A recent decision by the Federal Circuit should make it easier for applicants to be granted design patents.
The US Patent Office (USPTO) explains design patents in the Design Patent Application Guide,
A 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.
Famous design patents include those for:
Outside the US, many other countries have a similar concept, called a “registered design” or “industrial design.”
An object that is substantially similar to a design claimed in a US design patent can’t be made in, used in, or imported into the US without a license from the US patent holder.
The case of In re Surgisil, L.L.P. arose when a patent examiner rejected SurgiSil’s design patent application that claimed an “ornamental design for a lip implant.”
The implant looked like a crayon or pencil with a point at each end.
The examiner rejected the application because an art tool called a “stump,” made by Blick, had pretty much the same shape as the implant and thus was considered “prior art” by the examiner.
As the USPTO notes,
In design patent applications, ornamentality, novelty, nonobviousness enablement and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.
Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.
However, the Federal Circuit held that this rejection was in error, because the lip implant and the stump were two different things:
the claim identifies a lip implant. The claim language recites “a lip implant,” … and the Board found that the application’s figure depicts a lip implant…. As such, the claim is limited to lip implants and does not cover other articles of manufacture. There is no dispute that Blick discloses an art tool rather than a lip implant. The Board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope.
Citing an 1871 Supreme Court decision, the Federal circuit noted that
“[t]he acts of Congress which authorize the grant of patents for designs” contemplate “not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts.”
In other words, design patents don’t protect designs in the abstract. They only protect designs associated with specific items. If the same design was already used with a different item, that doesn’t make it prior art. And presumably using the same design with a different item would not infringe the design patent for the first item.
However, it’s important to note that some product designs are also protected under trademark law.