STORY, Circuit Justice,
overruled both points, and said:
Under our patent laws, no person, who is not at once the first, as well as the original, inventor, by whom the invention has been perfected and put into actual use, is entitled to a patent. A subsequent inventor, although an original inventor, is not entitled to any patent. If the invention is perfected, and put into actual use by the first and original inventor, it is of no consequence, whether the invention is extensively known or used, or whether the knowledge or use thereof is limited to a few persons, or even to the first inventor himself. It is sufficient, that he is the first inventor, to entitle him to a patent; and no subsequent inventor has a right to deprive him of the right to use his own prior invention. The language of the patent act of 1830 (chapter 357, §§ 6, 15) and of the patent act of 1837 (chapter 45, § 9) fully establishes this construction; and, indeed, this has been the habitual, if not invariable, interpretation of all our patent acts from the origin of the government. See Phil. Pat. (Ed. 1837) pp. 05, GO, c. 6, § 4; Woodcock v. Parker [Case No. 17,971]; Gray v. James [Id. 5,718]; Rutgen v. Kanowers [Id. 11,710]; Evans v. Eaton, 3 Wheat. [16 U. S.] 454; Pennock v. Dialogue, 2 Pet. [27 U. S.] 1, 16, 20, 22. The language of the act of 1S30 (chapter 357, § 0), “not known or used by oth-[438] era before liis or their discovery thereof," has never been supposed to vary this construction, or to require, that the invention should he known to more than one person, if it has been put into actual, practical use. The patent a.ct of 1700 [1 Stat. 109] used the language, "not before known or used,” without any adjunct (Act 1790, c. 34, § 1); and the act of 1793 used the language “not known or used before the application” (Act 1793, c. .“>3, S 1); and the latter act (section 0) also made it a good matter of defence, that the thing patented “had been in use” anterior to the supposed discovery of the patentee. It early became a question in our courts, whether a use by the patentee himself before his application for a patent, would not deprive him of his right to a patent. That question was settled in the negative; and the language of tlie first, section of the act of 1793 (chapter 33) was construed to be qualified and limited in its meaning by that of the sixth section; and the words “not known or used before the application,” in the first section, were held to mean, not known or used by the public before the application. See Morris v. Huntingdon [Case Mo. 9,S31]; Pennock v. Dialogue, 2 Pot. [27 U. S.] 1, 18-22; Mellus v. Silsboe [Case No. 9,404], The case of Pennock v. Dialogue, 2 Pet. [27 U. S.] 1, 18-22, is a direct authority to this effect. And it was probably in reference to that very decision, that the words “by others” were added in the act of 1S36 (chapter 357, § <>) by way of explanation of the doubt formerly entertained on the subject. The words “by others" were not designed to denote a plurality of persons, by whom the use should be, but to show, that the use should be by some oilier person or persons, than the patentee. It would be strange, indeed, if because the first inventor would not permit other persons to know his invention, or to use it, he should thereby bo deprived of his right to obtain a patent, and it. should devolve upon a subsequent inventor merely from his ignorance of any prior invention or prior use; or that a subsequent inventor should be entitled to a patent., notwithstanding a prior knowledge or use of the invention by one person, and yet should be deprived of it by a like knowledge or use of it by two persons. In Pennock v. Dialogue, 2 ret. [27 U. S.] 1, 23, the supreme court expressly held, that the sixth section of the patent act of 1793 (chapter 05) then in force, (and on this point the law has not undergone any alteration,) “gives the right to the first and true inventor, and to him only; if known or used before his supposed discovery, he is not the first, although he may be the true inventor; and that is the case, to which the clause looks.”
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STORY, Circuit Justice,
overruled both points, and said:
Under our patent laws, no person, who is not at once the first, as well as the original, inventor, by whom the invention has been perfected and put into actual use, is entitled to a patent. A subsequent inventor, although an original inventor, is not entitled to any patent. If the invention is perfected, and put into actual use by the first and original inventor, it is of no consequence, whether the invention is extensively known or used, or whether the knowledge or use thereof is limited to a few persons, or even to the first inventor himself. It is sufficient, that he is the first inventor, to entitle him to a patent; and no subsequent inventor has a right to deprive him of the right to use his own prior invention. The language of the patent act of 1830 (chapter 357, §§ 6, 15) and of the patent act of 1837 (chapter 45, § 9) fully establishes this construction; and, indeed, this has been the habitual, if not invariable, interpretation of all our patent acts from the origin of the government. See Phil. Pat. (Ed. 1837) pp. 05, GO, c. 6, § 4; Woodcock v. Parker [Case No. 17,971]; Gray v. James [Id. 5,718]; Rutgen v. Kanowers [Id. 11,710]; Evans v. Eaton, 3 Wheat. [16 U. S.] 454; Pennock v. Dialogue, 2 Pet. [27 U. S.] 1, 16, 20, 22. The language of the act of 1S30 (chapter 357, § 0), “not known or used by oth-[438] era before liis or their discovery thereof," has never been supposed to vary this construction, or to require, that the invention should he known to more than one person, if it has been put into actual, practical use. The patent a.ct of 1700 [1 Stat. 109] used the language, "not before known or used,” without any adjunct (Act 1790, c. 34, § 1); and the act of 1793 used the language “not known or used before the application” (Act 1793, c. .“>3, S 1); and the latter act (section 0) also made it a good matter of defence, that the thing patented “had been in use” anterior to the supposed discovery of the patentee. It early became a question in our courts, whether a use by the patentee himself before his application for a patent, would not deprive him of his right to a patent. That question was settled in the negative; and the language of tlie first, section of the act of 1793 (chapter 33) was construed to be qualified and limited in its meaning by that of the sixth section; and the words “not known or used before the application,” in the first section, were held to mean, not known or used by the public before the application. See Morris v. Huntingdon [Case Mo. 9,S31]; Pennock v. Dialogue, 2 Pot. [27 U. S.] 1, 18-22; Mellus v. Silsboe [Case No. 9,404], The case of Pennock v. Dialogue, 2 Pet. [27 U. S.] 1, 18-22, is a direct authority to this effect. And it was probably in reference to that very decision, that the words “by others” were added in the act of 1S36 (chapter 357, § <>) by way of explanation of the doubt formerly entertained on the subject. The words “by others" were not designed to denote a plurality of persons, by whom the use should be, but to show, that the use should be by some oilier person or persons, than the patentee. It would be strange, indeed, if because the first inventor would not permit other persons to know his invention, or to use it, he should thereby bo deprived of his right to obtain a patent, and it. should devolve upon a subsequent inventor merely from his ignorance of any prior invention or prior use; or that a subsequent inventor should be entitled to a patent., notwithstanding a prior knowledge or use of the invention by one person, and yet should be deprived of it by a like knowledge or use of it by two persons. In Pennock v. Dialogue, 2 ret. [27 U. S.] 1, 23, the supreme court expressly held, that the sixth section of the patent act of 1793 (chapter 05) then in force, (and on this point the law has not undergone any alteration,) “gives the right to the first and true inventor, and to him only; if known or used before his supposed discovery, he is not the first, although he may be the true inventor; and that is the case, to which the clause looks.”
I am aware of Dolland’s Case; hut I do not consider it to be a just exposition of the patent law of this country, however correctly it may have been decided under that of England. In that case, it seems to have been held, that Holland was entitled to his patent, because he was an inventor of the thing patented. although there was a prior invention thereof by another person, who, however, had kept it a secret, so that the public had no benefit thereof. And, perhaps, this was not an unjustifiable exposition of the statute of monopolies (St. 21 Jac. I. c. 3, § C), under which patents are granted in England. But the language of our patent acts is different. The patent act of 1830 (chapter 257, §§ 7, 8,' 13, 15, 10) expressly declares, that the applicant for a patent must be the first, as well as an original inventor. The passage cited from Mr. Phillips’s work on Patents (page 395), in the sense in which I understand it, is perfectly accurate, lie there expressly states, that the party claiming a patent must be the original and first inventor; and that his right to a patent will not be defeated by proof, that another person had anticipated him in making the invention, unless such person “was using reasonable diligence in adapting and perfecting the same.” These latter words are copied from the fifteenth section of the act of 1836 [chapter 337) and constitute a qualification of the preceding language of that section; so that an inventor, who has first actually perfected his invention, will not be deemed to have surreptitiously or unjustly obtained a patent for that-, which was in fact first invented by another, unless the latter was at the time using reasonable diligence in adapting and perfecting the same. And this I take to be clearly law; for he is the first inventor in the sense of the act, and entitled to a patent for his invention, who has first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice. and embodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not, and indeed cannot be, patentable under our patent acts; since it is utterly impossible, under such circumstances, to comply with the fundamental requisites of those acts. In a race of diligence between two independent inventors, he, who first reduces his invention to a fixed, positive, and practical form, would seem to be entitled to a priority of right to a patent therefor. Woodcock v. Parker [Case No. 17,971]. The clause of the fifteenth section, now under consideration, seems to qualify that right, by providing that, in such cases, he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has. in fact, first perfected the same, and reduced the same to practice in a positive form. It thus gives full effect to the well known maxim, that he has the better right, who is prior in point of time, namely, in making the discovery or invention. But if, as the argument of the learned counsel insists, the text of Mr. Phillips means to affirm, (what, I [439] think, it does not,) that he, who is the original and first inventor of an invention, so perfected and reduced to practice, will be deprived of his right to a patent, in favor of a second and subsequent inventor, simply because the first invention was not then known, or used by other persons, than the inventor, or not known or used to such an extent, as to give the public full knowledge of its existence, I cannot agree to the doctrine; for, in my judgment, our patent acts justify no such construction.
The cause was then continued on the motion of the plaintiffs.
In respect to another point stated at the argument, I am of opinion, that a disclaimer, to be effectual for all intents and purposes, under the act of 1837 (chapter 45, §§ 7, 9) must be filed in the patent office before the suit is brought. If filed during the pendency of the suit, the plaintiff will not be entitled to the benefit thereof in that suit. But if filed before the suit is brought, the plaintiff will be entitled to recover costs in such suit, if he should establish, at the trial, that a part of the invention, not disclaimed, has been infringed by the defendant Where a disclaimer has been filed, either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof, if he has unreasonably neglected or delayed to enter the same at the patent office. But such an unreasonable neglect or delay will constitute a good defence and objection to the suit.