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Prior user.


Although the statute expressly mentions the word others, yet the decisions extend the fatal consequences of prior user to the inventor himself, on the ground that if the invention is already known the patentee has no further consideration to give the public. If the articles are sold (i), or even offered for sale by the patentee or others (j), this will constitute a prior user. Also the open use of the invention (k), though for private purposes (1), unless for the purpose of experiment, is a When prior prior user (m). If, however, the inventor does not to inventor. allow the public to use his invention, or himself use it in public, he may manufacture before the date of his patent without invalidating the same, provided such user does not result in profit to



user allowed

(i) Wood v. Zimmer, 1 Webs. P. R. 44; Losh v. Hague, 1 Webs. P. R. 205.

() Mullins v. Hart, 3 C. & K. 297; Oxley v. Holden, 8 C. B. (N. S.) 666.

(k) Betts v. Neilson, L. R. 3 Ch. 429; Heath v. Smith, 3 E. & B. 270.

(1) Stead v. Williams, 2 Webs. P. R. 130; Stead v. Andrews, 2 Webs. P. R. 149.

(m) Galloway v. Bleaden, 1 Webs. P. R. 529; Cornish v. Keene, 1 Webs. P. R. 501; Jones v. Pearce, 1 Webs. P. R. 122 ; Carpenter v. Smith, 1 Webs. P. R. 534; Hills v. Gas Light & Coke Company, 5 H. & N. 312.

If profit is made by the inventor during what are found to be merely experiments, this will not invalidate the patent; but good cause must be shown, such as the necessity of testing a marine cable by actually laying one. Newall v. Elliot, 4 C. B. (N. S.) 269.

himself till after the date of the patent (n). In these days of competition it would be advisable, in the public interest, to extend this doctrine, as is done in America. There are many inventions the value of which cannot be estimated till after some months' work on a manufacturing scale, and in such cases the inventor should be allowed to support letters patent obtained after such user for a limited period, provided that during that period none other than himself or his servants used the invention. Many inventors, through caution in thus testing their inventions, lose their reward; and if in this respect their position were altered, the public would be benefited by getting a more perfect description of the invention, and the entry of worthless patents on the register would be avoided. In this view there is nothing inconsistent with the statute of James. The manufacture is new, and others cannot rightly be said to use it, except where the patent is for an article which has been sold to or used by the public. This exception would not be very material in this case, for the necessity for a provision of this kind is most felt in connection with processes and combinations (o). A

(n) Morgan v. Seaward, 1 W. P. R. 194; Bentley v. Flemming, 1 C. & K. 587; re Adamson's patent, 6 De G. M. & G. 420. Newall v. Elliot shows when profit may be made during experiment, 4 C. B. (N. S.) 269. Bramah v. Hardcastle, 1 Webs. P. R. 44 note.

(0) In discussing this question Mr. Justice Erle said: “If


Secret manufac ture.

Prior publication.

In books.

secret manufacture and sale by others would not vitiate letters patent, why then should the secret use of the invention by a first and true inventor? Baron Parke answers this question by showing that if this were allowed the patentee would obtain a monopoly for more than fourteen years (p). This undesirable result might be prevented by deducting from the term of letters patent the limited period allowed for secret use, in testing an invention commercially.

Prior publication, in printed books (g) or in specifications (r), for the same reasons as prior

one party only had used the process, and had brought out the article for profit, and kept the method entirely secret, I am not prepared to say that then the patent would have been invalid." Heath v. Smith, 2 E. & B. 256. Contra, see judgments of Buller (J.), in Boulton v. Bull, 2 H. B. 463–470, and Dallas (J.), in Hill v. Thompson, 1 Webs. P. C. 244.

(p) Morgan v. Seaward, 2 M. & W. 544.

(q) Rex v. Arkwright, 1 Webs. P. R. 72; Morgan v. Seaward, 1 Webs. P. R. 140; Cornish v. Keene, 1 Webs. P. R. 507; Walton v. Potter, 1 Webs. P. R. 593; The Household Company v. Neilson, 1 Webs. P. R. 718 note; Lang v. Gisborne, 31 Beav. 133. Copies in the German language sent to the Patent Office and the library of the Institute of Civil Engineers, United Telephone Company v. Cox-Walker, 21 Ch. D. 720. Secus (when issue of book not sufficient for publication); Stead v. Williams, 2 Webs. P. R. 136; Stead v. Anderson, 2 Webs. P. R. 149; Book not entered in catalogue, Plimpton v. Spiller, 6 Ch. D. 425; Heurteloup's Patent, 1 Webs. P. R. 553. In fragments of books and annuals, Heyden v. Neustadt, 28 W. R. 496.

() As a general rule, Huddart v. Grimshaw, 1 Webs. P. R.


In specifi


when patent


user, vitiates the grant of letters patent. however, an inventor files a specification and abandons it, but files another before the time allowed him for his provisional specification has elapsed, the first specification is not so published as to invalidate the second (s). The principle which has been laid down as to prior statements in books Rule as to or specifications is thus stated by Lord Westbury: is invali"That an antecedent specification ought not to be held to be an anticipation of a subsequent discovery unless you have ascertained that the antecedent specification discloses a practical mode of producing the result which is the effect of the subsequent discovery" (t), and "The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive, and understand, and be able practically to apply the discovery without the necessity of making further experiments" (u).

Hill v. Thompson, 8 Taunt. 375, 1 Webs. P. R. 244;
Muntz v. Foster, 2 Webs. P. R. 107. Even if difference in
mode of working of invention is substantially the same,
Dobbs v. Penn, 3 Exch. 427; Hullett v. Hague, 3 B. & Ad.
370. Specification does not differ from other publications,
Hill v. Evans, 8 Jur. (N. S.) 529.

(s) Young v. Fernie, 4 Giff. 577; Lewis v. Marling, 10 B. & C. 22; 4 C. & P. 52; 1 Webs. P. R. 490; Stoner v. Todd, 4 Ch. D. 58; Oxley v. Holden, 8 C. B. (N. S.) 666.

(t) Betts v. Menzies, 10 H. L. C. 117.

(u) Hills v. The London Gas Light Company. "This seems

A consideration.

Utility re


for jury.


The invention must be useful, or again there will be a failure of consideration; for the patent is granted for the public benefit (v). There is no express proviso in the Statute of Monopolies that the manufacture must be useful; but that this was intended is evident from the frequent reference to the expediency of these grants throughout the statute. As has been before said, the statute of James was only declaratory of the common law, of which the necessity of the utility of the invention was an axiom (w). Sir E. Coke says: “In every such invention as deserves a privilege there must be urgens necessitas and evidens utilitas" (x).

The utility of an invention is a question for a A question jury (y), and the question to be considered is whether the invention is of some substantial use; and the patent will be invalid if the specification

a very sensible and reasonable rule," per Holker (L. J.), in Otto v. Linford, 46 L. T. (N. S.) 457.

(v) See Introduction, p. xxxvii.

(w) A patent is granted for the good of the realm in consideration of the good that he (the inventor) doth bring by his invention to the commonwealth; otherwise not. Darcy v. Allein, Noy. R. 182. Edgebury v. Stevens, 1 Webs. P. C. 35 ; Shephard's Abridgments, part iii. p. 61.

(a) 3 Just. 184.

(y) Or for the judge to estimate as if a jury, since patents actions are tried without a jury. Lewis v. Davis, 3 C. & P. 502; Bloxam v. Elsee, 1 C. & P. 565,

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