Protection of Designs in the United States
- Types of Protection Available for Designs in the United States
- The Role of Copyright
- Trademark-Type Protection
- Protection by Design Patent
- Novelty and Statutory Bars for Design Patents
- Obviousness for Design Patents
- Filing a U.S. Design Patent Application
- Unity of Invention and Restriction Practice for Design Patents
- Examination of Design Patents
- Publication of Design Patents
- Term of Protection Provided by Design Patents
- Preliminary Injunctions Based on the Alleged Infringement of Design Patents
- Infringement of Design Patents
- Appendix A – Examples of Recent Design Patents
- Appendix B -Examples of Different Embodiments within a Design Patent
In recent years, protection of designs has become of increasing importance. As Steve Jobs famously noted:
“People think it’s this veneer — that the designers are handed this box and told, ‘Make it look good!’ That’s not what we think design is. It’s not just what it looks like and feels like. Design is how it works.”
In the United States, the most common means for protecting a design is a design patent. A design patent, which is comparatively easy and inexpensive to obtain, can act as an effective marketing tool by protecting the design from imitators while public enthusiasm for the design grows such that other means of protection may be eventually acquired after the design patent expires. The main argument used against design patent protection has been their perceived narrow scope of protection. This, however, is an understatement: by the use of broken lines in the design patent’s drawings to focus on particular features of an article, and by the incorporation of multiple embodiments in a single application so as to lead to a broader interpretation of the design patent’s claim, relatively broad protection may be acquired.
Under U.S. practice, the same laws and rules governing utility patents substantially apply to design patents, with the following major exceptions:
1) The term of protection is 14 years from the grant of the patent;
2) There is no requirement for publication of the application eighteen months from filing;
3) Provisional patent applications are not permitted for designs;
4) The convention priority term is six months;
5) If a “patent” has been granted for the design in some other country prior to filing of the U.S. design patent application, the U.S. application will only be valid if filed within six months of the filing date of the foreign application giving rise to the foreign patent; and
6) There are no maintenance fees to be paid on design patents.
Although design patent applications are subject to full examination in the United States to ensure that all patent law requirements have been met, the key issue is typically the quality of the drawings. If these are good, prosecution normally proceeds smoothly and design patents are issued relatively quickly. In a recently carried out sampling, the shortest pendency for obtaining a design patent was six months, the longest was two and a half years, and about 50% of design patent applications were granted within a year of filing.
2. Types of Protection Available for Designs in the United States
In many countries, there may be multiple ways of protecting designs, for example, by patent-type design registration, copyright, trademark, and unfair competition laws. As noted above, in the United States, protection of useful articles is primarily by way of design patent protection. Other types of design, such as architectural works, fabric design, wall paper, and jewelry, may qualify for copyright protection. As noted below, there is a special type of protection for boat hulls.
Under the United States Constitution, patent and copyright protection is a matter of federal law. Trademark and unfair competition are matters of federal law insofar as they relate to interstate commerce, but can also be a matter of state law if they relate to matters within a state. Hence, there are state trademark laws in addition to federal trademark law. However, in situations where there is a possibility for state and federal laws to co-exist, the United States Constitution provides that federal law prevails, and federal preemption precludes States from enacting laws that conflict with federal law. The United States Supreme Court, looking at a state law prohibiting the copying of articles as being unfair competition, held that:
“To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public … [The] mere inability of public to tell two identical articles apart is not enough to support an injunction against copying or an award of damages for copying that which the federal patent laws permit to be copied.”
3. The Role of Copyright
Within the realm of federal law, the current United States Copyright Act provides copyright protection for original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Case law has interpreted the requirement of “originality” as being different from novelty in the patent sense and as requiring at least some modest degree of creativity.
However, the Copyright Act provides only limited protection for “useful articles”. While pictorial, graphic and sculptural works can be protected by copyright, 17 U.S.C. 101 provides that:
“the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” (Emphasis added).
Moreover, 17 U.S.C. 102(b) provides that:
“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
Thus, unless the design has artistic features that are conceptually separable from their function, copyright protection is unavailable to protect designs for useful articles.
For many years, there was doubt as to whether obtaining design patent protection for an ornamental design precluded the assertion of copyright protection. At one time, the Copyright Office would not register a copyright after a patent had issued for the design. However, this is no longer true. Although the position is still not entirely clear, it appears that the view is now that copyright protection and design patent protection can exist simultaneously in the same design.
So far as designs of labels and the like are concerned, the Copyright Office rules state:
(a) In order to be acceptable as a pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation or form. The registrability of such a work is not affected by the intention of the author as to the use of the work or the number of copies reproduced. The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship.
(b) A claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter. While the Copyright Office will not investigate whether the matter has been or can be registered at the Patent and Trademark Office, it will register a properly filed copyright claim in a print or label that contains the requisite qualifications for copyright even though there is a trademark on it. However, registration of a claim to copyright does not give the claimant rights available by trademark registrations at the Patent and Trademark Office.
The test therefore is whether the label contains creative design work that is not “solely trademark subject matter”. While registration is not an essential requirement for copyright protection to exist, it is a requirement for enforcement of the copyright unless the work is created outside the United States so that protection is dependent on the Berne Convention. Additionally, registration provides the advantages of:
- The ability to obtain attorney fees and statutory damages which may be important if one cannot prove economic damages;
- Protection against a subsequent fraudulent assignment of rights in the work.
- In judicial proceedings, if the certificate of registration is made before or within five years after the first publication of the work, the certificate of registration shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate; and
4. Trademark-Type Protection
Registration of three-dimensional trademarks (e.g. product shapes) is possible if all of the normal requirements for trademark protection are satisfied.
Under U.S. law, trademarks are defined as:
Any word, name, symbol, or device, or any combination thereof;
1) used by a person, or
2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
To register a U.S. trademark, the mark must be “used in commerce” or the subject of a person’s bona fide intention to use in commerce., Trademark registration in the United States may be on either the Principal Register (which provides full trademark rights), or the Supplemental Register (where marks capable of distinguishing an applicant’s goods or services, but not qualifying for protection on the Principal Register, may be registered). Except for marks based on foreign registrations, registration on the Supplemental Register requires that there must have been actual use of the mark before filing the application, and that the rights and remedies available are limited to those available at common law, there being no presumption that the registration is valid.
In Wal-Mart Stores Inc. v. Samara Brothers Inc., the Supreme Court held that registration of three-dimensional trademarks is possible when a shape has acquired secondary meaning such that it is considered “distinctive”. The Supreme Court, however, noted that “design, like color, is not inherently distinctive” since “consumers are aware of the reality that, almost invariably, even the most unusual of product designs – such as a cocktail shaker shaped like a penguin – is intended not to identify the source but to render the product itself more useful or appealing.”
Furthermore, trademark protection is prohibited for designs that are functional. As the Supreme Court held in Qualitex Co. v. Jacobson Products Co., Inc., a case where the Court upheld the trademark registration of a color, aspects of a product that are “functional” generally “cannot serve as a trademark.” The Second Circuit has observed that “[t]he doctrine of functionality prevents trademark law from inhibiting legitimate competition by giving monopoly control to a producer over a useful product.” The Second Circuit has further held that “this is so because functional features can be protected only through the patent system, which grants a limited monopoly over such features until they are released into general use.”
The Federal Circuit has developed a doctrine of de jure functionality which precludes trademark protection for an article where a product has a particular shape “because it works better in that shape”. In assessing whether such de jure functionality exists, a court should consider (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.
In In re Pepsi Cola Co, the Trademark Trial and Appeal Board (TTAB) allowed an application for trademark protection for the Pepsi bottle to proceed on the Supplemental Register despite the existence of a design patent. The United States Court of Customs and Patent Appeals (CCPA) took the view that coexistence could occur in In re Mogen David Wine Corp, and reaffirmed this view in In re Honeywell. In the court’s view, there was a difference between utility and design patents. The Court stated that trademark and unfair competition rights which “happen to continue” beyond the expiration of a design patent do not “extend” the patent monopoly. They exist independently of it under different law for different reasons.
In Singer Manufacturing Co. v. June Manufacturing Co., a case from 1896, the Supreme Court doubted that trade dress protection could be available for anything that had been claimed in a utility patent. The key test espoused by more recent Supreme Court decisions is whether or not the shape in question is functional. If it is, then there can be no trade dress protection. A product feature has been defined as being functional “if it is essential to the purpose of the article, that is, if exclusive use of a feature would put competitors at a significant non-reputation-related disadvantage”. In TrafFix Devices Inc. v. Marketing Displays Inc., the Supreme Court noted that in a trade dress infringement action, unless the trade dress in question is registered on the Principal Register, the person asserting trade dress protection bears “the burden of proving that the matter sought to be protected is not functional” and furthermore that:
“A utility patent is strong evidence that the features claimed therein are functional… Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden that the feature in question is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device.”
The Court specifically declined the invitation that had been included in some amici briefs to decide whether there is any constitutional prohibition against the holder of an expired utility patent asserting trade dress protection for what had been the subject matter of that patent on the ground that the Constitution provided inventors with a limited period of exclusivity for their inventions and that the maximum duration for which such exclusivity is permitted is that set out in the patent statute. In Fuji Kogyo Co. v. Pacific Bay International Inc., the Sixth Circuit held:
“When a utility patent expires, “there passes to the public the right to make the machine in the form in which it was constructed during the patent (quoting Singer). As an inescapable consequence of this right, a court may not prevent an individual … from duplicating the specification disclosed in … (an expired patent) … and creating (products identical with those previously sold by the patent owner under the patent). … Therefore based solely upon our understanding of patent law, the district court was justified in cancelling … (the plaintiff’s trademark registration) and dismissing its claims based upon its unregistered … design.”
On the other hand, the USPTO’s Manual of Trademark Examining Procedure (MTEP) points out that design patent protection may be a factor weighing against a finding of functionality “because by definition design patents protect only ornamental and nonfunctional features” although this can in appropriate cases be outweighed by other factors pointing towards functionality.
Functionality can also arise in the aesthetic context. For example, the Second Circuit in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., in holding that distinctive red soles for women’s shoes qualify for trademark protection, held that “a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market”. The Second Circuit acknowledged that “the case on appeal is particularly difficult precisely because…in the fashion industry, color can serve as a tool in the palette of a designer, rather than as mere ornamentation.” Nevertheless, the Second Circuit held:
“…the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand…and is therefore a distinctive symbol that qualifies for trademark protection.”
As noted above, an action for unlawful use of a trademark or trade dress is possible at common law even if there is no registration. However, 15 U.S.C. 1125(a) provides that:
“In a civil action for trade dress infringement under this chapter for trade dress not registered on the Principal Register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.”
Trademark protection may not be the ideal means to protect the design of a product or a label before the product has been used and, even after use commences, protection may be limited to the goods on which the design has been used. On the other hand, as long as use of the trademark continues, a registered trademark may be renewed forever. Indeed, there may be situations where it makes sense to use both forms of protection; first obtaining design patent protection and later obtaining protection by registration of a trademark after use has occurred and the distinctiveness of the mark has been acquired.
5. Protection by Design Patent
Design patents may be issued for “any new, original and ornamental design for an article of manufacture”.
As noted in the Manual of Patent Examining Procedure (MPEP), the subject matter of a design patent may relate to the configuration or shape of an object, to the surface ornamentation of the object or both. USPTO practice is to reject designs for well-known or naturally occurring objects or persons as lacking originality.
Under U.S. design patent practice, the design must be “for an article” rather than “of an article”, and it is therefore not possible to receive a design patent for a generalized scheme of design.
As discussed below, the fact that the design must be “for an article” rather than “of an article” means that protection can be limited to specific novel features of the article and other parts of the article’s design may be disclaimed. For example, in the “smart phone wars” some of the litigated patents have focused only on particular types of screens or particular features on the backs of the phones rather than the overall design of the phone.
The requirement that a design must be “ornamental” normally means that only novel designs for the exterior of an object that meet the requirements of the “visibility rule” can be protected by a design patent. Furthermore, designs that are purely functional in nature are excluded from protection.
The question of the real meaning of the statutory language came before the Federal Circuit in the case of In re Webb in which a design patent covering an artificial hip replacement was at issue. Clearly, once implanted in the body, the replacement is no longer visible. For this reason, the USPTO had rejected a design patent application directed to the hip replacement. The Federal Circuit, however, reversed the USPTO decision and remanded the case for further action. The Federal Circuit agreed that while the “hidden in use” rule was a “sound rule of thumb”, it was no substitute for the statutory wording. The basic question was whether the appearance of the article was “a matter of concern” to a purchaser. If it was, then the design met the requirement for “ornamentality” and was patentable. The Federal Circuit held that the USPTO erred in failing to consider evidence of the display of the design in advertisements and at trade shows such that doctors could choose hip implants based on their ornamental appearance, rather than solely on their functional characteristics.
The mere fact that a design is functional does not of itself preclude design patent protection. The real question is whether “significant decisions about how to put it together and present it in the market place were informed primarily by ornamental considerations.” As noted by the Federal Circuit in Alia Group v. L.A. Gear, “when function dictates a design, protection would not promote the decorative arts, a purpose of the design patent statute”.
This issue also came before the Federal Circuit in the case of LA Gear, Inc. v. Thom McAnn Shoe Company. As noted above, design patents are granted for “new original and ornamental designs for articles of manufacture”. U.S. law has long held that if a design is dictated by its function, then it is not ornamental, and thus not appropriate subject matter for design patent protection. In LA Gear, the defendant argued that each element of the design in question (which was for athletic shoes) had a utilitarian purpose, and therefore, the design was functional and not protectable. The Court of Appeals rejected this argument in the following terms:
“The utility of each of the various elements that comprise the design is not a relevant inquiry with respect to a design patent. In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article.”
The Federal Circuit noted that there were several different ways to achieve each of the functions performed by the components of the shoe in question and observed that:
“Where there are several ways to achieve a function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”
After noting that in today’s market the “primacy of appearance in the design of shoes” could not be ignored, the Federal Circuit held that the design was ornamental and thus proper subject matter for design patent protection.
The Federal Circuit next considered whether the design was obvious, since the various component features were all previously known. The Federal Circuit held that “a reconstruction of known elements does not invalidate a design patent, absent some basis whereby a designer of ordinary skill would be led to create the particular design”. In view of the undisputed commercial success of the patented design, the Federal Circuit upheld the district court’s holding that there was no teaching or suggestion in the prior art of the appearance of the claimed design as a whole.
In Berry Sterling Corp. v. Pescoe Plastics, Inc, the Federal Circuit listed a number of considerations for assessing whether a patented design as a whole was dictated by functional considerations such as:
“Whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility and whether there are any elements in the design or an overall appearance clearly not dictated by function.”
On the other hand, a key blade which had to fit in a corresponding lock’s keyway was found not to be protectable as a design patent because the blade “must be designed as shown…in order to perform its intended function.”
Current USPTO practice is to raise an allegation of prima facie functionality in an appropriate case, but to accept evidence from the inventor of an ornamental intent or evidence that the function of the article can be accomplished by a substantially different design.
As noted above, it is possible to secure protection for only a portion of the total object. It is not uncommon for United States design patents to show only some of the design in solid lines and the rest in broken lines. Such broken lines are permitted under 37 CFR 1.152 to show “visible environmental structure”. In recent years, it has become common to use broken lines to show parts of an article for which design protection is disclaimed, and thus showing only the features for which protection is desired in solid lines.
In the past, decisions of the Board of Patent Appeals and Interferences (the “Board”) rejected applications for design patent protection for icons of the type displayed on computer screens to indicate particular programs. The basis for the rejections was that such icons (as shown) were not directed to articles of manufacture. In an addendum to one of the decisions, however, the Board indicated that a computer screen icon may qualify for design patent protection if the drawings were to show a computer monitor with a screen displaying the icon such that it could be said that the icon was directed to an article of manufacture.
Today, not only does the USPTO permit claims to computer icons, but it also allows applications for animated computer icons. Typically, the structure of a monitor in which an icon is to appear is shown in broken lines (so that the structure of the monitor is disclaimed) and the icon is shown in solid lines. Provided below is a drawing of an issued design patent for an icon of a Samsung smart phone device. As can be seen, the icon is in solid lines while the smart phone shape (visible environmental structure) is drawn in broken lines and is thus disclaimed.
U.S. Design Patent D702,726
Provided below is the icon (drawn in solid lines) that is protected by the D702,726 patent.
U.S. Design Patent D702,726
An unusual feature of United States design patent practice is that a design application may be derived from a utility application. As noted in Vas-Cath Inc. v. Mahurkar and Racing Strollers Inc. v. TRI Industries, it is also possible, in appropriate cases where the drawings provide sufficient information to constitute a written description for a utility patent application, to have a utility application derived from a design application. In the case where a utility application is derived from a parent design application, it is possible for the utility application to omit features of ornamentation shown in the parent design application as long as all the features that are asserted in the utility application were shown in the parent design application.
6. Novelty and Statutory Bars for Design Patents
Due to the fact that the protection of designs in the United States is accomplished by the law governing utility patents, the novelty and statutory bar provisions applying to utility patents apply equally to design patents with two major exceptions: (1) the grace period for claiming foreign priority for a U.S. design patent is six months rather than one year and (2) the time specified under pre-AIA 102(d) is six months rather than one year.
For applications filed on or after March 16, 2013,the Leahy-Smith America Invents Act (“AIA”) first-inventor-to-file rules apply, and it is therefore irrelevant who invented a design first. Under the new law, an application will not be allowed if there is an earlier application in the USPTO for the same design filed by another and having an earlier priority date unless the applicant who filed the later application can prove that the earlier application was derived from a publication by the later applicant or from a publication by a person who derived the design from the later applicant and such publication must have occurred within one year of the later application. Also, the design patent application, or a foreign application from which it claims priority, must be filed within one year of the first publication of the design or public use or offer for sale of a product embodying the design by the applicant or a person who derived the design from the applicant. If these conditions are met, an applicant is entitled to a design patent.
The prior art-based novelty and statutory bar provisions applying to design patents filed before March 16, 2013 (pre-AIA) are summarized as follows:
|Section||What done?||By whom?||Where?||When?|
|102(a)||Known or usedPatented or published||OthersOthers||In U.SAnywhere||Before inventionBefore invention|
|102(b)||Patented or publishedPublic use or offered for sale||AnyoneAnyone||AnywhereIn U.S.||More than 1 year before U.S. filing dateMore than 1 year before U.S. filing date|
|102(d)||Foreign patent granted||Inventor(s)||Outside U.S.||Foreign application was filed more than six months before U.S application was filed|
|102(e)||U.S. patent application filed and subsequently published or granted||Others||In U.S.||Before invention|
|102(g)(1)||Prior invention||Otherswho file in US||In WTO||Before invention|
|102(g)(2)||Prior invention||Others||In U.S.||Before invention|
Under the pre-AIA law, of particular importance is the different treatment between utility and design applications in regard to 35 U.S.C. 102(d); a section that rarely affects utility patent applications because it is rare for foreign utility patents to be granted before the filing of a corresponding U.S. utility application. However, 35 U.S.C. 102(d) is of a greater concern in the design patent context because foreign design applications can be granted rather quickly. Thus, if a foreign design is granted, and more than six months has elapsed from the filing of the foreign design application, a corresponding U.S. design application will be barred.
A question that often arises in regard to 35 U.S.C. 102(d) is when is a foreign application “patented”? Case law is scarce in regard to design patents, however, as far as utility patents are concerned, it has been held that the relevant date for triggering the statutory bar is from when an injunction rather than any other remedy (such as a right of compensation) could be granted based on an existing patent right. 
In International Seaway Trading Co. v. Walgreens Corp., the Federal Circuit noted that when considering the novelty of a design under any of these provisions, “individual features of the design that are insignificant from the point of view of the ordinary observer” should not be considered as part of the overall comparison. The Federal Circuit noted:
“The mandated overall comparison is a comparison taking into account significant differences between the two designs not minor or trivial differences that necessarily exist between any two designs that are not copies of one another.”
7. Obviousness for Design Patents
In the design patent context, the ultimate inquiry under 35 U.S.C. 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. More specifically, the inquiry is whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design. The focus in the obviousness inquiry in the design context is on visual appearances rather than design concepts. For design patents, the question of obviousness is determined by whether the overall appearance of the design is suggested by the art; not whether individual features may have been suggested by the prior art or whether a modification was “obvious from a utility standpoint”. However, simply replacing one well known geometrical form with another, which does not modify any other features of the design, may be found obvious.  For there to be an obviousness rejection of a design, there must first be a basic design reference in the prior art; “something in existence, the design characteristics of which are basically the same as the claimed design.”
For many years, obviousness rejections in design patent applications were uncommon. However, due to attempts to secure broader protection by greater use of broken lines or by incorporation of multiple embodiments in a single application, such rejections are becoming more common.
8. Filing a U.S. Design Patent Application
As provided for under the Paris Convention, the term within which a U.S. design patent application may be filed claiming priority under the Convention is six months from the date of filing of the foreign application on which it is based. The Patent Cooperation Treaty does not apply to designs.
Design patent applications must contain the following:
- A preamble;
- Description of the drawings;
- A claim; and
The preamble should set out the name of the inventor, the title of the design and a brief description of the nature and intended use of the article if this is not evident from the title.
The title used for a design application is important since it is also required to be used in the claim of the design application to define the article in which it is to be embodied. Thus, the title will define the subject matter and scope of the application. As such, the title should identify the article or articles in which the design is to be embodied by the name by which such articles are generally known to the public. Although it is required to designate a “particular article” in the title, USPTO practice may allow the addition of the words “or similar article”. Furthermore, the USPTO is fairly liberal in permitting generic titles such as “portable electronic device” rather than on insisting on something more specific such as “mobile phone”.
A list of design patents with their titles included is provided in Appendix A.
Care must be taken when naming the articles to be covered by the design patent in both the title and claim of the design patent. For example, the application for U.S. design patent D614,077 originally had its claim as simply an ornamental design for an “artifact” and included a description of possible uses in the specification. The USPTO refused to allow the claim as originally filed because it did not specify a “particular article” for which the design was for (please also remember that a design patent is “for” an article and not “of” an article). After several rounds of amendments, the USPTO eventually granted the claim as “[t]he ornamental design for package, jewelry item, teaching aid, game piece or promotional item, as shown and described.” The D614,077 design patent is provided below.
U.S. Design Patent D614,077
The description will often simply identify the various views shown in the drawings. However, additional description, for example of the use of the article or other aspects of the article not visible in the drawings may be included if desired. Also if unorthodox shading is used in the drawings, this should be explained in the description.
Additional description may also be useful for describing the significance of any broken lines in the drawings, explaining the nature of the article or its use if this is not clear from the title, or for providing a statement as to the “characteristic” features of the design for establishing novelty or non-obviousness.
The drawings must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article as sold and used. Parts of an article that are not seen at the time of sale or use need not be shown, but undisclosed visible portions, which are not shown in the drawings or mentioned in the description (for example a statement that the left side view is the mirror image of the right side view), are taken as not forming a part of the claimed design. If parts of an original drawing are unclear, an examiner may request replacing those parts with broken lines.
The need for good quality drawings cannot be over emphasized. The drawings must be clear and consistent with one another. By far the most common objections raised in examination of design applications are objections that the lines are not clear or that what is shown in one drawing is inconsistent with what is shown in another. Therefore, it is of the utmost importance that the drawings be of good quality because otherwise, objections as to lack of clarity will be raised and attempts to correct the defects pointed out by the examiner may lead to rejections of the revised drawings as adding new matter.
Under U.S. practice, 37 CFR 1.152, which relates specifically to drawings for design patent applications, reads as follows:
“The design must be represented by a drawing that complies with the requirements of §1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structures but must be limited to the design claimed for the article.”
Rule 37 CFR 1.84, referred to in 37 CFR 1.152, includes many general requirements for drawings in all types of patent applications.
Drawings must normally be in black ink on white paper. Color drawings are permitted only after a petition has been submitted explaining the need for them. Similarly, photographs are not normally permitted, but will be allowed if they are the only practical way of showing the claimed design. If permitted, the photographs must be developed on paper meeting the USPTO’s page size requirements. Such size requirements are either international size A4 or U.S. letter size (82 by 11 inches). Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a useable area no greater than 17.0 cm. by 26.2 cm. on A4 drawing sheets, and a useable area no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on U.S. letter size drawing sheets.
The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
The use of shading is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45 degrees. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted because, as noted above, black surface shading can only be used to show the color black or to show color contrast.
MPEP 1503.02 II states that surface shading is also necessary to distinguish between any open and solid areas of the article and that oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror. Contrast in materials may be shown by using line shading in one area and stippling in another. By using this technique, the claim will broadly cover contrasting surfaces unlimited by colors.
An example of the use of shading is found in U.S. Design Patent D618,677 which covers Apple’s iPhone design. This design patent, as shown below, uses thinly spaced lines for claiming a black, highly polished, reflective surface over the entire front face of the iPhone design.
U.S. Design Patent D618,677
An example of the use of oblique line shading for claiming a transparent, translucent and highly polished or reflective surface is found in U.S. Design Patent D702,661 which covers a smartphone device by Samsung.
U.S. Design Patent 702,661
MPEP 608.02 IX provides drawing symbols for showing different colors and types of surfaces that should be used where relevant in design patent drawings as well as in utility patent drawings.
Photographs in lieu of drawings are permitted in certain circumstances only. Furthermore, use of photographs removes one’s ability to try to seek relatively broad protection by use of broken lines, which is only possible if line drawings are used.
As noted above, the use of broken lines may be advantageous to broaden the protection secured by a design patent by showing only particular features in solid lines and disclaiming the rest of the article by drawing it in broken lines. As a practical matter, when broken lines are included in the figures, examiners normally call for the description to contain a statement that no claim is being made to features shown in broken lines and examiners often call for features that are unclear in the original drawings to be redrawn in broken lines and disclaimed.
U.S. design patent D593,087 provides a useful example of the use of broken lines to broaden the protection secured by a design patent. Shown below, the D593,087 patent claims a bezel surrounding the perimeter of the phone’s front face and extending from the front of the phone partway down the phone’s side. Broken lines are used in the patent to show the visible environmental structure of the phone which is disclaimed. The bezel, for which protection is sought, can be clearly seen by the use of solid lines.
U.S. Design Patent D593,087
The D593,087 patent discloses six different embodiments by using multiple figures and broken lines. All six embodiments are shown in Appendix B. The embodiments of the D593,087 patent are directed to the “ornamental design of an electronic device” and differ from one another by incorporating different combinations of broken lines and solid lines for depicting (1) the oval upper speaker, (2) the rectangular screen border, and (3) the circular home button. For example, in the first embodiment, the oval speaker and rectangular screen border are drawn in broken lines, and are thus unclaimed, while the bezel and circular home button are drawn in solid lines and are claimed as part of the patent. In contrast, the second embodiment has the rectangular screen border and bezel drawn in solid lines, and are claimed as part of the patent, and has the oval speaker and circular home button drawn in broken lines, and thus unclaimed.
The use of broken lines in a design patent to create multiple embodiments (and to therefore broaden the scope of protection) can be of critical importance when enforcing a design patent because infringement can be claimed for any embodiment of the design. By having multiple embodiments with different combinations of solid and broken lines, allows a patent owner to “pick and choose” embodiments that claim common elements with an infringer’s product, but conveniently disclaim any differing elements. Thus, an infringer who may not infringe certain embodiments of the design may nevertheless be found to infringe a particular embodiment of the design, and therefore be found guilty of infringing the entire design patent.
With regard to having multiple embodiments in a single design patent, one must remember that while multiple embodiments may be included in a design patent, a design patent is permitted to have only one claim. Under U.S. practice, a design patent must conclude with a single claim in formal terms (“as shown” or “as shown and described”) that refers to the ornamental design of the article indicated in the title.
9. Unity of Invention and Restriction Practice for Design Patents
Under 35 U.S.C. 121, an examiner may require an applicant to restrict an application to a single invention. In addition, restriction may be required if examining all of the subject matter in a single application would place a serious burden on the examiner. Consequently, restriction may be required when multiple inventions contained in an application are classified separately in the USPTO search classification, have separate status in the art, or require a different field of search.
Restriction of an application is subject to a proviso that a “reasonable number” of species falling within a generic claim may be claimed in the same application as long as the claims to the species contain all of the limitations of the generic claim. In the field of design patents, this means that since there is a single claim that must be generic to all of the drawings, there is no absolute prohibition on including multiple embodiments in a single application. Please refer to the prior section on how multiple embodiments may be used to broaden the scope of a design patent.
It should be noted that an applicant has the right to file a divisional design application for any subject matter that is excluded from the claims of the original design application as a result of a restriction requirement. A divisional design application will have the same priority date as the originally filed design application that was subject to the restriction requirement.
If multiple embodiments are included in a design application, the test for whether restriction is appropriate is whether each embodiment could be regarded as an infringement of each of the other embodiments. Thus, if the embodiments are of different scope, for example one is in color and another is in black and white, restriction of the application to a single embodiment may be required. Similarly, restriction may be may be required if some of the drawings depict an entire article and others only part of it.
Since protection is determined by the scope of the claim, if one provides multiple embodiments in a single application, broader protection may be possible than if one prosecutes separate applications for each embodiment because the claim of an application containing multiple embodiments should be construed to cover all designs sharing the features that are common to all of the embodiments shown. On the other hand, this broader scope of the claim runs the risk that prior art will be found displaying those common features, and once one has argued that all of the embodiments represent a single invention, one cannot normally withdraw that argument and argue that only some of the embodiments show the invention.
Restriction practice in design applications has received newfound attention in light of the Federal Circuit’s recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, where the Federal Circuit held that prosecution history estoppel applies to design patent infringement when embodiments of a claimed design are surrendered by electing a particular embodiment (or embodiments) in response to a restriction requirement.
In Pacific Coast, Malibu Boats was alleged to have infringed U.S. Patent No. D555,070 owned by Pacific Coast. The originally filed application for the D555,070 patent (Appl. No. 29/258,753) included five embodiments of the claimed design each differing from one another by the number of vent holes, the shape of the vent holes, and by including and excluding a hatch on the front of the windshield. The first embodiment of the design (four circular holes and a hatch) is shown below.
First Embodiment of U.S. Patent No. D555,070
During the prosecution of the application, the examiner issued a restriction requirement that identified five “patentably distinct groups of designs”. In response to the restriction requirement, the applicant elected the first embodiment (corresponding to Figure 1, depicting four circular vent holes and a hatch) and amended the claim by amending the original claim (“with vent holes and without said vent holes, and with a hatch and without said hatch”) to recite “the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts”. The applicant also cancelled the figures pertaining to the other embodiments of the design and left only figures depicting the first embodiment.
The amended application eventually issued as the D555,070 patent. Pacific Coast then brought suit against Malibu Boats, alleging that Malibu Boats manufactured and sold boat windshields with a design that infringed the D555,070 patent. The design alleged by Pacific Coast to be infringing the D555,070 patent was a boat windshield with three trapezoidal holes, as shown below.
Malibu Boat’s Windshield Design
With regard to utility patents, infringement can either be literal, where all claimed elements read onto the accused device, or can exist under the doctrine of equivalents, where there are only “insubstantial differences” between the claimed elements and the accused device. Prosecution history estoppel does not limit literal infringement, but it does limit the bounds of what a patentee can claim as equivalent under the “doctrine of equivalents” by
“requiring that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process…Where subject matter is surrendered during prosecution, prosecution history estoppel prevents the patentee from “recapture[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent.”
In Pacific Coast, the Federal Circuit noted:
“For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement does not require literal identity, imposing liability on anyone who “without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied…” 35 U.S.C. § 289 (emphasis added).”
While noting that the “colorable imitation” standard for infringement of design patents involves the concept of equivalents,the Federal Circuit held “that the principles of prosecution history estoppel apply to design patents as well as utility patents.”
In its analysis of the case, the Federal Circuit presented three questions that needed to be answered: (1) Whether there was a surrender of subject matter; (2) Whether it was for reasons of patentability; and (3) Whether the accused design is within the scope of the surrender.
In regards to the first question, the Federal Circuit noted:
“…while we look primarily to the wording of the claims in utility patents for the purpose of prosecution history estoppel, we must look at the requisite drawings in design patents to determine whether a surrender has occurred.”
The Federal Circuit answered the first question in the affirmative, holding that:
“By cancelling figures showing corner posts with two holes and no holes, the applicant surrendered such designs and conceded that the claim was limited to what the remaining figure showed – a windshield with four holes in the corner post – and colorable imitations thereof…By removing broad claim language referring to alternate configurations and canceling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”
The Federal Circuit answered the second question in the affirmative as well, concluding that claim scope was surrendered in order to secure the patent even though the surrender was not made for reasons of patentability (e.g. anticipation, obviousness, or patentable subject matter).
The Federal Circuit rejected Pacific Coast’s argument that only surrender of subject matter to avoid prior art is within the doctrine of prosecution history estoppel, holding that:
“We think that the doctrine is broader than that. The [United States Supreme Court] has held that ‘[e]stoppel arises when an amendment narrows the patent’s scope,’ expressly stating that ‘a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.’ Festo, 535 U.S. at 736 (emphasis added)… Here, we think that, in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary, as in Festo, ‘to secure the patent.’”
In answering the third question, the Federal Circuit noted that “[p]rosecution history estoppel only bars an infringement claim if the accused design fell within the scope of the surrendered subject matter” and further that “[d]etermining the reach of prosecution history estoppel thus ‘requires an examination of the subject matter surrendered by the narrowing amendment.’”
The Federal Circuit ultimately answered the third question in the negative, holding:
“[t]he applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design. The record only reflects the surrender of the two-hole embodiment….Since the patentee here does not argue that the accused design was within the scope of the surrendered two-hole embodiment, no presumption of prosecution history estoppel could arise. We hold that prosecution history estoppel principles do not bar Pacific Coast’s infringement claim…”
10. Examination of Design Patents
As noted elsewhere in this paper, design applications in the United States are subject to examination and it is possible for prior art to be cited against the application. Most commonly, however, the issues raised by the examiner relate to the quality of the drawings. It is possible to replace the drawings during prosecution as long as no new matter is added. One possible way to respond to allegations of lack of clarity or inconsistency in the drawings is to redraw them with the parts in questions shown in broken lines. Of course, this is only possible if enough of the drawing continues to be shown in solid lines for the claim to have any meaningful scope in distinguishing it from the prior art.
A special rule for expediting prosecution of design applications came into effect on September 8, 2000. This permits an applicant to request expedited examination even if all of the requirements for making special are not met as long as the applicant has carried out its own pre-examination search and advises as to the nature of the search and the results obtained in an Information Disclosure Statement (IDS) and the drawings themselves are compliant with the rules. The reason for permitting expedited examination for designs is that design patent applications are often filed for items that are fashionable for only a brief period, and delays in examination can effectively deprive the designer of any protection whatsoever.
11. Publication of Design Patents
Unlike many other countries, the United States does not have a provision for deferring publication of design applications. However, publication of design applications, unlike most utility patent applications, occurs only at the time when the design patent is granted and there is no automatic early publication of a design patent application as there is for most utility patent applications.
12. Term of Protection Provided by Design Patents
Subject to the possibility of a terminal disclaimer if double patenting exists because the subject matter of a design patent or application is obvious over that of a commonly-owned patent or application, the term for a design patent is 14 years from grant. No maintenance fees are required for design patents.
13. Infringement of Design Patents
The question of infringement of a design patent presents a different problem than that of a utility patent, since the claim in a design patent always reads “A [insert article] as shown” or “A [insert article] as shown and described”. Thus, all that is to be considered in determining design patent infringement is what is the article stated to be and what can be seen by viewing the drawings. In 1871, the Supreme Court in Gorham Co. v. White laid down the test for infringement of design patents in the following terms:
“If, in the eye of the ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, then there is infringement.”
As noted in KeyStone Retaining Wall Sys., Inc. v. Westrock Inc., a design patent protects only the novel, ornamental features of the patented design. Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.
The Federal Circuit has interpreted this to mean that one must compare the ornamental features of the patented design, as shown in all the drawings, to the features of the alleged infringing product visible at any time during normal use of the product and assess if the resemblance at such point is such as to deceive “an ordinary observer, giving such attention as a purchaser usually gives.”
This approach has, however, been modified to some extent over the years in that even if there is a general similarity between the alleged infringement and the patented design such that the ordinary observer may be misled, the courts will still not hold there to be infringement if the points of similarity all reside in old features of the article rather than in the features that give the patented design its novelty.
Thus, in Litton Systems Inc. v. Whirlpool Corp. the Federal Circuit held:
“Even though the Court compares two items through the eyes of the ordinary observer, it must nevertheless find infringement attributed to their similarity in the novelty that distinguishes the patented device from the prior art.”
This led to courts adopting a “point of novelty” test as a second test to be applied in addition to the “ordinary observer” test when assessing infringement of a design patent.
In Lawman Armor Corp v. Winner International LLC, the Federal Circuit held that the points of novelty shared by the alleged infringing product and design patent must be novel in themselves, and that a reproduction of a combination of old features does not satisfy the point of novelty test. To do otherwise, the Federal Circuit held, would “eviscerate the point of novelty requirement.” The Federal Circuit subsequently issued a supplemental opinion to clarify that a novel combination of old features can itself be a point of novelty. 
This led to a review of the point of novelty test in Egyptian Goddess v. Swisa. In an en banc rehearing, the Federal Circuit unanimously held that there was no separate point of novelty test, and that the ordinary observer test is the only test for determining whether design patent infringement exists. The Federal Circuit further held:
“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving that the two designs would appear ‘substantially the same’ to the ordinary observer as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from comparison of the claimed and accused design with the prior art … Where there are many examples of similar prior art designs … differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.”
The court also noted that it was not generally desirable for the district court to give a detailed description of the design to a jury as a form of “claim construction”, but rather it would be more advantageous to point out various features of the design as they relate to the alleged infringement and the prior art. In appropriate cases, the Federal Circuit noted that the judge could act as the ordinary observer.
In Crocs Inc. v. International Trade Commission, the Federal Circuit reversed a decision of non-infringement by the United States International Trade Commission (ITC) with respect to several different types of footwear. The Federal Circuit found the footwear alleged to be infringing was confusingly similar to the patented design from the view of the ordinary observer. The Federal Circuit criticized the ITC for reliance on a “detailed verbal claim construction”, which the Federal Circuit felt had led the ITC to improperly create a “mistaken check list for infringement”. The Federal Circuit noted that the designs had to be looked at as a whole, bearing in mind that in crowded fields, small differences might take on greater significance than in fields where there was less prior art.
On the other hand in Richardson v. Stanley Works Inc., the Federal Circuit applied the Egyptian Goddess test to find non-infringement of a design patent for a multifunction carpentry tool. The Federal Circuit held that in evaluating whether the ordinary observer would be deceived, it was helpful to look at distinctions between functional and ornamental features of the design. In this case, the court found that once the functional features were discounted, the “streamlined theme” of the accused designs was significantly different from the patented designs so that the overall appearance was not deceptive.
In Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., the design patent was for a tire tread (not the entire tire). It was held that the ordinary observer in this case was the prospective purchaser of truck tires, even though neither the title of the patent nor the limited written description referred to “truck” tires. The Federal Circuit reasoned that:
“it is not a matter of claim construction to determine the qualification of the observer through whose eyes infringement is to be determined … deception concerning the patented design is determined from the view point of the person who is the ordinary purchaser of the article charged to be an infringement.”
Where the design is for something that is to be used as a component that will be assembled into a larger product for sale, the “ordinary observer” may be a commercial or industrial buyer who would normally buy such components.
The fact that protection is determined by the scope of the claim means that if one has multiple embodiments in a single application, the claim must be construed to cover all of them, thereby likely covering any design for the article in question utilizing all of the novel features common to the embodiments set out in the application. Thus, broad protection may be possible by skillful choice of which features to show in solid lines and which to show in broken lines.
In Key Stone Retaining Wall Systems, Inc. v. Westrock, the question was whether the use of an article subject to a design patent was relevant to the “ordinary observer” test for determining infringement. The designs in question were for building bricks used in retaining walls. The bricks comprised an ornamental “front” and a more functional “rear” portion that might interact with an interlocking pin system to hold the bricks in place. The plaintiffs produced evidence that when used in retaining walls, there was confusion between the claimed design and the allegedly infringing bricks. However, the trial court held that the overall shapes of the claimed design and the design of the bricks alleged to be infringing were not substantially similar when not in use, and therefore held that there was no infringement. The Federal Circuit agreed.
In determining whether there was infringement, the Federal Circuit held that one had to look at the overall similarity of the entire design as defined by the drawings in the patent, not just at one feature of the design. Functional features that distinguish the alleged infringing product from patented design should be considered if these features were drawn in solid lines such that they were part of the claimed design. Moreover, portions of a claimed design which are hidden when the article is in use should also be considered if these features formed part of the claimed design.
The outcome in Westrock would have likely been different had the claimed design been for a retaining wall composed of the bricks rather than for the bricks themselves because such functional and hidden features would likely not have been claimed for the design of the retaining wall. Also, it should be noted that although consideration must be given to whether the features of the design are hidden when the article is in use for determining patentability, such consideration is not relevant to determining infringement.
A similar holding as the one in Westrock was given in Contessa Food Products Inc. v. Conagra Inc., where the top side of an alleged infringing product was identical with what was shown in the design patent drawings, but the bottom of the product was different. Had the depiction of the bottom of the display been shown in broken lines, however, it is likely that a different holding would have been entered. The drawings of the design patent at issue are shown below.
In Apple Inc. v. Samsung Electronics Co. Ltd., without deciding the issue, the Federal Circuit noted that an additional theory of damage might be possible in design patent cases in the form of “design dilution” apparently analogous to trademark dilution which recognizes that use of a trademark even if non-infringing may dilute the distinctive capacity of a well-known mark. Notwithstanding the trademark-like test of design patent infringement, it is hard to see when this principle might be relevant in patent law.
Injunctions and damages are available to owners of design patents that have been infringed. As noted by the Federal Circuit in Apple Inc., however, there may be more careful scrutiny of the issue of irreparable harm in the design infringement context than in the utility infringement context in regard to the requirement of showing a nexus between the patent owner’s lost sales and the copying of the claimed features of the patent.
A somewhat unknown yet important distinction between design and utility patents is that the Patent Act provides for a special remedy only available for design patents: the disgorgement of an infringer’s “total profits” without apportionment.
Furthermore, there is a difference in procedure between design patent infringement actions and utility patent infringement actions in that the Federal Circuit has held that formal claim construction, a full verbal description of the claim, might not be required (and indeed might be counter productive) for design patent infringement actions, and rather a court should point to details of the importance of the design to a jury.
14. Preliminary Injunctions Based on the Alleged Infringement of Design Patents
The analysis used by courts for determining whether or not to grant a preliminary injunction in a case involving alleged infringement of a design patent is the same as that used by courts for determining whether or not to grant a preliminary injunction in other areas of law. Thus, where a plaintiff is seeking the grant of a preliminary injunction to stop the alleged infringement of a design patent, the plaintiff has the burden of establishing the following factors in his or her favor:
- The likelihood of success on the merits;
- The likelihood of suffering irreparable injury in the absence of preliminary relief;
- The balance of equities favors the grant of injunctive relief; and
- The public interest would be served by the grant of injunctive relief.
Furthermore, the decision to grant or deny a preliminary injunction lies within the sound discretion of the district court, and the Federal Circuit will not reverse the judgment of a district court absent an abuse of discretion.
A recent case having implications on the granting of preliminary injunctions where design patent infringement is alleged is Apple Inc. v. Samsung Electronics Co. In regard to the irreparable injury prong of the preliminary injunction analysis, the Federal Circuit noted:
“To show irreparable harm, it is necessary to show that the infringement caused harm in the first place. Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product. Thus, a likelihood of irreparable cannot be shown if sales would be lost regardless of the infringing conduct.”
Case law had previously established the requirement of proving a nexus between the claimed features of an allegedly infringed patent and lost sales, however, the importance of the Apple Inc. v. Samsung Electronics Co. decision lay in the fact that the Federal Circuit suggested that it may be more difficult to show such a nexus for a claimed feature of a design patent than for a claimed feature of a utility patent.
The Federal Circuit additionally noted that:
“…it was reasonable for the district court to consider the issue of delay and to find that Apple had not proceeded as quickly as it could have in seeking preliminary injunctive relief. The district court correctly noted that delay in bringing an infringement action and seeking a preliminary injunction are factors that could suggest that the patentee is not irreparably harmed by the infringement.”
The Federal Circuit ultimately upheld the district court’s denial of the preliminary injunction sought by Apple in regard to Apple’s claim of alleged infringement of its iPhone device. The Federal Circuit noted that “based on the district court’s conclusions as to the nexus and delay factors, we uphold the court’s finding that Apple failed to show that it was likely to suffer irreparable harm in the absence of a preliminary injunction.”
In regard to Apple’s action for preliminary injunction based on alleged infringement of its iPad tablet, the Federal Circuit noted additional factors for determining irreparable injury such as:
“…the relative market share of Apple and Samsung and the absence of other competitors in the relevant market…that design mattered more to customers in making tablet purchases… [and] that Apple had claimed all views of the patented device …”
In the United States, design patents provide an effective and inexpensive means for protecting a novel design without the limitations that apply to copyright protection or the use requirements that apply to trademark registration. Moreover, obtaining a design patent does not preclude the possibility of later registering a trademark if the requirements for obtaining a trademark are later satisfied by the subsequent use of the article covered by the design patent.
Examples of Recent Design Patents
D 660,315 Icon for a portion of a display screen
D 659,708 Computer generated icon for a display panel
D 637,616 Icon for a computer display
D 629,814 Icon for a display screen
D 623,656 Transitional icon for a portion of a display screen
D 620,951 Transitional icon for a display screen of a handheld device
Computer and Electronic Device Display Screens
D 660,317 Display screen with group of icons
D 659,707 Display screen with graphical user interface
D 659,705 Portion of a display with a transitional user interface
D 659,704 Display screen or portion thereof with a graphical user interface
D 659,158 Portion of a visual display having icons
D 659,157 Display screen of a communications device with graphical user interface
D 659,155 Display screen with user interface with orange colored bar
D 659,154 Mobile terminal with graphical user interface
D 659,153 Mobile phone with graphical user interface
D 660,360 Retail display
D 660,012 Embossed paper product
D 659,193 Sticker
D 656,828 Portions of a container and label
D 651,253 Wine bottle label
D 650,863 Packaging label
D 649,875 Label artwork
Home and Office Products
D 660,537 Iron
D 660,532 Vacuum cleaner
D 660,349 Printer
D 660,346 Shredder
D 660,339 Camera
D 660,325 Refrigerator
D 660,288 Remote control
D 660,286 Speaker
D 660,278 Mobile phone
Puzzles and Games
D 660,378 Puzzle
D 660,373 Strategy game
D 660,372 Game board
D 660,371 Dots and boxes strategy game
D 659,766 Round strategy game
D 659,198 Ring game
D 659,773 Toy figurine
D 659,771 Flying toy
D 659,770 Toy wagon
D 659,203 Toy projectile launcher apparatus
D 659,202 Toy sword
D 660,146 Product package for disposable diapers or wipes
D 660,145 Packaging container with surface ornamentation
D 660,144 Produce packaging
D 659,696 Wrap for a flat screen television or computer monitor
D 658,935 Parmesan cheese container cover
Cutlery and Utensils
D 660,100 Adjustable culinary tool
D 660,099 Culinary tool
D 660,098 Knife handle
D 659,467 Kitchen tool handle
D 659,466 Handle for kitchen utensils
D 659,463 Tajine cooking utensil
D 658,937 Utensil handle
D 659,946 Chocolate bar
D 659,347 Pastry
D 658,846 Confection
D 660,887 Crusher Block for particulate Size Reduction System
D 660,353 Print Head
D 660,334 Rotary Actuator
D 660 320 Pump
D 661,012 Headlight Bezel of a Recreational Vehicle
D 660,784 Tire Tread
D 660,754 Motor Vehicle
D 660,756 Front Chassis Faring for a Truck
D 660,878 Track shoe
D 660,580 Shoe upper
D 660,569 Shoe
D 660,970 Defibrillator Panel
D 660,968 Orthodontic Bracket
D 660,967 Surgical Stent
D 660,960 Rigid Parts of an Anastomosis Device
D 660,424 Stethoscope Cleaner
Embodiment # 3
See 35 U.S.C. 171, Patents for Designs, “The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”
Applications filed on or after the date on which the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”) becomes effective in the U.S. will have a term of protection of 15 years from the grant of the design patent.
 Article 1, Section 8, clause 8.
Sears Roebuck & Co. v. Stiffel 376 U.S. 255 140 USPQ 524 (1964) and Compco Corp. v. Day-Brite Lighting, Inc. 376 U.S. 234 140 USPQ 528 (1964). Following a similar decision in Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847 (1989), a special federal law, the Vessel Hull Design Protection Act was passed to provide protection for the shape of boat hulls which was appended to Title 17 of the U.S. Code (which title deals primarily with copyright) as Chapter 13 thereof. Under this provision, protection can be secured for a ten-year period but will terminate on the grant of a design patent for the same design. If patent protection exists for the design, protection under the Vessel Hull Design Protection Act is no longer possible. 17 USC 1329. Applications for protection under this act are filed at the Copyright Office.
 17 U.S.C. §102. This section provides that “Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.”
Feist Publications Inc. v. Rural Telephone Service,499 US 340,18 USPQ2d 1275 (Supreme Court, 1991), which held there was no copyright protection for a telephone directory on the grounds that there was insufficient originality in merely arranging a series of names in alphabetical order.
 17 U.S.C. 101 provides the following definition: “A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a ‘useful article’”.
 See Pivot Point International Inc. v. Charlene Products Inc., 372 F.3d 913 (7th Cir. 2004). The leading text on copyright law (Nimmer on Copyright) suggests that the test of conceptual separability is whether “there is substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community”. In some cases, such as jewelry, artistic lamps (as in the famous case of Maizer v. Stein, 347 U.S. 201 (1954) which held that just because a design was intended to be applied industrially, this did not of itself preclude copyright protection if the other requirements of the law were met) and the like, copyright may be a useful means of protection. But such cases are rare.
 In re Yardley, 493 F.2d 1389, 181 USPQ 331 (CCPA 1974).
 37 CFR 202.10.
 17 USC 411.
 17 USC 412.
 17 U.S.C. 410.
 15 U.S.C. 1127.
 15 U.S.C. § 1051(a).
 15 U.S.C. 1051(b). In the case of an application based on an intention to use the mark, except where the application is based on a foreign or international trademark registration, the application will only be permitted to proceed to registration following submission of proof that the mark has actually been used in commerce. 15 USC 1051(d).
 15 U.S.C. 1127 provides that the term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.
 15 U.S.C. 1126(c). Even in this case, a bona fide intent to use the mark in the United States is required. Honda Motor Co v. Winkelmann, 90 USPQ2d 1660 (TTAB, 2009).
 528 U.S. 205, 54 USPQ2d 1065 (2000).
 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995).
Nora Beverages, Inc. v. The Perrier Group of America, Inc., 269 F.3d 114 at 120 (2nd Cir., 2001); see Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 at 145 (it is a fundamental principle of trademark law that a trademark…does not grant a monopoly of production”)..
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, at 218-219 (2nd Cir., 2012); See also Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53 at 58-59 (2nd Cir., 1995) (“The Lanham Act is not concerned with protecting innovation by giving the innovator a monopoly, which is the function of patent law.”); Stormy Clime v. ProGroup, 809 F.2d 971 at 977-78 (“Courts must proceed with caution in assessing claims to unregistered trademark protection in the design of products so as not to undermine the objectives of the patent laws…Since trademark protection extends for an unlimited period, expansive trade dress protection for the design of products would prevent some functional products from enriching the public domain.”).
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002).
 120 USPQ 468.
 153 USPQ 593.
181 USPQ 821.
 163 U. S. 169 (1896).
 Qualtex v. Jacobson Prods. Co., 514 U.S. 159 (1995).
 121 S. Ct 1255 58 USPQ2d 1001 (2001).
 79 USPQ2d 1894 (6th Cir. 2006).
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2nd Cir., 2012).
 Christian Louboutin, at 222.
Christian Louboutin, at 223.
Christian Louboutin, at 227.
 35 USC 171.
 MPEP 1502.
 In International Seaway Trading Co. v. Walgreens Corp, 93 USPQ1001 (Fed. Cir. 2009), the Federal Circuit commented on the originality requirement as follows:
“The originality requirement dates back to 1842 when Congress enacted the first design patent law. The purpose of incorporating an originality requirement is unclear; it likely was designed to incorporate the copyright concept of originality – requiring that the work be original with the author, although this language did not find its way into the language of the Copyright act until 1909. … In any event, the courts have not construed the word “original” as requiring that design patents be treated differently than utility patents.”
However, MPEP 1504.01(d) states “a claim directed to a design for an article which simulates a well-known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality”.
 MPEP 1504.01.
 See, for example, Electronic Molding Corp. v. Mupac, 529 F.Supp 300, 217 USPQ 288 (D. Mass. 1981) and Norco Products v. Mecca Development, Inc., 617 F.Supp 1079, 227 USPQ 724 (D. Conn. 1985).
 See, for example, In re Garbo, 287 F.2d 192 129 USPQ 72 (CCPA 1961), In re Carletti, 328 F2d 10 140 USPQ 653 (CCPA, 1964) and Power Control Corp v. Hybrinetics Inc., 806 F2d 234 231 USPQ 774 (Fed Cir, 1986).
 16 USPQ2d 1433 (Fed. Cir. 1990).
 When it reconsidered the application after the Court’s opinion, the Patent and Trademark Office’s Board of Patent Appeals and Interferences again rejected the application, this time on the basis that the design was functional, the applicant having failed to produce evidence showing how the desired result could otherwise be achieved. Ex parte Webb,30 USPQ 2d 1064 (1993).
Smith v M&B Sales & Manufacturing, 13 USPQ 2d 2002 (D.C. N.Ca.).
 7 USPQ2d 1548.
 25 USPQ2d 1913 (Fed. Cir. 1993).
 22 F.3d 1452 43 USPQ2d 1953 (Fed. Cir. 1997).
Best Lock Corp v. Itco Unican Corp., 40 USPQ2d 1048 (Fed Cir 1996).
 MPEP 1504.01.
In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). The claim was for the shank portion of a drill bit.
 Ex Parte Donaldson, 26 USPQ2d 1250, Ex parte Strijland, 26 USPQ2d 1259 and Ex parte Donoghue, 26 USPQ2d 1266 (Bd Pat App & Int, 1992).
 MPEP 1504.01(a) IV. The practice is to show different depictions of the icon and to include in the description an explanation that the image changes shape. The MPEP gives a number of possible examples, one of which is as follows: “The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. The process or period in which one image transitions to another image forms no part of the claimed design;”
Racing Strollers Inc. v. TRI Industries, Inc., 11 USPQ 2d 1300 (Fed Cir 1989).
 935 F.2d 1555, 19 USPQ2d 1111 (Fed Cir 1991).
 878 F.2d 1418, 11 USPQ2d 1300 (Fed Cir in banc 1989).
In re Daniels, 46 USPQ2d 1788 (Fed Cir, 1998).
 See 35 U.S.C. 171, Patents for Designs, “The provisions of this title relating to patents for inventions shall apply
to patents for designs, except as otherwise provided.”
In re Monks, 508 F.2d 308 200 USPQ 129 (1978).
 93 USPQ2d 1001 (Fed. Cir. 2009).
In re Rosen, 213 USPQ 347 (C.C.P.A. 1982).
 See In re Borden, 39 USPQ2d 1524., 39 USPQ2d 1524.
 See In re Harvey, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). The court held that in design cases, obviousness based on a combination of references requires that the visual ornamental features of the claimed design appear in the prior art in a manner which suggests the use of such features in the claimed design. If, however, the combined teachings suggest only components of a claimed design, but not its overall appearance, an obviousness rejection is inappropriate. In determining prima facie ornamental obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill of the claimed type of article. In re Nalbandian, 661 F.2d 1214,211 USPQ 782 (CCPA 1981). Generally, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. In re Jennings, 182 F.2d 207,86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “… a reference … the design characteristics of which are basically the same as the claimed design” In re Rosen, 673 F.2d 388,391,213 USPQ 347, 350 (CCPA 1982).
In re Cho, 1 USPQ2d 1662 (Fed. Cir. 1987).
In re Hopkins, 3 USPQ 112 (CCPA 1929). The design was for a loud speaker having an octagonal shape, the prior art a similar design having a circular shape. In International Seaway trading Corp. v. Walgreens Corp, 90 USPQ2d 1338 (S.D. Fla. 2009), the court considered very minor changes to the location and shape of holes on the surface of a clog shoe and of the construction of its heel and found that “although perhaps novel, none of these slight changes in detail constitute invention.” The court went on to opine that the patented design was itself a “knock off” of a prior shoe designed to look similar to it so that it would be mistaken for it. This being the case, applying the ordinary observer test, the design was “anticipated”.
In re Rosen, 673 F.2d 388, 391 (CCPA 1982).
 35 USC 172.
 37 CFR 1.154.
 37 CFR 1.153.
 MPEP 1503.01. A “characteristic features” statement describing a particular feature of novelty or nonobviousness in the claimed design may be permissible in the specification. Such a statement should be in terms such as “The characteristic feature of the design resides in ,” or if combined with one of the Figure descriptions, in terms such as “the characteristic feature of which resides in .” While consideration of the claim goes to the total or overall appearance, the use of a “characteristic feature” statement may serve later to limit the claim (McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).
 37 CFR 1.152, Ex parte Kohler, 1905 C.D. 192 (Commissioner of Patents, 1905).This requirement normally means that elevational views from all sides of a three dimensional design should be filed together with at least one perspective view. Sectional drawings are not normally required, but mat be necessary to show surface shape if this cannot be shown in any other way.
Ex parte Salsibury, 38 USPQ 149 (Commr Pat 1938). For example, it may not be necessary to show the bottom of something that will never be seen in normal use.
In re Zahn, 617 F.2d.261 204 USPQ 988 (CCPA 1980). The court noted that the statutory language in 35 USC 171 referred to a design “for” an article rather than “of” an article and so it contemplated the possibility that some parts of the article might be immaterial to the design for which protection was being sought.
 37 CFR 1.84 provides that the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. In practice, photographs are quite common in design patents. However, when used, photographs should avoid environmental structure. Furthermore, a combination of line drawings and photographs is not permitted in a single application. 37 CFR 1.152.
 Apple v. Samsung Design Patents Take Center Stage, Christopher Carani, the American Bar Association, Landslide, Volume 5, Number 3, 2013.
37 CFR 1.153
 37 CFR 1.153
 MPEP 802.01 distinguishes between “independent” and “distinct” on the basis that “independent” means that thereis no disclosed relationship between two or more subjects so that they are unconnected in design, operation or effect and that “distinct” means that although the inventions are related in some way, they are capable of separate manufacture, use or sale and each would be patentable over the other if the other were prior art (and the only prior art) against it.
 37 CFR 1.141.
 37 CFR 1.142.
 Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC,739 F.3d 694,109 USPQ2d. 1225 (2014).
Warner- Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 (1997).
 Pacific Coast, at 700-701, citing Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., 62 U.S.P.Q.2D 1705, 1710-1711 (2002).
Pacific Coast, at 701.
 Pacific Coast, at 702.
 Pacific Coast, at 703.
Pacific Coast, at 703-704.
 Pacific Coast, at 704.
 Pacific Coast, at 704-705.
 37 CFR 1.155.
 35 USC 173. Please note that applications filed on or after the date on which the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”) becomes effective in the U.S. will have a term of protection of 15 years from the grant of the design patent.
 37 CFR 1.153.
 81 US 511 (S Ct 1871). The lower court had held that the test of infringement was whether the designs appeared the same to an expert, analogously with the rule that one skilled in the art decided whether there was infringement of a utility patent. The Supreme Court took the view that in the realm of designs, experts could always find differences and that to allow an expert to be the judge of similarity would negate the value of design patent protection.
 27 USPQ2d 1297.
Lee v. Dayton-Hudson Corp.,5 USPQ2d 1624 (Fed Cir 1988).
Contessa Food Products Inc. v. Conagra Inc., 62 USPQ2d 1065 (Fed. Cir., 2002).
 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984). See also Sun Hill Industries v. Easter Unlimited Inc., 33 USPQ2d 1925 (1995) where the Federal Circuit reversed the District Court’s finding that there had been infringement of a design patent under the doctrine of equivalents because it had compared unclaimed features of the two bags in reaching its decision that there was infringement under the doctrine of equivalents. To find infringement, the allegedly infringing product must incorporate the point of novelty of the claimed design. Since the allegedly infringing product did not have any of the novel features of the claimed design, there was no literal infringement and no infringement under the doctrine of equivalents of Sun Hill’s design patent. In Bernhardt LLC v. Collezione Europa USA Inc., 72 USPQ2d 1901 (Fed. Cir. 2004), it was held that, as a minimum to establish points of novelty, the patentee needed to put into evidence the prosecution history of the design patent, the prior art considered and the patentee’s contentions as to the points of novelty. Expert testimony on the point could also be adduced if desired.
 77 USPQ2d 2017 (Fed. Cir. 2006) rehearing denied 79 USPQ2d 1380 (Fed. Cir. 2006).
 79 USPQ2d 1382 (Fed. Cir., 2006).
 In the supplemental opinion. it was stated
“In our decision, we did not intend to cast any doubt upon our prior decisions indicating that in appropriate circumstances a combination of design elements may itself constitute a “point of novelty”. Such a combination is a different concept than the overall appearance of a design which, as indicated, our cases have recognized cannot be a point of novelty.”
 88 USPQ2d1658 (Fed. Cir. 2008).
 93 USPQ2d 1777 (Fed. Cir. 2010).
 93 USPQ2d 1937 (Fed. Cir. 2010).
 48 USPQ2d 1767 (Fed Cir 1998).
Arminak & Associates Inc. v. Saint-Gobain Colmar Inc., 84 USPQ2d 1258 (Fed. Cir. 2007).
 27 USPQ2d 1297 (Fed. Cir. 1993).
 62 USPQ2d 1065 (Fed. Cir., 2002).
102 USPQ2d 1633 (Fed. Cir. 2012).
Apple Inc. v. Samsung Electronics Co. Ltd.,102 USPQ2d 1633, 1640 (Fed. Cir. 2012).
35 U.S.C. 289.
 Egyptian Goddess v. Swisa, 88 U.S.P.Q. 2d 1658 (Fed. Cir. 2008).
 Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).
 Titan Tire Corp. v. Case New Holland, Inc., 56 F.3d 1372, 1375 [90 USPQ2d 1918] (Fed. Cir. 2009).
 Apple Inc. v. Samsung Electronics Co., 102 USPQ2d 1633 (Fed. Cir. 2012).
Apple Inc., at 1640.
Apple Inc., at 1641-1642.
 Apple Inc., at 1642.
Apple Inc., at 1643-1644.