The Patent Specification The Role of Liardet v Johnson

The Journal of Legal History

Volumn 7, Issue 2, 1986, Pages 156-177

  Adams, John N ^a   Averley, Gwen ^b  

^a UNIVERSITY OF KENT   (United Kingdom)

^b TEESSIDE UNIVERSITY   (United Kingdom)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 33845578014     PISSN: 01440365     EISSN: 17440564     Source Type: Journal    
DOI: 10.1080/01440368608530862     Document Type: Article

References (131)

1. Hulme (1896) 12 LQR141; (1897) 13 LQR 313; (1900) 16 LQR 44; (1902) 18 LQR 280; (1907) 23 LQR 348; (1917) 33 LQR 63, 180; Davies (1932) 48 LQR 394; (1934) 50 LQR 86, 260.
2. His account of 18th-century developments is contained in XIHEL 424 et seq.
3. The references for this case are given under the relevant points in the text.
4. (1917) 33 LQR 194–5.
5. (1897) 13 LQR 313.
6. There are no reported cases from Edgeberry v Stephens (1693) Salk. 447 to Turner v Winter (1787) 1TR 602. However, cases such as Dolland's (1766) did find their way at a later date into the specialist series produced by Davies, Carpmael and Webster.
7. 1983 Cmd. 9117. See now the White Paper, Cmnd. 9712.
8. The Times, 21 Aug. 1983; William Kingston, ‘Invention and Monopoly’, 15 Woolwich Economic Papers (this was the first prize and discretionary award of the British Association and Shell Chemicals). See also the essay by Kingston in Philips, ed., Patent Law in Perspective, European Study Conferences, 1985.
9. See e.g. Mountfield 2 Industrial Archaeology (1978); Winship 16 Industrial Archaeology 261(1981).
10. ‘James Watt and the Law of Patents’, 13 Technology and Culture (1972), 18.
11. Unpublished at the time of writing. We are indebted to the author for copies of his drafts.
12. Adams, Averley and Robinson, Avero (1982).
13. The British Library Information Service. This is a whole text retrieval system. Provided the words searched for appear in the titles or bibliographical notes, all works held will be shown by the computer.
14. I.e. the transfer to the courts of the Council's jurisdiction in patent cases.
15. XI HEL 427.
16. (1897) 13 LQR 313, 317.
17. The distinction between the description element of the specification and the claim was a statutory creation-Patents Act, 1883, s.5-First Schedule. Actual practice long pre-dated that Act, however, to the extent that patentees did end their specifications with a statement of the features of the invention that they considered new and important. See R v Else (1785) Dav. Pat. Cas. 144, 1 Web 76, Carp 103; Bovill v Moore (1816) 2 Marsh 211. The requirement of a claim was introduced in the United States by the Act of 1836.
18. Patent Roll 10 Anne Part 2.
19. (1934) 50 LQR 260.
20. It did not become the rule until after 1734, and was not uniformly required until after 1740. There are exceptions thereafter e.g. Nos. 581 and 653-Davies, loc. cit.
21. Davies does not give the reference, but it is in fact Champion's Patent 1723, No. 454. See also Barlow's Patent 1731 No. 526.
22. S.P.Dom. Anne, Bd. 12, No. 74.
23. (1934) 50 LQR 86, 91.
24. Towards the end of the period it is generally, but not always, one month.
25. In Nasmyth's grant itself, a period of one month was originally fixed, but at his request the period was extended to six months-S.P.Dom. Anne, Bd. 16 No. 88. This is cited by Davies, loc. cit. Indeed, we can find the odd example of what amounts to a specification being included in the grant itself to quite a late period, e.g. Plenius's Patent 1745, No. 613.
26. See e.g. Puckle's Patent 1718 No. 418, which was for a precursor of the Gatling gun. It recites that the Petitioner ‘having humbly prayed etc. but thinks it not safe to specify wherein the new Invention consists… ascertained etc…. three months’. A plan of the gun was enrolled.
27. See Coryton A Treatise on the Law of Letters Patent (1855).
28. Godson Treatise on the Law for Patents and Inventions (1823), p. 140.
29. Hannay's Patent, 1774. The subject was a protective wash against venereal disease. See also Ex parte Reilly (1790) 1 Ves. Ch. 112-refusal to seal the patent for presenting Italian operas.
30. See Davies (1934) 50 LQR 86 and 260 for possible 17th-century anticipations.
31. Nasmyth's application passed through the hands of the Attorney-General. It is unlikely however that such an innovation would have been made without consultation. In Lombe's Patent No. 422 (1718) which involved the pirating of an Italian machine making organzine (silk), the discovery of the Italian secret was considered so important that a requirement that models (presumably plans) be permitted to be taken and lodged in the Tower was inserted.
32. The validity of the patent may not have been of prime importance to many ‘inventors’. Merely to be able to describe the goods as ‘patented’ seems to have had a marketing draw. ‘The Patent’: A Poem by the Author of ‘The Graces’ (1776) contains the following lines: Hail to the Patent! which enables Man To vend a folio… or a Warming-pan. This makes the Windlass work with double force, And Smoke-jacks whirl more rapid in their course; Confers a sanction on the Doctor's pill, Oft known to cure but oft not known to kill. What man would scruple to resign his breath, Provided he could die a Patent death. There were two opposing views on the desirability of permitting patents for useless inventions. One view was that it did not matter: if an invention were a commercial success, that indicated its utility (a view which survives to this day); if not, no harm was done because obviously no one wanted the thing. The other view was that these valueless patents were an oppression. See Hornblower v Boulton (1799) 8 TR 95, 98 per Kenyon C J (later Lord Kenyon), and see ‘Observations on the Utility of Patents’ (1791) catalogued in the BL under ‘Kenyon, Lloyd’ passim but especially pp. 18–19. It is probably by Beetham, the inventor of a washing mill, given the extensive ‘plug’ given for that apparatus.
33. Most of the early specifications are vague, but some are particularly so. See e.g. Allen's 1729 No. 513; Churchman's 1730 No. 514 and 1733 No. 539; Henry's 1744 No. 601.
34. Champion's Patent 1723, No. 454.
35. 9 Anne C 19 (1709). Copyright is not of course a monopoly in the same sense that a patent is. Millar v Taylor (1769) 4 Burr 2303 illustrates this tendency to equate the two, see especially p. 2387 et seq.
36. See 31 above. Sometimes imprints were in fact patented. Isaac Watts' hymns were published under a patented imprint for example.
37. Inst. 181, 182-183.
38. Morris v Branson (1776) a decision of Mansfield referred to in Boulton & Watt v Hornblower (1795) 2 Hy. Bl. 489.
39. See Nos. 581 (1741), 613 (1745), 1081 (1774). Similarly watch patents e.g. No. 698 (1755). In Jessop's case, referred to in Boulton v Bull (1795) 2 H. Bl. 487, 489, a watch patent was held void because it extended to the whole watch, not the particular movement.
40. See e.g. No. 947 (1769) Shudi's Patent for a harpsichord.
41. Part 15 No. 5 ms. 10–12.
42. Enrolled 3 Aug. 1773-i.e. within the time. 1 Y & C C 527.
43. 16 Geo. III c. 41, passed 25 March 1776.
44. For the following account of the background to the case, and the subsequent case of Uardet v Adam, we are indebted to Frank Kelsall of the GLC Historic Buildings Division, and particularly to his paper presented to the BIBA Library Group on 28 Jan. 1974.
45. 2B 411 Hil. 1777.
46. This allegation presumably referred to the second specification. In fact he appears to have inspected both-n. 50 below.
47. PRO/C. 12/1346/22.
48. 1Y&CC 527, 528.
49. 'I suppose though, as no proceedings were had against him, his answer was not stated in the briefs for the Plaintiff-1 Y & CC 527, 530. This insertion is presumably by the actual reporter of the case, Douglas.
50. He also questioned whether the original specification was enrolled in time, but this point does not seem to have got anywhere. 1Y & CC 527.
51. Probably both specifications-see ‘An Appeal to the Public on the Right of Using Oil Cement’ (1778).
52. London Chronicle, Tuesday 24 Feb. 1778, Daily Advertiser, 24 Feb. 1778. A fuller report combined in the Morning Post and Daily Advertiser 23 Feb. 1778 is quoted verbatim by Hulme in (1897) 13 LQR 313. Mansfield's own notes of this trial survive in his Notebooks, but not of the second trial.
53. Evidence to the effect that Mansfield's house had been done four years previously was given by [Thomas] Rose, a well-known plasterer.
54. This is confirmed by the notes on the first trial taken by Mansfield. The evidence given at the second trial appears in ‘An Appeal to the Public on the Right of Using Oil-cement or Composition for Stucco’.
55. 1Y & CCC 526-this was in the following Easter term.
56. It is reported in the Morning Post and Daily Advertiser 20 July 1778 and the Gazetteer and New Daily Advertiser of 20 July 1778. The Notebook which must have contained Mansfield's notes of the trial is missing.
57. Open letter Joseph Bramah to Eyre C J, British Library Law Tracts 1716–1816. Bramah asserts that he was present throughout the trial. 1Y & CCC 526 gives it as lasting from 9 a.m. to 11 p.m.
58. Loc. cit. n. 43 above.
59. Higgins was working on his own recipe at the time of the trial and obtained a patent on 8 Jan. 1779. See Gibbs, ‘Bryan Higgins & His Circle’, Chemistry in Britain (1965), pp. 60, 63.
60. Complaint of Reverend John Liardet 18 Dec. 1782. PRO/C12/921/11. Again we are indebted to Frank Kelsall for details of this case. The Answers filed by the Adams complain about the failures of the cement.
61. This evidence by Higgins provoked the following lampoon from the Johnson camp: Mr Alderman Cuttle, of Pudding Lane being much disordered on the morrow of the last city feast, dispatched his apothecary with four ounces troy of the indurated faeces, protruded a retro in the form of a Bologna sausage, requesting the Doctor to make an assay of the compound, and return the particulars of the analysis; a request he complied with in the terms and manner following: Of turtle 3 oz. 0 dt. 0 gr Of green fat 0 oz. 10 dt 0 gr. or more Of marrow pudding 0 oz. 9 dt. 20 gr. or less Of crumb pudding 0 oz. 0 dt. 4 gr. or less Total 4 oz. 0dt. 0gr Let the world judge if an adept capable of decompounding aliment, so levigated by the animal organs or secretia and excretia as must have been the calipash, palipee, marrow pudding etc. above mentioned-Let the impartial world judge, we say, if such an adept in chemistry can be incapable of discriminating in like manner the same quantum of sand, calcarious earth, linseed oils, and calx of lead, made up in the form of stucco. Magna est veritas etpraevalebit ‘Observations on Two Trials’, London (1778), pp. 12–13.
62. According to Hulme, this was a further innovation for which this case was responsible-see text above n. 5.
63. Presumably the 1726 translation of his works by J. Leoni-see ‘An Appeal etc.’, p. 52.
64. See ‘An Appeal etc.’, p. 56, and Mansfield summing up in ‘A Reply to Observations and Two Trials at Law’ (1778).
65. See a letter written to Wolf in 1769 by William Small cited Robinson loc. cit.
66. 1Y&CCC526.
67. Wyndham Hulme records having found only these three reports, having searched: Morning Chronicle, Gazetteer & New Daily Advertiser, Daily Advertiser, London Chronicle,. London Evening Post, General Advertiser and Morning Intelligencer, General Evening Post, Westminster Journal & London Political Miscellany-see the documents placed by him in the Patent Office Library under the title ‘Liardet v Johnson’. It also appears however in the London Chronicle, 24 Feb. 1778. It is by no means clear that he realised that a second and longer trial had taken place on 18 July 1778, and that it is that to which the pamphlets refer.
68. Printed 1778 and sold by J. Hand, 409 Oxford Street, J. Ben, Paternoster Row and J. Pridden, 100 Fleet Street. See also the reports in the Morning Post & Daily Advertiser, 20 July, and the Gazetteer & New Daily Advertiser, 20 July.
69. ‘A Reply to Observations on Two Trials At Law’ (1778).
70. BL Law Tracts 1716–1816, ‘A Letter to the Rt Hon Sir James Eyre CJCP on the subject of the cause Boulton & Watt v Homblower & Maberley’, John Stockdale, Piccadilly 1797.
71. (1787) 1TR 602. Web. 77, Buller J observes that ‘Many cases upon patents have arisen within our memory, most of which have been decided against the patentees on the ground of their not having made a full and fair disclosure of their inventions’-he held the specification bad in that case.
72. This appears to involve Brand's Patent 1771 No. 996. The case does not appear in the Mansfield Court Notebooks. It is the only patent case referred to in Evans Decisions of Mansfield Vol. 1, p. 404 under ‘Patents’. Evans cites Buller J in Turner v Winter as his source.
73. 5th ed. p. 75.
74. Hulme (1902) 18, LQR 280, 287.
75. (1843) p. 118.
76. (1884) p. 53.
77. At p. 318.
78. Arkwright v Mordaunt (1781), Webster 59. Arkwright v Nightingale (1785), Webster 60.
79. (1787) 1TR 602.
80. Boulton & Watt v Bull (1795), 3 Ves. Jun. 140, 2 H. Bl. 463. Hornblower v Boulton & Watt (1799), 8 TR 95.
81. (1776) Webster 51.
82. (1803)-see below for a description of this work.
83. (1823) p. 12.
84. (1836) p. 18. This carries Amos's lectures at London University on Patents as an Appendix. Amos cites Buller's Nisi Prius and the case of trusses.
85. (1832).
86. (1841) p. 45.
87. (1845).
88. (1844).
89. P. 167. There are two other citations-at p. 175 for the point for which it was cited by Lord Ellenborough in Harman v Playne (above), and again at p. 484 for the proposition that the patent can be voided for want of specification.
90. (1841) p. 45.
91. Pp. 25 and 89.
92. Cited by Buller J in Boulton v Bull (1795) 2 H. Bl. 487. Mansfield does refer to accidental inventions in Liardet v Johnson but cites Sir Epicure Mammon's discovery of the cure for the itch (Jonson's ‘The Alchemist’) not the water tabbies (a kind of watered silk).
93. Citing Buller's Nisi Prius.
94. (1780) 1 Y & CCC 527. Counsel for the plaintiffs at this hearing were [James] Mansfield, MacDonald, Arden, Thompson and Douglas. Counsel for the defendants were Maddocks, Kenyon and Mitford.
95. Observations on Patents, Parcel E, Boulton & Watt Collection. Birmingham Reference Library cited Robinson ‘James Watt on the Law of Patents’ in Technology and Culture (1972), p. 115. The General View of the Decisions of Lord Mansfield by William David Evans, which appeared in 1801, gives only Buller J's citation of the case of trusses under the heading ‘Patents’. That citation is alleged to have been made in Farrer (sic) v Winter 1TR 602.
96. It will be recalled that Liardet had done this, and nevertheless had his patent extended.
97. See Robinson, loc. cit.
98. (1785) Dav. Pat. Cas. 144; 1 Web. 76; 1 Carp. 103.
99. I am grateful to Dr F.G. Robinson who has found the work in the course of his researches for the Nineteenth Century Short Title Catalogue.
100. There is a flier inserted at the end of the Bodleian copy of the book offering the author's services, and giving his address as Little Smith St., College St., Westminster.
101. Citing Homblower v Boulton 8 TR 95.
102. No citation at this point, Morris v Branson is cited later. See also ‘Observations on the Utility of Patents’, London (1791), pp. 16 and 54 catalogued under Kenyon, Lloyd in the BL Catalogues.
103. Citing Edgebury v Stephens, 2 Salk. 447.
104. Watt v Bull i.e. Boulton & Watt v Bull (1795), 2 H. Bl. 464.
105. Id. citing Heath J.
106. Citing Buller J in Boulton & Watt v Bull (above).
107. Dr James's Powders were a very popular patent medicine-see e.g. ‘The Patent’, a poem, n. 31 above, and the Torrington diaries. Mansfield in Liardet v Johnson doubted the validity of his patent, and Hulme considered that it may have been threatened litigation over Dr James's patent which resulted in the transfer of jurisdiction from the Council to the Courts-see (1917) 33 LQR194.
108. P.99.
109. Id.
110. As noted above, however, this time varied to the end of the century.
111. (1795) Bl. Rep. 479.
112. (1787) 1TR602.
113. P. 173, citing Ex parte Hoops (sic) (1802) 6 Ves. 559.
114. (1789) 3 TR 438.
115. Oldham v Langmead cited in Hayne v Maltby at p. 439.
116. As distinct from the period of grace for enrolling the specification, which we have seen, Mansfield laid it down was to enable the invention to be perfected.
117. This practice led to abuse. So called ‘floating caveats’ would be lodged as a means of getting wind of inventions so that for example the unfortunate investor's workmen could be bribed to disclose their master's secrets-John William Smith, op. cit. pp. 15–16. Evidence on this was given to the Commons Select Committee on the Law of Patents (1829).
118. The Committee of Patentees formed in 1785 actually strongly objected to the ease with which specifications could be consulted-see Robinson, loc. cit.
119. 10.00-2.00 and 5.00-8.00.
120. See Robinson, loc. cit.
121. Cited Robinson, loc. cit.
122. Loc. cit.
123. See Collier, op. cit., Ch. XIV, According to the evidence given to the Commons Select Committee on the law of Patents, a simple English patent was about £20 but a lengthier one was about £200. Patents to cover England, Ireland and Scotland cost about £300. See also Charles Dickens, ‘A Poor Man's Tale of a Patent’.
124. Seen.31 above.
125. Unreported. This case is possibly R v Else in n. 97 above, but the citation should probably be Hornblower v Boulton (1799) 8 TR 95, 98.
126. ‘Observations on the Utility of Patents’ (1791) catalogued in the BL under Kenyon, Lloyd. See also the report of the Boulton & Watt v Hornblower case, The Times, 26 Jan. 1799.
127. See9H.C.L. 212.
128. See e.g. Folkes v Chadd (1782) 3 Doug. 157, 159.
129. The study of expert witness cases can provide important evidence of the current state of scientific opinion on particular topics. For a good example from outside the field of patents see Fullmer, 21 Technology and Culture (1980), p. 1, which describes the evidence given in the case of Severn & King v Imperial Insurance Co., 11 April 1820.
130. There is an interesting and lengthy case in Mansfield's notebook shortly after Liardet v Johnson (22 Feb. 1780) which also involved technical evidence. The plaintiff, Joseph Medlin, was the patentee of a ‘compound harpsichord’ i.e. an instrument combining a harpsichord and pianoforte action. One Ephraim Coulson had allegedly infringed this patent. John Brockwood among others gave evidence.
131. He was clearly aware of the drying properties of red lead, as is shown by his pamphlet ‘An Appeal etc.’.