Overview of Design Patent Protection

Design patents are governed by patent laws at 35 USC 171-173.  Section 171  imposes the following requirements for design patents:

• novelty
• nonobvious
• originality
• ornamentality
• article of manufacture

1.        Article of Manufacture

An article of manufacture means a tangible man-made object.  In other words, the patentable design must be embodied in a man-made tangible object.  The patentable design cannot be a design or picture standing alone.  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 .  Design patent protection is not limited to a whole article of manufacture, but can be for a portion of an article of manufacture.

2.        Originality

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.

However, 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.

3.        Novelty

A patentable design must be new and must satisfy statutory bar provisions, such as, for example, within one year of making a new design public.  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 patent.

Thus, a key difference between the novelty of a design patent and that of a utility patent is that 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.  An invention may be novel for design patentability purposes, yet lack novelty for utility patentability purposes, and vice versa.

4.        Non-Obviousness

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.  Therefore, the non-obviousness analysis for design patents closely parallels the non-obviousness analysis for utility patents.

In evaluating obviousness, 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.  Thus, the emphasis is 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.

Similar to a utility-type non-obviousness analysis, note also that evidence of secondary considerations, such as commercial success, can be presented to support a finding of design non-obviousness.  The 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.

5.         Ornamentality

A patentable design must be ornamental, which means that it must have an ornamental appearance that is not dictated by function alone.  Thus, if a particular design is essential to the use of the article (vertical smoke stack), it cannot 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 in order to be eligible for design patent protection.