force has been discovered, this, together with the mode of applying the force, constitutes the essence of the invention, and the object may be varied without changing the character of the invention. Hence, it is that in many cases the form of a machine is of no consequence and any device will be an infringement upon a patented invention so long as the essential features of the patent are reproduced in the infringing device.69

§ 633. Statutory Protection of Inventions.-The right of the inventor to be protected in the benefits arising from the product of his mind was recognized by the framers of the constitution at the same time that the security of authors was provided for, and Congress has by appropriate legislation made provision for giving to inventors the sole right to the benefits arising from their inventions for a definite period of time.70 Changes, alterations and additions have been made in the statutes at different times, but probably the most important one is the section protecting designs, springing out of the refusal to include designs under the copyright laws. From the sections quoted in

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69 Enough has been set forth in our text to answer the purposes of this chapter, but the reader is advised to see Professor Robinson's treatise if he desires to pursue this interesting subject further. 70 "Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application, and not in public use or sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor": Rev. Stats., sec. 4886.

71 "Any person who, by his own industry, genius, efforts and expense, has invented any new and original design for a manufac

the notes it appears that the class of persons entitled to patents is quite limited as compared with those entitled to copyright, but by another section this right is extended to the assignees of inventors or discoverers, and probably of designers. In order to entitle an assignee to have his application for patent granted, however, his assignment must be entered of record in the patent office, and his application must be signed and sworn to by the inventor or discoverer.72

§ 634. Requisites of Patentable Invention-Elements of Invention. Although at common law every kind of inventive idea is protected, in order to entitle one to the benefits of the patent laws of this country his invention must be new and useful, and it must also come within one of the several classes specified, such as art, manufacture, machine, combination, or improvement in any of these classes, or design.73 In the first place, then, the device sought to be patented must be the product of an act of invention, such as has been set out in a preceding section. A patent will not be granted for the discovery of an elementary truth or principle of nature, nor for a mere effect

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ture, bust, statue, alto-rilievo, or bas-relief; any new and original design for the printing of woolen, silk or cotton or other fabrics; any new and original impression, ornament, patent or print, or picture to be printed, painted, cast or otherwise placed on or worked into any article of manufacture; or any new, useful and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon payment of the fees prescribed, and other due proceedings had, the same as in cases of inventions or discoveries, obtain a patent therefor": Rev. Stats., sec. 4929.

72 Rev. Stats., sec. 4895.

73 See statutes cited in notes to sec. 633.

74 Barrett v. Hall, 1 Mason, 447, Fed. Cas. No. 1047; Roberts v. Dickey, 4 Brewst. 260, Fed. Cas. No. 11,899; Tyler v. Devol, 1 Am. Law J., N. S., 248, Fed. Cas. No. 14,307; Morton v. New York Eye

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or function, but only for the invention of a means of applying the principle to produce the effect or end. Not only must the subject of the patent contain all the factors of a means to an end, but it must also involve the element of discovery. Any means which required in its inception no more than mechanical skill may not be patented." Hence, the application of an old device to a new use is not patentable;78 nor will the reduction in bulk or size of an article entitle the producer to the monopoly conferred by statute to inventors, "unless the properties of the article are improved by the introduction of some new inInfirmary, 5 Blatchf. 116, Fed. Cas. No. 9865; Whitney v. Carter, Fed. Cas. No. 17,583; Bell v. Daniels, 1 Bond, 212, Fed. Cas. No. 1247.

75 Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. Rep. 81; Corning v. Burden, 15 How. 252; Burr v. Duryee, 1 Wall. 531; Whittemore v. Cutter, 1 Gall. 478, Fed. Cas. No. 17,601 (Story, J.).

76 Bell v. Daniels, 1 Bond, 212, Fed. Cas. No. 1247; Fuller v. Yentzer, 94 U. S. 299; Corning v. Burden, 15 How. 252; Burr v. Duryee, 1 Wall. 531; Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. Rep. 81; Le Roy v. Tatham, 14 How. 156; Carver v. Hyde, 16 Pet. 519; Morton v. New York Eye Infirmary, 5 Blatchf. 116, Fed. Cas. No. 9865; Sickles v. Borden, 3 Blatchf. 535, Fed. Cas. No. 12,832.

77 Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 20 Sup. Ct. Rep. 708; Risdon Locomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. Rep. 745; International Tooth Crown Co. v. Gaylord, 140 U. S. 55, 11 Sup. Ct. Rep. 716; Clark Pomace Holder Co. v. Ferguson, 119 U. S. 335, 7 Sup. Ct. Rep. 382; Gardner v. Herz, 118 U. S. 180, 6 Sup. Ct. Rep. 1027; Yale Lock Mfg. Co. v. Greenleaf, 117 U. S. 554, 6 Sup. Ct. Rep. 846; Morris v. McMillin, 112 U. S. 244, 5 Sup. Ct. Rep. 218; Double Pointed Tack Co. v. Two Rivers Mfg. Co., 109 U. S. 117, 3 Sup. Ct. Rep. 105; King v. Gallun, 109 U. S. 29, 3 Sup. Ct. Rep. 85; Estey v. Burdette, 109 U. S. 633, 3 Sup. Ct. Rep. 531; Hall v. McNeale, 107 U. S. 90. 2 Sup. Ct. Rep. 73; Vinton v. Hamilton, 104 U. S. 485; Atlantic Works v. Brady, 107 U. S. 192, 2 Sup. Ct. Rep. 225.

78 Hovey v. Henry, 3 West L. J. 153, Fed. Cas. No. 6742; Northrup v. Adams, 2 Cin. L. Bull. 84, Fed. Cas. No. 10,328; Smith v. Elliott, 9 Blatchf. 400, Fed. Cas. No. 13,041; Howe v. Abbott, 2 Story, 190, Fed. Cas. No. 6766.

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gredient, or by the subtraction of one or more of the ingredients of the original article by which the product is improved or made more useful." 79 While discovery is not the only element involved in the act of invention, together with the conception of the union of the factors of the means, it forms the most important part and hence one, whose conception of an invention antedates that of another who has made an application for a patent first, is entitled to the patent in preference to such subsequent discoverer and inventor, provided he has used due diligence in reducing his conception to practice.80

§ 635. Same--Novelty and Utility. In the second place, the invention must be new and useful. As to the last-named quality, one court has said that the invention must not be frivolous or mischievous, and gives as examples of such articles crinolines and poisons,81 while the supreme court has made the statement that this requirement of utility is satisfied if the invention "is capable of being beneficially used for the purpose for which it was designed."82 It is not essential that the invention be better than any device in use at the time of its conception or after,83 but

79 Milligan and Higgins Glue Co. v. Upton, 4 Cliff. 237, Fed. Cas. No. 9607. In this case the court held that glue in a pulverized state did not constitute an invention, when it had been used in larger bulk with practically the same results.

80 Reed v. Cutter, 1 Story, 590, Fed. Cas. No. 11,645; Phelps v. Brown, 4 Blatchf. 362, Fed. Cas. No. 11,072; White v. Allen, 2 Cliff. 224, Fed. Cas. No. 17,535; Heath v. Hildreth, Cranch Pat. Dec. 96, Fed. Cas. No. 6309; Nichols v. Pearce, 7 Blatchf. 5, Fed. Cas. No. 10,246; Mix v. Perkins, Fed. Cas. No. 9677.

81 Page v. Ferry, 1 Fish Pat. Cas. 298, Fed. Cas. No. 10,662. 82 Seymour v. Osborne, 11 Wall. 516, 549.

83 Many v. Jagger, 1 Blatchf. 372, Fed. Cas. No. 9055; Roemer v. Logowitz, Fed. Cas. No. 11,996; Gray v. James, Pet. C. C. 394, Fed. Cas. No. 5718; Bell v. Daniels, 1 Bond, 212, Fed. Cas. No. 1247; Roberts v. Ward, 4 McLean, 565, Fed. Cas. No. 11,918. Contra, see Jones v. Wetherill 1 McArthur Pat. Cas. 409, Fed. Cas. No. 7508.

what seems to be required is that the device be capable of performing the functions intended to be performed by it, and that these functions be reasonably capable of other than harmful, dangerous or obnoxious uses.

The novelty of an invention, for the monopoly of which an application is made, is a question of considerable importance, and one which has given rise to numerous well-considered cases and many close distinctions. It will suffice to point out but a few of the leading principles involved as we are chiefly concerned here with infringement, and need only consider such matters as are essential to a complete understanding of that branch of this subject. It is apparent that one may construct a machine, or devise an art or combination, which, so far as he is concerned, involves both invention and discovery, but which contains no element of means which is not already known and in use. Such conceptions are not entitled to protection, for, even if similar devices have not been made before, their construction requires but mechanical skill in those who are familiar with the department of science to which they belong. On the other hand, it is not essential that there be in every invention patented some element or factor never before known or used in the history of the world. It may be just as meretorious to rediscover some one of the "lost arts" as to penetrate the mysteries of nature, and find an absolutely new quality of matter or force. Also an inventor who applies for a patent ought not to be denied the same because of the prior invention of some other person who has not made his invention public, but kept it to himself, and finally abandoned it.84

The statutes prescribe certain tests for determining the question of novelty. It is in them provided that 84 Gayler v. Wilder, 10 How. 477.