Brawn Before Beauty –

Simply stated, a design patent protects the ornamental appearance of an invention.  Indeed, even beautiful works of art such as the Statue of Liberty(1) have been protected by design patents.  Other well-known products of yesteryear that were covered by design patents include the Coca-Cola® bottle (1915), the Fender guitar (1951), the GI Joe® figure (1964), and the Batman “Dark Knight” head mask (1992).

For much of our history, design patents were generally considered of lesser value than utility patents.  Design patent D250000 issued in October of 1978, D500000 issued in December 2004, and as of the date of this writing (4/9/2015), design patent D726390 has been issued by the USPTO.  So it took about 185 years for the first 250K design patents to issue, 26 years for the next 250K, and it will be less than 11 years for the most recent 250K.  Of course, utility patents issuances have also grown remarkably in the past couple of decades, and still far outnumber design patent issuances (utility patent 9,000,000 issued on April 7^th, 2015), but the rate of growth in design patents issuances is about one third higher.

The courts have also played a part, finding that computer generated images, such as icons rendered on a display are statutory subject matter for design patents.  Even the Google home page is covered by a design patent.²  Apple has been a leader in pursuing design patent protection, no doubt part of the legacy of Steve Jobs, who is an inventor on hundreds of Apple’s designs.  Today, the stakes couldn’t be much higher, as evidenced by the ongoing US and international litigation between Apple and Samsung.  In a first trial verdict³, a jury found in favor of Apple and awarded $1.049 billion in damages, a large share of which was due to a finding of infringement of two iPhone® design patents.  Appeals and further litigation are ongoing, but regardless of the final case outcomes, the overall message is clear: design patents are worth money.

Corporations large and small have come to recognize the value of protecting the ornamental appearance of their products as a key part of their overall branding strategy.  Among the design patents issued on April 7^th are “LED lighting device,” “Surgical knife,” “Shale drill pipe,” “Golf club head,” “Display screen or portion thereof with icon,” “Tire tread,” “Setting for a ring,” and “Hookah pipe head” (no doubt a big seller in Colorado).

Brawn vs. Beauty

While a design patent protects the “beauty” – the ornamental appearance of an invention, a utility patent protects the “brawn” – the way an invention works.  Looking at the big picture, a product does not need to have perceived “aesthetic beauty” in order to be eligible for design patent protection.  35 U.S.C. § 171 states, “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor.”  The term “ornamental design” in the statute is construed broadly, having been interpreted in case law to include⁴ “at least three kids of designs: (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories.”  Therefore, any invention that can be construed as meeting at least one of these requirements is eligible for design patent protection.  The criterion that is particularly critical is that the design be embodied in an article of manufacture.

As a strategic consideration, if you have an invention that you are going to sell as a product, if a customer’s decision whether or not to buy is at least based in part on the appearance of that product, it is worth considering protecting the appearance with a design patent.  Otherwise, if you successfully launch the product and it sells well in the marketplace, you may soon find a competitor offering a product that has the same appearance as your product – a knock-off.

What if that competitor was able to get around the claims in your utility patent?  Although you may have some trademark and trade dress claims to assert, you will be in a much stronger position if you also have a design patent on your product.  Otherwise, in the end, you may have the situation where a potential customer looks at both your product and the knock-off on a store shelf or a web page – and buys theirs, regardless of the utility patent-protected superior technology within your product.

Where’s the Beauty in That?

In the above examples of recently issued design patents, it is easy to see how some of them would be good candidates for design patent protection.  The appearance of a setting for a ring and a golf club head could certainly influence a decision to buy those products.  As for some of the other choices: LED lighting device – probably.  Surgical knife – maybe not so much.  Hookah pipe head – could a customer see the difference?  (“Dude, they all look righteous.”)

But what about a design patent for a “Shale drill pipe?”  As we stated above, the term “ornamental design” is construed broadly.  U.S. Patent D726,289 claims “The ornamental design for a shale drill pipe, as shown and described.”  Nineteen drawings depict the pipe, and define the metes and bounds of the design as stated in the claim.  Admittedly, the shale drill pipe does have a distinctive appearance.  Is it an appearance worth protecting to ward off competitors?  That is a judgment call, and ultimately a business decision.

You Can’t Protect What You Can’t See

Although design patents are obtained for some pretty mundane products (appearance-wise), there is a limitation to what is patentable as a design.  One general principle may be summarized as “you can’t protect what you can’t see.”  Let’s consider a hypothetical situation, where you have invented a new electric motor.  In addition to pursuing a utility patent, you decide (for reasons unknown) that it would be a good idea to pursue a design patent on the armature of the motor.  You file a design patent application on the armature, with all of the required drawings to support the claim of the ornamental design.  In prosecution of your application in the USPTO, your claim is rejected as being directed to non-statutory subject matter.  The reason is quite simple.  Case law⁵ has established that for a design to be patentable, it must be “created for the purpose of ornamenting” the article in which it is embodied.  In making the rejection, the Examiner understands that your armature would likely be sold and used as contained in the motor, and therefore never be visible to a buyer or user.  Since it is never visible, you would be hard pressed to establish that its design was created for the purpose of ornamenting.

But You Can Protect Both – With Caution

It is often the case that utility patent protection and design patent protection for a single product both have value and should be carefully considered.  In some instances, the utility of the product and its ornamental appearance are quite separate.  The utility, i.e. the functionality, is “buried” in the inner workings of the product, and its ornamental appearance is purely on the exterior.

However, in other instances, the utility and the ornamental appearance may overlap.  In such cases, the drafting of the respective applications must be done very carefully, because without due caution, the disclosure of functionality in the utility application may be in conflict with the claim of the ornamental design in the design application.  Again, the claimed design must be “created for the purpose of ornamenting.”

Since one of the recently issued design patents was for a “Tire tread,” we will use that as a hypothetical example.  On one hand, a tire tread is clearly subject matter for a utility patent.  Tire companies spend millions of dollars in R&D, with engineers testing all sorts of tire tread patterns to optimize acceleration, braking, cornering, and wet pavement performance.  On the other hand, a tire tread can have an ornamental appearance.  In recent years, the ultra-wide diagonal “chevron” style treads have certainly been aesthetically appealing to the “Fast and Furious” set.

So suppose you invent a new tire.  You wish to protect the overall tire (and possibly the tread itself) with a utility patent, and also protect the tread pattern with a design patent.  You concurrently file a utility patent application on the tire, and a design patent application on the tire tread.  (Or with a sufficient set of drawings in the utility patent application, you may file that application, and subsequently file the design application as a divisional of the utility application.)

In the utility application, if the disclosure of the tire tread is highly focused on its functionality (which may well be appropriate for obtaining the utility patent), including how it solves performance problems and differs from prior art tires, that may adversely impact your design application.  When an Examiner takes up your design application, and considers the teachings of your utility application (which you have disclosed to the Examiner per the “Duty of Disclosure” requirement⁶), he may conclude that per further case law⁷, the design of your tire tread is primarily functional, and reject your claim.

However, additional case law⁸ has established that if “significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations,” this information may establish the ornamentality of a design.  So you might envision a situation where embodiments of your tire include several tread patterns, all of which fall under the claims in your utility patent application.  Additionally, you conduct market research, polling potential customers (under an appropriate non-disclosure agreement), asking them, “Which of these tire tread patterns to you looks the best?”

Based on their input, and the performance of all tread patterns being equal, their “favorite” tread pattern is the one that you bring to market, and the embodiment that you claim in your design patent.  In that case, even though the disclosure of the tread pattern in your utility application is focused on its functionality, you would at least have some basis to claim that “significant decisions about how to present the tire in the marketplace were informed by primarily ornamental considerations.”

Understand Your Options

In summary, you can protect both the utility of a product and its ornamental appearance with separate utility and design patents.  When the two overlap, it is especially important to seek the advice of a qualified patent practitioner so that you don’t preclude any of your options.

1. United States Patent D011023.
2. United States Patent D599372.
3. Apple Inc. v. Samsung Electronics Co., Ltd., — F.3d —, 2012 WL 4820601, App. No. 2012-1507.
4. See MPEP § 1504.01.
5. In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964.
6. See The Limited Monopoly® December 2006.
7. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986).
8. Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990

Authors John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) and Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) are both registered patent agents and licensed professional engineers.  They offer customized patent-related seminars that may be approved for PDH credits.  More information can be found at www.patenteducation.com. Copyright 2015 John Hammond and Robert Gunderman, Jr.

Note:  This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

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