Page images

produced a superior result, such improvement would be patentable (m).

An application of an old machine or an old material for a new purpose, may be the subject of a patent; for instance, Muntz v. Foster (n) was an action for an infringement of a patent for the manufacture of metal plates to be used for sheathing the bottoms of ships. The improvement consisted of using an alloy of zinc and copper in certain proportions for the manufacture of the plates, and for this purpose copper alone had hitherto been used. The alloy of zinc and copper was to produce an old and wellknown material, still the application of that old material to sheathing of ships had not before been discovered, and upon its being shown that such an application was a great improvement on the old method of sheathing with copper, it was held that the patent could be sustained.

The application of a known instrument or machine to a new purpose will not support a patent unless the means or method of application is also new and discloses the exercise of a certain amount of ingenuity. Exactly what degree of invention is requisite is difficult to define, and it is impossible to formulate a rule capable of applying to every case that might arise, the question being one that must be decided upon the facts of each particular case.

Lord Esher, M.R., in Lyon v. Goddard said (6):– “I know that a case before the House of Lords has been cited, Morgan v. Windover (P), which, it is said, lays down a rule that would oblige us in this case to say that there is no invention. I have a very strong feeling myself that that case in the House of Lords was decided from this view of it: that the patentee there did not claim the combination of the springs at the back of the carriage and the springs at the front, but what he did claim was the mode of attaching each of those springs to the bed of the carriage, and although I am not obliged to say that I should have agreed with them as to the fact they found, they found that that was not


(m) 7 P. O. R. 303.

(n) 2 Web. P. C. 103 ; see also Hay. ward y. Hamilton, Griff. P. C. 115 ; Lister v. Norton, 3 P. O. R. 199 ; Penn V. Biblry, L. R., 2 Ch. App. 127 ; 36

L. J., Ch. 455.

(0) 10 P. 0. R. 344 ; see also Lister v. Norton, 3 P. 0. R. 205 ; Morgan v. Windover, 4 P. O. R. 426.

(v) 7 P. O. R. 131.

sufficient invention. They thought so, and therefore I suppose in that case, as there is no contradicting them, we may take it that they were right; but because there was no invention in that case, how can that be an authority for saying that there is no invention in this?"

In Morgan v. Windover Lord Halsbury, in the House of Lords, said (1): “Whether that invention is to be ascertained by considering something originally discovered or by considering a combination producing a new result, still it cannot but be certain that the Statute of Monopolies, and the whole branch of the law founded on that statute, make it an absolute condition to the validity of a patent that there should be what may properly be called invention, and the application of well-known things to a new analogous use is not properly the subject matter of a patent.'

In that case the patent consisted in the application of C springs, which previously had only been employed on the back of a carriage, to the fore part, and arranged so as not to interfere with the fore wheels and their motion in turning the carriage. This contrivance was new, and was admitted to give greater ease and comfort in the motion of the carriage to which it was attached. The patent was upheld in the lower courts, but these decisions were reversed by the House of Lords, where it was held nem. con. that there was not sufficient ingenuity disclosed to support a grant of letters patent. Lord Herschell in his judgment said (r) : “Now, my Lords, if it had required mechanical ingenuity and skill to adapt the composite springs which had heretofore been used in the hind part of a carriage to the fore part of a carriage, so that it was not the mere substitution in front in substantially the same way as the substitution had taken place at the back, but that it needed some skill and ingenuity to adapt to the front part of the carriage that which had been applied to the back, I should have thought that there was sufficient subject-matter, and that the patent could have stood. But when once it is admitted that all that can be claimed as new is the idea of putting it in the front instead of at the back, and that when once that idea was entertained, any workman told to do it would, without


(q) Ib. at p. 134.

(r) Ib. at p. 137.

any instructions or any special mechanical skill, be able at once to do it, it seems to me that that really concludes the case against the respondents.”

In Penn v. Bibby (8) Lord Chelmsford, L.C., recognised the difficulty of stating any definition which should be applicable to every case. He said: “It is very difficult to extract any principle from the various decisions on this subject which can be applied with certainty to every case, nor indeed is it easy to reconcile them to each other.” He then proceeds to dissent from the definition given by Lord Campbell in Brook v. Aston, doubting the accuracy of the report, and proceeds to say : “ Lord Chief Justice Cockburn approaches much nearer to the enunciation of a principle, or at least of a rule for judging in these cases, in Harwood v. G. N. R. (1), where he says, ' although authorities established the proposition that the same means, apparatus, or mechanical contrivance cannot be applied to the same purpose, or to purposes so nearly cognate and similar as that the application of it in one case naturally leads to the application of it when required in some other, still the question in every case is one of degree, whether the amount of affinity or similarity which exists between the two purposes is such that they are substantially the same, and that determines whether the invention is so sufficiently meritorious as to be deserving of a patent.'" The case of Har. wood v. G. N. R., quoted above by the Lord Chancellor, was carried to the House of Lords, where Lord Chelmsford, then Lord Chancellor, said: “The question is, whether there can be any invention of the plaintiff in having taken that thing, which was a fish for the bridge, and having applied it as a fish for the railway. Upon that I think the law is well and rightly settled . . viz., that you cannot have a patent for a well-known mechanical

, appliance, merely because it is applied in a manner or to a purpose which is analogous to the manner or purpose in or by which it has hitherto been notoriously used”

[ocr errors]

" (u).

(s) L. R., 2 Ch. App. 127. (1) 29 L. J., Q. B. 193.

(u) 11 H. L. Cas. 654; see also Horton 1. Babơm, 12 C. B., N. S. 437;16 C. B., N. S. 141; 31 L. J., C. P. 255; White v. Toms, 37 L.J.,Ch. 204; Ralston v. Smith,

11 H. L. Cas. 223 ; Jordan v. Moore,
L. R., 1 C. P. 624 ; Parkes v. Stevens,
L. R. 8 Eq. 367 ; L. R., 5 Ch. 36 ;
Losh v. Hague, 1 Web. P. C. 200 ;
Ormson v. Clark, 32 L. J., C. P. 8;
Brunton v. Hawkes, 4 B. & Ald. 641 ;


In Reg. v. Cutler (x) Lord Denman said : “With regard to the third and fourth claims, in which the defendant claims the application of tubes in the construction of tubular flues, it appears to me that he has no right to take out a patent for the mere application of particular things to any particular purpose. If he had made a new combination, that would have been a new dis. covery, and a proper subject for a patent. . . . I think that the application of an article to produce any particular result, the party having no claim either to the mode of producing the article, or to the mode of applying it for attaining that result, forms no ground for a patent.” Lord Denman's distinction between the mere application of an old instrument to a new purpose and a new combination, appears to have been followed, and to be a correct exposition of the law.

In Jackson v. Needle (y) North, J., said : “The plaintiff's first witness seemed to have an idea that because the parcels post was new, therefore a thing to be sent through the parcels post was new : there is no foundation for that."

In Bush v. Fox (3) Chief Baron Pollock graphically illustrated the point we are now discussing. He said: “I think if one man invents a new mode of looking at the moon, somebody else cannot take out a new patent for looking at the sun. If a man were to take out a patent for a telescope to be used to make observations on land, I do not think anyone could say, 'I will take out another patent for another telescope to be used for taking observations on the sea. That case was ultimately confirmed in the House of Lords (a). In Brook v. Aston Baron Martin said (6): “ The application of a well-known tool to work pre

[ocr errors]

Saxby v. Gloucester Waggon Co., L. R., 7 Q. B. D. 305 ; Britain v. Hirsch, 5 P. 0. R. 226 ; Blakey y. Latham, 6 P. 0. R. 184 ; Deutsche Nähmaschinen Fabrik vorm., Wertheim v. Pfaff, 7 P. 0. R. 251, 258 ; Williams v. Nye, 7 P. O. R. 62; Elias v. Grovesend Tinplate Co., 7 P. O. R. 455 ; Leadbeater v. Kitchin, 7 P. O. R. 235; The Embossed Metal Plate Co. v. Saupe, 8 P. O. R. 355 ; Lane Pox v. Kensington

& Knightsbridge Lighting Co., L. R.,
1892, 3 Ch. 424 ; 9 P. O. R. 413;
Sudbury v. Lee, 11 P. O. R. 58 ; Rosc's
Patents Co. v. F. Braby & Co., 11 P. 0.
R. 198.

(x) 3 C. & K. 215 ; see also Tatham
v. Dania, Griff, P. C. 213.

(y) Griff. P. C. at p. 134.
(z) Macr. P. C. 164.
(a) 5 H. L. C. 707.
(0) 28 L, J., Q. B. 176.


[ocr errors]

viously untried materials, or to produce new forms, is not a subject of a patent.”

The border line between a sufficient and an insufficient amount of ingenuity to support a patent for a new use of an old machine is exceedingly fine. The above cited cases give instances where the Courts have held that no invention was disclosed; we now propose to quote a few examples of patents which have been supported as exhibiting an adequate amount of invention.

In Gadd v. The Mayor, 8c., of Manchester (c), the object of the plaintiff's patent was to keep gasometers vertical without having recourse to the external guiding frames generally used; this object was not in itself new, but had never been attained by any method resembling that employed by the patentees. The principle employed by them was one which had previously been described in specifications of inventions for keeping floating docks and pontoons in a horizontal position. It was held by the Court of Appeal, reversing the decision of the Court below, that in the application of that principle to gasometers there were practical difficulties to be overcome which required a considerable degree of ingenuity, and was good subject matter for a patent.

In Lane Fox v. Kensington and Knightsbridge Electric Lighting Co. (d), Lindley, L.J., said: “On the one hand, the discovery that a known thing—such, for example, as a Planté battery-can be employed for a useful purpose for which it has never been used before is not alone a patentable invention; but, on the other hand, the discovery how to use such a thing for such a purpose will be a patentable invention if there is novelty in the mode of using it, as distinguished from novelty of purpose, or if any new modification of the thing, or any new appliance is necessary for using it for its new purpose, and if such mode of user, or modification, or appliance involves any appreciable merit. It is often extremely difficult to draw the line between patentable inventions and non-patentable discoveries, but I have endeavoured to state the distinction as I understand it, and so far as is necessary for the purposes of the present case.” In Lyon v. Goddard (e), Bowen, L.J., said : “When you see




(c) 9 P. O. R. 516.
(d) L. R., 1892, 3 Ch. 424, 429 :

9 P. O. R. 413, 416

(e) 10 P. O. R. 334, 346.

« PreviousContinue »