Ed. Note: I summarized the Federal Circuit’s design patent decision in Curver Luxembourg v. Home Expressions in a recent post titled Federal Circuit Rejects Patenting Designs “in the Abstract.” Prof. Burstein has previously written about the case and the topic and I invited her to provide some remarks on the case. – D.Crouch
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By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law (@designlaw)
Two quick observations at the outset:
- This decision is consistent with previously-decided case law on infringement.* (For a full run-down, see my law review article: The Patented Design.)
- This decision not consistent with the USPTO’s current novelty rule. According to the MPEP, “[a]nticipation does not require that the claimed design and the prior art be from analogous arts,” relying on an out-of-context quote (which, as the Federal Circuit pointed out, was also dicta) from In re Glavas. See MPEP § 1504.02. The court’s ruling on this point is a welcome correction and should spur the USPTO to revise its examination procedures.
This case also raises a deeper and more important question—namely, what does it mean for something to be a “design for an article of manufacture”?
Design patents are available for “any new, original and ornamental design for an article of manufacture,” subject to the other requirements of Title 35. See 35 U.S.C. § 171(a). Prior to this case, some suggested that a “design for an article” refers to merely a design that is capable of being applied to one or more articles, not a design that is in any sense “for” any particular article. Under this view, the longstanding USPTO requirement that an applicant identify an article could be viewed as a type of reduction-to-practice requirement or mere formality that should not (or even must not) limit the scope of the claim.
The Federal Circuit’s decision in Curver seems to reject that conception of the patentable “design.” Although it doesn’t fully answer the question of what it means to be a “design for an article of manufacture,” this decision is a step in the right direction.
So what happens now? The USPTO requires a design patent applicant to identify an article in the verbal portion of the claim and (the same article) in the title. See 37 CFR § 1.153. But it also instructs examiners to “afford the applicant substantial latitude in the language of the title/claim” because, under 35 U.S.C. § 112, “the claim defines ‘the subject matter which the inventor or joint inventor regards as the invention.’” MPEP § 1503.01(I).
The Federal Circuit’s decision in Curver creates incentives for applicants to seek broader titles in order to obtain broader scope. In theory, that incentive would be counter-balanced by the fact that a broader title would create a broader universe of § 102 prior art. But given how difficult it is for patent examiners and accused infringers to find relevant prior art (an issue I discuss here), that seems unlikely to be a significant deterrent to over-claiming.
The risk of prosecution history estoppel might be a more significant practical deterrent. Curver initially claimed a “design for a furniture part.” When the examiner deemed that “too vague,” Curver amended the claim to refer to a “chair.” The Federal Circuit ruled that this amendment did limit the claim. Future applicants will have every incentive to push back on these types of rejections, putting pressure on the USPTO to enunciate clearer rules about how specific article identifications need to be.
In that respect, the USPTO (and anyone who’s interested in this topic) may want to revisit the CCPA’s 1931 decision in In re Schnell. In that case, the applicant attempted to frame its claim very broadly and the CCPA rejected that attempt. In doing so, the CCPA engaged in a thoughtful and nuanced discussion about how different types of designs might lend themselves to different types of claiming and how those claims might affect a design patent’s scope. The approach taken in Schnell is not the only possible (or necessarily the best) approach, but it’s worth considering.
I’ve also been asked how Curver might affect arguments about what constitutes the “relevant article” for the purposes of § 289. (For more on that issue, see this previous post.) At this point, it’s hard to answer that question with any certainty because the Federal Circuit has still not picked a test for Samsung step one. If it adopts the test proposed by the U.S. Government in its Samsung v. Apple amicus brief, the article identification in the patent would be relevant to the damages inquiry. This approach gives applicants incentives to direct the verbal portions of their claims to he largest salable unit. See, e.g., U.S. Patent No. D852,236 (stating that the design is “for a refrigerator” but only actually claiming a small part of the shape of the interior of a refrigerator). In some circumstances, these incentives might conflict with the ones provided by Curver; it will be interesting to see how applicants balance them in future applications.
And while Curver is only directly relevant to the scope of § 102 prior art, I suspect applicants will also argue that it should also narrow the universe of § 103 prior art. But when it comes to designs, it actually makes sense for the universe of § 103 prior art to be broader than the universe of § 102 prior art. (For more on these points, see here and here).
One final note: In Curver, the panel described the asserted patent as “atypical” because “all of the drawings fail to depict an article of manufacture for the ornamental design.” But it’s actually quite common for surface-ornamentation designs to be illustrated in this way. Whether or not that is a good policy (and whether it is consistent with § 112) is another question. The answer probably depends on what it means for a surface design to be “for an article of manufacture”? Even for repeating patterns like the one claimed in Curver, it could be argued that placement and proportion are still essential elements of a design for a particular article. If that’s true, then the disembodied-fragment drawing convention also needs to be reconsidered.
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* Other commentators have asserted that, in the past, courts treated surface-ornamentation as designs per se. But they cited no cases in support of that assertion and I have not been able to find any. For more details, see FN 480 here.
Did anyone ever attempt to claim a “design” (LOL) displayed by a broadcast TV screen? If so, when did that first happen and what was the design?
If a design be claimed as something that is electronically displayed (and not applied to anything) then the “requirement” is plainly not a “requirement” at all.
Other than illustrating how fundamentally broken and absurd “design patent law” is, I don’t really get the point of the article. Of course the scope of 103 art for ornamental designs should be virtually unlimited (at least within the realm of ornamental designs).
The elephant in the room is that design patent claims, like “algorithm” claims, are simply not examined at all by the USPTO. Unlike with utility patents, there isn’t even a pretense of examination. So what’s really happening here?
“electronically displayed (and not applied to anything) ”
You ASSume your own conclusion in that statement — the action of display IS the action of “applying.”
Why would you think otherwise? Do you have some case or even dictionary that states that “applying” must be in some non-changeable manner?
“Other than illustrating how fundamentally broken and absurd “design patent law” is,”
At least here, we remain in agreement. Patent law should be expressly reserved for the IP protection of things of utility. Shoehorning “design” into a utility system is a nonstarter.
“like “algorithm” claims, are simply not examined at all by the USPTO. ”
Clearly, you are NOT speaking from any sense of actual experience on the matters, so in that regards, the BEST that can be said is: Your feelings are noted.
“Unlike with utility patents,” — to use Greg’s word, your “equivocation” here indicates that YOU feel that there is no utility in software. Why would you so blatantly prevaricate on such a thing? Do you really not think (at all) that such a position from you is asinine on its face and really does not f00l anyone?
Instructions have utility.
Also, “applied onto” and “displayed by” are non-equivalent and non-overlapping in the context of design patents and anyone who argues otherwise is a disingenuous patent huffing @ wipe who spends way too much time polishing the knobs on their computer.
Need I ask you yet again to engage in the Simple Set Theory explication of the exceptions to the judicial doctrine of printed matter that so apparently affects your ability to grasp the point at hand?
“Also, “applied onto” and “displayed by” are non-equivalent and non-overlapping in the context of design patents and anyone who argues otherwise is a disingenuous patent huffing @ wipe”
As I noted, your feelings on this (as that is ALL that you have) have been noted.
If you want to share more than just your feelings, I look forward to you cogent inputs ( I will not be expecting any such cogency from you — based on your more than 14 and half years of “contributions”).
Yeah Malcolm, that’s what I expected.
Here is something that bothered me about the opinion. The inventor originally applied for the design as applied to “furniture.” PTO rejected that as not specific enough, so he amended it to a “chair.”
But what should he do if the design (here for surface ornamentation) was intended to be used for multiple articles — let’s say, chairs, tables, footrests and magazine baskets? (I could see a manufacture making a coordinating set and selling each item separately.) Could he have listed all four types of items in one patent? Gotten four different patents?
As it is, his “chair” design patent would not cover uses of the same design for the other three types of items.
(As the CAFC pointed out, he likely could have secured copyright protection for the design, which would have covered all types of objects.)
The last sentence should have also alluded to the Star Athletica case, cited by the CAFC, which relates to copyright protection.
In light of Star Athletica and the Curver Luxembourg decisions, is there any reason that someone who comes up with new surface ornamentation should simply forget about design patents and seek copyright protection instead? What would a design patent give this inventor that copyright would not? (Other than the greater expense and headache of dealing with the PTO.)
What would a design patent give this inventor that copyright would not?
Do you mean besides the stronger “strict liability” and heftier damage provisions…?
Copyright is also a strict liability statute. True, it requires copying, not just use, but where a product is released to the public for commercial dissemination, that is almost always assumed (access and substantial similarity).
As for damages, the Copyright Act allows damages and profits, to the extent they are not duplicative. And, you can opt for statutory damages (assuming you registered before the infringement). So please explain how they are “heftier.”
There is no “fair use” exception in design patent law.
yep
BL,
I see copyright as easily distinguishable in the sense of Fair Use (which while often portrayed as a “defense” is really about NOT violating copyright to begin with).
And sure, the Copyright Act allows for damages – but clearly the damage factor is vastly different. Do you really have to ask why the one is heftier than the other?
What bothered me about the case was the total lack of examination of the obviousness of the design itself.
Re your indication of a lack of case law, note the requirement for design patents for screen display icon designs to have either words to that effect or a broken-away dotted line portion of a screen underlying that design, I assume you are familiar with the 1992 Ex parte Strijland rare Expanded Board Decision [on which even the Commissioner himself sat] so holding?
The part I strongly agree with is: “when it comes to designs, it actually makes sense for the universe of § 103 prior art to be broader than the universe of § 102 prior art.” Also, the article “Design Patents §103 – Obvious to Whom and As Compared to What?” Patently-O, Sept. 17, 2014.
The Fed. Cir. restriction of usable 103 prior art for design patents to a single reference [applying the 1982 CCPA In re Rosen test] seems long overdue for an en banc or Sup. Ct. challenge, especially as contrary to KSR. Why is only a product designer a POSITA so lacking in “common sense” [repeatedly required in KSR] as to only consider one single prior art reference for a 103 analysis? There is no statutory basis for such restriction.
Especially since typical product designers design wide varieties of articles.
Design of articles in their entirety is a very different set of facts from the application of ornamental patterns to existing articles. Any statutory scheme that doesn’t recognize these kinds of fundamental distinctions is pretty much worthless and broken from the get-go unless you are a strong believer in the ability of the judiciary to write patent law from scratch.
“strong believer in the ability of the judiciary to write patent law from scratch.”
A non-sequitur, as design patent law is a mess due directly to Congress, rather than ANY “judicial writing.“
The “statute” itself has been obliterated into nothingness because the requirement for “applied to an article” has been judicially eliminated (of course, that’s the kind of activism that the maximalists love so we won’t hear endless whining about civilization ending and Derp Constitution like we would in the wake of other statutory interpretation cases).
…?
Won’t hear?
Take your fingers out of your ears – who exactly has been one of the most ardent critics of our design patent system?
Or does that not fit into your “one-bucket”….?
Interesting – I invite the guest author to review my comments on the prior thread
To discuss with Prof Burstein, you’ll have to engage on Twitter. @designlaw.
link to twitter.com
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