TRUE INVENTOR.1

A discovery may be both useful and quite new to the world at large; yet if it can be shown that the person, upon whose statement that he was the true inventor the patent was granted, does not really answer to that designation, the patent is not saved from the clause in the statute of James, which declares that all monopolies are invalid.

'A man may publish to the world,' said L. C. J. Tindal, in Gibson v. Brand (1 W. P. C. 628), 'that which is perfectly new in all its uses, and has not before been enjoyed, and yet he may not be true and first inventor; he may have borrowed it from some other person . . . and then the Legislature never intended that a person who had taken all his knowledge from another, from the labours and assiduity or ingenuity of another, should be the man who was to receive the benefit of another's skill.'

Rival Inventors.-One of the earliest cases on this subject is that of Dollond, the optician, who brought an action for an infringement of his patent for a new method of making the object-glasses of refracting telescopes. It was alleged, on the part of the defendant, that Dollond was not the true and first inventor of the method, inasmuch as Dr. Hall had made the discovery before him. But since Dr. Hall had confined it to his closet, and had not communicated it to the public, it was held (1766) that Dollond was to be considered the first and true inventor as required by the statute. The case was not reported, and our knowledge of it is derived from the mention made of it in the case of Boulton v. Bull (2 H. Bl. 469). Dollond's case was followed by numerous others, the result of which may be thus stated:-If two persons make the same invention about

It must be kept in mind that the word 'patentee' in this section signifies, in the case of a patent granted to several persons jointly under the Act of 1883, only the person who claimed to be the inventor of the subjectmatter of the patent, and does not include other non-inventors who may have joined him in obtaining the grant.

Moreover, it will be shown hereafter that the importer of an invention from abroad is held by the courts of law to fall within the meaning of the words true and first inventor.'

the same time independently of each other, he who first obtains a patent has an exclusive right to the invention (Forsyth v. Riviere, Chit. Prerog. Cr. 182); and he will be held the first inventor, although, in point of fact, the date of his invention was subsequent to that of the other person, provided that there was not such a use of the invention previously to the patent as amounted to what is technically called public use.'

In Lewis v. Marling (1 W. P. C. 496), Bayley, J., said, 'If I make a discovery, and am enabled to produce an effect from my own experiments, judgment, and skill, it is no objection that some one else has made a similar discovery in his mind, unless it has become public.' And Parke, J., said,There is no case in which a patentee has been deprived of the benefit of his invention because another had also invented it, unless he had also brought it into use.' Again, in the case of Hill v. Thompson (1 W. P. C. 244), Dallas, J., said, 'It is not enough to have discovered what was unknown to others before, if the discovery be confined to the knowledge of the party having made it; but it must have been communicated more or less, or it must have been more or less made use of, so as to constitute discovery as applied to subjects of this sort.'

Joint Inventors.-It may happen that a given invention results from the combined operation of two or more minds, in which case it is necessary that all the inventors should apply for the patent. Patents have sometimes been disputed on the ground that the patentee owed a material part of the invention to another person; and if this can be made out on satisfactory evidence, it is fatal.

Assistants and Workmen.-It must, however, be taken to be undoubted law, that the suggestions and aid of workmen employed by the inventor to carry out his ideas will have no such effect. An inventor is entitled to something more than the mere manual labour of the persons he employs. If the substantial part and leading idea, the principle of an invention, belong to one person, he may properly call in the assistance of another to work it out and improve it;

and after obtaining the benefit of that assistance, he may legally procure a patent for the invention. The observations of Alderson, J., to the jury on trying Minter v. Wells (1 W. P. C. 132) will throw light upon this point. 'Minter [the patentee] and Sutton [a workman employed by Minter] were together about the time the invention took place: which of the two suggested the invention, and which carried it into effect, is a question for you to decide. If Sutton suggested the principle to Minter, then he would be the inventor. If, on the other hand, Minter suggested the principle to Sutton, and Sutton was assisting him, then Minter would be the first and true inventor, and Sutton would be a machine, so to speak, which Minter uses for the purpose of enabling him to carry his original conception into effect. You will judge which is the more probable of the two. Minter makes out his primâ-facie case; he is the person who takes out the patent. If Sutton has received a compensation, nothing would have been more simple and easy than that he should have taken out the patent, and still Minter might have had the same benefit to-day; and there is no apparent reason why Sutton should not have taken out the patent which Minter has taken out, unless they were both desirous to ruin the invention; for suppose two persons are engaged on an invention of this description, they know perfectly well between themselves who is the real inventor of it, and who is the workman to carry into effect the conception; but they would destroy the value of it to both if they did not take it out in the name of the right person.' See also Bloxam v. Elsee (6 B. & C. 169), Minter v. Mower (1 W. P. C. 138), and Barber v. Harris (Holroyd, 60), which show that a man may direct other persons to do certain things and yet be the true inventor.

In Allen v. Rawson (1 C. B. 551), a case where the validity of a patent was contested on the ground that parts of the invention owed their origin to two workmen, it was held that more convenient modes of carrying out the main principle of an invention and subordinate improvements

suggested by persons in the employment of the patentee may be safely adopted by him and embodied in his specification. I take the law to be' (said Mr. Justice Erle, before whom the action for an infringement was tried) 'that if a person has discovered an improved principle and employs engineers, agents or other persons to assist him in carrying out that principle, and they in the course of experiments arising from that employment make valuable discoveries accessory to the main principle, and tending to carry that out in a better manner, such improvements are the property of the inventor of the original improved principle, and may be embodied in his patent; and if so embodied the patent is not avoided by evidence that the agent or servant made the suggestions of the subordinate improvement of the primary and improved principle.' When a new trial was moved for, on the ground that the judge had misdirected the jury, it was refused. On that occasion C. J. Tindal said, 'It would be difficult to define how far the suggestions of a workman employed in the construction of a machine are to be considered as distinct inventions by him, so as to avoid a patent incorporating them taken out by his employer. Each case must depend upon its own merits. But when we see that the principle and object of an invention are complete without it, I think it is too much. that a suggestion of a workman employed in the course of the experiments, of something calculated more easily to carry into effect the conceptions of the inventor, should render the patent void.'

A firm of manufacturing chemists employed E., a scientific chemist, in their laboratory as analyst and experimentalist. The manufacture of alum free from impurities being a desirable object, it occurred to E. to try experiments with peroxide of manganese for that purpose, and he was thereupon instructed by the firm to make the suggested experiments. This he did with the assistance of one member of the firm, and whilst having communications with the other. The experiments succeeded, and a patent was obtained for the discovery by the firm in their own names. The judge,

at the trial of an action where the validity of the patent came in question, held that they were justified in applying for the patent. Although many stages of the discovery may have been due to E., yet he was the agent of his employers. His labours were theirs, he worked in their laboratory and with their materials as well as with their assistance, and the benefit of the discovery belonged to them. (Kurtz v. Spence, 5 R. P. C. 180.)

But where the patentee has no closer connection with the invention than that of being simply the employer of the inventor, he will not be able to sustain his patent. Thus, in Arkwright's case, it appeared that Arkwright, the patentee, had been told of a particular roller, part of the machinery by Kay, and that, perceiving the value of the invention, he took Kay into his service for two years, during which time he employed him to make models, and subsequently claimed the invention as his own, making it the foundation of a patent. Arkwright adopted in the same way a crank invented by Hargrave. In the face of this evidence, Arkwright's claim to be the true and first inventor fell to the ground. (Rex v. Arkwright, 1 W. P. C. 64.) Again, in the case of Barker v. Shaw (1 W. P. C. 126 n.), an action for the infringement of a patent for an improvement in making hats, a witness proved that he had made the improvement whilst employed in the patentee's workshop, whereupon the plaintiff was nonsuited.

In these cases it was clear that the patentee was not the true and first inventor, since the source of the invention could be traced elsewhere. Whenever this can be done (with the exceptions stated in the note on page 29) the patent is invalid. It is so, as we have seen, although the real inventor should be in the service of the patentee; and, à fortiori, will it be so where there is still less connection between them. In Tennant's case it was proved that, before the grant of the patent, conversations had taken place between Tennant (the patentee) and a chemist, who had suggested to Tennant the basis of the patented improvement. This piece of evidence, in addition to slight

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