Design Patent Evolution: From Obscurity to Center Stage

Table of Contents INTRODUCTION I. HISTORY OF DESIGN PATENTS II. DESIGN PATENT SUBJECT MATTER A. Article of Manufacture Requirement B. Ornamental Design Requirement III. ORIGINALITY, NOVELTY & NON-OBVIOUSNESS A. Originality B. Novelty C. Non-obviousness IV. SIMULTANEOUS PROTECTION UNDER DESIGN PATENT COPYRIGHT AND TRADEMARK LAW V. INFRINGEMENT A. Infringement Analysis B. Damages C. Fair Use CONCLUSION INTRODUCTION The recent legal sparring between Apple Computer and Samsung focused the attention of both business people and attorneys on the potential value of U.S. design patents. (1) In one dispute, a jury found that some specific Samsung products had infringed several of Apple's utility and design patents. (2) The jury verdict included substantial damages due to the fact that the appearance of Samsung's popular Galaxy S4G smartphone (see Fig. 1) infringed Apple's U.S. Design Patent No. D593,087 (see Fig. 2). (3) After the jury initially awarded over one billion dollars as infringement damages, (4) numerous academic programs on design patent law quickly appeared. (5) New scholarship directed to design patents was also published, (6) effectively ending a dearth of academic writing on design patents which extended back several decades. (7) I. HISTORY OF DESIGN PATENTS The oldest type of U.S. patent is a utility patent which was created by the first patent statute passed in 1790. (8) These patents typically protect useful inventions, (9) such as machines, electronic components, pharmaceuticals and chemical processes, which perform a function. Design patents, in contrast to utility patents, protect the non-functional or "ornamental" appearance of something. (10) One court has stated that the goal of design patents is to facilitate the commerce in manufactured products by incentivizing designers to make such products aesthetically pleasing to potential consumers. (11) Design patent subject matter, also called industrial design, (12) has long been protected in European nations. (13) In urging Congress to adopt the first U.S. system of design patent protection the U.S. Commissioner of Patents wrote the following in 1841: The justice and expediency of securing the exclusive benefit of new and original designs for articles of manufacture, both in the fine and useful arts, to the authors and proprietors thereof, for a limited time, are also presented for consideration. Other nations have granted this privilege, and it has afforded mutual satisfaction alike to the public and to individual applicants. Many who visit the U.S. Patent Office learn with astonishment that no protection is given in this country to this class of persons. Competition among manufacturers for the latest patterns prompts to the highest effort to secure improvements and calls out the inventive genius of our citizens. Such patterns are immediately pirated, at home and abroad. A pattern introduced at Lowell, for instance, with however great labor or cost, may be taken to England in 12 or 14 days, and copied and returned in 20 days more. If protection is given to designers, better patterns will, it is believed, be obtained, since the impossibility of concealment at present forbids all expense that can be avoided. It may well be asked if authors can so readily find protection in their labors, and inventors of the mechanical arts so easily secure a patent to reward their efforts, why should not discoverers of designs, the labor and expenditure of which may be far greater, have equal privileges afforded them? The law, if extended, should embrace alike the protection of new and original designs for a manufacture of metal or other material, or any new and useful design for the printing of woolens, silk, cotton, or other fabric, or for a bust, statue, or bas-relief, or composition in alto or basso-relievo. …