An invention, to be patented, must be applied for by the actual inventor, and in the absence of acts constituting a transfer, the patent, and all legal ownership in it, and all rights under it, go exclusively to the inventor. In the absence of express or implied contract, a mere employer of the inventor has no rights under the patent. Only contracts or assignments give to the employer, or to anyone else, a license or a partial or entire ownership in the patent. The equity of this may be appreciated by examples. A journeyman carpenter invents an improvement in chronometer escapements and patents it. The man who owns the carpenter shop has no shadow of claim on or under this patent. Again, the carpenter invents and patents an improvement in jack planes. The shop owner has no rights in or under the patent. Again, the carpenter invents an improvement in window frames, and the shop owner has no rights. He has no right even to make the patented window frame without license. The shop owner, in merely employing the carpenter, acquires no rights to the carpenter's patented inventions. But there are cases in which an implied license would go to the shop owner. For instance, if the carpenter was employed on the mutual understanding that he was particularly ingenious in devising carpenter work, and capable of improving upon the products of the shop; and if in the course of his work he devised a new and patentable window frame, and developed it in connection with his employment and at the expense of his employer; and if the new frames were made by the employer without protest from the carpenter, the carpenter could, of course, patent the new frame, but he could not oust the employer in his right to continue making the invention, for it would be held that the employer had acquired an implied license.

If he could not use it, then he would not be getting the very advantage for which he employed this particular carpenter, and if he did get that right, he would be getting all that he employed the carpenter for, and that right would not be at all lessened by the fact that the carpenter had a patent under which he could license other people. The patent does not constitute the right to make or use or sell, for such right is enjoyed without a patent. The patent constitutes the "exclusive" right to make, sell or use, and this the shop owner does not get unless he specially bargains for it. Implied licenses stand on delicate ground, and where men employ people of ingenious talent, with the understanding that the results of such talent developed during the employment shall inure to the benefit of the employer, there is only one safeguard, and that is to found the employment on a contract unmistakably setting forth the understanding.

NEW PURPOSE.

If an invention is old, it is old regardless of any new purpose to which it is put. It is no invention to put a machine to a new use. If an inventor contrives a meritorious machine for the production of coins or medals, his invention is lacking in novelty if it should appear that such a machine had before been designed as a soap press, and this fact is not altered by any merely structural or formal difference, such as difference in power or strength, due to the difference in duty. The invention resides in the machine and not in the use of it. If the soap press is covered by an existing patent, that patent is infringed by a machine embodying that invention, regardless of whether the infringing machine be used for pressing soap or silver. And it is no invention to discover some new capacity in an old invention. An inventor is entitled to all the capacities of his invention.

COMBINATION CLAIMS.

Many people have an erroneous notion regarding patent claims, and consider the expression "combination" as an element of weakness. The fact is, that all mechanical claims that are good for anything are combination claims. No claim for an individual mechanical element has come under my notice for many years and I doubt if a new mechanical element has been lately invented. All claims resolve themselves into combinations, whether so expressed or not. Combination does not necessarily imply separateness of elements. The improved carpet tack is after all but a peculiar combination of body and head and barbs. The erroneous public contempt for combination claims is based upon the legal maxim, that if you break the combination you avoid the claim and escape infringement, and this legal maxim should be well understood in formulating the claims. If the claim calls for five elements and the competitor can omit one of the elements, he escapes infringement. Therefore, the claim is good only when it recites no elements which are not essential.

Many inventors labor under the delusion that a claim is strong in proportion to the extent of its array of elements. The exact opposite is the truth, and that claim is the strongest which recites the fewest number of elements. It is the duty of the inventor to analyze his invention and know what is and what is not essential to its realization. It is the duty of the patent solicitor to sift out the essential from the non-essential, and to draft claims covering broad combinations involving only essential elements. Sometimes the inventor will help him in this matter, but quite as often he will, through ignorance, hinder him and combat him. The invention having been carefully analyzed and reduced to its prime factors, and the claim having been provided to comprise a combination involving no element which is not essential to a realization of the invention, a new and more important question arises. The elements have been recited in terms fitted to the example of the invention thus far developed. The combination is broadly stated, but the terms of the elements are limiting. Cannot some ingenious infringer realize the invention by a similar combination escaping the literalism of the terms of the elements? It is at this stage that the claim must be carefully studied. The inventor, or some one for him, must assume the position of a pirate, and set his wits to work to contrive an organization realizing the invention but escaping the terms of the proposed claim. When such an escaping device is schemed out, then the defect in the claim is developed and the claim must be redrawn. In this way every possible escape must be studied so as to secure to the inventor adequate protection for his invention. Solicitors find it difficult to get inventors to do or consider this matter properly, inventors being too often inclined to disparage alternative constructions, the matter being largely one of sentiment founded on the love of offspring.

The wise inventor will recognize the fact that the patent which he proposes to get is the deed to valuable property; that the object of the deed is not to permit him to enter upon the property, for he can do that without the deed, but that it is to keep strangers from entering upon the property; that he desires to enjoy his invention without unauthorized competition; that when the property begins to yield profit it will invite competition; that competitors may make machines worse than or as good as or better than his; and that he can get adequate protection only in a claim which would bar poorer as well as better machines embodying his invention. Briefly, then, all good claims for mechanism are combination claims; the fewer the elements recited, the stronger will the claim be; non-essential elements weaken or destroy the claim; the claim should not be considered satisfactory so long as a way is seen for the escape of the ingenious pirate.

COMBINATIONS AND AGGREGATIONS.

A given association of mechanical elements may be entirely new, but it does not follow that it forms a patentable association, for not all new things are patentable. If the new association is a combination, it is patentable, but if it is a mere aggregation, it is unpatentable. An association may be new and still all of its separate elements may be old, the act of invention lying in the fact that the elements have been so associated with relation to each other as to bring about an improved result, or an improved means for an old result. All new machines are, after all, composed of old elements. The law presupposes that the elements are old, and that the invention resides in the peculiar association of them. If we take a given mechanical element, recognized as having had a certain capacity, and if we then similarly take some other mechanical element and employ it only for its previously recognized capacity, and if we then add the third element for its recognized capacity, we have in the end only an association of three elements each performing its well recognized individual office, and the entire association performing only the sum of the recognized individual elements. Such an association is a mere aggregation, a mere adding together of elements, without making the sum of the results any greater in the association than it was in the individual elements. It is simply adding two to one and getting three as a result. An aggregation is unpatentable. As an illustration, a heavy marble statue of Jupiter is found in the parlor and difficult to move. Ordinary casters are put under its pedestal and it becomes easier to move. Modern anti-friction two-wheeled casters are substituted for the commoner casters, and the statue becomes still easier to move. Casters were never before associated with a statue of Jupiter. Here is a new association, but it is a mere aggregation. The statue of Jupiter has been unmodified by the presence of the casters, and the casters perform precisely the same under the statue of Jupiter that they did under the bedstead. There is no combined result, and there is no patentable combination.

But if an inventor takes a given mechanical element for the purpose of its well recognized capacity, and then associates with it another mechanical element for its recognized capacity, but so associates the two elements that one has a modifying effect upon the capacity of the other element, then the association will be capable of a result greater than the sum of the results for the individual elements. This excessive result is not due to the individual elements, but to the combination of them. One has been added to one and a sum greater than two has been secured. The modification of result may be due merely to the bringing of the two elements together, so that they may mutually act upon each other, or it may be due to the manner or means by which they are joined. In a patentable combination the separate elements mutually act upon each other to effect a modification of their previous individual results, and secure a conjoint result greater than the sum of the individual results. The elements of a combination need not act simultaneously; they may act successively, or some may act without motion. As an illustration, assume an old watch in which there was a stem for setting the hands, and assume another old watch with a stem for winding the spring. If an inventor should make a watch, and provide it with the two stems, he would have only an aggregation. But if he employed but one stem, and so located it that it could be used at will for setting the hands or for winding the spring, then he would have produced a combination. The particular instance just given is not a case of the same number of elements, producing a result in excess of the individual results of the separate elements, but is rather a case of a lesser number of elements, producing a combination result equal to the sum of the previous results of a greater number of elements. A better example would perhaps be a new watch with its two old stems so related that either could be used for setting the hands or for winding the spring.

GENERA AND SPECIES.

An inventor, being the first to produce a given organization, and desiring to patent it, may see at once a patentable variation on the device. In other words, he makes two machines patentably different, but both embodying his main invention. He drafts his broad patent claim to cover both machines. In his patent he must illustrate his invention, and he accordingly shows in the drawings the preferred machine. The two machines represent two species of his generic invention, and for illustration he selects the preferable species. He drafts his generic claim to cover both species, and he follows this with a specific claim relating to the selected species. The question might be asked, If the broad generic claim covers the selected and all other species, why bother with the specific claim, why not rest on the generic claim? The answer is that it might in the future develop that the genus was old, and that the generic claim was invalid, while the specific claim would still be good. The infringer of the specific claim may thus be held notwithstanding the generic claim becomes void. But the inventor cannot claim his second species in his patent. He can claim the genus, and he can claim one species under that genus, but all other species must be covered in separate patents. It is even unwise to illustrate alternative species in a patent for, in case, of litigation, some one of the alternative species might prove to be old. This would have the effect, of course, to destroy the generic claim, but it might possibly have the effect of damaging the specific claim if it should appear that the specific claim was after all merely for a modification as distinguished from a distinct species. Were it not for the danger of broad generic claims being rendered void by discovered anticipations, there would be no need for claiming species, but in view of such possibility it is important to claim one species in the generic patent, and to protect alternative species by other patents.

COMBINATION AND SUB-COMBINATION.

A given machine capable of a given ultimate result having been invented, a claim may be drawn to cover the combination of elements comprised in the machine. Such claim will cover the machine as a whole. But, the fact being recognized that many machines are, after all, composed of a series of sub-machines, and that these sub-machines, in turn, are composed of certain combinations of elements, and that within these sub-machines there are still minor combinations of elements capable of producing useful mechanical results, and that the sub-machines, or some of the subordinate combinations of elements within the sub-machines, might be capable of utilization in other situations than that comprehended by the main machine, it becomes important that the inventor be protected regarding the sub-machines and the minor useful combinations. Claims may be drawn for the combination constituting the main machine, other claims may be drawn for the combinations constituting the operative sub-machines, and claims may be drawn covering the minor useful combinations of elements found within the sub-machines. Each claimed combination must be operative. But secondary claims cannot be made for sub-machines or sub-combinations which are for divisional matter or matter which should be made the subject of separate patents.

MECHANICAL EQUIVALENTS.

Where an inventor produces a new mechanical device for the production of a certain result, he can often see in advance that various modifications of it can be made to bring about the same result, and even if he does not see it he may in the future find competitors getting at the result by a different construction. He analyzes the competing structure, and determines that "it is the same thing only different," and wonders what the legal doctrine of mechanical equivalents means, and asks if he is not entitled to the benefits of that doctrine, so that his patent may dominate the competing machine.

An inventor may or may not be entitled to invoke the doctrine of mechanical equivalents, and the doctrine may or may not cause his patent to cover a given fancied infringement. If an inventor is a pioneer in a certain field, and is the first to produce an organization of mechanism by means of which a given result is produced, he is entitled to a claim whose breadth of language is commensurate with the improvement he has wrought in the art. He cannot claim functions or performance, but must limit his claim to mechanism, in other words, to the combination of elements which produces the new result. His claim recites those elements by name. If the new result cannot be produced by any other combination of elements, then, of course, no question will arise regarding infringement. But it may be that a competitor contrives a device having some of the elements of the combination as called for by the claim, the remaining elements being omitted and substitutes provided. The competing device will thus not respond to the language of the claim. But the courts will deal liberally with the claim of the meritorious pioneer inventor, and will apply to it the doctrine of mechanical equivalents, and will hold the claim to be infringed by a combination containing all of the elements recited in the claim, or containing some of them, and mechanical equivalents for the rest of them. Were it not for this liberal doctrine, the pioneer inventor could gather little fruit from his patent, for the patent could be avoided, perhaps, by the mere substitution of a wedge for the screw or lever called for by the claim. The court, having ascertained from the prior art that the inventor is entitled to invoke the doctrine of equivalents, will proceed to ascertain if the substituted elements are real equivalents. A given omitted element will be considered in connection with its substitute element, and if the substitute element is found to be an element acting in substantially the same manner for the production of substantially the same individual result, and if it be found that the prior art has recognized the equivalency of the two individual elements, then the court will say that the substituted element is a mechanical equivalent of the omitted element, and that the two combinations are substantially the same. This reasoning must be applied to each of the omitted elements for which substitutes have been furnished. In this way justice can be done to the pioneer inventor. But the courts, in exercising liberality, cannot do violence to the language of the claim. The infringer will not escape by merely substituting equivalents for recited elements, but he will escape if he omits a recited element and supplies no substitute, for the courts will not read out of a claim an element which the patentee has deliberately put into the claim, and a combination of a less number of elements than that recited in the claim is not the combination called for by the claim.

It is seldom that the exemplifying device of the pioneer inventor is a perfect one. Later developments and improvements by the original patentee, or by others, must be depended on to bring about perfection of structure. Those who improve the structure are as much entitled to patents upon their specific improvements in the device as was the original inventor entitled to his patent for the fundamental device. These improvers are secondary inventors, and are not entitled to invoke the doctrine of mechanical equivalents. The secondary inventor did not bring about a new result, but his patent was for new means for producing the old result. His patent is for this improvement in means, and his claim will be closely scrutinized in court, and he will be held to it, subject only to formal variations in structure. The justice of thus restricting the claim of the secondary inventor must be obvious, in view of the fact that if the doctrine of mechanical equivalents were applied to his claim, then the fundamental device on which he improved would probably infringe upon it, which would be an absurdity. It is thus seen that the pioneer inventor may have a claim so broad in its terms that its terms cannot be escaped; that he may invoke the doctrine of equivalents and have his claim dominate structures not directly responding to the terms of the claim; that the secondary inventor, who improves only the means, is limited to the recited means and cannot invoke the doctrine of equivalents. But within this general view, sight is not to be lost of the fact that secondary inventors may be pioneers within certain limits. They are not the first to produce the broad ultimate result, but they may be pioneers in radically improving interior or sub-results, and they may thus reasonably ask for the application of the doctrine of equivalents to their claims within proper limits. The matter often becomes quite complicated, for it is sometimes difficult to determine as to what is the result in a given machine, for many machines consist, after all, of a combination of subordinate machines. Thus the modern grain-harvesting machine embodies a machine for moving to the place of attack, a machine for cutting the grain, a machine for supporting the grain at the instant of cutting, a machine for receiving the cut grain, a machine for conveying the cut grain to a bindery, a machine for measuring the cut grain into gavels, a machine for compressing the gavel, a machine for applying the band, a machine for tying the band, a machine for discharging the bundle, a machine to receive the bundles and carry them to a place of deposit, and a machine to deposit the accumulated bundles. The machine would be useful with one or more of these sub-machines omitted, and each machine may be capable of performing its own individual results alone or in other associations. Pioneership of invention might apply to the main machine, or to the sub-machines, or even to the sub-organization within the sub-machines.

(To be continued.)[1]

[Continued from SUPPLEMENT, No. 1172, page 18764.]