Popular Science Monthly/Volume 19/July 1881/Recent Advance in the Law of Intellectual Property
By BENJAMIN VAUGHAN ABBOTT.
THE indications seen during the past two years of advance in the law protecting intellectual property are interesting and important. This article will describe some of the more salient steps—the legislation and lately reported decisions—which are of interest to all friends of practical science. That such readers have a general knowledge of the system which has been established by Congress in order "to promote the progress of science and the useful arts"—the patent and copyright laws—may be taken for granted. Without rehearsing principles that have been long established, let us speak at once of matters lately questioned or newly declared.
During the last decade trade-marks became associated in the public mind with patents, owing to the fact that in 1870, when a codified statement of the patent and copyright laws was moved in Congress, that body interleaved a chapter embodying a national trade-mark law. This was done apparently on the theory that the three subjects were so homogeneous as to warrant considering trade-marks embraced within the constitutional power; and this position stood unchallenged for several years. But, when challenged, it was overthrown. The Supreme Court pointed out that the power is limited to securing to authors and inventors the right to their writings and discoveries; and said that a trade-mark can not be classified either with inventions or discoveries in the arts and sciences, or with the writings of authors; and that, if any law of Congress on the subject can be sustained, it must be one limited to marks intended for foreign (or Indian) commerce. An act has been passed (March 3, 1881) conforming to this view. It authorizes inhabitants of the United States or of any foreign country which reciprocates to register trade-marks, and protects their use in foreign (and Indian) commerce only. Trade-marks have thus been distinctly dissociated from inventions, as they should be.
Just as naturalists pronounce it difficult to draw a distinct line between plants and animals, so lawyers are finding confusion between what is a book, what a machine. A new system of book-keeping, consisting of a book of forms or blanks, the pages of which contained ruled lines and headings showing how a merchant's account-book might be prepared on a new and advantageous plan, was copyrighted; but the Court, when an imitator was sued, said that all that could be secured under the copyright law was the right to print the introductory essay, and the particular columns and headings by way of sample. To secure the control of the new system of book-keeping, the contriver of it should have taken out a patent; for want of this, any one not reprinting his book had the right to make and use account-books framed on his plan. By way of contrast is the story of a large blank book, each page of which was marked in spaces, these spaces being numbered to correspond with imaginary bonds and coupons, the idea being that as fast as coupons should be paid they might be kept each in the space appropriate to its number, or any notice received relative to a bond outstanding might be pasted in the space allotted to that bond, for ready reference. The contriver of this "book" patented it, and the Court said that he was right; it was not a literary work, but an invention.
All know that during ten years past improvements in the Office have been made, of which the system of printing patents for distribution and the issue of the "Gazette" are prominent examples. Improvements continue. The classification of subjects of invention has been revised, and is republished in the "Gazette" for January 4th last. As now framed it arranges patented inventions in twenty-four divisions, these being divided into one hundred and sixty-four classes, and these again into nearly three thousand sub-classes. Persons desiring to inform themselves with regard to the state of the art in any line of invention can gain much knowledge by procuring the specifications and drawings in the sub-class containing such invention, or can subscribe for future specifications and drawings in any desired class.
The number of patents which have been issued has now reached nearly a quarter of a million. To examine as many of them as is often necessary for determining the novelty of an application involves so much delay and expense that three successive commissioners have earnestly recommended the preparation of a digest. Congress, this spring, authorized this work, and appropriated ten thousand dollars for the expense.
There have been noteworthy decisions on the effect of an inventor's disclosure of his invention, or of his delay in applying for a patent, to impair his right. They indicate that the importance to inventors of "keeping their own counsel" is not sufficiently understood. An inventor may make use of his invention to test its operation, ascertain its defects, and mature improvements, quite freely; and, if these are his purposes, the facts that the use was openly known and was beneficial to the public are not fatal to his right. For example, the patent for the Nicholson pavement was contested on a showing that in 1854, before applying for a patent, the inventor laid a block of the pavement in a Boston street to test its merits. The Supreme Court said that as he had not used or allowed others to use it for profit, but only by way of experiment, there was no abandonment. But a slight disclosure by way of sale or manufacture for sale may destroy the right. For example, an inventor's making three sets of articles of ladies' wear for two ladies of his acquaintance, who wore them until they were worn out, was pronounced an abandonment of his invention, because it was not a use for experiment or in private, but a practical use of the completed article. Even a single sale to a buyer, who bought the thing only "on trial," has been pronounced an abandonment.
A case of some hardship was that of a card-manufacturer who ran machines of his invention for several years under arrangements in-' tended to secure secrecy: a limited number of workmen were employed; the factory-doors were kept locked, each workman having a key; and visitors were but rarely admitted. Yet no formal pledge of secrecy was exacted from those who saw the machine. In course of time the inventor obtained a patent, but in the mean time his foreman had "given away" the secret to competitors. The Judge said that an inventor's conducting his business so that the public have an opportunity of knowing and imitating his invention forfeits his right, without proof that any great number of persons knew it. If any one knew it under such circumstances that he might have made it public without a breach of confidence, the right is abandoned.
With respect to delay, while it is familiar that an inventor is not limited to any particular time within which he must apply, yet the Supreme Court has lately said, quite emphatically, that, unless he is vigilant and active in applying, or there is good excuse, such as sickness, poverty, etc., for his postponement, he runs the risk that his invention will be considered abandoned to the public. The story of the case was, that Woodbury, in 1848, applied for a patent for an improvement in planing-machines, but it was rejected. He took no further steps until 1870, and meantime the principle of his invention had been adopted by other persons. Then he obtained a patent; but it was annulled for his long neglect. Inventors should be wary of disclosure and delay.
A decision of the Supreme Court known as Mitchell vs. Tilghman (19 Wall., 287) has given some persons an idea that a process can not be the subject of a patent; though the intention was, only to decide that the patentee was confined in his right to the particular method pointed out in his specification. He litigated the case further, gathered additional evidence, and presented the question to the Court again; and the Court has in effect overruled its former decision, now explaining emphatically that a patent may be, under American law, granted for a process. Our patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art of manufacture; and a manufacturing process is clearly an art. The principle is that, whoever discovers that a certain useful result will be produced in any art by the use of certain means, is entitled to a patent, provided he fully and accurately specifies the means. This means need not be a machine or an apparatus; it may be a process. A machine is a thing. A process is a mode of action. The one is visible to the eye—an object of perpetual observation. The other is a conception of the mind seen only by the effect it produces while performed. But either may be the means of producing a useful result. The mixing of certain substances together or the heating of a substance to a certain temperature is a process. If the mode of doing it or the apparatus in or by which it may be done is sufficiently obvious to suggest itself to a person skilled in the particular art, then pointing out in the patent the process to be performed is sufficient, without giving directions, which would be supererogatory, as to the apparatus or method to be employed. If the mode of applying the process is not obvious, then to give a description of the process and of one particular mode by which it may be applied is sufficient. It may be that the process is susceptible of being applied in many modes and by the use of many forms of apparatus; but the inventor, if really the discoverer of the process, is not bound to describe all these in order to secure his exclusive right to it. What is required is, that he shall describe some particular mode or apparatus so as to show that the process is capable of being exhibited and performed in actual use. This is the latest utterance of the Supreme Court on the lawfulness of a patent for a process.
A decision comes from England bearing upon the value of such patents. The inventor of an improved process for making salicylic acid obtained a patent in England; but was soon undersold by an inventor of a rival process, who established a factory in Germany and brought the acid manufactured there into England for sale. The patentee brought suit. The counsel for the German manufacturer argued that the patent forbade only manufacturing in England, It did not forbid manufacturing in Germany, and any goods lawfully manufactured in Germany might be brought into England for sale. "Suppose," said he, "some one patents a process for making flour by crushing wheat instead of grinding it, and French millers, generally, adopt the mode. Is it thereafter unlawful to import flour from France?" But the Court of Appeal decided in favor of the patentee, saying that the exclusive right secured by a patent for a process must be considered to include a monopoly of the sale in England of products made according to the process, no matter where they are manufactured. For these patents expressly forbid any person directly or indirectly to use the process. Now, a person who procures the product to be made in a foreign country and then brings it to England for sale is certainly using the invention "indirectly."
Many illustrations are noticed in recent books of reports, of the expense and loss sustained by inventors through obtaining patents for trivial devices. They know, theoretically, that a patent, to be sustained in the courts, must be for an invention which is "new and useful"; but fail, practically, to apply the test. Evidently the existing system tends to betray an over-sanguine inventor. A solicitor of patents will cheerfully take a fee and undertake to obtain letters. The patent-office will accept further fees; will make an examination for novelty, which is good, as far as it goes, and in some measure a protection against launching an unprofitable venture; and will grant a patent. A lawyer will readily spend a few hundred dollars in organizing a company, and will execute his task skillfully: he has no responsibility for the mercantile value of the project. Two or three thousand dollars more are easily expended in facilities for manufacture, in starting a sales-room, and in advertising. And yet, after all this expenditure, involving also the inventor's time, the moment the patent is contested by an infringer, the courts may pronounce it void for want of novelty. Notice recent examples. The "Perfection Window-Cleaner" was in substance a rubber mounted on a long handle convenient for reaching up to clean lofty windows and the like; the peculiarity of the device consisting in the way in which a cushion for rubbing was adjusted so that it could be pressed against the surface to be cleaned. The Court said that there was nothing new in this; the implement was only a mop or scrubbing-brush made of India-rubber. "Improved Kindling-Wood" was patented, consisting of wood tied in small bundles, each containing a lump of combustible matter which would take fire from a common match. The Court said that there was no more invention in this than there would be in selling a sherry-cobbler glass with a straw in it, or a can of food with a fork. As at first devised, the "Fare-Box" used in city omnibuses and street-cars was inefficient for want of an opportunity to the driver to see whether the proper fare had been put in. Some one obtained a patent for the improvements of fitting a second window, and a reflector, in such manner that the driver might, either by day or night, see the coin which had been deposited. With these changes the fare-box became a success. But the Court said that there was no invention in inserting an additional window, or in putting a reflector near a lamp. To relieve drivers from the necessity of buying a new whip because the tip-end had become frayed or broken while the stock remained good, an inventor contrived "Whip-Tips" with sockets, so that a worn one might be unscrewed and a new one screwed on in its place. The Court said that he might sustain an exclusive right to his screw, but that the important feature of the device—making independent tips to be substituted for worn ones—was not new; this is the principle upon which fishing-rods in sections have been made for many years. The "Rubber-tip Pencil" has had an extensive sale; but, when the patent for it was contested, the Court said that there was no invention; the device was nothing but "a piece of rubber with a hole in it." Not many years ago a patent was questioned for an article called "Comminuted Glue." The device consisted in breaking glue into small particles, of uniform size, to facilitate dissolving it for use. The Court said that nothing was here involved other than grinding glue fine, and grinding can not be called a new invention. A score of such decisions might easily be gathered from the court reports of the past two years, showing very clearly that inventors need to be on their guard against soliciting patents for trivialities.
That an applicant for a patent must frankly and fully disclose his invention, but that if his description is, through accident or mistake, insufficient, he may have a "reissue" correcting the mistake, is familiar, yet not so well understood but that new explanations have been found needful. The volume published last summer of Justice Clifford's decisions contains a case in which he assigns three reasons for requiring fullness and accuracy in the description: 1, That the Government may know what they have granted, and what will become public property when the term of the monopoly expires; 2. That licensed persons, desiring, during the term, to practice the invention, may know how to make, construct, and use it; 3. That other and subsequent inventors may know what part of the field of invention remains unoccupied.
The privilege of reissue has no doubt been abused. A glaring case was presented in the Supreme Court. An inventor applied for a patent, but the Commissioner thought that he claimed too much, and refused letters unless the applicant would omit a part. He did so, and a patent was issued for the invention, the description being limited according to the Commissioner's view. Several years afterward, he applied for a reissue, to include the feature of his invention formerly rejected, and, through some error, it was granted. The Supreme Court Judges say that this, though it has often been done, is a fraud on the public. Reissues can only be allowed to cure errors attributable to inadvertence, accident, or mistake. What was omitted from the first patent, because the inventor consented to abandon it, can never be lawfully brought in afterward by a reissue.
Several lawsuits have culminated in a group of decisions which, if they shall be sustained by the Supreme Court, will open the way to an efficient judicial remedy, whenever Government officers assume to use a patented invention. The English idea has long been that a patent is a monopoly or privilege which the Crown—though forbidden to grant monopolies as freely as might be done centuries ago—may give to a favored person. Hence it is there considered that the privilege does not prevail against Government. The Crown does not engage not to use the improvement. Upon the American view, a patent is a compact made with the inventor to induce him to disclose his invention for the public benefit; as a reward for which he receives an exclusive privilege which is in the nature of property. As respects many important inventions, the privilege would have little value if not good against Government, for the reason that the thing is only useful in Government business. What would be the worth of a patent for articles useful only in the army and navy, for a revenue or postage stamp, or the like, if Government might use the invention free? Officers have, however, influenced by what is said in English books, often supposed that no royalty need be paid when Government authorizes the use. Thus, a while ago, an army officer who contrived an improved cartridge-box submitted it to the War Department, and the department adopted it, but refused to pay the inventor. He sued in the Court of Claims, which said that the case was to be treated as if Government had agreed to pay a reasonable price. More recently, when Mr. James, the Postmaster of New York City, used a patented invention for canceling postage-stamps, with the result of saving to the Government, through a term of years, some sixty thousand dollars, the Circuit Court said that he must pay damages in the same light as if he had been an infringer on his own account, and must obtain reimbursement from Congress as he might be able. Attorney-General Devens gave an official opinion to the like effect. Upon the theory of these decisions, if a patented invention is used in Government business with the inventor's consent, the Court of Claims may award him compensation upon an implied contract to pay; or, if it is used against his will, he may prosecute the officer as an individual, and the interest of Government in the matter will be no defense.