Why Design Patents Need Not Satisfy 35 U.S.C. § 101?

PatentLawPic11935 U.S.C. § 171 is a unifying provision – briefly stating that “except as otherwise provided,” the entire Patent Act applies equally to both utility patents and design patents.  Thus, design patents must fit within the requirements of §§120 and 112.[1] On the other hand, § 122 expressly exempts design patents from the publication requirements.

The enigma is § 101 and its definition of utility. Section 101 includes no explicit exception for designs. But, even a novice observer would question how a non-functional ornamental design can at the same time be “useful?”

The Supreme Court appears to have answered this query in Footnote 5 of its 2001 opinion in J.E.M. Ag Supply v. Pioneer Hi-Bred.[2] In that case, the Court held once again that the patentable subject matters scope of 35 U.S.C. § 101 is “extremely broad” and that the scope for utility patents certainly includes plants despite the existence of § 161 “plant patents.” 

In Footnote 5, the Court briefly compares § 101 utility patents with § 161 plant patents and § 171 design patents. “Patents issued under § 161 are referred to as ‘plant patents,’ which are distinguished from § 101 utility patents and § 171 design patents.”[3] 

The implication from the Court’s comparison is that design patents are not subject to the requirements of § 101 (despite the lack of any statutory exceptions). Thus, a patented design must be “new, original[, ] ornamental [and] an article of manufacture.” However, the design need not be useful.


[1] In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998).

[2] J.E.M. Ag Supply v. Pioneer Hi-Bred Int’l., 534 U.S. 124 (2001)

[3] Id. at fn. 5.

 

Sidenote: The Apple iPod design patent (US D549,237 filed Aug 24 2005) appears to be identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). A continuation patent has also issued which also claims the screen shape. (US D542,808) Interestingly, in the trademark case (response to a rejection), Apple admitted that the “rectangular video screen design is functional.”

20 thoughts on “Why Design Patents Need Not Satisfy 35 U.S.C. § 101?

  1. 20

    See also, Ex parte Webb, 30 U.S.P.Q.2D (BNA) 1064 (Pat. App. 1993)(“The rejection in this [design patent] case under Section 171 is the design equivalent of a rejection under Section 101.”)

  2. 19

    LEXSEE 535 F.2D 70,AT 71

    IN THE MATTER OF THE APPLICATION OF LORRAINE FINCH and MOR-RIS BRANCH

    Patent Appeal No. 76-531

    UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS

    535 F.2d 70; 1976 CCPA LEXIS 159; 190 U.S.P.Q. (BNA) 64

    June 3, 1976, DECIDED.

    PRIOR HISTORY: [**1] Serial No. 312,218.

    OPINION BY: MARKEY

    OPINION
    [*70] MARKEY, Chief Judge.
    This appeal is from the decision of the Patent and Trademark Office Board of Appeals affirming the final rejection of the claim in appellants’ design application. We affirm.
    The Claimed Design
    The claimed design is for a key holder which com-prises a parallelogram-shaped key ring to which a human figure is attached by a chain. The drawings show, alter-natively, four biologically complete reproductions of the human body – a black [*71] male, a black female, a white male, and a white female.
    The Rejections
    There are two rejections: (1) the design is frivolous, 35 USC 171, because it lacks utility, 35 USC 101; (2) the claimed design would have been obvious, 35 USC 103.
    The Board
    The board sustained the rejection that the claimed design failed to meet the “useful” requirement of 35 USC 101, concluding:
    Even if the subject matter as a whole would not be considered by most people as “obscene” it is our opinion that since the purpose of the design is to commercialize on the human body in the nude the subject matter in-volved could not satisfy the statutory requirements for a design patent. A patent [**2] bears the official imprima-tur of the Patent Office and since the Patent Office is an agency of the U.S. Government, the subject matter of patents granted by the Office accordingly should not be of such an offensive and frivolous character as to give cause of disrespect for the government.
    Noting that the prior art of record illustrates a key holder with a rounded key ring and a pendant attached by a chain, a parallelogram-shaped key ring, and an ice skater figure charm, the board agreed with the examiner that the substitution of the parallelogram-shaped key ring for the rounded key ring and of the human figure charm for the pendant would have been obvious. The board, agreeing further with the examiner that the naked human figure does not distinguish patentably over the ice skater figure, affirmed the 35 USC 103 rejection.
    OPINION
    The 35 USC 171 Rejection
    Because we affirm on other grounds, we need not treat this rejection. We do so, however, in the interest of clarity and good order in the examination of applications for design patents in the Patent and Trademark Office.
    The “utility requirement” of 35 USC 101 is not ap-plicable to design inventions. Rejection of claims [**3] to designs for “lack of utility” is therefore error.
    A comparison of 35 USC 101 with 35 USC 171 il-lustrates their parallel, but distinct, nature. * They both set forth criteria for what may be patented, but the crite-ria differ for different classes of subject matter. The cri-teria in 35 USC 101 for processes, machines, manufac-tures, and compositions of matter, and improvements thereof, are that the invention be “new” and “useful.” The criteria in 35 USC 171 for designs are that the invention be “new,” “original,” and “ornamental.” The repetition in 35 USC 171 of “whoever invents,” “any new,” and “may obtain * * * title” would have been superfluous if the criteria of 35 USC 101 in their entirety were applicable to designs. We cannot assume that Congress did a use-less thing in deleting “useful” when it legislated with respect to designs.

    * 35 USC 101 provides:
    § 101. Inventions patentable.
    Whoever invents or discovers any new and useful process, machine, manufacture, or compo-sition of matter, or any new and useful improve-ment thereof, may obtain a patent therefor, sub-ject to the conditions and requirements of this ti-tle.
    35 USC 171 provides:
    § 171. Patents for designs.
    Whoever invents any new, original and or-namental design for an article of manufacture may obtain a patent therefor, subject to the condi-tions and requirements of this title.
    The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
    [**4] The second paragraph of 35 USC 171, mak-ing the provisions of Title 35 applicable to designs, in-cludes the phrase “except as otherwise provided.” The paragraph clearly makes numerous provisions, such as 35 USC 102 and 35 USC 103, applicable to designs. It could not, however, make 35 USC 101 applicable. As above indicated, 35 USC 171 is 35 USC 101, [*72] modified, for application to designs. Hence, the criteria of 35 USC 101 are “otherwise provided” in 35 USC 171 and the second paragraph of the latter cannot serve to permit the reading thereinto of the “useful” criterion of 35 USC 101.
    The board’s reliance on Ex parte Schulze-Berge, 42 O.G. 293, 1888 C.D. 4 is ill-founded. The design statute has been changed since 1888, when it read, in part: “any new, useful, and original shape or configuration of any article of manufacture.” R.S. 4929 (emphasis ours).The “useful” criterion for design patents was deleted in 1902. See Patent Act of May 1902, ch. 783, § 4929, 32 Stat. 193. For a chronological compilation of patent acts see 3 A. Deller, Deller’s Walker on Patents 317-766 (2d ed. 1964).
    The “useful” requirement of 35 USC 101 being in-applicable to designs, the rejection [**5] for lack of util-ity is reversed.
    The 35 USC 103 Rejection
    In applying 35 USC 103 to the claimed design as a whole, a basic consideration is similarity of appearance between the claimed design and the designs of the prior art. In re Yardley, 493 F.2d 1389, 181 USPQ 331 (CCPA 1974); In re Phillips, 50 CCPA 1223, 315 F.2d 943, 137 USPQ 369 (1963). Though there may be differ-ences in appearance between the claimed design and prior designs, the test remains whether the claimed de-sign would have been obvious in view of such designs in the prior art.
    Herein, the prior art discloses key holders with at-tached charms, parallelogram-shaped key rings, and charms in the shape of human figures. We agree with the board that the differences in appearance between a key holder with a rounded key ring and a pendant charm and a key holder with parallelogram-shaped key ring and a pendant human figure charm are insufficient to have rendered the latter design unobvious. Moreover, it would appear that the design of the unclothed human body, male and female, has been known (by latest re-ports) at least 10,000,000 years. The uses of that design in virtually every art form have been widespread for cen-turies. [**6] Its attachment to a key ring would have been obvious.
    The rejection under 35 USC 103 is affirmed.
    AFFIRMED

  3. 18

    Thanks for the cite, Gwen. Markey seems to hit the nail square on the head – Section 101 is not about design patents at all.

    From the case – I love the last sentence:

    “The criteria in 35 U.S.C. s 101 for processes, machines, manufactures, and compositions of matter, and improvements thereof, are that the invention be “new” and “useful.” The criteria in 35 U.S.C. s 171 for designs are that the invention be “new,” “original,” and “ornamental.” The repetition in 35 U.S.C. s 171 of “whoever invents,” “any new,” and “may obtain * * * title” would have been superfluous if the criteria of 35 U.S.C. s 101 in their entirety were applicable to designs. We cannot assume that Congress did a useless thing in deleting “useful” when it legislated with respect to designs.”

  4. 16

    Nice looking things sell better, everybody knows that.

    Dudas and Peterlin. Would anyone in this world doubt that these two got their gigs at least partly because of “ornamental” considerations.

    Earl

  5. 15

    Design patents on fonts and typefaces, available since D000001, are patents on pure signals.

    MPEP 1504.01(a):

    III. TREATMENT OF TYPE FONTS

    Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.

  6. 11

    “The aesthetic is useful/functional to the manufacturer because it makes the product more saleable. The aesthetic is useful/functional to the consumer because it makes the product more enjoyable.”

    Yes. Therefore, patents on these designs are important because without them nobody would bother trying to sell anything that could be enjoyed.

    Right.

  7. 10

    I have to add one more observation to my earlier comments and metoo’s comments — if the article of manufacture itself is not useful then the whole work is just abstract art or sculpture.

  8. 9

    Let me rephrase that…I believe that design patents still must satisfy the “utility” requirement in that the “article of manufacture” must be useful. But, technically I don’t think that means 101 applies to design patents. I believe that 101 and 171 are generally deemed to be mutually exclusive – even though a literal reading of 171 suggests otherwise. In other words, 171 applies to design patents, while 101 does not. Perhaps a more interesting query is what is meant by “original” in section 171? Section 101 requires “new and useful”, while 171 requires “new, original and ornamental.”

  9. 8

    I believe that design patents must indeed satisfy 101. However, the utility is of the “article of manufacture”, not the ornamental design.

  10. 7

    The logical (as opposed to legal) problem isn’t between 101 and 117, but the nonsensical label “non-functional” being applied to ornamental designs, and is related to the PTO’s nonsense test that non-functional descriptive material is not utility patentable. Both are equivalent to the question “Is the aesthetic useful?” To everyone else on the planet, the answer is “Yes, which is why we pay money to buy the latest product fad”.

    The aesthetic is useful/functional to the manufacturer because it makes the product more saleable. The aesthetic is useful/functional to the consumer because it makes the product more enjoyable. The aesthetic is useful/functional to the designers because each new design is additional data in models of design evolution. But because patent and copyright laws have this Puritan attitude that pleasure is not useful, we have these resolved problems in patent law.

    Accepting ornamental designs as functional and useful means collapsing design patents into utility patents. To avoid that evolution, patent law maintains the fiction that the ornamental isn’t functional. And the nonsense of the idea/expression dichotomy (17 USC 102) shares much of this fiction. This label “non-functional” has no scientific or aesthetic justification – it is just a useful fiction to stop bodies of law from collapsing into each other.

  11. 6

    “A continuation patent has also issued which also claims the screen shape. (US D542,808)”

    Just shoot me.

  12. 5

    I agree on the old typeface being easier to read. The new one is perhaps more scholarly looking, but is frankly distracting.

  13. 3

    I like the new footnote format too but would prefer the old font–the new one is a little harder to read.

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