Posts Tagged: "ornamental design"

District court must consider whether functional elements contributed to ornamentation of design

The Court held that the district court must review the design disclosed in the patent as a whole, and consider whether functional elements contributed to the ornamentation of the design. Although a design patent protects ornamental features rather than functional features, the claims are not limited solely to ornamental elements. The combination of form and function to achieve an ornamental result is within the scope of a design patent. This is particularly true given that design patents are statutorily permitted to cover “articles of manufacture” which almost always serve a functional purpose. Because design patents “protect the overall ornamentation of a design, not an aggregation of separable elements,” eliminating individual elements of the design from consideration was found to be improper, and the Court remanded for further proceedings.

A Brief History of Design Patents

Although the first Patent Act was enacted in 1790, it was not until some 52 years later that the US patent laws were modified to allow for the patenting of ornamental designs. In 1842 a statute was passed to provide for, among other things, the grant of patents for any new and original: (1) design for a manufacture; (2) design for printing on fabrics; (3) bust or statue; (4) impression to be place on an article of manufacture; or (5) shape or configuration of any article of manufacture. Subsequently, in 1902, the design patent statute was amended to define the allowable subject matter simply as “any new, original, and ornamental design for an article of manufacture.’’ This language mimicked the 1887 modifications to the Patent Act relative to infringement, and still closely represents the current law regarding patentability of designs.

Strong Design Patents: The Power of The Broken Line

Design patents can cover one or more of the shape, color, ornamentation or texture of an object. Design patents claiming a shape typically have line drawings showing various views of the shape. Solid lines in the drawings are the claimed features of the shape. Broken lines in the drawings show what the rest of the object might look like. To determine infringement, it’s only necessary to compare the solid lines. The broken lines don’t count. Ironically, this means that the fewer solid lines in a design patent, or conversely, the more broken lines in a design patent, the stronger the patent.

Design Patents: The Under Utilized and Overlooked Patent

As the chart below demonstrates, design patent applications have been on the rise since 1975, but still in fiscal year 2011 there were just over 30,000 design patent applications filed. That strikes me as an extraordinarily low number given the number of inventions that could potentially receive a design patent. Design patents must be considered by all inventors because of the backlog at the United States Patent and Trademark Office. It can take 3 or more years, sometimes substantially longer, to obtain a patent. By contrast a design patent can in many instances be awarded in as few as 6 to 8 months. Some patent is better than no patent, so inventors with a gadget or device should ordinarily be seeking design patents as well as utility patents for that reason alone.

After 11 Years Apple Gets Design Patent on Drop Down Menu

Have you ever heard of a design patent application that remained pending for nearly 11 years? The design patent application was originally filed on January 4, 2000, and the design patent was issued earlier today as U.S. Design Patent No. D629,412. The long and tortured path to obtain the design patent on a drop down menu took 10 years and 50 weeks! Almost unbelievable. Getting this one patent application off the books should meaningfully help the averages, which is a sad commentary in and of itself.

E.D. of TX Rejects Design Patent Point of Ornamentality Test

In a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to “ornamental designs for an article of manufacture.” As a result, courts have struggled with how and when functional aspects of a design should be considered when construing a patent claim.…