Protection of Industrial Designs of Useful Articles

1001(a) The author or other proprietor of an original design of a useful article which design is intended to make the article attractive or distinct in appearance to the purchasing or using public, may secure the protection provided by this chapter upon complying with and subject to the provisions hereof.

(b) For the purposes of this chapter

(1) a useful article' is an article which in normal use has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article which normally is a part of a useful article shall be deemed to be a useful

article:

(2) the 'design of a useful article,' hereinafter referred to as a 'design' consists of those aspects or elements of the article, including its two-dimensional or three-dimensional features of shape and surface, which make up the appearance of the article. The design must be fixed in a useful article to be protectable under this chapter;

(3) a design is 'original' if it is the independent creation of an author who did not copy it from another source;

(4) typeface consists of a set of letters, numbers, or other symbolic characters, whose forms are related by repeating design elements consistently applied in a notational system; and

(5) 'typeface' is a design subject to protection under this chapter when the repeating design elements in the combinations employed in a notational system are (A) original, (B) attractive or distinct, and (C) incorporated in a useful article whose normal use is in composing text or other cognizable combination of characters.

Designs Not Subject to Protection

1002(a) Protection under this chapter shall not be available for a design that is

(1) not original:

(2) staple or commonplace, such as a standard geometric figure, familiar symbol, emblem, or motif, or other shape, pattern, or confi. guration which has become common, prevalent, or ordinary:

(3) different from a design excluded by paragraph (2) only in insignificant details or in elements which are variants commonly used in the relevant trades:

(4) dictated solely by a utilitarian function of the article that

embodies it;

(5) composed of three-dimensional features of shape and surface with respect to men's, women's, and children's apparel, including undergarments and outerwear; or

(6) a semiconductor chip product which is protected under chapter

9 of this title.

(b) In no case does protection for a design under this chapter 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 design.

Revisions, Adaptations, and Rearangements

1003. Protection for a design under this chapter shall be available notwithstanding the employment in the design of subject matter excluded from protection under section 1002(a)(2) through (4), if the design is a substantial revision, adaptation, or rearrangement of such subject matter. Such protection shall be independent of any subsisting protection in subject matter employed in the design, and shall not be construed as securing any right to subject matter excluded from protection or as extending any subsisting protection.

Commencement of Protection

1004. The protection provided for a design under this chapter shall commence upon the date of publication of the registration pursuant to section 1012(a) or the date the design is first made public as defined by section 1009(b), whichever occurs first.

Term of Protection

1005(a) Subject to subsection (b) and the provisions of this chapter, the protection herein provided for a design shall continue for a term of ten years from the date of the commencement of protection as provided in section 1004.

(b) All terms of protection provided in this section shall run to the end of the calendar year in which they would otherwise expire.

(c) Upon expiration or termination of protection in a particular design, as provided in this chapter, all rights under this chapter in such design shall terminate, regardless of the number of different articles in which the design may have been utilized during the term of its protection.

The Design Notice

1006(a) Whenever any design for which protection is sought under this chapter is made public as provided in section 1009(b), the proprietor shall, subject to the provisions of section 1007, mark it or have it marked legibly with a design notice consisting of the following three elements;

(1) the words 'Protected Design,' the abbreviation 'Prot'd Des.,' or the letter 'D' within a circle thus or the symbol 'D':

(2) the year of the date on which protection for the design commenced; and

(3) the name of the proprietor, an abbreviation by which the name can be recognized, or a generally accepted alternative designation of the proprietor, any distinctive identification of the proprietor may be used if it has been approved and recorded by the Administrator before the design marked with such identification is registered. After registration the registration number may be used instead of the elements specified in paragraphs (2) and (3).

(b) The notice shall be so located and applied as to give reasonable notice of design protection while the useful article embodying the design is passing through its normal channels of commerce. This requirement may be fulfilled, in the case of sheetlike or strip materials bearing repetitive or continuous designs, by application of the notice to each repetition, or to the margin, selvage, or reverse side of the material at reasonably frequent intervals, or to tags or labels affixed to the material at such intervals.

(c) When the proprietor of a design has complied with the provisions of this section, protection under this chapter shall not be affected by the removal, destruction, or obliteration by others of the design notice on an article.

Effect of Omission of Notice

1007. The omission of the notice prescribed in section 1006 shall not cause loss of the protection or prevent recovery for infringement against any person who, after written notice of the design protection,

1008(a) It shall be infringement of a design protection under this chapter for any person, without the consent of the proprietor of the design, within the United States or its territories or possessions and during the term of such protection, to

(1) make, have made, or import, for sale or for use in trade, any infringing article as defined in subsection (d) hereof; or

(2) sell or distribute for sale or for use in trade any such infringement article, except that a seller or distributor of any such article who did not make or import such article shall be deemed to be an infringer only if

(i) he induced or acted in collusion with a manufacturer to make, or an importer, to import such article (merely purchasing or giving an order to purchase in the ordinary course of business shall not of itself constitute such inducement or collusion);

(ii) he refuses or fails upon the request of the proprietor of the design to make a prompt and full disclosure of his source of such article, and he orders or reorders such article after having received notice by registered or certified mail of the protection subsisting in the design.

(b) It shall not be infringement to make, have made, import, sell, or distribute, any article embodying a design created without knowledge of, and copying from a protected design.

(c) A person who incorporates into his own product of manufacture an infringing article acquired from others in the ordinary course of business, or who, without knowledge of the protected design, makes or processes an infringing article for the account of another person in the ordinary course of business, shall not be deemed an infringer except under the conditions of clauses (1) and (ii) of paragraph (a)(2) of this section. Accepting an order or reorder from the source of the infringing article shall be deemed ordering or reordering within the meaning of clause (11) of paragraph (a)(2) of this section.

(d) An infringing article' as used herein is any article, the design of which has been copied from the protected design, without the consent of the proprietor, except that an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium shall not be deemed to be an infringing article. An article is not an infringing article if it embodies in common with the protected design, only elements described in paragraphs (1) through (4) of section 1002(a).

(e) The party alleging rights in a design in any action or proceeding shall have the burden of affirmatively establishing its originality whenever the opposing party introduces an earlier work which is identical to such design, or so similar as to make a prima facie showing that such design was copied from such work.

If It is not an infringement of the exclusive rights of a design owner for a person to reproduce the design in a useful article or in any other form solely for the purpose of teaching, analyzing, or evaluating the appearance, concepts, or techniques embodied in the design, or the function of the useful article embodying the design.

Application for Registration

10092) Protection under this chapter shall be lost if application for registration of the design is not made within one year after the date on which the design was first made public.

(b) A design is made public when, by the proprietor of the design or with his consent, an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public.

(d) The application for registration shall be made to the Administrator and shall state (1) the name and address of the author or authors of the design; (2) the name and address of the proprietor if different from the author; (3) the specific name of the article, indicating its utility; (4) the date, if any, that the design was first made public, if such date was earlier than the date of application; (5) affirmation that the design has been fixed in a useful article; and (6) such other information as may be required by the Administrator. The application for registration may include a description setting forth the salient features of the design, but the absence of such a description shall not prevent registration under this chapter.

(e) The application for registration shall be accompanied by a statement under oath by the applicant or his duly authorized agent or representative, setting forth that, to the best of his knowledge and belief (1) the design is original and was created by the author or authors named in the application; (2) the design has not previously been registered on behalf of the applicant or his predecessor in title; and (3) the applicant is the perso. ntitled to protection and to registration under this chapter. If the design has been made public with the design notice prescribed in section 1006, the statement shall also describe the exact form and position of the design notice.

(N) Error in any statement or assertion as to the utility of the article named in the application, the design of which is sought to be registered shail not affect the protection secured under this chapter.

(g) Errors in omitting a joint author or in naming an alleged joint author shall not affect the validity of the registration, or the actual ownership or the protection of the design if it is shown that the error occurred without deceptive intent. Where the design was made within the regular scope of the author's employment and individual authorship of the design is difficult or impossible to ascribe and the application so states, the name and address of the employer for whom the design was made may be stated instead of that of the individual author.

(h) The application for registration shall be accompanied by two copies of a drawing or other pictorial representation of the useful article having one or more views, adequate to show the design, in a form and style suitable for reproduction, which shall be deemed a part of the application.

(i) Where the distinguishing elements of a design are in substantially the same form in a number of different useful articles, the design shall be protected as to all such articles when protected as to one of them, but not more than one registration shall be required.

(j) More than one design may be included in the same application under such conditions as may be prescribed by the Administrator. For each design included in an application the fee prescribed for a single design shall be paid.

Benefit of Earlier Filing Date in Foreign Country

1010. An application for registration of a design filed by any person or his assignees who has previously duly filed an application for registration of the same design in a foreign country shall have the same effect as if filed in the United States on the same date on which the application was first fled in any such foreign country, if

(1) such foreign country affords similar privileges in the case of an application sided in the United States or to citizens of the United States, and

(2) such application in the United States is filed within six months after the castes date on which any such foreign application was

filed.

STUDIES

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Oaths and Acknowledgments

1011(a) Oaths and acknowledgments required by this chapter may be made before

(1) any person in the United States authorized by law to administer oaths.

(2) any diplomatic or consular officer of the United States authonized to administer oaths when made in a foreign country, or

(3) any official authorized to administer oaths in the foreign country concerned, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, and shall be valid if it complies with the laws of the State or country where made.

(b) The Administrator may, by rule, prescribe that any document to be filed in the Office of the Administrator which is required by any law, rule, or other regulation to be under oath, may be subscribed to by a written declaration. Such declaration shall be in such form as the Administrator may prescribe and shall be in lieu of the oath otherwise required.

(c) Whenever a written declaration, as permitted in subsection (b), is used. the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both, pursuant to section 1001 of title 18, and may jeopardize the validity of the application, document, or registration resulting therefrom.

Examination of Application and Issue or Refusal of Registration

1012(a) Upon the filing of an application for registration in proper form as provided in section 1009, and upon payment of the fee provided in section 1015, the Administrator shall determine whether or not the application relates to a design which on its face appears to be subject to protection under this chapter, and if so the Administrator shall register the design. Registration under this subsection shall be announced by publication. The date of registration shall be the date of publication.

(b) If in the judgment of the Administrator, the application for registration relates to a design which on its face is not subject to protection under this chapter, the Administrator shall send the applicant a notice of refusal to register and the grounds therefor. The applicant shall have three months after the notice of referral is sent to request, in writing, reconsideration of his application. After consideration of such a request, the Administrator shall either register the design or send the applicant a notice of final refusal to register.

(c) Any person who believes he is or will be damaged by a registration under this chapter may, upon payment of the prescribed fee. apply to the Administrator at any time to cancel the registration on the ground that the design is not subject to protection under the provisions of this chapter, stating the reasons therefor. Upon receipt of an application for cancellation, the Administrator shall send the proprietor of the design, as shown in the records of the Office of the Administrator, a notice of such application, and the proprietor shall have a period of three months after the date such notice was mailed to present arguments in support of the validity of the registration. It shall also be within the authority of the Administrator to establish conditions, by regulation, under which the opposing parties may appear and be heard in support of their arguments. If, after the periods provided for the presentation of arguments have expired, the Administrator determines that the applicant for cancellation has established that the design is not subject to protection under the provisions of this chapter, he shall order the registration stricken from the record. Cancellation under this subsection shall be announced by publication, and notice of the Administrator's final determination with respect to any application for cancellation shall be sent to the applicant and to the proprietor of record.

(d) When a design has been registered under this section, the lack of utility of any article in which it has been embodied shall be no defense to an infringement action under section 1020, and no ground for cancellation under subsection (c) of this section or under section 1023.

Certification of Registration

1013. Certificates of registration shall be issued in the name of the United States under the seal of the Office of the Administrato: and shall be recorded in the official records of such Office. The certificate shall

(1) state the name the useful article,

(2) state the date of filing of the application. (3) state the date of registration.

(4) state the date the design was made public, if such date the design was made public was earlier than the date of filing of the appication, and

(5) contain a reproduction of the drawing or other pictorial representation showing the design.

Where a description of the salient features of the design appears in the application, such description shall also appear in the certificate. A certificate of registration shall be admitted in any court as prima facie evidence of the facts stated therein.

any product as long as it was a novel design." The early court decisions took a different view, usually, setting up a test for validity that required something more than novelty, essentially the unobviousness standard discussed above. They found their guidance in the utility patent cases decided in the 1800s, relying on the general provision of the patent law that the same standards should be applied to design patents and to utility patents. Some courts included a requirement that there be an artistic or ornamental quality to the design. Finally, in 1902, the design patent statute was amended to add the word "ornamental "35 as a requirement and this provision has continued in the current law. The courts have tried to identify what to look for in a design to meet the ornamental standard.

One approach to finding a design in "ornamental" is to see if some effort has been made to create a more pleasing product appearance. An artistic effort, even if not successful in the opinion of some, produces a protectable, ornamental design. Many products need this type of design development and this design should be considered ornamental. What happens, however, if no organized effort is made to improve the appearance of a product? This last mentioned situation leads to the necessity of looking at the subject matter from another point of view, asking the question if the product design, when protected, is going to prevent others from using a design appearance that is needed to compete in the marketplace for utilitarian reasons, not merely appearance considerations. The design may result in better performance, efficiency, or reduced manufacturing cost, for example. If there are other devices that can compete effectively using the same functional operation and have different appearances, then the protected

"Simonds treatise, supra note 15 at 182. This treatise states that the Patent Office issued design patents "without well defined limits." The Fenton treatise, supra note 15 at 251 quotes an 1871 Patent Office decision. Ex Parte Parkinson, that refers to the "lax" practices and standards for design patents under prior Patent Office commissioners.

M4 Simonds treatise, supra note 15 at 192. This treatise reviews the common heritage of utility and design patents. The same standards were applied by the courts to each of these forms of patents, requiring the exercise of creative genius. This standard was expressed also as requiring more than the skill of an ordinary mechanic, Hotchkiss r. Greenwood. 52 U.S. 248 (1850 U.S.S.C.).

"Simonds treatise, supra note 15 at 12. This treatise quotes the Commissioner of Patents in testimony supporting the addition of the term "oramental" to the design patent statute, as stating "lift is thought that if the present bill shall become a law the subject of design patents will occupy its proper philosophical position in the field of intellectual production, having upon the one side of it the statute providing protection to mechanical constructions, possessing utility of mechanical function, and upon the other side the copyright law, where objects of art are protected, reserving to itself the position of protecting objects of new and artistic quality pertaining, however, to commerce, but not justifying their existence upon functional utility. If the design patent does not occupy this position there is no other well defined position for it to take."

35 U.S.C.A. Section 171 states: "whoever invents any new. original and ornamental design for an article of manufacture may obtain a patent therefor, subject to conditions and requirements of this title."

subject matter does not present a competitive problem. It is ornamental and design protection that is appropriate.

A recent example of how the ornamental standard is applied is found in the CAFC case of Power Controls Corp. 37 The design was a plastic packaging container for an electrical component. The container was arranged to close like a clam shell and fit tightly around the component. The court examined each design appearance feature and found that it was used for a functional reason. The design patent owner failed to present evidence to show that the arrangement was created, at least in part, to improve the appearance of the package, or that the package could be built using the same functional arrangement without creating essentially the same apperance. The CAFC held that the design was not ornamental. In the case of In re Carletti, a plumbing gasket with surface ribs was found to be a purely functional design and not protectable. court did examine all the evidence to see if any reasons other than function may have dictated the design. The court was looking for evidence that the design was ornamental and found none.

The

The difficulty in resolving the ornamental issue is even greater for many designs when one considers the broad role played by an industrial designer, who does more than make the product attractive. The industrial designer tries to change the parts to create a unique combination of function and appearance, with goals of reducing costs or optimizing some other criteria and to produce a marketable appearance. Drawing a line between protected and unprotected designs is not easy and the courts will not expand design patent protection to a scope where the design patent effectively serves the role of a utility patent.

In a recent CAFC design patent case, In re Cho, one judge reconsidered the proper standard for determining protectable design patent subject matter, i.e., what is ornamental.39 Judge Newman, the dissenting judge, proposed to determine what is ornamental using as a first step the same analysis as applied to a utility patent invention to determine obviousness. If the combination of the features for functional reasons would be obvious to one skilled in the art under the utility patent law standard, the judge took the position that the design applicant had to prove that the design features were not essential to that functional operation. The majority of the judges held that this issue was not raised in the appeal and did not address it. In the same analysis, Judge Newman considered the unobviousness standard ,as integrally related to the ornamental issue. Even though Judge Newman's view was not considered by the

11 Power Controls Corp. v. Hybrinetics, Inc., 806 F. 2d 234, 231 U.S.P.Q. 774 (1986 FC. CA).

"In re Carletti, 14 U.S.P.Q. 653 (1963 C.C.P.A.).

39 In re Cho, 813 F. 2d 378, I U.S.P.Q. 2d 1662 (1987 FC, CA) Id. at 1664 and 1665.

other judges, it does raise more questions for anyone who will be litigating a design patent. At least this new case helps to focus on a design patent law issue that needs to be resolved. Whether the search is for artistic quality in the design, or subject matter that is nonthreatening from a competitive functional point of view, or use of a standard based on utility patent analysis for an unobvious invention, the courts have their hands full in dealing with this design patent subject matter issue.

The brief introduction above to trademark law showed that essentially the same subject matter issue exists there. Trademark case law has resolved the issue in a more systematic and decisive way, to the satisfaction of most courts, by asking the question whether the product design makes the product more competitive. Fortunately for trademark law there is no standard comparable to unobviousness that has to be analyzed. The CAFC has taken the lead in this trademark issue, although it cannot control the other circuit courts that had equal opportunity to develop their own interpretation of federal trademark law. Only the U.S. Supreme Court can resolve finally the trademark and design patent issue of what subject matter is protected. The expectation is that the CAFC will clarify the test for an ornamental design and not make the unobviousness standard any more difficult to apply.

A design patent gives an exclusive right to make, use and sell the protected design.41 There is no requirement to show copying, as an independent creation is an infringement. The design patent is the same in this respect as the utility patent. An important issue in design patent law is how to determine infringement. This question was resolved long ago by the U.S. Supreme Court, in the case of Gorham Manufacturing Co. v. White.42 The Court's analysis was to compare the patented design and the alleged infringing design as an ordinary person would look at them." If the designs appeared the same, even though differences existed, there was infringement. The problem for the design patent owner is what degree of change avoids infringement. One U.S. practitioner has surveyed the recent design patent cases and concluded that courts only find a design patent valid and infringed if there is evidence of copying.44 Without the copying, showing access to the design owner's product or the design patent, he concluded that the courts do not find infringement as often. In effect, this survey suggested that the present design patent system is no more than the copyright-type system described below.

There are designers who object to the small differences that seem to be adequate to avoid design patent infringement. Even though the legal standard for design patent infringement is clearly established, the extent of alterations allowed within the scope of a designed patent is an issue in most design patent infringement cases. There is protection for some variations of the patented design that do not significantly change its appearance.

The flexibility given utility patents under the equity concept of the doctrine of equivalence is applicable to design patents, and it is the basis for some variations being permitted. On the other hand, the extent of design change permitted always goes back to the original test of whether the ordinary person would view the overall designs as substantially the same. The designer cannot ask for more under the design patent system. The courts always stress the need for reasonable predictability of what is protected in infringement analysis, whether it be in utility patent or design patent cases.

The design patent provides very important protection, giving the exclusive right to make, use and sell the protected design. The value of a design patent is greatly reduced due to the uncertainty of how to apply its standards. The unobviousness requirement is very difficult to apply. The subject matter issue is hard to resolve for many designs. Another factor decreasing the usefulness of the design patent system is the time the patent takes to obtain, an average of almost 2.5 years according to current figures. During the time the application is pending there are no rights, and copiers can operate without risk. The protection term begins upon patent issuance and copiers can look forward to several more years of use before litigation ends, subject only to liability for damages, if and when the patent successfully passes all the significant obstacles in its path. The cost of obtaining a design patent is an important consideration. It is much less than the cost of a utility patent, but it is still expensive, approximately $1,000, including attorney's and PTO fees, according to some estimates. As stated by Judge Rich, now on the CAFC, in his concurring opinion in In re Nalbandian, there should be another, less difficult system for design protection. He encouraged passage of legislation to set up a copyrighttype protection system for industrial designs, like the Design Copyright Registration (DCR) described below.

135 U.S.CA. Section 271(a).

Gorham Manufacturing Co. v. White. 81 U.S. 511 (1872 U.S.S.C.).

43 Id. at 863.

" W. Thompson, "Industrial Design Protection in the U.S.." Selected Legal Papers. American Intellectual Property Law Association. Arlington, Virginia. U.S.A.. Vol. IV. No. 7/1986, page L-1. 45 1986 PTO Innual Report, 21.

In re Nalbandian, 661 F. 2d 1214, 1218, 211 U.S.P.Q. 782, 786 (1981 C.C.PA). In his concurring opinion in this case. Judge Rich outlined the history of efforts to obtain a better protection system for industrial designs. He found the unobviousness standard very difficult to apply, and he questioned whether it was appropriate for industrial designs. He urged that attention be given to legislation pending then in Congress that corresponded essentially to current legislation, discussed below under the Design Copyright Registration heading.

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