Unlike utility patents, which find their legal root in the
Constitution, patent protection was not extended to ornamental designs
until an Act of Congress in 1842. The nineteenth century saw a large
number of extremely ornate and beautiful design patents filed,
including the French sculptor Bartholdi's design patent for the Statue
of Liberty in 1879 (U.S. Design Pat. No. 11,023).
Today, the law provides for patent protection for a "new, original,
and ornamental design for an article of manufacture." The terms "new"
and "original" mean simply, as with all patents, that the claimed
design must have been designed by the person seeking the patent, and
must not be copied from a currently manufactured item. The term
"ornamental" encompasses several legal requirements. The design must
be for surface ornamentation, that is, the internal works of a device
are not protected. However, the fact that a design may be hidden for
use, for example a septic tank that is designed to be buried, does not
bar patent protection, as the appearance at the time of sale in
controlling. A design patent can also be granted for part of an
object, as in the case of patented drill shanks that did not claim the
cutting part of the drill bit. "Ornamental" requires that the design
appearance not be dictated by functional considerations, as, for
example, a design for a distinctive airplane design that makes the
plane fly more efficiently would not be proper subject matter for a
design patent.
Why would an inventor file for a design patent? The answer can be as
simple as the good-will and market share that immediately springs to
mind when we see the distinctive shape of a Coca-Cola® bottle. But a
more subtle answer lies in the breadth of protection that a design
patent can offer from close, but not exact, copies.
An examination of infringement of a design patent goes beyond a line
by line or element by element comparison between objects. The U.S.
Court of Appeals for the Federal Circuit has held that design patent
infringement occurs if the accused device is substantially the same as
the claimed device in the eye of the ordinary observer. It is applied
by considering the overall design of the two objects. Equivalency is
preserved even though there may be minor differences that only a
trained observer would detect. As a result, a patentee can be
protected even if an infringer makes changes to try to get around a
prior patent.
printer
friendly version