Invalidating a design patent
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. 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.Indeed, the subjective inquiry of whether articles of manufactures are esthetically pleasing seems to have been pushed aside. Phantom lines should be used for all non-essential features of any given embodiment. 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. patent practitioners have witnessed a sharp increase in the number of design patent applications filed on such functional devices. 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. What is required is that "the article's design is a 'matter of concern' because of the nature of its visibility 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. 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 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. The originality requirement excludes from patentability any simulation of known objects, persons, or naturally occurring forms. 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. Originality 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.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. However, the accused design need not be identical to the drawings of the design patent in order to infringe the patented design.
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. This doctrine of design equivalents was also introduced by the Court: Still, though variances in the ornament are discoverable, the question remains, is the effect of the whole design substantially the same?
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. 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. 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." III. 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.
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. Novelty 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. 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 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 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. 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.
court based its reasoning on the fact that 35 USC 171 applies to designs "for" articles of manufactures and not "of" articles of manufactures.
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. 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.