British United Shoe Machinery Company Ltd v.
copyright 1997, 1998 Donald M. Cameron, Aird & Berlis
At pp. 649-651:
"Originally the King granted monopolies pretty lavishly, but the Courts of Common Law refused to recognise them unless they were in respect of new inventions. The Courts of Common Law held that the King could not monopolise, and give to a particular person, manufactures which were already the trade of inhabitants of the realm. That principle was finally conceded, and in the Statute of Monopolies it was admitted that the monopolies were void excepting under those circumstances. But still the King had the right to grant monopolies for inventions, and availed himself of it, but I regret to say that for the first century the grants were couched in very vague terms. They were usually expressed as being for inventions for doing so and so, and there was little definition of what the invention actually was until about 1700, when a very beneficial change was made. The King granted his monopoly, for a mere name. In this particular case the invention would have been called "Improvements in the manufacture of boots," and the grant of the Patent would be to Mr. Brooks for "Improvements in the manufacture of boots"; and any improvement in the manufacture of boots might be claimed to be the improvement to which the title referred, prior to the change of which I have spoken. But after 1700 in order to protect the public the Crown granted the Patent subject to a condition, and that condition is the foundation of modern Patent law. It was in the form of a proviso obligating the inventor "by an instrument in writing under this hand and seal particularly to describe and ascertain the nature of the said invention, and in what manner the same is to be performed, and cause the same to be enroled within six calendar months". From that time the inventor had to describe and ascertain the nature of the invention, and in what manner the same was to be performed; otherwise his Patent lapsed at the end of six months. The grant was still obtained for the mere title; and the definiteness was obtained by the Specification which was subsequently filed. As Patents became more important, and therefore the rights under Patents were more keenly contested it became obvious that this proviso provided for two very different things, the nature of the invention - and very little thought shews that this means the delimitation of the invention - and the manner in which the same is to be performed. The first was necessary to define the monopoly and the second was necessary to secure that the public was not defrauded by the patentee, because the consideration for granting a monopoly for 14 years is the free use by the public of the invention at the end of two things - the delimitation of the invention, and full practical directions how to use it - are in their nature almost antagonistic. As it is the duty of the inventor to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process, quantities and times which are the best he knows. But it would be very cruel to hold him to the invention when he carried out only with those best quantities and times, because a person could then take his invention in substance if he did not take it in the quite the best way, and the value of the grant would be practically nothing. Hence inventors, in the own protection took to introducing into their Specifications language intended to distinguish between that which was there for the practical information of the public, and that which was there for the delimitation of the invention. Correct delimitation was of the greatest possible importance to the inventor, because if his Patent covered something which was old the Patent was wholly bad. At the same time there was the danger of confining himself to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it in its best and therefore in a very special form. Out of that has arisen the practice, which originally was perfectly optional of having a separate part of the Specification primarily designed for delimitation. That is what we call the Claim.
But Claims were by no means universal in the olden times, and even when used the Claims were extraordinarily general - usually a mere statement that the Patentee did not tie himself to the particular details; and I am not surprised that learned Judges such as Lord Ellenborough, in the case of Macfarlane v. Price (1 Webs 74) having one of those old Specifications before him, should say - "The public cannot tell from this what they may do, and what they are not to do; there is no way of finding out what is new and what is old." Take for example a Patent for a manufacturing process such as tanning. When you found a Patentee describing a long process of tanning, you could not believe that what he meant was that he claimed that process only when carried out precisely as described in every particular, most of which were probably descriptions of the ordinary process used in tanning. You must believe that there was some particular step in it which he claimed to have invented, and which he wanted to protect, and if he did not in some way indicate what that step was the Courts could not believe, on the one hand, that he meant to claim the whole thing and nothing but the whole thing, and, on the other hand, could not tell which was the exceptional thing, because the Specification did not enable them to do it. No wonder they said that he had not distinguished what was old from what was new, and that therefore his Patent was invalid. The real fact of the case was that he had not delimited his invention. It was in times like those that this phrase "distinguishing old from new" came up. But those times were very different from the present when Claims are universally used and indeed are obligatory, and if I were to sum up my criticism of the point which Mr. Terrell seeks to make I should say that a man must distinguish what is old from what is new by his Claim, but he has not got to distinguish what is old and what is new in his Claim. If the combination which he has claimed, and for which he asks a monopoly, is novel, that is sufficient. There is no obligation to go further, and to state why it is novel, or what in it is novel."
At pp. 651-652:
"A patentee often works solitarily; he has very little idea of what others are doing, and, I think I may say, that in the enormous majority of instances, if not universally, he has no complete knowledge of what has been done by others in connection with the matter on which he is working. The inventive acts, by which he arrives at the invention for which he finally obtains protection, may be inventive acts, which have started far behind the level of public knowledge at the time, and much of his work, truly inventive so far as he is concerned, has been to reinvent that which others, without his knowledge, have invented. I can appeal to my own experience in saying that an inventor is generally startled to find, when there comes a patent action, that prior Specifications are produced which approach closely to his invention and of the existence of which he had not the very slightest idea. The consequence is that the inventive act of the inventor can have no relevance or effect; it is a thing which depends on this knowledge of what others had done. Then, are we to say that he is to state what would have been the inventive act, supposing him to know the whole knowledge of the world. Just consider for a moment what an impossible burden that would be to put upon patentees: that they must correctly know the whole knowledge of the world, much of which may be practice or user by members of the public but not generally known; for such a user is just as much a bar to a step being inventive as a printed publication would be. Of course if his ignorance has led him to claim something which is not novel he has to take the penalty. That is necessary. He has chosen at his own risk to ask for and take a monopoly as against the public, and the consequence is, that if, which the best of faith, he has asked for too much he must suffer for it. But to say that he must also ascertain, under the penalty of his Patent being bad, everything that preceded his invention, every approach for every side that persons have made to it, and must correctly indicate the little step which he has made in addition to these, most of which he never knew, would be to require something of him which would be perfectly idle, so far as regards utility to the public, and grossly unjust so as the patentee is concerned. I say more. I say it is an absolutely impossible task, because in almost all cases these inventions have been approached from many sides."
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