© 2002, Dawsey Co., LPA
May 2002

Unlike utility patents, which find their legal root in the Constitution, patent protection was not extended to ornamental designs until an Act of Congress in 1842. The nineteenth century saw a large number of extremely ornate and beautiful design patents filed, including the French sculptor Bartholdi’s design patent for the Statue of Liberty in 1879 (U.S. Design Pat. No. 11,023).

Today, the law provides for patent protection for a “new, original, and ornamental design for an article of manufacture.” The terms “new” and “original” mean simply, as with all patents, that the claimed design must have been designed by the person seeking the patent, and must not be copied from a currently manufactured item. The term “ornamental” encompasses several legal requirements. The design must be for surface ornamentation, that is, the internal works of a device are not protected. However, the fact that a design may be hidden for use, for example a septic tank that is designed to be buried, does not bar patent protection, as the appearance at the time of sale in controlling. A design patent can also be granted for part of an object, as in the case of patented drill shanks that did not claim the cutting part of the drill bit. “Ornamental” requires that the design appearance not be dictated by functional considerations, as, for example, a design for a distinctive airplane design that makes the plane fly more efficiently would not be proper subject matter for a design patent.

Why would an inventor file for a design patent? The answer can be as simple as the good-will and market share that immediately springs to mind when we see the distinctive shape of a Coca-Cola® bottle. But a more subtle answer lies in the breadth of protection that a design patent can offer from close, but not exact, copies.

An examination of infringement of a design patent goes beyond a line by line or element by element comparison between objects. The U.S. Court of Appeals for the Federal Circuit has held that design patent infringement occurs if the accused device is substantially the same as the claimed device in the eye of the ordinary observer. It is applied by considering the overall design of the two objects. Equivalency is preserved even though there may be minor differences that only a trained observer would detect. As a result, a patentee can be protected even if an infringer makes changes to try to get around a prior patent.