Design Law - Katz_Mottley - Spring 2014.docx - DESIGN...

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DESIGN PATENTS STATUTORY SUBJECT MATTER 35 USC § 171: Patents for designs. a) In general. Whoever invents any new , original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS §§ 1 et seq.]. b) Applicability of this title. The provisions of this title [35 USCS §§ 1 et seq.] relating to patents for inventions shall apply to patents for designs, except as otherwise provided. c) Filing date. The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 [35 USCS § 112] and any required drawings are filed. Articles of Manufacture Courts generally are generous with what is or is not an “article of manufacture.” “Anything made by the hands of man” is valid subject matter. In re Hruby . This can include designs that require something outside what is described in the design to have a complete visual effect: lamps without lampshades and fountain designs without waterspouts are still valid articles of manufacture. In re Hruby . Similarly, an ornamental design can be a part of an article of manufacture without necessarily being the entirety of it. A company can opt to patent the design of the shank portion of a drill bit, for example, even when the shank does not exist independently from the rest of the bit. In re Zahn . Surface ornamentation, however, is not patent-eligible. Designs must be attached in some way to an article of manufacture. While things like computer icons can be patented, they must be patented as ornamentation for a computer display (an article of manufacture) and not presented separately. Ex parte Striljand . In re Hruby, 373 F.2d 997, 153 USPQ 61 (C.C.P.A. 1967) The full display of a design requiring something outside itself (a lampshade without an included lamp, or, as in this case, a decorative fountain that includes the waterspouts as part of the design) does not make the design something other than an “article of manufacture” and thus ineligible subject matter. The argument that it was a “fleeting design” and ineligible is rejected; “anything made by the hands of man” is valid subject matter. In re Zahn, 617 F.2d 261, 204 USPQ 988 (C.C.P.A. 1980) An ornamental design can be a part of an article of manufacture rather than necessarily being the entirety of it. (In this case, the intended design patent was for the shank portion of a drill bit.) Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) Graphical user interfaces are patentable subject matter so long as they are presented as ornamentation for a computer display, an example of which is also included & described. (Rejected in this case because not paired with a computer display, and as such was mere surface ornamentation rather than a design to be attached to an article of manufacture)
DESIGN PATENTS Ornamentality Functionality. Aspects of an article of manufacture that are obvious based on its functional design do not qualify as “ornamental.” In re Carlet .

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