The Supreme Court Invalidated the Pencil-With-an-Eraser Patent, and Set a Rule Still Used Today

US19783 was granted to Hymen L. Lipman of Philadelphia on March 30, 1858. It covers a pencil with an eraser attached to the end — the object sitting in every desk drawer in America. It is also one of the most consequential invalidated patents in United States law.

Pencils existed. Rubber erasers existed, and had since the 1770s, when it was discovered that a lump of caoutchouc would rub out graphite marks, which is where the word "rubber" comes from. What Lipman claimed was the combination: a groove cut in the pencil's end, with a rubber insert glued in, so that one object did both jobs and neither had to be hunted for separately.

In 1862 Lipman sold the patent to a businessman named Joseph Reckendorfer for a reported one hundred thousand dollars — an enormous sum for the era.

Reckendorfer v. Faber

Reckendorfer then sued the pencil manufacturer Eberhard Faber for infringement, and in 1875 the case reached the Supreme Court of the United States.

The Court invalidated the patent, and its reasoning is the part that outlived the pencil. The justices held that a mere aggregation of two known devices, where each continues to perform its own familiar function and nothing new emerges from the pairing, is not patentable.

The pencil still wrote exactly as pencils write. The eraser still erased exactly as erasers erase. Putting them at opposite ends of the same stick was convenient, but the combination produced no new effect and required no inventive leap. A combination is patentable, the Court held in substance, only when the parts together produce a new and useful result — not merely when they are found in the same place.

Reckendorfer lost his hundred thousand dollars.

Why it still matters

Reckendorfer v. Faber remains a foundational American case on the difference between an invention and a combination, and the principle it set is invoked constantly — in mechanical cases, and heavily in modern software and business-method patents, where the question of whether bolting two known things together constitutes an invention comes up almost daily.

The irony is durable. The pencil-with-eraser turned out to be enormously useful and completely ubiquitous. Its usefulness was never in question. What the Court decided was that being useful and being inventive are different tests, and that the patent system only rewards the second one.

Every combination patent argued since has, somewhere in its lineage, a Philadelphia stationer who glued an eraser onto a pencil and briefly became rich.

See the original

The full text and figures of US19783 are on patents.us.