In the matter of the application of William N. Bartholomew, assignor to J. Reckendorfer, for letters patent for a design for Rubber Eraser--Letters patent for designs have increased in importance within the past few years. Formerly but few were granted, now many are issued. To this day they have made so little figure in litigation that but three reported cases are known in which design patents have come into controversy. With their increase, questions have arisen concerning their scope and character, which have given rise to dispute and to inquiry as to the correctness of the current practice of the office in this branch of invention. While on the one hand, it is insisted that the practice has always been uniform, and is therefore now fixed and definite; on the other, it is asserted, that there has never been, and is not now, any well-defined or uniform practice, either in the granting or refusal of design patents.

The act of 1836 made no provision for the patenting of designs. The earliest legislation upon this subject is found in the act of August 29, 1842, section 3; and the only legislation upon the subject is found in this section and in section 11, of the act of March 2, 1861. The definition of the subject matter, or, in other words, of a "design," is the same in both acts. It is is follows:

"That any citizen, etc., who, by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, any original design for a bust, statue, bas-relief, or composition in alto or basso-relievo, or any new and original impression being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others, etc."

This definition embraces five particulars.

1. A new and original design for a manufacture.

2. An original design for a bust, statue, etc.

3. A new and original impression or ornament to be placed on any article of manufacture.

4. A new and useful pattern, print, or picture to be worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture.

5. A new and original shape or configuration of any article of manufacture.

The first three of these classes would seem to refer to ornament only; the fourth to ornament, combined with utility, as in the case of trade marks; and the fifth to new shapes or forms of manufactured articles, which, for some reason, were preferable to those previously adopted.

The disputed questions which have thus far arisen under these definitions are:

1. What variations may be claimed or covered by the patent consistently with unity of design.

2. Is a new shape of an article of manufacture, whereby utility is secured, a subject of protection under this act; and

3. Is mechanical function of any kind covered by it.

As to the first of these questions, it seems to have been assumed that the design spoken of in all parts of the sections referred to covered a fixed, unchangeable figure, that the protection of letters patent did not extend to any variation, however slight, but that such variation constituted a new design, might be covered by a new patent, and might safely be used without infringement of the first. This, it is said, is the correct theory of the law, and has been the uniform adjudication of the Office.

Neither of these statements is absolutely correct. The law by no means defines a design with such strictness. The language is, "new and original design for a manufacture," "new and original impression or ornament," "new and original shape or configuration." It would seem to be too plain for argument, that the new design, or impression, or shape, might be so generic in its character as to admit of many variations, which should embody the substantial characteristics and be entirely consistent with a substantial identity of form. Thus, if the invention were of a design for an ornamental button, the face of which was grooved with radial rays, it would seem that the first designer of such a button might properly describe a button of five rays, and, having stated that a greater number of rays might be used, might claim a design consisting generally of radial rays, or of "five or more" rays, and, that it could not be necessary for him to take out a patent for each additional ray that could be cut upon his button. So, if the design were the ornamentation of long combs by a chain of pearls, it would seem that a claim for such a design might be maintained against one who arranged the pearls, either in curved or straight lines, or who used half pearls only, and that such modifications if they had occurred to the designer, might properly have been enumerated in his specification as possible and equivalent variations. In short, I can see no reason, under the law, why designs may not be generic, why what are called "broad claims," may not be made to them, and why the doctrine of artistic or aesthetic equivalents may not be applied to them.

This has been recognized to a greater or less extent in the adjudications of the courts and in the practice of the Office.

One of the reported cases is that of Booth vs. Garelly 1, Blatch 247. The design is described as consisting of "radially formed ornaments on the face of the molds or blocks of which the button is formed, combined with the mode of winding the covering on the same, substantially as set forth, whether the covering be of one or more colors." The specification, in "substantially" setting forth the design, contained this language: "It will be obvious from the foregoing that the figures can be changed at pleasure by giving the desired form to the face of the mold by depressions and elevations which radiate from a point, whether in the center of the mold or eccentric thereto."