By JAMES W. SEE, Hamilton, Ohio, Member of the Society.
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.
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.
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.