Design Patent Myths—An introduction

First of all, thank you to Dan for inviting me to be a guest blogger this month. I’ll be taking this opportunity to talk about my favorite topic, design patents.

Ever since the jury returned its blockbuster verdict in Apple v. Samsung last summer, design patents have been enjoying an unusual amount of attention—both in the media and in academia. But there is still a lot of misinformation out there.

So while I’m here, I’d like to address some design patent myths that I've encountered in the course of my research. Some of these myths are widespread; others are less common but raise interesting issues. Some are truly myths; in other cases, I’ll use the word “myth” more loosely. But before I dive into the myths, a bit of background might be helpful.

The American design patent system is actually quite old—the first design patent statute was passed in 1842. So long before (most) designs could be protected by copyright or trademark law, they could be protected by design patents.

Under the current statute, “any new, original and ornamental design for an article of manufacture” can be patented if it satisfies the general requirements for patentability, such as novelty and nonobviousness. Like other types of patents, design patents do not arise automatically; they must be granted by the U.S. Patent and Trademark Office following substantive examination.

One key difference between design patents and other types of patents is the nature of the claims. While technological inventions are claimed using words, designs are claimed using pictures. Specifically, solid lines are used to show what portion(s) of the design is claimed; broken lines can be used to show unclaimed “environmental” matter or boundaries. (If you're interested in more details, here is a slightly longer discussion.)

Design patents have been issued for a wide range of designs. Here are just a few examples. First, here is the drawing from D11,023, which was granted to Auguste Bartholdi in 1879 for Liberty Enlightening the World (a/k/a the Statue of Liberty):

 

And here is one of my personal favorites, D181,945, issued to Eero Saarinen in 1958 for the design of his iconic Tulip Chair:

 

Finally, here are some of the drawings from D283,037, issued Hasbro in the 1986 for a classic My Little Pony toy:

 

(For the record, I don’t know why Hasbro decided to omit the manes and tails entirely, instead of showing them in broken lines.)

In my next post, I’ll address one of the biggest, most enduring myths about design patents. In the meantime, if you have questions about design patents or have a myth (or other topic) you’d like me to address during my time here in the Lounge, please shoot me an email or to leave a note in the comments.

Comments

[Mark Nowotarski]

Sarah,

Great post. For those interested in how to use broken lines to strengthen a design patent, they might want to see "The Power of the Broken Line" in IP Watchdog http://bit.ly/strongdesignpatent1

[MacK]

A few subjects which it would be interesting to address:

The "aesthetic/functionality" distinction and its general practicability.

Design patents and software user interfaces - and computer games.

Design patents and clothing.

The widely spread view that a European Registered Design is the same thing as a Design Patent.

Design patents are nearly impossible to enforce in the US?

The Federal Circuit is hostile to design patents while favouring utility patents.

[Sarah Burstein]

MacK - Thanks for the comments. A lot of these are in the queue already, so stay tuned.

As to your last point, though, I can't say I've perceived any hostility toward design patents from the Federal Circuit--at least since Judge Rich. But if you (or anyone else) has seen something different, I'd love to hear more.

[MacK]

I'd add another one - forum shopping in the EU and registered designs - it is generally perceived that some courts are more favourable to design cases than others. Italy gets recommended (so long as you stay in the north), France.