Those in the furniture industry who invest in new designs are in a constant fight to protect those designs from others who would rather spend money on designs after they have proven popular.  Historically, design patents have been one tool used by companies trying to protect their new designs.  The expense is relatively minor for obtaining design patents, and the value can be extremely important in, at a minimum, deterring companies from the potential exposure of infringement.
            This article is designed just to introduce you to the requirements for obtaining a design patent.
            The Patent Laws.        When most people discuss “patents,” they are typically referring to “utility patents.”  A utility patent covers a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof….”  35 U.S.C. § 101.   A utility patent is considered as protection for the “function” of an item; it is valid for up to twenty (20) years from the date of application subject to certain conditions.

           A design patent can be issued for “any new, original, and ornamental design for an article of manufacture….”  35 U.S.C. § 171(a).  A design patent, therefore, protects the way an item “looks.”  A design patent is valid for up to fourteen (14) years from the date of the patent grant.


            “The language ‘new, original and ornamental design for an article of manufacture’ set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs: (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 40 USPQ2d 1048 (Fed. Cir. 1996) (Newman, dissenting); Manual of Patent Examining Procedure § 1504.01 (8th ed. 2001 rev. Oct. 2005).
To qualify for patent protection, a design must be inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.  Manual of Patent Examining Procedure§ 1502 (8th ed. 2001 rev. Oct. 2005).
A broad definition has been given to the phrase “article of manufacture” to include a “sarcophagus monument” (Crier v. Innes, 170 F.324 (2d Cir. 1909)), a “grandstand” (In re Hadden, 20 F.2d at 276 (D.C.Ct. Appeals ), but not a water fountain which was believed to be merely “a fleeting product of nozzle arrangements” (In re Hruby, 373 F.2d 997 (CCPA 1967).

Requirements for a Design Patent.      The Manual of Patent Examining Procedure establishes that “ornamentality, novelty, nonobviousness, enablement, and definiteness” are prerequisites to the grant of a design patent.  Manual of Patent Examining Procedure (8th ed. 2001 rev. Oct. 2005) §1504. 

 
            To be ornamental, a design must present a pleasing aesthetic appearance and must not be dictated solely by functional considerations.  See, e.g., In re Stimpson, 24 F.2d 1012, 1012, 58 App. D.C. 86 (D.C. Cir. 1928) (design of rivet-setting machine not patentable; “There is nothing about the assembled mechanical device which serves to beautify, embellish, or adorn it. …The design in issue may be new and original as to form, but it is not ornamental, inasmuch as it does not please the senses or excite the emotions by its color effects, or by its proportion of form. It is not necessary that the design … should be a work of the fine arts, but it is necessary that the design should be … either embellished or adorned, or distinguished by its grace of symmetry of form.”).
 
               The requirement of “novelty” or “nonobviousness” is determined by a review of the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.  Id.  In other words, the Patent Office will search other designs, catalogs, and trade journals to determine whether the applied-for design is “new” and not obvious in light of previous designs.  The claim must be nonobvious when compared with prior art using two tests:  (A) if an ordinary observer purchases an article supposing it to be the other; it is obvious; and (B) if the design appropriates the point of novelty that distinguishes the patented design from other prior art, it is obvious.  Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1373, 72 U.S.P.Q.2d 1901 (Fed. Cir. 2004).
Design Must be Nonfunctional           A design that is dictated by considerations of function is not a proper subject for a design patent.  Further, if the sole points of novelty over prior designs are dictated by functional improvement or alteration, a design is not patentable.
Parts of Articles can be Protected      Section 171 also authorizes a patent claiming the design for a part of an article.  In In re Zahn, the court determined that a design need only be embodied in some article, but did not need to be a design for a complete article.  In Zahn, the design patent was embodied in the shank portion of a drill.  As seen in the figure, below, design patents are available on  just the “table leg” which would protect the use of the table leg with any type of table top.
Conclusion.     If you invest in new designs for furniture, and you are tired of having your new designs copied and sold at lower cost, protecting your new designs with a design patent can prove beneficial.  A later article will address the question of infringement of such patents, but most decisions would prevent an exact knock-off of your design.   A design patent can significantly help in your pursuit of such knock-offs, provide enhanced damages for such infringement, and thereby protect your investment..
If you would like to discuss the availability for design patent protection or a dispute arising from the alleged infringement of a design patent, please contact Bert Andia at (336) 273-1600 or [email protected].

Source: New feed