SHAW V. COOPER, 32 U. S. 292 (1833)

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U.S. Supreme Court

Shaw v. Cooper, 32 U.S. 7 Pet. 292 292 (1833)

Shaw v. Cooper

32 U.S. (7 Pet.) 292


Action for an alleged violation of a patent for an improvement, in guns and firearms.

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. This second patent is to be considered as having relation to the emanation of the patent of 1822, and not as having been issued on an original application.

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.

The case of Grant v. Raymond, 6 Pet. 220, cited and affirmed.

A second patent granted on the surrender of a prior one being a continuation of the first, the rights of a patentee must be ascertained by the law under which the original application was made.

By the provisions of the Act of Congress of 17 April, 1800, citizens and aliens, as to patent rights, are placed substantially upon the same ground. In either case, if the invention was known or used by the public before it was patented, the patent is void. In both cases, the right must be tested by the same rule.

What use by the public, before the application is made for a patent, shall make void the right of a patentee.

From an examination of the various provisions of the acts of Congress relative to patents for useful inventions, it clearly appears that it was the intention of the legislature, by a compliance with the requisites of the law, to vest the exclusive right in the inventor only, and that on condition that his invention was neither known nor used by the public before his application for a patent. If such use or knowledge shall be proved to have existed prior to the application for the patent, the act of 1793 declares the patent void, and the right of an alien is vacated in the same manner, by proving a foreign use or knowledge of his invention. That knowledge or use which would be fatal to the patent right of a citizen would be equally so to the right of an alien.

The knowledge or use spoken of in the Act of Congress of 1793 could have referred to the public only, for the provision would be nugatory if it were applied to the inventor himself. He must necessarily have a perfect knowledge of the thing invented and of its use before he can describe it, as by law he is required to do preparatory to the emanation of a patent.

There may be cases in which a knowledge of the invention may be surreptitiously obtained and communicated to the public that do not affect the right of the inventor. Under such circumstances, no presumption can arise in favor of an abandonment of the right to the public by the inventor, though an acquiescence on his part will lay the foundation for

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such a presumption. It is undoubtedly just that every discoverer should realize the benefits resulting

from his discovery for the period contemplated by law. But those can only be

reserved by a substantial compliance with every legal requisite. This exclusive right does not rest alone on his discovery, but also upon the legal sanctions which have been given to it and the forms of law with which it has been clothed.

No matter by what means an invention may have been communicated to the public before a patent is obtained, any acquiescence in the public use by the inventor 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 stands in an entirely different relation to the inventor. His 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.

The acquiescence of an inventor in the public use of his invention can in no case be presumed where he has no knowledge of such use. But this knowledge may be presumed from the circumstances of the case. This will in general be a fact for a jury, and if the inventor do not, immediately after this notice, assert his right, it is such evidence of acquiescence in the public use, as forever afterwards to prevent hint from asserting it. After his right shall be perfected by a patent, no presumption arises against it from a subsequent use by the public.

A strict construction of the act of Congress as it regards the, public use of an invention before it is patented is not only required by its letter and spirit, but also by sound policy.

The question of abandonment to the public does not depend on the intention of the inventor. Whatever may be the intention, if he suffers his invention to go into public use through any means whatsoever without an immediate assertion of his right, he is not entitled to a patent, nor will a patent obtained under such circumstances protect his right.

At the October term, 1829, of the circuit court, the plaintiff in error, Joseph Shaw, instituted an action against the defendant, Joseph Cooper, for an alleged violation of a patent granted to him by the United States, dated 7 May, 1829, for

"a new and useful improvement in guns and firearms, which improvement consisted in a priming head and case applied to arms and firearms for the purpose of priming and giving them fire by the means or use of percussion, fulminating, or detonating powder,"

by which patent, the plaintiff alleged that there was granted to him, &c., for the term of fourteen years from 19 June,

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1822, the exclusive right to the said invention, and by virtue of which he became entitled to the same, for the residue of the term unexpired on 7 May, 1829. The declaration averred that the defendant had violated the patent right of the plaintiff on 1 August, 1829, and afterwards between that day and the institution of the suit.

The defendant pleaded not guilty and gave the following notice of the matters of defense.

"Please to take notice that on the trial of the above cause, the above-named Joseph Cooper will, under the plea of the general issue aforesaid, insist upon and give in evidence that the pretended new and useful improvement in guns and firearms mentioned and referred to in the several counts of the said Joshua Shaw's declaration was not originally discovered or invented by the said Joshua Shaw; also that the said pretended new and useful improvement, or the material or essential parts or portions thereof, or some or none of them, had been known and used in this country, viz., in the City of New York and in the City of Philadelphia, and in sundry other places in the United States, and in England, and in France, and in other foreign countries, before the said Joshua Shaw's application for a patent, as set forth in his said declaration, and also before the alleged invention or supposed discovery thereof by the said Joshua Shaw. And further, that the said alleged new and useful improvement, or the material or essential parts or portions thereof, or some or one of them, or the principle thereof, was the invention or discovery of a gunmaker or of some other person residing in England. And further that the said patent was void because in and by the specification or description therein referred to, no distinction or discrimination is made between the parts and portions previously known and used as aforesaid and any parts or portions of which the said Joshua Shaw may be the inventor or discoverer, the said Joseph Cooper at the same time protesting that he, the said Joshua Shaw, has not been the inventor or discoverer of any part or portion of the said alleged improvement. And further that the said patent is void because the said specification or description does not describe the improvement

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of which the said Joshua Shaw claims to be the inventor or discoverer, in such full, clear and exact terms, as to distinguish the same from all other things before known, nor so as to enable a person skilled in the art or science of which it is a branch or with which it is most nearly connected to make and use the same. And further that the said patent is void because it was not granted, issued, or obtained according to law. And further that the said patent is void because it was surreptitiously obtained by the said Joshua Shaw."

The cause was tried in January, 1832, and a verdict and judgment given for the defendant. The plaintiff prosecuted this writ of error. The following bill of exceptions was tendered by the counsel for the plaintiff and sealed by the court.

"The plaintiff, to maintain the issue on his part, gave in evidence the letters patent of the United States of America, as set forth in the declaration of the said plaintiff, issued on 7 May, 1829, and also that the improvement for which the said letters patent were granted, was invented or discovered by the said plaintiff in the year 1813 or 1814, and that the defendant had sold instruments which were infringements of the said letters patent. And thereupon the said defendant, to maintain the said issue above joined on his part, then and there proved by the testimony of one witness that he had used the said improvement in England and had purchased a gun of the kind there, and had seen others use the said improvement and had seen guns of the kind in the Duke of York's armory in 1819, and also proved by the testimony of five other witnesses that in 1820 and 1821 they worked in England at the business of making and repairing guns, and that the said improvement was generally used in England in those years, but that they never had seen guns of the kind prior to those years, and also proved that in 1821 it was known and used in France, and also that the said improvement was generally known and used in the United States of America, after 19 June, 1822. Whereupon the said plaintiff, further to maintain the said issue on his part, then and there gave in evidence that the said plaintiff, not being a worker in iron, in 1813 or 1814 employed his brother

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in England, under strict injunctions of secrecy, to execute or fabricate the said improvement for the purpose of the said plaintiff's making experiments. And that the said plaintiff, afterwards, in 1817, left England and came to reside in the United States of America, and that after the departure of the said plaintiff from England, viz., in 1817 or 1818, his said brother divulged the said secret, for a certain reward, to an eminent gunmaker in London; that the plaintiff, on his arrival in this country in 1817, disclosed his said improvement to a gunmaker, whom he consulted as to obtaining a patent for the same and whom he wished to engage to join and assist him. That the plaintiff made said disclosures under injunctions of secrecy, claiming the improvement as his own and declaring that he should patent it. That the said plaintiff treated his invention as a secret after his arrival in this country, often declaring that he should patent it, and that he assigned as a reason for delaying to patent it that it was not so perfect as he wished to make it before he introduced it into public use, and that he did make alterations in his invention up to about the date of his patent, which some witnesses considered as improvements and others did not. That in this country, the said invention was never known or used prior to the said 19 June, 1822; that on that day letters patent were issued to the said plaintiff, being then an alien, for his said invention, and that the said plaintiff immediately brought the said invention into public use under the said letters patent. That afterwards, and after suits had been brought for violation of the said letters patent, the said plaintiff was advised to surrender them on account of the specification's being defective, and that he did accordingly, on 7 May, 1829, surrender the same into the Department of the Secretary of State of the United States of America, and that thereupon the letters patent first above mentioned were issued to the said plaintiff."

"And the said plaintiff also gave in evidence that prior to the said 19 June, 1822, the principal importers of guns from England, in New York and Philadelphia, at the latter of which cities the plaintiff resided, had never heard anything of the said invention, or that the same was known or used in England, and that no guns of the kind were imported

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into this country until in the years 1824 or 1825. And that letters patent were granted in England on 11 April, 1807, to one Alexander J. Forsyth for a method of discharging or giving fire to artillery and all other firearms, which method he describes in his specification as consisting in"

"the use or application, as a priming, in any mode, of some or one of those chemical compounds which are so easily inflammable as to be capable of taking fire and exploding without any actual fire's being applied thereto, and merely by a blow or by any sudden or strong pressure of friction given or applied thereto without extraordinary violence -- that is to say, some one of the compounds of combustible matter such as sulphur or sulphur and charcoal, with an oxmuriatic salt -- for example, the salt formed of dephlogisticated marine acid and potash (or potasse), which salt is otherwise called oxmuriate of potash, or such of the fulminating metallic compounds as may be used with safety -- for example, fulminating mercury or of common gunpowder -- mixed in due quantity with any of the above-mentioned substances or with any oxmuriatic salt as aforesaid, or of suitable mixtures of any of the before-mentioned compounds,"

"and that the said letters patent continued in force for the period of fourteen years from and after granting of the same. (It is understood that the patent and specification of Forsyth, may be at any time referred to on the argument, for correction or explanation of the bill of exceptions.) And thereupon the defendant, further to maintain the said issue on his part, gave in evidence a certain letter from the plaintiff to the defendant dated in December, 1824, from which the following is an extract,"

" Sometime since, I stated that I had employed counsel respecting regular prosecutions for any trespasses against my rights to the patent; I have at length obtained the opinions of Mr. Sergeant of this city, together with others eminent in law, and that is that I ought (with a view to insure success) to visit England and procure the affidavits of Manton and others, to whom I made my invention known, and also of the person whom I employed to make the lock, at the time of invention, for it appears very essential that I should also prove that I did actually reduce the principle to practice; otherwise a verdict might be doubtful. It is therefore my intention to visit

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England in May next for this purpose; in the meantime, proceedings which have commenced here are suspended for the necessary time."

"And the said judges of the said court did thereupon charge and direct the said jury that the patent of 7 May, 1829, having been issued, as appeared by its recital, on the surrender and cancelment of the patent of 19 June, 1822, and being intended to correct a mistake or remedy a defect in the latter, it must be considered as a continuation of the said patent, and the rights of the plaintiff were to be determined by the state of things which existed in 1822, when the patent was obtained. That the plaintiff's case, therefore, came under the act passed 17 April, 1800, extending the right of obtaining patents to aliens, by the first section of which the applicant is required to make oath that his invention has not, to the best of his knowledge or belief, been known or used in this or any foreign country. That the plaintiff most probably did not know in 1822 that the invention for which he was taking out a patent had before that time been in use in a foreign country, but that his knowledge or ignorance on that subject was rendered immaterial by the concluding part of the section, which expressly declares that every patent obtained pursuant to that act for any invention which it should afterwards appear had been known or used previous to such application for a patent should be utterly void. That there was nothing in the act confining such use to the United States, and that if the invention was previously known in England or France, it was sufficient to avoid the patent under that act. That the evidence would lead to the conclusion that the plaintiff was the inventor in this case, but the court was of opinion that he had slept too long on his rights, and not followed them up as the law requires to entitle him to any benefit from his patent. That the use of the invention by a person who had pirated it or by others who knew of the piracy would not affect the inventor's rights, but that the law was made for the benefit of the public as well as of the inventor, and if, as appeared from the evidence in this case, the public had fairly become possessed of the invention before plaintiff applied for his patent, it was

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sufficient in the opinion of the court to invalidate his patent, even though the invention may have originally got into public use through the fraud or misconduct of his brother, to whom he entrusted the knowledge of it. "

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