CHAP. II.

GENERAL RULES WHICH AFFECT PATENTS.

BEFORE giving an analysis of the acts and regulations which now govern the practice of patents, it will be useful to furnish the reader with a brief summary of the principles which have resulted from the common law, the statute of monopolies, the several acts prior to the 16 & 17 Victoria, and the decisions of the Courts founded thereon.

1. What inventions are patentable. Though novelty is an essential condition of a patent, all new inventions are not necessarily patentable. For instance, a new game of skill or chance, a newly discovered natural substance suitable for food, such as a new kind of grain or pulse, or a new natural manure, such as guano, or mineral nitrate of soda, are not susceptible of the protection of a patent.

2. What is patentable as a new manufacture.· A patent for a new manufacture may be for a substance or thing made, a machine or instrument for making, an improvement on substances or instruments already known, a combination or arrangement of known inventions, a principle, method or process carried into practice by tangible means, a chemical discovery, or a foreign invention.

3. Invention must not have been described in published work, &c. In order that an invention be accounted new, it must not have been described in a scientific

work known in this country; and, though it may be learned abroad, it must not have been suggested by a friend at home.

4. Of two discoverers, the first who obtains patent is preferred. If two persons discover the same thing, he who first obtains patent (before the other has made the matter public) is considered the true and first inventor.

5. Two inventions with same result effected by dif ferent means both patentable. When the results of two inventions are the same, but carried into effect by different means, patents for both are valid. But the difference must be substantial and not colourable.

6. Not necessary to state that an invention has been communicated from abroad. - It has been the common practice when an invention has been communicated by a foreigner residing abroad, to state that fact in the title of the patent. But this is not necessary.

7. Must not have been publicly used. - An invention must not have been publicly used, either by the inventor or other persons prior to patent.

8. Secret known to few, but in public use by one, not patentable. If the secret of an invention be known. only to a few persons, and one of them has put it in practice and made actual public use of it, then a patent afterwards obtained by any one of them is void.

9. Prior inventors not precluded from using their invention by subsequent patent granted to another. But if parties have practised in their factory a process afterwards patented by another, they cannot be prevented by the subsequent patent from continuing to use the process.

*

*C. J. Tindall in Cornish v. Keene. This principle is expressly affirmed in the patent laws of several foreign states.

10. Public use. It is a difficult point to determine in certain cases what constitutes public use. Baron Alderson says, public use means a use in public so as to come to the knowledge of others than the inventor, as contradistinguished from the use of it by himself in his chamber. And Judge Bayley argues, that if a man shall have made a discovery by his own experiments, judgment, and skill, it is no objection that another has made a similar discovery unless it has become public. Lord Abinger likewise remarks, that what is meant by public use and exercise is this; a man is entitled to a patent for his invention, and shall not be prejudiced by any other man having invented it before and not having made use of it. A great many patents have been taken out, for example, upon suggestions made in the celebrated work of the Marquis of Worcester. Yet, as he never acted on his speculations nor brought out any machines whatsoever, these patents are good. On the other hand, Lord Abinger instances the case of a man, who having invented a lock, put it on his own gate, and thus used it for a dozen years. This he says is a public use, that is, used in a public manner, though not used by the public, and no one is entitled to patent it.

11. Previous experiments by others do not vitiate a patent. Previous experiments made by others but not prosecuted to completion, although approaching the patented invention, have been held not to vitiate. it.

12. Patent may include subject matter of another unexpired patent. A patent may be taken out which may include the subject matter of another patent not yet expired, but of course the second patentee must obtain the licence of the first before working his patent.

13. New combination of old inventions patentable.— A patent for a machine is good, each part of which was in use before, provided that the combination be new, and productive of a novel result.

14. A known thing applied to an analogous use not patentable.—A patent is invalid for applying a wellknown thing capable of being applied to a great variety of uses to some exactly analogous use. Thus a patent for a wheel already in use on ordinary roads, which the patentee applied to a railway, was declared null, since so far from the public benefit being consulted by the protection of such applications of known inventions, the result would be precisely the other way.

15. Possessor of an invention which he has sold publicly, cannot patent it.—An inventor, possessed of a secret invention, who shall for a period of years retain the monopoly, and sell the produce of his invention publicly, cannot be allowed afterwards to take out a patent for it, since he would thus derive from his invention more benefit than could be obtained during the lawful period of fourteen years, a system which, if encouraged, would materially retard the progress of science and art.

16. Caution respecting experiments.—The extent to which experiments may be carried, with a view to testing the efficacy of an invention, or the full results of a discovery without risking the validity of a grant, has not yet been legally defined. Great caution is necessary in this respect.

17. To be patentable a thing must be vendible. -A patent must be vendible matter, or it cannot claim the protection of a law made for the encouragement of trade.

18. Patent for improvement must be confined to that improvement.-A patent for an improvement must be

confined to such improvement; thus, a patent was held void which was taken out for the whole watch, whereas the invention consisted in a single movement. But where a patent for an improvement recites the previous patent on which the new patent is alleged to be an improvement, such recital has been held to validate the patent, though the title may imply an invention as extensive as the original patent.

19. Invention must be a useful and substantial improvement. A patent must be a useful, real, and substantial improvement. If the manufacture in its new state merely answers as well as before, it is not worthy of patent.

20. A principle, as such, not patentable.—A principle or method, as such, is not patentable. It must be applied to some substantial, tangible, and vendible use, to some purpose of human industry or enjoyment.

21. Chemical discovery must be new, vendible and beneficial. Medicines.-A chemical discovery comes within the description of a manufacture only when it gives to the public a compound article new, vendible, and beneficial. Of this description are medicines. It is no sound objection to a patent for a medicine that the properties of the drugs of which it is composed were already known if the grant be for the specified compound and not for the ingredients.

22. Ingredients, &c., of chemical discovery must be fully stated. When a patent is for a chemical discovery, inasmuch as the thing produced, and not the principle or method, is the subject of the patent, the ingredients, their proportions, the times of mixing, &c., should be fully stated, and also the beneficial use to which the substance can be applied.

23. Foreign inventions.- Foreign inventions im