DESIGN PATENTS
STATUTORY SUBJECT MATTER
35 USC § 171: Patents for designs.
a) In general. Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS §§ 1 et seq.].
b) Applicability of this title. The provisions of this title [35 USCS §§ 1 et seq.] relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
c) Filing date. The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 [35 USCS § 112] and any required drawings are filed.
Articles of Manufacture
v Courts generally are generous with what is or is not an “article of manufacture.” “Anything made by the hands of man” is valid subject matter. In re Hruby.
Ø This can include designs that require something outside what is described in the design to have a complete visual effect: lamps without lampshades and fountain designs without waterspouts are still valid articles of manufacture. In re Hruby.
Ø Similarly, an ornamental design can be a part of an article of manufacture without necessarily being the entirety of it. A company can opt to patent the design of the shank portion of a drill bit, for example, even when the shank does not exist independently from the rest of the bit. In re Zahn.
Ø Surface ornamentation, however, is not patent-eligible. Designs must be attached in some way to an article of manufacture. While things like computer icons can be patented, they must be patented as ornamentation for a computer display (an article of manufacture) and not presented separately. Ex parte Striljand.
In re Hruby, 373 F.2d 997, 153 USPQ 61 (C.C.P.A. 1967)
The full display of a design requiring something outside itself (a lampshade without an included lamp, or, as in this case, a decorative fountain that includes the waterspouts as part of the design) does not make the design something other than an “article of manufacture” and thus ineligible subject matter.
The argument that it was a “fleeting design” and ineligible is rejected; “anything made by the hands of man” is valid subject matter.
In re Zahn, 617 F.2d 261, 204 USPQ 988 (C.C.P.A. 1980)
An ornamental design can be a part of an article of manufacture rather than necessarily being the entirety of it. (In this case, the intended design patent was for the shank portion of a drill bit.)
Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992)
Graphical user interfaces are patentable subject matter so long as they are presented as ornamentation for a computer display, an example of which is also included & described. (Rejected in this case because not paired with a computer display, and as such was mere surface ornamentation rather than a design to be attached to an article of manufacture)
Ornamentality
v Functionality. Aspects of an article of manufacture that are obvious based on its functional design do not qualify as “ornamental.” In re Carletti.
Ø This includes articles of manufacture that only have a particular functional design because of creative and arbitrary design decisions made when designing another article of manufacture. An example would be a key functionally designed to fit a lock pattern; though either separately might qualify, the design of one is dictated by the design of the other. Best Lock.
Ø However, an ornamental design can have functional advantages over other potential designs. A design for a rear-vision mirror that turns out to offer functional advantages over other models in terms of field of view still may be considered to be ornamental if the design was not dictated by functionality. Rosco.
Ø Test for functionality: (PHG Technologies)
Requirement / If yes / If noIs there any ornamentation? / ↓ / X
…that is not required to be there to perform the article’s function? / ↓ / X
Do other designs share the function? / ↓ / X
(Post-PHG) Is the device not primarily functional? / ↓ / X
Result: / (patentable) / (invalid)
v Hidden-in-use test. Generally, if the design of an article of manufacture is intended to be seen at any point in its life, even if the article is not intended to be seen in its intended use, it may be protected by a design patent. A hip replacement, which may be seen in a product catalog but not when it has been implanted, is eligible for a design patent. In re Webb.
In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964)
Ornamental design of the article of manufacture (a gasket) was obvious based on its functional design, and therefore it is not eligible for a design patent. (Specifically, the only differences between the claimed design and the prior art were functional, and the gasket in question was standardized according to military specifications that dictated the exact position, dimensions, and tolerances of all aspects of the part, without any suggestion that these requirements were intended in whole or in part to serve as ornamentation.) “For a design to be ornamental, it must be created for purposes of ornamenting.”
Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996)
BestLock wants a royalty from key copying. They had already patented their keyway, and sought a patent on the corresponding key.
Validity of design patent must be limited to the article of manufacture in question, not the totality of the patents owned by the same party. A design patent for a keyway that dictates a specific functional design for the key does not mean that the key is more than a functional design.
Rosco, Inc. v. Mirror Lite Company, 304 F.3d 1373 (Fed. Cir. 2002)
A design having particular functional benefits over another design (in this case, a design for a mirror with a superior field of view) does not necessarily mean that the superior design was dictated by functionality.
PHG Technologies, L.L.C. v. St. John Companies, Inc., 469 F.3d 1361 (Fed. Cir. 2006)
Test for whether functionality or ornamentality dominates (only second patentable subject matter) is whether alternatives adversely affect utility of the article of manufacture. (Also presence/absence of advertising & its content – which is troublesome, because almost anything can be advertised as a useful feature even if it was not intended to be - or any utility patents that cover the same material.)
In re Webb, 916 F.2d 1553 (Fed. Cir. 1990)
Appellants seek review of a USPTO decision rejecting their design patent application for a “grooved femoral hip stem prosthesis.” The USPTO held that the design was unpatentable because it was purely functional & because it was concealed from view in its normal use.
Court held that the “general rule of thumb” that an otherwise-ornamental object that will not be observed in its final use is not eligible for a design patent is not a per se rule. (“general rule” from In re Cornwall, a CCPA case about the patentability of the design of an ornamental vent tube intended to be placed inside the wall of a house.)
The “normal and intended use” of a product, including commercial sales, allowing ornamentality to be observed is sufficient. Hip replacements, designs of chewable vitamins, etc. are eligible subject matter.
NOVELTY
Novelty
v Fundamentally, the test for novelty is the same as it is for utility patents, and both stem from the same statute: 35 USC §102. An article of manufacture is nonnovel if it is anticipated, if it was in public use, and if it cannot qualify as an experimental use (which no design described in a design patent ever has).
v Anticipation. Post-Egyptian Goddess, a design is anticipated if a design that if created later would infringe it had been created earlier. It is sufficient for the designs to be substantially the same, such that an ordinary observer exercising ordinary care when shopping for the product would be deceived into mistaking one design for the other. Door-Master.
Ø The test for anticipation can also focus on just select components of the design, if they are the only differences of note between the two designs. An example would be a comparison of two shoes where the only substantial difference between the two is the soles. Int’l Seaway.
Ø Prior art in a different field than that the article of manufacture is in can anticipate a design. For example, the design of a car door can anticipate a similar design on a model car. See generally Green Lane.
Hupp v. Siroflex of America, Inc., 122 F.3d 1456 (Fed. Cir. 1997)
Test for anticipation is fundamentally the same as for utility patents; if the claimed material was described in a printed publication, in public use, or was on sale more than a year prior to the filing date, the design patent is anticipated. (However, if the design is described in a publication, the publication must show the same subject matter as that of the patent, and must be identical in all material respects. Similarity, as in this case, is insufficient.)
Door-Master Corporation v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001)
A design that would infringe a design patent if created later would anticipate it if created earlier. For this, it is sufficient for the designs to be substantially the same, such that an ordinary observer exercising ordinary care when shopping for the product would be deceived into mistaking one design for the other.
(Must, however, use the entire patent as a basis for comparison; not sufficient to pick & choose specific features.)
Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009)
Ordinary observer test described by Door-Master is, post-Egyptian Goddess, now the sole test for anticipation. (A design that would infringe if after anticipates if before.)
(The test as applied here differs from the one applied in Door-Master; Door-Master looked at the patented design as a whole, and this case did not. Possible reconciliation is that the only major difference between the two shoe designs was the sole, which is not immediately visible to the casual observer.)
Green Lane Products Ltd v. PMS International Group plc [2008] EWCA Civ 358 (23 April 2008)
UK OPINION: A design patent for a product may be anticipated by prior art in a completely different field than the one the design patent is intended to protect.
(“You can’t change the title of your design patent and not be anticipated.” In the US, the design is specifically separated from the article of manufacture – hence things like car doors being prior art for a model car door.)
Public use
v The display of an article of manufacture to the public more than one year before the application for patent is filed renders it ineligible for patentability. 35 USC §102.
Ø This includes circumstances where the product is being displayed for something other than its intended use; for example, a wrought iron table that was displayed at a trade show in something other than its “natural and intended way” was still considered to be in public use. In re Mann.
Ø However, if the design is shown to a limited group of people who are restricted by an understanding of confidentiality or a confidentiality agreement, then the use is not “public” and the design may be patented. Bernhardt.
v Experimental use. While utility patents offer an exception to the public use disqualification in §102, no designs have ever been found to have been in experimental use. Theoretically, based on how the exception is constructed in the case of utility patents, the following factors as laid out in Tone Bros. should be considered by the court as a means of determining whether the use was for a bona fide experimental purpose:
§ the length of the test period and number of tests as compared with a similar type of test on a similar type of design;
§ whether a user made any payment for the device;
§ whether a user agreed to use secretly;
§ whether records were kept of the progress of the test; and
§ whether persons other than the designer conducted the asserted experiments.
Ø Furthermore, as a general matter, later “tweaking” of a design once commercial exploitation has already started is not sufficient for a determination of experimental use to be asserted. The article of manufacture must only come on the market once it has been satisfactorily redesigned. Continental Plastic.
In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)
The product at issue here was a wrought iron table. Appellant argued that the display of this product at a trade show more than one year before the application for patent was filed did not qualify was a public use, because the table was not used in its natural and intended way. (Experimental use exception)
Judge Rich held that, since design patents have almost no scope and any nontrivial change in the design in response to market research is the basis for a new design patent anyway, there is no clear way in which an ornamental design for an article of manufacture can fall under this exception.
Bernhardt v. Collezione Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004)
“Public use” of a claimed design required to be public; showing at an industry conference in which there is an understanding of confidentiality, or a confidentiality agreement, is not sufficient to meet this standard.