Patentability

“ Inventions, in order that the inventors may be entitled to patents for the same, must be new and useful; and the better opinion is, that the improvement must be of such a character that it involved invention to make it, as the Patent Act confers no right to obtain a patent except to a person who has invented or discovered some new and useful art, machine, manufacture, or composition of matter, or some new and useful improvement in one or the other of those described subject-matters. ”

“ That it is the duty of an inventor, if he would secure the protection of the patent laws, to apply for a patent as soon as his machine (if he has invented a machine) is in practical working order, so as to work regularly every day in the business for which it was designed; and if he does not so apply, he has no remedy against any persons who possess themselves of the invention, with his knowledge and without his notification to desist, or of his claims as an inventor before he applies for his patent. ”

“ 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. ”

“ They know, theoretically, that a patent, to be sustained in the courts, must be for an invention which is "new and useful"; but fail, practically, to apply the test. Evidently the existing system tends to betray an over-sanguine inventor. A solicitor of patents will cheerfully take a fee and undertake to obtain letters. The patent-office will accept further fees; will make an examination for novelty, which is good, as far as it goes, and in some measure a protection against launching an unprofitable venture; and will grant a patent. ”

“ To escape the incessant and intense competition which exists in every department of industry, it is not strange that persons should seek the cover of the patent act, for any happy effort of contrivance or construction; nor that patents should be very frequently employed to obstruct invention, and to deter from legitimate operations of skill and ingenuity. Thid danger was foreseen, and provided for, in the patent act. The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. ”

“ Upon the American view, a patent is a compact made with the inventor to induce him to disclose his invention for the public benefit; as a reward for which he receives an exclusive privilege which is in the nature of property. As respects many important inventions, the privilege would have little value if not good against Government, for the reason that the thing is only useful in Government business. What would be the worth of a patent for articles useful only in the army and navy, for a revenue or postage stamp, or the like, if Government might use the invention free? ”

“ No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.
The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more. ”

“ 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. ”

“ Leaving out of view the history of the art prior to the invention claimed by the patentee, what possible pretence can there be for contending that the general process was part of the invention which formed the subject of the original patent? Suppose it be true that Norton was the first inventor of this process, was that process the invention which he sought to secure in the original patent? A patent for a process and a patent for an implement or a machine are very different things. ”

“ As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. ”

“ Where a patent is claimed for such a discovery, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave the person attempting to use the discovery to find it out 'by experiment.' The law requires the applicant for a patent-right to deliver a written description of the manner and process of making and compounding his new-discovered compound. The art is new; and therefore persons cannot be presumed to be skilled in it, or to anticipate the result of chemical combinations of elements not in daily use. ”

“ Respondent argues that this principle, applicable to machine patents, is inapplicable to a patent for the composition of matter which is always a result of a process and concededly is patentable as such, but the attempt to broaden product claims by describing the product exclusively in terms of its use or function is subject to the same vice as is the attempt to describe a patentable device or machine in terms of its function. As a description of the invention, it is insufficient, and, if allowed, would extend the monopoly beyond the 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. ”

“ As the acts of Congress embrace only designs applied, or to be applied, they must refer to finished products of invention rather than to the process of finishing them, or to the agencies by which they are developed. A patent for a product is a distinct thing from a patent for the elements entering into it, or for the ingredients of which it is composed, or for the combination that causes it. ”

“ Most processes which have been held to be patentable require the aid of mechanism in their practical application, but, where such mechanism is subsidiary to the chemical action, the fact that the patentee may be entitled to a patent upon his mechanism does not impair his right to a patent for the process, since he would lose the benefit of his real discovery, which might be applied in a dozen different ways, if he were not entitled to such patent. ”

“ I believe in the possibility and advisableness of presenting, as a substitute for Patents, a system of rewards which will reconcile the honour and interests of men of science and those of practical men, the interests of the master and those of his workmen, the interests of the many and those of the few. Such a system, while entirely emancipating commerce and industry, must, as its condition, deal out its rewards more equitably than the Patent system does, and with more regard to the just claims of inventors. ”

“ In conducting the sale of patents, the greatest difficulty is most frequently experienced in getting manufacturers or others sufficiently interested to look into the merits and possibilities of the invention. If the inventor can get the parties to actually consent in their own minds to the proposition of taking up the invention, the question of terms and conditions can soon be arranged. Until the parties solicited can see beyond a doubt that there is large profits in it for them, the price of the patent is out of the question ”

“ If a man invent a new mode of printing, or of propelling boats, then a patent is secured to him for that particular invention, but it does not prevent another man from making use of the same power and improving on the machinery. But there is this benefit accruing to the original patentee, the one who makes the improvement after him is compelled to purchase a right of him. ”

“ Generally speaking, it will not be hard to find a party willing to advance sufficient means to promote an invention which is protected by a patent for a certain percentage of the net receipts arising from its manufacture, sale, or territorial grants, and the patentee will probably find a person among his own acquaintances who will not only be glad to furnish the means necessary, but also be of value to the patentee in realizing from his invention. ”

“ When the nature of a patent right is considered it is difficult to see why this should be so. The inventor creates a new thing—an invention of utility—and the people, represented by the Federal Government, say to him in effect: "Disclose your invention to us in a patent so that we may know how to practice it, and we will agree to give you a monopoly for seventeen years, after which we shall be free to use it. ”

“ He is the first inventor in the sense of the patent law, and entitled to a patent for his invention, who first perfected and adapted the same to use, and it is well wettled that until the invention is so perfected and adapted to use it is not patentable under the patent laws. ”

“ 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. ”

“ Doubtless, a patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him; but the person who has taken his device, and, by improvements thereon, has adapted it to a different industry, may also draw to himself the quality of inventor. If, for instance, a person were to take a coffee mill and patent it as a mill for grinding spices, the double use would be too manifest for serious argument. ”

“ 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 Wealth of Nations A patent gives you an exclusive right to your invention for a term of seventeen years. You can sell, lease, mortgage it, assign portions of it, and grant licenses to manufacture under it. ”

“ 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. ”

“ The words " or more than two years prior to his application, " merely give the same force to a foreign patent or publication that had previously been given to prior use. An invention to be patentable must, according to American law, be both novel and useful. Utility may be evidence of novelty and vice versa, and commercial success is relevant evidence of utility. As in England, a bare principle is not patentable. ”

“ Where the utility is proved to exist in any degree, a sufficiency of invention to support the patent must be presumed.' We do not say the single fact that a device has gone into general use, and has displaced other devices which had previously been employed for analogous uses, establishes in all cases that the later device involves a patentable invention. ”

“ The improbability of such a wilful misnomer, is greatly enhanced by the conceded and well-known fact, that a new or improved process is patentable, no less than a new or improved machine: process or method, which, in the patent law, are said to be synonymous, are among the few words in familiar use, machine being another of these words, expressive of the few proper subjects of a patent ”

“ Above all, a process or operation, especially in a trade that already existed, does not appear to be contemplated by the statute. How entirely and sadly different is the present practice in this respect. Let me first quote from Brande’s Dictionary the opening definition that shows how naturally, and as it seems, unconsciously, writers speak of “processes,” as the great or only subject-matter:—
“The word Patent is commonly used to denote a privilege accorded to an inventor for the sole use of some process by which an object in demand may be supplied to the public ”