Overcoming the 'Impossible Issue' of Nonobviousness in Design Patents
Janice M. Mueller
Chisum Patent Academy, Inc.
Daniel Harris Brean
The Webb Law Firm
November 12, 2009
Kentucky Law Journal, Vol. 99, No. 3, p. 419, 2011
U. of Pittsburgh Legal Studies Research Paper No. 2009-30
The United States offers legal protection for designs - the overall aesthetic appearances of objects - through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitarian device mandates a “nonobvious” advance over earlier technology, the patentability of a new and ornamental design requires that it differ from prior designs to an extent that would not have been “obvious to a designer of ordinary skill who designs articles of the type involved.” Ostensibly promoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that time forward, the design patent system has languished from prolonged inattention rather than benefited from any purposeful development. Even the initial imposition of a qualitative requirement for “invention” in designs (from which the modern requirement of nonobviousness derives) was likely the product of a typographical error. Failing to appreciate the fundamental distinctions between designs and utility inventions, the legislature and judiciary have repeatedly sought to assimilate these very different types of intellectual property. Nowhere in the design patent system is this assimilation more blatant and harmful than in the imposition of the nonobviousness requirement. The USPTO and courts continue to struggle with gauging the nonobviousness of designs despite repeated acknowledgement that the requirement is inapt, subjective, unworkable, and even “impossible.” Although design protection would be more appropriately provided through a sui generis system outside the patent regime, a wholesale restructuring of U.S. design protection appears unlikely. Nonobviousness therefore continues to be imposed for design patentability. Our insight is that courts and the USPTO have previously unrecognized flexibility in how they apply the nonobviousness requirement to designs. Drawing from the industrial design literature as well as our interviews with experienced designers of differing career paths, we conclude that the current nonobviousness framework is fundamentally misaligned with the creative processes and objectives of designers. We accordingly propose a number of powerful yet practical tools for reconceptualizing the nonobviousness requirement in a manner that truly promotes innovation in design. The Federal Circuit’s recent decisions in Egyptian Goddess v. Swisa and Titan Tire v. Case New Holland signal a welcome judicial receptiveness to rethinking design nonobviousness. The time is ripe to bridge the gap between design patent standards and the reality of design. This article offers a roadmap for overcoming the supposedly “impossible issue” of applying the nonobviousness requirement to designs.
Number of Pages in PDF File: 137
Keywords: patent, patent law, design patent, utility patent, designs, industrial design, nonobviousness, invention requirement, combination of references, ordinary observer, substantial similarity, 35 U.S.C. § 103, Patent Office, USPTO, Gorham, Whitman Saddle, KSR, Titan Tire, Egyptian Goddess
Date posted: November 14, 2009 ; Last revised: April 15, 2011
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