CHAPTER VI.

UTILITY.

We now come to the consideration of the question of utility, for not only must the invention be new, but it must be new and useful. The 6th section of the Statute of Monopolies does not refer to the necessity of utility in the invention, but saving, as it does, the common law prerogative of the Crown in respect of inventions, it refers us back to what had previously been held to be the necessary elements of an invention. In Darcy v. Allin (a), decided in 1602, it was held, the invention must tend to the furtherance of trade, and be for the good of the realm, and that the monopoly was granted in consideration of the good that the inventor doth bring by his invention to the commonwealth, otherwise not. Consequently an essential element of a valid grant is, that it should be for something which is for the good of the realm; that is, it must be useful (b).

In Boulton v. Bull (c), Rooke, J., said: "The public have a right to receive a meritorious consideration in return for the protection granted." In the same case Buller, J., said: "The invention professes to lessen the consumption of steam, and to make the patent good the method must be capable of lessening the consumption to such an extent as to make the invention useful." And in the case of The King v. Arkwright (d) the same judge, in leaving the matters to the jury, said: "There is another question, whether the stripe in it makes a material alteration, for

(a) Noy, R. 182.

(b) Edgebury v. Stephens, 1 Web. P. C. 35; R. v. Arkwright, 1 Web. P. C. 72; Turner v. Winter, 1 Web. P. C. 80; Morgan v. Seaward, 2 M. & W. 544; Manton v. Parker, Dav. P. C.

327; 1 Web. P. C. 192, n.; The Badische Anilin und Soda Fabrik v. Levinstein, 4 P. O. R. 462.

(c) 2 H. Bl. 478.

(d) 1 Web. P. C. 72.

if it appears, as some of the witnesses say, to do as well without the stripes, and to answer the same purpose if you suppose the stripes never to have been used before, that is not such an invention as will support the patent."

It will always be a question for the consideration of the jury, whether the invention is useful; that is, whether that which is new is a sufficient advance or improvement upon what was already known by the public as to add to a material extent to the public stock of knowledge (e). It does not mean that there must necessarily be a great deal of invention, or an extensive operation, to support the patent, but that the invention when carried out in some way materially improves the process or manufacture, either by cheapening the article produced, or by improving its quality, or by improving the method of producing, or the uses to which it can be put.

Each of the cases which have been decided upon the question of utility deal, and necessarily must deal, with an independent state of facts; and, consequently, no case can be said to be an authority for another case; but they go to show the general principle that "utility" means a substantial improvement, and not necessarily an extensive improvement; for instance, a man might invent a large and complicated machine for the manufacture of boots, which, when completed, would do nothing which was not done before, and would not make them any quicker or any cheaper than they were made before. Such a machine would not form the subject of a patent. On the other hand, a man might discover a new needle for stitching boots, which would economise half-an-hour in the manufacture of each boot; such a needle would be the subject of a patent, although the whole improvement might consist of a bend.

In Crane v. Price, Tindal, C.J., said: "If the invention be new and useful to the public, it is not material whether it be the result of long experiments and profound research, or whether by some sudden or lucky thought, or mere accident of discovery" (f). The test of utility of an invention, is that, when put in practice by a competent man, it should really do what it assumes to do,

(e) Hill v. Thompson, 1 Web. P. C. 237; Bloxam v. Elsee, 1 C. & P. 565 ;

Cornish v. Keene, 1 Web. P. C. 506. (f) 1 Web. P. C. 411.

and be practically useful at the time when the patent is granted for the purposes indicated by the patentee (g).

Utility to support a grant of letters patent does not depend at all upon the amount of commercial success that may result from the invention (h), nor is it affected by the fact that it may be enormously expensive when put in practice (i), provided that cheapness of production is not the main point of the inventor's claim, in which case commercial failure will be taken into consideration as evidence of the uselessness of the invention.

In The Badische Anilin und Soda Fabrik v. Levinstein, before the House of Lords, Halsbury, L.C., said: "The element of commercial pecuniary success has, as it appears to me, no relation to the question of utility in patent law generally, though of course where the question is of improvement by reason of cheaper production, such a consideration is of the very essence of the patent itself, and the thing claimed has not really been invented unless that condition is fulfilled" (k).

The fact that a patent was never put into practice is no proof of the uselessness of the invention. In Edison v. Holland (1), Lindley, L.J., said: "The utility of the patent must be judged by reference to the state of things at the date of the patent; if the invention was then useful, the fact that subsequent improvements have replaced the patented invention and rendered it obsolete and commercially of no value, does not invalidate the patent (m); and Cotton, L.J., in the same case,

(g) Per Lindley, L.J., in Lane Fox v. Kensington and Knightsbridge Electric Lighting Co., 9 P. O. R. 417; Cornish v. Keene, 1 Web. P. C. 507; Per Grove, J., in Young v. Rosenthal, 1 P. O. R. 41; The Badische Anilin und Soda Fabrik v. Levinstein, 4 P. O. R. 462, 466; L. R., 12App. Cas. 712, 719, 720; Edison v. Holland, 6 P. O. R. 283; see also Wilson v. Union Oil Mills Co., 9 P. O. R. 70.

(h) The Badische Anilin und Soda Fabrik v. Levinstein, L. R., 12 App. Cas. 712, 719, 720; 4 P. O. R. 462, 466; Otto v. Linford, 46 L. T., N. S. 41; United Telephone Co. v. Bussano,

3 P. O. R. 313; Ehrlich v. Ihlee, 5 P. O. R. 450; Kurtz v. Spence, 5 P. O. R. 182; Edison v. Holland, 6 P. O. R. 257, 277, 283; Lane Fox v. Kensington & Knightsbridge Electric Lighting Co. 9 P. O. R. 417; Wilson v. Union Oil Mills Co., 9 P. O. R. 69, 70; Hopkinson v. St. James & Pall Mall Electric Light Co., 10 P. O. R. 62.

(i) Wilson v. Union Oil Mills Co., 9 P. O. R. 69, 70; The Badische Anilin und Soda Fabrik v. Levinstein, 4 P. O. R. 462, 466.

(k) 4 P. O. R. 462.
(1) 6 P. O. R. 243.

(m) Ib. p. 283.

said (n): “A patent is not to be defeated simply because subsequent inventions improved the patented article, or because, in consequence of subsequent improvements, no article was, in fact, made in accordance with the specification."

In Otto v. Linford, Lord Jessel, M.R., said: "It is quite true that it has been said that it is prima facie evidence of want of utility (0) if you do not make and vend your machine; but that is subject to this observation, that you may make and vend an improvement upon it, and if you have found out immediately after you have patented your invention that it can be improved, it does not by any means show that the first invention was useless" (p).

A very slight amount of utility will be sufficient to support a patent. Alderson, B., in Morgan v. Seaward, said (q): “I think if it was of different construction from any other steam engine, and of any use to the public, then that is sufficient." Again, Lord Jessel, M.R., in Otto v. Linford, said (r): “And, as to this question of utility, very little will do."

"The law does not require any definite amount of utility, and a very slight amount of utility will be sufficient, provided it does not appear that the Crown has been deceived as to the extent of the utility of the invention" (s).

Utility, however great it may be, cannot by itself support a grant of letters patent, and the application of an old contrivance to an analogous purpose, however useful the result may be, will not constitute a patentable invention (†).

(n) 6 P. O. R. p. 277.

(0) Morgan v. Seaward, 1 Web. P. C. 186; Tetley v. Easton, Macr. P. C. 63.

(p) 46 L. T., N. S. 41; Galloway's Patent, 1 Web. P. C. 724; Renard v. Levinstein, 11 L. T., N. S. 505; United Telephone Co. v. Maclean, Scotch Session Cases, 4th Series, 710; see also United Telephone Co. v. Bassano, 3 P. O. R. 313; Thompson v. Batty, 6 P. O. R. 100.

(q) 1 Web. P. C. 186; see also per Baron Halsbury, L. C., in The Badische

Anilin und Soda Fabrik v. Levinstein, 4 P. O. R. 462.

(r) 46 L. T., N. S. 41; see also Philpott v. Hanbury, 2 P. O. R 37; Ehrlich v. Ihlee, 5 P. O. R. 450; Pirrie v. York Street Flax Spinning Co., 10 P. O. R. 39.

(s) Per Chatterton, V.-C., in Pirrie v. York Street Flax Spinning Co., 10 P. O. R. 39; see also Easterbrook v. Great Western Railway Co., 2 P. O. R. 201, 210.

(t) Per Lord Watson in Morgan v. Windover, 7 P. O. R. 136.

Utility, like novelty, is part of the consideration for a grant of letters patent, and if a material portion of the invention be useless, there is a failure of consideration, and the patent is altogether void (u), so, too, where a specification claims ability by means of one process to produce two or more things or effect two or more results, and fails in any one of them. The patent is void for falsity of suggestion, the Crown having been deceived in the grant (x); but want of utility in an immaterial part of a machine, which is not claimed as essential, will not vitiate a patent.

Lord Tenterden, C.J., in Lewis v. Marling, said: "I agree that if the patentee mentioned that as an essential ingredient in the patent article, which is not so, nor even useful, and whereby he misleads the public, his patent may be void; but it would be very hard to say that the patent should be void because the plaintiffs claim to be the inventors of a certain part of the machine not described as essential, and which turns out not to be useful" (y).

Tindal, C.J., in Haworth v. Hardcastle, said: "If the jury think it useful in the general, because some cases occur in which it does not answer, we think it would be much too strong a conclusion to hold that patent void" (≈).

In that case part of the patentee's claim was for the application of the machinery described for drying calicoes, the said machinery being adapted for taking up and removing the said calicoes after being dried. At the trial it appeared that the machine failed in taking up certain cloths stiffened with clay.

Where an invention is as a whole useful, a very small amount of utility will be sufficient to support a second and subsidiary

(u) Simpson v. Holliday, L. R., 1 H. L. 315, 322; Templeton v. Macfarlane, 1 H. L. Ca. 595; Turner v. Winter, 1 Web. P. C. 77; Morgan v. Seaward, 2 M. & W. 544; Bloxam v. Elsee, 6 B. & C. 169; Hill v. Thompson, 1 Web. P. C. 232; 3 Mer. 622; Lawrence v. Perry, 2 P. O. R. 179; The United Horsenail Co. v. Stewart, 2 P. O. R. 132; United Horseshoe & Nail Co. v. Swedish Horsenail Co., 6 P. O. R. 8.

(x) Turner v. Winter, 1 Web. P. C. 77; Bloxam v. Elsee, 6 B. & C. 169, 178.

(y) 10 B. & C. p. 25 ; see also Morgan v. Seaward, 2 M. & W. 544; Haworth v. Hardcastle, 1 Bing. N. C. 182; United Horsenail Co. v. Stewart, 2 P. O. R. 132; United Horseshoe & Nail Co. v. Swedish Horsenail Co.,6 P. O. R. 8. (2) 1 Bing. N. C. 190.