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 3 of 6: “The True and First Inventor”
This third installment concerns the case law concerning “the true and first inventor”.
We come now to consider who have been held to be “the true and first inventors of such manufactures,” and here the plain and ordinary sense of the words seems pretty clearly to explain their meaning; it was however held in the case of Edgeberry and Stephens, p.~36, that any person in this country being in possession of a foreign discovery, and introducing it here, is intitled to a patent, as “if the manufactures be new here, it is within the statute, and whether learned by travel or study, it is the same thing;” and that decision is at this day acted upon to a very great extent, as many patents are granted to persons resident in this country, for inventions communicated to them from abroad, it being only considered necessary under the words of the statute, that they should be new within this realm.
This construction of the act is of great importance, as it is very material to the improvement of the trade and manufactures of this country, that all possible encouragement should be given to the introduction of useful discoveries from every part of the world; and if it had been determined otherwise, it would involve the patentee in very great difficulties, and make it next to impossible for him to support his patent against an infringement, as he would be required to prove the novelty of his invention, if that were disputed, and his opponent might bring evidence from distant parts of the globe to resist the proof.
If an inventor has published his invention before he has taken out his patent, so that the public be in possession of the discovery, he cannot support his patent, although in fact he is the first and true inventor thereof; because the statute requires, not only that they should be “new manufactures within this realm,” but adds, “which others at the time of making such letters, patents, and grants, shall not use.”
It is also required by the statute that such grants be not contrary to law, nor mischievous to the state by raising prices of commodities at home, or hurt of trade or generally inconvenient.
A patent is held to be contrary to law if the patentee is not the sole inventor, as in Tennant's case, tried before Lord Ellenborough, 23d December, 1802. Mr. Tennant brought his action for an infringement of his patent for a bleaching liquor; several witnesses were called in support of the patent, who proved the great utility of the invention, and the general ignorance of the bleachers with respect to such bleaching liquor, until after the date of Mr. Tennant's patent. On the other side, a bleacher near Nottingham deposed, that he had used the same means of preparing his bleaching liquor for five or six years anterior to the date of the patent. He also stated that he had kept his method a secret from all but his two partners, and two servants concerned in preparing it. A chemist in Glasgow deposed, that having had frequent conversations with Mr. Tennant on the means of improving bleaching liquor, he had in one of them suggested to Mr. Tennant that he would probably attain his end by keeping the lime-water constantly agitated. Mr. Tennant afterwards informed the witness that this method had succeeded. These conversations took place in 1796, and Mr. Tennant obtained his patent in 1798. Lord Ellenborough declared this to be a scandalous patent, equally unfounded in law and justice. The plaintiff was nonsuited on two grounds, first, that the process had been used five or six years prior to the date of the patent, and therefore was not a new invention; and secondly, that a chemist had suggested to Mr. Tennant the agitation of the lime-water, which was indispensable in the process, and therefore that it was not the invention of the patentee.
This invention being known before the patent to five different persons, it might perhaps also have been considered as both hurtful to trade and mischievous to the state; hurtful to trade, as confining the use of an article to one person for fourteen years, which was before known to five who might, during that time, have disseminated it to the various persons engaged in that trade, if not prevented by the patent; and injurious to the state, as by granting the exclusive benefit of a thing already used by or known to the public, the patentee could not pay for his privilege in the coin required by the patent, namely, a disclosure of a new invention, having nothing to give as a consideration for his monopoly.
A patent is also contrary to law if the subject of it is not new within this realm; if used by others at the time of granting the patent; if it is mischievous to the state by raising the price of commodities at home; if it is hurtful to trade; or in any other way generally inconvenient, as such patent would be in opposition to the proviso in the statute of 21 Jac.
In the case The King v. Arkwright, p. 79, one of the issues to be tried was, that the patent was prejudicial and inconvenient to his Majesty's subjects in general; but it was held by Mr. Justice Buller that this was merely a consequential issue; it stated no fact which could be tried by a jury, on which the defendant could come prepared to answer, and he therefore refused to hear any evidence on that part of the case.
The next thing proposed is to shew what is that previous use of any thing which will vitiate a patent.
A patent, since the introduction of the proviso for inrolling a specification, is in the nature of a bargain or agreement between the king and the subject, that if the latter will put the public in possession of a beneficial invention found out or introduced into the kingdom by him, he shall have the exclusive benefit of it for fourteen years; but if the public are already in possession of the discovery, the patentee can make no such compensation for the privilege he obtains, and therefore (as mentioned under the last head) if any person has used an article for which a patent is obtained previously to the date of the patent, although he had kept it a secret from all but his two partners and two servants concerned in preparing it; Lord Ellenborough held it such a previous use as to direct a nonsuit upon that ground; but it must have been known to more than one, as in Dollond's case [Cited by Mr. Justice Buller, in Boulton v. Bull, p. 199.] it was held that the discovery having been made before by Dr. Hall, who had confined it to his closet, and the public were not acquainted with it, that was not such a use as would affect the patent; Mr. Dollond was therefore considered as the inventor, and his patent was established.
So in the case of Edgeberry v. Stephens, the thing being practised beyond the sea, however long it may have been so used there, is not such a use as will vitiate a patent granted to the person first introducing it into this country.