Does § 101 Apply to Design Patents?

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
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2850604.)

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.

49 thoughts on “Does § 101 Apply to Design Patents?

  1. 10

    Mark,

    Thanks for the 1995 cite about plant patent infringement. I’m not sure why they took it down.

    1. 10.1

      Disregard. It is back.

  2. 9

    Patent Maximalist: “derp derp if I can’t have what I want then I’m going to derp derp drop a big t u r d in your punchbowl”.

    Very serious stuff! Anytime the logic patent luvvahs are ready to deposit working examples of code in exchange for a patent, I’m ready to listen to their whining about (lol) plant patents and 101.

    1. 9.1

      You just don’t want to “get” it, do you?

      How would “deposit samples” change your “logical argument?”

      Your “derp” is just banal.

      1. 9.1.1

        Oh I get it, Bildo.

        I’ve been watching you despicable shirtheads play this game for years.

        “Derp derp I’m so confused! Everything is ineligible derp derp!”

      2. 9.1.2

        “Derp derp how is the idea of a pretty plant not an abstract idea derp? Does 101 apply to copyright derp? Obviously not a defense to infringement, of derp course.”

        1. 9.1.2.1

          Does “derp” mean that Malcolm is making a strawman or some other type of purposeful misstatement of what others bring up?

          Maybe you should try to make a direct cogent point instead of depending on empty snark, Malcolm.

          Your posts are so dependent on snark that it is impossible to tell if you have any point at all.

          Here, some people ARE uncovering a new and possibly quite legitimate way of looking at the intent of Congress (for the Court to take into consideration), and your rants seem to reflect a fear that this might make sense.

          Instead of the “derp” (which means nothing), maybe say something cogent that would indicate why this new wrinkle should not have a big impact.

          Or is any type of critical thinking too difficult for you?

        2. 9.1.2.2

          “Does 101 apply to copyright derp?”

          Wrong title, Cletus. You no patent attorney or any attorney at all. you’re but a lame poser

    2. 9.2

      If you weren’t so freaking ignorant you’d realize there must an “inventive concept” and improvement in any patent – utility, design, and plant. I don’t see an exception to the exceptions for patent-eligibility for design patents in s101, do you?

  3. 8

    Well, duh.

    Section 101 has the “useful” requirement, and ornamental designs by definition are ornamental and not useful. There is a bunch of case law (questionable) that anything useful about a patented design is to be excluded from the scope of a design patent claim.

    Since 101 is inapplicable, one looks at section 171 to determine subject matter eligibility for designs.

  4. 7

    Does § 101 Apply to Design Patents? My answer is: yes – section 101 does apply to Design Patents; That is, based on the statutory construction rules developed by the Court: identical terms (here the term of art “manufacture” appears both in Section 101 and Section 171) in the same statute should be interpreted in the same way unless there are compelling reasons in the statute do so underwise. In re Finch is not on point because it deals with the utility requirement.

    1. 7.1

      identical terms

      101: statutory category
      171 (as I noted below): FOR an article of manufacture.

      That’s just not identical.

  5. 6

    Does §101 or the natural phenomenon exception of §101 apply to plant patents?

    1. 6.1

      Does a plant breeder who comes across a mutated plant in a field make a “discovery” or an “invention.”

      1. 6.1.1

        Has “discovery” been penciled out of the statutory law written by Congress?

      2. 6.1.2

        Plant patents have their own statutory subject matter provision, i.e. 35 U.S.C. 161. It has the added requirement of “and asexually reproduces”, so one who comes across a mutated plant in a field must still asexually reproduce it (e.g. via grafting or bulb splitting) before the plant patent can be granted. Section 161 also expressly excludes “tuber propagated” plants (e.g. potatoes).

        Seed propagated (and tuber propagated) plant varieties have their own statute (7 USC Chapter 57) for patent-like protection, run by the Dept. of Agriculture.

        1. 6.1.2.1

          One follow up: 35 USC 161 also excludes a plant “found in an uncultivated state”, so where the plant is a newly found plant, the inventor’s oath or declaration must also state that it was found in a cultivated area.

          1. 6.1.2.1.1

            Thanks Mark

        2. 6.1.2.2

          Wouldn’t it be fair to say that it is inconsistent to bar newly discovered natural phenomena wrt section 101 while permitting the patenting of newly discovered natural phenomena in the form of mutated plants (in a cultivated field) under section 161? If all natural phenomena are supposed to be free for all to use (Funk Bros.??), why are plants excepted? The exception to section 101 must be wrong.

          1. 6.1.2.2.1

            Perhaps SCOTUS’ interpretation in the Chakrabarty could shed some light:

            “Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes ofthe patent law…. The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the “written description” requirement of the patent law. See U.S.C. § 112. *** In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder “in aid of nature” was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of “a description … as complete as is reasonably possible.” 35 U.S.C. § 162. ”

            Diamond v. Chakrabarty, 447 U.S. 303, 311-312 (1980).

            I assume the “in aid of nature” reference was to the requirement of “asexual reproduction” of the newly discovered plant, meaning that the propragation of the plant variety was no longer purely a product of nature, and thus amenable to exclusive patent rights.

            1. 6.1.2.2.1.1

              Good points Mark.

            2. 6.1.2.2.1.2

              Thanks, Mark.

              Let me be clear that I am not anti-plant patent. I am anti the 101 exceptions.

              That is an interesting quote from Chakrabarty. Is it correct to say that asexually reproducing some if not all mutated plants discovered in a cultivated field can be accomplished by simple cultivation of plant cuttings? If so, then the step of asexual reproduction appears to be well-understood, routine, and conventional activity. How curious that Congress relied on well-understood, routine, and conventional activity to make plant patents eligible — according to your Chakrabarty quote — yet the Supreme Court/CAFC gives well-understood, routine, and conventional activity no weight in software or business method cases.

              The same holds true for extra-solution activity. Isn’t the step of reproducing the plant just extra-solution activity? The unique aspect of any plant patent is the discovery of the mutant plant.

              The method of reproducing the plant doesn’t even seem to be part of the claims. It looks like many plant patent claims just recite: “A new and distinct variety of _______ as shown and described herein” with no recitation in the claim of the technique of reproduction.

              Off-topic but I’m curious, how do you prove plant patent infringement? Is it via DNA testing?

              1. 6.1.2.2.1.2.1

                NPtC and Mark,

                Fantastic analogies to the “will of Congress.”

                I do hope this is picked up by the Court.

              2. 6.1.2.2.1.2.2

                “Derp derp here’s a dipshirt argument that 101 ruins everything because derp derp I’m a dipshirt.”

              3. 6.1.2.2.1.2.3

                Although plant patent claims simply recite “A new and distinct variety of _____ as shown and described herein”, the patent grant and what it protects is covered by 35 USC 163:

                In the case of a plant patent, the grant shall include the right to exclude others from “asexually reproducing” the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant “so reproduced”, or any parts thereof, into the United States.

                Thus, not only is asexual reproduction of the new plant variety a condition for obtaining such a plant patent, the exclusive rights also expressly directed at the asexually reproduced plant and its parts.

                1. That’s a good point. The statute effectively gives the patentee a complete preemption of the natural phenomenon that is the plant. The cuttings/”asexual reproduction” are just a transplant of the plant and have the same DNA as the original mutant.

                  The only thing that makes the plant patent-eligible according to your Chakrabarty quote above is the fact that it was made by the well-understood, routine and conventional technique of taking a plant cutting.

                  So, complete preemption of a natural phenomenon is OK, as long as it is modified by well-understood, routine and conventional activity — at least according to the Plant Patent Act.

                  It was a serious question without any ulterior motive — how is plant patent infringement proved? Very few plant patent cases out there that seem to go to trial.

                2. RE: How is plant patent infringement proved? Very few plant patent cases out there that seem to go to trial.

                  Imazio Nursery, Inc. v. Dania Greenhouses, 69 F. 3d 1560 (Fed. Cir. 1995) is a case on this subject.

                  For purposes of plant patent infringement, the patentee must prove that the alleged infringing plant is an asexual reproduction, that is, that it is the “progeny” of the patented plant. It is necessarily a defense to plant patent infringement that the alleged infringing plant is not an asexual reproduction of the patented plant. Part of this proof could be, thus, that the defendant independently developed the allegedly infringing plant. The Federal Circuit held that the trial court erred as a matter of law when it held that infringement was shown by proof merely of asexual reproduction of “a plant having the same essential characteristics” as the patented plant. See the case for full details.

          2. 6.1.2.2.2

            NPtC,

            Funk is PRE-1952.

            Funk is also explicitly related to plants (albeit, NOT a plant patent per that section of the Title).

        3. 6.1.2.3

          “Patent-like protection”? Gosh, it’s almost as if everything under the sun doesn’t need to show-horned into the utility patent system.

          Too bad there aren’t any smart people in the Silly Con Valley world of the patent maximalists interested in exploring such alternatives for protecting logic. I wonder why that is? So mysterious ….

          1. 6.1.2.3.1

            “to be shoe-horned”, not “show-horned”. Dang autocorrect.

            1. 6.1.2.3.1.1

              Interesting point. Some countries (e.g. Germany, France, Italy, Japan, Korea, Taiwan and China) have an alternative system known as a “utility model” for certain subject matter (e.g., not processes) and with less stringent requirements in exchange for a shorter term of protection (usually 7 to 10 years, no extensions).

              The conditions vary from country to country, but because it is generally a registration system with no substantive examination, they are cheaper to obtain. Utility models are considered particularly suited for small and medium-size enterprises (SMEs) that make “minor” improvements to and adaptations of existing products. Because of their much shorter term, utility models are better suited to products with a short market life that might be superseded by newer innovations.

              The utility model typically requires an “innovative” step rather than an “inventive” step, to protect an incremental advance on existing technology rather than a groundbreaking invention, where an innovative step exists when the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention.

              The USA currently has no such utility model form of protection. Perhaps some of the types of currently ineligible subject matter could be adapted to such a utility model system, without affecting the conditions and requirements of the utility patent system.

              1. 6.1.2.3.1.1.1

                I guess you could label this MM’s “separate drinking fountains” plan.

                We could have one system/drinking fountain for biotech patent owners and a separate but less equal system/drinking fountain for software and business method patent owners.

              2. 6.1.2.3.1.1.2

                The USA currently has no such utility model form of protection.

                No need.

                Our utility patent system simply includes normal patents for things possessing utility within the (broader) scope of the Useful Arts, and already includes “and improvements thereof” of the items normally covered in the statutory categories.

                WHY IN THE WORLD we even want to look at some Euro-weaker model?

                Perhaps some of the types of currently ineligible subject matter could be adapted to…

                What do you have in mind? (and I ask NOT as to any current Justice-Common-Law-Broken-Core-Board view, but with a view of some type of PROPER currently ineligible subject matter – noting that such would be defined as those things that do not meet the low bars as set by Congress)

          2. 6.1.2.3.2

            How is your copyright project coming along for just logic?

            You seem to have this unrealistic and plainly unhealthy obsess10n against the reality of software related innovation.

            Let me remind you (yet again) that there are only two things to be concerned about in regards to patent utility:

            Is the innovation claimed in at least one of the statutory categories, and

            Does the utility present in the Useful Arts?

            That.
            Is.
            It.

            All else is muckery.

    2. 6.2

      Why on earth would you think so? And what difference would it make to the plant patent system?

  6. 5

    171 in its entirety (emphasis added):

    35 U.S.C. 171 Patents for designs.

    (a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

    (b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

    (c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

    There is a virtual landmine of extremely p00r legislative drafting with the entire concept of Design Patents.

    1. 5.1

      Correct. Every time that 35 U.S.C. has been amended, none of the design patent sections have been touched, and they are very poorly drafted (as an example, sec. 112 supposedly applies to design patents, but it doesn’t make sense that a design patent disclosure has to teach a designer how to “make” the design, or even “use” it). However, the lack of attention to the design patent sections may well change as the courts grapple with Sec. 289’s “article of manufacture” (which refers to the infringer’s product, not the patented one).

  7. 4

    [U]se of the word “manufacture” in section 101 – by extension – does not mean the same thing as the words “article of manufacture” in section 171.

    Not true. This is another subject matter eligibility question with a surprisingly clear answer. In re Hruby, 373 F.2d 997, 1000 (C.C.P.A. 1967):

    If, per chance, the board was attempting a distinction betweeen “manufactures,” which it seemed to think the fountains are, and articles of manufacture, we think that supposed distinction was fully disposed of by our predecessor court, with respect to appeals from the Patent Office, the Court of Appeals for the District of Columbia, in In re Hadden, 27 App.D.C. 259, 20 F.2d 275. The object there in question for which a design patent was sought was a grandstand. The Patent Office thought that, though it was a “manufacture,” it was not “an article of manufacture” and refused the patent. The court in unanimously reversing, said:

    It is difficult to perceive how a thing may be a manufacture, without producing an article of manufacture.

    1. 4.1

      Sorry, this was meant as a response to #1 below.

    2. 4.2

      The case does not support your premise.

      There well may be overlap AND the terms still do not mean the same thing.

      I am going to trust Perry’s read far more readily than yours.

  8. 3

    Technically it probably is an overstatement to say § 101 does not apply to design patents.

    Statutory double patenting, with its root in 101’s requirement that a patentee is only entitled to “a patent,” applies to design patents. In re Fee, 397 F.2d 329, 331 (CCPA 1968) (affirming double patenting rejection for design patent application because application claimed the same ornamental design as the applicant’s prior design patent).

    Further, In re Finch, only addressed a narrow aspect of 101. It held that the “utility” requirement of § 101 does not apply to design patents. (“The ‘utility requirement’ of 35 U.S.C. § 101 is not applicable to design inventions. “) It did not directly address the subject-matter eligibility / abstract issue of 101.

    Design patents do have their own subject-matter eligibility criteria (arising not from § 101, but from § 171). A design patent only protects an “ornamental design for an article of manufacture.” 35 U.S.C. § 171. See Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 525, 20 L. Ed 731 (1871) (“[T]he thing invented or produced, for which a [design] patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.”); In re Schnell, 46 F.2d 203, 208 (C.C.P.A. 1931) (‘‘The invention is not the article and is not the design PER SE, but is the design APPLIED.’’) (AllCaps emphasis in original)

    Accordingly, it would seem that the 101 patent subject-matter eligibility equivalent for a design patent is whether the claimed ornamental design is for an article of manufacture. For example, an ornamental design on a painting is most likely not viewed as being a design applied to a canvas, with the canvas being the article of manufacture. Instead, the ornamental design on the painting would be view as an “abstract impression” of a design, and therefore subject matter that is not patentable as a design patent. See Gorham , 81 U.S. at 524 (“The Acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that, not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts [designs applied to an article of manufacture].”)

    1. 3.1

      This seems like a more sophisticated analysis that is probably right.

    2. 3.2

      re: statutory double patenting, “a patent” is also in sec. 171.

      1. 3.2.1

        Good catch, Perry. (I should have been more thorough).

  9. 2

    However, not applying 101 does not mean there are not some attempts to hold certain design patents or applications unpatentable subject matter. For example, the PTO for several years refused to grant design patents on screen display icons until reversed by an enlarged PTAB Board decision.

    1. 2.1

      That was “EX PARTE PAULIEN F. STRIJLAND AND DAVID SCHROIT Appeal No. 92-0623 April 2, 1992 HEARD: January 31, 1992.” Since Commissioner Manbeck was on that expanded Board panel, not surprisingly the Solicitor did not appeal to the Fed. Cir. and the PTO started allowing screen icons ever since as long as at least a broken away part of a screen is shown or the icon is described and claimed as on a screen.

  10. 1

    For once, Professor Burstein and I agree! And of course, use of the word “manufacture” in section 101 – by extension – does not mean the same thing as the words “article of manufacture” in section 171.

    1. 1.1

      Please elaborate. What is the distinction?

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