Practical Observations concluding John Davies's Patent Cases (1816)
Reproduced below is material from Practical Observations concluding John Davies, A Collection of the most Important Cases relating to Patents of Invention (1816). In view of its length and detail, this concluding section of the book is being posted on the blog in six installments.
Installment 1 of 6: Patentable Subject Matter
This first installment concerns what is patentable subject matter.
John Davies, A Collection of the most Important Cases relating to Patents of Invention (1816)
Practical ObservationsPRACTICAL OBSERVATIONSFrom these cases we may be led briefly to consider what is and what is not the subject of a patent, and who is the first inventor; what is that previous use of any thing which will vitiate a patent; what is the description required in the specification; and lastly, to state some matters connected with patents not coming under either of those heads; and in pursuing those points, that proper authorities may be given for what is hereafter laid down, we shall as much as possible avoid using any language of our own, but shall chiefly make use of the language of the learned judges, referring to the cases in which they have made the observations hereafter stated.
THE FOREGOING CASES.
First, as to what is the subject of the patent. The sixth section of the statute of 21 Jac. for restraining monopolies, provides that any declaration contained in the said act “shall not extend to any letters patent and grants of privilege for the term of fourteen years or under thereafter, to be made of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor or inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient.”
The chief design of this act evidently was to restrain the prerogative of the crown in respect to monopolies which had before been carried to a very mischievous extent, but reserving a power for the salutary exercise of such prerogative in the case of new and beneficial inventions.
Prior to this statute, the courts had been very much embarrassed with a great variety of cases upon royal grants of monopolies, which had been mostly determined to be invalid, either as being against the common or statute law, or both; but this act, declaratory of the law upon the subject, has since rendered the matter more certain.
We will begin with the words of the proviso, and shew in the first place what have been held to be “new manufactures.” The word manufacture is of extensive signification: it applies 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. Under things made, we may class new compositions of things, such as manufactures in the most ordinary sense of the word: 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 the had, or with instruments in common use, new processes in any art producing effects useful to the public. [NOTE: Sir James Eyre, in Boulton v Bull, p. 207.] New methods of manufacturing articles in common use, where the whole merit and effect produced are the saving of time and expense, and thereby lowering the price of the article, may be said to be new manufactures, in one of the common acceptations of the word, and agreeable to the spirit and meaning of the act. [Ibid. p.210.]
If a patentee claims a monopoly for an engine or machine, composed of material parts, which are to produce the effect described, and the mode of producing this is so described as to enable mechanics to produce it, it is a patent for a manufacture, which is something made by the hands of man, and the patent is good. No technical words being necessary to explain the subject of a patent. [NOTE: Lord Kenyon, in Hornblower v Boulton, p. 225.]
A new combination of old materials so as to produce a new effect, is the subject of a patent. [NOTE: Lord Ellenborough, in Huddart v. Grimshaw, p. 267.] In inventions, through the medium of mechanism, there are some materials which are common, and cannot be supposed to be appropriated in the terms of any patent. There are common elementary materials to work with in machinery, but it is the adoption of those materials to the execution of any particular purpose that constitutes the invention; and if the application of them be new; if the combination in its nature be essentially new; if it be productive of a new end, and beneficial to the public, it is that species of invention, which, protected by the king's patent, ought to continue to the person the sole right of vending it. [NOTE: Lord Ellenborough, in Huddart v. Grimshaw, p. 278] If he states any particular thing before in common use, applied in a new manner to the production of, and effecting a new end, that is part of the substance of the invention. [NOTE: Ibid. p. 279.]
It is no objection to mechanical or chemical discoveries, that the articles of which they are composed were known and in use before, provided the compound article is new; but the patent must be for the compound article, and not for all the articles or ingredients of which it is made. [NOTE: Mr. Justice Buller, in Boulton v. Bull, p. 199.] A man took out a patent for water tabbies; suppose painted floor-cloths to be produced on the same principle, they are distinct substances, calculated for different purposes, and were each unknown to the world before; therefore, a patent for one would be no objection to a patent for the other. [NOTE: Ibid. p. 200]
In the case Morris v. Branson [NOTE: Cited by Mr. Justice Buller, in Boulton v. Bull, p. 202.], an objection wsa taken that it was not a new invention, but only an addition to an old machine. Lord Mansfield said, that objection would go to repeal almost every patent that ever was granted. The verdict in that case was for the plaintiff, and was acquiesced in; and although his lordship said he had paid great attention to the point, and mentioned it to all the judges, he did not state what was their opinion, or give any direct opinion himself, yet it may be safely collected, that he thought the patent good, and since that time it has been the generally received opinion that a patent for an addition is good, but it must be for the addition only, and not for the old machine too. If a patent be confined to the invention of a particular part, it gives no right to the whole engine, or to any thing beyond the invention itself; the public have the right to purchase that improvement by itself, without being incumbered with other things. [NOTE: Mr. Justice Buller, in Boulton v. Bull, p. 203.]
In Jessop's case [NOTE: Cited by Mr. Justice Buller, in Boulton v. Bull p. 203.] his patent was avoided because it was taken for the whole watch, when the invention consisted of only one movement. A person has a right to purchase the new movement and work it up in watches made by themselves.
When the effect produced is some new substance or composition of things, the patent ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced. When the effect produced is no substance or composition of things, the patent can only be for the mechanism or for the process. [NOTE: Sir James Eyre, in Boulton v. Bull, p. 208.]
If the machinery be not new, but only conducted by the skill of the inventor, so as to produce a new effect, the patent cannot be for the machinery. [NOTE: Sir James Eyre, in Boulton v. Bull, p. 210.]
If the prosecution of a manufacture be assisted (as in a lace machine) by bending together two of the teeth of the dividers, or making one longer than the rest, if it appears to have been a subsequent discovery it will not break in upon the validity of a patent, it will only shew that the patentee has since found out the means of carrying on his own invention to better effect [NOTE: Sir Vicary Gibbs, in Bovill v. Moore, p.~381.]; but if at the time when he obtained his patent he was apprized of this more beneficial mode of working, and did not by his specification communicate this more beneficial mode of working to the public, that will have been a fraudulent concealment from the public, and will render the patent void. [NOTE: Ibid. p. 401.]
A patent can only be for the additional improvement described in the specification, and the patentee cannot claim the sole manufacture of the whole engine [NOTE: Mr. Justice Grose, in Hornblower v. Boulton, p. 233.] It signifies nothing whether the patent be for the engine or for the method of making it, if that method be sufficiently described in the specification. [NOTE: Ibid. p. 236.]
In Williams v. Brodie [NOTE: Cited by Mr. Bearcroft, in the King v. Arkwright, p. 97.] it was held that if a new invention which is the ground of a patent is the addition of a new application to an old machine, it should be so described in the patent; but in the case of Harmar v. Playne [NOTE: Page 324.], a patent for improvements upon a former machine was held good, although the specification described the whole machine without distinguishing the improvements from the parts of the old machine, or referring to the former specification otherwise than as the second patent recited the first.
A patent for an improvement upon a thing, or for the thing improved, is in substance the same. [NOTE: Mr. Justice Heath, in Boulton v. Bull, p. 191.]
In the case of an invention, many parts of a machine may have been known before; yet if there be any thing material and new, which is an improvement, that will be sufficient to support a patent; but whether it must be for the new addition only, or for the whole machine, is another question. [NOTE: Mr. Justice Buller, in The King v. Arkwright, p. 218, 129.] If in a carding machine, the carding cylinder was before used covered all over, and a patent be taken for a cylinder covered in stripes, and it operates as well and answers the same purpose without stripes, suppose stripes never to have been used before, that is not such an invention as will support a patent. [NOTE: Ibid. p. 137.]
If the novelty of an invention consists in the new conformation of its parts, and the new conformation of all those parts is of the patentee's invention, then, although every one of the parts was old, he would be intitled to a patent for a machine composed by that new conformation of the whole; but if another person had combined all those parts up to a given point, and the patentee took up his combination at that point, and went on combining beyond that, if the subsequent combinations alone were his invention, the former combinations he will have no right to. [NOTE: Sir Vicary Gibbs, in Bovill v. Moore, p. 412.]
If he has only invented an improvement of the old engine, or of any one or two engines which existed before, then his specification by which he claims the whole to himself will be bad. If on the other hand he has invented an engine which consists of a perfectly new conformation of parts, although all the parts were used before, yet he will be intitled to support his patent for a new machine. [NOTE: Ibid. 412, 413.]
In order to support a right to the exclusive enjoyment of any invention, it is necessary that the party who takes out the patent should shew that the invention is new, that it is not only new but useful, and that he has accurately explained the nature of his invention in his specification, separating that which is new from that which is old, so as to enable a person of tolerable skill to make the thing by his specification. [NOTE: Sir Vicary Gibbs, in Manton v. Manton, p. 348, 349.]
It is no matter that two patents profess the same object. If springs are not an essential part of the invention, and they are specified as an essential part, it would certainly affect the patent. If the spring should be a material part of the invention, and relied upon as such in two patents, and if it is the same, the latter patentee cannot take the benefit of it. [NOTE: Lord Ellenborough, in Huddart v. Grimshaw, p. 294, 295, 296.] If a patent be taken for that to be done by a tube which was before done by a ring or circle, the patent would be good, for that is a substantive invention. [NOTE: Ibid. 297, 298.]
In point of law it is necessary that a plaintiff should prove his invention to be new and useful, in order to intitle himself to an action. [Sir Vicary Gibbs, in Bovill v. Moore, p. 399.]
A patent taken out for “a method of more completely lighting cities, towns, and villages,” when the specification described improvements upon street lamps, was held to be taken out too large; it was in substance a patent for an improvement in street lamps, and should have been so taken. [Mr. Justice Le Blanc, in Lord Cochrane v. Smethurst, p. 361.]
The subject of a patent ought to be specified, and ought to be that which is vendible, otherwise it cannot be a manufacture. [NOTE: Mr. Justice Heath, in Boulton v. Bull, p. 191.]
Next as to “new manufactures within this realm.” It has been held that if an invention be new in England, a patent may be granted for it, though the thing was practised beyond the sea before. [NOTE: Edgeberry v. Stephens, p. 36.]