John McLean

“ Now, we not only admit that the act of 1793 should receive a similar construction with that of 1800, as to previous knowledge or use of an invention, but the plaintiff's counsel labor to establish this very ground. Their position, however, is not a correct one. The object of cancelling a first patent, and taking out a second, is not to take a fresh start for the term of years during which the law allows the exclusive right to be conferred. It is to enable the inventor to enjoy, for the remainder of that term, the privilege which was originally intended to be granted. ”

“ Whatever may be the intention of the inventor, if he suffers his invention to go into public use through any means whatsoever, without an immediate assertion of his right he is not entitled to a patent ”

“ If such use or knowledge shall be proved to have existed, prior to the application for the patent, the act of 1793 declares the patent void; and as has been already stated, the right of an alien is vacated in the same manner, by proving a foreign use or knowledge of his invention. That knowledge or use which would be fatal to the patent-right of a citizen, would be equally so to the right of an alien. ”

“ On the part of the plaintiff, it is contended, that 'the second patent is original and independent, and not a continuation of the first patent.' That in adopting the policy of giving, for a term of years, exclusive rights to inventors in this country, we adopted, at the same time, the rules of the common law, as applied to patents in England; and that by the common law, a patent, when defective, may be surrendered to the granting power, which vacates the right under it, and the king may grant the right de novo either to the same or to any other person. ”

“ This results from the aggregation of mind, and the diversity of talents and pursuits, which exist in every intelligent community. And it would be extremely impolitic, to retard or embarrass this advance, by withdrawing from the public any useful invention or art, and making it a subject of private monopoly. Against this consequence, the legislature have carefully guarded in the laws they have passed on the subject. It is undoubtedly just, that every discoverer should realize the benefits resulting from his discovery, for the period contemplated by law. ”

“ The intent of the delay of the patent, and whether the allowing the invention to be used, without a patent, should not be considered an abandonment, or a present of it to the public, are questions for the jury. ”

“ Vigilance is necessary to entitle an individual to the privileges secured under the patent law. It is not enough, that he should show his right by invention, but he must secure it in the mode required by law. And if the invention, through fraudulent means, shall be made known to the public, he should assert his right immediately, and take the necessary steps to legalize it. ”

“ Mathews, 1 Paine 301, the court, in substance, say, 'that if the plaintiff be the inventor, it is immaterial, that the invention has been known and used for years before the application.' And in the case of Morris v. Huntington, 1 Paine 354, the court say, that 'no man is to be permitted to lie by for years, and then take out a patent. If he has been practising his invention with a view of improving it, and thereby rendering it a greater benefit to the public, before taking out a patent, that ought not to prejudice him. ”

“ But these can only be secured by a substantial compliance with every legal requisite. His exclusive right does not rest alone upon his discovery; but also upon the legal sanctions which have been given to it, and the forms of law with which it has been clothed. ”

“ In regard to the right of the patentee to surrender a defective patent, and take out a new one, there can be no difference between a citizen and an alien. That the holder of a defective patent may surrender it to the department of state, and obtain a new one, which shall have relation to the emanation of the first, was decided by this court, at the last term, in the case of Grant v. ”

“ And the defendant, further to maintain the issue on his part, gave in evidence a certain letter from the plaintiff to the defendant, dated in December, in the year 1824, from which the following is an extract: 'Some time since, I stated, that I had employed counsel respecting regular prosecutions for any trespass against my rights to the patent; I have at length obtained the opinion of Mr. ”