to define what you cannot always see-the actual useful operation the invention performs, and how it does so, in order that you can enclose this operation and manner of performance against infringement. Only when defining constructs without reference to utility should a structural approach be used, as in the case of design patents. The form of claim you employ in design patents bears out my point. You simply say: "What I claim as my invention is the ornamental design for a so-and-so substantially as shown." It's left to the courts to decide what variations trespass on the patent. But when a thing has another attribute its essential attribute-that of utility-over a design patent, it seems folly not to anchor your method of definition to that essential attribute-especially as I have already said, when the full significance cannot always be observed from a passive perusal and is only revealed when the thing is actually built and tested.

Lastly, in relation to functional claims, I put forward the suggestion that every patent should have at least one carefully drafted functional claim if only for insertion in the abridgements which appear in the week's Official Gazette of issued patents. I'm sure everyone will agree most of these abridgements are virtually meaningless at the present time. They simply show one view from the drawings greatly reduced in size, and one claim, which, being structural, seldom gives any useful information. Of course, better even than this would be a required drawing and an operationally descriptive summary particularly for the Gazette. But a clear functional claim should be nearly, if not quite, as good in most cases, as I visualize such claims.

DESIGN PATENTS

I would next like to discuss section 311 of the bill which relates to patents on designs. As you all know, the successful manufacturer and the successful inventor today seldom loses sight of this vital aspect of modern merchandising. It is design alone that sometimes puts one product out in front in the race for sales leadership, and it's through design that successful inventors often succeed in selling their ideas. Now, most people think that industrial design simply means eye-appeal, or "streamlining," but actually it is a great deal more than that. Some of the considerations involved in successful industrial designing come under such headings as greater comfort, improvement in balance, for example; and it has been amply proved that workers will take much more care of an expensive machine too which is smooth and well-organized as to its component parts than one that looks like a Rube Goldberg contraption.

I have said in an article on the subject that a well-designed industrial product is one that "looks like what it is, only more so.' For instance, a heavy-duty implement like a truck or a bulldozer should be designed to enhance its appearance of strength. If the article is a piece of scientific equipment like a camera or a radio, then the look of scientific precision should be emphasized. Nor is it always a question of pleasing appearance. For example, I can cite a piece of mining machinery which was very dangerous if not handled with respect, and it had been deliberately "industrially designed" to make it look like what it was, for the greater safety of its users. Its formidable appearance was not entirely intrinsic to the machine; nevertheless, it had a look of greater functional fitness than any of its competitors.

Now your section 311 reads like this:

"Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title."

But from what I have said I think you will recognize that modern industrial design is more than a matter of mere ornament. In a machine tool, for example, it is well within the industrial designer's field to arrange the controls, their location, how they feel during use, and so forth. Even how the machine or article sounds during operation can be important.

In the article I've just mentioned I referred to an after-shave bottle I had. The neck had a long thread, instead of the usual short, single turn thread. The screw cap was a heavy, black plastic disc. The result was that you could spin it on and spin it off like a wheel. That was a pleasing sensation, and also more practical than a single turn thread which requires a twist of the wrists, sometimes resulting in dropping the bottle if the hands are wet. Good industrial design then can mean such things as a clean snap to a lever, a long smooth push to a controller button, a good grip in a saw, a nice whip to a rod-anything in fact that gives a breath of life to the lifeless, and provides that "pick me up and

use me" appeal. I therefore define good industrial design as greater product enjoyment.

Accordingly, I would like to suggest a definition of design to be included in Mr. Bryson's bill substantially in accordance with what I have suggested to the Patent Institute of Canada which is also working on a new industrial design act for Canada. It is this:

"In this act, the expression 'design' means features of shape, pattern, ornament, operation, location of parts, or relationship of materials, colors, surfaceeffects or any combination of the foregoing, which, in a finished article, appeal to and are judged by the senses, and other than as a useful invention under this act, or additionally thereto, and does not include any features of shape, pattern, ornament, location of parts or relationship of material, colors, surfaceeffects, or any combination of the foregoing, which are dictated solely by the function which the article was made to perform."

My last suggestion in connection with the design provisions of your bill, is that you consider the inclusion of a claim or claims for industrial design patents beyond the brief form now used. As you know, the standard form of claim now used in design patents is: The ornamental design, for a so-and-so (naming the class of article) or the like, substantially as shown.

Now I think the important place that industrial design occupies in modern industry should entitle industrial design patents to a more careful form of definition than that. I would, therefore, recommend a claim or claims along the lines of regular utility-patent claims, except that such claims would be formal, or in other words structural, of necessity, since considerations of utility per se are excluded from design patents. I mean that you could not sensibly write a functional claim or claims for subject matter which had sensory appeal only. Structural claims would, therefore, be the proper form to use in these cases.

And the reason for a claim or claims for design patents will, I think, be obvious; without a definition of any sort the intending competitor is bound to be uncertain as to how close he may come and how far he must stay away. There are many industrial designs which contain a structural idea of considerable aesthetic originality, and infringement should not be allowed by the merest change. Of course, I admit that you would have to use names for the things or parts or configurations in your structural claim or claims in design cases, but what you meant pretty accurately by the names chosen, could be defined in the specification, somewhat as I have described on pages 130 and 131 of my article in last February's Journal of the Patent Office Society. There is not much objection to structural terms in a claim when clearly defined, even in patents of utility.

For instance, I have recently designed a bed having these design features: It has enclosing ends with side curtains between them. It may or may not have a light fabric top which can be drawn across or left rolled or drawn back according to choice, so that a complete enclosure or just a surrounding curtain effect can be attained. Now clearly, this idea had its origin in the big, four-poster beds of the eighteenth century. But my proposal is a very light and airy modernization of those gloomy affairs, and could, I believe, be successfully promoted by one of the more exclusive furniture houses.

However, the design patent which I shall obtain upon the idea will be highly uncertain as to the extent of protection I shall have upon the obvious variations occurring to others after seeing it. Sufficient protection I can obtain perhaps by taking out several design patents to cover the most likely modifications. My submission therefore is that close variations of novel designs should be protectable by means of one patent having provision for a brief specification and a claim or set of claims as in utility patents.

Finally, the design-example I have just given serves to indicate my reason for the expression "or additionally thereto" in my proposed definition of a "design." You see, a bed like this with side curtains and an optional draw-top, either flat or sloping like a roof, could be argued as subject matter for a utility patent. The curtains and top with their characteristics of enclosure and movability are certainly things that function to some useful extent. Yet improved utility had hardly any place in my mind when thinking up the proposal. My main object was aesthetic or sensory novelty, and it developed concurrently with the advertising angle I thought might fit in with it. So my definition of design is intended not to annul those utility patents which can be had for designs possessing incidental utility. After all, some might think this bed is better, an improvement, and in a sense more "useful" to them than an open bed. There

are many instances of a similar kind, and so this is something which I suggest be carefully kept in mind, although I am aware of those decisions in which the coexistence of a utility patent and a design patent have been held not mutually fatal as applied to the present patent statute.

This ends my testimony. Thank you, Mr. Chairman and gentlemen.

Mr. BRYSON. You understand we are especially anxious to give you every opportunity since you are here from our neighboring country up there.

We will stand in adjournment until tomorrow, Thursday, at 2 o'clock. The hearing is tentatively set for tomorrow at 2 o'clock. We will close now to definitely meet at 10 o'clock Friday morning, but if possible we will proceed tomorrow afternoon at 2 o'clock, and we will again meet on Friday.

Mr. ASHTON. When is it likely to be known definitely whether you will sit tomorrow afternoon?

Mr. BRYSON. Mr. Harris will try to keep in touch with the House. (Thereupon, at 12:15 p. m., the subcommittee adjourned until tomorrow, Thursday, June 14, 1951, at 2 p. m.)

PATENT LAW REVISION AND CODIFICATION

THURSDAY, JUNE 14, 1951

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE No. 3 OF THE COMMITTEE ON THE JUDICIARY,

Washington, D. C.

The subcommittee met at 2 p. m., pursuant to recess, in room 346, Old House Office Building, Hon. Joseph R. Bryson (chairman of the subcommittee) presiding.

Mr. BRYSON. The subcommittee will come to order.

Gentlemen, Mr. Kane wishes to make a brief statement. As I understand it you wish to reserve the right to file a written statement?

STATEMENT OF AL PHILIP KANE, KANE & KOONS,

WASHINGTON, D. C.

Mr. KANE. That is correct, Mr. Chairman.

Mr. Chairman and members of the subcommittee, my name is Al Philip Kane. I am a member of the District of Columbia bar, a member of the law firm of Kane & Koons, general practicing attorneys, not patent attorneys or patent lawyers, in the city of Washington, D. C. I appear here today on behalf of Victor J. Evans & Co., registered patent attorneys and McMorrow, Berman, and Davidson, registered patent attorneys.

We are particularly interested in sections 31, 32, and 33 of the bill which is before the subcommittee. We have been having certain discussions with members of the committee staff with regard to the phrasing of those sections, and we desire to continue our discussions with the staff to see if the differences which we have between ourselves and the staff can be ironed out amicably and to our satisfaction.

We therefore desire at this time merely to state we do intend to continue our discussions and that we reserve the right to file a written statement. We hope that if we are unable to iron out our differences, we may have the privilege of an oral statement at some later date. Mr. BRYSON. We will try to grant that.

So we may understand your position concretely, it revolves around the custom of advertising?

Mr. KANE. That is correct.

Mr. BRYSON. You wish to retain the status quo in this pending bill? Mr. KANE. That is correct.

Mr. BRYSON. You wish to continue the practice that lawyers follow now?

Mr. KANE. Yes; subject to approval of the advertising by the Commissioner of Patents, which is the present practice.

Mr. BRYSON. You will try to get together with our staff in the hope of working out your differences and respective views at an early date?