John Marshall

“ A specification requires to be drawn with great accuracy. Mechanics, by whom machines are usually invented, it cannot be supposed are capable of drawing a proper specification. Can it be supposed that the law ever intended to punish their ignorance in drawing a very special legal paper by a forfeiture of all the advantages of their invention?
It is apprehended that the issuing a new patent in England, where there has been no sufficient specification to comply with the condition of the first patent, is pretty much a matter of course. ”

“ A patent, not describing an invention, is void as to that invention, and does not protect it. The invention, by a single month's use, unprotected by a patent, becomes public property and can never be resumed.
Whether the patent be void through fraud or inadvertence, if it does not describe the invention, then the invention is not protected, but has become public property. ”

“ An objection much relied on is, that after the invention has been brought into general use, those skilled in the art or science with which it is connected, perceiving the variance between the specification and the machine, and availing themselves of it, may have constructed, sold and used the machine without infringing the legal rights of the patentee, or incurring the penalties of the law. The new patent would retro-act on them, and expose them to penalties to which they were not liable when the act was committed. ”

“ There are certain conditions precedent to be complied with, before an inventor can obtain a patent. This is one of them. The language of this section is emphatic and absolute; it could not be stronger. Courts may just as well dispense with the oath.
Suppose he omit to deliver any written specification whatever; can he afterwards say that omission was owing to inadvertence? Yet a defective, or bad specification, is no specification. The same law that requires a written specification, requires a full and accurate one. A defective one is no better than none at all. ”

“ Courts did not, perhaps, at first distinguish clearly between a defence which would authorise a verdict and judgment in favour of the defendant in the particular action, leaving the plaintiff free to use his patent, and to bring other suits for its infringement; and one which, if successful, would require the court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void. This distinction is now well settled.
If the party is content with defending himself, he may either plead specially ”

“ Now, what reason is there for saying that defendants shall suffer these losses, even by the mistake or inadvertence of the patentee. The invention had become public, and if not protected by the first patent, it was gone forever. A bad patent is no patent. ”

“ In our patent law, the inventor must file his specification before he can procure his patent. In England, the patent contains upon its face a condition that if the patentee shall not make and file a specification within a limited time after the date of the patent, then the patent, and all the liberties and advantages under it, shall cease and be void. ”

“ A man builds an expensive factory, puts in costly machinery, not patented, not described in any specification; he expends much money; by and by, he is sued for violating a patent, and he finds that since he built, an old patent has come out with a new specification. A hearing, of which he knew nothing, has been had before the secretary, and a new patent has issued, and he is called on to stop his factory. Now this supposed case is the very case before the court, The defendants erected their works in 1823, 1824. ”

“ The limitations, under which the court below thought the secretary could vacate one patent and issue another, show that the power he is expected to exercise is judicial. The defect must arise from inadvertence or mistake, without fraud or misconduct. The power of the secretary to act, then, depends upon his having adjudged the case to be one of mistake, and not a case of fraud. This is judicial power. How can the secretary make this judicial investigation.
1. He has no parties before him, and no power to bring persons before him. ”

“ The laws which are passed to give effect to this purpose ought, we think, to be construed in the spirit in which they have been made; and to execute the contract fairly on the part of the United States, where the full benefit has been actually received: if this can be done without transcending the intention of the statute, or countenancing acts which are fraudulent or may prove mischievous. The public yields nothing which it has not agreed to yield; it receives all which it has contracted to receive. ”

“ Your petitioner therefore prays that letters patent of the United States may be issued, granting to your petitioner, his heirs, administrators, or assigns, the full and exclusive right of making, constructing, using, and vending to others to be used, his said improvement, according to the specification and drawings hereto annexed, agreeably to the act of congress in such case made and provided; your petitioner having paid thirty dollars into the treasury of the United States, and complied with other provisions of the said act. As in duty bound, will ever pray. ”

“ If the new patent can be sustained, it must be on the general spirit and object of the law, not on its letter.
To promote the progress of useful arts, is the interest and policy of every enlightened government. ”

“ Rep. 575, the lord chancellor says, 'that perhaps upon the petitioner's applying for a new patent, the officers might, under these circumstances, be induced to remit their fees; but that he could give no relief upon the present petition.' Here the lord chancellor speaks of the issuing of a new patent as a matter of course. ”

“ The schedule referred to in these letters patent, and making part of the same, contained a description, in the words of the said Joseph Grant himself, of his improvement in the mode of manufacturing hat bodies by the combination of motions, viz. the rotary or revolving motion, with the vibrating or transverse motion, which forms the two hat bodies by machinery, and crosses the wool from one extremity of the hat bodies to the other at one operation, called Grant's improved winding machine for setting up hat bodies ”

“ It may be well for congress to give the courts or judges power to vacate patents on patentee's own motion; but then congress would provide limitations and securities for innocent persons. On the doctrine of this case there are no securities. ”

“ The defendant is permitted to proceed according to the sixth section, but is not prohibited from proceeding in the usual manner, so far as respects his defence; except that special matter may not be given in evidence on the general issue unaccompanied by the notice which the sixth section requires. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case, and for the particular purpose stated in the sixth section. ”

“ The case came on for argument, after the defendants had sued out a writ of error on a judgment entered in the circuit court for the plaintiffs, in conformity with the suggestion and order of this court. ”

“ And as to the said plea of the said Eliakim Raymond and Henry Raymond, by them fourthly above pleaded, the said Joseph Grant and Solomon Townsend say, that, by reason of any thing in the said last mentioned plea alleged, they ought not to be barred from having and maintaining their aforesaid action thereof against them, the said Eliakim Raymond and Henry Raymond, because they say that the specification mentioned in the said last mentioned plea does correctly and accurately describe the improvement claimed by the said Joseph Grant, as his invention ”