Chapter §23.01 Introduction

• Jurisdiction: United States

§23.01 Introduction

Designs are the exterior shapes and ornamental features that make products visually appealing and desirable to consumers.¹ Unlike the rest of the world, the United States protects industrial design via patent rather than copyright or sui generis design registration right.² Thus in addition to utility patents and plant patents,³ the United States grants a third type of patent: design patents.⁴

Importantly, design patents are fundamentally different in kind from utility patents. The latter protect the functional, utilitarian, technical aspects of machines, manufactures, compositions of matter, and processes.⁵ The former protect the decorative, ornamental, aesthetic features of products ("articles of manufacture"), not their internal functional workings.⁶

Design patent protection represents an increasingly important form of U.S. intellectual property protection. In fiscal year 2019, applicants filed 46,142 design patent applications in the USPTO, representing a 32% increase over FY 2013 filings.⁷ One factor sparking the growing interest in design patents is that judicial decisions have made it more difficult to attain trademark protection for product design.⁸ Moreover, design patents have become the subject of high-profile litigation, a new battleground for high-tech companies that also invest heavily in the external appearance of their products.⁹

Similarly to plant patents, the subject matter of design patents is not defined in 35 U.S.C. §101. Rather, design patent protection is provided for in a separate section of the Patent Act, 35 U.S.C. §171. The statute provides:

§171. Patents for designs

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

The term of a design patent also differs from that of a utility patent under §101. Prior to May 2015, a design patent expired 14 years from grant.¹⁰ Effective for design patent applications filed on or after May 13, 2015, however, a U.S. design patent expires 15 years from grant.¹¹ Moreover, design patent applications are not published at 18 months after their effective filing date.¹² Remedies for infringement of design patents also are different from those available for utility patent infringement; a design patentee can seek an award of an infringer's total profits on the product(s) that included the infringing design features.¹³

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Notes:

^[1] See Janice M. Mueller and Daniel Harris Brean, Overcoming the "Impossible Issue" of Nonobviousness in Design Patents, 99 Kentucky L.J. 419, 422 (2010–2011).

^[2] For...