Page images

produced, which, though perhaps also new, will be only useful as producing the new substance. When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating with or without old mechanism, by which the effect is produced.” Mr. Justice Heath said, “What then falls within the scope of the proviso? such manufactures as are reducible to two classes: the first class includes machinery, the second, substances, such as medicines formed by chemical and other processes, where the vendible substance is the thing produced, and that which operates preserves no permanent form ; in the first class the machine, and in the second the substance produced, is the subject for the patent. I approve of the term 'manufacture ' in the statute, because it precludes all nice refinements ; it gives us to understand the reason of the proviso—that it was introduced for the benefit of trade.” With reference to this judgment, we may point out that a new chemical substance is not a new manufacture, as the words “new manufacture" are understood in modern times, but that in the case of manufacturing a new chemical substance, the process of making that substance is the subject of the patent, and not the substance when made.

Upon perusing the cases which we propose to quote, it will be seen that the more modern view of the construction of the words

new manufacture" has been the result of a great deal of development. At first the judges seemed to be inclined to limit the subject matter of letters patent to new articles produced; but as the arts and manufactures of the country progressed and increased, it was seen that by far the most important inventions were inventions in the process of making old and well-known articles of commerce, and so it became evident that should the construction of the words “new manufactures” be entirely limited to the production of new articles, to the exclusion of the process of manufacturing old articles by cheaper, better and improved methods, the inducement which the common law intended to give to inventors would be curtailed to the narrowest possible limits.

Hallv. Jarvis (p) was an action for the infringement of a patent for the improvement of the manufacture of lace by the use of the flame of gas for the purpose of singeing the fluffy ends of the surface of lace manufactured from cotton. For the defendants it was contended that the process was not new. Fire and flame had been applied for similar purposes before the plaintiff's invention. The mere doing that with the flame of

gas could not be the subject-matter of a patent. The patent, which was clearly only for a process, was supported. In Jones v. Pearce (q) the patentee had used the principle of suspension to the manufacture of wheels; the patent was supported because, although the principle could not be patented, the method of applying that principle to the manufacture of wheels was properly the subject of a patent. In Russell v. Cowley (r) the patent, which was for an improved process of manufacturing iron tubes, was supported. Lord Lyndhurst, in giving judgment, said : It is an invention to manufacture tubes for gas and other purposes by welding them without the use of any mandril or internal support, by which certain advantages are produced.”

In Walton v. Potter (8) Chief Justice Tindal said: “Now there can be no doubt whatever that, although one man has obtained a patent for a given object, there are many modes open for a man of ingenuity to obtain a patent for the same object; there may be many roads leading to one place, and if a man has,

a by dint of his own genius and discovery, after a patent has been obtained been able to give to the public without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose.” In this case the learned judge by the word “ object” must have meant the method of producing an article.

The same judge, in Gibson v. Brand (1), said: “The patent is taken out for a new or improved process for the manufacture of

[merged small][merged small][ocr errors]


[ocr errors]

silk, and silk in combination with certain other fibrous substances,' taken out therefore strictly for a process undoubtedly there is a very strong reason to suppose if the specification is carefully and properly prepared, so as to point out with great distinctness and minuteness what the process is, that such a patent may be good in law. Such certainly was the opinion of Chief Justice Eyre, in Boulton v. Watt (u), and such also appears to have been the opinion (carefully guarding against any abuse of that doctrine) of Lord Tenterden in the case of The King v. Wheeler (0), who said that the subject matter of letters patent, i.e., the word “manufacture," as used in the Statute of James, is generally understood to denote either a thing made, which is useful for its own sake, and vendible, or to mean an engine or instrument, or some part of an engine or instrument, to be employed either in the making of some previously-known article, or in some other useful purpose . or it may perhaps extend also to a new process to be carried out by known implements or elements acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner or to a better or more useful account.'

Since the date of these earlier decisions the law seems to have been considered as settled upon the subject. In Bewley v. Hancock (y) Lord Cranworth said: “A discovery that the mixture of two or more simple substances in certain definite proportions will form a compound substance valuable for medical or other qualities, would afford a good ground for a patent. A A discovery of some machinery, whereby such a mixture might be more quickly and effectually accomplished, might be the foundation of another patent.” In Simpson v. Holiday (x) the specification said, “I mix aniline with dry arsenic acid and allow the mixture to stand for some time, or I accelerate the operation by heating it to, or nearly to, its boiling point until it assumes a rich purple colour.” The patentee claimed “the manufacture or preparation of red or purple dyes by heating aniline dyes with arsenic acid as hereinbefore described." Lord Chelmsford, in

(u) 2 H. Bl. 468 ; Dav. P. C. 207. (2) 2 B. & Ald. 349.

(y) 6 De G., M. & G. 402.
(z) L. R., 1 H. L. 315.

giving judgment, said: “There is nothing on the face of the specification to show that the invention described is not, in every part of it, the subject of a patent.” It is obvious that there may be many different processes of accomplishing the same object : if some of the processes are old, and that which is claimed is merely a new method, the subject of the invention will be confined to that method (a).

Where the object of a patent is old, and the means to effect it only are new, the court will construe the invention strictly, as it looks jealously at the claims of inventors seeking to limit the rights of the public to a well-known object (6).

But where a patent is for a new process to effect a new object which had been sought after but not previously attained, the doctrine of mechanical equivalents will apply, and a man will be held to have infringed who has arrived at the same result by means of a process bearing a substantial resemblance to the invention of the patentee (c).

There appears to be some doubt as to whether a patent could be granted for a mere product, irrespective of the means by which it was made. Cotton, L.J., has expressed an opinion that a product would be proper subject-matter. In his judgment in the case of Vorwerk & Son v. Erans & Co. (d) he said: “I decide that, not on the ground that there could not be a patent for a waistband, if that was claimed as a new thing, provided it was new, because it would be going against principle, I think, to say that there could be no claim for such a thing if it were entitled to

(a) Bovill v. Pimm, 11 Exch. 739.

(6) Curtis v. Platt, L. R., 3 Ch. D). 135 (n.); The Patent Bottle Envelope Co. v. Seymer, 5 C. B. N. S. 164; Horton V. Mabon, 12 C. B. N. S. 437 ; Ormson v. Clarke, 14 C. B. N. S. 475 ; Jupe v. Pratt, 1 W. P. C. 146 ; Barber v. Grace, 1 Exch. 339; 17 L. J., Ex. 122 ; Borill v. Pimm, 11 Exch. R. 718, 739 ; Seed v. Higgins, 8 H. L. C. 550 ; Rushton v. Crawley, L. R., 10 Eq. 522 ; The Badische Anilin und Soda Fabrikv. Levinstein, 2 P. O. R. 91 ; Proctor v. Bennis, 4 P. 0. R. 333; L. R., 36

Ch. D. 740; 57 L. J., Ch. 11; Gosnell v.
Bishop, 5 P. O. R. 158; Nettlefolds v.
Reynolds, 9 P. O. R. 270.

(c) Jupe v. Pratt, 1 W. P. C. 145 ; Househill Co. v. Neilson, 1 W. P. C. 673, 685 ; Curtis v. Platt, L. R., 3 Ch. D. 136, n. ; L. R., 1 H. L. 337 ; The Badische Anilin und Soda Fabrik v. Levinstein, 2 P. O. R. 91; Proctor v. Bennis, 4 P. O. R. 333; L. R., 36 Ch. D. 740; 57 L. J., Ch. 11; Thomson v. Moore, 6 P. O. R. 426. This subject is treated at length in Chap. XVII. on Infringement. (d) 7 P. O. R. 271.



be protected by a patent, and I think it would be contrary to principle, because if there is a new thing produced, then, in my opinion, there could be a thoroughly good patent taken out for that” (e).

Hereafter, in considering the specification, we shall have to discuss the limitations within which a patent for a process will be held valid, and the cases which have been decided upon the point.

Any addition to or subtraction from any known machine or process causing the old machine or process to accomplish an object in a more speedy, perfect or economical manner, is evidently the subject of a patent. In Hornblower v. Boulton ( f) Mr. Justice Grose said: “A doubt is entertained whether there can be a patent for the addition of an old manufacture, this doubt rests altogether upon Bircot's case (9), if that were to be considered as law at this date (1799) it would set aside many patents for many ingenious inventions . . . . . if, indeed, a patent could not be granted for the addition it would be depriving the public of one of the best benefits of the Statute of James.” In Lister v. Leather (h) Lord Campbell said: “The assertion that all patents for improvements of existing patents must be void, is obviously untenable” (). In Fox v. Dellestable (k) Malins, V.-C., said: “No doubt a man may make an invention which is partly covered by an existing patent, but he cannot use it without the licence of the patentee. He may wait for the expiration of the patent and take out one himself. If his invention be novel, that patent will be valid” (1).

During the argument in Vickers v. Siddell, Lord Herschell suggested that if a man used a mechanical equivalent, and


[ocr errors]

211 ;

(e) See also Bowen, L. J., ib. p. 274; also American Braided Wire Co. v. Thomson, 5 P. O. R. 113; 6 P. O. R. 518 ; Nobel's Explosive Co. v. Anderson, 11 P. O. R. 530.

(f) 8 T. Rep. 104.
(9) 3 Inst. 184.
(h) 8 E. & B. at p. 1017.

(i) See also Russell v. Cowley, 1 Cr. M. & R. 86+; Booth v. Kennard, 1 H.

& N. 531 ; Morris v. Bransom, 1 Web.
P. C. 51 ; 1 Carp. P. C. 30; Bull. N.
R. 76 ; Bovill v. Moore, 2 Coop. Ch.
Ca. 56 ; Dav. P. C. 361 ; 2 Marsh. R.

Moser v. Marsden, 10 P. 0. R. 361.

(1) 15 W. R. at p. 195.

(1) See also Lister v. Leather, 8 E. & B. 1017 ; In re Fox's Patent, 1 Web. P. C. 431, n.

« PreviousContinue »