the grant to Fitch, (if included in the privilege,) should be expunged, and placed to his credit. But Mr. Fitch disposed of this fresh vexation in a summary manner, by citing the Minutes of the Philosophical Society, which corroborated the facts of his me- morial, which was as follows : 324 APPENDIX I. " PhUadoIpliia, IStli Dec, 17SS. " Honoured Sir, [Speaker of the N. Y. Assembly,] '• It is so very iuconTenient for me to attend your assembly this session, to answer the repeated vexatious claims of James Rumsey, I have taken the liberty to enclose to you u, petition to your honourable House, several certificates, it pamphlet, a, report of the committee of Pennsylvania, «tc., all which I pray you to lay before your honourable House. -^ " There is one part of the pamphlet which may require a little ex- plaining, as they hinge much, and their whole dependence of the pipe boiler rests on it ; where, speaking of Mr. Yoight, and the pipe boiler, page 14, I say that I am indebted to him alone for the improveynent, yet it cannot be denied but I laid a drawing of a pipe-boiler before the Phi- losophical Society many montlis before he pretends to have [done so;] therefore I hope your house will not [conceive his words] to convey more than the very expression itself, [and that they] may not be con- strued, instead of an improvement, that they shall convey the idea that I am indebted to him for the invention. ^ * *" JoHS Fitch." The committee of the assembly ultimately reported, ad- versely to both Rumsey and Yoight, and in favour of Fitch. But the subject was, on a recommitment by the assembly, re- considered, and a report made, of which the following is the closing paragraph. As Rumsey in person, as -well as by at- torney, (Mr. Barnes,) was constantly on attendance at the capital, aided also by powerfiil influences, it is not to be won- dered at that he would not allow his claim to slumber, or be rejected, while a chance offered for successfully combatting op- position. This final report of the committee, therefore, is not surprising, since the members of it show a total ignorance of what discoveries had been made prior to the time of Fitch and Rumsey, and since, in their grant to the latter, they virtually assert that he was the inventor of the plan suggested by Ber- noulli the younger, and published in his (Latin) works fifty years previously. John Stevens had also presented u, claim, and the committee — the reader will naturally now inquire, by what exercise of sagacity and justice — classed his invention or discovery with, and disposed of it in, the same category. They say. BAKLY AMERICAN IXVE^'TIONS. 325 They have examined the petitions of the said James Rumsey and John Fitch, with the papers and affidavits accompanying the same, and are of the opinion that the said James Kumsey hath hy actual experi- ment ascertained the practicability of propelling boats by the agency of steam, in a mode and on, principles different from those heretofore used by the said John Fitch; but that the act securing to John Fitch the ex- clusive right of propelling boats by the force of fire or steam for a limited time, is conceived in such general terms, that it would be improper to vacate any part of the said grant, without giving both parties a hear- ing. But the committee are farther of opinion, that nothing in the said act, securing to John Fitch the exclusive right of propelling boats by fire or steam, can be construed to prevent the letjislalure from securing to James Rumseyj for a limited time, the exclusive right of generating steam by hia new invented method of a pipe-hoiler. And, farther, that they have examined the petition of John Stevens, and the drafts ac- companying the same, and are of opinion that the method proposed by him, for propelling boats by steam, does not materially differ in its prin- ciples /rom tlie mode proposed hy James Rumsey ; and that he stands in the same situation, with respect to John Fitch, as the said James Rumsey," ete., etc. Tet here is wliat Mr. Ewing, in his affidavit, asserts, Septem- ber 27, 1785, three years before the question of a pipe-boiler was brought to the consideration of the New York legislature : " Mr. Fitch, in his explanation of this draft to me, hefore he presented it to the Philosophical Society, mentioned that his intention of convey- ing the waters from his forcing pump in a tube that passed through thejire, was, that it might thereby he set a hoiling hefore it entered in the receiver, least the cold water, mixing with the boiler water in the receiver, should impede the generation of the steam." In the legislature of Pennsylvania, Mr. Fitch managed to secure his rights, and to retain them against all opposition. He came off with a similar result in the legislatures of New Jersey and Delaware, but in those of Maryland and Virginia, he still encountered the determined and indefatigable Kumsey. On a petition, addressed to the House of Assembly of Mary- land, is indorsed these words : *' Read 11th November, 1783, and referred to the next session of Assembly.'' It appears 28 326 APPENDIX I. from this, therefore, that he was an applicant to the legisla- ture two years before Fitch conceived the idea of his inven- tion; but it will hereafter be seen that his scheme had not even the merit of being a reiteration of the one proposed by Paine in 1778. It was for a boat, but not a steamboat. The legislature, without inquiring minutely into his invention, and relying upon his representation of it, in 1785 enacted a law in his favour, granting him a monopoly of the navigation of " the creeks, rivers, and bays of the state," on his plan, for the term of ten years. In 1784, the House of Delegates of Virginia passed a law in Mr. Rumsey's favour, to the same effect, with this proviso, " that the exclusive right therein granted may at any time be abolished by the legislature of this commonwealth, upon the payment unto the said Kumsey, his heirs, or assigns, of the sum of ten thousand pounds in gold or silver." And it appears this reserved authority for revoking the grant was put to prac- tical test in 1787 ; for in that year a more comprehensive grant was made to Fitch, whereupon Mr. Rumsey addresses a complaint, in the form of a memorial^ to the legislature. This remonstrance it is not necessary to copy. Suffice that Mr. Rumsey's statement, on the question of originality of claim between himself and Mr. Fitch, was taken as precluding the latter from the honour of having invented the first steamboat, and the grant previously made to him was revoked. Thus Mr. Rumsey ultimately triumphed in the legislatures of Virginia, Maryland, and New York, while Mr. Fitch made good his claim in the assemblies of New Jersey, Pennsylvania, and Delaware. Now let us ascertain with what degree of fairness three of the six states, through their delegates, pronounced in favour of Mr. Rumsey, and against Mr. Fitch. Mr. Rumsey says, " In the month of September, 1784, [one year after his petition to the legislature of Maryland,] he ex- hibited the model of a boat to his Excellency, General Wash- ington, at Bath, calculated for stemming the currents of rapid rivers only, constructed on principles very different from tlie EAKLY AMEKICAN INVENTIONS. 327 present one. Satisfied of the experiment of lier making way against a rapid stream, by the force of the stream, the General ■was pleased to give me a most ample certificate of her ef- ficiency." Washington's certificate was as follows : " I have seen the model of Mr. Rumsey's boat, constructed to work against stream, examined the powers upon which it acts, been eye-vritneas to an actual experiment in running water of some rapidity, and give it as my opinion (although I had little faith before) that he has discovered the art of working boats by mechanism, and, small manual assistance, against rapid cur- rents," &c., certified to be a true copy by " Ben. Walker, formerly aid-de-camp to his Excellency, Gen. Washington.'' Here is no mention of steam. It is neither claimed by the in- ventor, nor alluded to by Washington. The boat was in fact constructed on a contrivance known as early as 1719. The figure may be seen in " Reoueil d'Ouvrages Curieux do Mathe- niatique et Mechanique, par Serviere, 1719." It consists of a boat, "having an axis across it, with paddle-wlieels outside, dipping into the water, while beyond the wheels, on each side, there is a double crank, to which long setting poles are jointed. When the boat is placed in a running stream, the current, actuating the wheels, and causing them to revolve, is intended to work the setting poles, and thus cause the boat to ascend the stream." The same idea had been suggested to a Reading farmer, who tried the experiment on the river Schuylkill about the year 1750 ; but it did not succeed, and was abandoned. To come now to Mr. Rumsey's later claims. Mr. Manuel Eyre, of Philadelphia, says, he was in the Pennsylvania As- sembly in 1784, " and was one of the committee appointed to report on Mr. James Rumsey's petition for his boat to go against the streams of rapid rivers, and that there was no mention made, nor any idea held up, to the committee, that it was to be propelled by the force of steam." "It," says Mr. Rumsey, alluding to the working of his boat, " may be wrought at no greater expense than that of three hands," clearly indi- cating that the expense of fire for generating steam was not in contemplation. Washington adds that the machinery " is so 323 APPENDIX I. simple, that it may be executed by the most common mechanic," thereby showing that the sentence did not, by any means, apply to the construction of a steam engine. But a year sub- sequently, in 1785, the year when Mr. Titch moved in his scheme, Mr. Kumsey claims to have matured his plan of a steamboat, and to have been in advance of Mr. Fitch some months. The reader will remember that in Kovember, 1785, Mr. Fitch passed through Virginia, stopping on his way at Frederloktown ; that the letter he obtained from Governor ■ Johnson to Governor Smallwood bore this date ; and that nothing was spoken or insinuated calculated to induce Fitch to believe he had a rival in the field. Governor Johnson, long afterward, in u, letter to Mr. Bumsey, says, "In October or November, 1785, you told me you relied on steam for your first power, and wished me to promote your having some castings at my brother's and my works" at Fredericktown ; " but the attempt did not succeed." - Mr. Fitch declares that " he publicly made his business known in that town," which, it will be observed, was during the same month and in the same year; and if he made no secret of his invention, it is quite probable that he would have heard of any rival scheme, if any such existed or had been agitated there at the time. Combining these facts, it is strange that Mr. Rumsey should make oath before the legislatures of New York, Maryland, and Virginia, that " all the castings of his boat were furnished at Frederichtown by the first of December, 1785 ;'' for, according to Governor Johnson's showing, on which he mainly relies, the first appli- cation to have the castings made, was afler the 25th of Kovember, 1785, and, even then, the attempt did not succeed. Between the 25th of November and the 1st of December, but six days intervened. Could Mr. Rumsey's castings have been finished within this period — patterns, moulds, castings, and all, including what was necessary to compensate for loss of time on the first failure ? The assumption is preposterous ; and Mr. Rumsey has, by some inadvertence or treachery of memory, substituted the year 1785 for 1786, when Mr. Fitch's scheme had been perfected and practicably disclosed to the EARLY AMERICAN INVENTIONS. 329 world. Or Mr. Rumsey has subsequently discarded water and manual power for steam, and by modifying the features of his original plan, effected a new -combination, and swears that, from the first, they constituted one invention. In no other way could he reconcile the facts, as they must have appeared to him, to his conscience. Frankly, then, Mr. Rumsey was preceded by Mr. Fitch in the matter of originality in the in- vention of the steamboat, whether the former did, or did not, reconcile doubts to his mind, by considering his crank and pole boat, as first shown to Washington, and his subsequent improvement, as one and the same invention. For, however we view the question, Mr. Fitch appears to have been foremost in consummating the practical plan of propulsion by steam ; and if anything else were wanting to fix this fact, it would be Daniel Buckley's affidavit, who was employed by Rumsey in some parts of his work. Rumsey says " at this critical moment he received a letter from Mr. Buckley, near Philadel- phia, stating that a Mr. Fitch of Philadelphia was applying himself to the same end ;" and owing to this intelligence " he engaged in his enterprise with more haste and ardour than ever." Mr. Fitch had not become a resident of Philadelphia until 1786, and Mr. Buckley subsequently declares " the letter written by him to Mr. Rumsey was about the period Brigges was employed in making the patterns for Fitch's castings." Mr. Brigges, as we have seen, says this was in 1786, and con- sequently Mr. Rumsey misdates Mr. Bulkley's letter, by substituting 1785 for 1786. Farther, George Scott, who was employed in welding the seams of the " copper-pipes'' of Mr Rumsey's boat at Fredericktown, says the period when this work was done was in 1786, and that "he knows of no prior work done in that place for Mr. R. on account of his invention." Elizabeth Zimmers, relict of Matthias Zimmers, former partner of Mr. Scott, corroborates this statement. Michael Baltzel certifies that he " turned works for Mr. James Rumsey, of Virginia, for his steamboat, viz., a round piece of wood, about eight inches diameter, and about four feet long, to round his copper works upon. Said turning was done in March, 1786." 28* 330 APPENDIX I. Yet Mr. Eumsoy has sworn that all his castings were finished at this place (Fredericktown) hefore the first of December, 1785. Jonathan ^Morris and John Peters, residents of Fredericktown, and the latter employed in making the tin work of the boat, certify to the same facts. And Joshua Minshall deposes that " he has resided in this town (Fredericktown) abont three years, during which time there have no coppersmiths resided in this town, except Mr. ^Matthias Zimmers and myself, and that I was knowing to ^>Ir. Zimmers making copper works for Mr. Ramsey's steamboat, and am of opinion it was late in the spring or summer before the said Eumsey took said work from Mr. Zimmers, in ike year 17S6." Mr. Ramsey, in a publication of the day, parades a certifi- cate of Christopher Raborg before the public, prefacing it with the remark, that " !Mr. Raborg was the person who undertook to make cocks for my steamboat," and by him he declares "he will prove they were finished at the time he mentioned," namely, in 1785. Mr. Raborg's certificate is as follows: " This may certify that Joseph Barnes (Rumsey's attorney and partner) did bespeak of me four brass cocks, which he said were for the warm springs ; that being disappointed by my journeymen, I got them made by ^Ir. Charles Weir &■ Co. Said cocks I do believe were made in the fall of 1785, but have no charge made of them to ascertain the time with precision." The " warm springs " story, Mr. Rumsey acknowledges, was a ruse for " concealing his enterprise from the public." But Mr. Weir, who was not willing to permit this statement to rest at his expense, avows that he made the cocks for Jlr. Raborg in 1786, and Mr. Cansten, his partner, says " they are charged on the company's account, March 29, 17S(J'' — another curious discrepancy in Mr. Ramsey's statement, still to be recon- ciled. It is needless to pursue the question of originality between Mr. Fitch and Mr. Rumsey farther. It is evident that the pretensions of the latter are admissible only as show- ing, that a stupenduous fraud was contemplated, and consum- mated with impunity to some extent. Between Mr. Fitch and Mr. Fulton, the question assumes a EAELY AMERICAN INVENTIONS. 331 different phase, and is of a more positive and tangible cha- racter. It can only be settled on well grounded facts ; but of what shall these facts consist ? A point must be established, and u, line of demarcation drawn. This point shall be the initiative of the inquiry, and the line define what really consti- tutes discovery. Until this be done, the investigation may go . back centuries, and leave both these gentlemen without credit or award, in inventing the veritable steamboat. It would rob Morse of all merit as an inventor, and refer the discovery of the electric telegraph to Thales, (who lived two thousand years ago,) because the philosopher happened to discover certain properties in amber, but which discovery he did not choose to improve upon, by bringing it to some new and practical result. With the same propriety, if we rob Mr. Pitch of the honour of having invented the first steamboat, every one who has since improved upon Mr. Fulton's scheme, may call himself the in- ventor of the steamboat. The initial point and demarcation line, therefore, must be clearly established somewhere, and this somewhere must be located before the world can, with justice to either party, undertake to decide on the merits of their respective claims. Mr. Fulton was also a Pennsylvanian — born in Lancaster county, in 1765, of Irish parents. He was a man of much genius ; and Colden, in his life of him, has omitted to say nothing that reflects credit to hie memory, or may be wanting to complete the measure of his fame. We have seen of what Fitch's invention consisted. Let us examine that claimed by Mr. Fulton. Mr. Fitch required financial resources, which he could not command ; and it was with difficulty he succeeded in completing his boat of the size and model it was. One of his objections, therefore, to the side- wheels, was, " their waste of power by the fall of the buckets or paddles on the water, and their lift of water in rising," both of which objections would diminish as the size of the wheels, and consequently of the boat, was increased. Fitch's boat was 8 feet wide by 60 feet long : Fulton's boat was 20 feet wide and 150 feet long ; in both cases exactly 7i times the length of 332 APPENDIX I. {he breadth. Did Mr. Fulton in this copy after Mr. Fitch? Did he, in order to obviate the objection raised by Mr. Fitch to the side-wheels, construct his boat so much larger in order to diminish "the Tvaste of power?" If all these were Mr. Fitch's suggestions, and they undoubtedly were, then, on this score, Mr. Fulton has nothing to which he can lay u, just claim. Fulton spent most of the intervening period between 1793 and 1804 in Paris and London, and was a regular correspon- dent of Earl Stanhope, somewhat noted for his experiments in the mechanic arts and navigation. Stanhope, in 1795, revived Genevois' scheme of propelling vessels by means of duck-footed paddles. " The engine which gave them motion was of great power, and acted on machinery that produced a horizontal stroke; but the attempt to exceed three miles an hour failed."* " Paddle-wJieels -weie suggested to his lordship, to produce the required speed, but the hint was thrown away upon the noble projector."! Mr. Fulton, being in England at the time, and the intimate associate of Stanhope, caught at the suggestion which "was thrown away upon the noble pro- jector;" and familiarizing himself with the machinery em- ployed in the experiment, he needed only to adopt the scheme, of whatever improvements it consisted over those of Genevois, Thomason, Symington, Newcomen, Miller, Fitch, or others, and call it his own ! In fact, Dr. Thornton as early as.1810, only two years after Mr. Fulton's success on the Hudson, solemnly pro- nounced against this plagiarism, as being an original invention of Fulton's. " Side-wheels," he says, " could not be claimed [by him] as a new invention ; for their use in navigation had long been known, and published to the world by Dr. John Harris, in his Lexicon Technicum, in 1710, just one hundred years ago," and ninety-eight before Mr. Fulton's success on the Hudson. " If," continues Dr. Thornton, " Mr. Fulton should claim the actual application of steam to wheels, at the sides of a boat, in opposition to the above declarations, I beg * Stuart -j- Ibid. EAELY AMEEICAN INVENTIONS. 333 leave to offer, as a caveat against any such claim, the fire ship of Edward Thomason, in the 10th volume of the Repertory of Arts, which was laid before the lords of the Admiralty in 1796. This contains side wheels, operated on by a steam engine, and was intended to possess the power of moving given distances in all directions, according to the intention of the director." Thomason himself says, " The first thing I had to contrive, was the mode of applying the oars. It struck me that the most simple method would be, by fixing them to one or more fly-wheels on eaph side of the vessel," which plan, after deliberation, he adopted. Miller, 1787, had also thought of side wheels ; but it was Symington, whom Miller called to his aid, who subsequently carried his patron's invention beyond the point he had contemplated. In March, 1802, the steam tug he had built, with side wheels, having Lord Dundas and several others on board, (who avouch for the facts,) "took two loaded vessels, each of seventy tons burden, in tow with great ease through the Forth and Clyde Canal, a distance of nineteen and a half miles, in six hours, with a head wind." His engine was constructed with a steam cylinder twenty-two incJies in diameter, a,ni with a stroke of four feet. Mr. Fitch's engine, (1787,) was twelve inches in diameter, with a stroke of three feet. Mr. Fulton's experiment resulted in his boat attaining a speed of five miles an hour in 1808 ; Mr. Fitch's boat attained a speed in 1787 of nine miles an hour. In fact, Symington does not hesitate to declare, that he was Fulton's instructor, and that the only claim to originality, was constructing a boat for the Hudson, on the plan of that navi- gating the Forth and Clyde Canal ! What inference, therefore, are we to draw, or what shall be drawn from this passage in Dr. Thornton's Vindication : " Mr. Vail, our consul at L'Orient, prevailed upon John Fitch to come to France, where he was solicitous to have steamboats built. But Mr. Vail, finding all the workmen put in requisition, and that none could be obtained to build the boats, paid the expenses of Mr. Fitch, who returned to the United States. Mr. Vail afterward sub- jected to the examination of Mr. Fulton, vihen in France, the 334 APPENDIX I. papers and designs of the steamboat appearing to the company." "We may now dismiss the subject altogether. 1732. — In this year, Mr. Wilcox commenced the manufacture of paper at Joy Mills. He supplied Benjamin Franklin with his printing paper while a publisher in Philadelphia. 1717. — In this year, Thomas Masters asks privilege of lieutenant Governor Keith, to record two patents in the province obtained from the king, one for cleansing, curing, and refining Indian corn, the other for working and weaving pal- meta, chip, and straw hats, &c., wliich prayer was granted. 1782. — The following advertisement appears in the Pennsyl- vania Gazette. " Philadelphia Manufactures, suitable for every season of the year, namely, Jeans, Fustians, Everlastings, Coatings, &c., to be sold by the subscriber at his dwelling house and mami- factory in South Alley, between Market street and Arch street and between Fifth and Sixth streets, on Hudson's Square. " Samuel 'Wetherill." Mr. Wetherill was the first manufacturer of these kinds of goods in America. APPENDIX II. CHEONOIOGT OF IMPOETANT DATA AND INTENTIONS. STEAM POWER. B. C. 280. — Hero, of Alexandria, formed a toy which ex- hibited some of the properties of steam. A. D. 540. — Anthemeus, employed by Justinian, on being vanquished by the eloquence of Zeno, to avenge himself, caused the house which Zeno occupied to be violently shaken, by means of pipes constructed for the reception of steam or vapour. 1543. — Blasco de Garay invented a steamboat, which was exhibited before Charles V., at Barcelona. He employed a cauldron of boiling water, with a moveable wheel on each side of the vessel. 1650. — A railroad was constructed at Newcastle on Tyne. 1655 (or 1663). — The Marquis of "Worcester invents a steam engine. 1681. — Denis Papin invents a steam engine. 1698. — Captain Savary invents an engine for raising water. 1710. — Newcomen's steam and atmospheric engine invented. 1718. — Savery invents an engine for dragging rivers, and raising water. 1736. — Jonathan Hulls obtains a patent for the invention of a steamboat. (335) CHRONOLOSY OF IMPORTANT INVE2\'TI0NS. 337 COTTON DATA. B. C. 450. — Cotton cloths known to have been woven in parts of Asia and in Egypt. (Consult Ctesias, Strabo, Pliny, and others, especially Plinius, lib. xix., e. 1.) B. C. 430. (About.) — Herodotus also speaks of the cotton tree (tpta *o a,7to^v%ov.) It has been contended, however, that both these authors referred to the down of the bomhax ceiba, or monkey's bread, {Adansonia digitala,) found in Senegal.* B. C. 350. — Theophrastus, a native of Erosos, in Lesbos, gives us some account of cotton in his Iltpt ffvtu^v iatopCa!, (or History of Plants.) He speaks of it as ta StvSpa epCopofi, (or "the wool-bearing plant.") The region referred to is India. A. D. 1. — Arrian mentions (Periplus) that, at the opening of the Christian era, " there were thousands of men, women, and children employed at Baroche, in Guzerat, and the adjacent villages, in the manufacture of cotton, from the coarsest sail- cloth to the finest muslins." 1100. — Cotton manufacture introduced into Spain ; flourished to a culminating point in 1500. 1641.- — Cotton manufacture introduced into England. " The town of Manchester buys the linen yarn of the Irish in great quantity ; and, weaving it, return the same again to Ireland to sell. Neither doth her industry rest here ; for they buy cotton wool in London that comes first from Cyprus and Smyrna, and * Tlie reader may judge for himself: here is the passage from Theo- phrastus. The trees, from Tvhich the Indians make cloths, hare a leaf like that of the black mulbeny ; hut the whole plant resembles the dog-rose. Thei/ set tliem in the plains arranged in rows, so as to look like vines at a distance," [Hist. PL, u. 4.] And of the plants on the isle of Tylos, he says, ''-The wool-bearing trees, [devSpa spiotpopaj) which grew abundantly in this island, Iiad a leaf like that of the vine, but smaller. They bore no fruit j but the capsule containing the wool was, when closed, about the size of the quince ; when ripe, it expanded, so as to emit the xoool, which was woven into cloths, either cheap, or of great value." This is evidently an attempt to describe the true cotton plant, the GoBsypium Hevbaceum. Later authorities, as Strabo and others, make mention of the true cotton in plainer terms. 29 338 APPENDIX II. ■work the same into fustians, vermillions, dimities, and other such stuffs, which they return to London, where they are sold, and thence not seldom are sent into foreign ports." [Lewis Roberts' Treatise on Traffic. 1090. — Art of calico printing introduced into England from France. 1693. — " Lord of the manor duty of two-pence per pack on all goods sold within the manor," defeated. 1695. — Apprentice fees required, for seven years' instruction and service, 60 pounds. 1701. — Liverpool becomes the cotton port of Jlanchester. 1730. — !Mr. AVyatt first spins cotton yarn in England by machinery. 1733. — The trustees for the settlement of Georgia, were pre- sented iL paper of cotton seed, 'which reached Georgia in 1734, and was planted there the same year. 1735. — The first cotton exported to Holland, was by the Dutch colony at Surinam, in South America. 1738. — The mode of spinning by rollers farther improved by John "Wyatt, and a patent taken out by Lewis Paul, his partner. 1740. — About this time, Manchester merchants began to give out warps and raw cotton to the weavers, receiving them back in cloth, and paying for the carding, roving, spinning, and weaving. Guest says, " The weaving of a piece, containing twelve pounds of eighteen-penny weft, occupied a weaver about fourteen days, and he received for the weaving 18s. ; spinning the weft at ninepence per lb., 9^. ; picking, carding, and rov- ing, Ss." 1742. — First mill for spinning cotton erected at Birming- ham, moved by mules or horses, but not successful in its operations. 1749. — The fly shuttle in general use. 1756. — Cotton velvets and quiltings made in England for the first time. 1761. — Arkwright obtained the first patent for the spinning frame, (Knighted.) CHEONOLOGT OF IMPORTANT INVENTIONS. 339 1764. — Cotton markets first opened abroad. At this time the trade of Manchester was greatly pushed by the practice of sending out riders for orders all over the kingdom, carrying ■with them patterns in bags. 1767. — The spinning jenny was invented by James Har- grave, which spun eight threads instead of one. 1768. — The stocking frame applied by Hammond to making lace. 1770. — Mr. Meadoworoft applies inventions in the manufac- ture of ginghams. 1772. — James Hargrave (or Hargreaves) applies the contriv- ance of a crank and comb to take wool off the cards in a con- tinuous fleece. 1773. — Calico manufacture undertaken in England. 1774. — A bill passed Paliament to prevent the exportation of machinery used in cotton factories. 1779. — Mule jenny invented by Hargrave; mule spinning by Crompton. 1780. — The manufacture of muslins introduced in England. 1781. — Ireland first exported cotton goods to England. 1782. — England imports her first cotton from Brazil ; Watts takes out a patent for his steam-engine ; panic in Manchester, owing to the importation in four months of 7,012 bags of cot- ton ! Samuel Wetherill first manufactures jeans, fustians, &c., in America. 1783. — Power-looms invented by Dr. Cartwright, (Query, 1785 ?) ; steam-engines used in cotton factories ; a bounty granted in England on the export of certain cotton goods. 1784.— The " Fustian Tax" imposed. 1785. — The " Fustian Tax" repealed ; spinning jenny given to the public ; cotton imported into England from the United States. 1786. — Chroline first used in cotton factories for bleaching. 1787. — First machinery to spin cotton put in operation in France. 1788. — East India cotton first imported into England; 310 APPENDIX II. drawback on the exports of English products asked, as an en- couragement to cotton manufactures. 1789. — Sea-island cotton planted in America ; short staple cotton cultivated in the South pretty estensively ; first steam- engine for spinning erected in Manchester. 1790. — Cotton spinners of England asked to be incorporated as the " Company of Traders ;" Slater erects a cotton mill at Pawtuoket, in the United States ; the attempt to introduce power looms into Manchester, failed. 1792. — Eli Whitney, an American, invents the cotton gin. 1794. — Sewing cotton made by Mr. Slater at Pawtucket, E.I. 1798. — First cotton mill erected in Switzerland. 1799. — Spinning by machinery introduced into Saxony. 1803. — First cotton factory built in jS'ew Hampshire. 1805. — Power loom widely introduced in England. 1811. — Machinery invented and patented to make bobbin lace, by John Burn. 1814. — Power loom introduced into Whettham, (or Waltham,) Massachusetts ; previously attempted to be introduced into Rhode Island, by Gilmore. 1818. — Mr. Holt invents a new method of preparing sewing cotton. 1820. — Steam power first applied with success extensively to lace manufactures. 1822. — First cotton factory erected in Lowell. 1823. — First imports of cotton from Egypt into England. 1826. — Eoberts patents the self-acting mule spinner. 1827. — First American exports of cotton goods in quantity. 1830. — Mr. Dyer introduces a machine into England for making cards. 1832. — A new throstle frame invented by Robert Mont- gomery, of Scotland. 1834. — Jackson patents his improved spindle. 1835. — Samuel Slater dies in Massachusetts. 1862. — Stephen R. Parkhurst invents a new cotton gin. CHEONOLOSY OP IMPORTANT INVENTIONS. 341 MISCELLANEOUS. B. 0. 600. — Maps, globes, and dials were first invented by Anaximander. 562. — Tragedy and comedy first exhibited in Athens 516. — First public library fijunded at Athens. 239. — Plays first acted at Rome. 170. — Paper invented in China. 167. — First public library established at Eome. 45. — Julius Csesar reforms the Calendar. A. D. 43. — Insurance first ventured on ships and mer- chandize. 284. — First public library founded at Alexandria. 400. — Riding saddles invented. 481. — Horse-shoes first made of iron. 500. — Stirrups invented. 651. — Manufacture of silk introduced into Europe 635. — Pens first made of quills. 674. — Stone buildings and glass introduced into England. 788. — Pleadings in courts of judicature introduced. 991. — The figures of arithmetic brought into Europe by the Saracens. 1100. — Paper of cotton rags invented. 1157. — First regular bank established at Venice. 1220. — Astronomy and geometry brought into England. 1253. — Linen first made in England. 1280. — Spectacles invented. 1300.^-Paper made of linen. 1330. — The art of weaving introduced into England. 1331. — Gunpowder invented by Schwartz. 1341. — Cannon first used at the battle of Algeziras. 1370.— Muskets used. 1380. — Musical notes, as now used, invented. 1407. — Bank of Genoa established. 1440. — Printing by Guttenberg at Mentz. 1464. — Post-office established in Prance. 1471. — Printing introduced into England, 29* 342 APPENDIX H. 1520. — Turkeys and chocolate brought to Europe from America. 1544. — Pistols in use. 1560. — Nicot introduces tobacco into France. 1564. — Coaches first made in England. 1568. — Clocks first made in England. 1581. — Post-offices established in England. 1586. — Potatoes introduced into England and Ireland. 1588. — First newspaper printed in England. 1630. — First newspaper published in Venice. 1631. — First newspaper published in France. 1641. — Post-offices established in Germany ; cofiFee brought to Europe. 1666. — Tea introduced into England. 1670. — Bayonets invented in Bayonne, (whence the name.) 1693. — Bayonets first brought into use at the battle of Turin. 1725. — Stereotype printing invented. 1752. — New calendar introduced. 1782. — Air balloons and aerostation invented in France. 1785. — First mail carried in England by mail coach. 1802. — Life boats first invented. 1814. — Streets of London first lighted with gas. THE END. . iN'S'^.i,"! -'sf