Design Patents: Novelty and Nonobviousness

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By Richard Stim

To meet the standards of a design patent, a design must be new and original, nobvious, and an ornamental design for a functional device. 

New and Original

To be new (also referred to as “novelty”), a design must differ from all previous product designs (known as the “prior art”). You don’t have to come up with a new concept, only a new design.

A design must also be original, which means that it has to do more than simply imitate what already exists. A design that simulates a well-known object—for example, a paperweight replica of the Empire State Building—is not considered to be original. The design must be the result of “industry, effort, genius, or expense.” (Smith v. Whitman, 148 U.S. 674 (1893).)

It’s generally not considered original to depict something naturally occurring, but this standard is interpreted loosely. For example, a design patent for a model of a human baby was invalidated (In re Smith, 77 F.2d 514 (CCPA 1935)), but the designers of a replica female breasts on beadswere granted a design patent and successfully enforced it against competitors (Superior Merchandise v. M.G.I. Wholesale, 52 U.S.P.Q. 2d 1935 (E.D. La. 1999).)

What Is Prior Art?

For purposes of a design patent, prior art includes:

  • any design used on a useful object in public use or on sale in the U.S. for more than one year before the filing date of your design patent application
  • anything that was publicly known or used by others in the U.S. before the date your design was created
  • anything that was made or built in the U.S. by another person before the date your design was created
  • any work that was the subject of a prior design patent, issued more than one year before the filing date of your design patent or any time before the date your design was created, or
  • any work that was published more than one year before the filing date of your design patent or any time before the date your design was created.

Nonobviousness

If your design would be considered obvious by others in your field, the USPTO will reject your design patent application. As is true of the novelty standard, a design concept may be obvious while the actual design is not. For example, Spiro Agnew—the late vice-president, famous for such alliterations as “nattering nabobs of negativism”—was depicted in caricature on the face of a watch. Although the concept of caricature was obvious, the particular design was not.

Is Nonobviousness Nonsense?

If you find the nonobvious standard for designs confusing, you’re not alone. There aren’t too many clear standards for determining when a design is obvious and when it’s not, which means that individual patent examiner -- and judges, if someone files an infringement lawsuit -- have a lot of leeway in making these decisions. There have been periodic attempts to change the law, but the standard remains for now, in all its murky glory.

It doesn’t necessarily take great originality or craftsmanship to create a nonobvious design; sometimes, it requires only the ability to visualize things a little differently.

Demonstrating Nonobviousness

For example, you can demonstrate nonobviousness by:

  • using a familiar form in an unfamiliar medium—such as the use of a floral pattern as a candle holder
  • making a slight change to an existing design that produces a striking visual effect—such as alternating the position of hearts on a wedding ring
  • omitting a visual element commonly associated with similar designs—such as the waterbed design, which is distinguishable by the absence of visible seams on the top and sides of the mattress, or
  • juxtaposing elements in a way that creates an unexpected visual statement—such as embedding a poker chip in the bottom of a shot glass 

Your design will be more likely to meet the “nonobvious” test if:

  • it has enjoyed commercial success
  • it has a visual appearance that’s unexpected
  • others have copied the design
  • the design has been praised by others in the field
  • others have tried but failed to achieve the same result, or
  • you created a design that others said could not be done.

It is possible for a design to be new and obvious at the same time. For example, a court determined that a design (below) for an alcohol server that was shaped like an intravenous dispenser was new—no such design had been used for serving alcohol—but it was obvious and therefore not patentable. (Neo-Art, Inc. v. Hawkeye Distilled Products, Co,654 F. Supp. 90 (C.D. Cal. 1987),aff’d, 12 U.S.P.Q. 1572 (CAFC 1989).)

The difference between novelty and nonobviousness is this: a design is novelty if no one has previously made a similar design, while a design is nonobvious if no one has even considered making the design. In practical terms, though, the two standards often overlap and lack of prior art becomes the measure of both nonobviousness and novelty.

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