Design Patents

Design patents are restricted to claiming ornamental (i.e. nonfunctional) aspects of things . The squiggles at the bottom of silverware, for example, have no function whatsoever except to be decorative. Thus, they would be protected using a design patent. The same goes for designs of sunglasses, automobiles, furniture, and so forth. 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. Subject matters that could be considered offensive to any race, religion, sex, ethnic group, or nationality are expressly precluded from patentability .

Many articles, of course, have both a distinctive ornamental appearance and utility, and in such instances they can be protected by both design and utility patents. Thus, the overall shape of a pair of sunglasses might have no functional benefit whatsoever, and therefore could be patented using a design patent. But the chemical composition or the coating of lenses would definitely be functional, and therefore could be patented using a utility patent. In many instances it is extremely difficult to tease out the utilitarian aspects from the ornamental aspects. With respect to sunglasses, for example, the shape of the lenses might be ornamental, functional, or both.

Design patents have only a single claim, which has substantially the same format for every design patent; " The ornamental design for a _____, as shown". When there is a properly included special description of the design in the Specification, or a proper showing of modified forms of the design, or other descriptive matter has been included in the Specification, the words "and described" should be added to the claim following the term "shown", and the claim should read "The ornamental design for a ____ as shown and described".

Design patents also have no Specification to speak of, other than the descriptions of the various figures, so that the scope of the claim is determined almost entirely by the Drawing. Elements that are considered to be part of the invention are shown in solid lines, and elements that are need to provide context, but are not deemed to be part of the invention, are shown in dotted or broken lines. Design patents are relatively easy to get issued, but usually not worth very much because they are too easy to circumvent. Since the scope of the protection is necessarily limited to ornamental appearance, a competitor need only adopt a different design to circumvent the patent.

The tests for determining validity and infringement of a design patent are supposed to be identical to those for a utility patent . This includes subject matter under 35 U.S.C. § 101, originality , statutory bars such as public use under § 102(b) , obviousness under § 103 , and so forth. Moreover, a party challenging patent invalidity must establish invalidity by facts supported by clear and convincing evidence . Infringement of a design patent is examined in two-step process, by construing the claims and then applying the construed claims to the accused object .

In practice, however, the tests differ as much as night and day. Design patent infringement prevails only when: (a) the patented design as a whole is substantially the same as the accused design (the "ordinary observer test") ; and (b) accused device . . . appropriates the novelty in the patented device which distinguishes it from the prior art (the "points of novelty test") . The key distinction is that the "point of novelty" test focuses entirely on individual points of novelty, and gives no weight to the combination as a whole in determining infringement. Since most inventions are a combination of old elements, focusing on novelty of individual points of novelty without regard to their combination substantially eviscerates design patent protection.

In a 2006 case, Lawman v. Winner , the Federal Circuit upheld a District Court holding of non-infringement with respect to Des. 357621, which claims "the ornamental design for a sliding hook portion of a vehicle steering wheel lock assembly" similar to "The Club". The District Court had previously found that the invention had eight points of novelty, and that all eight points existed in the prior art. The key portion of the analysis is that the District Court refused to consider whether there was any "suggestion to combine visual elements in the alleged prior art to achieve the '621 patent" and that refusal was upheld on appeal. The accused product was found not to infringe merely because each of the "points of novelty" of the patented design existed in the prior art.

"Whether there is any suggestion to combine prior art references may be relevant in a validity inquiry to determine obviousness. (citation omitted). It has no place in the infringement issue in this case. What Lawman's contention comes down to is that the D'621 patent contains a ninth "point of novelty", namely, the combination in a single design of the eight non-novel "points of novelty" it embodies. This argument is inconsistent with, and would seriously undermine, the rationale of the "points of novelty" test .

One upside is that a design patent and a product configuration trade dress type of trademark may be obtained on the same subject matter. The CCPA held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from one is dependent or conditioned by the right concomitant to the other . It is also possible to secure a copyright registration on the same ornamental design as is protected by a design patent . In fact, the Patent Office permits the inclusion of a copyright notice in a design patent, provided inter alia that the applicant includes a waiver as follows:

A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyright rights whatsoever.

Design patents certainly have a place in a patent portfolio, especially for companies such as Oakley™, whose sunglass product lines rely heavily upon ornamental appearance. They can also be quite useful in preventing knock-offs by competitors who simply take molds of the patented products. But in many other instances filing for design patents is just a waste of time and money, giving inventors a false sense of security that their inventions are protected by patents.