Design Patent Myths—Only artistic designs can be patented

Another myth is that only artistic (or aesthetically appealing) designs can be patented. It’s true that that Patent Act expressly requires that a patentable design be “ornamental.” And the Supreme Court has suggested—albeit in dicta—that this means “a design must present an aesthetically pleasing appearance.” So perhaps design patent protection should be limited to designs that show some degree of aesthetic creativity. Or, at least, to situations where consumers actually care about how a product looks.

But under current Federal Circuit case law, there is no such requirement. Basically, the Federal Circuit will deem a design to be “ornamental” whenever there are alternative product designs available. (This is based on a string of logic that begins with the highly questionable premise that “ornamental” is the opposite of “functional,” although a full discussion of that issue is far beyond the scope of a blog post.) And there are almost always alternative designs available. Therefore, as Chris Buccafusco has pointed out, the Federal Circuit has effectively read “ornamental” out of the statute.

So now we live in a world where design patents can be obtained for drill bits,

Mattress frames,

 

The business end of surgical instruments,

 

Pipe coupling supports,

 

And all manner of connector/interface systems. This one was issued to Apple last week, for what appears to be the MagSafe 2 port:

What do you think? Should designs like these be considered ornamental? Should they be protectable as IP at all? And, if so, is this the right IP regime to use?

Comments

[MacK]

Funnily enough we were discussing this over lunch (we dod have these discussions.)

Intellectual property, and patents in general has a basic problem, and that is that it is in some respects simplistic in its structure. Thus patents treat a microchip as the same thing as a drug - business software the same as a painting or for that matter a book, and so on. All get the same duration of protection, most are judged by the same standard for validity (by which I mean obviousness, originality, etc.) and so on. The problem is that increasing this does not work. There are a few small recent departures - EU Database protection and Orphan Drug (and chip topography and boat-hull forms)- but in general, everything gets treated the same.

So when you ask the question you just did, it presents a tricky question. It is very hard to obtain a utility patent for certain things, so people resort perhaps to design patents (but good luck with the 4 examples you showed above in court - I'd have serious doubts as to whether they would be upheld. But is it fair that someone can put a fair amount of effort into a shape like say the surgical instrument and a copyist can just free ride?? But should the surgical instrument shape be protected for 20 years? How long should the MagSafe 2 connector be protected - should it be protected at all?

Stan Besen argued that excessive copyright protection for CDs combined with the overpricing of music CDs had cerated the piracy problem - that the incentives to infringer were just too large - and that there was a free-rider problem in music copyright by the holder's themselves (i.e., excess profits incentivise infringement to a point that the state and the public are unduly burdened to protect them.)

The problem of course is that post-TRIPS, and with the various conventions in play, changing IP to be more tailored to what is being protected runs into a new form of legislative inertia .. changing treaties.

[Mark Nowotarski]

My gut says that the pipe coupling and surgical instrument design patents would give very little protection against a direct copy. It seems to me that the entire claimed shapes of both are dictated by functionality.

The Magsafe port on the other hand might give good protection against a direct copy. The rounded corners, hump and rounded port all look like aesthetic design elements and not dictated by functionality. The hump, for example, could have an oval shape instead of a square with rounded corners and still serve its functionality of being a bumper.

The drill bits and mattress frame look like they are in the grey area. Is the angle of the twists in the drill or the angle of the slats in the mattress frame, for example, dictated by functionality or aesthetics? It seems like a bit of both. An accused infringer might be tempted to litigate rather than design around if confronted by a cease and desist letter if only because different angles might not be as functional as the claimed angles.

[MacK]

MArk,

Generally agree with you - I'd add that the scope of protection of the mattress would be very limited if upheld - i.e., small varioations would probably avoid infringement.

[MacK]

I claim copyright in my typos

[anon]

Maybe one of you IP geniuses can figure out how to stop all the spam comments on this site.
In a sense, perhaps it is poetic justice for the outing fiasco.
Scary, though, as this site appears to be less and less secure as the weeks go by.

[Sarah Burstein]

Mark raises a good point about infringement. It does seem like, while the Federal Circuit won't meaningfully police the requirement of ornamentality on the validity side, it does seem to be trying to make up for it (at least to some degree) on the infringement side. See, e.g., Richardson v. Stanley Works. Whether this is a prudent or workable approach is a whole other issue.