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applicant in the foreign country himself, and cannot be enjoyed by the agent of such applicant or by any person to whom he has communicated his invention (r).
Where the foreign inventor had made two applications in his own country, the first of which applications was abortive, and further, the foreign patentee made a declaration that the proceedings under the second application were in all respects the same as if no prior application had been made, it was held by the L.O. that the seven months mentioned in sect. 103 should run from the date of protection obtained upon the second application, and he directed that the English patent should be sealed as of that date (8).
Where a foreign inventor was resident in a country with which international arrangements for the mutual protection of inventions was made after an application had already been lodged in this country by another for letters patent in respect of a similar invention, it was held by the L.O. that such foreign inventor was entitled to apply in priority over other applicants for so much of the seven months as remained after the Order in Council declaring such foreign country to be “one of the contracting states” (t).
We have now shown what is meant when it is said that the consideration must move from the patentee personally.
(r) Re Shallenberger, 6 P. O. R. 550 ; Re Carez, 6 P. O. R. 552
(s) Re Van de Poele, 7 P. O. R. 69.
A NEW AND USEFUL INVENTION. -SUBJECT MATTER.
Sect. 6 of the Statute of Monopolies defines a new invention
any manner of new manufacture which others at the time of making such letters patent shall not use."
We have seen that the Act of 1883 has adopted this definition of an invention. We have now to consider the legal meaning which has been placed upon the words “New Manufactures.”
A new manufacture does not mean, as it is erroneously sometimes supposed, only a new article of manufacture, but it also means a new process or method of manufacturing something new or old; it does not mean a new principle of manufacturing, but it means a new application of principles. No man can claim an invention in a principle (a), for that would be to invent the laws of nature, which have always existed.
Man merely discovers the principle, and if, when he discovers a principle he can discover a method of utilizing the principle so as to make it applicable to the production of a new manufacture, he can obtain a patent for the method, and to a large extent will be protected in the application of the principle itself.
Mr. Justice Wills in Easterbrook v. The Great Western Rail. way Co. said (6): “Although there cannot be a patent for an idea or principle apart from its physical embodiment in adequate apparatus, yet, that if the specification discloses the idea, shows a method by which it can be carried out and does not limit the claim of the patentee, any apparatus which by different mechanical means carries out the same idea is an infringement of the patent
(a) Boulton v. Bull, 2 H. Bl. 479 ; Dav. P. C. 196, 212; Hornblower v. Boulton, 8 T. R. 101 ; Jupe v. Pratt, 1 Web. P. C. 146 ; Neilson v. Harford, 1 Web. P. C. 342 ; 8 M. & W. 806 ;
The Househill Co. v. Neilson, 1 Web.
(6) 2 P. 0. R. 207.
though the method and even the purpose to which the principle or idea is applied be different from those embodied in the specification.”
Lord Justice Clark Hope in directing the jury in the case of The Househill Co. v. Neilson (e), said :—“I state to you the law to be that 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, or form of the apparatus, is essential in order to obtain benefit from the principle; then you may take out 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 You may generally claim the mode of carrying the principle into effect by mechanical contrivance, so that any sort of apparatus applied in the way stated will more or less produce the benefit, and you are not tied down to any form."
In the Court of Appeal, Lord Justice Cotton, speaking on this subject, said :-"Where there is a principle first applied in a machine capable of carrying it into effect, the Court looks more narrowly at those who carry out the same principle, and say they do it by a different mode, and looks to see whether, in effect, although the mode is not exactly the same, it is only a colourable difference—a mechanical equivalent for a substantial part of the patentee's invention being looked upon as a mere colourable difference” (d).
In Otto v. Linford (e), claim 1 of the plaintiff's specification ran as follows :-“Admitting to the cylinder a mixture of combustible gas or vapour with air, separate from a charge of air or incombustible gas, so that the development of heat and the expansion or increase of pressure produced by the combustion are
(c) 1 Web. P. C. 685.
(d) The Automatic Weighing Machine Co. v. Knight, 6 P. O. R. 304; see also Badische Anilin und Soda Fabrik v. Levinstein, 2 P. O. R. 91, 92, 93; L. R., 24 Ch. D. 156, 171, et seq. ; Proctor
v. Bennis, L. R., 36 Ch. D. 740; 4 P. 0. R. 333; Thomson v. Moore, 6 P. O. R. 426 ; Gadd & Mason v. The Mayor, dc., of Manchester, 9 P. O. R. 525.
(e) 46 L. T., N. S. 35.
rendered gradual substantially as and for the purposes set forth."
Jessel, M.R., in the Court of Appeal, said ($):—“It is said that what is claimed is a principle
or, as it is sometimes termed, the idea of putting a cushion of air between the explosive mixture and the piston of the gas motor engine, so as to regulate, detain, or make gradual, what would otherwise be a sudden explosion. Of course, that could not be patented. I do not read the patent so; I read the patent as being to the effect that the patentee tells us that there is the idea which he wishes to carry out; but he also describes other kinds of machines which will carry it out; and he claims to carry it out substantially by one or other of these machines. That is the subject of a patent :
One of the strongest illustrations that I know of is the patent for the hot blast in the iron manufacture (9), where there was nothing new at all except the idea that the application of hot air instead of cold air to the mixture of iron ore and fuel, would produce most remarkable results in the shape of economy in the manufacture of iron. The inventor or discoverer could not patent that, but what he did was this, he said : I will patent that idea in combination with the mode of carrying it out, that is, I tell you that you may heat your air in a
, closed vessel next your furnace, and then that will effect the object. It was held that that would do." '
” So in The Edison Bell Phonograph Co. v. Smith (h), where the plaintiffs claimed in their specification :-"In a phonograph, attaching both the recording point and the reproducing point to the same diaphragm, means being provided whereby either of the points may be brought into operative position on the surface of the phonogram.” It was pleaded by the defendants that
" this was a claim for the principle of attaching both the points to the same diaphragm; Wright, J., held that it was not so, deciding it to be “a claim for a particular arrangement of essential parts of a machine, which arrangement has obvious advantages, but has never before been made practicable, and which has now been found practicable in a way disclosed by the specifica
(f) At page 39.
806 ; 11 L. J., Ex. 20.
(h) 11 P. O. R. 148.
tion. Such a claim ought probably to be construed as a claim of monopoly for that arrangement carried out by any means substantially similar to those disclosed in the specification” (i).
A claim of every method of application of a principle is a claim of the principle itself, and is not subject-matter of a grant of letters patent (k).
The novel application of an old principle is subject-matter of a grant, if invention is disclosed, and provided that such novel application constitutes a new and useful improvement in manufacture (?), but the patentee is strictly tied down to the method of application disclosed in his specification, and valid patents may be taken out by others for different methods of carrying the same principle into effect (m).
In Barber v. Grace (n), the patentee's invention related to improvements in the finishing of hosiery and similar goods, and con. sisted in submitting them to the pressure of hot boxes or surfaces heated by steam, water, or other fluid. At the trial it appeared that the alleged infringement consisted in pressing goods between cylindrical revolving rollers heated by steam, it was held by Pollock, C.B., that the use of such rollers was not a mere colourable evasion of the patent, and that the defendants had not infringed.
In Boulton v. Bull (o), the Lord Chief Justice Eyre said : “When the effect produced is some new substance or composition of things, it should seem that the privilege of sole working or making ought to be for such new substance or composition, without regard to the mechanism or process by which it has been
(i) At page 163 ; see also Boulton v. Bull, Dav. P. C. 162 ; Hornblower v. Boulton, 8 T. R. 95 ; Electric Telegraph Co. v. Brett & Little, 10 C. B. 838 ; 20 L. J., C. P. 123 ; Minter v. Wells, 1 Web. P. C. 127; Cannington v. Nuttall, L. R., 5 H. L. 205.
(k) Neilson v. Harford, 1 Web. P. C. 355 ; Booth v. Kennard, 2 H. & N. 95; 26 L. J., Exch. 305 ; Automatic Weighing Machine Co. v. Knight, 6 P. 0. R. 297, 308.
(1) Dangerfield v. Jones, 13 L. T.,
N. S. 142; Cannington: v. Nuttall,
(m) Automatic Weighing Machine
Bl. 463 ; Dav. P. C. 162.