United States Statutes at Large/Volume 1/2nd Congress/2nd Session/Chapter 11
Act of 1790, ch. 7.
Letters patent how and by whom made out.Section 1. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter, not known or used before the application, and shall present a petition to the Act of April 10, 1799, ch. 33, repealed.Secretary of State, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the said Secretary of State, to cause letters patent to be made out in the name of the United States, bearing teste by the President of the United States,To bear teste by the President, and reciting the allegations and suggestions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting to such petitioner, or petitioners, his, her, or their heirs, administrators or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery, which letters patent shall be delivered to the be examined by the Attorney General.Attorney General of the United States, to be examined; who, within fifteen days after such delivery, if he finds the same conformable to this act, shall certify accordingly, at the foot thereof, and return the same to the Secretary of State, who shall present the letters patent thus certified, to be signed, and shall cause the seal of the United States to be thereto affixed: and the same shall be good and available to the grantee or grantees, by force of this act, and shall be recorded in a book, to be kept for that purpose, in the office of the Secretary of State,1800, ch. 25. and delivered to the patentee or his order.
The liberty of using an improvement defined.Sec. 2. Provided always, and be it further enacted, That any person, who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall have obtained a patent for such improvement, he shall not be at liberty to make, use or vend the original discovery, nor shall the first inventor be at liberty to use the improvement:Changing the form or proportions of any machine &c. not to be a discovery. And it is hereby enacted and declared, that simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery.
How to proceed to obtain letters patent.Sec. 3. And be it further enacted, That every inventor, before he can receive a patent, shall swear or affirm, that he does verily believe, that he is the true inventor or discoverer of the art, machine, or improvement, for which he solicits a patent, which oath or affirmation1800, ch. 25, sec. 2.
Specification. may be made before any person authorized to administer oaths, and shall deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear and exact terms, as to distinguish the same from all other things before known, and to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same. And in the case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings, or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is of a composition of matter; which description, signed by himself and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence, in all courts, where any matter or thing, touching such patent-right, shall come in question. And such inventor shall, moreover, deliver a model of his machine, provided, the secretary shall deem such model to be necessary.
Inventors may assign their titles.
Record of assignment to be made in the office of the Secretary of State.Sec. 4. And be it further enacted, That it shall be lawful for any inventor, his executor or administrator to assign the title and interest in the said invention, at any time, and the assignee having recorded the said assignment, in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility, and so the assignees of assigns, to any degree.
Forfeiture on using patented inventions without leave.Sec. 5. And be it further enacted, That if any person shall make, devise and use, or sell the thing so invented, the exclusive right of which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators or assigns, first obtained in writing, every person so offending, shall forfeit and pay to the patentee, a sum,Three times the price to be the penalty.
How recovered. that shall be at least equal to three times the price, for which the patentee has usually sold or licensed to other persons, the use of the said invention; which may be recovered in an action on the case founded on this act, in the circuit court of the United States, or any other court having competent jurisdiction.
How defendants may give this act in evidence.Sec. 6. Provided always, and be it further enacted, That the defendant in such action shall be permitted to plead the general issue, and give this act and any special matter, of which notice in writing may have been given to the plaintiff or his attorney, thirty days before trial, in evidence, tending to prove, that the specification, filed by the plaintiff, does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the described effect, which concealment or addition shall fully appear to have been made, for the purpose of deceiving the public, or that the thing, thus secured by patent, was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery of the patentee, or that he had surreptitiously obtained a patent for the discovery of another person: And judgment shall be given.in either of which cases, judgment shall be rendered for the defendant, with costs, and the patent shall be declared void.
State rights to inventions when to be deemed void.Sec. 7. And be it further enacted, That where any state, before its adoption of the present form of government, shall have granted an exclusive right to any invention, the party, claiming that right, shall not be capable of obtaining an exclusive right under this act, but on relinquishing his right under such particular state, and of such relinquishment his obtaining an exclusive right under this act shall be sufficient evidence.
How applications depending under former law shall be prosecuted under this act.
1790, ch. 7.Sec. 8. And be it further enacted, That the persons, whose applications for patents, were, at the time of passing this act, depending before the Secretary of State, Secretary at War, and Attorney General, according to the act, passed the second session of the first Congress, intituled “An act to promote the progress of useful arts,” on complying with the conditions of this act, and paying the fees herein required, may pursue their respective claims to a patent under the same.
Proceedings to be had on interfering applications.Sec. 9. And be it further enacted, That in case of interfering applications, the same shall be submitted to the arbitration of three persons, one of whom shall be chosen by each of the applicants, and the third person shall be appointed by the Secretary of State; and the decision or award of such arbitrators, delivered to the Secretary of State, in writing and subscribed by them, or any two of them, shall be final, as far as respects the granting of the patent: And if either of the applicants shall refuse or fail to chuse an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties applying shall not all unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three arbitrators for the purpose.
And against persons surreptitiously obtaining patents.Sec. 10. And be it further enacted, That upon oath or affirmation being made, before the judge of the district court, where the patentee, his executors, administrators or assigns reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said court, within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the judge of the said district court, if the matter alleged shall appear to him to be sufficient, to grant a rule, that the patentee, or his executor, administrator or assign show cause, why process should not issue against him to repeal such patent. And if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued against such patentee, or his executors, administrators or assigns, with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear, that the patentee was not the true inventor or discoverer,Repeal of a patent illegally obtained. judgment shall be rendered by such court for the repeal of such patent; and if the party, at whose complaint, the process issued, shall have judgment given against him, he shall pay all such costs, as the defendant shall be put to, in defending the suit, to be taxed by the court, and recovered in due course of law.
Inventor before presenting petition to pay $30 into the treasury.Sec. 11. And be it further enacted, That every inventor, before he presents his petition to the Secretary of State, signifying his desire of obtaining a patent, shall pay into the treasury thirty dollars, for which he shall take duplicate receipts; one of which receipts he shall deliver to the Secretary of State, when he presents his petition; and the money, thus paid, shall be in full for the sundry services, to be performed in the office of the Secretary of State, consequent on such petition, and shall pass to the account of clerk-hire in that office. Provided nevertheless,Copying fees. That for every copy, which may be required at the said office, of any paper respecting any patent, that has been granted, the person, obtaining such copy, shall pay, at the rate of twenty cents, for every copy-sheet of one hundred words, and for every copy of a drawing, the party obtaining the same, shall pay two dollars; of which payments, an account shall be rendered, annually, to the treasury of the United States, and they shall also pass to the account of clerk hire in the office of the Secretary of State.
Act of April 10, 1790, ch. 7, repealed. Sec. 12. And be it further enacted, That the act, passed the tenth day of April, in the year one thousand seven hundred and ninety, intituled “An act to promote the progress of useful arts,” be, and the same is hereby repealed. Provided always,Proviso. That nothing, contained in this act, shall be construed to invalidate any patent, that may have been granted under the authority of the said act; and all patentees under the said act, their executors, administrators and assigns, shall be considered within the purview of this act, in respect to the violation of their rights; provided, such violations shall be committed, after the passing of this act.
Approved, February 21, 1793.
- Laws passed relating to patents for useful inventions: An act to extend the privilege of obtaining patents for useful discoveries and inventions to certain persons therein mentioned, and to enlarge and define the penalties for violating the rights of patentees, April 17, 1800, chap. 25; an act to extend the jurisdiction of the Circuit Courts of the United States, in cases arising under the law relating to patents, February 15, 1819, chap. 19; an act supplementary to the act entitled “An act to promote the progress of useful arts,” June 7, 1794, chap. 58; an act concerning patents for useful inventions, July 3, 1832, chap. 162; an act concerning the issuing of patents to aliens for useful discoveries and inventions, passed July 13, 1832, chap. 203; an act to promote the progress of the useful arts, and to repeal all acts and parts of acts heretofore made on that subject, July 4, 1836, chap. ; an act in addition to the act to promote the progress of science and useful arts, March 3, 1837, chap. ; an act in addition to the act to promote the progress of the useful arts, and to repeal all acts and parts of acts, heretofore made for the purpose, August 29, 1842, chap. 263.
Decisions of the courts of the United States on the acts of Congress relating to patents for useful inventions.—Patents for useful inventions.
The forms and subjects of Patents.—Invention or Discovery,—the Specification or Description.—Under the 6th section of the patent law of February 21, 1793, if the thing secured by patent has been in use, or has been described in a public work, anterior to the supposed discovery, the patent is void, whether the patentee had a knowledge of this previous use or not. Evans v. Eaton, 3 Wheat. 454; 4 Cond. Rep, 291.
A party cannot entitle himself to a patent for more than his own invention; and if a patent be for the whole machine, he can maintain a title to it only by establishing that it is substantially new, with its structure and mode of operation. Ibid.
If the combinations existed before in machines of the same nature, up to a certain point, and the party’s invention consists in adding some new machinery, or some improved mode of operation to the old, the patent should be limited to such improvement; for if it includes the whole machine, it includes more than his invention, and therefore cannot be supported. Ibid.
The patent act of the United States differs from the English in several particulars. A mere public use by others before taking a patent, or a sale thereof by the inventor, is not decisive against him here, as it is in England. Pennock et al. v. Dialogue, 2 Peters, 16.
It has not, and it cannot he denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. The inchoate right thus given, cannot afterwards be resumed at his pleasure, for when gifts are once made to the public in this way, they become absolute. The true meaning of the words in the patent law, “not known or used before the application,” is, not known or used by the public, before the application. Ibid.
Where a defect in the specification on which a patent has issued, arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee, the Secretary of State has authority to accept a surrender of the patent, and cancel the record thereof; whereupon he may issue a new patent on an amended specification for the unexpired fourteen years granted by the first patent. Grant v. Raymond, 6 Peters, 218.
The letters patent were obtained in 1822, and in 1829, the patentee having surrendered the same for an alleged defect in the specification, obtained another patent. The second patent is to be considered as having relation to the first patent in 1822, and not as having been issued on an original application. Shaw v. Cooper, 7 Peters, 292.
The taking of the oath required by the patent act, previous to the issuing of the patent, is but a prerequisite to the granting of the patent, and is in no degree essential to its validity; and if not taken, still the patent is valid. No defect or concealment in the specification, will avoid the patent, unless it arose from an intention to deceive the public. Whittemore v. Cutter, 1 Gallis. C. C. R. 429.
The first inventor is entitled to the benefit of his invention, and if he reduce it to practice, and obtain a patent for it, a subsequent inventor cannot, by obtaining a patent, deprive him of his invention, or maintain an action against him or his patent. Woodcock v. Parker et al., 1 Gallis. C. C. R. 438.
A patent can in no case be for an effect only, but for an effect produced in a certain manner, or by a peculiar operation. Ibid.
The original inventor of a machine is exclusively entitled to a patent for it. Mere colourable differences, or slight improvements, will not affect his right. Odiorne v. Winkley, 2 Gallis. C. C. R. 51.
The law allows a party a patent for a new and useful invention, and by “useful invention,” is meant, not an invention in all respects superior to the modes now in use for the same purpose, but useful, in contradistinction to frivolous and mischievous inventions. Lowell v. Lewis, 1 Mason’s C. C. R. 182.
The patentee must describe in his patent in what his invention consists, with reasonable certainty; otherwise it is void for ambiguity. If it be for an improvement in an existing machine, he must, in his patent, distinguish the new from the old; and confine his patent to such parts only as are new; for if both are mixed up together, and a patent is taken out for the whole, it is void. Ibid.
A joint patent may well be for a joint invention, but not for a sole invention of one of the patentees. If each of the patentees obtain patents for the same invention as his exclusive invention, and afterwards both obtain a joint patent for the same as their invention, the parties are not actually estopped from ascertaining the invention to be joint; but the former patents are very strong evidence against a joint invention. Ibid.
An inventor cannot, under the patent laws of the United States, have two subsisting valid patents at the same time for the same invention. The first that he obtains, while it remains unrepealed, is an estoppel to any patent under the same patent act. Odiorne v. The Amesbury Nail Factory, 2 Mason’s C. C. R. 28.
The first section of the patent act of 1793, construed in connection with the other sections of the act, means that the invention should not be known and used as the invention of any other person than the patentee before the application for a patent. Morris v. Huntington, Paine’s C. C. R. 348.
To obtain a patent under the laws of the United States, the party must be the original inventor in reference to the whole world; it is not sufficient that he is the first inventor within the United States. Rutgen v. Kanowers, 1 Wash. C. C. R. 168.
One who is the inventor of an improvement in the principle of a machine, has the same right to use it, as the inventor of the original machine had to it. Aliter, if it be only in form and proportion. Gray et al. v. James et al., Peters’s C. C. R. 394.
It is not enough that the thing designed to be embraced by the patent, should be made apparent on the trial, by comparison of the new with the old machine. The patent for the invention must distinguish the new from the old, so as to point out in what the improvement consists. Dixon v. Moyer, 4 Wash. C. C. R. 68.
Patents and the specifications annexed thereto, should be construed fairly and liberally, and not be subject to any over nice or critical refinements. Ames v. Howard, 1 Sumner’s C. C. R. 482.
It is not necessary to the validity of a patent for a new and useful invention, that any of the ingredients should be new and unused before for the purpose. The true question is, whether the combination of materials by the patentee, is substantially new. Ryan v. Goodwin, 3 Sumner’s C. C. R. 514.
Under the patent laws of the United States, the applicant for a patent must he the first as well as the original inventor, and a subsequent inventor, although an original inventor, is not entitled to a patent, if the invention is perfected and put in actual use by the first and an original inventor; and it is of no consequence whether the invention is extensively known or used, or whether the knowledge or use thereof is limited to a few persons, or even to the first inventor himself, or is kept a secret by the first inventor. Reed v. Cutter, 1 Story’s C. C. R. 590. See Stone v. Sprague, 1 Story’s C. C. R. 270.
Infringement of a Patent Right.—By the provisions of the act of Congress of April 17, 1800, citizens and aliens as to patent rights, are placed substantially on the same ground. In either case, if the invention was known or used by the public before it was patented, the patent is void. Shaw v. Cooper, 7 Peters, 292.
No matter by what means an invention may have been communicated before the patent was obtained: any acquiescence by the inventor in the public use, will be an abandonment of the right. If the right were asserted by him who fraudulently obtained it, perhaps no lapse of time could give it validity. But the public stand in an entirely different relation to the inventor. This right would be secured by giving public notice that he was the inventor of the thing used, and that he should apply for a patent. Ibid.
A strict construction of the act of Congress, as it respects the public use of the invention, is not only required by its letter and spirit, but sound policy. Ibid.
The question of abandonment by the inventor does not depend on the intention of the inventor. If without any intention, he suffers his invention to go to the public, he has no right to a patent. Ibid.
Under the patent act of 1793, if the patentee has sold out a moiety of his patent, a joint action lies by his vendee and himself, for a violation of the patent. Whittemore v. Cutter, 1 Gallis. C. C. R. 429.
By the term “actual damage,” which the plaintiff may recover under the patent law, is meant such damages as he can actually prove, and has in fact sustained as contradistinguished from mere imaginary or vindictive damages, which in personal torts are sometimes given. Ibid.
If there be a mere making, and no use proved, nominal damages are to be recovered. The rule of damages, if the use of the machine be proved, should be the value of the use of the machine during the time the use was proved. Ibid.
In an action for the infringement of a patent right, the law gives to a plaintiff treble the actual damages sustained by him; and the rule is to allow him treble the amount of the profits actually received by the defendant, in consequence of his using the plaintiff’s invention. Lowell v. Lewis, 1 Mason’s C. C. R. 182.
The jury are to find single damages, and the court are to treble them. Gray et al. v. James, Peters’s C. C. R. 394.
A patent may be for a new combination of machines to produce certain effects; and this, whether the machines constituting the combination be new or not. But in such a case, the patent being for the combination only, it is no infringement of the patent to use any of the machines separately, if the whole combination be not used. Barrett et al. v. Hall et al., 1 Mason’s C. C. R. 447.
Where a party claims several distinct, independent improvements in the same machine, and procures a patent for them in the aggregate, he is entitled to recover against any person who shall use any one of the improvements so patented, notwithstanding there shall have been no violation of the other improvements. Moody v. Fiske et al., 2 Mason’s C. C. R. 112.
The jury may, in an action for the infringement of a patent, give the plaintiff, as a part of his actual damages, such expenses for counsel fees, &c., as have been actually incurred in vindicating his right by suit, and which are not taxable in the bill of costs. Boston Manufacturing Company v. Fiske et al., 2 Mason’s C. C. R. 119.
A patentee of an invention, notwithstanding he had given away his invention to another, may recover for the violation of his patent; not having assigned away his whole title and interest in it, and no deed of assignment having been recorded in the office of the Secretary of State. Parke v. Little, 3 Wash. C. C. R. 196.
Proceedings and Pleadings in actions for the violation of Patent Rights.—In the case of a rule before the district judge, to show cause why a patent should not be repealed, a record is to be made of the proceedings antecedent to the rule to show cause why process should not issue to repeal the patent, and upon which the rule was granted. Ex parte Wood and Brundage, 9 Wheat. 603; 5 Cond. Rep. 702.
The proceedings under the 10th section of the act of 1793, are in the nature of a scire facias at common law, to repeal a patent. Stearns v. Barrett, 1 Mason’s C. C. R. 163.
The scire facias in such a case ought to contain a direct allegation or suggestion that the patent was obtained surreptitiously or upon false suggestion; and to call upon the defendant for that cause only, to show cause why the patent should not be repealed. Ibid.
On an application for an injunction to restrain the infringement of a patent right, it should be stated in the bill, or by affidavit, that the complainant is the inventor, and the bill must be sworn to: it is not sufficient that this fact was sworn to when the patent was obtained. Sullivan v. Redfield, Paine’s C. C. R. 441. See Cutting v. Meyers, 4 Wash. C. C. R. 220. Pettibone v. Derringer, 4 Wash. C. C. R. 215. Dixon v. Moyer, 4 Wash. C. C. R. 68.
In an action for a violation of a patent right, it is sufficient, under the plea of the general issue, to give notice that the plaintiff is not the inventor of the machine for which the patent has been obtained, if that constitutes the defence; without stating in the notice who was the inventor, or who had previously used the machine. Evans v. Kremer, Peters’s C. C. R. 215. See Prouty v. Reynolds, 16 Peters, 336.
In an action for an infringement of a patent right, evidence that the invention of the defendant is better than that of the plaintiff, is improper; except to show a substantial difference between the two inventions. Alden v. Dewey, 1 Story’s C. C. R. 336.
Evidence in actions for the violation of Patent Rights.—Under the sixth section of the patent law of Feb. 1793, the defendant pleaded the general issue and gave notice that he would prove at the trial, that the machine for the use of which, without license, the suit was brought, had been used previous to the alleged invention at several places which were specified in the notices or some of them, and also at sundry other places in Pennsylvania, Maryland, and elsewhere, in the United States. The defendant having given evidence as to some of the places specified; held, that evidence as to the other places was admissible, but that the court possesses the power, which will be exercised, to prevent the plaintiff being injured by surprise. Evans v. Eaton, 3 Wheat. 454; 4 Cond. Rep. 291.
The sixth section of the patent act does not enumerate all the defences of which the defendant may legally avail himself: He may give in evidence that he never did the act attributed to him: that the patentee is an alien, not entitled under the act; or that he has a license or authority from the patentee. Whittemore v. Cutter, 1 Gallis. C. C. R. 436.
It is a presumption of law, that where a patent and the specifications and drawings have been recorded in the patent office, every person who takes out a patent for a similar machine has a knowledge of the preceding patent. Odiorne v. Winkley, 2 Gallis. C. C. R. 51; Stearnes v. Barrett, 1 Mason’s C. C. R. 153; Kneas v. The Schuylkill Bank, 4 Wash. C. C. R. 106.
There is no limitation to the ground on which the defendant, under the general issue may give in evidence that the patentee was not the original inventor. Evans v. Eaton, Peters’ C. C. R. 322.
Surrender and Repeal of Patents.—The holder of a defective patent may surrender it to the department of state, and obtain a new one, which shall have relation to the emanation of the first. Shaw v. Cooper, 7 Peters 292.
The great object and intention of the act granting patents for useful inventions is to secure to the public the advantage to be derived from the discoveries of individuals, and the means it employs are the compensation to those individuals for the time or labour devoted to those discoveries, by the exclusive right to make and sell the thing discovered for a limited time. Grant v. Raymond, 6 Peters, 218.
One who has patented his invention cannot take out a new patent for the same invention until the first is surrendered, repealed, or declared void. Morris v. Huntington, Paine’s C. C. R. 348.
The obstacle of an invalid patent may be removed by having it declared void after a verdict against it, or by having a vacatur entered, exparte, in the office of the Secretary of State, on a surrender of the patent. But the provisions of the sixth section of the act do not enable a patentee to declare his own patent void; and a verdict in a suit on the second patent in favour of such patent does not avoid the first patent. Ibid.