the application for a patent, will not affect the right of the inventor, provided that knowledge was surreptitiously obtained and communicated to the public, and there is no acquiescence in the public use by the inventor, and he immediately asserts his right. But after the patent has been obtained, any disuse of it by the patentee, unless he be an alien, within the fourteen years is not, of itself, an abandonment of his right. It has been a point of some discussion and difficulty, to determine to what extent an invention must be useful, to render it the subject of a patent. This will, as a matter of fact, depend upon the circumstances of each case. It must be to a certain de

348. Mellus v. Silsbee, 4 Mason's Rep. 108. Pennock and Sellers v. Dialogue, 2 Peters' Sup. C. Rep. 1. Grey v. James, 1 Peters' Cir. Rep' 394. Wyeth v. Stone, 1 Story's Rep. 273. Rundell v. Murray, Jacob's Rep. 311. 316. Saunders v. Smith, 3 Mylne & Craig, 711. 735. Wood v. Zimmer, 1 Holt's N. P. Rep. 58. If the first inventor keeps his invention a secret, or does not put it in practice until another person makes the same invention and obtains a patent for it, the patent is valid and will prevail. Dolland's case, cited by Buller, J., in 2 H. Blacks. 487. It is the first inventor who has put the invention in practice, and he only, that is entitled to a patent. Story, J., in Bedford v. Hunt, 1 Mason, 304. The doctrine in Dolland's case is not law in the United States. The first as well as the original inventor, who first perfects and adapts his patent to use, is entitled to a patent though he had kept his invention in secret. Reed v. Cutter, 1 Story's Rep. 590. And again it is said that whoever finally perfects a machine, and renders it capable of useful operation, is entitled to a patent, although others may have had the idea and made experiments towards putting it in practice. Washburn v. Gould, 3 Story's Rep. 122. The English statute of monopolies, and the French law according to M. Renouard, confine the patent to inventions not in use at the time of the patent. The act of Congress of 1836, is more large and liberal, and it only requires the invention to be new at the time of the invention and not in use at the time of the application for the patent. The French doctrine on this point is unreasonable, for according to that doctrine, even if these be a confidential disclosure of the invention prior to a patent, or ifthe public have acquired the knowledge of it by other means, they are not bound afterwards to buy the secret, though a subsequent patent be obtained, for it is no longer a novelty. Renouard' sTraité des Brevet d' Inven. tion, p. 170. edit. Paris, 1825.

■ Shaw v. Cooper, 7 Peters' U. S. Rep. 292.

↳ Gray and Osgood v. James, 1 Peters' C. C. Rep. 403.

gree, beneficial to the community, and not injurious, or frivolous, or insignificant.a

The act of congress has described in substance,

the requisite *parts of a valid specification of the *370 discovery; and yet the defects of the specification is one great source of a vexatious and perplexing litigation in our own, as well as in the English courts. The act of congress requires drawings with written references, to be annexed to the specification, when the nature of the case admits of them; and when so annexed, they become part of the specification, and give certainty to the description, and may help and make good a specification which would otherwise be defective. In the present improved state of the arts, it is often a question of intrinsic difficulty, especially in cases of the invention of minute additions to complicated machinery, to decide whether one machine operates upon the same principle as another, and whether that which is stated to be an improvement, be really new and useful. The material point of inquiry generally is, not whether the same elements of motion, and, in some particulars, the same manner of operation, and the same component parts are used, but whether the given effect be produced substantially by the same mode of operation, and the same combination of powers, in both machines. Mere colourable differences, or slight improvements, cannot shake the right of

• Lowell v. Lewis, 1 Mason's Rep. 182. Langdon v. De Groot, 1 Paine's Rep. 203. Cir. Rep. 322.

b Earle v. Sawyer, 4 Mason's Rep. 1.

Bedford v. Hunt, Ib. 302. Evans v. Eaton, 1 Peters'

• The cases of Hill v. Thompson, 8 Taunt. Rep. 375, and Evans v. Eaton, 7 Wheaton, 356, may be selected as samples of the intricacy and subtlety of such investigations. Mr. Phillips terms the patent law branch of our jurisprudence the metaphysics of the law. The heavy tax imposed, in England, on taking out a patent, and the difficulty of protecting and enforcing patent rights, and the distressing litigations which so frequently attend them, have contributed very much to lessen their value, and to repress the stimulus which patent privileges were intended to give to the cause of science.

the original inventor. If a machine produces several different effects by a particular construction of machinery, and those effects are produced the same way in another machine, and a new effect is added, the inventorof the latter cannot entitle himself to a patent for the whole machine. He is entitled to a patent for no more than his

improvement. And if the inventor of an improve*371 ment obtain a patent for the whole *machine, or mix up the new and the old discoveries together, or incorporate, in his specification, inventions neither novel, nor his own; the patent being broader and more extensive than the invention, and claiming thereby things, which are the property or the invention of others, is absolutely and totally void. The invention must be sub

It is laid down as a general rule, that 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, though there be a formal variation. Washington, J., in Gray v. James, 1 Peters' C. C. Rep. 396, and see the late English cases of the King v. Fussell, the King v. Lister, the King v. Daniell, and Brunton v. Hawkes, cited in Phillips on the Law of Patents, 128-133.

b Brunton v. Hawkes, 4 B. & Ald. 540. Stanley v. Hewitt, Circuit Court U. S., for the Southern District of New-York, November, 1835. Lowell v. Lewis, 1 Mason, 189. Moody v. Fiske, 2 Ib. 112. The King v. Ellice, Dav. Pat. Cas. 144. Wyeth v. Stone, 1 Story's Rep. 273. The American decisions uphold the patent in many cases in which it would be void under the English law, because in the American patents the specification can be resorted to for a construction of the title, and relieve the difficulty arising from the defective description in the patent. The specification is part of the patent. Story, J., in 1 Mason, 477. Phillips on the Law of Patents, p. 223-231. Nor is the French law as strict and severe on this point as the English, for if the specification be too broad or defective, it does not vitiate the whole patent. It is only void pro tanto. Nor if the process, claimed by the patentee, fails in one point, does it fail in toto. M. Perpigna, in his treatise on the French patent law, boasts in these respects of the superiority of the French law. See his treatise at large, p. 67-73, in vol. iv. of the Law Library, edited by Sergent & Lowber, Philadelphia, 1834. It is a clear and copious work, and well written in the English language by the author, who is a "Barrister in the royal court of Paris." He says he was induced to undertake the work in English, at the solicitation of his English and American clients. Though a patent be too broad in its general terms, it

stantially new in its structure and mode of operation, and the specification must point out the new improvement of the patentee, so as to show in what the improvement consists. If the patentee has made a combination which is new and useful, though the parts of the machine, when separate, and not in combination, were in common use before, he is entitled to his patent. The law has no regard to the process of mind by which the invention was accomplished, whether the discovery be by accident, or by sudden, or by long and laborious thought.b

The English decisions under their patent law are essentially the same. The statute of monopolies of 21 Ja. I., ch. 3, contains the provision under which patents for the term of fourteen years, for new and useful inventions are granted. It does not confine the privilege to British subjects. It applies to "the true and first inventor of any manner of new manufactures within the realm which others at the time of granting the patent did not use;" it

may be limited by a disclaimer to any thing before known or used, and by showing the thing intended to be patented. Whitney v. Emmett, 1 Baldwin's C. C. U. S. Rep. 303. The English act of 5 and 6 Wm. IV. c. 83, allows the patentee to enter a disclaimer of any part of the title or specification, so as to save the loss of his patent. But the American act of 1836, makes a more effectual provision by allowing a surrender of the defective patent, and taking out a new one for the unexpired part of the term. So the act of 3d March, 1837, ch. 34. sec. 7 and 9, declares, that if the specification be too broad, and the patentee claims beyond his original invention, he may disclaim by writing duly attested and recorded, the excess in the specification, and such disclaimer shall be considered as part of the specification to the extent of his interest in the patent. And if the exces sive specification did not arise from wilful default or fraud, the claim shall be good to the extent of the invention, if it be of a material and substantial part of the thing.

a Woodcock v. Parker, 1 Gal. Rep. 438. Whittemore v. Cutter, Ibid. 478. Odiorne v. Winkley, 2 Ibid. 51. Lowell v. Lewis, 1 Mason's Rep. 182. Evans v. Eaton, 7 Wheaton, 356. Dixon v. Moyer, 4 Wash. Cir. Rep. 68.

Walker v. Congreve, cited in

b Earle v. Sawyer, 4 Mason's Rep. 1. Phillips on the Law of Patents, p. 127, from the Rep. of Arts, 2d series, vol. xxix. p. 311.

has been decided that an importer is within the clause ; and it has been deemed sufficient to entitle the party to a patent, that his invention was new in England, and that it was immaterial whether the patentee acquired the discovery by study or travel, or only introduced what was invented abroad. The policy of the law was equally answered in either case. It is allowed in Eng*372 land, as it is with us, to take out a patent for an addition or improvement in any former invention or machine. But the invention must be new and useful, and the specification intelligible, and it must accurately describe the invention; and if it covers more than is actually new and useful, it destroys the patent, even to the extent to which it might otherwise have been supported. A patent was declared void, because it extended to a whole watch, when the invention was of a particular movement only.c

52.

Edgeberry v. Stephens, 2 Salk. Rep. 447. Darcy v. Allen, Noy, 182, 183. Lewis v. Marling, 1 Lloyd & Welsby's Rep. 28. 4 Carr. & Payne, 10 Barnw. & Cress. 22. S. C. If we were to judge from the language of the statute of James, and from the construction given to it by Lord Coke himself, 3 Inst. 184, (and he was chairman of the committee in the house of commons which reported the bill,) the patentee himself must have been the true and first inventor; and there would seem to be no foundation for the opinion of Lord Holt, in Edgebury v. Stephens. But the modern received doctrine is in conformity with the decision of Lord Holt. Sturz v. De la Rue, 5 Russell's Rep. 322. And this is the sense of the English law, as understood by Mr. Justice Story, in Earle v. Sawyer, 4 Mason's Rep. 8; though it was admitted, that the law in the United States was different, and required the patentee to be absolutely the first inventor of the machine, in its simple, or in its combined character. But the act of congress of 1836, (as see supra,) does not make the patent void in all cases, though the thing patented, or some part thereof, had been before known or used in some foreign country. The severity of the former statute is somewhat mitigated by the last act, which only requires the belief of the patentee, that he was the first inventor or discoverer, and that no substantial part of the invention had before been patented or described in any printed publication.

Morris v. Branson, cited in 2 H. Black's Rep. 489. Boulton v. Bull, Ibid. 463. Hornblower v. Boulton, 8 Term Rep. 95.

• Hill v. Thompson, 8 Taunt. Rep. 375. 3 Merivale's Rep. 629. Jes