A design patent is defined as:
“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture. (see USPTO – Patents Guidance, Tools, & Manuals)
A design patent covers the non-functional aesthetic characteristics ( 1) configuration or shape, 2) surface ornamentation, or 3) combination of configuration and surface ornamentation) of an article of manufacture (but not the article of manufacture itself). Conversely, a utility patent covers the functional aspects (use, operation, etc.) of an article (a functional object). (see 35 USC 171). Stated simply, “a ‘utility patent’ protects the way an article is used and works (35 U.S.C. 101), while a ‘design patent’ protects the way an article looks (35 U.S.C. 171).” (see MPEP 1502.01)
Further, the MPEP states that “in design patent applications, ornamentality, novelty, nonobviousness, enablement and definiteness are necessary prerequisites to the grant of a patent.” (see MPEP 1504 – Examination – Design Patents).
Design patent protection lasts for 14 years from the date of issue (in contrast to 20 years from filing for a utility patent filed after 6.8.95 – see MPEP 2701 – Patent Term). Additionally, once a design patent is filed, the Applicant may utilize a “patent pending” designation.
To view recently granted design patents, the reader is invited to perform a search on the USPTO search website: Patent Full-Text and Image Database. If the reader is interested in performing such a search, enter “APT/4″ in the Query textbox to see recently granted design patents, or “APT/4 AND KEYWORD” if the reader is interested in performing a search for a specific keyword (e.g., “APT/4 AND jewelry”).
Design patent applications qualify for expedited examination if a number of requirements are satisfied (e.g., compliant drawings (1.84), pre-examination search, request for expedited examination w/ fee and statement, IDS, etc.). For further details regarding the foregoing, the reader is invited to review: MPEP 1504.30 – Expedited Examination and 37 CFR 1.155).
Ornamentality vs. Functionality
A design must be “primarily ornamental” (and not “primarily functional”) to be patentable, and “in determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993)” (see MPEP 1504.01(c) – Lack of Ornamentality)
Ornamentality – Alternative Designs
As stated by the Federal Circuit,
“[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not ‘ornamental’–was not created for the purpose of ornamenting.”). A design is not dictated solely by its function when alternative designs for the article of manufacture are available. see L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed.Cir.), cert. denied, 510 U.S. 908, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993).”
In addition to “alternative designs,” the Federal Circuit has provided a number of items to consider in determining whether a “patented design as a whole” is dictated by functional considerations:
“Consideration of alternative designs, if present, is a useful tool that may allow a court to conclude that a challenged design is not invalid for functionality. As such, alternative designs join the list of other appropriate considerations for assessing whether the patented design as a whole–its overall appearance–was dictated by functional considerations. Other appropriate considerations might include: whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.” See Berry Sterling Corp. v. Pescor Plastics, Inc. 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).
Furthermore, if “a design is not visible in its ultimate end use,” it is likely that there is a lack of ornamentality (see MPEP 1504.01(c)). The MPEP additionally states that “hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).” At least one court has held that “it is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961).”
Regarding multiple embodiments, MPEP 1504.05 states, ”it is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept **>. Two designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of obviousness-type double patenting. see In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).”
In view of the foregoing, it should not be surprising that the drawings are the most important component of a design patent application. Accordingly, Applicants should ensure that the drawings that are included in a design patent application cover the actual product that legal protection is sought for. The MPEP at Rule 1.84 – “Standards for Drawings” outlines the drawing requirements for design patent applications. A few items are somewhat important and should be remembered in preparing design patent application drawings:
- File Complete Drawings Initially: The drawings should illustrate the design at the time of filing the design patent application as certain amendments to the drawings at a later point during patent prosecution may be construed as introducing new matter into the application (which is not allowed).
- Provide Views of All Perspectives: The drawings should contain an appropriate number of views to completely disclose the claimed design. More specifically, the drawings should illustrate each view (front, rear, right side, left side, top and bottom) of the article of manufacture to avoid definiteness (35 USC 112) issues. However, if a view is duplicative of another view (“mirror image”) or which is flat and does not include any ornamental features, such a view may be omitted. Please note that if a view is omitted further to one of the foregoing conditions, an appropriate statement should be included in the Specification. (see MPEP 1503.02 Drawings – Design Patents) Further, to obtain the greatest claim breadth, the Applicant may consider including within the drawings, only the items which are necessary for patentability purposes.
- Surface Shading: Although surface shading is not required, it must be employed appropriately if it is indeed utilized to avoid having the drawings held as being indefinite and nonenabling under 35 USC 112. (see MPEP 1503.02)
- Broken Lines: Broken lines are usually employed to “disclose the environment related to the claimed design and to define the bounds of the claim.” (see MPEP 1503.02 for further details) Conversely, the claim scope of a design patent application is defined by solid lines.
- Black and White Drawings: Black and white drawings are normally required; however, to determine whether and if color drawings/photographs are acceptable, a thorough review of Rule 1.84 is required.
The USPTO (government) fee (large entity) for filing a design patent is $460 (Design Basic Filing Fee: $220; Design Search Fee: $100; Design Examination Fee: $140) – substantially less than the cost of filing a utility patent application. Additionally, if the design patent application is allowed, there is a design issue fee of $860 (large entity). Further, as mentioned above, there are no maintenance fees for design patents.
It should be noted that if a party qualifies for Small Entity status, the aforementioned fees will be reduced by 50%. Additionally, as the USPTO fees may have changed since this article was posted, the reader should review the USPTO Fees webpage to obtain the most current information. (see Current USPTO Fee Schedule)
Public Disclosure – Loss of Rights
As stated above, utility patents and design patents share many of the same patent laws. One of these laws (35 USC 102(b)), requires an Applicant to file a patent application within a year of public disclosure (printed publication/on sale/offer for sale/public use, etc.) or “patenting” anywhere to avoid the “statutory bar” of 35 USC 102(b) which bars the patentability of an invention (loss of right to obtain patent protection over invention). However, it should be noted that most other countries (outside of the United States) do not provide such a time period for filing, and a public disclosure prior to filing will likely foreclose patentability in most foreign jurisdictions.
It should be stressed that “in order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within six months of the earliest date on which any foreign application for the same design was filed. Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).” (see MPEP 1504.10 – Priority Under 35 USC 119 (a)-(d) – Design Patents) Further, most countries (WTO member countries) provide a six month period to file a design application which claims priority to a U.S. design application filing. Additionally, it should be noted that “the United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the “Hague Agreement Concerning the International Deposit of Industrial Designs,” “Uniform Benelux Act on Designs and Models” and “European Community Design.” (see MPEP 1504.10)
Foreign Jurisdictions – Design Patent Grant or Registration Upon Filing
Unlike the United States which employs an examination process to ensure compliance with various statutory provisions, many other countries provide a design patent grant or registration upon filing. For further information regarding which foreign jurisdictions provide a design patent grant or registration upon filing, the reader is invited to review: MPEP 1504.02 – Novelty – Design Patents.
In an en banc rehearing, the Federal Circuit (CAFC) in Egyptian Goddess v. Torkiya (2008) provided design patentees with an (arguably) more lenient standard for determining design patent infringement. More specifically, the Court held that the “ordinary observer” test is the only applicable test for determining design patent infringement. Prior to this ruling, two distinct tests (“ordinary observer” and “point of novelty”) had to be satisfied to prove design patent infringement.
In rejecting the point of novelty test, the Court stated that, “one such problem is that the point of novelty test has proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design.” Further, the Court stated that “applying the ordinary observer test with reference to prior art designs also avoids some of the problems created by the separate point of novelty test.”
The Court indicated that the “starting point for any discussion of the law of design patents is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871).” The Gorham Court stated that,
“[I]f, in the eyes of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
The primary question that the CAFC formulated for determining design patent infringement under the ordinary observer test is: would an ordinary observer, familiar with the prior art designs, be deceived into believing that the alleged infringing design is the same as the patented design?
To obtain further information regarding design patents, the reader is invited to review the following USPTO resources: