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of Appeal said (k): "Supposing there is an invention in that which is claimed-the carrying out of an idea in a machine-was the whole of that invention Mr. Elias', the plaintiff's, or was not part of it the invention of Karrop the machinist? Upon the assumption that there must be more than the idea, and that the machine is part of the invention-I mean the mechanism is part of the invention-was the whole of that done by Elias? The evidence seems to me to be clear as to this, that he had the idea in his mind of doubling Morewood's pot lengthways, that is of making a pot of Morewood's twice the size of Morewood's, so that the two plates might be put in side by side. That was his idea. If that was all, it was not patentable; but it is to be done in a machine. Did he have anything in the world to do with the construction of the machine which upon the assumption is part of the invention ? . . . . If it is an invention Karrop has invented part of it."

The above quoted cases (1) all seem to show that the man who conceives the idea has no right to the inventions of the man whom he employs to carry it out other than mere improvements in mechanical details, whether that man be his immediate servant or an independent mechanic, and the relationship of master and servant gives to the master no rights to the invention of his servant (m).

A. may have invented something, it may have pleased him to try a few experiments with his invention, and then to abandon it without publication. B. may subsequently have invented the same thing altogether independently of A. If B. applies for letters patent he is at law the first inventor; but should it be shown that the process of invention was not carried on in B.'s mind at all, but that A. communicated his ideas to B., although

(k) Ib. pp. 465, 466.

(1) Allen v. Rawson, 1 C. B. 551, 574; Minter v. Wells, 1 Web. P. C. 127; R. v. Wheeler, 2 B. & Ald. 349; Elias v. Grovesend Tinplate Co., 7 P. O. R. 455; see also David & Woodley's Patent, Griff. L. O. C. 26.

(m) Barker v. Shaw, 1 Web. P. C. 126, n.; In re Lowe's Patent, 25 L. J.,

Ch. 456; R. v. Arkwright, Dav. P. C. 61; Homan's Patent, 6 P. O. R. 104; Barber v. Walduck, 1 Carp. P. C. 438; Re Russell's Patent, 2 De G. & J. 130; Scott v. Young, L. R., 6 Ch. 274; Saxby v. Gloucester Waggon Co., Griff. L. O. C. 56; In re Heald's Patent, 8 P. O. R. 429; but see Kurtz v. Spence, 5 P. O. R. 180.

with the full intention of abandoning them, B. will not be the first inventor. Take, for instance, the case of Dollond's Patent (n): this was an improvement in the manufacture of object-glasses for telescopes. Dr. K. had made and used identically similar object-glasses for his own purposes, but he had in no way published his invention. Dollond, without any communication from Dr. K., had re-invented these object-glasses; held that Dollond's patent was good.

In Lewis v. Marling (o), Mr. Justice Bailey said: "If I discover a thing for myself, it is no objection to my claim to a patent that another also has made the discovery, provided I first introduce it into public use." The suggestion in that case having been that the patentee had acquired his invention by seeing a model of a similar machine which had been brought from America; it was disproved that he had seen the model, and consequently he was held to be the first and true inventor.

In dealing with this branch of the subject, and showing that one of the essential portions of the consideration for the grant of letters patent is the labour of the mind of the inventor, we may cite the case of Patterson v. Gas Light and Coke Company (p). In that case certain referees had been appointed under the City of London Gas Act to inquire into the subject of the purification of gas. The plaintiff was one of those referees. The referees drew up a report on the 31st January, 1872. The report contained a description of the subject-matter of the plaintiff's patent. Subsequently to the making of the report, but before its delivery to the Board of Trade, the plaintiff, who had really discovered the invention, obtained provisional protection. The action was brought against the Gas Light and Coke Company for infringing his patent. The company alleged that the invention was not new, and also denied the title of the plaintiff to take out a patent in respect of it, on the ground presumably, that he had no consideration to offer to the public in return for the grant of letters patent, he having already disposed to the public of his knowledge upon the subject for other considerations. In the judgment of the House of Lords, Lord Blackburn said: "It seems to me

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(o) 10 B. & C. 27; 1 Web. P. C. (p) L. R., 3 App. C. 239, 213.

clear that the duty of the referees under the Act was to ascertain how far the gas could be practically purified by each company. If they found that gas containing not more than a certain limited amount of impurity could be practically produced by any means, they were to prescribe the maximum amount accordingly, and they were by obvious implication, though it is not expressly enacted, to make public how this degree of purity could practically be obtained. It was not material to them to inquire whether these were means previously known, which the companies had failed to make use of from parsimony, negligence or ignorance, or whether there was some new idea which had been developed during the course of their enquiries, which made these old means practically valuable when before they were not. They were not at all required to distinguish new from old. In all these respects the report was quite different from a specification. But, as soon as they became aware that the gas could be practicably brought to this degree of purity, their duty was to fix the maximum accordingly, and to make known to the public the means by which this could practicably be done. The report of the 31st January, 1872, is drawn up as it ought to have been. It shows that, by some means there explained, purity to a great extent could practicably be obtained, it makes no attempt to show how much of this was previously known though neglected, and it nowhere states that any part of what was now disclosed was invented by one of their own body." In the Court of Appeal James, L.J., had said (q): "Although it is not necessary for the determination of this suit to pronounce any final decision on this point, we deem it right to say that we think it at the very least very questionable whether it can be competent for a member of an official commission or committee to take out a patent for the subject-matter of their official investigation. It is to be borne in mind that the report then made belonged absolutely to the State. Every fact and figure in it had been ascertained, and obtained at the public expense, every hour of every referee and of the secretary employed in the production of it was public time . . . the consideration for every patent is the communication of useful information to the public. What con

(q) L. R., 2 Ch. D. 832.

T.

C

sideration is there when the information was already the property of the State?"

These judgments, although going to a point which was not absolutely necessary for the decision of the case (for the case was decided upon the ground of want of novelty in the invention), tend to show that it was in the minds of the judges that the mental labour of making the discovery being an essential element for the consideration of the grant, if that mental labour had already been paid for by the State, it failed as a consideration to support the patent.

By sect. 35 of the Act of 1883, "A patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection." This clause is only a re-enactment of that which had been decided to be the law previous to the Act. In Ex parte Scott and Young (r), the ⚫ servant had filed a provisional specification of an invention, after which the master filed a specification for a similar invention, and subsequently filed a complete specification, and obtained letters patent. It was held that, under the circumstances, the Great Seal might be affixed to the letters patent of the servant's invention, and that the patent might bear the date of his provisional specification.

In the case of Ex parte Bates and Redgate (s), it was held, that leaving a provisional specification, and obtaining a provisional protection, does not prevent a second applicant from leaving a specification of a similar invention, and obtaining valid letters patent for the invention before six months have elapsed from the time when the first provisional specification was left, and in such a case letters patent will not be granted to the first applicant for any part of his invention, which is covered by the letters patent already obtained by the second applicant, but in this case there was no suggestion of fraud on the part of the second applicant. This decision has, however, been doubted in Re Dering's Patent (t), by Lord Cairns, who said: "I may

(r) L. R., 6 Ch. 274.

(s) L. R., 4 Ch. 577.

(t) L. R., 13 Ch. D. 395.

however, state my objections to that decision" (Bates and Redgate), "which I never could thoroughly understand; it has always seemed to me that if Parliament held out to inventors the advantage they could get from provisional protection, the inventor should have the enjoyment of that advantage for the six months granted to him. Parliament intended the six months to be for the completion of the invention, and for perfecting the specification, and never said that the applicant should be deprived of or lose that privilege for want of any due diligence on his part."

The difficult questions, however, which arise in these cases, seem to be set at rest by the 14th section of the Act of 1883: "Where an application for a patent in respect of an invention has been accepted, the invention may, during the period between the date of the application and the date of sealing such patent, be used and published without prejudice to the patent to be granted for the same. And such protection from the consequences of use and publication is in this Act referred to as provisional protection."

The general question of concurrent applicants, where there is no fraud, that is, where each applicant is in a position to offer the consideration of mental labour, will be considered in a subsequent Chapter. It is only material here so far as concurrent application is brought about by reason of one man fraudulently appropriating the invention of another.

The right of the Crown to grant letters patent to true and first importers of inventions appears to have been a common law right. We find that so far back as 1567 a patent had been granted to one Hastings (u) for the making of frisadoes in consideration of his having imported the skill of manufacturing them from abroad. So in Mathey's case, "It was granted unto him the sole making of knives with bone hafts and plates of lattice, because, as the patent suggested, he brought the first use thereof from beyond the seas." This was in the reign of Elizabeth. In the clothworkers of Ipswich case we have this (a) said, "The king granted unto B. that none besides himself should make ordnances for battery in the time of war: such grant was adjudged void.

(u) 1 Web. P. C. 6.

(x) 1 Web. P. C. 6; 1 Godb. 252

254.

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