Page images

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 peti- . tioner 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 Pesalicable 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 by Experiments previously made and brought to a practicable others brought to a practicable result, if kept secret by the inventor, and not known to the result but kept 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, 1 Web. P.R. 501 (1835), by Tindal, C.J., that" man may make experiments in his own closet, for purposes of improving art or manufacture in public use, if he never


others not for

communicates them, and lays them by; and another man makes the same, or has gone a little further, he can take out a patent, as the previous experiments were not generally known to the public.” This was a case of a patent for improvements in making elastic goods and fabrics. Upheld, there not being a previous public user.

And the question whether the previous publication was merely an experiment or not is for the jury, when the case is tried before onel (Ibid.).

A prior public user in the Colonies does not invalidate a subsequent patent granted here, the Colonies not being considered within the realm.

Rolls v. Isaacs, L.R. 19 Ch.D. 268 (1881); see p. 31. While from the above it will be seen that a previous public user of the subject matter of a subsequent patent merely for experiment, by either the inventor himself or others, or the previous secret user of the subject matter of a subsequent patent by others, will not invalidate such subsequent Prior user by patent, yet if there has been a prior public user by others experiment. not for the purposes of experiment, that will invalidate a subsequent patent for such thing previously so used and made known; and this is also the case when the thing has been merely offered for sale, or exhibited to the public, provided the thing so made known is able to be used in a practicable way. But the publication of inventions in certain exhibitions is privileged for six months by the Patents Act, 1883 (see post, p. 25). Horniball v. Bloomer, 2 Web. P.R. 199 (1854). A patent for "an improvement in anchors,” upset User, by sale or

on proof of a previous sale by another person
of business of a similar anchor, such sale being held a
sufficient prior user and publication; but if the anchor
had been sold for purposes of experiment merely, it

would not have invalidated a subsequent patent. Heath v. Smith, 3 E. & B. 256 (1854).

The invention claimed was proved to have been used by five firms previous to the patent being taken out. Three of the firms had used it openly, but two secretly. Held a sufficient prior user to invali

date the patent. Carpenter v. Smith, 1 Web. P.R. 530 (1841).

An "improvements in locks” patent. Previously

[ocr errors]
[ocr errors]


otherwise. course


Section 28 enacts—“That in all actions or proceedings for infringement or revocation of a patent the action shall be tried without a jury, unless the Court shall otherwise direct.

[ocr errors]

to the date of the patent a similar lock had been brought over from America, and seven and a half dozen made in Birmingham for export; also, a similar lock had been in use on a gate adjoining a high road for sixteen years.

This was held sufficient prior user to invalidate the patent. Hinks v. Safety Lighting Co. L.R. 4 Ch.D. 607 (1876).

A patent for the employment of two or more flat or curved wick holders to produce flat flames in a lamp. The wicks were shown as passing through a double slotted cone. The use of a single slotted cone was known before. It was held the claim was not limited to burners with a double slotted cone, and so the

patent failed for want of novelty. Bailey v. Roberton, L.R. 3 App. Cas. 1079 (1878).

A patent for "preserving animal substances,” by dipping fresh meat in a solution of bisulphate of lime. There had been a prior patent for "preserving organic substances,” by dipping meat partly preserved or salted in a solution of bisulphate of lime. Held a

prior user, and vitiated subsequent patent. Saxby v. Gloucester Waggon Co., 7 Q.B.D. 305 (1881).

A patent for the combination of two previous inventions, but no skill was shown in the combination, and the result being the same as under the former patents, it was held there had been a prior user,

and patent void. The prior public use of an invention need not have been continuous to invalidate a subsequent patent.

Househill Co. v. Neilson, Web. P.R. 718 n. (1843). Prior user of the subject matter of a subsequent patent by offering it publicly for sale, or exhibiting it, although no sale takes place, is a sufficient publication to invalidate such patent, provided the thing is able to be used in a practical way. Mullens v. Hart, 3 Car. & K. 297 (1852).

Some penholders were manufactured under a patent and deposited in a warehouse for sale, but none were sold. Held a sufficient publication to invalidate

subsequent patent. Oxley v. Holden, 8 C.B.N.S. 666 (1860).

A patent for improvements in doors and sashes of carriages. The infringement complained of was making similar articles and exposing them for sale, although no sale had taken place. Held a sufficient public user of the patent.




Murray v. Clayton, L.R. 7 Ch. 570.

A prior public exhibition of a brick-making machine, but which had defects making it practically useless, and none sold, held not to affect the validity of a subsequent patent for a similar machine which was practicable :

The procedure with regard to exhibiting a new invention s. 39.
at an exhibition, and taking out a patent for it, is regulated
by section 39 of the Patents Act of 1883, which enacts:
“ The exhibition of an invention at an industrial

or international exhibition, certified as
such by the Board of Trade, or the pub-
lication of any description of the inven-
tion during the period of the holding of
the exhibition, or the use of the inven-
tion for the purpose of the exhibition in
the place where the exhibition is held, or
the use of the invention during the period
of the holding of the exhibition by any
person elsewhere, without the privity or
consent of the inventor, shall not pre-
judice the right of the inventor or his
legal representative to apply for and
obtain provisional protection and a patent
in respect of the invention, or the validity
of any patent granted on the application,
provided that both the following condi-

tions are complied with, namely-
(a.). The exhibitor must, before exhibiting

the invention, give the Comptroller the
prescribed notice of his intention to do

so; and

(6.) The application for a patent must be

made before or within six months from the

date of the opening of the exhibition. 2. Prior publication, either (a) in a previous specification or 2. Prior publica(6) in a book, provided the book has become, or might be assumed to be, sufficiently known to the trade or people interested in the subject matter, will invalidate a subsequent patent.


« PreviousContinue »