McCay v. Burr , 1847 Pa. LEXIS 107 ( 1847 )

Gibson, O. J.

There are, in this case, so-many nice, and, for precedents, useless exceptions, that to examine them with a microscopic eye, would be unprofitable and oppressive; and we say no more in respect to them than that they are unfounded. Yet in order to leave noy doubt about a particular point of practice,involved in the trial, it is proper to remark, that the- defendant was precluded by the later and better interpretation of the act of 1806, from supplying the deficiency in his notice of special matter, by embodying with it the additional matter in a special plea. The point had been decided differently in Sharp v. Sharp, 13 Serg. & Rawle, 444; but it was reconsidered in Wilson v. Erwin, 14 Serg. & Rawle, 176, and settled more consonantly to the spirit, if not to the letter, of the statute.

The exceptions to the charge are likewise unfounded. The action was brought on-a bond, or rather an agreement, to pay the plaintiff a round sum if he should succeed in establishing the legal validity of Theodore Burr’s patent for the plan of a bridge; in recompense of which, the defendant was to become joint owner of it with the plaintiff who had derived the right from the patentee. The defendant brought an action in the plaintiff’s name for an invasion of it against the Danville Bridge Company, and obtained a verdict and judgment by compromise, which the court properly ruled to be presumptive evidence of the originality of the invention, and left to the jury the question of abandonment raised by evidence that the patentee had given a parol license to two persons to build bridges on his plan before his patent was actually taken out. It is argued that he ought to have ruled it to be an abandonment, as a conclusion of law. But though it is true that an invention or discovery, like every- other right, may be irrevocably surrendered or dedicated to public use, what ground was there for such a conclusion in this case ? In Pennock v. Dialogue, 2 Peters, 16, it was said that the words in the act of Congress, “ not known or used before the application,” mean not known or used by the public at large; but the use of an invention by special permission of the patentee, is not a use of it by the public. 'If the author of an invention were bound to patent it before its properties had been published and established by actual use, a great part of his time might expire before -he could make it profitable to himself. In this very instance, it appears that the patentee proposed his invention severally to the Harrisburg and to the Northumberland Bridge Companies; by each of whom it was rejected in favour of a very inferior one, because the other had not then been tested by practice. A right abandoned to the public, doubtless, cannot be resumed; but a license restrained to individuals, is not an abandonment. Except the verdict in the case of the Lewisburg bridge, the other parts of the evidence raised questions rather of fact than of law ; but that verdict, being a general one, and determining no more than that the action was barred by the matter contained in some one of the pleas — the statute of limitations among the rest — could not be said with any certainty to disaffirm the validity of the patent. This appears to be the substance of the case, and we find no error in it.

Judgment affirmed.