Ch6. Design Patent Law — Registration and Protection of Ornamental Designs

Design Patent Law Overview

Design Patent Definition (35 USC § 171):
A new, original, and ornamental design for an article of manufacture

What Can Be Protected:
Entire article design (independent article of commerce)
Partial designs (specific portion of an article; broken lines show environment)
Typeface designs (ornamental aspects)
GUI / icon designs (e.g., Apple v. Samsung graphical elements)

What CANNOT Be Protected:
Purely functional designs (protects appearance, not function)
Shape dictated solely by function
Designs contrary to public policy

Design Patent Requirements

Novelty (35 USC § 102):
Design must not have been disclosed in prior art (anywhere in the world)
before the effective filing date

Originality:
Must be the original creation of the designer
Not copied from another's design

Ornamentality:
The design must be primarily ornamental, not primarily functional
(If the article's appearance is dictated by function alone, not patentable)

No Prior Conflicting Design:
Must not be the same or substantially similar to a prior filed or registered design

Design Patent Without Full Examination:
Fast-track design examination program available at USPTO ("Track One" for designs)
Some product categories (e.g., fashion) also benefit from quicker pendency

Design Patent Application Procedure

Required Drawings:
Front, rear, left side, right side, top (plan), and bottom views — 6 views
Perspective view strongly recommended
Broken lines used to show environment / disclaimed portions

Examination:
Formal examination + substantive prior art examination
Office Action issued if prior art is found → response/argument/amendment

Multiple Design Applications:
US allows one design per application (unlike Korea's multiple design system)
File continuation applications to protect design variations

Confidentiality Before Grant:
Design applications are not published before grant
Inherent trade-secret protection during pendency

Design Patent Rights

Term:
15 years from grant date (AIA; applications filed after May 13, 2015)
(14 years for earlier applications)

Related / Continuation Designs:
File continuation applications to cover variations of the same overall design
Continuation shares the filing date of the parent application

Infringement Standard:
Ordinary observer test: Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008)
"In the eye of an ordinary observer, would the accused design
be substantially the same as the patented design?"
(Not a technical element-by-element comparison)

Limitations on Design Patent Rights:
Experimental use (very narrow)
Prior commercial use (35 USC § 273)

Design Patent = Ornamental Appearance / 15 Years from Grant ★★★★★ : Protects how a product looks, not how it works. 15 yrs from grant (not filing). Memory hook: design = look + 15 yrs from grant

Design Ornamentality < Utility Patent Non-Obviousness ★★★★☆ : Lower creative threshold than utility patent non-obviousness. Memory hook: design bar < utility bar

Design Applications Not Published Before Grant ★★★★☆ : Built-in confidentiality — no pre-grant publication unlike utility patents. Memory hook: design = secret until grant

Practice Questions

Q. Why do fashion companies prefer fast-track design patent registration?

Fashion trend cycles are often shorter than the typical design patent prosecution time. Fast-track (Track One) examination can reduce pendency to under a year — fast enough to provide protection during the relevant season. Even a pending design application (with a filed date) can deter blatant copying and support cease-and-desist letters. After the trend passes, even if a challenge is later filed, the owner has already extracted commercial value. Combining design patents with trade dress protection (Lanham Act) creates layered, overlapping IP coverage.

Q. How does design patent infringement analysis differ from utility patent infringement analysis?

Utility patent: element-by-element comparison of the accused product against each claim element (literal infringement) or doctrine of equivalents. Design patent: “ordinary observer” test — would an ordinary observer, familiar with the prior art, be deceived into thinking the accused design is the same as the patented design? (Egyptian Goddess). This is a holistic aesthetic comparison, not a technical checklist. Expert testimony from design professionals may be relevant. The same physical product can simultaneously infringe both a utility patent (on its functional features) and a design patent (on its ornamental appearance).