Basics of Design Patents

A design patent is a type of patent made on the aesthetic appearance of an object as opposed to a patent on its function. An engine, for example, has a specific purpose or function and this function could be protected by the standard and well known utility patent but the way the engine is designed to look can vary radically and an engine with a unique appearance could be protected by a design patent. Other companies could still build an engine with similar function (provided there is not a utility patent that would be violated), but they could not build one with similar design. Recognizable icons, images or logos can also be subject to these types of patents as they serve no practical purpose (aside from establishing recognizable brand identity) but clearly have the marks of being an intellectual creation. To be awarded a design patent, the patented design must be non-obvious, meaning that if the design is influenced solely by functional necessity, the product will not be awarded a design patent. Some of the more notable design patents have been awarded to the Apple iPhone, the Statue of Liberty, and various typographical fonts.

However, sometimes the design and the function of a product are inextricably linked. As the old saying goes, form follows function. Most commercial airplanes look fairly similar in design merely because they all need the same rudimentary design features to achieve their primary purpose of flight. This overlap can sometimes cause confusion as to where the respective authorities of the design and utility patents begin and end. If one company files a utility patent on a plane but another company had filed a design patent on a plane that is incredibly similar, which patent is given legal precedence, which would be upheld by the court? The utility patent would take precedence because, as the US Patent Office describes it and as was addressed earlier in this article, designs that are influenced solely by the object’s functionality are ineligible for design patents. However, this has not always prevented confusion between the two and fights between these types of patents can still erupt on occasion.

Design patents can also be confused with a similar protection called copyright but they vary from that legal designation in a few distinct ways. Copyright refers to nonfunctional items intended as the wholesale or most prominent feature that factors into the purchase of the item (an artwork or a photograph, for example) while design patents generally refer to ornamental designs on functional objects that are of ancillary or secondary importance in the purchasing process (such as the logos on a motorbike). Copyright is the specific ability to decide whether or not others can reproduce specific work (literally, the right to copy) and to be credited as the producer of the original work if it is reproduced in any fashion. While originally intended only for print media, it has since been expanded to cover any reproducible work that has no external uses such as artwork, printed texts, and statues, to name a few. Design patents and copyrights are not mutually exclusive either, the Statue of Liberty, for instance, is protected by both design patent and copyright.

Design patents also can be confused with trademarks but they vary from trademarks in that the latter protect designs that are associated with specific companies, persons, or legal entities. The famous Coca-Cola bottle design is trademarked so that no other manufacturing company can make a bottle that resembles it. This theoretically protects both the Coca-Cola Company from having its design, and also its sales, stolen by imposters and saves consumers from being subject to fraudulent purchases in which they would purchase the wrong cola thinking it was Coke due to the design. As with copyrights, trademarks and design patents are not mutually exclusive. To return to the earlier referenced Coca-Cola bottle design for an example, that product once had a design patent and trademark protection. The trademark protection is still active but the design patent has since expired.

One of the most recent cases to affect design patent law was Egyptian Goddess, Inc. v. Swisa, known colloquially as the “Egyptian Goddess” case. Until the case’s ruling in 2008, design infringement was determined by two tests: the ordinary observer test, wherein a simple visual test is administered to determine how similar two designs may look, and the point of novelty test, which is vastly more complex. Where the ordinary observer test is straightforward and easily understood, point of novelty had to show that an accused work infringed on a patented work by appropriating the novelty or usefulness of the patent. To illustrate, Egyptian Goddess, Inc. is a cosmetic supplies manufacturer that designed a nail polish bottle with three nail buffers built into the sides of the bottle. Since nail buffers themselves are not new but the idea of attaching them to the sides of a polish bottle was, the product was ineligible for a utility patent but was eligible for a design patent, which the product was awarded. Fellow cosmetics manufacturer, Swisa, produced a similar bottle later but their bottle had four nail buffers instead of three. This cosmetic change was enough to satisfy the demands of an ordinary observer test but it was clear that Swisa had copied the idea of having nail buffers on their polish bottles from Egyptian Goddess and so they would have failed a point of novelty test. However, the Supreme Court ruled on the case in favor of Swisa, effectively excising the point of novelty test and establishing the ordinary observer test as the primary metric for deciding design patent infringement. It is important to note that though the point of novelty test still exists, its stringency has been considerably softened, which was a major victory for design patent holders and seekers nationwide as it allows them to more easily defend their patents if they are accused of infringement. With a more relaxed test that will protect more designs from being sued for infringement, there is the possibility that more design patents will be applied for than ever before and reactions to the ruling remain largely positive. Some have even pointed out that Egyptian Goddess, Inc. has long sought to be rid of the oft-maligned point of novelty test, and so even they had cause to celebrate a measure of success that came as a result of their loss at the Supreme Court.

Kevin James