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Design Patents: Inventions of Aesthetic Value

By Jill Gilbert Welytok

Humans long for beauty in their surroundings, and no matter how useful an object is, a pleasant aesthetic appearance increases its value. The Patent Act recognizes this. 1

Design patents are available for new, original and ornamental designs for articles of manufacture. They're generally used to protect the shape, ornamental features and appearance of a functional article. They are a blurring of the distinction between patent and copyright law, since copyrights have traditionally been used to protect the expressive, non-functional aspects of an innovation.

What Design Patents Protect

Design patents cover only the non-functional aspects of a product design. For example, consider the design of most chairs; they all function in pretty much the same way. However, chairs can be very different in appearance. It's the aesthetic differences that are protectable by design patents.

In 1958, Euro Saaranin developed the pedestal chair, which consisted of a single piece of molded plastic that formed a chair seat, supported on pedestal rather than the traditional legs. Mr. Saaranin carefully experimented with different materials and dimensions to make sure the chair would support the weight of the user.

In 1968, another designer, Erwine LaVerne, applied for a design patent for a pedestal type chair, but with a differently shaped & molded seat. The PTO initially denied Mr. LaVerne a separate patent for his design, because it varied from Saarinen's only by some modifications to the shape of the molded plastic seat. Mr. LaVerne appealed. The U.S. Court of Customs and Patent Appeals, relying on the drawings produced by the PTO, sided with Mr. LaVerne.

The court acknowledged the overall similarity of the chairs but explained "[o]ne might feel that the two chairs were part of the same style trend... but they are in our opinion distinctly different designs within that style trend. The design which initiates a new style does not automatically close the field to all other designs within the same style pattern." 2

Business Tip:
Even minor modifications within an existing design trend may fulfill the requirements of a design patent. But does the level of protection you get for those modifications justify the cost and waiting time for the patent?

Requirements for Design Patents

Not surprisingly, there's no requirement of utility for a design patent. The requirements of novelty, non-obviousness for design patents are the same as for utility patents, but in place of the usefulness requirement for a utility patent, the statute substitutes the requirement of ornamentality.

To observe that the tests for novelty and non-obviousness are vague is an understatement. Novelty is usually determined by an "ordinary observer" test and non-obviousness to the "ordinary designer" 3 Another equally specific test for non-obvious is that which would be "non-obvious to the ordinary intelligent man." 4

The ornamental aspects must be visible in the course of the normal, intended use of the object, or at some commercially critical point such as the advertising of the product. For example, the design of a toupee intended to look more natural than prior toupee designs may not be apparent in the normal usage, but can be made apparent at the time of purchase and in the advertising.

The main restriction of design patents is that they cannot be acquired for an exclusively functional design. Design patents protect only the aesthetic appearance of an item, never utilitarian features. For example, a design patent may cover the external appearance of an automobile, but it won't cover the functioning parts such as a newly developed retractable sun roof or specially tinted windows that have the function of minimizing glare. These aspects of the design would have to be protected by a separate utility patent, if they meet the requirements of usefulness, novelty and non-obviousness.

Design Patents vs. Copyrights

Design patents and copyright both cover the artistic aspects of an innovation. Where does one begin and the other end? Which innovations are entitled to both types of protection.

Not all elements of design are subject to dual legal protections. The Patent and Trademark Office won't issue design patents for pictures or mere surface ornamentation (such as an engraved design or logo). Examples of designs sufficiently functional to be patented include the Mrs. Butterworth's syrup bottle (shaped like a plump woman), or the shape of the handle of a lint remover. Purely aesthetic works such as photographs and paintings and non-functional sculptures don't qualify for patent protection either.

The Need for Overlapping Protections: Arrow's Paradox

Every grant of patent or copyright protection costs society by taking innovation out of the public domain. Therefore, it seems odd that Congress and the courts allow overlapping protections.

Copyright protections is automatic, but it only protects against outright copying; not the process of creating. Patent protection is more expensive, and the process takes an average of two years to complete, but it can give you more freedom to market your ideas.

Suppose an inventor is in the process of developing a new type of swinging hammock chair that gives the appearance of being suspended without support. The innovator of the chair wants to approach manufacturers with his idea. Unlike a work of authorship, where the manuscript automatically serves as proof of creation and ownership, once the process for creating chair is described it can be replicated. The idea itself isn't protected by copyright law. And no manufacturer is likely to invest the resources to produce and market the chair without knowing, with a fairly high degree of specificity, what's entailed in the design. This dilemma -- the simultaneous need for secrecy to protect the idea and disclosure to develop it is know as "Arrow's disclosure paradox." It's named after an economist, Kenneth Arrow, who identified it.

Attorney's Note:
Patent and copyright protections are often mutually exclusive, since patent protection requires an inventor to claim that innovation is part of the structural design, while copyright requires that the protected element be entirely non-functional. It's not advisable to apply for both protections.

On the other hand, suppose the inventor has limited resources and feels that obtaining a patent would be cost prohibitive. It might be cheaper to design and copyright a prototype chair. The prototype would meet the copyright requirement that the innovation must be in fixed, tangible form. The innovator would be protected against actual copying. However, copyright protection would be narrower in scope than patent protection, because patent law precludes the marketing of any invention that is designed to do the same thing with only minor, non-functional changes, whether or not actual copying has taken place.

Checklist: Choosing Between Design Patent and Copyright Protection

The choice between overlapping patent and copyright protections is economic, strategic and goal oriented. You need to think about what it's going to take to get your innovation to market initially, as well as what it may take to protect your rights as the market for it expands.

Some of the considerations in the decision are as follows:

Cost and Timing - Copyright protection is automatic, once a work is in fixed, tangible form. Registration is optional and can usually be accomplished in six months or less for several hundred dollars, including attorneys' and filing fees. Obtaining a patent, on the other hand, generally costs thousands of dollars, and takes around 18 months to two years.

Attorney's Note:
Design patents are best suited for protecting the shape and appearance of useful objects such as furniture, cars and appliances. Copyright is best suited for art that appears on functional objects such as a design or ornamentation that is not part of the physical, functional structure of the object.

Scope of Protection - Patent protection is far broader. A patent restricts other from commercial use of the idea for the invention, and any functionally equivalent invention. A copyright only protects against actual copying of the expression of the idea not all functionally equivalent commercial uses of the idea.

Duration of Protection - Copyright protection is of a much longer duration. A design patent lasts for 14 years. Copyright protection lasts for the life of the author plus 75 years. In the case of a work for hire copyright protection lasts for 95 or 120 years.

Design Patents and Trademarks

Trademark law offers inventors the opportunity to double dip on intellectual property protections. Unlike patents and copyrights which are often mutually exclusive, trademark and patent protection can go hand in hand.

The Coca-Cola Company patented the design of its bottle in 1937, and the appearance of the bottle also recognized as a protectable trademark. A patent protects the functional design aspects. Trademark status protects the public identity of the product and prevents confusion and deception.

1. 35 U.S.C. Sec. 171.

2. Application of Erwine LaVerne and Estelle Laverne, 53 C.C.P.A. 1158, 356 F. 2d 1003 (1966). (LaVerne's design patent covers only the molded seat portion of the chair and not the pedestal.)

3. In Re Nalabandian, 661 F.2d 1214 (Cust. & Pat. App. 1981)

4. Schwinn Bicycle Co. vs. Goodyear Tire and Rubber Co., 444 F. 2d 295 (9th Cir. 1970).


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