Guest Post: Old Designs, New Design Patents

By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

In December 2020, the USPTO put out a request for comments on “The Article of Manufacture Requirement.” (For prior PatentlyO coverage, see here.) Last week, at Design Day 2022, the USPTO announced that it had completed its summary of those comments. That summary is available here.

In the request for comments, the USPTO floated the idea of issuing design patents for what they are now calling “designs for projections, holograms, and virtual and augmented reality (PHVAR).” Presumably, this acronym is meant to suggest that these are new types of designs, uncontemplated by Congress when it passed statutes that—according to some—are in need of “modernization.”

But projected designs aren’t new.

As we explained in our law professor comments, designs for “magic lantern” projections go back at least as far as the 17th century. So the concept of projected designs was well-established by the time Congress passed the first design patent act in 1842—not to mention when it codified the Patent Act in 1952. Projected designs are simply not some new, unforeseen concept.

There may be new types of projection machines today, but this type of design is not new.

The USPTO suggests that the scope of design patentable subject matter “should be reevaluated in order to incentivize and protect innovation in new and emerging technologies.”

But it is not—and should not—be the role of the design patent system to incentivize or protect new machines. We have utility patents for that.

Furthermore, projected designs are not as the USPTO seems to suggest, unprotected today. Projected images qualify as pictorial, graphic, or audiovisual works that are already protected—costlessly and immediately upon fixation—by copyright. It can’t be seriously suggested that Congress was unaware of projected designs when it passed the broad definitions of protectable subject matter in the Copyright Act of 1976. It’s clear from the definitions that one form of projected creativity, cinema, was very much on Congress’ mind. See, e.g., 17 U.S.C. § 102(a)(6) (providing protection for “motion pictures and other audiovisual works.”).

Again, the type of projector may be new, but the type of work is not.

So why push for design patents when copyright is already available? There may be some who just want to accrue as many belts and suspenders as their IP budgets will allow. But that alone is not a good enough reason to expand design patentable subject matter.

It may be that, for at least some potential applicants, the goal is to avoid the requirements of copyright law. In Feist v. Rural, the Supreme Court held that a work must have “minimal creativity” to be protected. Thus, to gain copyright protection, a work must “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” This is, according to the Supreme Court, a requirement of the Progress Clause.

Minimal creativity is a low bar. Yet the USPTO has granted numerous design patents for designs that fall below it—especially in the context of computer-generated designs. In theory, novelty and nonobviousness could be a higher bar but, in practice, that is not the case.

So let’s all be clear:

  1. These are not new types of designs.
  2. They’re not unprotected—unless they fail to meet the low constitutional threshold set in Feist.

For more on why § 171 shouldn’t be “reinterpreted” to cover projected designs, see: https://www.regulations.gov/comment/PTO-C-2020-0068-0009

19 thoughts on “Guest Post: Old Designs, New Design Patents

  1. 6

    >It may be that, for at least some potential applicants, the goal is to avoid the requirements of copyright law.

    I hypothesize a different motivation: a desire to avoid fair use and/or independent creation defenses.

    1. 6.1

      Re: “fair use and/or independent creation defenses”
      Good points – important advantages of design patents over copyrights include that and no burden to prove access and copying.

    2. 6.2

      How do the potential payouts compare?

      1. 6.2.1

        It depends on your respective chances of winning….best case will be on their copyright, but I doubt they’re putting all their eggs in one IP basket.

        1. 6.2.1.1

          Sure- I was looking for rough order of magnitude of potential damage dollar value (then could use those numbers against a likelihood of success factor).

  2. 5

    >Yet the USPTO has granted numerous design patents for designs that fall below it—especially in the context of computer-generated designs.

    Can you give a specific example? I tend to think of the creativity bar as being *so* low (e.g., I can stand at a “picture spot” sign and take exact same view as 10,000 other tourists and still end up with a copyrighted work) that it’s hard to think up any tangible design that wouldn’t qualify.

  3. 4

    Meanwhile, the USPTO continues to instruct its Examiners to sidestep addressing In re SurgiSil in Office Actions.
    The USPTO has a history of demonstrating that it cannot walk and chew gum at the same time so perhaps they should address In re SurgiSil before they proceed any further with this new pet project.

    1. 4.1

      +1

      Billion

      1. 4.1.1

        Trillion

        1. 4.1.1.1

          Thanks, guys.
          Perry, an Examiner flat out told me that, until there is some pronouncement by the-powers-that-be with regard to SurgiSil, he has been told to follow what MPEP says (the MPEP itself admits it doesn’t have the force of law) and the MPEP’s position that Glavas holds that the “anticipatory” reference doesn’t have to be analogous.
          Am I wrong in thinking they just want to kick the “policymaking” to the PTAB, by continuing to make rejections based on overruled law until someone finally appeals to the PTAB?

          1. 4.1.1.1.1

            Dave Boundy would have some choice words for your examiner…

            They simply are not at liberty to do what they are doing. This should be marked as quality hits against both the examiner and her SPE – and I would not hesitate to involve the Ombudsman for such direct recalcitrance.

          2. 4.1.1.1.2

            Yes, IMHO. They do it all the time. Witness, Maatita.

            1. 4.1.1.1.2.1

              Yes, I recall you bringing up Maatita.
              I can’t imagine the PTAB is ever happy with art units passing the buck to them to figure out how to deal with new law. There must be some decision you’ve received from the PTAB where they recognize that Maatita controls, and the portion of the MPEP/case law the Examiner was relying on was overruled by Maatita. Or is it simply hear not-see not-speak not?

  4. 3

    Re this PTO evaluation of the design patent “article of manufacture” requirement re screen or other projected image displays, note that the PTO only clarified it’s prior internal debate on whether or not screen displayed GUI images can be design patented in the expanded-Board decision in Ex parte Strijland (Bd. Pat. App. & Int. 1992). If I recall correctly, this Strijland decision cites an old CCPA decision allowing design patenting of a water show display pattern of the water?
    Re your comment as to a lower §103 test for design patents in practice [in spite of having the same §103 statute] see, e.g., “Design Patents §103 – Obvious to Whom and As Compared to What?” Patently-O, Sept. 17, 2014.

  5. 2

    In a rather Platonic sense, I am left wondering as to this assertion in the article above:

    Furthermore, projected designs are not as the USPTO seems to suggest, unprotected today. Projected images qualify as pictorial, graphic, or audiovisual works that are already protected—costlessly and immediately upon fixation—by copyright

    Is a projected image actually “fixed” in anything so as to reach copyright protection?

    By this, I am not indicating the fixed item or device through which any light (or other energy) may be used, but rather – like Plato’s cave, the actual image (shadow) that appears on the cave wall.

    In the Design patent sense, it would be the cave wall that would serve as the “article of manufacture,” (and in a very immediate sense, that ‘article of manufacture’ to which the imaged design would be ‘fixed to’ could be any other item such a projector would be pointed at.

    The design of In re SurgiSel could be “projected on nigh countless different objects, and EACH object of its own accord would then provide a different patent comprising said projected design.

    The way around this seems NOT in accord with the law as written – that is, a design patent for the design itself.

    1. 2.1

      Copyright-wise, I guess I’d argue the projection is a public performance and the fixation is the computer readable media from which it’s generated.

      But, that doesn’t seem to fit/help wrt claiming it as a design patent.

      1. 2.1.1

        I am talking about the shadow ON the cave wall…

  6. 1

    Hobson’s choice….?

    Protect disembodied designs per se – or – protect multiplicity of design per applied manufacture

    As current law is written – the choice falls to the second.

    (by the by – and to help ‘inform’ those like Wt that will sometimes whine that my writing may be ‘difficult to follow,’ the second provided link in the article should serve as a baseline prior to reading and partaking in conversation on this article)

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