By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law
Over the past few years, I’ve had various people ask me if 35 U.S.C. § 101 applies to design patents. Now, I hear that the same question was raised at one of Senator Coons & Tillis’ recent § 101 roundtables.
This is one of those rare design patent questions that actually has a clear answer:
No, § 101 does not apply to design patents. See In re Finch, 535 F.2d 70, 71–72 (C.C.P.A. 1976).
Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” On its face, this language may seem to apply to all patents. But when this language was written, there was only one type of patent—the type we now refer to as utility patents.
When Congress enacted the first design patent statute in 1842, it wrote a separate subject matter provision for designs. But it left the language of the utility patent subject matter provision unchanged. That language is now codified —with one small change, from “art” to “process”—in § 101. The design patent subject matter provision changed (quite a bit) over time and is now codified in § 171. (For more on the history of these statutes, see The “Article of Manufacture” in 1887, 32 Berkeley Tech L.J. 1, 27, 32 (2017), available for download at
So Section 101 is the statutory subject matter provision for utility patents. Section 171 is the statutory subject matter provision for design patents. Or, as the CCPA (sort of) put it in Finch, § 171 is the § 101 of design patents.
Because these are independent subject-matter provisions, any change to § 101 should not affect design patents. But if § 101 does get revised, I would suggest changing any reference to “a patent” to “a utility patent”—just to make things perfectly clear.