LICENSE-continued.

specific improvement then invented and used by the person who had purchased and used the machine to which the invention is applied. Ibid. 4. An agreement conveying to the grantee the exclusive right to make and vend the thing patented within a certain territory, but reserving to the grantor the right to make and sell within the same territory, is not an assignment, but only a license. Gayler v. Wilder, 576.

5. The difference is well understood between licenses which may be assigned or used by others, and those which the licensees could only personally use. Troy Iron and Nail Factory v. Corning, 691.

6. A mere license to a party, without words showing that it was meant to be assignable, is only a grant of a personal power to the licensee, and is not transferable by him to another. Ibid.

See ASSIGNMENT; PATENTED ARTICLES; STATUTES, CONSTRUCTION OF.

1. There is no substantial difference between a patent for an improvement on a machine, and a patent for an improved machine. Erans v. Eaton, 8.

2. The term machine includes any combination of mechanical powers to perform some function and produce a certain effect or result. Corning v. Burden, 867.

3. Principle is often applied to a machine to describe its movements and effects. Le Roy v. Tatham, 1116.

See ACTION; ASSIGNMENT; EFFECT; PATENTED ARTICLES.

MANUFACTURE.

1. A new manufacture, as the use of a new composition to form knobs for doors, &c., and which results in a new and useful article, is the proper subject of a patent, though the means employed to adapt the new composition to a useful purpose are old or well known. Hotchkiss v. Greenwood, 610.

2. But if porcelain knobs were not new, and the same kind of shanks and splindles had been used with other knobs, the use or substitution of poreclain instead of other material, in a combination with such shanks, &c., will not entitle the manufacturer to a patent, even though such material may be better adapted for the purpose. Ibid.

3. A new property in matter, when practically applied in the construction of a useful article, is patentable; but the process through which the new property is applied must be stated with such precision as to enable a mechanic to apply the necessary process. Le Roy v. Tatham, 657.

MANUSCRIPTS.

See COMPOSITION OF MATTER.

1. The rights of an assignee of a manuscript will be protected by a court of chancery. Wheaton v. Peters, 200.

2. This is presumed to be the "copyright" recognized in section 1 of the act of 1790. Ibid.

3. Congress, by the act of 1790, instead of sanctioning an existing right, created it. Ibid.

4. At common law, an author has a right to his unpublished manuscripts; and the act of February 3, 1831, gives him a remedy by injunction to protect his right. Little v. Hall, 989.

See ACTION; COPYRIGHT.

MATERIAL.

The substitution of one material for another, as clay for wood or metal in the construction of door-knobs, is not patentable. Hotchkiss v. Greenwood, 610. See COMPOSITION OF MATTER; MANUFACTURE.

MISTAKES IN PATENTS.

If a mistake should be committed in the Department of State, it may be corrected, and a new patent be issued, correcting the error, even though such act is not expressly authorized by law. The emanation of the new patent is not founded on the words of the law, but is necessary to the faithful execution of the solemn promise made by the United States to the inventor. The same step may be taken, if a mistake has been innocently committed by the inventor. Grant v. Raymond, 146.

MODE.

See DISCLAIMER; REISSUE.

1. An exclusive right cannot exist in a new power, should one be discovered, as steam, electricity, or any other power of nature. In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. The right of the inventor is secured against all who use the same mechanical power, or one substantially the same. Le Roy v. Tatham, 657.

2. An art may require one or more processes of machines in order to produce a certain result or manufacture. Corning v. Burden, 867.

3. Where the result is produced by chemical action, by the operation of some element or power of nature, or of one substance on another, such operations are called processes. Ibid.

4. The arts of tanning, dyeing, making water-proof cloth, vulcanizing Indiarubber, smelting ores, &c., are carried on by processes, as distinguished from machines. Ibid.

5. One may discover an improvement in such a process, irrespective of any particular form of machinery; and another may invent a machine by which the operation or process may be performed, and each be entitled to a patent. Ibid.

6. It is when the term process is used to represent some method of producing a result, that it is patentable. Ibid.

7. The term process is often used, however, in a more vague sense, as when we say a board is undergoing the process of being planed, in which it cannot be the subject of a patent. Ibid.

8. In this use of the term it represents the effect produced by the machine on the material subjected to its action. Ibid.

9. A patentee cannot have a patent for "the motive-power of electro-magnetism, however developed, for marking characters at a distance." His patent must be confined to the process described and invented by him. O'Reilly v. Morse, 763.

10. A patent cannot be for an effect produced distinct from the machinery necessary to produce it. Ibid.

MODELS.

See ART; EFFECT; PRINCIPLE.

1. Models are a species of evidence best calculated to conduct to the truthevidence unaffected by the prejudices of partisans, or by the opinions (the reveries, they may often be called) of experts. McCormick v. Talcott, 1085. (Dissenting opinion.)

MODELS-continued.

2. No witnesses can testify so clearly as do the subjects (though mute) concerning which a controversy about identity is pending. Ibid. (Dissenting opinion.)

See EXPERTS; GENERAL ISSUE.

NEW APPLICATION.

1. The meaning of the rule laid down in Howe v. Abbott, 2 Story, 194, and in Winans v. Boston and Providence Railroad, 2 Story, 416, is that the application of an old machine, or old composition of matter, before patented, to a new object, does not entitle one to a patent connected with the new object. Hotchkiss v. Greenwood, 610, Diss. Opin.

2. But it is entirely different if one apply an old principle in physics to a new object. There is then a new form adapted, or a new combination for the purpose-a new shape, consistency, and use given, or a new modus operandi, which, if cheaper and better, deserves protection. Ibid. See ART; DISCOVERY; EFFECT; MATERIAL.

NEW TRIAL.

See DAMAGES.

NONSUIT.

The United States courts have no power to order a peremptory nonsuit, against the will of the plaintiff. Silsby v. Foote, 717.

OATH OF INVENTION.

The oath of the patentee is to be considered as extending to the specification, no less than the title of his invention. Hogg v. Emerson, 438.

See PATENT.

PARTIES.

See ACTION.

PARTNERSHIP.

One partner in the manufacture and sale of a patented article cannot acquire, as assignee, an outstanding right of a third person, as an inventor of the same thing, and set it up against his joint partner. Kinsman v. Parkhurst, 997.

PATENT.

1. Quære: Whether improvements on different machines can be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately, as well as the right to the exclusive use of these machines in combination? Evans v. Eaton, 8.

2. Where the words are ambiguous, there may be circumstances which ought to have great influence in expounding them. The intention of the parties is entitled to great consideration. Therefore a special act may be referred to, as well as the patentee's petition. Ibid.

3. Every discoverer should realize the benefits resulting from his discovery; but these can only be secured by a compliance with every legal requisite. His exclusive right does not rest alone upon his discovery, but upon the legal sanctions which have been given to it. Shaw v. Cooper, 173.

4. As a patentee is required to make oath that he is the true inventor of the thing patented, the patent is regarded by the courts of the United States as prima-facie evidence that he made the invention. Philadelphia and Trenton R. R. v. Stimpson, 292.

PATENT-continued.

5. A patent must be construed according to the laws in force at the time of the granting of it. McClurg v. Kingsland, 322.

6. The sufficiency of the description in a specification is, in general, a question of fact for the jury. Wood v. Underhill, 432.

7. The sufficiency of a description in a specification is, in general, in patents for a composition of matter, as well as in patents for machines, a question of fact for the jury; but when the specification of a new composition of matter gives only the names of the substances to be mixed together, without stating any relative proportion, it is the duty of the court to declare the patent vacant. Ibid.

8. But when the patentee gives a certain proportion as a general rule, which on the face of the specification seems generally applicable, the patent will be valid, though some small difference in the proportions may be occasionally required, according to the quality of the materials made use of. Ibid. 9. The specification, under our laws and practice, is to be regarded as a component part of the letters patent. Hogg v. Emerson, 438.

10. Patents may be united, if two or more, included in one set of letters, relate to a like subject, or are in their nature connected together. Ibid.

11. Models and drawings are a part of the letters patent. Ibid.

12. A patent is to be construed by the acts in force at the time of its issue. Ibid.

13. The true rule of construction, in respect to patents, is to apply to them plain and ordinary principles, and not to yield to subtleties and technicalities likely to prove ruinous to a class of the community so inconsiderate and unskilled in business as men of genius and inventors usually are. Ibid. 14. The question whether the patent is sufficiently clear in its description, is one of law only so far as regards the construction of the written words used. Ibid.

15. Under the act of 1793, the specification was not necessarily made a part of the letters patent; but the inventor had a right, if he pleased, to incorporate it into the letters as a part of them. Hogg v. Emerson, 634.

16. The specification, when thus voluntarily annexed, became a part of the patent by general principles, as clearly as it does since by the words of the law. Ibid.

17. A patent for more than one invention is not void, if they are connected in their operation. Ibid.

18. The drawings, as well as the specifications, may be looked to for explanation of anything obscure in the patent. Ibid.

19. A patent is not void because it does not bear the same date with a previous foreign patent, taken out by the patentee; the monopoly, however, is limited to fourteen years from the date of the foreign patent. O'Reilly v. Morse, 763.

20. A patentee cannot take out a subsequent patent for a portion of his first invention, and thereby extend his monopoly. Ibid.

21. But the validity of a patent cannot be impeached upon the ground that it is an improvement upon a former invention. Ibid.

22. The claim is not to be taken alone, but in connection with the specification; the whole instrument is to be construed together. Brooks v. Fiske, 846.

23. Under the act of 1790, a patent was made prima-facie evidence; that act was repealed by the act of 1793. Hence a patent was not received in courts of justice as even prima-facie evidence that the invention patented was new or useful. But the act of 1836 introduced a new system, and under it—its

PATENT-continued.

inquisition and examination-a patent is received as prima-facie evidence of the truth of the facts asserted in it. Corning v. Burden, 867.

25. The patentee may so restrict his claim as to cover less than he invented, yet such an interpretation should not be put upon his claim if it can fairly be construed otherwise. Winans v. Denmead, 887.

26. What is the thing patented, is a question of law, to be determined by the court from the letters patent. Ibid.

27. The jury are to determine whether the specifications, including the claim, are so precise as to enable any skillful person to make the thing described. Battin v. Taggert, 969.

28. The Patent Acts do not operate beyond the limits of the United States; and the patentee's right of property cannot extend beyond the limits to which the law itself is confined. Brown v. Duchesne, 1015.

29. The rights of property and exclusive use granted to a patentee, do not extend to a foreign vessel entering our ports. Ibid.

30. The benefit to the community at large was doubtless the primary object in granting and securing the monopoly. Kendall v. Winsor, 1108.

31. This was at once the equivalent given by the public for the benefits bestowed by the genius and skill of individuals, and the incentive to further efforts. Ibid.

PARTICULAR PATENTS.

1. Burden's patent for rolling puddle balls, issued December 10, 1840. Corning v. Burden, SC7.

2. Carver's patent for ribs of cotton-gins, issued June 12, 1838; reissued November 16, 1839. Carver v. Hyde, 316.

3. Foote's patent for stoves, issued May 26, 1842. Silsby v. Foote, 1071. 4. Goodyear's patent for India-rubber. Shined-goods patent, issued March 9, 1844; soft-rubber patent, issued June 15, 1844; reissued December 25, 1849. Hartshorn v. Day, 1031; Day v. Union Rubber Co., 1062.

5. Hanson's patent for lead pipe machines, issued March 29, 1841; antedated August 31, 1837; reissued March 14, 1846. Le Roy v. Tatham, 657; Ibid., 1116.

6. McCormick's patents for harvesters, issued June 21, 1834; issued June 31, 1845; issued October 23, 1847; reissued May 24, 1853. Seymour v. McCormick, 1004; McCormick v. Talcott, 1085.

7. Morse's patents for electric telegraphs. "Magnetic," issued June 20, 1840; reissued January 25, 1846; reissued June 13, 1848. "Local Circuit," issued April 11, 1846; reissued June 13, 1848. "Chemical," issued May 1, 1849. House Instrument; Columbian Instrument. O'Reilly v. Morse, 763. 8. Page's patent for circular portable saw-mills, issued July 16, 1841; extended July 17, 1855. Phillips v. Page, 1143.

9. Prouty & Mears' patent for plows, issued March 4, 1836. Prouty v. Ruggles, 311.

10. Stimpson's patent for rails for railroad carriages, issued August 23, 1831. Stimpson v. Baltimore and Susquehanna R. R. Co., 535.

11. Winans' patent for eight-wheeled cars, issued October 1, 1834. New York and Erie R. R. Co., 1096.

12. Winans' patent for coal cars, issued June 26, 1846 13. Wood's patent for making brick or tiles, issued v. Underhill, 432.

14. Woodworth's patent for planing-machines, iss tended November 16, 1842; reissued July

Winans v.

Winans v. Denmead, 887.

November 9, 1836.

ed

Wood

December 27, 1828; ex

1845;

disclaimer as to the