(6)

CHAPTER II.

LIMITS OF "MANUFACTURE" IN PATENT LAW.

Distinction between Principles and Inventions, p. 9-Distinction between Inventions and their Objects, p. 11-Patents for Improvements, p. 14 -Master Patents, p. 15—Combination Patents, p. 16.

Limits of "Manufacture" in Patent Law.

THE term "manufacture" is one that is necessarily wide. Subject to what has been already stated (ante, p. 3), almost any new means whereby the production of wealth in the country is increased, may be a manufacture for which a patent may be obtained, provided the trade so introduced be not an unlawful one. It will be more convenient first to consider the limits to the subjects comprised in the term "manufacture" within the Statute of Monopolies.

The term "subject-matter" properly denotes that for which the patent is granted, and in order that the patent may be valid it must satisfy the conditions discussed hereafter. For instance, if an invention lack that amount of ingenuity required to make it patentable, the patent is said to be invalid "for want of subject matter."

The term "invention" is used in connection with Patent Law in more senses than one. It is commonly used in specifications and elsewhere to denote the subject of the monopoly granted by a patent, e.g. "My invention consists in, &c."-in such cases it denotes a manufacture.

All "inventions" (using the term in the sense just indicated) consist in the application of the laws of nature, the properties of bodies, elements, or other substances to produce certain results or attain certain objects for the benefit of mankind. Hence there are four natural divisions, or stages, to be considered in regard to any invention:

I. The principles or laws of nature, i.e. natural phenomena, or properties of substances or things employed.

II. The method of application of those principles, e.g. a process

of manufacture.

III. The immediate result, or vendible article, or substance

produced.

IV. The ultimate result, that is, the object to be attained, or use to which the more immediate result is applied.

The nature of this division will be more fully understood by referring to a few elementary examples :

In the invention of the pendulum there are involved—

(i.) the principles of gravitation and inertia involved in the period of oscillation of the pendulum;

(ii.) the forms, the mode of suspension and attachment;

(iii.) the complete article produced; and

(iv.) the resulting property of the device in being capable of isochronous motion, and consequently of being able by

suitable attachments to impart such motion to other mechanism.

In the balance-wheel of a watch there are

(i.) the principles determining the oscillations of a rigid body, the period of which depends on the mass, shape, and size of

the wheel;

(ii.) the mode of manufacture and attachment to the rest of the mechanism;

(iii.) the complete article produced; and

(iv.) the property of being capable of isochronous motion, and of being used to impart such to other mechanism.

In the case of an explosive such as ordinary gunpowder there are(i.) the chemical laws involved in the ignition and combination of the elements of sulphur and carbon with the oxygen of the nitre ;

(ii) the process of mixing the ingredients under safe conditions; (iii) the gunpowder produced; and

(iv.) the force due to the sudden production of gases at a high temperature.

In the case of a dye there are―

(i.) the chemical laws involved in the reactions produced by certain substances under certain conditions ;

(ii.) the mode of applying these laws in making the dye;

(iii) the colouring-matter produced; and

(iv.) the ultimate result of this substance dispersing certain waves of light and not others, producing thereby a "colour."

In the case of an electric glow-lamp installation there are

(i.) the known laws of the heating effects of a current, and the conditions affecting the development of heat in different parts

of the circuit;

(ii.) the choice of materials and mode of joining and combining the same to produce success;

(iii) the lamp itself; and

(iv.) the production of light by incandescence of part of a circuit on turning on a current.

In the foregoing divisions and examples those numbered II. or III. may constitute "manufactures," but not I. or IV.

Patentable inventions may be therefore roughly divided into two great (but not necessarily exclusive) classes :-Processes or methods of production, and vendible articles.

The four stages of development exist in all cases, but are not of the same importance. For instance, in the majority of mechanical inventions, the "manufacture" is the machine produced (III.) whose parts perform certain functions, the mode of putting the machine together (II.) being a comparatively minor matter; but in inventions of chemical processes the reverse is the case, the resulting product (III.) being in many cases old, and the novelty being in the mode of producing the known substance. In many cases both II. and III. are of importance.

One of the commonest methods of increasing the wealth of the country is by cheapening the cost of production, hence it was very soon recognized that a process or method of producing old and known articles could be the subject of a patent although there was nothing permanent in the article produced to distinguish it from former results. If the manufacture were of a permanent nature it was termed an "engine " or " device," if of a fugitive nature a " method." 1

The one "invention" may therefore comprise two "manufactures," the vendible result and the mode by which it is produced; each may be separately claimed. The same rules and legal principles apply to both classes, but some are more frequently invoked in regard to one class, and others to the other.

1 Boulton v. Bull, 2 H. Bl. 494, 495; Hornblower v. Boulton, 8 T. R. 95; R. v. Wheeler, 2 B. & Ald. 349, 350; Gibson v. Brand, 1 Webs. 633.

Distinction between Principles and Inventions.

The laws of nature made use of in any invention are the underlying principles of that invention; the manufacture which constitutes the invention itself is the application or use of those principles.1 It is contrary to public policy that the discoverer of a previous unknown "law" of nature, substance, or natural phenomenon (such as X rays) should be able to restrain others from applying such to various purposes or utilizing it for the purpose of making fresh discoveries; but a monopoly may be granted for the means used to produce the phenomenon or extract the element. Hence it has always been held that a "principle" cannot be the subject of a patent, the reason being that a principle is not a manufacture.2

In the preceding elementary illustrations the underlying principles are marked (i.), and in no case are patentable, the "invention," i.e. the manufacture, consisting in the application of those principles as shown in (ii.) and (iii.).

The following illustrations of the distinction are taken from actual decisions:

Illustrations of Principles as distinguished from Manufactures.

The specification of Watts' invention of the separate condenser in a steam-engine was described by him as his "method of lessening the consumption of steam, and consequently fuel in fire-engines," consisting of "the following principles, &c." This was a misuse of words. The principles underlying the invention were the laws relating to the pressure and temperature of steam, and the dissipation of energy by radiation from the steam cylinder; the invention lay in the method of retarding the cooling of the cylinder and condensing the steam in a separate vessel, causing a fall in pressure of the steam in the cylinder. The result of the invention was the economy of fuel. Boulton v. Bull, 2 H. Bl. 463, 496.

In Hartley's patent for a method of rendering buildings fire-proof, the principles were the properties of iron and other substances to resist combustion, the result the negative property of the building being fire-proof. The manufacture was the method or arrangement of materials alone. 2 H. Bl. 493.

1 Per Lord Hatherley, L.C., in Cannington v. Nuttall, post, p. 248.

2 Discussed in Boulton v. Bull, 2 H. Bl. 463, 486, and Hornblower v. Boulton, 8 T. R. 95. Otto v. Linford, 46 L. T. (per Jessel, M.R., at p. 39), post, p. 288,

In the invention of the hot blast for smelting, the principles are the laws of chemical combustion as to production of heat; the manufacture consisted in the mode of placing and forming the air-chamber so as to be heated. Neilson v. Harford, post, p. 189.

In an invention of an "improved mode of manufacturing gas,” the principles consisted in the power of hydrated ferric oxide to absorb hydrogen sulphide, and in the oxidation of the ferric sulphide by the air, and the manufacture in the mode of applying those principles. Hills v. London Gas Light Co., post, pp. 208, 211. An improvement in a gas-engine consisted in admitting to the cylinder an explosive mixture of gas and air separate from a charge of air or incombustible gas previously introduced to act as a cushion. The principles were the known properties of gases, and the manufacture consisted in the method of so applying them to produce the desired result in an old engine requiring only slight alterations in the mechanical construction. Otto v. Linford, post, p. 288. A patent was granted for the manufacture of "improvements in pavement lights." The improvement consisted in sending the light after it had entered the prism from above directly or with refraction in a definite direction, by so shaping the prisms that the light was reflected internally from the face of the prism. The principle here was that of internal reflection of light. Hayward v. Hamilton, post, pp. 277, 280.

An improved means of disinfecting consisted in a chamber surrounded by a casing so constructed that the casing could be filled with superheated steam under a very high pressure, and then the internal chamber could be similarly filled, the contents being thereby rapidly heated. Here the principles are the properties and use of superheated steam, the manufacture the contrivance itself so constructed as to stand the required pressure. Goddard v. Lyon, post, pp. 358, 361, 362.

Illustrations such as those given might be indefinitely multiplied, for every manufacture is based on underlying principles which are not themselves patentable.

In mechanical inventions a new principle is extremely rare; such manufactures consist in new applications or arrangements of old contrivances. The principles are general statements concerning such forces as weight and friction, and such properties as elasticity, rigidity, and inertia ; these principles are brought to bear upon the

1 Those who are not previously acquainted with the subject will find it more expedient to postpone referring to the details given in the abstracts of cases until the First Part of this work has been read,