Design Patent Protection in the United StatesJul 2001 – epi Information Journal, 2/2001 (June), pages 81-87
A. Article of Manufacture
A. Relatively Broad Protection Is Available
B. Procedural Advantages
C. Infringer's Total Profits Are Available
D. Preliminary Injunctions Are Available
It is well known that impressionists were attracted to and inspired by the industrial objects that appeared in their world during the second half of the 19th century. For example, Monet's and Caillebotte's representations of Argenteuil's local distillery with its smoking chimneys and of iron railroad bridges over the Seine, are now celebrated works of arts. These artists recognized the esthetic value of these constructions' shapes and geometries, these constructions whose raison d'etre was purely functional. About a century later, Andy Warhol and his pop art focused on the artistic values of objects such as soup cans, knives, guns, and money.
The field of Intellectual Property also recognizes the value of the appearance of functional objects. In the United States, this recognition is embodied in the design patent system. Unfortunately, too many patent practitioners, who are busy obtaining utility patent protection for their clients' useful inventions, forget about design patent protection and leave unprotected the valuable appearance of their clients' work. This article intends to review the U.S. design patent system. As will be seen, U.S. design patents and U.S. utility patents share many of the same laws. Section II addresses the basic requirements for obtaining a design patent. One important point to retain from that section is that, although ornamentality is a requirement, the functionality of an invention does not prohibit its protection by a design patent. Section III examines the various advantages associated with obtaining design patents. One central point from that section is that careful drafting of a design patent application can provide broad and strong protection.
The U.S. design patent statute, just like the U.S. utility patent statute, is found in Title 35 of the United States Code, and includes 35 USC 171-173. Specifically, 35 USC 171 states that:
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.
The provisions of this title relating to patents for invention shall apply to patents for designs, except as otherwise provided.
The first part of section 171 imposes four requirements for design patentability: novelty, originality, ornamentality, and the subject matter must be an article of manufacture. The second part of section 171 implies that other requirements, which relate to utility patents, also apply. In particular, a design must be non-obvious. The following sub-sections discuss each of these five requirements. Other requirements for design patentability exist, for example compliance with 35 U.S.C. Â§ 112, first and second paragraphs. These other requirements, which are related to the manner in which the design patent is applied for, rather than the design itself, are not addressed in this article but are discussed elsewhere.
A. Article of Manufacture
According to section 171 the design to be patented must be "for an article of manufacture." An article of manufacture means a tangible object made by man. In other words, the patentable design must be embodied into, or applied to, a man-made tangible object. The patentable design cannot be a design or picture standing alone, i.e., in the abstract. Impressions, prints, or pictures applied to an article of manufacture, and the shape or configuration of an article of manufacture satisfy the article of manufacture requirement and are thus patentable as designs under 35 USC 171. As an interesting example, the court in In re Hruby held that a pattern of water for a water fountain was a design for an article of manufacture.
Another interesting example of a patentable article of manufacture is a computer-generated icon shown on a computer screen. The icon itself is not patentable, but when claimed as an icon embodied on a computer screen, monitor, or other display panel, the combination of the icon and the display panel (or portion thereof) is patentable as a design under 35 USC 171.
Importantly, 35 USC 171 does not limit design protection to a whole article of manufacture, but can be for a portion of an article of manufacture. This point was explained in In re Zahn, where the court held that the applicant could claim only the design for the shank portion of a drill bit without having to claim the entire drill bit. The In re Zahn court based its reasoning on the fact that 35 USC 171 applies to designs "for" articles of manufactures and not "of" articles of manufactures. As discussed further below in Section III-A, the possibility to claim only the design for a portion of an article of manufacture is useful to obtain a relatively broad protection.
Under 35 USC 171, a patentable design must be "original." The originality requirement bars issuance of a design patent for a design derived from any source or person other than the individuals named as inventors. The originality requirement excludes from patentability any simulation of known objects, persons, or naturally occurring forms. As professor Chisum explains:
The originality requirement protects the interest of the true inventor and the general public; it would be morally offensive to allow one to harvest what another has sown. The requirement bars a patent even if the true inventor does not complain or if the true inventor is not known, as for example, when a person discovers and imports for the first time into the United States a device in common use in a foreign country.
On the other hand, a design can be original even if it is "the result of a reassembling or regrouping of familiar forms and decorations." In a way, the originality requirement is related to the novelty and non-obviousness requirements since it is based on that which is already known, and thus on that which cannot be new.
Under 35 USC 171, a patentable design must be "new." The second clause of 35 USC 171 also requires that the design patent satisfy the novelty and statutory bar provisions of 35 USC 102. The standard for evaluating the novelty of a design is the "average observer test:" the overall appearance of the design in the eyes of an average, or ordinary, observer must be different from the appearance of any other single prior design.
There is therefore an important difference between the novelty of a design patent and that of a utility patent: the novelty of a design patent comes from the ornamentation of the claimed design while the novelty of a utility patent comes from the technical characteristics of the claimed invention. Therefore, an invention may be novel for design patentability purposes, yet lack novelty for utility patentability purposes, and vice versa. As a hypothetical example, an entirely pink soda can would be ornamentally different from a regular soda can, yet would lack structural novelty. A soda can made out of a room temperature superconductor would be structurally new over a known aluminum soda can, yet would lack novel ornamentation. Of course, a pink superconducting soda can would be novel and protectable by both a design patent and a utility patent.
According to section 171, the provisions "relating to patents for inventions shall apply to patents for designs," which implies that a patentable design must be non-obvious under 35 USC 103. The courts have held that the proper standard to evaluate a design's non-obviousness under 35 USC 103 is whether "a designer of ordinary skill of the articles involved" or other closely related object would have found the design as a whole obvious at the time the design was invented. The non-obviousness analysis for design patents therefore closely parallels the non-obviousness analysis for utility patents, which was outlined in the seminal Supreme Court case of Graham v. John Deere Co., except that the person of ordinary skill in the art is replaced by a designer of ordinary skill.
Another important aspect of design non-obviousness is that "the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence -- not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature." A finding of obviousness requires "a reference to something in existence, the design characteristics of which are basically the same as the claimed design." The emphasis is thus on the visual appearances of something in existence, not on design concepts. "When the patented design is a combination of selected elements in the prior art, a holding of obviousness requires that there be some teaching or suggestion whereby it would have been obvious to a designer of ordinary skill to make the particular selection and combination made by the patentee." The test for properly combining references in design cases, as distinguished from utility cases, is "not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that appearance of certain ornamental features in one would suggest the application of those features to the other."
Finally, as for a utility-type non-obviousness analysis, evidence of secondary considerations, such as commercial success, can be presented to support a finding of design non-obviousness. However, "[t]o be of value, evidence of commercial success must clearly establish that the commercial success is attributable to the design, and not to some other factor, such as a better recognized brand name or improved function."
Under 35 USC 171, a patentable design must be "ornamental." The exact meaning of "ornamental" in the context of design patents has been debated and the courts have used various definitions and criteria to determine the issue of ornamentality. Some courts have held that "ornamentality" requires at least that the design be esthetically pleasing, attractive, the product of "an artistic conception," "embellished or adorned, or distinguished by its grace of symmetry of form."
However, the requirement of "ornamentality" is strongly related to the function of the article of manufacture. Specifically, "to qualify for design patent protection, a design must have an ornamental appearance that is not dictated by function alone." In other words, "if a particular design is essential to the use of the article, it can not be the subject of a design patent. . . . When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose," and to be patentable under 35 USC 171.
It is therefore not enough that a design be esthetically pleasing: "The configuration and appearance of many articles of manufacture, though dictated by functional requirements, are often pleasing to look at. However, if the resulting configuration proceeds primarily from the necessity of functional or mechanical requirements, it is not a valid design patent." Consequently, it seems that "ornamental" means having an overall distinct appearance that is not dictated by the function of the article of manufacture. In other words, the shape or configuration of a functional object may be protectable by a design patent if the shape or configuration is not dictated by the function of the object.
In fact, it turns out that a great variety of articles of manufactures, which are typically protected by a utility patent, are also protectable by design patents because their overall appearance is not fully dictated by their utility. Indeed, the subjective inquiry of whether articles of manufactures are esthetically pleasing seems to have been pushed aside. Examples of patented designs for functional articles of manufactures include a power supply (U.S. D298,824), a telephone handset (U.S. D270,445), an engine (U.S. D416,265), a valve body (U.S. D433,730), a computer battery (U.S. D431,808), a magnetic head (U.S. D398,613), a front element for a magnetic tape cassette (U.S. D356,307), an optical disk cartridge (U.S. D371,548), connectors for printed circuit boards (U.S. D402,273 and D407,383), carrier elements for a semiconductor chip (D405,779, D406,821, and D406,822), various parts for semiconductor manufacturing devices (D401,250, D405,431, and D406,113), a nut (U.S. D433,319), a suitcase (U.S. D285,626) and a shoe insert (U.S. D385,393). In recent years, U.S. patent practitioners have witnessed a sharp increase in the number of design patent applications filed on such functional devices.
In fact, it is possible to obtain a utility patent and a design patent for a single article of manufacture as long as "the design patent includes ornamental features which go beyond and are patentable over the structural features as defined in the claims of the mechanical application." For example, a utility patent and a design patent have been granted on a "flow promoter," which is a device attached to the base of a storage container and configured to promote flow of material from the container. As stated by the CCPA, "patent laws, of course, provide that a design patent and a utility patent may well be issued on the same construction. . . . However, each such patent must claim a separate, distinct patentable invention."
When evaluating the ornamentality of a design, it is important to keep in mind that there is a difference between the function of the design and the function of the article of manufacture embodying the design. As noted by the CAFC, "[t]he fact that the article of manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. . . . The function of the article itself must not be confused with 'functionality' of the design of the article."
Importantly, the visibility of a design when the article of manufacture is in its normal use is not a requirement for design patentability. What is required is that "the article's design is a 'matter of concern' because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use." For example, a hip implant intended to be concealed once installed in the patient was deemed potentially ornamental because the implants were displayed in advertisements and at trade shows and because doctors could select implants based on their designs and not solely on their functional characteristics. The USPTO now recognizes that the use of an object is "a period in the article's life, beginning after completion of manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the article. Although the period includes all commercial uses of the article prior to its ultimate destination, only the fact of specific cases will establish whether during that period the article's design can be observed in such a manner as to demonstrate its ornamentality." For example, the USPTO's Board of Appeals has held that shotgun cartridge wads (the tampon portions between the powder and the bullet) were potentially ornamental based on the In re Webb decision and because there was evidence of record that the wads were sold in clear bags and that their appearance was "a critical factor in the marketplace."
A. Relatively Broad Protection Is Available
1. The Test for Design Infringement and the Doctrine of Design Equivalents
As with utility patents, a design patent is only as valuable as the subject matter that it claims. Perhaps the most important consideration to keep in mind when preparing a design patent application is that the drawings define the scope of protection, so that great care should be taken in preparing the drawings. However, the accused design need not be identical to the drawings of the design patent in order to infringe the patented design. In the 1871 seminal case Gorham v. White, the Supreme Court stated the test for design patent infringement, still in use today:
We hold, therefore, that if, in the eye 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.
A second prong was added to the test for design patent infringement: "For a design patent to be infringed, no matter how similar two items look, 'the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.'"
Furthermore, as with utility patents, a doctrine of equivalents offers design patent owners some flexibility when proving that the accused device infringes their patented designs. This doctrine of design equivalents was also introduced by the Gorham Court:
Still, though variances in the ornament are discoverable, the question remains, is the effect of the whole design substantially the same? Is the adornment in the [accused] design used instrumentally to produce an appearance, a distinct device, or does it work the same result in the same way, and is it, therefore, a colorable evasion of the patent, amounting at most to a mere equivalent? In regard to this we have little doubt, in view of the evidence. Both the White designs we think are proved to be infringements of the Gorham patent.
"Federal courts . . . have given a very equitable range of equivalents to design patent claims over the years, in part because of the very reason that patent attorneys preparing design patent applications are not omniscient and cannot forsee the infringer's exact embodiment of the product."
2. Filing Strategies
The field of design patent includes a number of unique nuances that the applicant must be aware of in order to take full advantage of design patent protection. Useful strategies for obtaining broad design patent protection were presented by Karl G. Hanson in an article entitled "Intellectual Property Strategies for Protecting the Looks of A New Product" and are summarized in this sub-section.
A first step is to identify the broad, generic embodiments and the stylistic or species embodiments of the invention by identifying the feature, or combination of features, distinguishing the invention aesthetically from other designs or what feature or combination of features will induce a consumer to purchase this product.
Next comes the preparation of the drawings, which are the most important aspect of a design patent application. Every line and every surface shading used in the initially filed drawings should be deliberate, with all extraneous and non-essential lines being removed or depicted only in broken lines, or "phantom lines," prior to filing of the design patent application. The courts and the USPTO recognize that portions of the drawings drawn in phantom lines merely disclose the environment related to the claimed design and do not limit the scope of the claims. On the other hand, the scope of the claims is defined by the portions of the drawings drawn in solid lines, so that each solid line can be viewed as a limitation that narrows the scope of the claim of the design patent. By only depicting in solid lines the feature or combination of features that are essential to the novelty of the embodiment, a relatively broad protection of the design can be secured.
Obviously, various generic embodiments may be depicted as alternative embodiments in a separate set of drawings, which include either other novel features of the invention or novel combinations of various features of the invention. Phantom lines should be used for all non-essential features of any given embodiment. Inherently narrow features, such as color, size, or texture, should only be included in the application if those features are novel and are intended to limit the scope of the application to include those features.
Once a decision has been reached as to which embodiments should be filed, a single design patent application can be prepared that includes both the generic embodiments and the stylistic or species embodiments of the invention. It has been the longstanding practice of the USPTO to limit design patent applications to a single claim. However, multiple embodiments of an invention are permissible for filing in a single patent application. Therefore, it may be desirable to file all of the various embodiments of an invention in a single application, if possible, particularly if the embodiments share at least some common design features. Of course, the design application may be subject to a restriction requirement if the Examiner determines that more than one invention is present within the application.
One benefit of filing the various embodiments in a single design patent application is that only one initial application filing fee will be required. Ideally, all of the embodiments will be examined on their merits by the Examiner. Upon receipt of the first Official Action on the merits, the applicant is in a good position to evaluate the patentability of each of the embodiments. At this point it may be advisable to permit the broadest claimed embodiment to issue by canceling all other embodiments and to file separate divisional applications on any of the other embodiments that are determined by the Examiner to have allowable subject matter. Any rejected embodiment could be prosecuted in a separate divisional application. It may be advisable to ensure that each design patent that issues only contains one embodiment, since the Federal Circuit has stated that a claim covering more than one embodiment may be rejected or found invalid if the prior art demonstrates the obviousness of any one of the embodiments. Therefore, by splitting each embodiment into a separate patent, the applicant will ensure that the scope of the patents will not be limited by the inclusion of alternative embodiments that may be unnecessary for patentability purposes.
The filing strategy discussed above may result in double-patenting rejections. Under a statutory double-patenting rejection (or "same invention" type double patenting rejection) based on 35 U.S.C. Â§101, the rejection can generally be overcome either by identifying differences in the embodiments or abandoning the narrower embodiment. Under the judicially created obviousness-type double patent rejection, the rejection can generally be overcome by filing an appropriate terminal disclaimer.
B. Procedural Advantages
One benefit of using design patent protection is that the average pendency (duration of the prosecution before the USPTO) of a design patent application is significantly shorter than the average pendency of a utility patent application. Therefore, design patents can provide a relatively quick and effective method of preventing a competitor from infiltrating a market by mimicking the aesthetics of a successful product.
In many circumstances it is advantageous to file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention. For example, a patentee who holds a design patent and a utility patent can sue an infringer on the basis of both patents. In most patent litigations, an infringer's defense includes a claim that the patent is invalid. As explained in the first part of this article, the requirements for patentability for a design patent are somewhat different from those of a utility patent. Consequently, while one patent may be invalidated during litigation, the other may not. Therefore, obtaining a design patent and a utility patent increases the odds that the patentee recovers damages.
One strategy for filing for design and utility patent protection is to file a utility patent application and, once the utility patent application is in condition for allowance, file a divisional design patent application based on the original utility patent application. Alternatively, if a rejection is received and it is apparent that none of the claims of the utility patent will likely be allowed, a design divisional application can be filed. In order to effectively follow this strategy the original utility patent application must be prepared and filed with drawings that are of design application quality, and a brief description of the ornamental aspects of the invention should be included in the specification.
In certain circumstances, the applicant may wish to file a divisional design patent application earlier than mentioned above, or may wish to file the design patent application simultaneously with the filing of the utility patent application. Such a situation may arise if the applicant is aware of a competitor producing a product that falls within the scope of the patent protection being sought by the design patent. In this situation, it may be advantageous to file the design patent application as soon as possible in hopes that a design patent will issue quickly, and can then be used to prevent the competitor from continuing to produce the product. One should keep in mind, however, that under this strategy the design patent may issue first so that the utility application can be rejected for double patenting. If a terminal disclaimer is filed to overcome this rejection., the term of the utility patent will be limited to the term of the design patent, which is fourteen years from issue of the design patent.
One caveat that foreign applicants should keep in mind is that, in order to claim priority to a foreign priority document, the first U.S. application (either utility or design) must be filed within sixth (6) months of the filing date of the foreign priority document. Applicants should also be aware that a design application cannot claim priority to a provisional application.
Finally, applicants should keep in mind that the term of a design patent is different from that of a utility patent: the term of the design patent is fourteen years from the issue date, while the term of the utility patent is twenty years from the earliest U.S. filing date of the utility application. In other words, the design patentee is guaranteed a 14 year of patent term regardless of the duration of the prosecution. Furthermore, a design patentee does not have to pay maintenance fees. Consequently, once the issue fee is paid, the design patent can remain enforceable for fourteen years without further payments.
C. Infringer's Total Profits Are Available
The monetory remedies provided for utility patent infringement apply equally to design patents.
Under 35 USC 284, the owner of a utility or design patent is entitled to "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together and cost as fixed by the courts." Typically, the damages awarded under this section of the statute correspond to a reasonable royalty. When the patent owner can prove that he or she would have made the infringer's sales but for the infringement, the patent owner is entitled to "lost profits" under 35 USC 284. When the patent owner proves that the infringement was willful, "the court may increase the damages up to three times" the compensating amount.
As already stated, a design patent owner is entitled to the monetary damages prescribed by 35 USC 284. However, the design patent owner has the additional option of demanding the infringer's "total profits" under 35 USC 289 which states that:
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit . . . (emphasis added).
The design patent owner, however, is not entitled to recover twice: once under 35 USC 284 and once under 35 USC 289. Nonetheless, having the option to choose damages under 35 USC 289 may be advantageous, for example when the infringer's total profits are substantially greater than any reasonable royalty.
D. Preliminary Injunctions Are Available
A preliminary injunction is a court order commanding the accused infringer to stop its (allegedly) infringing activities before or during trial. In general, preliminary injunctions are issued if the court believes that there is a likelihood of success that the plaintiff (typically the patent owner) will prove that the patent is valid and infringed, and that the plaintiff will suffer irreparable damages if the preliminary injunction is not issued. It is often difficult to convince a court to issue preliminary injunctions. However, preliminary injunctions are often sought because of the threat they impose on defendants.
Design patent owners can request and obtain preliminary injunctions against accused infringers. For example, in 1988 American Antenna Corp. successfully stopped its competitor Wilson Antenna Inc. from further manufacturing, using, distributing and selling its KW-1000 antenna pending final judgement because the design of that antenna likely infringed American's design patent U.S. D255,449. In 1990, Oscar Mayer Foods Corp. successfully enjoined competitor Sara Lee from selling its product, "Lunch 'N Munch" in a red package because the red package likely infringed Oscar Mayer's design patent U.S. D305,204. In 1990, National Presto Industries, a manufacturer of household appliances, successfully stopped giant retailer Wal-Mart from selling, just prior to the peak in the selling season, the "Quick Fry" electric deep fryer manufactured by Dazey Corporation and allegedly infringing Presto's design patent U.S. D246,686.
A survey of all reported decisions involving design patents in motions for preliminary injunctions showed that between 1986 and 1990 design patent owners were successful 70% of the time in having the court grant a preliminary injunction against the accused infringer. With this kind of record, a design patent owner comes to the bargaining table with a powerful weapon in hand when negotiating with a potential infringer. This impressive statistic on preliminary injunctions reflects the increased respect for design patents granted by U.S. district courts, which held valid 66% of the design patents at issue between 1986 and 1991. In that sense, the district courts seemed to have received the message sent from the Federal Circuit, which upheld 80% of all lower court findings of validity during that period, thereby giving real meaning to the presumption of validity for design patents.
As discussed above, design protection can be obtained on very functional articles of manufacture. Patent practitioners should thus always consider whether their clients' functional inventions deserve design patent protection. Drafted carefully, design patents can be obtained relatively quickly and can provide relatively broad protection for fourteen years without payments of maintenance fees. Design patents are enjoying a renewed judicial respect and today their presumption of validity is real. Armed with a design patent, businesses may be entitled to their competitors' total profits and can stop their competitors' activities, via a preliminary injunction, before the completion of a lengthy litigation. Design patents can thus become powerful cards to play during negotiations, and are potent members of an effective patent portfolio.
Published in the epi Information Journal, 2/2001 (June), pages 81-87.