Patent Basics for the Non-Practitioner: Part III of IV: DESIGN PATENTS

October 11, 2007 | By: Thomas F. Zuber, Esq.

A design patent protects the ornamental design of an object having practical utility.  An ornamental 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.

A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter for a design patent.  35 U.S.C. § 171.  Similarly, a design for an article of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern prior to reaching its end use, lacks ornamentality and is not proper statutory subject matter for a design patent.  Id.  Furthermore, 35 U.S.C. § 171 requires that, for a design to be patentable, it must be “original.” In other words, a design which simulates a well known, or naturally occurring, object or person is not original as required by the statute.  Finally, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent.  Id.

Once issued, design patents are valid for fourteen years from the date of issuance.  35 U.S.C. § 173.  An object with a design that is substantially similar to the design claimed in a design patent cannot be made, used, copied or imported into the United States.  The duplicate object does not have to be exactly the same as the patented object in order for the patent to be infringed - substantially similarity will suffice.

Comparison to Utility Patents:

In general terms, 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.  In more formal terms, utility patents protect the functionality of a given object, design patents protect the ornamental nonfunctional design of an object.  An application for a design patent will be denied if the design has practical utility as opposed to a mere aesthetic value. Similarly, a design patent for a design that is found to have practical utility (as opposed to mere aesthetic value) would be subject to invalidation.  For instance, a design of a airplane wing that facilities better flight would not be suitable for protection via a design patent (but may be suitable for protection via a utility patent).  Also, as noted above, whereas utility patents are (usually) valid for up to 20 years from the date of filing, design patents are valid for 14 years from the date of issue.

Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

Comparison to Copyrights:

Copyright registration protects nonfunctional items from being copied, while design patents protect the ornamental aspects of functional items from being infringed.  In other words, a copyrighted artistic expression must either have no substantial practical utility (e.g. a statue), or be separable from the useful substrate (e.g. picture on a coffee mug).  In contrast, design patented ornamental aspects are inseparable from the functional items to which they are applied.

Furthermore, in order to prove copyright infringement, one must demonstrate that the infringing item was copied from the original.  In contrast, one does not have to show that the infringing item was copied from the original to prove infringement of a design patent.  Thus, a design that was arrived at independently of a patented design can still infringe the design.

Copyright protection and design patent protection are not exclusive of each other.  For instance, the Statue of Liberty is an example of an object that would be suitable for both copyright and design patent protection.

Comparison to Trademarks and Trade Dress:

Trademarks and trade dress are used to protect consumers from confusion as to the source of a manufactured object.  In order to get trademark protection, the trademark owner must show that the mark is not likely to be confused with other trademarks for items in the same general class of goods or services.  In contrast, a design patent is granted only if the design is novel and nonobvious as to all items, even those that would be of a different class of goods (i.e.: as classes of goods are defined under trademark law) than the item bearing the patented design.  For example, an actual ring of a given shape can function as prior art precluding issuance of a design patent on a computer icon consisting of a ring with a similar shape.

Furthermore, a mark must be sold in commerce in order to be give rise to trademark protection.  In contrast, a design patent may issue regardless of whether or not the item bearing the design is sold in commerce or otherwise exploited commercially.

Finally, as noted above, design patents last for a period of fourteen years from the date of issuance, while trademarks can last indefinitely so as long as they continue to used in commerce (or there is a recognized excuse for non-use, which subject will be covered in a future article by another attorney at Zuber & Taillieu LLP).

As with copyright protection, trademark protection and design patent protection are not exclusive.  The Coca-Cola® bottle, for example, is protected by a trademark registration, and was also at the same time protect by a design patent, though the design patent is now expired.

Part IV of this four part series will issue in two weeks, and will address Plant Patents.

* The author, Thomas F. Zuber, Esq., is a partner of Zuber & Taillieu LLP, specializing in intellectual property transactions.

** This article is for informational purposes only.  This article does not constitute legal advice and, in the absence of a fully executed retainer agreement, no attorney-client relationship exists between its reader and Zuber & Taillieu LLP or any of its attorneys.  For more information, please read our disclaimer.

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