NEWTON'S London Journal of Arts and Sciences. No. LXXII. (NEW SERIES), DECEMBER 1st, 1860. PROLONGATION OF PATENTS IN THE ENGLISH AND AMERICAN COURTS. THE first day of December, 1860, will long be memorable in the history of patents, by reason of the expiration of one of the most important of these grants that is to be found on the patent rolls. Fourteen years have now passed since the little sewing machine, destined to emancipate that hope-forsaken class so pathetically described in Hood's "Song of the Shirt," was presented to the writer by the inventor's brother, with the object of securing a purchaser of the right to patent the same in this country, and thereby providing funds for the better prosecution of the invention in the United States. That the machine, in its then state, had merits, was evident enough to any one acquainted with the operation of machinery; but that it was capable of effecting what, by some slight modifications, it was ultimately found equal to, no one, at that period, would have anticipated: it will not, therefore, be wondered at that this invention, which has of late met with almost unexampled success, was parted with on easy terms-the inventor being then but a needy mechanic-or that the purchaser for a long time failed to perceive that he had made a most advantageous bargain. Many years were required to establish the value of the English patent, and, indeed, it does not appear that the American patent produced any returns during the first six years of its existence. We do not now refer to the original patent of the sewingmachine, with the view of extolling the merits of Mr. Howe, its ingenious inventor, and much less is our object to prejudice the public against the English patentee of the invention, Mr. Thomas, but we now bring forward the subject in these pages, in order to ascertain whether a practical lesson may not be drawn from the circumstances surrounding this invention, of service to the owners of British patents. In brief, we propose to contrast the treatment which British and American patentees receive under similar although not identical laws. By the patent laws of each country the first and true inventor of any new manufacture may secure to himself the exclusive use of his VOL. XII. 2 T discovery for fourteen years, and if he can show that, during that * See Webster's Reports, Vol. II., p. 4. 1 December 1st, 1860. the invention, it shall be the duty of the Commissioner to renew and extend the patent. But if the principle which governs the enquiry and the decisions of the Courts in both countries be the same, the character of the decisions should agree. Let us see if this be so, and for this purpose we will take the case of the sewing machine patent, for which a renewal was recently sought in both countries, although under somewhat different circumstances; the application for which was abandoned without a hearing in England, while it was prosecuted to success in the United States. According to the rules of the American Patent Office, the applicant has to prepare his statement under five different heads, viz. :-I. Novelty of the invention-embracing the history of its origin and proof of the validity of the patent; II. Utility of the invention-setting forth its special merits; III. Public value of the invention to show the extent of its appreciation by the public, and the gain accruing to the nation from its use; IV. Remuneration for the invention-giving not only the profit, if any, derived from its use, but the causes for the assumed insufficient reward obtained by the inventor; V. Diligence in introducing the invention into use, and explaining the cause, where such exists, of the tardy exercise of the invention by the public. This statement, then, in conformity with the common practice, Mr. Howe, in applying for an extension of his patent, prepared and subscribed to on oath, accompanying it with such documentary evidence as was deemed necessary by his legal advisers to support the various general allegations contained therein. From the able argument of his counsel, Mr. Giffard, who holds a high position in his profession, we are enabled to collect the substance of the evidence on which he relied for substantiating the claim of his client to an extension, in the face of that formidable fact, that the clear receipts from the working of the patent had already exceeded £97,000 (468,632 dollars). It is interesting to follow this argument a little, for it is calculated to clear our minds somewhat on a subject, which, up to the present time, has not been understood in this country, and which it behoves us to consider, before pronouncing, as we are all apt to do, when an inventor has received ample remuneration for his discovery. Mr. Giffard boldly handles the, to us, very staggering fact, that the inventor's gains are £97,000, and shows how small a proportion that bears to the profit derived from the invention by the public. Having set forth the practice of the Court, as evidenced by recent cases in which the ratio between the profit and the public value of the invention was such as to induce the Commissioner to recognize the right of the inventor to an extension, he proceeded to show that, in the case of Mr. Howe, the disproportion was far greater than had hitherto been deemed sufficient to secure the success of the application. Thus, dividing the labour of which the sewing machine was capable, under its several heads, asmen's and boys' clothing-hat and cap manufacture-shirt bosomsshirts-boots-bags-ladies' cloaks and mantillas-satchels, carpet bags, &c.-carriage trimming-upholstery and furnishing, &c.-and taking seven of these heads on which he has evidence to base a calculation, he says "The aggregate of the saving by the sewing-machine, as above shown, amounts to one hundred and three millions seventy-one thousand nine hundred and thirty dollars; and it is to be borne in mind, that this is a saving of only a small portion of the departments in which the machine is used, and in most of these, as mentioned, limited to the City of New York; and it may well be asked here, what saving has the sewing machine accomplished, and what is it destined to accomplish in the whole United States, saying nothing of the entire world ?” After roughly estimating the value of the machine in other branches, and making a large allowance for the improvements suggested by other inventors, he comes back to this sum as the annual saving effected by Howe's invention. In various ways he further tests its pecuniary value, and taking credit for only half the saving manifestly due to the introduction of sewing machines, and dividing this sum by the profit realized by the patentee, he obtains as the result "a saving every year of more than one hundred and three times the amount of all the profits which Howe has ever received. That is, it gives a ratio between profit and value of 103, larger by 63 than was the ratio between profit and, not only the annual but the entire, value in Goodyear's case."* By this course of argument, Mr. Giffard was enabled triumphantly to dispose of the question of sufficient remuneration, and leave the Commissioner of Patents no choice but to extend the grant; for if any disposition had existed on his part to look upon Mr. Howe's realized profits as a sufficient recompense, he could not but feel debarred from thus deciding upon the case in the face of the judgments cited by the learned counsel. Thus, Commissioner Holt, in deciding (June, 1858), on the Goodyear case before mentioned, was reported to have said :"If this process is worth two millions of dollars, the applicant has received but a little more than one-fortieth part of the remuneration which he was entitled to claim." And again, on the application of Thaddeus Hyatt, Commissioner Bishop, (November 4th, 1859,) adopting the same rule, said-" If the amount paid by the public for a The case here referred to was an application for the extension of the late Mr. Charles Goodyear's patent, for vulcanizing india-rubber, in which the value of the invention was shown to be two millions of dollars, and the profit realized, fifty-four thousand seven hundred and thirty-three dollars: the ratio between profit and value being forty. December 1st, 1960. particular improvement, which they consider necessary for them to use, is greater than the benefit derived from it, they have just right to complain, and to protest against a patent therefor. But, if on the other hand, the benefit which the public has received, far outweighs the profits which the inventor has realized, such complaints and protests might be regarded as unjust and unreasonable." Such then being the ascertained practice under the American law, our next point is to consider how it accords with the operation of our own system of prolongation. We have already shown that in principle the English law, as interpreted by Lord Brougham, accords with the judgments of the American Commissioners of Patents, inasmuch as in both countries the fact of the patentee not deriving a benefit to the same extent as the public, constitutes the ground for applying for an extension; but does the practice of the Privy Council bear out the principle of equal distribution, or anything like an equal distribution, of profits between the public and the patentee? If it be so, we must say, that professional men engaged in promoting or opposing the extension of patents have failed hitherto to discern the working of this or any other intelligible principle in the decisions of the Court; and that a considerable amount of uncertainty hangs over these cases may well be inferred—first, from the small number of petitions entered for extension since the passing of the Act in 1835; and secondly, from not a moiety of the petitions being granted. Up to the present time, we find there have been 118 applications made for prolongation of patents, of which only fifty-seven were granted; the remainder being either dismissed, from presenting no sufficient grounds for an extension, or waiting to be heard, or withdrawn before a hearing was appointed, from the hopelessness of substantiating a case for extension, in the face of an organized or determined opposition. Thus, Mr. Thomas's petition for a prolongatiou of the sewing machine patent, although grounded, like that of Mr. Howe, on insufficient remuneration, and doubtless, with equally good reason, was wisely withdrawn, because the most experienced practitioner before the Privy Council would certainly have failed to discover a precedent on which to base a hope of success. A reference to the decisions which proved favourable to patentees will at once establish our position. Taking them in chonological order, we find Galloway's patent (paddle-wheel), extended in 1843, for five years; the losses of the petitioner in respect of the patent having amounted to £8000. In the same year, Wright's patent, under which the Minton tiles are made, was extended for seven years, the patentee having expended between £700 and £800, and received but £100 as royalty. Then we come to Derosne's application above mentioned, where a case of profit had to be dealt with. The invention was, however, proved, to the satisfaction of |