allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter, not known or used before the application, and shall present a petition to the
whole machine, he can maintain a title to it only by establishing that it is substantially new, with its structure and mode of operation. Ibid.
If the combinations existed before in machines of the same nature, up to a certain point, and the party’s invention consists in adding some new machinery, or some improved mode of operation to the old, the patent should be limited to such improvement; for if it includes the whole machine, it includes more than his invention, and therefore cannot be supported. Ibid.
The patent act of the United States differs from the English in several particulars. A mere public use by others before taking a patent, or a sale thereof by the inventor, is not decisive against him here, as it is in England. Pennock et al. v. Dialogue, 2 Peters, 16.
It has not, and it cannot he denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. The inchoate right thus given, cannot afterwards be resumed at his pleasure, for when gifts are once made to the public in this way, they become absolute. The true meaning of the words in the patent law, “not known or used before the application,” is, not known or used by the public, before the application. Ibid.
Where a defect in the specification on which a patent has issued, arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee, the Secretary of State has authority to accept a surrender of the patent, and cancel the record thereof; whereupon he may issue a new patent on an amended specification for the unexpired fourteen years granted by the first patent. Grant v. Raymond, 6 Peters, 218.
The letters patent were obtained in 1822, and in 1829, the patentee having surrendered the same for an alleged defect in the specification, obtained another patent. The second patent is to be considered as having relation to the first patent in 1822, and not as having been issued on an original application. Shaw v. Cooper, 7 Peters, 292.
The taking of the oath required by the patent act, previous to the issuing of the patent, is but a prerequisite to the granting of the patent, and is in no degree essential to its validity; and if not taken, still the patent is valid. No defect or concealment in the specification, will avoid the patent, unless it arose from an intention to deceive the public. Whittemore v. Cutter, 1 Gallis. C. C. R. 429.
The first inventor is entitled to the benefit of his invention, and if he reduce it to practice, and obtain a patent for it, a subsequent inventor cannot, by obtaining a patent, deprive him of his invention, or maintain an action against him or his patent. Woodcock v. Parker et al., 1 Gallis. C. C. R. 438.
A patent can in no case be for an effect only, but for an effect produced in a certain manner, or by a peculiar operation. Ibid.
The original inventor of a machine is exclusively entitled to a patent for it. Mere colourable differences, or slight improvements, will not affect his right. Odiorne v. Winkley, 2 Gallis. C. C. R. 51.
The law allows a party a patent for a new and useful invention, and by “useful invention,” is meant, not an invention in all respects superior to the modes now in use for the same purpose, but useful, in contradistinction to frivolous and mischievous inventions. Lowell v. Lewis, 1 Mason’s C. C. R. 182.
The patentee must describe in his patent in what his invention consists, with reasonable certainty; otherwise it is void for ambiguity. If it be for an improvement in an existing machine, he must, in his patent, distinguish the new from the old; and confine his patent to such parts only as are new; for if both are mixed up together, and a patent is taken out for the whole, it is void. Ibid.
A joint patent may well be for a joint invention, but not for a sole invention of one of the patentees. If each of the patentees obtain patents for the same invention as his exclusive invention, and afterwards both obtain a joint patent for the same as their invention, the parties are not actually estopped from ascertaining the invention to be joint; but the former patents are very strong evidence against a joint invention. Ibid.
An inventor cannot, under the patent laws of the United States, have two subsisting valid patents at the same time for the same invention. The first that he obtains, while it remains unrepealed, is an estoppel to any patent under the same patent act. Odiorne v. The Amesbury Nail Factory, 2 Mason’s C. C. R. 28.
The first section of the patent act of 1793, construed in connection with the other sections of the act, means that the invention should not be known and used as the invention of any other person than the patentee before the application for a patent. Morris v. Huntington, Paine’s C. C. R. 348.
To obtain a patent under the laws of the United States, the party must be the original inventor in reference to the whole world; it is not sufficient that he is the first inventor within the United States. Rutgen v. Kanowers, 1 Wash. C. C. R. 168.
One who is the inventor of an improvement in the principle of a machine, has the same right to use it, as the inventor of the original machine had to it. Aliter, if it be only in form and proportion. Gray et al. v. James et al., Peters’s C. C. R. 394.
It is not enough that the thing designed to be embraced by the patent, should be made apparent on the trial, by comparison of the new with the old machine. The patent for the invention must distinguish the new from the old, so as to point out in what the improvement consists. Dixon v. Moyer, 4 Wash. C. C. R. 68.
Patents and the specifications annexed thereto, should be construed fairly and liberally, and not be subject to any over nice or critical refinements. Ames v. Howard, 1 Sumner’s C. C. R. 482.
It is not necessary to the validity of a patent for a new and useful invention, that any of the ingredients should be new and unused before for the purpose. The true question is, whether the combination of materials by the patentee, is substantially new. Ryan v. Goodwin, 3 Sumner’s C. C. R. 514.
Under the patent laws of the United States, the applicant for a patent must he the first as well as the original inventor, and a subsequent inventor, although an original inventor, is not entitled to a patent, if the invention is perfected and put in actual use by the first and an original inventor; and it is of no consequence whether the invention is extensively known or used, or whether the knowledge or use thereof
