Patent

“ I dissent from so much of the opinion of the majority of the court as holds that the instrument or manufacture described in the patents exhibits no sufficient invention to warrant the grant of a patent for it. ”

“ You may obtain a patent for a mode of carrying a principle into effect; and if you suggest and discover not only the principle, but suggest and invent how it may be applied to a practical result by mechanical contrivance and apparatus, and show that you are aware that no particular sort or modification of form of apparatus is essential in order to obtain benefit from the principle, then you may take your patent for the mode of carrying it into effect, and are not under the necessity of describing and confining yourself to one form of apparatus. ”

“ 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. ”

“ The original conception and working out of an invention is usually a labor of love on the part of the inventor: having perfected his invention in every detail, he finds able and skilled counsel waiting to prepare and prosecute his application for patent before the Patent Office Examiner. When the patent is allowed or issued, the patentee's real work begins—that of turning the patent into money. This is the business end of the inventor's work, which is generally to his interest financially to undertake himself, or to have under his immediate supervision. ”

“ Power to grant letters patent is conferred by law upon the Commissioner of Patents, and when that power has been lawfully exercised, and a patent has been duly granted, it is of itself prim a facie evidence that the patentee is the original and first inventor of that which is therein described, and secured to him as his invention. ”

“ Enough has already been remarked to show that all the principal claims of the original patent recognize the chamber or tunnel and its appendages as one of the primary ingredients of the patented invention, and it is absolulely certain that the specification of that patent contains neither suggestion, indication, nor intimation that the original patentee made any other invention to accomplish the described functions than the one which includes the whole four described ingredients. ”

“ Where a patentee, after describing a machine, claims as his intention a certain combination of elements, or a certain device, or part of the machine, this is an implied declaration, as conclusive, so far as that patent is concerned, as if it were expressed, that the specific combination or thing claimed is the only part which the patentee regards as new. ”

“ I have some of those filters. The manufacturer of these things, who had no Patent, came to me to consult me upon the subject. I at once saw how the case stood, having regard to the specification of the Liverpool patentee, that he (the latter) had taken out a Patent for that which another man had before done, so exactly that the words of the specification and the drawings fitted the first man’s invention, which was without a Patent, therefore his Patent would have been null and void. ”

“ Since the act of 1836, the patent laws require that an applicant for a patent shall not only, by a specification in writing, fully explain his invention, but that he 'shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery.' This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. ”

“ But this, we think, does not meet the objection, which, more precisely stated, is that the machine and work holder patents, fairly read, do not embrace a patent for the dominating new result, the process of the reissue patent, but are patents for a particular combination of mechanical means, useful, as is that of petitioner, in availing of the process, but which, as we have said, does not involve invention. ”

“ If this principle be sound as to a machine or instrument whose use may be continued for a number of years, and may extend beyond the existence of the patent, as limited at the time of the sale, and into the period of a renewal or extension, it must be much more applicable to an instrument or product of patented manufacture which perishes in the first use of it, or which, by that first use, becomes incapable of further use, and of no further value. ”

“ It is equally clear, however, that a valid patent cannot be obtained for a process which involves nothing more than the operation of a piece of mechanism, or, in other words, for the function of a machine. ”

“ Hence, continued the court, a patent for an invention is a grant, and must have a grantor and a grantee. It must grant the franchise or monopoly to a person named, and who is capable of taking; and in this respect a patent does not differ from a patent or deed for lands. ”

“ The reader will, of course, remember that the Patent Act authorizes the issue of a patent only when a person has invented or discovered some 'new manufacture, or some new and useful improvement thereof, not known or used by others;' and also that while authorizing in certain cases the reissue with an amended specification of an original patent, where the specification has been defective, the act contemplates that the reissued patent shall secure no other than 'the same invention' meant to have been secured by the original. ”

“ In 1718 he obtained a patent (No. 422) for 'a new invention of three sorts of engines never before made or used in Great Britaine, one to winde the finest raw silk, another to spin, and the other to twist the finest Italian raw silk into organzine in great perfection, which was never before done in this country.' A specification of the patent was duly enrolled, in conformity with the conditions of the letters patent, in the petty bag office, but the roll was lost, and was only discovered in 1867, when the specification was printed by the commissioners of patents for the first time. ”

“ And the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. ”

“ The eighteenth section provides, in substance, that whenever any patentee of an invention or discovery shall desire an extension of his patent beyond the term of its limitation, he may make application therefor, in writing, to the Commissioner of the Patent-office, setting forth the grounds thereof. ”

“ In some cases, if the patentee does not wish to retain the whole patent for his own use, an excellent plan is to commence the manufacture of the invention in a suitable locality, and after the business is so far under way as to show progress and profit, then sell out the business with license under the patent. ”

“ Giving due weight to these considerations, it is as clear as anything can be that the first claim of the patent is a claim for a combination of the described mechanical devices, with the roller for carrying the invention into practical operation, and for accomplishing the described result by the described means, excluding the apparatus for raising and lowering the table, which is included in the second claim. ”

“ Patents for a machine will not be sustained if the claim is for a result, the established rule being that the invention, if any, within the meaning of the Patent Act, consists in the means or apparatus by which the result is obtained, and not merely in the mode of operation, independent of the mechanical devices employed ”

“ Effective support to the proposition that nothing but invention or discovery will entitle an applicant to a patent is also found in the reported decisions of the circuit courts, as appears from the following citations. Judge Story held, many years ago, that the mere application of an old process, machine, or device to a new use was not patentable,-that there must be some new process or some new machinery to produce the result, in order that the supposed inventor may properly have a patent for the alleged improvement. ”

“ By the patent act of 1793, any person desirous of obtaining a patent for an alleged invention, made application to the Secretary of State, and received his patent on payment of the fees, and on a certificate of the Attorney-General that his application 'was conformable to the act.' No examination was made by persons qualified to judge whether the alleged invention was new or useful, or had been patented before. ”

“ It is there observed, that the word 'manufactures,' in the patent act, may be extended to a mere process to be carried on by known implements or elements, acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a better or more useful kind. ”

“ The use and purpose sought to be accomplished by the Hall patent was the radial expausion of the dress form, but it is well settled by the authorities that the end of purpose sought to be accomplished by the device is not the subject of a patent. The invention covered thereby must consist of new and useful means of obtaining that end. In other words, the subject of a patent is the device or mechanical means by which the desired result is to be secured. ”

“ It will be well for the patentee to order some printed copies of his patent, as manufacturers and others usually ask for them if interested, in order that they may examine the patent, or have an expert to examine it, to ascertain its validity, novelty, andp. 52 what protection is really afforded by the patent. It cannot be denied that in either case the invention will suffer a cold-blooded rigid examination, and must stand or fall solely upon its merits. ”

“ Having done that, it is necessary for the right inventor, who has received due notice from the Patent Office, to come and defend his title to his patent, in spite of the fact that the patent has been issued to him after the customary and usual formalities in due legal form, and payment of all legal fees. ”

“ That the majority of patents taken out prove lucrative is evident from the fact that upward of seventy thousand applications for patents and designs are filed each year in the United States Patent Office, and approximately eight hundred are granted and issued each week. Probably about one-fifth of these patentees obtain their patents with a definite view of manufacturing their inventions, and the remainder obtain theirs with a view of realizing from the sale of the rights to manufacture. ”