lent (y), provided that a substantial improvement is effected thereby; but a patent will not be upheld which consists merely in substitution of a well known mechanical equivalent for some part of an old process or machine (z). In Williams v. Nye (a), Cotton, L.J., said: "In order to maintain a patent, there must be a substantial exercise of the inventive power or inventive faculty. Sometimes very slight alterations will produce very important results, and there may be in those very slight alterations very great ingenuity exercised and shown to be exercised by the patentee." A combination of two well-known contrivances without ingenuity will not support a grant of letters patent. A patent was granted in 1870 for railway signalling apparatus ; in 1871 another patent was granted for other improvements in railway signalling apparatus; in 1874 the plaintiffs obtained a patent for a combination which, in effect, was constituted of the improvements in the 1870 and 1871 patents; any person with ordinary knowledge of the subject would, by placing the two inventions of 1870 and 1871 side by side, be able to effect the desired combination without making any further experiment or gaining any further information. Field, J., held the 1874 patent void (b). The mere fact that the improvement was the result of (y) Heath v. Unwin, 2 Web. P. C. 228, 302; 5 H. L. Cas. 505, 522, 545; The Badische Anilin und Soda Fabrik v. Levinstein, 2 P. O. R. 90. (z) Thompson v. James, 32 Beav. 570; Horton v. Mabon, 12 C. B., N. S. 437; 16 C. B., N. S. 141; 31 L. J., C. P. 255; Rushton v. Crawley, L. R., 10 Eq. 522; Murray v. Clayton, L. R. 7 Ch. 570; Jensen v. Smith, 2 P. O. R. 249; Fletcher v. Arden, 5 P. O. R. 46; Tickelpenny v. Army & Navy Cooperative Society, 5 P. O. R. 405; United Horseshoe Co. v. Swedish Horsenail Co., 6 P. O. R. 1; Winby v. Manchester Steam Tramways Co., 8 P. O. R. 61. (a) 7 P. O. R. 67; see also Hayward v. Hamilton, Griff. P. C. 115, 117; (b) Saxby v. Gloucester Waggon Co., L. R., 7 Q. B. D. 305; see also White v. Toms, 37 L. J., Ch. 204; Ormson v. Clarke, 13 C. B., N. S. 337; 14 C. B., N. S. 475; Jackson v. Needle, 2 P. O. R. 191; Sharp v. Bauer, 3 P. O. R. 193; Rowcliffe v. Longford Wire Iron Co., 4 P. O. R. 281; Haslam v. Hall, 5 P. O. R. 22; Longbottom v. Shaw, 5 P. O. R. 497; 6 P. O. R. 143; Herrburger v. Squire, 6 P. O. R. 194; Morgan v Windover, 7 P. O. R. 131; Williams v. Nye, 7 accident (c), or was one that appeared obvious after it had been made (d), is of no importance, provided that the result is the production of a cheaper or better article than had been produced before, by some new combination that had not previously occurred to any one else (e). In Cannington v. Nuttall (ƒ), it was held that the patent could be sustained, although each principle or process in it was previously well known, provided that the mode of combining these processes was new and produced a beneficial result, and provided also that the specification claimed not the old processes or any other, but only the new combination. This case is very instructive, as clearly demonstrating what is meant by a "new combination." To summarise the law upon "subject-matter," a patent may be granted for: (1) A new principle, coupled with a method of application, though the principle by itself would not be subject-matter. (2) The novel application of an old principle, if invention is disclosed and a substantial improvement effected, but the patentee is strictly tied down to his method of application. (3) A new machine, material, or process for a new purpose. (4) A new machine, material, or process for an old purpose, but the Courts will construe the invention strictly. (5) An old machine for a new purpose will be subject-matter only where the novel application obviously demanded the exercise of inventive power, but no patent will be granted for the application of an old machine to a purely analogous purpose. (6) A new combination of new and old, or new, or old processes or materials, so as to effect an old purpose in a better, cheaper, or more expeditious way than had been done before, coupled with the exercise of ingenuity. (7) An improvement by the omission of a part of an old P. O. R. 62; Newsum v. Mann, 7 P. (c) Crane v. Price, 1 Web. P. C. 410; Boulton v. Bull, Dav. P. C. 198; Liardet v. Johnson, 1 Web. P. C. 54. (d) Lyon v. Goddard, 10 P. O. R. 343; Benno Jaffé v. Richardson, 11 P. O. R. 111; Edison v. Smith, 11 P. O. R. 398. (e) Crune v. Price, 1 Web. P. C. 408; Murray v. Clayton, L. R., 7 Ch. 584; Lyon v. Goddard, 10 P. O. R. 346; 11 P. O. R. 354. (ƒ) L. R., 5 H. L. 205. machine which was previously thought essential, or by the addition of a new part, or by the substitution for an old part of a new piece of mechanism, or even of a mechanical equivalent which was not previously known to be such, provided that a substantial improvement is thereby effected, and provided that the improvement required the exercise of ingenuity. (8) A new product. (9) A new method of using an old machine, by which a new and useful result is attained. CHAPTER V. NOVELTY. HAVING now considered the interpretation which has been placed by the Courts upon the word "manufacture," we next examine what has been held to be a "new manufacture," that is to say, to what extent prior user is an answer to an action for the infringement of a patent. It is evident, that, if the alleged new manufacture can be shown to have been in the possession of the public before the application for the grant of letters patent, that there is no consideration for the grant. The patentee offers to the public, in return for the monopoly privilege, his information and knowledge respecting a new manufacture; if the public is already possessed of the information or knowledge, the supposed inventor has nothing to give (a). We shall see hereafter, when we discuss the practice of the Courts in actions for the infringement of patents, that the burden of proof lies on the alleged infringer when he sets up a defence of prior user, i.e., of want of novelty in the alleged manufacture at the date of the patent; and it is as well to keep this in mind in reading the cases which have been decided as to what amounts to prior user. We have seen that the Statute of Monopolies is a mere declaration of that which was the law before it was passed; it was always held by the Courts that the principle of a patent grant was not an arbitrary advantage granted by the Crown to one subject in detriment to the rest, but that it was an advantage granted by the Crown to persons who introduced a new manufacture, and that it was granted upon principle, not for the benefit of the patentee but for the benefit of the public: it being con (a) Patterson v. Gas Light & Coke Co., L. R., 3 App. C. 239; Morgan v. Seaward, 2 M. & W. 544, 561; Humpherson v. Syer, 4 P. O. R. 407, 414. sidered to the benefit of the public that reasonable encouragement should be given to inventors to induce them to devote their time, energies and resources to the improvement of the arts and manufactures of the realm. In the case of Hasting's Patent (b), decided in 1567, the patent was in consideration of the patentee having brought into the country the making of frisadoes as they were made in Haarlem, in Amsterdam, being not used in England. The infringers defended the patentees' bill in the Exchequer Chamber, on the ground that they had made baies very like to Mr. Hasting's frisadoes, prior to the date of Mr. Hasting's patent; they were therefore not restrained from making baies like his frisadoes. A patent was granted to "one Humphrey, of the Tower, for the sole and only use of a sieve or instrument for melting of lead, supposing it was his own invention, and therefore prohibited all others to use the same for a time'; and because others used the like instrument in Derbyshire, contrary to the intent of his patent, therefore he did sue them in the Exchequer Chamber by English bill, in which Court the question was whether it was newly invented by him, whereby he might have the sole privilege, or else used before at Mendip, in West country, which if it were there before used then the Court were of opinion that he should not have the sole use thereof" (c). The general question in disputed patents is whether the invention was known and in use before the patent? In Rex v. Arkwright (d), decided in 1785, Buller, J., gave a definition of "novelty" which now would be considered too wide. "Thus the case stands as to the several component parts of this machine, and if upon them you are satisfied that none of them were inventions unknown at the time this patent was granted, or that they were not invented by the defendant, upon either of these points the prosecutor is entitled to your verdict." In Cannington v. Nuttall (e), Lord Hatherley, L.C., said: "It (b) 1 Web. P. C. 6. (c) 1 Web. P. C. 7; Darcy v. Allin, 1 Web. P. C. 6; Mitchell v. Reynolds, 19 Mod. R. 130; Liardet v. Johnson, 1 Web. P. C. 52, 53. T. (d) 1 Web. P. C. 64. (e) L. R., 5 H. L. 216; see also Pirrie v. York Street Flax Spinning Co., 10 P. O. R. 37, 39. E |