By Richard Stim
For patent purposes, “design” refers to the visual and reproducible appearance of products. As the Manual of Patent Examination Procedure (MPEP) puts it, design “is the appearance presented by the article which creates an impression through the eye upon the mind of the observer” (MPEP§1542). In other words, it’s the way that a product looks.
Three Types of product Designs
There are three types of protectible product designs:
- shape and proportions—for example, a Mickey Mouse telephone
- surface ornamentation— for example, a picture of a school used as a watch face, or
- a combination of shape and surface ornamentation — for example, a new high heeled shoe.
In addition, a design “must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method” (MPEP § 1502). For example, a randomly changing laser light pattern could not be protected, but a water fountain display—the combined appearance of the water and the underlying sculpture—is protectible.
Patent examiners are instructed that a “design is inseparable from the article to which it is applied and cannot exist alone merely as surface ornamentation” (MPEP§1502). But designs can live separately as a scheme of surface ornamentation. For example, wallpapers and posters can be protected under design patent law. What the standard really means is that the design patent owner cannot stop others when the surface ornamentation is “separated” from the useful article for which it was registered (for example, a lunchbox) and reproduced on another useful article (like a knapsack).
To be patentable, a design must be “primarily ornamental.” This means that the claimed design cannot be dictated by the article’s function. If a variety of designs could achieve the same function, the design is ornamental.
To be ornamental, the design should also be visible during normal intended use or at some other commercially important time—for example, at the time of sale or in an advertisement. Designs for articles that would be hidden intermittently—for example lingerie, garment hangers, tent pegs, and inner soles for shoes—may still acquire design patents.
Finally, a design patent can be granted only if the design is embodied on an article of manufacture—a term that encompasses anything made 'by the hands of man' from raw materials, whether literally by hand or by machinery or by art. (In re Hruby, 373 F.2d 997 (CCPA 1967).) Although the term “article of manufacture” is broad and includes everything from computer icons to wallpaper, it is not meant to include paintings, silk screens, photographs, or separable two-dimensional surface ornamentation, such as decals. However, this distinction is difficult to pin down. For example, a roof shingle that mimics the appearance of wood shingles (and fools the eye into believing that a two-dimensional product is a three-dimensional product) is protectible despite its “separable” surface ornamentation and similarity to naturally occurring objects. (National Presto Industries Inc. v. Dazey Corp., 18 USPQ2d 1113, 1116 (N.D. Ill. 1990), aff'd, 949 F.2d 402 (Fed. Cir. 1991).) Finally, a design can be patented even if it’s only a portion of the article—for example, the shank of a drill bit.