Rights of Subsequent Inventors. As a patentee must not obtain such a monopoly as would interfere with the persons making use of the knowledge they already possess, so, too, he cannot interfere with subsequent inventors by obtaining a monopoly for more than he has actually invented. The risk of claiming something that may not prove workable is too great to be frequently attempted. This question cannot be well discussed at this stage, for it cannot be severed from the consideration of the disclosures which the patentee is bound to make in his specification for the information of the public, and as a condition of obtaining his grant. But a difficulty arises from the fact that the interests of rival inventors, and interference with them, date from the commencement of the monopoly, that is, the date of the application, whereas the time for filing the complete specification is some months later. On the one hand, the interests of certain members of the public (i.e. rival inventors) require that the patentee's monopoly be confined to what he had invented at the date of his application; and, on the other hand, the interests of others (ie. the manufacturers) require that his knowledge at the date of his final specification be fully disclosed. The full discussion of this subject is reserved until the question of the specifications is considered. CHAPTER IV. THE PERSONS TO WHOM PATENTS MAY BE GRANTED. Importers of inventions-True and first Inventor, p. 49-Assistance of Workmen, p. 50-Prior grant, p. 51. Importers of Inventions. As patents are granted as rewards for improving industries within the realm by introducing new manufactures, it was settled, even before the Statute of Monopolies, that the first importer of a new manufacture could obtain a patent in the same way and on the same conditions as a first inventor.' Hence persons can obtain patents for inventions "communicated from abroad." They may hold these patents as trustees for the inventors abroad or in their own right according to the nature of the transactions, if any, between them and the foreign inventors. An "importer" therefore comes within the definition of an "inventor." If the inventor abroad be a patentee in certain foreign countries, or in any British dominions oversea, he has a priority of the right of application over residents within the realm. must be exercised within twelve months.5 ing it is discussed post, p. 176. This right of priority The method of exercis A patent may be granted to foreigners as well as British subjects, to two or more persons, one of whom at least must be the "true and first inventor." This last provision meets the difficulties of those Edgebury v. Stephens, 2 Salk. 447; 1 Webs. 35; 1 Hawk. P. Cr. i. c. 79, s. 20 (quoting Noy, 182, 183). 2 44 Abroad" includes British Colonies. Rolls v. Isaacs, 19 Ch. D. 268; 45 L. T. 704. 3 Beard v. Egerton, 3 C. B. 97. As to breach of trust by agent, see Milligan v. Marsh, Jur. N. S. 1083; Nickels v. Ross, 8 C. B., at p. 723. 4 Sect. 103 of the Act of 1883, post, p. 508. 5 Art. 4 of the International Convention, post, p. 582, 1 Ed. VII. c. 18. Sect. 4 of the Act of 1883 (as explained by sect. 5 of the Act of 1885), post, p. 486. For example of failure of this condition, see Marshall's Appl., 5 R. P. C. 661. inventors who are unable to perfect their inventions without the aid, financial or other, of persons not inventors. The point has been raised but not decided that a foreigner who is an alien enemy cannot be a patentee;1 but as licences to trade may be granted by the Crown to alien enemies, there appears to be no reason why a patent should not be granted. An "alien enemy" is a person who is the subject of a monarch, or citizen of a state that is at war with His Britannic Majesty, although such an one be a resident within the United Kingdom. At all events such an alien enemy has no right to sue for infringements, or seek any redress in British Courts; but if he be licensed to trade he may sue by a trustee.1 It was thought that a clergyman engaged in spiritual work could not be a patentee, inasmuch as he is prohibited from trading by 1 & 2 Vict. c. 106, s. 29 ; but it must be observed that the prohibition extends only to trading "in person," and does not prohibit one from being a shareholder in a trading company: see 4 & 5 Vict. c. 14. There can be no doubt that he may be a patentee in the capacity of representative of a deceased inventor. True and First Inventor. The "true and first inventor" (or importer) is the person who first actually makes and publishes the invention which is protected by the patent. If a prior inventor have made the same invention and kept it to himself, neither using it commercially, publishing it, nor applying for a patent, the second inventor who makes the same invention is entitled to a patent as being the true and first inventor; 5 the same rule applies to inventions imported from abroad. Hence in the case of contemporaneous inventors it is the one who first makes application who succeeds in obtaining the monopoly,' even against a second inventor who completes his specification and has his patent sealed before the earlier applicant.8 543 1 Bloxam v. Elsee, 1 Carp. P. C. 436. Beard v. Egerton, 3 C. B. 97, at p. 130. 2 Halleck, ii. 364, 374. 4 Lord Ellenborough in Kensington v. Inglis, 8 East, 289, 290. Dollond's Patent, infra; Lewis v. Marling, 1 Webs. 496; Carpenter v. Smith, 1 Webs. • Lewis v. Marling (per Bayley, J.), 4 C. & P. 58; 1 Webs. 496. 'Chitty's Prerog. Crown, 182; Forsyth v. Riviere, 1 Webs. 97; Cornish v. Keene (per Tindal, C.J.), 1 Webs. 508; Ex parte Henry, L. R. 8 Ch. Ap. 170. s Saxby v. Hennett, L. R. 8 Ex. 210. E Illustration. Dollond's invention consisted in so combining lenses of different kinds of glass, one convex and the other concave, that the dispersion in one corrected that in the other, while the difference in diffraction was sufficiently large to make the combined lens of sufficient power to be employed in telescopes. The patent was objected to on the ground that Dr. Hall had made the same discovery before him. "But it was holden that as Dr. Hall had confined it to his closet, and the public were not acquainted with it, Dollond was to be considered as the inventor." Dollond's Patent in 1 Webs. 43; 2 H. Bl. 470. Assistance of Workmen. An inventor may avail himself of suggestions of persons employed by him, as agents or servants, to carry out and perfect the invention, so long as such suggestions are confined to minor or subordinate parts.1 An employer is not entitled to the inventions of his servants,2 but only to embody improvements made or suggested by them when employed to perfect and carry out the invention.3 But if he adopt suggestions which are essential to his invention and come within the principle and object 5 of it, then he is no longer the "true and first inventor;" nor is he if he take his invention from some source other than his own mind, such as an old book; this rule is to be understood as applying to information derived from sources within the realm and not to information imported from abroad and unpublished within the realm, for one so acquiring knowledge of an invention from abroad is an importer of it, and therefore entitled to a patent. To distinguish between suggestions that are essential and those that are not one must analyze the invention to distinguish what are its principles and objects as distinguished from the application of the former to attain the latter: ante, pp. 9, 11. A patent granted to one who is not really the "true and first inventor," but represents himself as such, is invalid, because the Crown has been deceived in its grant.? 1 Minter v. Wells (per Alderson, B.), 1 Webs. 132; Bloxam v. Elsee, 1 Carp. P. C. 436, 438. 2 Heald's Application, 8 R. P. C, 430. David and Woodley's Application, Gr. L. O. C. 26. Tennant's Case, 1 Webs. 125, post, p. 182; R. v. Arkwright, 1 Webs. 72. 5 Allen v. Rawson (per Tindal, C.J.), 1 C. B. 574. I 6 Gibson v. Brand, 1 Webs. 628; Muntz v. Foster, 2 Webs. 102. • Comyn's Digest, cc. 8 & 9; Lewis v. Marling, 1 Webs. 491, 492; R. v. Wheeler, 2 B. & Ald. 349, post, p. 186; Minter v. Wells, 1 Webs. 129. A patentee may be not the true and first inventor because the That aspect of the question is included in the considerations of prior user, prior publication, ante, pp. 18–46. invention itself is not new. Illustration. In the specification of a patent for the use of calcareous earths in bleaching, the agitation by mechanical means was described as the spirit of that part of the invention. This had been suggested to the inventor by a chemist in conversation. The patent was invalid. Prior Grant.1 The date of a patent for an invention in English Law is the date of the application. Hence, if a rival inventor apply for a patent after another applicant for one for the same invention, the later applicant, although a “true," is not "the first inventor." Again, as a monopoly is an exclusive right to make, vend, and use an invention, it is a contradiction in terms to say that two monopolies can exist for the same invention; hence it would seem that the latter of two applicants, although perhaps in fact the earlier inventor, cannot obtain a valid patent. Moreover, his patent, if granted, will be invalid, not by reason of prior use or prior publication, but by reason of the invention being the subject of a “prior grant." Such a case may occur either by no opposition being raised, antedated under the provisions of the International Convention and or by reason of a patentee of a foreign patent having his application Sect. 103 of the Act of 1883 (post, p. 176). The Crown cannot, by the grant of the monopoly, deprive the public of the right to use the patented invention for a longer period than fourteen years, unless it be extended on the recommendation of the Privy Council. On the expiration of the fourteen years the public would be deprived, for a few months perhaps, of their right to use the invention, the subject of the prior grant, if the second one were held valid. In the nature of things such cases must be very rare. They might occur in relation to inventions relating to war that are not published, post, p. 117. Contemporaneous applications, i.e.on the same day, are considered post, p. 158. 1 As no actual decisions are to be found, the three following paragraphs must only be taken as presenting one view of the question. See Coke's Institutes, vol. 4, p. 88. |