Requirements for a Design Patent

Design patents are useful tools when developing an intellectual property portfolio. Since a design is manifested in the appearance of an item, a design patent protects the way an item looks, rather than how it works and how it is used (which can only be protected by utility patents). Although utility patents are generally stronger because they can prevent others from using or selling any product covered by the patent claims, a design patent is easier to obtain and lasts for a term of 14 years with no additional financial obligations post-registration.

The U.S. design and utility patent systems embody many of the same laws. The U.S. design patent statute (35 U.S.C. 171-173) includes Section 171, which states four requirements for obtaining a design patent: (1) novelty; (2) originality; (3) ornamentality; and (4) the subject matter must be an "article of manufacture." Further, the section implies that a design patent must be non-obvious as well.

1. Novelty

The design must be "new." Courts apply the "average observer test" as a standard for evaluating the novelty of a design (i.e., the overall appearance of the design in the eyes of an average, ordinary, observer). Since this type of patent is solely concerned with the ornamental features of an article, it does not matter if the invention lacks novelty for its structure and function.

An example of what might be considered a novel invention is a differently shaped soda can instead of a regular one. Although they may consist of the same general ingredients, the shape is new, thus they are ornamentally different.

2. Originality

A patentable design must be original. Thus, an individual cannot obtain a design patent for a design copied from another source or person. This requirement is intended to protect the original inventor's interests. Thus, a subsequent application for a patent will be barred even if the original inventor does not know of the subsequent application or chooses not to challenge it.

3. Ornamentality

Courts differ in their interpretation of "ornamental." However, most courts agree that if there is no unique or distinctive shape or appearance to the article independent of the article's functionality at the time the design was created, the design lacks ornamentality and does not fall within the subject matter of design patents. Thus, it is not enough that the article is aesthetically pleasing, but the design must also exist independent of any functional requirements.

4. "Article of Manufacture"

Section 171 requires that the design patented must be "for an article of manufacture." An article of manufacture is a man-made tangible object. Thus, a patentable design, such as prints and pictures, must be applied to a man-made tangible object in order to meet the statutory requirements. An example of this is a computer-generated icon appearing on a computer screen. Although the icon itself is not patentable, the design of the icon is patentable as long as it is claimed as an icon embodied on a computer screen.

5. Non-Obvious

Courts have held that the standard to determine whether a design is non-obvious under 35 U.S.C. 103 is whether "a designer of ordinary skill of the articles involved" or related objects would have found the design as a whole obvious when it was invented. This test closely resembles the analysis for utility patents, expect the standard is that of a designer of ordinary skill. In order to find that a design is obvious, the design must be compared to something already in existence that closely mirrors the claimed design.

Once these statutory requirements have been met, the next step is to file a design patent application with the USPTO. If you need assistance with your design patent application or determining whether your design meets the statutory requirements, call the Law Offices of Roland Tong, at 949-298-7840 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, and copyright protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.