James Love Hopkins.

The law of patents and patent practice in the Patent office and the federal courts, with rules and forms (Volume 1) online

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THE LIBRARY

OF

THE UNIVERSITY

OF CALIFORNIA

LOS ANGELES

SCHOOL OF LAW



THE

LAW OF PATENTS

AND

PATENT PRACTICE IN THE PATENT OFFICE
AND THE FEDERAL COURTS

WITH

RULES AND FORMS



BY

JAMES LOVE HOPKINS

OF THE

BAR OF THE SUPREME COURT OF THE UNITED STATES.

AUTHOR OF HOPKINS ON UNFAIR TRADE AND HOPKINS

ON TRADEMARKS, AND ANNOTATOR OF

HOPKINS' JUDICIAL CODE.



IN TWO VOLUMES



VOLUME I



1911

CALLAGHAN & COMPANY
CHICAGO



T

1311



COPYRIGHT
1911



CALLAGHAN & COMPANY



AUTHOR'S NOTE.

The evolution of invention is a subject whose his-
tory will never be written, for its genesis is pre-historie.
It may, indeed, antedate man, for in the darkness before
his advent his predecessors may have fashioned the first
tools of industry and the first weapons of warfare. The
first stone-axe surely involved invention, and there was
neither judge, lawyer or expert to assert that its pro-
duction was merely the result of the exercise of me-
chanical skill.

The invention of the chisel, the spade, the lever, the
wheel (doubtless a section of tree-trunk), the wheel-bar-
row, the hour-glass, the sun-dial, the first harnessing of
the draft-animal — what a wonderful history is here,
never to be recorded, of matchless brain-feats performed
by nameless primeval man.

Necessity was the mother of all these first great in-
ventions; and the inventors were doubtless as well re-
warded as some of those of more modern times. For the
inventor has ever been the true soldier of fortune, wrest-
ing his invention out of the unknown by brain-ordeal,
and then getting small, or great, or no reward from
society for what he has done ; the amount of his reward
usually having no relation whatever to the value of his
invention.

To revert to those first inventors (and bearing in
mind that long centuries were to pass before the word
''first" would be incorporated in a patent statute), by
imagining their deeds, when there was no prior art, the
student may gain at once a comprehension of what effect
must be given the prior art in weighing invention.

What of the factor of individuality in invention?
Is the inventor nothing more than an incident in the on-
ward progress of society? Is invention something bound

in



G6V?15



IV Author's Note.



to be accomplished? Are Morse, Whitney, Edison,
merely the inventors of that which was bound to be in-
vented, if not by them, by some unnamed and unknown
other!

These are questions of rare fascination to the phi-
losophical mind. Ask yourself boldly the question;
without Edison, would present-day science be loser?
The riddle of the Sphinx, the mystery of the Man with
the Iron Mask, are no more difficult of solution.

Yet we find one of the best thinkers of all time an-
swering the question with that promptness and emphasis
which predominate his writings.

''It was long disputed whether the honor of invent-
ing the method of Fluxions belonged to Newton or to
Leibnitz. It is now generally allowed that these great
men made the same discovery at the same time. Mathe-
matical science, indeed, had then reached such a point
that, if neither of them had ever existed, the principle
must inevitably have occurred to some person within a
few years. So in our own time the doctrine of rent, now
universally received by political economists, was pro-
pounded, almost at the same moment, by two writers un-
connected with each other. Preceding speculators had
long been blundering round about it; and it could not
possibly have been missed much longer by the most
heedless inquirer. We are inclined to think that, with
respect to every great addition which has been made to
the stock of human knowledge, the case has been similar ;
that without Copernicus we should have been Coperni-
cans, — that without Columbus, America would have been
discovered, — that without Locke we should have pos-
sessed a just theory of the origin of human ideas. So-
ciety indeed has its great men and its little men, as the
earth has its mountains and its valleys. But the in-
equalities of intellect, like the inequalities of the surface
of our globe, bear so small a proportion to the mass.



Authok's Note.



that, in calculating its great revolutions, they may safely
be neglected. The sun illuminates the hills, while it is
still below the horizon; and truth is discovered by the
highest minds a little before it becomes manifest to the
multitude. This is the extent of their superiority.
They are first to catch and reflect a light, which, without
their assistance, must, in a short time, be visible to those
who are far behind them.''^

Whether this philosophical theory be sound or not,
it is certainly pernicious. Any philosophy which belit-
tles the importance of the individual, and which holds
out to the individual the belief that if he does not con-
tribute to society the best work of which he is capable,
it is a matter of indifference, because some one else is
certain to do, as well or better, the work that he might
have done, is inherently vicious.

In contrast with the fatalistic theory which we have
just considered, a typical American thinker has given
us the following:

''At the close of the thirteenth century the human
intellect awoke from its sleep. The Monk of Pisa who
invented spectacles— a most divine invention which gave
sight to the blind— may be said, without any exaggera-
tion, to have furnished eyes to the soul as well as the
body. Shall we ascribe too much importance to this in-
vention, if we impute to it the effect of drawing men's
thoughts from the crudities of the metaphysical dogmas
of the schools, to an investigation of the eternal truth
of nature? It led the way to the bright career of dis-
covery and invention. The magnetic needle came into
common use, and the mariner, trusting to this mysteri-
ous guide, boldly crossed the broadest seas ; the ships of
the enterprising Venetians, passing beyond the utmost
boundary of geographical knowledge, brought home the

1. Maeaulay; Essay on John Dryden.



VI Author's Note.



strange story of the discovery of Greenland and its
desolate inhabitants. The lucubrations of the alchem-
ists, too, were about to develop a capital result, not, in-
deed, the making of gold, but a result whose effect was
to destroy forever the distinction of physical power ; the
savage was no longer to triumph over the civilized man,
nor were the works of art or of science ever again to be
endangered by an irruption of ignorant barbarians.
The power of man, his mere physical power, was in-
definitely exalted, and the force which nature had denied
him in making him one of the weakest of creatures was
compensated by science more than a thousandfold when
she gave him gunpowder. To this period, too, we are to
refer another invention of vast benefit, — the mode of
consuming pit coal, — an invention which has exercised
an immense influence over the condition of nations, and
to which the country from whence we all draw our de-
scent mainly owes her position in arts and arms.

''Next came the 'Great Epoch.' Gunpowder had
given to man a kind of earthly omnipotence; printing-
was to give his works immortality, to diffuse throughout
all the ramifications of society the knowledge that had
been hoarded up by a few. No more might the philoso-
pher fear lest his labors, in the conflicting interests of
nations or passions of party, should be lost. Civilized
man could spread out and perpetuate his intellectual
productions. If there be any great landmark in the his-
tory of the earth — anything that points out the distinc-
tive character of one age from another, surely it is to
be met with in these great discoveries. We are not to
suppose that men now possess more ability than at
earlier ages. At a remote period, the Chaldeans had
discovered the true system of the world and had built up
theories which are now being confirmed. They wanted,
however, the physical powers to disseminate their know-
ledge, and to protect themselves from the destruction



Author's Note. vii



that menaced them from more ignorant nations. Be-
fore the invention of printing and gunpowder, the world's
history was a perpetual squabble of one prince with an-
other, one nation with its rival. With a few exceptions,
its philosophy was a vain show, a thing not applicable to
the comforts or purposes of life. Notions of military
glory made conquest the end of human ambition and of
human happiness; and he who had murdered most, and
burned most, and ruined most, and pillaged most, was
the greatest man ; it was a conquest of man over his fel-
low, a conquest not less disgraceful to the vanquished
than to the victor. Instead of subduing nature, and
thereby raising the standard of joower and wisdom, all
the bad passions that can be engendered in the breast
of mortals bore sway, and rapine and murder required
no apology, provided the scale on which they were car-
ried was sufficiently large. How greatly damaged was
the world at the epoch of which I speak; men began to
find out that there were ways to be powerful without
the destruction of their rivals, and that to conquer na-
ture with her own weapons was the only mode to be truly
great. And now for awhile the results of successful ex-
periment followed each other with rapidity, not only in
those giant discoveries which have regenerated the world,
but also in the arts of peace, — the arts that adorn civil-
ized life. The construction of maps and charts which
was introduced tended in no small degree to hasten the
discovery of America. Engraving on copper gave a
new impulse to painting, and secured faithful represent-
ations of natural objects where words and printing
might fail to describe them. Navigation felt the great
improvement that astronomy, magnetism, geography,
and printing had bestowed. Vasco de Gama doubled the
Cape of Good Hope and anchored his ships in the Indian
seas; and to Castile and Leon, Columbus gave a new
world.



VIII Authob's Note.

''The posterity of men who had thus signalized and
adorned their age did them no disgrace. Magellan, a
Portuguese aspiring to the fame of Columbus, sailed
through the straits that still bear his name ! and Europe
saw with astonishment ships which had circumnavigated
the world. The telescope was produced — watches were
first made — the variation of the compass assigned — and
improvement extended even to the minor arts; skewers
which had been used by ladies were banished, and the
common brass pin substituted in their stead. It is true
that whatever improvements take place in the condition
of men originate with themselves; and all governments
have been found either to oppose, or only to yield slow-
ly to them. For teaching the true system of the world
— for the discovery of the secondary planets, the moons
of Jupiter — for showing spots on the sun, the holy in-
quisition laid violent hands on Galileo, an immortal man ;
and the same government that was forced by the times
to establish in England by act of Parliament the 'Book
of Common Prayer,' caused to be burned by the common
hangman the books of astronomy and geography, be-
cause they were 'infected with magic' But the perse-
cutions which were endured by philosophers from the
malice of princes could neither rein nor stop the pro-
gress of knowledge. Decimal arithmetic with all its ad-
vantages was promulgated, and soon after a Scotch
baron invented logarithms; the thermometer made its
appearance in Holland; and that maritime spirit which
had doubled the capes of South Africa and South
America already sought a northwest passage to India
and projected a visit to the North Pole. Harvey dis-
covered the circulation of the blood, — a discovery that
has done more for the advancement of medical science
than almost all that preceded it. Toricelli invented the
barometer, and proved that air possessed weight; Huy-
gens invented the pendulum clock; Otto Guerick con-



Author's Note. ix



structed the first air pump, and exposed bodies to a
vacuum. The current of discovery was now fairly in mo-
tion — scientific associations were springing up in every
country ; and had things still gone on even in their usual
channel, the accumulation of knowledge would have been
great. But a propitious event occurred — for at the close
of 1642 Isaac Newton was born, a man whom God made
to comprehend his works. "^

It is our own conclusion that the history of invention
is composed of the history of individual inventions, and
the efforts of individual inventors. In it, each inventor
has a place, large or small. The whole is the aggregate
of the atoms composing it. Many have lived and died in
comparative obscurity whose work was indispensable to
those who followed them in the arts in which they labor-
ed. Witness, what Dolbear did for wireless, and Lang-
ley for the aeroplane.

The complexity of modern life goes parallel with the
complexity of our inventions, and the complexity of the
system of patent laws and their administration. If a
legal text-writer can lend any aid to the orderly admin-
istration of the patent laws he is a benefactor to the
users as well as the originators of inventions. In this
spirit this work was undertaken.

The insistence of our English brethren that our Pat-
ent System is directly derived from their own, and theirs
in turn from the Statute of Monopolies, is plausible, but
scarcely convincing in the light of the differences be-
tween our systems, and in the light of the abuses which
solely gave rise to the Statute of Monopolies, and which
it was solely designed to prevent. That statute has been
glorified by judicial construction until it is generally
recognized as "one of the constitutional landmarks of
British liberty, like the Petition of Eight, the Habeas

1. Draper; Lecture on "The Development of Civilization in Eu-
rope" (delivered at Hampden-Sidney College, Virginia, 1837).



Author's Note.



Corpus Act, and other great constitutional Acts of Par-
liament."^ Tlie Case of Monopolies, 11 Coke, 84 h,
illuminates it, and there is no under-estimating its value
in the upbuilding of the British Constitution. But the
suppression of offensive monopolies is a very different
thing from laying the foundation of a system for the
protection of invention, in the sense in which we use the
word ''invention." With this distinction, and in the
light of what progress Great Britain has made by the
embodiment of our ideas in her system of patent laws
and administration, we are prone to insist that the
United States has led always since 1790, in the legal
recognition of the inventor, and in the delicate adjust-
ment of the respective rights of the inventor and the
public.

Great Britain was undoubtedly first in recognizing
invention as worthy of monopoly, aeons after the Stone
Age. Her colonies in America were destined to rebel
and grow into the greatest of all republics, the home
of the greatest inventors of all time. It is the unfortu-
nate fact that while the colonists were heirs by birth to
the great body of the cormnon-law, there was no common-
law of letters patent for inventions. It is unfortunate
that any department of the law should be based solely
upon statute. The constant jeopardy to which any sys-
tem of law is exposed when it is so founded is a positive
calamity whose seriousness is in direct ratio to the im-
portance of its subject matter.

Our brilliant contemporary of the English bar, Augus-
tine Birrell, in his lectures on Copyright, has not minced
his words in dealing with those Parliamentary word-
jugglings that have so embarrassed the development of
the law of Copyright.



1. Butchers' Union Slaughter House, etc. Co. v. Crescent City, etc.
Co.. Ill U. S. 746, 762, 28 L. Ed. 585, 588.



Authob's Note. xi



''In England the question (of perpetual copyright)
was complicated, and, indeed, butchered, by an Act of
Parliament — the first copyright statute anywhere to be
found — the 8th of Good Queen Anne. * * * How annoy-
ing, how distressing, to have evolution artificially
arrested and so interesting a question stifled by an
ignorant Legislature, set in motion not by an irate
populace clamouring for cheap books (as a generation
later they were to clamour for cheap gin), but by the
authors and their proprietors, the booksellers." ^

Turning to another of Mr. Birrell's writings— his
address upon the late Walter Bagehot — we find this
epigram which it will richly repay every patent lawyer
to think over:

''He had mastered the niceties of Conveyancing in the
chambers of Sir Charles Hall, and the mysteries of
Special Pleading in those of Mr. Justice Quain ; and no
sooner had he mastered these niceties and mysteries
than they were all abolished by acts of Parliament. " ^
The ability to fairly and uniformly judge the question
of invention is possibly the rarest judicial quality. In
the United States there are very many I ederal judges :
of them, a mere handful ever practiced in patent causes
before their elevation to the bench. It seems probable
that^ active work at the bar in patent causes is a
detriment, rather than an advantage to the individual
as regards his ability to weigh fairly, and uniformly,
the question of invention. That faculty seems to be
inborn, and not susceptible of cultivation save by actual
judicial experience, and that experience seems to be
worthless when the individual commences his judicial
career with what may be termed color-blindness as to
invention. This comparison is deliberately made. Just
as color-blindness does not imply that the individual who

1. Birrcll, Copyrioht in Books, pp. 19, 22.

2. Birrell, Essays and Addresses, p. 138.



xn Author's Note.



is color-blind is defective in either of his other senses,
so we have preserved in the reports the evidence as to
many a judge that he was capable in weighing evidence
on any subject other than that of invention. Passing
from the individual to groups of individuals, we find that
the shifting of the personnel of our United States Circuit
Courts of Appeals produces remarkable variations in
their ability to pass fairly and imiformly upon the ques-
tion of invention. The fear that it is impossible to adopt
a method of designation which will produce a fair
patent court of last resort is at the root of the opposition
to the creation of such a court. Its opponents argue
that it is better to ''bear those ills we have than fly to
others that we know not of. ' ' The answer to this argu-
ment is given in the text. We advert to this question
here only by way of pointing out that, however complete
the general rules of patent law may become, and how-
ever firmly its principles may be settled, in its adminis-
tration, either in the Patent Office or in the courts it is
not, and never can become, an exact science. As Herbert
Spencer has said, "We find that much of what we call
science is not exact, and that some of it, as physiology,
can never become exact. ' ' ^

The absence of any definition of invention would seem,
as a matter of first impression at least, to be an obstacle
in the way of the scientific development of the law of
patents. Yet to those who have long considered the
question, the absence of definition seems inevitable and
final. Mr. Fletcher Moulton, when at the zenith of his
leadership of the Patent Bar of England, said ''it would
seem to be necessary to fix upon some definition of inven-
tion, but this has never been done, and in my opinion no
definition of invention can be found which is of the
slightest assistance to anyone in a case of difficulty. * * *



1. Essay, "The Genesis of Science,"



Author's Note. xni



When you approach the dividing line it is so impossible
to get a test that it becomes, more or less, a matter of
personal opinion. ' ' - His conclusion is amply sustained
by the illustrations of conflicting decisions in the several
Federal circuits which are given in the present text.
The practical result of this situation is to make the
defense of want of invention omnipresent in patent litiga-
tion in this country, and it is the writer's experience
that the cases are rare in which counsel for the patent
or for the defense can advise his client, in advance of
the decision of the court of last resort, with any degree
of confidence, what the courts will do with that defense.
That this fact is a strong deterrent to the proper develop-
ment of patent property cannot be denied.

The very uncertainty of patent litigation seems to us
good reason for that independent examination by courts
of concurrent jurisdiction w^hich is always recognized
in theory, even though it is shirked in application. In
a recent per curiam opinion, the Circuit Court of Appeals
of the Second Circuit has said:

*' Although the parties are entitled to the independent
judg-ment of this court, nevertheless the orderly admin-
istration of justice requires that, where a question has
been decided after careful and exhaustive examination
by the Court of Appeals of one circuit, another court of
co-ordinate jurisdiction should not reach a different con-
clusion unless persuaded that the first decision is clearly
wrong. Especially is this true in patent causes, for
otherwise, under our present system, a party may be
punished for an act which on the other side of a dividing
line is perfectly lawful and proper. ' ' ^ We would rather
have it expressed that particularly in patent causes the

2. Presidential Address before the Junior Institution of Civil En-
gineers (1904). *

3. Calculagraph Co. v. Automatic Time Stamp Co., 187 Fed. Rep.
276, C. C. A. .



XIV Author's Note.



co-ordinate court should make a diligent independent ex-
amination, because of the public interest on the one hand
(its right to use what is of common right), and the hold-
ing of a solemn government grant of monopoly, made
after skilled examination of the art, on the other. If
the grant be valid, it should be sustained because of the
consideration (by disclosure) passing from the inventor
to the public. If the grant be void, the people of the
circuit should be protected from paying tribute under
it. The ordinary rule of comity certainly ought not to.
be more rigidly applied in patent cases than in any other,
for the questions of government grant and public right
impose a peculiar duty upon the court which is not ordi-
narily present in litigation between private parties.

The future of invention is limitless. The future of
the patent law will depend for its stability upon the non-
interference of legislation. It is to be hoped that any
new enactments will be characterized by the conservatism
which has marked the progress of the subject of late years.
The judicial development of the subject may be relied
upon with confidence. Every decade has added invalu-
able judicial opinions to the literature of the patent law,
until today the problem of selection has become one of
embarrassment to the text-writer. Some of the most
valuable opinions at our service were written by the nisi
prius court, and occasionally in cases which were re-
versed upon the merits.

Whatever range of usefulness this work may occupy,
it is hoped that it will meet with the approval of the
courts and counsel having to do with patent litigation.
None know as well as they the difficulties of the subject;
none more keenly appreciate the fact that ''the language
of an opinion is an uncertain guide when divorced from
the facts. "1

1. Quarles, J., in Jahn v. ChampaOTP Lumber Co.. 157 Fed. Eep.
414.



Author's Note. xv



In the English literature of this subject there are
frequent references to the dictum of Lord Watson:
^' There are many things which you cannot say are or
are not inventions until you have tried them." The
author's experience has been that the same rule might
be paraphrased with reference to legal text-books. What-
ever the brilliancy of style or clearness of expression, it
must respond to the need of the student or it is valueless.
High finish and symmetrical lines attract the eye to the
edged tool, but the cutting edge must be there. To the
test of shop practice these pages are now committed.

James Love Hopkins.
Central National Bank Building,

St. Louis, Missouri,
September 1st, 1911.



TABLE OF CONTENTS



Pages

Author's note iii-xv

Table of Contents xvii-l

CHAPTER I

INTRODUCTORY AND HISTORICAL

Section Page

1. Letters patent defined 1

2. Letters patent for inventions, and the Statute of

Monopolies 2

3. The constitutional provision 6



Online LibraryJames Love HopkinsThe law of patents and patent practice in the Patent office and the federal courts, with rules and forms (Volume 1) → online text (page 1 of 76)