[TITLE PAGE]

AN
ESSAY
ON THE
LAW OF PATENTS
FOR
NEW INVENTIONS
WITH AN
APPENDIX
CONTAINING THE
FRENCH PATENT LAW, FORMS, &C.
BY THOMAS G. FESSENDEN
ATTORNEY AT LAW

As the West Indies had never been discovered without the discovery of the mariner's needles; so it cannot seem strange if sciences be no farther developed if the art itself of invention and discovery be passed over.

BACON
PUBLISHED BY D. MALLORY, & CO. BOSTON

Lyman, Hall & Co. Portland; Swift & Chipman, Middlebury, Vt; S. Gould, New York; D.W. Farrand & Green, Albany; Farrand & Nicholas, Philadelphia; P.H. Nicklin & Co. Baltimore.

S.T. Armstrong, Printer
1810

[BACKSIDE OF TITLE PAGE]

DISTRICT OF MASSACHUSETTS, TO WIT.

Be it remembered, that on the twentieth day of October, in the thirty fifth year of the Independence of the United States of America, THOMAS G. FESSENDEN, of the said District, has deposited in this office the title of a book, the right whereof he claims as author, in the words following, to wit:

An Essay on the Law of Patents for New inventions. With an Appendix, containing the French Patent Law, Forms, &c. By THOMAS G. FESSENDEN, Attorney at Law. As the West Indies had never been discovered without the discovery of the mariner's needle; so it cannot seem strange if science be no farther developed if the art itself of invention and discovery be passed over. BACON.

In conformity to the act of the Congress, intitled, "An act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies, during the times therein mentioned;" and also to an act intitled "An act supplementary to an act, intitled, An act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies during the times therein mentioned; and extending the benefits thereof to the arts of designing, engraving, and etching, historical and other prints."

WM. S. SHAW,
Clerk of the District of Massachusetts.

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INTRODUCTION

The investigations which led to the following essay were commenced in consequence of the Author's having occasion to turn his attention to the subject, without any design to submit their result to the public. The course of his inquiries led him to observe that the authors of the most useful discoveries, inventions, and improvements in the arts but rarely met with that reward either of fame or profit which their industry and ingenuity merit. Yet to men of this description, mankind are indebted not only for the comforts, ornaments, and luxuries of life, but even for those necessaries, the want of which would convert the human race into hordes of wandering, naked, and houseless savages, much more miserable and defenceless than the brute inhabitants of the wilderness.

The writer has seen with regret, not only that the lower orders in society, for the most part, entertain absurd and unreasonable prejudices against the person who invents, patronises, or adopts a useful improvement in the arts, but in some instances, legal men, of great and deserved eminence, have shown dispositions hostile to patentees of new and useful inventions, claiming the only reward for their labors and ingenuity [page X] which they can, in most instances, hope for from the laws of society. [footnote: "It may be said that perpetuities, monopolies, and patents of concealment were born under an unfortunate constellation, for as soon as they have been brought in question, judgment has always been given against them, and none at any time given for them; and all of them have two inseparable qualities, viz. to be troublesome and fruitless." Buller's Nisi Prius, p. 76]

In Great Britain, however, the prejudices which formerly subsisted against patents for new and useful inventions seem to have subsided, and the government, the courts of law, and the more enlightened parts of the community appear to be actuated by that liberal policy, which is alone calculated to call forth and secure to the use of the public the exertions of genius: They appear to entertain the opinion of a late elegant writer, who thus expresses his sentiments on this subject. "Next to a conviction of the moral and political importance of domestic trade, the best means of improving it should engage our attention. There is certainly no department of public service more useful than the patronage of the mechanical ingenuity by whose invention and improvements the necessity for animal labor is diminished. No prejudice can be more absurd and mischievous, than that which has been frequently objected to improvements in mechanism, on the ground of their tendency to abridge the employments of the more laborious parts of society. Among the principal advantages resulting from the civil association of mankind, [page xi] we may surely class the opportunity afforded individuals of dedicating their talents to the benefit of the public, and the power of the latter to bestow adequate remuneration for the time and ability so employed.

"In return for such disbursements from the common stock, the personal convenience and profit of every member of the community are more than proportionally increased."

"A solicitude to reduce animal labor, within moderate and reasonable limits, is not merely recommended on the score of political economy, but as one of the most amiable features of civilization; multitudes of our fellow creatures are thereby rescued from the deplorable ignorance that generally accompanies the lot of manual drudgery, and being thus advanced a rank higher in the human species, may become eligible to many employments in which the understanding has a share, and which so greatly abound in a wealthy and civilized country." [footnote Balmanno's Introduction to Jones' Law of Bailments.]

Another British writer, whose work may be styled the text book of statesmen, thus complains of the deleterious effects on society and civilization which arise from the drudgery incident to the manipulations of extensive manufactories, and which may be greatly alleviated, and in some instances almost entirely annihilated, [page xii] by labor-saving machinery. "In the progress of the division of labor, the employment of the greater part of those who live by labor, that is, of the great body of the people, comes to be confined by a few very simple operations; frequently to one or two. But the understandings of the greater part of men are necessarily formed by their ordinary employments. The man whose whole life is spent in performing a few simple operations, of which the effects too are perhaps always the same or very nearly the same, has no occasion to exert his understanding, or to exercise his invention in finding out expedients for removing difficulties, which never occur. He naturally loses, therefore, the habit of such exercise, and becomes as stupid and ignorant as it is possible for a human creature to become. The torpor of his mind renders him not only incapable of relishing or bearing a part in any rational conversation, but of conceiving any generous, noble, or tender sentiment, and consequently of forming any just judgment of many, even of the ordinary duties of private life. Of the great and extensive interests of his country, he is altogether incapable of judging; and unless very particular pains have been taken to render him otherwise, he is equally incapable of defending his country in war." [footnote: Smith's Wealth of Nations.]

The ancients paid divine honors to the inventors, patrons, and improvers of those arts which have a tendency [page xiii] to meliorate the conditions of mankind. Most of their deities were mortals, who had no other claim to an apotheosis than their having distinguished themselves by their ingenuity and industry in those arts which the patricians of our "insect tribes" would deem beneath the notice of any but persons destined to fill the lowest ranks in society. Bacchus was a successful cultivator of the vine; Apollo, Minerva, Ceres, Vulcan, etc. were personages famous for inventions and improvements in agriculture and other useful and ornamental arts. Virgil assigns the highest place in the Elysian fields to those who improved human life by the invention of the arts.

"Inventas aut qui vitam excoluere per artes."

In Egypt the priests maintained their ascendency over the common people by blending useful knowledge with the grossest superstition. They were conversant with celestial motions, and were supposed by the populace to have some influence in causing those heavenly phenomena which their science enabled them to predict. [footnote: When Mr. Bruce arrived at Chendi, he found the people "much alarmed at a phenomenon which, although it occurs every four years, had by some strange inadvertency never been observed even in this serene sky. The planet Venus appeared shining with an undiminished light all day. The people flocked to me from all quarters to know what it meant, and when they saw my telescope and quadrant, could not be persuaded but that the star had become visible by some correspondence and Intelligence with me and for my use." Bruce's Travels, vol iv, p 531. In China the prediction of eclipses still continues a powerful engine of government. Staunton's Embassy, vol ii, p. 93] [page xiv] The Egyptians should seem to have been masters of many useful arts which have been lost and buried in the rubbish of time. No mechanical powers, by any mode of application with which the moderns are acquainted, could have enabled them to rear those stupendous monuments of useless ingenuity and ill-directed industry which have bid defiance to the assaults of time and seem destined to endure till the dissolution of the "great globe itself, and all which it inherit."

"In Greece," says an elegant historian, "tradition mentions the original production of the olive, the first culture of the vine, and even the first sowing of corn. The first use of mills for grinding corn is also recorded. The knowledge of the cultivation and use of the olive, of the preparation of a lasting food from milk, by converting it into cheese, and the domestication of bees for their honey and wax, was said to have been brought from Africa by Aristoeus; and so important was the information to the wild tribes of hunters, who first occupied Greece, that Aristoeus had the fame of being the son of Apollo, the god of science; the herdsmen and rustic nymphs among whom he had been educated were raised in idea to beings above human condition, and he was reported to have been himself immortal. The goddess of art, Minerva, according to the oldest Athenian author from whom anything remains to us, though reputed the peculiar patroness of Athens, [page xv] was born in Africa, but deified by the gratitude of Greece." [footnote: Mitford's History of Greece, vol i, c. 3, sect 3]

The patronage of Pericles, combined with other favoring circumstances, gave Athens a pre-eminence in the arts, which made the inhabitants of a diminutive and naturally barren territory the masters of Greece, the terror and admiration of contemporary nations, and caused her to be hailed as the arbitress of taste by all succeeding ages. The whole population of that petty but powerful republic, in the height of its splendor, scarcely amounted to thirty thousand families of free subjects. Yet Athens reached to a degree of perfection in the fine arts which all succeeding nations have attempted to imitate, but have never been able to equal. This excellence was the consequence of the patronage afforded to artists by a great man, who at that time presided over the destinies of the republic. "Pericles," says the Abbe Millot, "gave life to the whole, and the Athenians for a couple of ages, continued to produce the most elegant masterpieces. Architecture erected those superb monuments, whose delicate proportions enchant the eyes, while the enormous Egyptian masses can only serve to strike with astonishment."

"Before the time of Pericles," continues the same author, "sculpture had produced nothing but clumsy, shapeless figures. The Grecian statues, like those of [page xiv] the Egyptians, had their arms hanging down adhering close to the body, with the legs and feet joined to one another, without gesture, attitude, or elegance." Phidias, Mycon, Polyctetus, Lysippus, and Praxitiles flourished as sculptors. Polygnotus, [footnote: Polygnotus received the thanks of the council of the Amphyctyons, in a public decree, which entitled him to have his expenses defrayed, wherever he traveled, for having painted gratis the story of the Trojan wars in one of the porticos at Athens.] Apollodorus, Zeuxis, Pamphilus, Timanthes, and Apelles became immortal for their skills in painting, and the labors of these artists, together with the eulogies of the historian, the orator, and the poet were at once the incentive and the reward of those astonishing feats of valor and displays of patriotism, which have excited the admiration of all succeeding ages.

Among the successors of Alexander the Great, we find Demetrius, the son of Antigonus, a commander, celebrated as a warrior, and no less renowned for his mathematical and mechanical science. "He had an inventive genius; and it may be justly said that curiosity and a fine turn of mind for the sciences were inseparable from him. He never employed his natural industry in frivolous and insignificant amusements, like many other kings, some of whom valued themselves for their expertness in playing on instruments, others in painting, and some in their dexterity in the turner's art, with a hundred qualities of private men, but not of a prince. His application to the mechanical arts had [page xvii] something great and truly royal in it; his galleys with five benches of oars were the admiration of his enemies, who beheld them sailing along the coasts; and his engines called helepoles were a surprising spectacle to those whom he besieged. They were exceedingly useful to him in the war with Rhodes." [footnote: Rollin]

But the triumph of intellect, and of mathematical and mechanical knowledge over even well directed and disciplined, (or what is synonymous Roman) valor, was never more strikingly exemplified than in the celebrated siege of Syracuse. In that ever memorable instance the genius of one man baffled and held at bay for a long time the most formidable power the world ever saw, and would in all human probability have finally defeated and disgraced irreparably the world's masters, had not treachery supplied the want of force to the conquerors. The siege of Syracuse affords so striking an exemplification of the power of mind over matter, and the importance of inventive and mechanical genius to a kingdom or commonwealth, that we cannot withstand the temptation of giving in this place an extract from Plutarch, descriptive of that event.

"When the Romans attacked them (the Syracusans) both by sea and land, they were struck dumb with terror, imagining they could not possibly resist [page xviii] such numerous forces and so furious an assault. But Archimedes soon began to play his engines, and they shot against the land forces all sorts of missive weapons, and stones of an enormous size, with so incredible noise and rapidity that nothing could stand before them; they overturned and crushed whatever came in their way and spread terrible disorder through the ranks. On the side next to the sea were erected vast machines, putting forth on a sudden, over the walls, huge beams with the necessary tackle, which striking with a prodigious force on the enemy's galleys, sunk them at once; while other ships hoisted up at the prows by iron grapples or hooks, like the beaks of cranes, and set on end on the stern were plunged to the bottom of the sea; and others again by ropes and grapples were drawn towards the shore, and after being whirled about and dashed against the rocks that projected below the walls, were broken to pieces, and the crews perished. Very often a ship lifted high above the sea, suspended and twirling in the air, presented a most dreadful spectacle. There it swung till the men were thrown out by the violence of the motion, and then it split against the walls, or sunk on the engine's lettinggo its hold. As for the machine which Marcellus brought forward upon eight galleys, and which was called sambuca on account of its likeness to the musical instrument of that name, whilst it was at a considerable distance from the walls, Archimedes discharged a stone of ten talents weight, and after that a second and a [page xix] third, all which striking upon it with an amazing noise and force, shattered and totally disjointed it.

"Marcellus, in this distress, drew off his galleys as fast as possible, and sent orders to the land forces to retreat likewise. He then called a council of war, in which it was resolved to come close to the walls, if it was possible, next morning before day. For Archimedes' engines they thought, being very strong, and intended to act at a considerable distance, would then discharge themselves over their heads; and if they were pointed at them when they were so near, they would have no effect. But for this Archimedes had long been prepared, having by him engines fitted to all distances, with suitable weapons and shorter beams. Besides, he had caused holes to be made in the walls in which he placed scorpions, that did not carry far but could be very fast discharged; and by these the enemy was galled, without knowing whence the weapons came.

"When, therefore, the Romans got close to the walls, undiscovered as they thought, they were welcomed with a shower of darts and huge pieces of rocks, which fell as it were perpendicularly upon their heads; for the engines played from every quarter of the walls. This obliged them to retire; and when they were at some distance, other shafts were shot at them [page xx] in their retreat from the larger machines, which made terrible havoc among them, as well as greatly damaged their shipping, without any possibility of their annoying the Syracusans in their turn. For Archimedes had placed most of his engines under cover of the walls, so that the Romans, being infinitely distressed by an invisible enemy, seemed to fight against the gods.

"Marcellus, however, got off and laughed at his own artillery-men and engineers. Why do we not leave off contending, said he, with this mathematical Briareus, who, sitting on the shore and acting as it were but in jest, has shamefully baffled our naval assault; and in striking us with such a multitude of bolts at once, exceeds as it were the hundred handed giants in the fable? And in truth, all the rest of the Syracusans were no more than the bodies in the batteries of Archimedes, while he himself was the informing soul. All other weapons lay idle and unemployed; his were the only offensive and defensive arms in the city. At last the Romans were so terrified that if they saw but a rope or a stick put over the walls, they cried out that Archimedes was levelling some machine at them, and turned their backs and fled. Marcellus, seeing this, gave up all thoughts of proceeding by assault, and leaving the matter to time, turned the siege into a blockade." [page xxi]

Here we cannot but lament that prejudice which prevented this great man from devoting more of his time and talents to such branches of mathematical and mechanical science as would afford results of immediate practical utility. The speculations in which he most delighted seem to have been too sublime for common understandings, and too subtle to afford any substantial benefit to the bulk of mankind. "He had," says Plutarch, "such a depth of understanding, such a dignity of sentiment, and so copious a fund of mathematical knowledge, that though, in the invention of these machines, he gained the reputation of a man of divine, rather than human, knowledge, yet he did not vouchsafe to leave any account of them in writing. For he considered all attention to mechanics, and every art that ministers to common uses, as mean and sordid, and placed his whole delight in those intellectual speculation, which, without any relation to the necessities of life, have an intrinsic excellence, arising from truth and demonstration only."

Surely nothing can be more preposterous than to entertain an opinion that those arts which minister to common uses are mean and sordid! Yet this opinion has been more or less prevalent in every age, among those whose birth, talents, fortune, or education have placed them above the necessity of obtaining a livelihood by the practice of the arts which minister to the necessities and comforts of life, and has perhaps [page xxii] retarded the progress of improvements in such arts more than the ravages of time, or the devastation of war.

The Romans, though originally a horde of barbarians, little more civilized than the rudest tribes of our American aborigines, yet, with the acquisition of power, gained a knowledge of the arts from the more polished nations they subdued, which they communicated to other nations who were obliged to submit to their dominion. Having desolated Europe, they set themselves to civilize it, and, as a consolation for the loss of liberty, communicated their arts, sciences, language, and manners, to their new subjects. Under their auspices agriculture was encouraged, population increased; the ruined cities were rebuilt; new towns were founded; an appearance of prosperity succeeded, and repaired to some degree the havoc of war. [footnote: Robertson's Charles V.] Such, however, were the defects in the polity of the Romans, and such perhaps as were inevitably incident to an empire of such extent, and composed of such discordant materials, that the whole fabric soon became loose and disjointed; and when assaulted by the hardy and intrepid tribes of the north, was prostrated in the dust, and the arts and sciences, together with even the remembrance of many of the inventions and improvements of [page xxiii] the philosophers, mathematicians, and mechanicians of antiquity, perished from the face of the earth.

When the inundation of northern barbarians had in some measure subsided, and a remnant of the human race in Europe had recovered some degree of comparative tranquility, many circumstances conspired to render the progress of civilization and improvement in literature, science, and the arts extremely slow, and for a while almost imperceptible. The barbarous nations, says an elegant writer, were not only illiterate, but regarded literature with contempt. They found the inhabitants of all the provinces of the empire sunk in effeminacy, and averse to war. Such a character was the object of scorn to an high spirited and gallant race of men. This degeneracy of manners, illiterate barbarians imputed to the love of learning. Even after they had settled in the countries which they had conquered, they would not suffer their children to be instructed in any science, "for," said they, "instruction in the sciences tends to corrupt, enervate, and depress the mind; and he who has been accustomed to tremble under the rod of a pedagogue, will never look on a sword or spear, with an undaunted eye." Any employment in agriculture or the useful arts was thought by these wild and ferocious conquerors too menial for freemen. They disdained to cultivate the earth or touch a plough, and even their chiefs lived in a sort of pompous indigence, destitute of those comforts and conveniences [page xxiv] which, in more modern times, are not often denied to the meanest laborer. [footnote: Observe the accommodation of the most common artificer or day laborer in a civilized and thriving country, and you will perceive that the number of people of whose industry a part, though but a small part, has been employed in procuring him accommodation exceeds all computation. The woolen coat, for example, as coarse and rough as it may appear, is the produce of the joint labor of a great number of workmen. The shepherd, the sorter of wool, the wool-comber or carder, the dyer, the scribbler, the spinner, the weaver, the fuller, the dresser, with many others, must all join their different arts in order to complete even this homely production. How many merchants and carriers, besides, must have been employed in transporting the materials from some of those workmen to others, who often live in a very distant part of the country. How much commerce and navigation in particular, how many shipbuilders, sailors, sail-makers, rope-makers, must have been employed in order to bring together the different drugs made use of by the dyer, which often come from the remotest corners of the world. What a variety of labor is necessary in order to produce the tools of the meanest workman. To say nothing of such complicated machines, as the ship of the sailor, the mill of the fuller, or even the loom of the weaver, let us consider only what a variety of labor is requisite for form that very simple machine, the shears with which the shepherd clips the wool. The miner, the builder of the furnace, the mill wright, the forger, the smith, must all of them join their different arts in order to produce them" (Smith's Wealth of Nations) The writer declares that "the accommodation of an European prince does not always so much exceed that of an industrious and frugal peasant, as the accommodation of the latter exceeds that of many an African king, the absolute master of the lives and liberties of ten thousand naked savages."

In the dawn, which succeeded the dark ages, literature, science, and the arts were first patronized in Italy, by the Medici; and under the auspices of Lorenzo de [page xxv] Medici, the Italian Pericles, whose name alone suggests an idea of all that is elegant in literature and consummate in science and arts, they rose to an incredible degree of perfection. "Whilst the study of polite literature was emerging from its state of reptile torpor, the other sciences felt the effects of the same invigorating beam; and the city of Florence, like a sheltered garden in the opening spring, re-echoed with the earliest sounds of returning animation. The Platonic Academy existed in full splendor, and served as a common bond to unite at stated intervals those who had signalized themselves by scientific, or literary pursuits. The absurd pretensions to judicial astrology were fully examined and openly exposed; and observation and experiment were at length substituted in the place of conjecture and of fraud. Paollo Toscanelli had already erected his celebrated gnomon. [footnote: This gnomon, which has justly been denominated the noblest astronomical instrument in the world, was erected by Toscanelli about the year 1460 for the purpose of determining the solstices and thereby ascertain the feasts of the Roman church. It is fixed in the cupola of the church of St. Maria del fiore at the height of 277 Parisian feet. A small orifice transmits from that distance the rays of the sun to marble a flag placed in the floor of the church." Roscoe's Life of Lorenzo de Medici, vol. ii, chap. 7.] Lorenzo da Valpajez constructed for Lorenzo de Medici a clock, or piece of mechanism, which not only marked the hour of the day, but the motions of the sun, and the planets, the eclipses, the signs of the zodiac, and the whole revolutions of the heavens." [page xxvi]

The art of printing, invented towards the close of the fourteenth century, is said to be of German origin, and is generally attributed to Dr. Faustus, although authors have not agreed to what nation, or individual the honor of this invention belongs. This art, however, was fostered and brought to a high degree of perfection under the auspices of Lorenzo de Medici; and though the plant might not have been a native of Italy, it found in that country a congenial soil in which it flourished in high luxuriance. The art of copper-plate engraving, and the revival of that of engraving on gems and stones, are likewise numbered among the happy results of the munificence of the Medici.

In England the prejudices which formerly subsisted throughout Europe against commerce and the useful arts have, as before observed, in a great degree subsided. In that country we find their first noblemen, emulous of improvements in agriculture and the useful arts. Societies have been founded in various parts of the kingdom for their patronage, whose transactions are regularly and periodically published, and premiums and honorary medals are awarded with a liberal hand to those whose inventions and discoveries give promise of public utility. Many English noblemen and men of affluence and high standing in society have obtained letters patent for new inventions, or become interested in patents obtained by others.[page xxvii]

To English liberality in encouraging and rewarding the authors of new and useful inventions may, in great measure, be attributed the flourishing state of British agriculture, navigation, and manufactures. A more contracted policy would have prevented the development of those resources which have rendered her able, single-handed, to oppose with success the power which has overwhelmed continental Europe and threatens to extend its empire over the habitable globe.

It would far surpass the limits of this introduction to give even a sketch of the important inventions and improvements in the arts which have so greatly promoted the prosperity of Great Britain. We will, however, briefly advert to some of those which appear not the least worthy of notice.

Under the patronage of Mr. Alderman Boydell, a new and very considerable article of manufacture and commerce was given in engraved prints. Foreign prints had been so greatly superior to British that great quantities had been imported. Alderman Boydell, although the person principally concerned in their importation, with a liberality, and public spirit, worthy a Pericles, or a Lorenzo de Medici, sought after, encouraged and rewarded British artists, with the well founded idea that under the influence of suitable patronage, they might equal, if not excel the engravers of other countries. The result surpassed his expectations, and the [page xxviii] exports of British engravings in a few years became immense, extending from Madrid to Moscow.

Mr. Josiah Wedgewood introduced a great number of improvements in the potter's art, and the Queen, to encourage the artist, gave the product of his manufactory the name of Queen's ware. Of the immense importance of this manufactory some estimate may be formed from the following extract from Anderson's History of Commerce:

"Though the manufacturing part alone gives bread to fifteen or twenty thousand people, he (the inventor and proprietor) looks upon this as a small object when compared with the many others which are put in motion by it, viz. the immense quantity of land carriage it creates throughout England, both in its raw materials and finished goods; the great number of people employed in the extensive collieries for its use; the still greater numbers employed in raising and preparing the raw materials in several distant parts of the kingdom; the coasting vessels, the river and canal navigation, and the reconveyance of the finished goods to the different parts of the island."

Although this manufacture was so flourishing, yet at the time the above description was given, it was considered still in its infancy. This however was altogether [page xxix] the effect of the inventive genius of the proprietor and the encouragement which the policy and the laws of England afford to the authors of new and useful inventions.

But the most valuable present that the arts of life have ever received from the philosopher, and the most curious object which human ingenuity has yet offered to his contemplation, is the steam engine. The mariner's compass, the telescope, gun powder, and many other most useful servants to the wants and weakness of man, were the productions of chance, and we do not exactly know to whom we are indebted for them, but the steam engine was in the very beginning the result of reflection and the product of ingenuity. Every improvement it has received has likewise been the effect of philosophical study. It has now become almost as necessary to the very existence of many important manufactures as air to that of animal life. The steam engine presents us a most indefatigable drudge, whose strength knows no bounds, and to the utility of whose labors no limits can be assigned. [footnote: Encyclopedia Britannica]

Next in importance to the steam engine may perhaps be ranked the invention of cotton spinning, generally attributed to Sir Richard Arkwright. This ingenious man constructed a machine by which, with the [page xxx] power afforded by one large water wheel, above 4,000 threads of cotton were spun at once; and of these the finest muslins were manufactured. Cotton spinning by the assistance of machinery is now introduced into the United States to a great extent, and bids fair to enrich the enterprising individuals who have embarked in the manufacture, as well as benefit the public to an incalculable amount.

In France, Germany, and other nations of continental Europe, useful science and the arts have been persecuted by bigots and too frequently sacrificed at the shrine of superstition. The immortal Galileo fell a victim to popish intolerance. The edict of Nantz, equally cruel, unjust, and impolitic, forced thousands of ingenious and industrious mechanics to seek refuge in England and gave rise to some of the most flourishing manufactures in Great Britain.

The politicians of the French revolution appeared to have been fully convinced that "knowledge is power", and the rapid and astonishing success of the "terrible republic" and still more formidable monarchy may in a great measure be attributed to the patronage given to military science and to new inventions in the art of war. "A man," says an excellent historian of the French revolution, "who would have been obliged to dance attendance half his life time after the minister of war, or of the marine, only to receive the honor of an [page xxxi] audience where he was more likely to be treated with contempt than to be encouraged, could now make himself certain of a candid hearing and a fair trial; and the vices of a government which produced such advantages he very naturally overlooked and became zealous in their cause. [footnote: Playfair's History of the French Revolution]

From the preceding imperfect sketches of the history of the arts, it appears that they have flourished in proportion to the patronage bestowed on artists; and that wherever they have flourished they have exalted the character, increased the resources, and added to the power of a nation. When fostered by a Pericles, a Lorenzo de Medici, or a Colbert, the arts have sprung up as it were by enchantment, like the wizard palaces of romance, and the most arid deserts of barbarism have suddenly bloomed like Palmyra in the wilderness

In the United States useful inventions have still stronger claims on public patronage than in older and more populous countries. In Great Britain any important improvements in manufactures has frequently a temporary effect apparently injurious to many of the poorer classes, by depriving them of the manipulations superseded or curtailed by such improvements. Thus it has been said to be impracticable in many parts of the country [page xxxii] to erect machinery for sawing timber by water or steam, on account of the opposition of those who have been accustomed to obtain their sole support from the laborious process of sawing timber by hand. Machinery for spinning cotton, on improved plans, is reported to have been burned by those who had been accustomed to derive a support by processes which are abridged or rendered useless by such machinery. But in the United States, such is the demand for labor, the plenty of provisions, and the sparseness of population in proportion to the extent of the territory, that the inconveniences experienced in Europe cannot occur in so serious a shape as to form any valid objection to useful inventions for the purpose of lessening animal labor.

Notwithstanding these circumstances, and the state of society in the United States would seem extremely favorable to the introduction of useful inventions, we are informed by one of the most distinguished of the American artists, whose own inventions have proved of great and extensive utility, that "the ingenious inventors of useful improvements in this country are still left to struggle, not only with the taunting sarcasms and embarrassing opposition of those who, wise in their own conceit, apparently take delight in condemning and opposing projects until they are brought successfully into operation, but with heavy losses, and oftentimes ruin, even if the attempt succeeds. Nine tenths of the exclusive rights granted, will injure the [page xxxiii] inventor for the first fourteen years in this country; especially if the patent be taken out before the improvement is in full operation; and if not till then, some pilfering genius may attempt, surreptitiously, to take out a patent for the principles of the invention before the true inventor and occasion him the heavy expense of a lawsuit before his right can be established." The same ingenious man, after pointing out certain principles which might lead to the discovery of a variety of useful and important inventions, complains that "the expense of the experiments necessary to bring these principles into operation would be too great. No prudent man will risk the attempt until the prospects of a sufficient reward brighten. We unite in a belief that fate has ordained that ingenious man shall never be rich; not considering that the injustice and impolicy of most governments have passed the decree. Who would get rich if the property he acquired by his industry was to become common as soon as he gained it? What prudent man will spend his thoughts, time, labor, and money for property no better secured to him? Ingenuity makes none poor, on the contrary it has made many rich whose prudence directed them to the pursuit of permanent property. To ingenuity we owe all our superiority over savage nations. England has made herself more rich and powerful than other nations by her liberal policy of securing to ingenious men an exclusive right to their inventions so long as [page xxxiv] to afford them an opportunity of being amply rewarded. [footnote: Evans' Tract on the Steam Engine]

Notwithstanding, however, the impediments and discouraging circumstances which, according to the worthy artist above mentioned, are opposed to the efforts of American ingenuity, it appears that the native genius of our countrymen has surpassed every obstacle and overleaped every barrier opposed to its splendid display in devising numerous and useful inventions. From the year 1789 to the year 1810 inclusive, more than 1200 patents have been obtained for new inventions and discoveries, some of which are known to be of great and extensive utility. The cotton-gin, invented by Eli Whitney, Esq., has given a new staple to several of the southern states, and is said to have more than doubled the produce of their lands under cultivation. Improvements in flour-mills, by Mr. Oliver Evans, threshing machines, spinning machines, machines for nail-making, those for weaving, for impelling boats by steam, for dressing and spinning flax and hemp, for making cards, for splitting leather, for ruling paper, for pulverising dye-woods, making earthen pipes of a new construction for aqueducts, improvements in manufacturing morocco leather, substitution of steel plates for copper in engraving, and a great number of others, evince the inventive genius of Americans, and it is to [page xxxv] be hoped that establishments may be formed, and laws devised, for the purpose of encouraging, securing, and rewarding its efforts which will be worthy of a great and rising empire.

It has been the strange and infatuated policy of some of the most ancient nations of the eastern world to oppose modern improvements in science and arts as useless or injurious innovations. Thus their science has gone but little beyond first principles, their arts have been confined to simple processes, and they have long since stopped in their progress to improvement at a point very far short of attainable perfection. The Chinese adhere with tenacious formality to processes whose inconveniences are sanctioned by time; and in India the arts have made little progress since the days of Alexander, in consequence of superstitious dread of novelty. Americans will not imitate these examples when they reflect that improvements in the arts, if fostered by that liberal encouragement which true policy dictates, will proceed with an accelerated motion to a degree of perfection now almost inconceivable. Every improvement opens the door to further and more important improvements, and every step in our progress facilitates further advances, by furnishing new means, instruments, and a knowledge of intermediate processes, which may lead to results surpassing the anticipations of the most sanguine. The field of invention and discovery is inexhaustible, [page xxxvi] and the fruits of our researches beyond all price. [footnote: Sir Isaac Newton and Dr. Bentley met accidentally in London, and on Sir Isaac's inquiring what philosophical pursuits were carrying on at Cambridge, the Doctor replied, "none; for when you go a hunting, Sir Isaac, you kill all the game; you have left us nothing to pursue." "Not so," said the philosopher, "you may start a variety of game in every bush, if you will but take the trouble to beat for it." "And so in truth it is," observes bishop Watson, "every object in nature affords occasion for philosophical experiment." Preface to Pursuits of Literature] "Men of genius," says an elegant writer, "are the most productive of all classes of mankind. Their inventions not only fix and realize themselves in some subject, and for some time, but they direct the mode of storing and setting in motion future industry, and instead of perishing in the performance, they are renovated in every renewed action of a similar nature, and endure forever in some permanent habit, regulating the conduct, shortening the labors, and multiplying the comforts of mankind."

It is true that many novelties attempted to be introduced are not improvements, and sometimes patents are solicited for new inventions as old in the days of Tubal Cain. But the abuse of privilege is no argument against the privilege itself, and due care in the regulation of the patent office, and caution used not to grant patents for pseudo-inventions and pretended discoveries will generally prevent any deceit of that kind from being palmed on the public.

[page xxxvii] In a moral as well as political point of view, the author of a new and useful invention has the best of all possible titles to a monopoly of the first fruits of his ingenuity. The invention is the work of his hands and the offspring of his intellect, and after he is allowed a temporary monopoly, becomes, at the expiration of the patent, a valuable donation to society. In the United States, so long as they retain their freedom, the public can be the only efficient patrons of men of inventive facilities, and the patronage of the public can be obtained in no way so effectively as by securing to the inventor an exclusive right, for a term of years, to his invention, [footnote: "It is the dictate of sound policy that a nation, by stimulating encouragements, draw forth all the useful products of inventive genius while the possessor is alive. Reward is the only engine in the hands of the public whereby they can draw forth the powers of genius, and if it be bestowed liberally, the inventor will be enabled to make experiment upon the sketches lying on paper in his desk, and on them which are in embryo upon his memory, from some of which it is probable valuable results may be drawn. He should, therefore, be furnished with the means of bestowing his undivided attention upon them during the vigor of life and intellect, which he may now be wasting under the pressure of pecuniary embarrassments." Remarks on the Rights of Inventors, by a Committee of the Massachusetts Association for the Encouragement of Useful Inventions.] we have no Pericles, Lorenzo de Medici, or Colbert, possessing wealth and influence sufficient to enable them to give adequate rewards to the inventors of improvements in the arts. It is therefore of the highest importance that the law, which is intended to secure to useful ingenuity its only appropriate and [page xxxviii] adequate remuneration, should be destitute of that ambiguity which would render it rather an instrument of oppression than a barrier of right.

In the plan and execution of this little treatise, the author has aimed rather at perspicuity than elegance. "Other productions of the human genius may be allowed to derive their charms from the beauty of metaphor and the grandeur of general expression, but the utility and the praise of a municipal code will depend on the dry simplicity and scrupulous detail with which it is adapted to the purposes of public security and social confidence." [footnote: Balmanno's Introduction to Jones' Law of Bailments] The author's sole wish has been to render the work useful to those men of inventive ingenuity who are unacquainted with the niceties of legal distinctions, and to render them less liable to suffer by the wiles of unprincipled and rapacious speculators, who so frequently defraud patentees of those emoluments which were intended to excite and reward their exertions to meliorate the lot of humanity.

The author has been indebted to a number of gentlemen of the bar in Boston and elsewhere for many useful hints and emendations furnished on submitting the manuscript to their inspection. The remarks in the Appendix on the policy of granting patents for imported inventions, together with extracts from the patent law of France, are from the pen of a French gentleman resident in Boston. The form of petitioning for patents, and of the oath or attestation of the inventor, are from a gentleman of the bar distinguished for mechanical science and inventive ingenuity. These forms have been approved of at Washington, and a recurrence to them it is hoped will not unfrequently save inventors and others interested from much unnecessary delay and fruitless expense which occur in consequence of forwarding incorrect forms of attestation, specification, etc. to the Secretary's office for the purpose of procuring patents.

[unmarked page 41]

ESSAY, &C

[ESSAY ON THE LAW OF PATENTS]

The privileges allowed to inventors and discoverers of new and useful arts in the United States are founded solely upon statutes. Of these there are two which are now in force, the one entitled "An act to promote the progress of useful arts; and to repeal the acts heretofore made for that purpose," bearing date February 21st, 1793; and the other entitled "An act to extend the privilege of obtaining patents for useful discoveries and inventions in certain persons therein mentioned, and to enlarge and define the penalties for violating the rights of patentees," dated April 17th, 1800.

In prosecuting my inquiries into the subject of this essay, I shall attempt,

1st. To shew wherein these statutes coincide with, and are explained by, foreign laws and decisions enacted and decided for the same or similar purposes, [footnote: To those who may object that the privileges of patentees in the United States, being derived solely from our own statutes, the laws and decisions of foreign nations on the subject have no validity in the United States, I would reply in the sentiments and nearly the words of Sir William Jones, expressed in his excellent treatise on the Law of Bailments. In questions of law, no cause can be assigned why we should not shorten our labors by resorting occasionally to the wisdom of foreign Jurists, many of whom were the most sagacious of men; what is good sense in one age or country must, all circumstances remaining, be good sense in another; and pure unsophisticated reason is the same in Italy, England, and the United States; in the mind of a Papinian, a Blackstone, a Marshall, or a Washington.] and to give such decisions in [page 42] the Courts of the United States, as I may deem of importance in determining the law of the land on the subject of patent monopolies of new inventions, and

2ndly. To give a synthetical view of the Law of Patents for New Inventions, together with such rules as may appear best calculated to prevent, as far as possible, future disputes on the subject.

In order to shew the coincidence between our own statutes and the laws of Great Britain relative to patents for new inventions, we shall give Lord Coke's definition of Monopoly, in its most general, legal acceptation, together with an extract from the statute law of Great Britain, which is the foundation of patent monopolies for new inventions. We shall then proceed to examine, consecutively, our own statutes which [page 43] authorize such monopolies, adverting to such decisions of British and American Courts of Justice as may have a tendency to elucidate, explain, and determine their meaning and legal effect.

A Monopoly is described by Lord Coke to be "an institution, or allowance by the king, by his grant, commission, or otherwise, to any person or persons, bodies corporate or politic, of or for the sole buying, selling, making, working, or using of any thing, whereby any person or persons, bodies politic or corporate, are sought to be restrained of any freedom or liberty they had before, or hindered in their lawful trade."

"And therefore all grants of this kind, relating to any known trade, are made void by the common law, as being against the freedom of trade, discouraging labor and industry, restraining persons from getting an honest livelihood by a lawful employment, and putting it in the power of particular persons to set what price they please on a commodity, all which are manifest inconveniences to the public."

By the 21 Jac. 1. c. 3. it is enacted "that all monopolies, and all commissions, grants, licenses, charters, and letters patent to any person or [page 44] persons, bodies politic or corporate, whatsoever, of or for the sole buying, selling, making, working, or using any thing within this realm, or Wales, or of any other monopolies, and all proclamations, inhibitions, restraints, warrants of assistance, and all other matters whatsoever, any way tending to the instituting, strengthening, furthering, or countenancing the same, or any of them, are altogether contrary to the laws of the realm, and so are and shall be utterly void and of none effect, and in no wise to be put in execution."

But it is provided by sec. 6 of the same statute that "no declaration in the statute mentioned shall extend to any letters patent and grants of privileges for fourteen years or under of the sole working or making of any manner of new manufacture within this realm to the true and first inventor and inventors of such manufactures, which others at the time of making such grant shall not use; so as also they be not contrary to the law, nor mischievous to the state, by raising the price of commodities, nor generally inconvenient, the said fourteen years to be accounted from the date of the first letters patent or grant of such privileges, but that the same should be of such force as should be if the said act had never been made, and of none other."

The first section of the patent law of the United States of February 21st, 1793, is as follows:

"Be it enacted by the Senate and House of Representatives of the United States of America, in Congress assembled, That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new or 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 before the application, and shall present a petition to the Secretary of state, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the Secretary of state to cause letters patent to be made out in the name of the United States, bearing test by the President of the United States, reciting the allegations and suggestions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting to such petitioner or petitioners, his, her or their heirs, administrators, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be [page 46] used, the said invention or discovery, which letters patent shall be delivered to the Attorney General of the United States to be examined; who within fifteen days after such delivery, if he finds the same conformable to this act, shall certify accordingly at the foot thereof, and return the same to the Secretary of state; who shall present the letters thus certified to be signed, and shall cause the seal of the United States to be thereto affixed; and the same shall be good and available to the grantee or grantees by force of this act, and shall be recorded in a book to be kept for that purpose in the office of the Secretary of state, and delivered to the patentee or his order."

I shall now proceed to examine the several parts of this section, according to the order in which they are presented to us in the statute.

It is enacted "That when any person or persons, being a citizen or citizens of the United States, etc." The power and privileges limited by this clause to a citizen or citizens of the United States are extended by the following clause in "An act to extend the privilege of obtaining patents for useful discoveries and inventions to certain persons therein mentioned, and to enlarge and define the penalties for violating [page 47] the rights of patentees" passed April 17th, 1800. "Be it enacted, etc. That all and singular the rights and privileges given, intended, or provided to citizens of the United States, respecting patents for new inventions, discoveries, and improvements, by the act entitled 'An act to promote the progress of the useful arts, and to repeal the act heretofore made for that purpose,' shall be, and hereby are, extended and given to all aliens who at the time of petitioning in the manner prescribed by the said act, shall have resided for two years within the United States, which privileges shall be obtained, used, and enjoyed in as full and ample manner, and under the same conditions, limitations, and restrictions as by the same act is provided and directed in the case of citizens of the United States."

The British laws have no restrictions which confine the right of petitioning for and obtaining letters patent to British subjects or residents in Great Britain, and it is every day's practice to grant patents for new inventions to Americans and other foreigners.

The invention for which a patent can be obtained must be "new or useful."

[page 48] By decisions in British Courts [Marginal notes: 2 Salkeld 447; 1 Hawk 223] it appears that "a manufacture newly brought into the kingdom from beyond the sea, although not new there, is within this exception, or allowed by the statute of Jac. 1 above mentioned, "and whether it be learned by travel or by study, it is the same thing."

As to the invention, the rule of law [Marginal note: Bull N.P. 77] is very different from what it is on the specification, for as on the specification, if any one part of the invention be not sufficiently described, the patent is void, but on the invention, if any one part of it be new and useful, that is sufficient to sustain a patent for the particular object of the invention.

But the patent must not be more extensive than the invention [Marginal note: Bull N.P. 76]; therefore, if the invention consists in an addition or improvement only, and the patent is for the whole machine or manufacture, it is void.

It will not impeach the validity of a patent [Marginal note: 2 H Black 470] that another first made the discovery which is the subject of it, if in truth the patentee were the first to make it public; for it was the disclosure of new inventions which the statute meant to encourage. It is therefore a provision and indispensable condition in all patents that the [page 49] patentee shall ascertain the nature of his invention, and in what manner it is to be performed. The specification is the price which the patentee is to pay for his monopoly.

If a man invent a new art, and another happen to learn it before the inventor can obtain a patent, a patent afterwards obtained is void. [Marginal note: 3 Mod 77, said arguendo] But it will not be void if the person who has learned it has not disclosed it. [Footnote: It is doubtful whether this would be considered law in the present day, see Tenant's case hereafter cited; but as it appears in English books of high authority, it was thought to be entitled to a place in this treatise.]

Where a patentee brings an action on his patent, [Marginal note: 1 Term Rep 607] if the novelty or effect of the invention be disputed, he must show in what his invention consists, and that he produced the effect proposed by the patent in the manner specified. Slight evidence of this on his part is sufficient, and it is then incumbent on the defendant to falsify the specification.

If a patent be granted in the case of a new invention, [Marginal note: 10 Mod 110] the king cannot grant a second patent, for the charter is granted as an encouragement to invention and industry, and to secure the patentee [page 50] in the profits for a reasonable time; but when that is expired the public is to have the benefit of the discovery.

The general questions [Marginal note: Bull N.P. 76] on patents are: 1st, Whether the invention were known and in use before the patent. 2d, Whether the specification be sufficient to enable others to make it up.

Such is the English law as respects the novelty of the invention for which patent privileges are claimed.

The law of the United States is variant from that of Great Britain as respects the granting of patents for manufactures newly brought from beyond sea. And it has been determined in the Circuit Court of the United States "that the right to the patent belongs to him who is the first inventor, even if the patent is granted." [Footnote: Evans vs. Weiss, quoted hereafter] It should seem, therefore, that the dictum above quoted from 3 Mod. 77, and 2 H. Blackstone 470, cannot be law in the United States, and perhaps not in Great Britain; and that it cannot be in the power of a person who is not the inventor of an art, machine, or manufacture [page 51] for which a patent has been or may be granted to deprive the first inventor of his right to a patent.

We will proceed to the statute regulations excluding, in certain cases, imported inventions from being monopolized by patent.

The act of April 17, 1800, contains the following proviso to the first section. "Provided always, that every person petitioning for a patent for any invention, art, or discovery, pursuant to this act, shall make oath or affirmation before some person duly authorized to administer oaths before such patent shall be granted that such invention, art, or discovery hath not, to the best of his or her knowledge or belief, been known or used either in this or any foreign country; and that every patent which shall be obtained pursuant to this act for any invention, art, or discovery which it shall afterwards appear had been known or used previous to such application for a patent, shall be utterly void."

It has not, however, been decided, so far as we have been able to ascertain, how great a degree of publicity given to an invention, discovery, or improvement, shall constitute such knowledge or use as to bring it within the above [page 52] proviso, and prevent its being a proper subject for a patent. The following decision in the Circuit Court of the United States, held in Philadelphia, goes far to secure the right of the original inventor, in certain cases, to inventions known and used, even before application for a patent.

This was an action on the case for a violation of the plaintiff's patent right, and comes up on the following case agreed.

[Marginal note: Evans vs. Weiss] The plaintiff, being the inventor of the improvements in the manufacture of flour hereafter mentioned, and the patent right for the same heretofore obtained, having been declared by the court void in the action of Evans against Chambers; and the time for which the said patent was granted having also run out, an act of Congress, entitled An act for the relief of Oliver Evans, was passed on the 21st January, 1808, notice whereof was given to the defendant in February last.

On the 7th of May 1802, during the continuance of the former patent, the defendant purchased of the plaintiff a right to use the said improvement at his mill on Wissahicon creek, in Philadelphia county, in this district, for one wheel and pair of stones; but prior to the passing [page 53] said act of Congress, he had applied and used, and continued to apply and use, the same improvements for two wheels and two pair of stones, in the same mill. The questions submitted are, whether the defendant is liable for damages for the use of said improvements in application to this second wheel and pair of stones since the act of the 22d of January, and whether, if so, he is liable before notice from the plaintiff. If the opinions of the court be in favor of the plaintiff, judgment to be entered generally, and amount to be adjusted afterwards by the attorneys.

Judge Washington delivered the opinion of the court. "It is contended by the plaintiff that the defendant is liable for using the plaintiff's improvement in application to the second wheel and pair of stones, since the 22d day of January, 1808, or at all events, since the time when the defendant received notice of the plaintiff's patent; because the proviso of the act passed the 21st January, 1808, for the relief of Oliver Evans extends only to cases of improvements erected for use, or used, prior to the passage of said law, and does not protect the defendant from damages for using, after issuing of the patent under the law, an improvement erected prior thereto.

"On the other side, it is insisted that such a construction would render this an ex post facto law and consequently repugnant to the constitution. To avoid which it should be so construed as to connect with the use of the improvement the erection of it subsequent to the grant of the patent.

"Although the court at the last term, and upon the first argument, felt strongly inclined to give it the construction contended for by the defendant; yet, upon further reflection, we are satisfied that we should do a violence to the words which no rule of construction should warrant.

"The words of that proviso are, 'that no person who shall have used the same improvement, or have erected the same for use, before the issuing of the said patent shall be liable to damage therefor.'

"That is shall be liable for having erected, or for having used, the improvement at any time prior to the patent, but with respect to the use of it after the issuing of the patent, no protection whatever is afforded against the claim for damages under this law.

[Page 55] "The next inquiry is, does the general law give to the plaintiff a right of recovering against a person who erected a machine prior to the issuing of the patent to the first inventor of it, and who afterwards made use of the same.

"The act of the 17th of April, 1800, which as to this point is the only law in force, declares that 'if any person, without permission from the inventor, shall make, devise, use, or sell the thing whereof the exclusive right is secured to the patentee, he shall pay three times the damage sustained by the patentee, to be ascertained by a jury.' Now whatever doubts might have existed as to the meaning of the words 'devise and use' in the 5th section of the act of the 21st of February, 1793, thus connecting the using with the devising of the improvement, there can be none under the third section of the act of 1800, which repeals the whole of the 5th section of the old law.

"It is plain that the using of an improvement invented by another and secured by a patent is of itself an offence, no matter at what time such improvement was devised or made, whether the word 'devise,' which has been a good deal criticised, is synonymous with make, as one of the plaintiff's counsel seemed to think, or means to [page 56] invent, a mere act of the mind, a construction which, whether it be to make or to contrive, to plan, for, or design, it is unnecessary in this case to decide, because the charge against the defendant is the using of the plaintiff's improvements, unconnected with the making and devising it.

"But is objected to this construction, that it would render the law ex post facto in its operation in respect to one who has erected his improvement prior to the granting of the patent of the plaintiff.

"It must be confessed that cases of great hardship may occur, if after a man shall have gone to the expense of erecting a machine, for which the inventor has not then, and never may obtain a patent, he shall be prevented from using it by the grant of a subsequent patent, and its relation back to the patentee's prior invention. But the law in this case cannot be termed ex post facto, or even retrospective in its operation, because the general law declares beforehand that the right to the patent belongs to him who is the first inventor, even before the patent is granted; and therefore any person who, knowing that another is the first inventor, yet doubting whether that other will ever apply [page 57] for a patent, proceeds to construct a machine of which it may afterwards appear that he is not the first inventor, acts at his peril, and with the full knowledge of the law that by relation back to the first invention, a subsequent patent may cut him out of the machine thus erected.

"Not only may individuals be injured by a liberal construction of the words in the law, but the public may suffer if an obstinate or negligent inventor should decline obtaining a patent, and at the same time keep others at arm's length, so as to prevent them from profiting by the invention for a length of time; during which the fourteen years are not running on. But these hardships must rest with Congress to correct. It is beyond our power to apply a remedy. No such hardships exist in this case, where the defendant erected the improvement with a knowledge, not only that the plaintiff was the first inventor, but had absolutely obtained a patent, although it was afterwards declared invalid.

"The circumstances of this case render it unnecessary to give an opinion as to the right of a first inventor, after a patent obtained, to recover against one who, believing himself to be the first inventor, constructs a machine or improvement, [page 58] upon the principles of his new invention, or uses the same after such patent is issued."

We proceed now more immediately to the subject or essence of the thing or matter for which monopolies can be legally granted by letters patent. The statute of 21 Jac. before quoted allows the grant of letters patent for "the sole working or making of any manner of new manufactures to the true and first inventor." That of the United States allows a similar monopoly to the person or persons who have invented "any new or useful art, machine, manufacture, or composition of matter not known or used before the application." These clauses may be said to be the pivots on which turns the whole law of patents for new inventions in Great Britain and the United States. They are descriptive of the kind of property which may be obtained by patents for new inventions, while the other regulations in the law of both countries point out the methods by which the title to this species of property may be ascertained and secured, and the persons to whom such titles may be granted. The words "any manner of new manufactures" in the statute of Jac. 1, as understood and explained in British Courts of Justice, (which will appear fully as we proceed [page 59] in this work) are co-extensive in signification with the words "new or useful art, machine, manufacture, or composition of matter," made use of in our statute. British authorities, [Marginal note: vide note p. 41] therefore, so far as circumstances are similar and the reason of the cases remain the same, will be pertinent for determining what kinds of new invented things may be the legal subjects of patent monopolies.

The famous cases of Boulton and Watt vs. Bull, and Hornblower and Maberly vs. Boulton and Watt, are the most prominent and interesting as respects the kind of invention, discovery, or improvement which may be secured by patent to the inventor, and afford many important rules and observations which ought not to be omitted in the present essay. The patent on which the action of Boulton and Watt vs. Bull [Marginal note: Boulton and Watt vs. Bull 2 Hen, Black 463] was commenced was for a new invented method of using an old engine in a more beneficial manner than heretofore, by the mechanical employment of certain principles. This was an action on the case for infringing a patent, by which the plaintiff was secured in "the sole benefit and advantages of making, using, exercising, and vending a certain invention of him, the said plaintiff, being a method by him invented of lessening the consumption of steam and fuel in [page 60] fire engines," which patent was, by a private act of parliament, (15 Geo 3. c. 61) continued to the plaintiff for twenty five years. The general issue being pleaded, the cause came on to be tried at the sittings after Trinity term, 1793, when a case was reserved for the opinion of the court, which stated that by letters patent of 5th January, 1769, the king granted to the plaintiff Watt, who had duly assigned two thirds of the patent right to the plaintiff Boulton, that he might, for fourteen years, make, use, exercise, and vend his new invented method of lessening the consumption of steam and fuel in fire engines, under the usual condition of enrolling a specification: That Watt, by his specification, declared that his new invented method of lessening the consumption of steam, and consequently fuel, in fire engines consisted of certain principles; setting them forth particularly, by which it appeared that the object of the patentee was to condense the steam, without cooling the cylinder or steam vessel, and that the means adopted to effectuate this were in substance, to enclose the cylinder or steam vessel in a case of wood, or any other material which will confine the heat, or transmit it slowly, to surround it with steam or other heated bodies, and to suffer neither water, nor any other substance colder than steam, to enter or touch it during [page 61] that time.

[Long footnote: The specification was as follows, "My method of lessening the consumption of steam, and consequently fuel, in fire engines consists of the following principles,

"First, That vessel in which the powers of steam are to be employed to work the engine, which is called the cylinder in common fire engines, and which I call the steam vessel, must, during the whole time the engine is at work, be kept as hot as the steam that enters it; first by enclosing it in a case of wood or any other materials that transmit heat slowly; secondly, by surrounding it with steam or other heated bodies; and thirdly, by suffering neither water, nor any other substance colder than steam, to enter or touch it during that time.

"Secondly, In engines that are to be worked wholly or partially by condensation of steam, the steam is to be condensed in vessels distinct from the steam vessels or cylinders, although occasionally communicating with them; these vessels I call condensers; and while the engines are working, these condensers ought at least to be kept as cold as the air in the neighborhood of the engines, by the application of water or other cold bodies.

"Thirdly, Whatever air, or other elastic vapor, is not condensed by the cold of the condenser, and may impede the working of the engine, is to be drawn out of the steam vessels or condensers by means of pumps, wrought by the engines themselves or otherwise.

"Fourthly, I intend in many cases to employ the expansive force of steam to press on the pistons, or whatever may be used [Footnote only goes to page 62] instead of them, in the same manner as the pressure of the atmosphere is now employed in common fire engines. In cases where cold water cannot be had in plenty, the engines may be wrought by the force of steam only, by discharging the steam into the open air, when it has done its office.

"Fifthly, Where motions round an axis are required, I make the steam vessels in form of hollow rings or circular channels, with proper inlets and outlets for the steam, mounted on horizontal axles, like the wheels of a water mill, within them are placed a number of valves that suffer any body to go round the channel in one direction only; in these steam vessels are placed weights so fitted to them as entirely to fill up a part or portion of their channels, yet rendered capable of moving freely in them by the means hereafter specified. When the steam is admitted in these engines between these weights and the valves, it acts equally on both, so as to raise the weight to one side of the wheel, and by the reaction on the valves successively to give a circular motion to the wheel; the valves opening in the direction in which the weights are pressed, but not in the contrary, as the steam vessel moves round it is supplied with steam from the boiler, and that which has performed its office may be discharged by means of condensers or into the open air.

"Sixthly, I intend in some cases to apply a degree of cold not capable of reducing the steam to water, but of contracting it considerably, so that the engines shall be worked by the alternate expansion and contraction of the steam.

"Lastly, Instead of using water to render the piston or other parts of the engines air and steam tight, I employ oils, wax, resinous bodies, fats of animals, quicksilver, and other metals in their fluid state."

To the above specification on this memorandum was added by Watt, that he did not intend that any thing in the fourth article should be understood to extend to any engine where the water to be raised enters the steam vessel itself, or any vessel having an open communication with it.]

The case then described the old engine, and stated that plaintiff's was a new and an useful invention; and that the specification [page 62] was of itself sufficient to enable a mechanic, acquainted with the fire engines previously in use, to construct fire engines producing the effect [page 63] of lessening the consumption of fire and steam in fire engines. And the questions for the opinion of the court were, 1st, Whether the said patent was good in law, and continued by the act of parliament above mentioned? 2dly, Whether the specification was sufficient to support the above patent? On the part of the defendant it was argued on three grounds. 1st, On the patent itself. 2dly, Upon the act of parliament. 3dly, Upon the act and patent taken together. 1st, Upon the patent itself it was objected, that it was for a formed instrument, or machine, and as such void, because it was admitted that there was no specification descriptive of any formed instrument whatever, nor any drawing or model; but that supposing it to be a patent for mere principles, (as the specification stated the invention to consist of principles,) it was neither originally good in law, nor continued by the act, 15 Geo. 3. c. 61. Not good in law, because it did not fall within the construction of the statute, 21 Jac. 1. c. 3. against monopolies, which, in excepting letters patent, speaks of them as patents for the sole working or making of any manner of new manufactures, which is descriptive either of the practice of making a thing by art, or of the thing when made; and that therefore for a mere principle, without having carried it into effect, and produced some new found matter or substance, a patent cannot be good; that the patent was not continued by the act of 15 Geo. 3. c. 61.

[Long footnote: The act was entitled, "An act for vesting in J. Watt, his executors, etc. the sole use and property of steam engines, commonly called fire engines, of his invention." described in the said act for a limited time.

It recited that the king had by letters patent, 5 Jan 9 Geo 3, granted to Watt, his executors, etc "the sole benefit and advantage of making and vending certain engines, by him invented for lessening the consumption of steam and fuel in fire engines, for fourteen years," etc. on condition that he should enroll a specification etc. that Watt had accordingly enrolled a specification of the said engine, (which specification was then set forth as above.) It further recited that Watt had employed many years, and a considerable part of his fortune, in making experiments upon steam and steam engines, commonly called fire engines, with a view to improve them, by which several considerable advantages over the common steam engines are acquired, but on account of the many difficulties which arise in the execution of such large and complex machines, and of the long time requisite to make the necessary trials, he could not complete his intention before the end of the year 1774, when he finished some large engines as specimens of his construction, which had succeeded [Footnote only goes to page 65] so as to demonstrate the utility of the invention; and in order to manufacture these engines with accuracy, and so that they might be sold at a moderate price, a considerable sum of money must be previously expended in erecting mills and other apparatus, and that several years and repeated proofs would be required before any considerable part of the public could be convinced of the utility of the invention and of their interest to adopt the same; the whole term granted by the letters patent might probably elapse before Watt could receive an advantage adequate to his labor and invention; and then it enacted that from and after passing of the act, the sole privilege and advantage of making, constructing, and selling the said engines, herein before particularly described, within the kingdom of Great Britain, and his Majesty's colonies and plantations abroad, should be and were thereby vested in Watt, his executors, administrators, and assigns, for and during the term of 25 years; and it prohibited any other person's making, using, and putting in practice, the said Invention, or counterfeiting or imitating the same, or making any addition to, or subtraction from it, without Watt's license, etc. with a proviso that the act should not extend to prevent any person making any fire or steam engine, or any contrivance relating to the same, which was not the invention of Watt, or which had been publicly used by any person before.]

it was [page 65] shewn that the title of the act was for vesting in the plaintiff Watt the sole property of certain steam engines, called fire engines, of his invention; which, after reciting and taking notice, among other things, that the king had, by his letters patent, granted to Watt the sole benefit and advantage of making, constructing, and selling the engines therein before particularly described, shall be vested in Watt for twenty five years. It was therefore contended that, if the [page 66] patent was really for principles, it was not continued by the act; or supposing it to be well continued, as being described according to its import, it would not be within the protection of the statute against monopolies for the foregoing reasons. 2dly, Upon the act itself it was argued that the recital that the king had granted a patent for making and vending certain engines was false: and it had been adjudged that if a private act of parliament, like the present, be founded upon a false recital, the act is void. 3dly, That if the subject was viewed together, the arguments respecting these instruments separately applied more strongly, inasmuch as if the act was to be considered as explanatory of the patent, or as a part of it, there could not be a doubt but that it meant to grant a monopoly for a formed engine or machine. That upon the whole of the case, it appeared either that the patent was for an entire formed machine, when it ought to have been for an improvement only; and in which case the specification did not correspond with it; or it was for mere principles, which according to the statute 21 Jac. 1. c. 3. against monopolies, could not be the subject of a patent. The case was very elaborately argued on both sides; and after full consideration the judges gave their respective opinions.

Rooke, J. The objections are merely formal; they do not affect the substantial merits of the patentee, nor the meritorious consideration which the public have a right to receive in return for the protection which the patentee claims. With regard to the first objection, it is that the patent is not for a fire engine of a particular construction, but for a new invented method. It presupposes the existence of the fire engine, and gives a monopoly to the patentee of his new invented method of lessening the consumption of steam and fuel in fire engines. The obvious meaning of these words is that he has made an improvement in the construction of fire engines, for what doth method mean but mode or manner of effecting? What method can there be of saving steam or fuel in engines, but by some variation in the construction of them? A new invented method, therefore, conveys to my understanding the idea of a new mode of construction. I think these words are tantamount to fire engines of a newly invented construction; at least I think they will bear this meaning, if they do not necessarily exclude every other. If they will bear this interpretation, then I think this objection which is merely verbal is answered: to which I add that patents for a method, or art of doing particular things, have been so numerous that method may be [page 68] considered as a common expression in instruments of this kind. It would therefore be extremely injurious to the interests of patentees to allow this verbal objection to prevail. As to the second objection, that no particular engine is described, that no model or drawing is set forth; I hold this not to be necessary, provided the patentee so describes the improvement, as to enable artists to adopt it when his monopoly expires. The jury find he has so described it. It is objected that he professes to set forth principles only; but we are not bound by what he professes to do, but what he has really done. If he had proposed to set forth a full specification of his improvement, and had not set it forth intelligibly, his specification would have been insufficient, and his patent void. It seems, therefore, but reasonable, that if he sets forth his improvement intelligibly, his specification should be supported, though he professes only to set forth the principle. The term principle is equivocal; it may denote either the radical elementary truths of a science, or those consequential axioms which are founded on radical truths, but which are used as fundamental truths by those who do not find it expedient to have recourse to first principles. The radical principles on which all steam engines are formed are the natural properties of steam, its expansiveness and condensibility, [page 69] whether the machines are formed in one shape or another; whether the cylinder is kept hot, or suffered to cool; whether the steam is condensed in one vessel or another, still the radical principles are the same. When the present patentee set his inventive faculties to work, he found fire engines already in existence, and the natural qualities of steam already known and mechanically used. He only invented an improvement in the mechanism, by which they might be employed to greater advantage. There is no newly discovered natural principle as to steam, nor any new mechanical principle in his machine. The only invention is a new mechanical employment of principles already known. The specification describes a practical use of improved mechanism, the basis on which the improvement is founded. The object of the patentee was to condense the steam without cooling the cylinder: the means adopted to effectuate this were to inclose the cylinder in a case which will confine the heat or transmit it slowly, to surround it with steam or other heated bodies, and to suffer neither water nor any other substance colder than the steam to enter or touch it during that time. These means are set forth. The objection is that there is no drawing or model of a particular engine; and where is the necessity of such drawing or model [page 70] if the specification is intelligible without it? Had a drawing or model been made, and any man copied the improvement and made a machine in a different form, no doubt this would have been an infringement of the patent: Why? Because the mechanical improvement would have been introduced into the machine though the form was varied. It follows from thence that the mechanical improvement, and not the form of the machine, is the object of the patent; and if this mechanical improvement is intelligibly specified, of which a jury must be the judges, whether the patentee calls it a principle, invention, or method, or by whatever other appellation, we are not bound to consider his terms but the real nature of his improvement and the description he has given of it; and we may, I think, protect him without violating any rule of law. The patent is for a method already adopted, and the two first and most material articles are set forth as already accomplished, and the case states it was new and useful at the time of making the patent. I therefore consider the most essential part of the patent, the keeping the cylinder hot, inclosing it in a case, and surrounding it with steam, as carried into practical effect at the time of granting the patent; this the defendant has infringed. As in the objection of the want of a drawing or model, that at first [page 71] struck me as of great weight. I thought it would be difficult to ascertain what was an infringement if there was no additional representation of the improvement, or thing methodized. But I have satisfied my mind thus: infringement or not is a question for the jury: in order to decide this case, they must understand the nature of the improvement or thing infringed; if they can understand it without a model, I am not aware of any rule of law which requires a model or drawing to be set forth, or which makes void an intelligible specification of a mechanical improvement, merely because no drawing or model is annexed. In the present case the want of a drawing or a model did not occasion any difficulty to the jury; they have expressly decided that Mr. Watt has the merit of a new and useful invention and that this invention was infringed by the defendant. How then can I say that they could not understand it for want of a drawing? especially when they have added that the specification is sufficient to enable a mechanic, acquainted with fire engines previously in use, to construct fire engines producing the effect of lessening the consumption of fuel and steam, upon the principle invented by the plaintiff. For these reasons I think the second objection, that no particular engine is set forth, is not of sufficient weight to destroy the effect of the patent.

Heath, J. [footnote: The opinions of Judges Heath and Buller in this case are controverted in the case of Hornblower and Maberly against Boulton and Watt, cited hereafter.]

This patent is expressly for a new invented method of lessening the consumption of steam and fuel in fire engines. It appears that the invention of the patentee is original, and may be the subject of a patent; but the question is, inasmuch as his invention is to be put in practice by means of machinery, whether the patent ought not to have been for one or more machines, and whether this is such a specification as entitles him to the monopoly of a method? If method and machinery had been used by the patentee as convertible terms, and the same consequences would result from both, it might be too strong to say that the inventor should lose the benefit of his patent by the misapplication of his term. In truth it is not so. His counsel have contended for the exclusive monopoly of a method of lessening the consumption of steam and fuel in fire engines, and that therefore would better answer the purposes of the patentee, for the method is a principle reduced to practice; it is in the present instance the general application of a principle to an old [page 73] machine. There is no doubt that the patentee might have obtained a patent for his machinery, because the act of parliament he obtained acknowledged his patent, and he himself in 1782 procured a patent for his invention of certain new improvements upon steam and fire engines for raising water, etc., which contained new pieces of mechanism, applicable to the same. Upon this statement the following objections arise to the patent which I cannot answer, namely, that if there may be two different species of patents, the one for an application of a principle to an old machine, and the other for a specific mechanism, one must be good and the other bad. The patent that admits the most lax interpretation should be bad, and the other alone conformable to the rules and principles of common law and to the statute on which patents are founded. The statute 21 Jac. 1 prohibits all monopolies, reserving to the king by an express proviso, so much of his ancient prerogative as shall enable him to grant letters patent and grants of privileges for the term of fourteen years or under of the sole working or making of any manner of new manufactures within this realm to the true and first inventor of such manufactures. What then falls within the scope of this proviso? Such manufactures as are reducible to two classes. The first class includes machinery, the second, substances, such as medicines, formed by chemical or other processes, where the visible substance is the thing produced, and that which operates, preserves no permanent form. In the first class the machine, and in the second the substance produced, is the subject of the patent. I approve of the term manufacture in the statute, because it precludes all nice refinements, it gives us to understand the reason for the proviso, that it was introduced for the benefit of trade. That which is the subject of a patent ought to be specified, and it ought to be that which is vendible, otherwise it cannot be a manufacture; this is a new species of manufacture, and the novelty of the language is sufficient to excite alarm. It has been urged that other patents have been litigated and established; for instance Dolland's, which was for a refracting telescope, I consider that as substantially an improved machine. A patent for an improvement of a refracting telescope, and a patent for an improved refracting telescope, are in substance the same, the same specification would serve for both patents; the new organization of parts is the same in both. I asked in the argument for an instance of a patent for a method, and none such could be produced; I was then pressed with patents for chemical processes, many of which are for a method, but that is from an inaccuracy of expression, because the patent is in truth for a vendible substance. To pursue this train of reasoning still farther, I shall consider how far the arguments in support of this patent will apply to the invention of original machinery, founded on a new principle. The steam engine furnishes an instance. The Marquis of Worcester discovered in the last century the expansive force of steam and first applied it to machinery. As the original inventor, he was already entitled to a patent. Would the patent have been good applied to all machinery, or to the machines which he had discovered? The patent decides the question. It must be for the vendible matter, and not for the principle. Another objection may be urged against the patent upon the application of the principle to an old machine, which is that whatever machinery may be hereafter invented would be an infringement of the patent if it be founded on the same principle. If this were so, it would reverse the clearest positions of law respecting patents for machinery, by which it has been always holden that the organization of a machine may be the subject of a patent, but principles cannot. If the argument for the patentee were correct, it would follow that where a patent was obtained for the principle, the organization would be of no consequence. Therefore the [page 76] patent for the application of the principle must be as bad as the patent for the principle itself. It has been urged by the patentee that he could not specify all the cases to which his machinery could be applied. The answer seems obvious, that what he cannot specify he has not invented. The finding of the jury, that steam engines may be made upon the principles stated by the patentee by a mechanic acquainted with the fire engines previously in use, is not conclusive.

This patent extends to all machinery that may be made on this principle, so that he has taken a patent for more than he has specified; and as the subject of his patent is an entire thing, the want of a full specification is a breach of the conditions and avoids the patent. Indeed it seems impossible to specify a principle and its application to all cases, which furnishes an argument that it cannot be the subject of a patent. It has been usual to examine the specification as a condition on which the patent was granted; I shall now consider it in another point of view. It is a clear principle of law that the subject of every grant must be certain. The usual mode has been for the patentee to describe the subject of it by the specification; the patent and the specification must contain a full description. Then in this, as in most other cases, the patent would be void for the uncertain description of the thing granted, if it were not aided by statute. The grant of a method is not good, because it is uncertain; the specification of a method or the application of a principle is equally so, for the reasons I have alleged.

Buller, J. It was expressly admitted in the argument that there were no new particulars in the mechanism, that it was not a machine or instrument which the plaintiffs had invented, that mechanism was not pretended to be invented in any of its parts, that this engine consists of all the same parts as the old engine, and that the particular mechanism is not necessary to be considered. The fact of there being nothing new in the engine drove the counsel to argue on very wise grounds, and to touch upon the possibility of maintaining a patent for an idea or principle, though I think it was admitted that a patent could not be sustained for an idea or principle alone. The very statement of what a principle is proves it not to be a ground for a patent. It is the first ground and rule for arts and sciences, or in other words the elements and rudiments of them. A patent must be for some new production from those elements and not for the elements themselves. The arguments which have been introduced were very [page 78] much calculated to keep clear of difficulties which it was foreseen might be introduced into the case: as 1st, That unless the principle can be supported as the ground of the patent, there may be some danger of confirming the defendant's objection to it: 2ndly, That unless the principle can be supported, it may open a fatal objection to the specification, because that does not state in what manner the new machine is to be constructed, how it varies from the old one, or in what way the improvements are to be added: or thirdly, Because the patent embraces the whole principle, and is founded on that alone; but the invention is taken to consist of an improvement or addition alone. Another objection may arise, both to the patent and specification, viz. that the patent is granted for the whole engine, and not for the addition or improvement only. Perhaps it may be convenient and judicious to keep those objections as much as possible in the background and out of the view of the court, but it is our duty to sift and dive into the facts and circumstances of the case, and the bearings and consequences of them, as far as our abilities or knowledge of the subject will admit. There is one short observation arising on this part of the case which seems to me to be unanswerable; and that is that if the principle alone be the foundation of the patent, it can [page 79] not possibly stand with that knowledge and discovery which the world were in possession of before. The effect, the power, and the operation of steam were known long before the date of this patent; all machines which are worked by steam are worked by the same principle; the principle was known before; and therefore, if the principle alone be the foundation of the patent, though the addition may be a great improvement, as it certainly is, yet the patent must be void ab initio; but then it was said that though an idea or a principle alone would not support the patent, yet that an idea reduced into practice, or a practical application of a principle, was a good foundation for a patent and was the present case. The mere application or mode of using a thing was admitted not to be sufficient ground; for on the court putting the question, whether if a man by science were to devise the means of making a double use of a thing known of before, he could have the patent for that? it was rightly and candidly admitted that he could not. The method and the mode of doing a thing are the same, and I think it impossible to support a patent for a method only without having carried it into effect and produced some new substance. But here it is necessary to inquire what is meant by a principle reduced to practice. It can only mean a practice [page 80] founded on principle, and that practice is the thing done or made, or, in other words, the manufacture which is invented. This brings us to the true foundation of all patents, which must be the manufacture itself; and so says the statute 21 Jac 1. c. 3. All monopolies, except those allowed by that statute, are declared to be illegal and void; they were so at common law; and the sixth section excepts only those of the sole working or making any manner of new manufacture; and whether the manufacture be with or without principle, produced by accident or art, is immaterial. Unless this patent can be supported for the manufacture, it cannot be supported at all. I am of opinion that the patent is granted for the manufacture, and I agree that verbal criticisms ought not to avail, but that principle in the patent and engine in the act of parliament mean and are the same thing. Besides, the declaration is founded on a right to an engine, and therefore, unless the plaintiffs can make out their right to that extent, they must fail. In most of the instances of the different patents mentioned, the patents were for the manufacture, and the specification rightly stated the method by which the manufacture was made, but none of them go to the length of proving that a method of doing a thing, without the thing being done or actually reduced [page 81] into practice, is a good foundation for a patent. When the thing is done or produced, then it becomes the manufacture, which is the proper subject of a patent. Dolland's patent was for object glasses, and the specification properly stated the method of making those glasses. And as I mentioned in the course of the argument, the point contested in that case was whether Dolland or Hall was the first and true inventor within the meaning of the statute, Hall having first made the discovery in his own closet, but never made it public; and on that ground Dolland's patent was confirmed. Mechanical and chemical discoveries all come within the description of manufactures; and it is no objection to either of them that the articles of which they are composed were known and were in use before, provided the compound article, which is the object of the invention, is new. But then the patent must be for the specific compound, and not for all the articles or ingredients of which it is made. The first inventor of a fire engine could never have supported a patent for the method and principle of using iron. Nor could Dr. James, supposing his patent had been clear of other objections, have sustained a patent for the method and principle of using antimony. In the first place the patent must have been for the fire engine eo nomine, and in the second, for [page 82] the specific compound powder. Suppose the world were better informed than it is how to prepare Dr. James' fever powder, and an ingenious physician should find out that it was a specific cure for a consumption if given in particular quantities? I think it must be conceived that such a patent would be void; and yet the use of the medicine would be new, and the effect of it as materially different from what is known as life is from death. So in the case of a late discovery, which as far as experience has hitherto gone is said to have proved efficacious, that of the medicinal properties of arsenic in curing agues, could a patent be supported for the sole use of arsenic in aguish complaints? The medicine is not new, and any patent for it or for the use of it, would be void. The case of water tabbies, which has been often mentioned in Westminster Hall, may afford some illustration of his subject. That invention first owed its rise to the accident of a man's spitting on a floor cloth, which changed its color, from whence he reasoned on the effect of intermixing water with oils or colors and found out how to make water tabbies, and had his patent for water tabbies only; but if he could have had a patent for the principle of intermixing water with oils or colors, no man could have had a patent for any distinct manufacture produced on the same principle, yet the floor cloth and the tabby are distinct substances, calculated for distinct purposes, and were unknown to the world before, a patent for one would be no objection to a patent for another. The true question in this case is whether the plaintiff's patent can be supported for the engine? I have already said I consider it as granted for the engine; and if that be the right construction of the patent, that alone lays all the arguments about ideas and principles out of the case. The objections to this patent, as a patent for the engine, are two, 1st, That the fire engine was known before; and, secondly, though the plaintiff's invention consisted only of an improvement of the old machine, he has taken a patent for the whole machine, and not for the improvement alone. As to the first, the fact, which plaintiff's counsel were forced repeatedly to admit, viz: that there was nothing new in the machine, is decisive against the patent. And the second objection is equally fatal: that a patent for an addition or improvement may be maintained is a point which has never been distinctly decided. For of late times, wherever the point has arisen, the inclination of the court has been in favor of the patent for the improvement; and the parties have acquiesced, when the objection might have been brought directly before the court. "In [page 84] Morris vs. Branson, which was tried at the sitting after Easter term, 1776, the question was whether a patent for making oilet holes, or net work, in silk, thread, cotton, or worsted, and which was done only by an addition to the old stocking frame, was valid? Lord Mansfield said that he had paid great attention to it and mentioned it to all the judges. And that if the general point of law, viz. that there can be no patent for an addition only was with the defendant, it was open upon the record, and he might move in arrest of judgment; but that the objection would go to repeal almost every patent that was ever granted. [Footnote: The United States' law of February 21, 1793, expressly grant the right of obtaining a patent for a "new and useful improvement on any art, machine, manufacture, or composition of matter," and decisions in England allow patents for the same purpose.] There was a verdict for the plaintiff with 500œ damages, and no motion was made in arrest of judgment. Though his lordship did not mention what were the opinions of the judges or give any direct opinion himself, yet we may safely collect that he thought on good consideration that the patent was good; and though the objection was taken at the trial, it was not afterwards generally persisted in; since that time it has been the generally received opinion in Westminster Hall that [page 85] a patent for an addition only is good, but it must be for the addition only and not for the old machine too. In Jessop's case for an improved movement in watches, the patent was held to be void because it extended to the whole watch and the invention was of a particular movement only. It was admitted that the patent should be applied to the invention itself, but it was contended that, if in consequence the patent gave a right to the whole engine, that would be no objection. To this I answer that if the patent be confined to the invention, it can give no right to the engine or to anything beyond the invention itself. When a patent is taken for an improvement only, the public have a right to purchase that improvement by itself, without being encumbered with other things. A fire engine of any considerable size will cost about 1200œ, and suppose the alteration made by the plaintiff, with a fair allowance for profit, would cost 50œ or 100œ, is it to be maintained that all the persons who already have fire engines must be at the expense of buying new ones from the plaintiff or be excluded from the use of the improvement? So in the case of the watch, may not other persons in the trade buy the new movement and work it up into watches made by themselves? Where men have neither fire engines nor watches, it is highly probable that they will go to the inventor of the last and best improvement for the whole machine; and if they do, it is an advantage which the inventor gets from the monopoly vested in him. But here the plaintiffs claim the right to the whole machine. To that extent, their right cannot be sustained, and therefore I am of opinion that there ought to be judgment for the defendant.

Eyre, Ch. J. Patent rights are no where, that I can find, accurately discussed in our books; we must, therefore, resort to the statute, 21 Jac. 1. c. 3. We there find a monopoly defined to be "the privilege of the sole buying, selling, making, working, or using, any thing, within this realm", and this is generally condemned as contrary to the fundamental law of the land; but the 5th and 6th sections of that statute save letters patent and grants of privileges of the sole working or making of any manner of new manufacture within this realm, to the first and true inventor, or inventors, of such manufactures, with this qualification, "so they be not contrary to the law, nor mischievous to the state," in these three respects, first, "by raising the prices of commodities at home"; secondly, "by being hurtful to trade"; or thirdly, "by being generally inconvenient." According [page 87] to the letter of the statute, the saving goes only to the sole working and making; the sole buying and using remain under the general prohibition, and with apparent good reason for so remaining, for the exclusive privilege of buying, selling, and using could hardly be brought within the qualification of not being contrary to law and mischievous to the state in the respects which I have mentioned. I observe also that according to the letter of the statute, the words "any manner of new manufacture", in the saving, fall very short of the words any thing in the first section.

It was admitted in the argument at the bar that the word manufacture in the statute was of extensive signification, that it applied not only to things made but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice. Let us pursue this admission. Under things made we may class in the first place new compositions of things, such as manufacturers, in the most ordinary sense of the word; secondly, all mechanical inventions, whether made to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making, we may class all new artificial manners of operating with [page 88] the hand or with instruments in common use, new processes in any art producing effects useful to the public. When the effect produced is some new substance or composition of things, it should seem that the privilege of the sole making or working ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which, though perhaps also new, will be only useful as producing the new substance. Upon this ground, Dolland's patent was perhaps exceptionable, for that was for a method of producing a new object glass, instead of being for the object glass produced. If Dr. James' patent had been for his method of preparing his powders, instead of the powders themselves, this patent would have been objectionable on the same ground. When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating with or without new mechanism by which the effect is produced. To illustrate this, the effect produced by David Hartley's invention for securing buildings from fire is no substance or composition of things. It is a mere negative quality, the absense of fire. The effect is produced by a new method of disposing iron plates in buildings. In the nature [page 89] of things the patent could not be for the effect produced. I think it could not be for the making the plates of iron, which, when disposed in a particular manner, produced the effects, for these things are in common use. But the invention consisting in the method of disposing these plates of iron so as to produce their effect, and their effect being an useful and meritorious one, the patent seems to have been very properly granted to him for his method of securing buildings from fire, and this compendious analysis of new manufactures mentioned in the statute satisfies my doubt whether anything could be the subject of a patent but something organized, and capable of precise specification. But for the more satisfactory solution of the other points which are made in this case, I shall pursue this subject a little further. In Mr. Hartley's method, plates of iron are the means which he employs, but he did not invent those means, the invention wholly consisting in the new manner of using, or, I would rather say, of disposing a thing in common use, and which thing every man might make at his pleasure, and which therefore, I repeat, could not in my judgment be the subject of the patent. In the nature of things, it must be that in the carrying into execution any new invention, use must be made of certain means proper for the operation. [page 90] Manual labor, to a certain degree, must always be employed; the tools of artists frequently; often things manufactured, but not newly invented, such as Hartley's iron plates; all the common utensils used in conducting any process, and so up to the most complicated machinery that the art of man has ever devised. Now let the merit of the invention be what it may, it is plain that the patent, in almost all of these cases, cannot be be granted for the means by which it acts, for in them there is nothing new, and in some of them nothing capable of appropriation. Even where the most complicated machinery is used, if the machinery itself is not newly invented, but only conducted by the skill of the inventor so as to produce a new effect, the patent cannot be for the machinery. In Hartley's case it could not be for the effect produced, because the effect, as I have already observed, is merely negative, though it was meritorious. In the list of patents with which I have been furnished, there are several for new methods of manufacturing articles in common use, where the sole merit, and the whole effect produced, are the saving of time and expense, and thereby lowering the price of the article and introducing it into more general use. Now I think these methods may be said to be new manufactures in one of the common acceptations of the word, as we speak [page 91] of the manufactory of glass or any other thing of that kind. The advantages to the public from improvements of this kind are beyond all calculation important to a commercial country, and the ingenuity of artists who turn their thoughts toward such improvements is in itself deserving of encouragement; and, in my apprehension it is strictly agreeable to the spirit and meaning of the statute of Jac. 1 that it should be encouraged; and yet the validity of these patents, in point of law, must rest upon the same foundation as that of Mr. Hartley's.

The patent cannot be for the effect produced, for it is either no substance at all, or what is exactly the same thing as to the question upon a patent, no new substance, but an old one, produced advantageously to the public. It cannot be for the mechanism employed. It must then be for the method, and I would say in the very significant words of Lord Mansfield in the great case of the copy right, it must be for method, detached from all physical existence whatever. And I think we should well consider what we do in this case, that we may not shake the foundation upon which these patents stand. Probably I do not overrate it when I state that two thirds, I believe I might say three fourths, of all patents [page 92] granted since the statute passed are for methods of operating and of manufacturing, producing no new substances and employing no new machinery. If the list were examined, I dare say there might be fifty patents for methods of producing all the known salts, either the simple salt or the old compounds. The different sorts of ashes used in manufactures are many of them inventions of great merit, many of them probably mere speculations of wild projectors; the latter ought to fall, the former to stand. If we wanted an illustration of the possible merit of a new method of operating with old machinery, we might look to the identical case now in judgment before the court. If we consider into what general use fire engines are come, that our mines cannot be worked without them, that they are essentially necessary to the carrying on many of our principle manufactures, that these engines are worked at an enormous expense in coal, which in some parts of the kingdom can with difficulty be procured at all in large quantities, it is most manifest that any method found out for lessening the consumption of steam in the engines, which by necessary consequence lessens the consumption of coals expended in working them, will be of great benefit to the public, as well as to the individual who thinks fit to adopt it. And shall it now be said, after we [page 93] have been in the habit of seeing patents granted in the immense number in which they have been granted for methods of using old machinery to produce substances that were old, but in a more beneficial manner, and also for producing negative qualities by which benefits result to the public, by a narrow construction of the word manufacture in this statute, that there can be no patent for methods producing this new and salutary effect, connected, and intimately connected, as it is with the trade and manufactures of the country? An improper use of the word principle in the specification, set forth in this case, has, I think, served to puzzle it. Undoubtedly there can be no patent for a mere principle, but for a principle so far embodied and connected with corporeal substances as to be in a condition to act and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent. Now this is, in my judgment, the thing for which the patent stated in the case was granted, and this is what the specification describes, though it miscalls it a principle. It is not that the patentee has conceived an abstract notion that the consumption of steam in fire engines may be lessened, but he has discovered a practical manner of doing it, he has taken the patent. Surely this is a [page 94] very different thing from taking a patent for a principle; it is not for a principle but for a process. I have dwelt more largely on this part of the case, because, in my apprehension, this is the foundation upon which the whole argument will be found to rest. If, upon the true construction of the statute, there may be a patent for a new method of manufacturing, or conducting chemical processes, or of working machinery, so as to produce new and useful effects, then I am warranted to conclude that this patent was in its original creation good. I will next consider the specification before I proceed to the consideration arising upon the statute for continuing this patent. The specification has reference to the patent and not to the statute, and therefore it will be proper to consider it in this stage of the argument. I distinctly admit that if this patent is to be taken to be a patent for a fire engine, the specification is not sufficient; it is not a specification of mechanism of any determinate form having component parts capable of precise arrangement and of particular description. On the other hand, if the patent is not for a fire engine, but in effect for a manner of working a fire engine so as to lessen the consumption of steam, which, as I conceive, the words of the patent import, let us see whether this specification does not sufficiently describe [page 95] a manner of working fire engines so as to produce the effects expressed in the patent, and whether the only objection to this specification is not that it is loaded with a redundancy of superfluous matter.

The substance of the invention is a discovery that the condensing the steam out of the cylinder, the protecting the cylinder from the external air, and keeping it hot to the degree of steam heat, will lessen the consumption of steam. This is no abstract principle; it is, in its very statement, clothed with practical application. It points out what is to be done in order to lessen the consumption of steam. Now the specification of such a discovery seems to consist in nothing more than saying to the constructor of a fire engine, "for the future condense your steam without the body of the cylinder, instead of condensing it within it, put something round the cylinder to protect it from the external air, and preserve the heat within it, and keep your piston air tight without water." Any particular manner of doing this, one should think, would hardly need to be pointed out, for it can scarcely be supposed that a workman capable of constructing a fire engine would not be capable of making such additions to it as should be necessary to enable him to execute [page 96] that which the specification requires him to do. But if a very stupid workman should want to know how to go about this improvement, and in answer to his question was directed to conduct the steam which was to be condensed from the cylinder into a close vessel by means of a pipe and valve communicating with the cylinder and the close vessel, to keep the close vessel in a state of coldness sufficient to produce condensation, and to extract from it any part of the steam which might not be condensed by the pump, and was told to enclose the cylinder in a wooden case, and to use a resinous substance instead of water to keep the piston air tight, can it be imagined that he would be so stupid as not to be able to execute this improvement with the assistance of these plain directions? If any man could for a moment imagine that this was possible, I observe that this difficulty is put an end to, because the Jury have found that a workman can execute this improvement in consequence of the specification. Some machinery, it is true, must be employed, but the machinery is not of the essence of the invention, but incidental to it. The steam must pass from the cylinder to the condensing vessel, for which purpose there must be a valve to open, a pipe to convey, and a vessel to receive the steam. But this cannot be called new invented [page 97] machinery, whether considered in the parts or in the whole, and therefore there can be no patent for this addition to the fire engines. Suppose a new invented chemical process, and the specification should direct that some particular chemical substance should be poured upon gold in a state of fusion, it would be necessary, in order to this operation, that the gold should be put in a crucible and should be melted in a crucible; but it would hardly be necessary to state in the specification the manner in which or the utensils with which the operation of putting gold into a state of fusion was to be performed. They are mere incidents with which every man acquainted with the subject is familiar.

Some objections were made in the course of the argument at bar on its being left unascertained, both in the specification and case, to what extent the consumption of steam would be lessened by the invention, but the method does not profess to ascertain this; it professes to lessen the consumption and to make the patent good, the method must be capable of lessening the consumption to such extent as to make the invention useful. More precision is not necessary, and absolute precision is not practicable. The quantity of steam which will be saved in [page 98] each machine must depend on a great variety of circumstances respecting each individual fire engine, such as the accuracy of casting or boring the cylinder, or the dimensions of it, the accuracy of the workmen in putting his apparatus together, the care in keeping the cylinder in a property degree of heat, and the more or less perfect order for working in which the engine is kept. All these circumstances will affect the quantity of steam that is to be lessened.

Some weighty observations have been made upon parts of this specification, but those parts appear to me not properly to relate to the method described in the patent; they are rather intimations of new projects of improvements in fire engines, and some of them, I am very ready to confess, either very loosely described or not accurately conceived. I do not undertake to pronounce which, but one or the other is pretty clear. They are the fourth and fifth articles; the first, second, and third appear to me to belong to this method and very clearly to point out and explain the method to every man who has a common acquaintance with the subject and to be intelligible even to those who are unacquainted with it. If there be a specification to be found in that paper which goes to the subject of the invention as described in the patent, I think the rest may very well be rejected as superfluous. If indeed the defendant could have shown that he had not pirated the invention, which is sufficiently specified, but that what he hath done hath a reference to another method of lessening the consumption of steam, to which the questionable parts of the specification were meant to relate, the objections which have been alluded to might have been taken to both the patent and the specification. But I would observe here that with regard to this and some other difficulties, there is no question reserved in this case respecting the infringement of the patent. The general fact only is stated; that it has been infringed by the defendant; and in consideration of a case reserved, we are not to search for difficulties upon which the parties have not proposed to state any point to us for our judgment, and into which I think we are not at liberty to go. The difficulty which struck me, as it did my brother Buller, with respect to the declaration is applied to the patent as it originally stood, not as it now stands, continued by an act of parliament. If we were at liberty to go into it, that difficulty might perhaps produce a nonsuit, and that nonsuit a new action, in which the difficulty would be removed. But this cause was instituted to try the merits of the patent; I thought, therefore, [page 100] that a formal objection was very wisely overlooked. Supposing then the difficulties upon the patent itself and the specification to be got over, the act of parliament remains to be considered. The objection stated in the strongest manner would amount to this, that the act continues a patent for a machine, when in fact the patent is for a process. It is to be observed that there is nothing technical in the composition or language of an act of parliament. In the exposition of statutes, the intent of parliament is the guide. It is expressly laid down in our books, (I do not here speak of penal statutes,) that every statute ought to be expounded, not according to the letter, but to the intent, 2 Roll. Abr. 118, Plowd. 350, 363. This doctrine has been carried into effect by cases. Though a corporation be misnamed in an act of parliament, if it appears that the corporation was intended, it is sufficient, 10 Co. 576. So the statute of quia emptores terrarum has said that every one shall hold of the lord paramount secundum quantitatem terrae, but this shall be construed secundum valorem terrae; for so was the intent, Plowd. 10, 57. We all know that an act of parliament may be extended in equity.

No authority has been cited which amounts to proof that a mistake in point of description [page 101] in an act of parliament of this nature, when the true meaning can be discovered, and when there is a foundation on which the act can be supported, shall vitiate it. The case cited from Plowden differs essentially from this case. The act of parliament in that case gave effect to a supposed legal attainder and proceeded on it altogether. If the ground work fell, and there was no legal attainder, nothing remained; the supposed attainder in that case fell, consequently all fell. Now the difference between that case and the present case is this; here the true patent meant to be described exists and may therefore be a ground work to support the act. This case was compared to the case of the king being deceived in his grant. But I am not satisfied that the king, proceeding by and with the advice of parliament, is in that situation in respect of which he was under this special protection of the law, and that he could on that ground be considered as deceived in his grant; no case was cited to prove that position. The objection on the act of parliament is of the same nature as one of the objections to the specification. The specification calls a method of lessening the consumption of fuel in fire engines a principle, which it is not, the act calls it an engine, which perhaps also it is not, but both the specification and the statute are referable to the same thing, and [page 102] when they are taken with their correlative are perfectly intelligible. Upon the wider ground I am therefore of opinion that the act has continued this patent. A narrower ground was taken in the argument which was to expound t