Design Patent

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A design patent, unlike a utility patent, limits the investor’s patent protection to the ornamental design of the article. Per 35 U.S.C. § 171, “[w]hoever 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.” A design patent protects the non-functional aspects of an ornamental design displayed in a patent.

As stated in In re Frick (C.C.P.A. 1960), Section 171, of Title 35 of the United States Code, authorizes the granting of patents for designs subject to the other conditions and requirements of Title 35, of the United States Code. Under Section 103, a patentable design must be a "new, original and ornamental" design, meaning that it would not have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. While “a patentable design may contain old elements,” the finished product “must have an unobvious appearance and not be merely the result of an obvious combination of the old elements.” Since the Patent Act of 1842, federal law has protected inventor’s designs for manufactured articles through design patents.

Unlike utility patents, design patents do not–indeed, cannot–include claims to the structural or functional aspects of the article. Per 37 C.F.R. § 1.153(a), “. . . [t]he claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted. Accordingly, a design patent is limited to ornamentation. As the Federal Circuit stated in Power Controls Corp. v. Hybrinetics, Inc. (Fed. Cir. 1986), “[i]f the patented design is primarily functional rather than ornamental, the patent is invalid.” Even so, the United States Court of Customs and Patent Appeals (CCPA) noted in In re Garbo (CCPA 1961) that “a design may embody functional features and still be patentable,” but only if the design has “an unobvious appearance distinct from that dictated solely by functional considerations.” For instance, the CCPA explains in In re Carletti (CCPA 1964):

Many well-constructed articles of manufacture whose configurations are dictated solely by function are pleasing to look upon, for example a hexnut, a ball bearing, a golf club, or a fishing rod, the pleasure depending largely on one's interests. But it has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not "ornamental" – was not created for the purpose of ornamenting.

The controlling matter in determining questions of patentability and infringement "is the appearance of a design as a whole,” the CCPA stated in In re Rubinfield. A design patent is infringed, as the Sixth Circuit remarked in Applied Arts Corp. v. Grand Rapids Metalcraft Corp. (6th Cir. 1933), when another design also presents “the appearance which distinguishes the design claimed in the patent from the prior art.” The court goes on to explain:

The patented design is comparatively simple, and without ornamentation. In the main its configuration is made imperative by the elements which it combines and by the utilitarian purpose of the device. . . . To hold that general configuration made necessary by function must give to a patented design such breadth as to include everything of similar configuration, would be to subvert the purpose of the law, which is to promote the decorative arts . . . .

To determine the infringement of a design patent, it is thus the non-functional, design aspects that are relevant. Whether a design patent is in fact infringed, depends on the test of “sameness upon the eye” established by the Supreme Court in Gorham v. White (1871). The Gorham court held that sameness of effect upon the eye is the core test of substantial identity of design–i.e., two designs are substantially similar if the resemblance induces the observer to purchase one design “supposing it to be the other.” But as Gorham held, it is the eye of “an ordinary observer, giving such attention as a purchaser usually gives” and not the eye of the expert. If the eye of an expert was the criterion by which sameness was measured, “[t]here never could be piracy of a patented design,” for a design, in all its details, is never so similar that “an expert could not distinguish them.”

More than a century after Gorham, the Supreme Court wrestled with the issue of “sameness upon the eye,” but unlike in Gorham, the articles in question were smartphones and the central issue was the calculation of damages. In Samsung Elecs. Co. v. Apple Inc. (2016), Apple sued Samsung for patent infringement of its design patents for the iPhone. Apple’s design patents covered their iconic smartphone design, recognized for its “rectangular front face with rounded edges and a grid of colorful icons on a black screen.” Samsung’s smartphone, Apple claimed, resembled the iPhone. In fact, the jury agreed that the resemblance was so striking that an ordinary observer would be duped into thinking they were the same. As a result, they found that Samsung violated Apple’s design patents and awarded Apple $399 million in damages, an amount equal to Samsung’s entire profit from sales of the infringing phone.

The Supreme Court granted certiorari precisely because the case presented an unresolved issue in patent law. Both Apple and Samsung agreed that 35 U.S.C. Section 289 makes it illegal to sell an “article of manufacture” protected by a design patent. They also agreed that Section 289 allows a patent holder to recover the total profit an infringer makes from the infringement. However, the scope of the protected “article of manufacture,” in the case of a multicomponent product, such as the iPhone, was debated. Apple argued that the “article of manufacture” is always the entire end product sold to the consumer; Samsung argued that it can also be a component of that product. Under Apple’s interpretation, a patent holder will always be entitled to the infringer’s total profit from the end product. Under Samsung’s interpretation, a patent holder will sometimes be entitled to less than the infringer’s total profit from a component of the end product. Here, the end product is the iPhone. The component is the iPhone’s front screen. And Samsung believed that its smartphone design infringed on less than the entire design of the iPhone.

The Supreme Court agreed with Samsung. The Court, in part, believed Samsung’s reading of Section 289 “is consistent” with Section 171(a) of the design patent statute. Section 171(a), the Court noted, “permit[s] a design patent for a design extending to only a component of a multicomponent product.” (emphasis added). Because a mere component of a product can be protected by a design patent, the statute that governs the remedies for patent infringement of manufactured products should similarly make the distinction between a protected component and its larger end product. Accordingly, the Court held that the $399 million in damages was too large. That amount assumed Samsung was infringing on the entire iPhone, not a discrete component. Accordingly, a correct award would only reflect the design components that Samsung had infringed.

[Last updated in July of 2020 by the Wex Definitions Team]