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This can be the subject of a patent, but the question is"Whether the new application lies so much out of the track of the former use as not naturally to suggest itself to a person turning his mind to the subject, but to require some application of thought or study" (per Lord Chelmsford, in Penn v. Bibby, L.R. 2 Ch. 136 (1866), where he quotes the criterion given by Lord Campbell on the subject in Brook v. Aston, 8 E. & B. 485 (1857): "That a patent may be valid for the application of an old invention to a new purpose; but to make it valid there must be some novelty in the application." Also the rule laid down by Cockburn, C.J., in Harwood v. Great Northern Railway Co., 2 B. & S. 208 (1860), in these cases: "Now although the authorities establish 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 the 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 sufficiently meritorious to be deserving of a patent."
Seed v. Higgins, 8 H.L.Ca. 550 (1860).
The application of centrifugal force by means of a weight acting on a presser, so as to cause it to press against a bobbin in a machine for roving cotton. Held good.
Penn v. Bibby, L.R. 2 Ch. 136 (1866) above.
An improvement in bearings and bushes for the shafts of screw and submerged propellers. The only old application was the use in water-wheels and grindstones, but the bearings were of totally different character; so the application was held essentially different, and the patent upheld.
Where a well-known thing is applied to an analogous purpose it is not the subject of a patent.
Lord Abinger, C.B., in Loshv. Hague, 1 Web. P.R. 208 (1838), on this point said: "The law on the subject is this, that you cannot have a patent for applying a well-known thing which might be applied to 50,000 different purposes, for applying it to an operation which is extremely analogous to what has been done before."
In that case the application of certain constructed wheels made before railroads were known, to railroads afterwards, was held no subject of a patent.
Bush v. Fox, 5 H.L.Ca. 707 (1856).
A patent for a means and apparatus for working under water in order to produce excavations and building foundations for lighthouses and piers. There had been a previous patent for "an apparatus to facilitate excavating, sinking and mining." Held these being substantially the same, the patent was not good.
Patent Bottle Envelope Co. v. Seymer, 28 L.J.C.P. 22 (1858).
A patent for manufacture of cases or envelopes for covering bottles. It was held there could be no patent for a mere application of a model of a bottle to make the envelope of the required form.
Brook v. Aston, 28 L.J.Q.B. 175 (1859).
There had been a patent for a process of strengthening and polishing linen and cotton yarns by means of friction brushes. The defendant sought to establish a patent for applying the same process to woollen yarns. It was held the application was too similar and not the subject of a patent.
Thompson v. James, 32 Beav. 570 (1863).
Hoops of whalebone and other substances, suspended from the waist, and forming a petticoat, had been long known and used by ladies. The plaintiff took out a patent for using for the same purpose hoops of steel watch springs, which was held not to be the subject of a patent.
Harwood v. Great Northern Railway Co., 35 L.J.Q.B. 27 (1865).
Where grooved fish-plates having been used before for fastening the scarf-joints of timbers, a patent was taken out for their application to fastening the buttjoints of iron rails, it was held the patent was bad, because it claimed an application to an analogous purpose.
Jordan v. Moore, L.R. I C.P. 624 (1866).
A patent for the construction of ships with an iron frame, combined with an external covering of timber planking for the sides, was held void, as the combination of iron and timber in ships was already known. White v. Toms, 37 L.J.Ch. 204 (1867).
Ladies' mourning bonnet and hat falls having been previously made with ornamental folds on the outside only, so that when turned up a wrong side was exposed, the plaintiff patented an improved mode of
making both sides alike. Held not the subject of a patent.
Rushton v. Crawley, L.R. 10 Eq. 522 (1870).
The prior use of wool for making up ladies' headdresses and upholstery was known before. The plaintiff took out a patent for the use of animal fibre and Russian wool for the manufacture of artificial hair for ladies' head-dresses and frizettes. Held not a subject for a patent.
Novelty is an essential to every manner of invention, otherwise the patent will fail, the Statute of 21 Jac. I. c. 3, s. 6, enacting that it must be "a new manufacture within the realm."
1. A prior public user; or 2, a prior publication in a specification, book, or journal, of an invention before patent granted, will invalidate a patent for such invention.
In Plimpton v. Malcolmson, L.R. 3 Ch.D. 557 (1876), Jessel, M.R., gives the reasons for this, saying: "The invention must not have been made known in such a way as to become part of the common knowledge, or of the public stock of information. When you say a thing is known Common know- to the public and part of the common knowledge what is meant is, that if it is a manufacture connected with a particular trade, the people in the trade shall know something about it; if it is a thing connected with a chemical invention, people conversant with chemistry shall know something of it. You need not show that the bulk, or even a large number of those people knew it. If a sufficient number knew it, or if the communication is such that a sufficient number may be presumed or assumed to know it, that will do. . . . . You may show the thing was known because it was used and brought into practice. But you may show they knew it in another way-that it was published or made known to the public-I use the word published in that sense. How made known to the public? It has been held that, if it is a specification-certainly a modern specification-which had been enrolled in the Patent Office, and not published besides, that will do. And it has also been held that, as a common rule, if the description has been printed in England, and published in England, in a book which circulates in England, that will do."
And in Stead v. Williams, 2 Web. P.R. 142 (1843), it is laid down: "The question is whether there has been such
a publication as to make the description a part of the public stock of information."
1. Prior user, even by the inventor himself openly and 1. Prior public publicly, before applying for letters patent, will be sufficient publication to invalidate a subsequent patent for such article. Wood v. Zimmer, Holt N.P. 58 (1815).
A public sale by the inventor of the article before By inventor he applied for letters patent held to void the patent applied for. Adamson's Patent, 6 De G. Mac. & G. 420 (1856).
A patent for a travelling crane to be used for harbour works was sought. It was proved that petitioner had used the invention for four months openly before applying for a patent; on that ground the patent was refused.
But the use of an invention for the purposes of experiment Experiments by alone by the inventor before applying for letters patent is not such a prior user and publication as to invalidate a subsequent patent.
Bentley v. Fleming, 1 Car. & K. 587 (1845).
A machine for improvements in carding cotton, &c., was lent by the inventor to a third person for experiments before applying for a patent. This was held not a publishing so as to avoid a patent for it.
For a necessary and unavoidable disclosure to others, if it only be made in the course of mere experiment, is no publication, although the same disclosure, if made in the course of a profitable use of an invention previously ascertained to be useful, would be a publication.
Newall v. Elliot, 4 C.B. N.S. 269 (1858).
A patent for stowing and paying out submarine cables. The patentee, previous to applying for a patent, had used the invention by way of experiment in the Black Sea during the course of a contract to lay down a telegraphic cable. This was held not to amount to a publication so as to avoid the patent.
Nor will experiments made previously by other persons for Experiments by the purpose of producing a result which is not thereby brought to a attained be sufficient to void a subsequent patent obtained practicable by an inventor who has brought such experiments to a practicable result.
For " a mere experiment or course of experiments for the purpose of producing a result which is not brought to completion, but begins and ends in uncertain experiments, is not
such an invention as to prevent another person more successful from availing himself of it (per Tindal, C.J., in Galloway v. Bleaden, 1 Web. P.R. 521, where a patent for
"improvements in the floats of paddle-wheels" was upheld, although an engineer had previously made similar experiments on a small steamer on the Thames, the experiments being held only as such, and not a previous practicable invention.
Jones v. Pearce, 1 Web. P.R. 122 (1832).
A patent for improvements in wheels for carriages. Previously a Mr. Strutt had made a similar wheel on the same principle, and applied it to a cart for carrying stones on a public road, but not answering, laid it aside. Held Mr. Strutt's being an experiment which failed and was dropped, the subsequent patent was good. Tangye v. Scott, W.N. 1866, p. 68.
A patent for "improvements in pulley blocks," which had been assigned to the plaintiff. There had been a previous description in a book, of a similar pulley which had been made by Moore, who, after trying it once or twice, had laid it aside. Defendant had also made one, but from the book. Held although the principle had been known and experimented on, yet the plaintiff was the first to make it practicable, and so patent upheld.
Experiments previously made and brought to a practicable result, if kept secret by the inventor, and not known to the public, will not invalidate a subsequent patent to another person who himself finds out the same result and patents it. Dollond's Patent, 1 Web. P.R. 43 (1776).
A patent for a new method for "object glasses in a telescope." The method had been previously found out by a Dr. Hall, who had kept it secret. Held the subsequent patent was valid, the method not having been made known to the public.
For, "if a man had invented a thing which somebody else had invented before, but had kept secret, or without it being actually kept secret had not been made known in such a way as to become part of the common knowledge or of the public stock of information, such thing would have sufficient novelty to support a patent" (per Jessel, M.R., in Plimpton v. Malcolmson, L.R. 3 Ch.D. 556). And it is laid down in Cornish v. Keene, I Web. P.R. 501 (1835), by Tindal, C.J., that “a man may make experiments in his own closet, for purposes of improving art or manufacture in public use, if he never