USPTO is seeking public comment on the meaning of an “article of manufacture” as used in 35 U.S.C. 171(a):
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 Federal Circuit’s recent decision in Curver Luxembourg refocused attention on the importance of the particular article of manufacture in the design patenting process. That case reiterated the point that design patents must be tied directly to an article of manufacture, and not simply a design in the abstract.
[L]ong-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se.
Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019) (refusing to enforce Curver’s patent as a disembodied design).
This particular RFC focuses on emerging technologies: projections; holographs; virtual/augmented reality; etc. I would also include screen icons that are only temporarily shown when electricity is applied. In general, the USPTO has deduced the following regarding screen icons from various precedential decisions:
- they must be embodied in a computer screen, monitor, other display panel, or portion thereof;
- they must be more than a mere picture on a screen; and
- they must be integral to the operation of the computer displaying the design.
Particular questions from the RFC:
- Please identify the types of designs associated with new and emerging technologies that are not currently eligible for design patent protection but that you believe should be eligible. For these types of designs, please explain why these designs should be eligible, how these designs satisfy the requirements of section 171, and how these designs differ from a mere picture or abstract design. In addition, if you believe that these types of designs should be eligible, but a statutory change is necessary, please explain the basis for that view.
- If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is integral to the operation of a device (e.g., a virtual keyboard that provides input to a computer), is this sufficient to render the design eligible under section 171 in view of the current jurisprudence? If so,
please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view. - If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is interactive with a user or device (e.g., a hologram moves according to a person’s movement), is this sufficient to render a design eligible under section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view.
- If the projection, holographic imagery, or image appearing through virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is projected onto a surface or into a medium (including air) and is not otherwise integral to the operation of a device or interactive with a user or device (e.g., is a static image), is
this sufficient to render a design eligible under section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the
basis for that view. - Do you support a change in interpretation of the article of manufacture requirement in 35 U.S.C. 171? If so, please explain the changes you propose and your reasons for those proposed changes. If not, please explain why you do not support a change in interpretation.
- Please provide any additional comments you may have in relation to section 171, interpretation or application of section 171, or industrial design rights in digital and new and emerging technologies.
Deadline for comments: Feb 4, 2021
Method: Comment via the portal at www.regulations.gov (Docket No PTO-C-2020-0068).
In addition to all the “emerging techology” stuff, more interesting issues are raised by question 6: “Please provide any additional comments you may have in relation to section 171, interpretation or application of section 171…” To me, the article of manufacture requirement of section 171 and 289 ought to be excised altogether. The Curver case is a good example, where Curver’s design was copied exactly but placed on a product (a basket) that was not the claimed chair. The CAFC tossed out the case, saying a basket is not a chair, which is obviously true. This result would not happen if the design had been protected per se, regardless of the product upon which it was placed, like it is in the EU. Design theft is design theft, and an infringer ought not to escape liability for copying a design and putting it on a different product. Excising the phrase from 289 would also have the benefit of negating the ridiculous result in Samsung v. Apple.
I would prefer to excise design patents entirely – patents are meant to protect utility, and the attempt to squeeze design patent law into utility intellectual property protection is simply ill-advised.
Exactly.
As “ill-advised” as it might be, we’re stuck with design patents being part of 35 U.S.C. Way back in the 19th century, when design legislation was first proposed, it was offered to the Copyright Office to administer, but the Register objected, so it was shuffled over to the Patent Office. And there it remains. I’m all in favor of Congress passing a sui generis design registration scheme, like they have in the EU, but that hasn’t gained any traction.
Perry, I hear what you are saying (in the short term), but we should be taking every instance and opportunity to continue to ‘set things right.’
Some times it may take stomping on the gas pedal and accelerating the crash in order to make changes that are necessary.
We already have a de facto “design registration scheme” as the study by Dennis showed. That is, almost no USPTO design application 103 rejections.
“That is, almost no USPTO design application 103 rejections.”
This shows LESS the point that you think, Paul, and (simply) MORE the point that Design Patents are NOT a fit for most all legal concepts of utility protection.
The predominant case law (not limited to 103) is simply NOT a proper one-to-one use for design patent law concepts.
Your entreaty here of ‘almost no 103 rejections’ stems more from how examination DIFFERS for obviousness FOR design versus utility.
anon has it right. Paul, I think my earlier post in another thread pointed out that most designs are nonobvious in fact because they were designed with the goal of being different than previous designs.
I’d rather eliminate design registrations altogether. There’s already something called “copyright” to cover disembodied designs.
First, they are called design patents, not design registrations. Second, the state of copyright law allows registration of only a fraction of designs, those that are “separable” from the underlying utilitarian product. The CO has always resisted registering designs. Pointing to the need for a sui generis law…
Perry,
I am unclear what point you are trying to make with your “only a fraction of designs, those that are “separable” from the underlying utilitarian product“..
Are you edging into an area of ‘functionality’ (or at least, items that cannot be separated from function, but still may have expressive aspects)….?
yes
That’s an express provision of the Copyright Act.
Read Star Atheltica v. Varsity Brands (2016) which is the Supreme Court’s latest interpretation of that provision:
link to scholar.google.com
Design patents cover a broader range of ornamental designs that would not be protected by copyright. It has nothing to do with functionality.
I am familiar with the Star Atheltica case, thank you.
I also understand copyright law.
That being said, perhaps you are too b0red to actually add anything here.
(you probably should note that I was asking for clarification from Perry, and my question did NOT provide any viewpoints on substantive law)
But perhaps, you can elucidate your own views and discuss some of what that “broader range of ornamental designs” may entail.
Feel free to tie that into any of the comments below that DO venture into substantive elements of the laws in play here.
“broader range of ornamental designs”
That simply refers to the fact that design patent law has no separability requirement that Copyright law does have. There are many ornamental designs protected by design patents that would not qualify for copyright.
Whether that is a good thing or not is debatable. But we have had design patents since the 19th century, and thus far they have worked pretty well.
You have said the same thing with no further insight.
Not helpful.
What exactly do you mean when you say that design patent law has no separability requirement?
Is not ‘ornamental’ considered to BE this very thing of ‘separability?’
(don’t be a b0re and answer without pausing to think just a little).
“But we have had design patents since the 19th century, and thus far they have worked pretty well.”
But have they? Sure, they have existed, but that should NOT be taken as the same thing. An analogy may be made to the proper understanding of the Marking Statute – and how quickly that was determined NOT to be ‘working pretty well’ (when properly understood).
Those who HAVE taken the time (and not handled this in a b0red manner) have some very different opinions than the ones that you share.
“What exactly do you mean when you say that design patent law has no separability requirement?
Is not ‘ornamental’ considered to BE this very thing of ‘separability?”
No, the two are completely distinct concepts.
um, no.
Try again – this time with a minimal amount of actual comment
“something called “copyright” to cover disembodied designs.”
Not so, AM – see below and the parallel requirement (in Copyright) to have your item captured in a tangible medium.
The notion of ‘disembodied’ legitimately carries NO copyright protection.
The term disembodied is misleading, but there is a difference between copyright and design patents.
A copyright can be in a pattern (such as the basketweave pattern at issue in the Curver Luxembourg case. It is enough for copyright if the designer embodies it in something tangible — even a pencil drawing, or one use (a basket). Copyright then protects any copied use of that — whether in a basket, on wallpaper, or in a picture you hang on your wall.
Design patents are for a particular article of manufacture — a basket, for example. That was the important holding of the Curver Luxembourg case — the named “article of manufacture” in the patent limits the rights.
Consider if someone wanted to use the same pattern on three pieces of furniture: a table, a matching chair, and a basket. He would need three design patents, but only one copyright.
Thanks Bored – yes, that distinction is understood.
The larger point here though is WHETHER that ‘for’ should carry the weight that it does – especially since ‘disemboided’ is NOT as misleading as you yourself appear to want to lead on.
No embodied, no copyright (period).
Not sure why you think that to be misleading.
Can one ‘copy’ something if that something putatively being copied is not itself embodied? Does ‘copy’ itself require being embodied?
And to your last paragraph – not quite. It depends on how the design patent is actually claimed. If — for example, the claim is to ‘furniture,’ than the table and matching chair would be covered by one design patent. In such a case, it would not be a ‘three-for-one’ comparison as you state.
Taking that a step further, what if the design patent was instead of for furniture, it was for ‘household items?’ Then you would be back at a one-to-one.
The larger context here is that Design patents COULD very well be excised from the type of intellectual property geared towards protecting utility.
(1) The term embodied is not a legal term of art in either design patent or copyright law. Using it conflates two different concepts.
For a copyright, the term is “fixed in a tangible medium.” All that means is that you somehow have to make the item permanent in some readable form. A completely abstract design that is sketched onto a computer program and then saved qualifies.
For design patent, you need “an ornamental design for an article of manufacture.” That means the design itself has to be for a physical object that can be manufactured. OTOH, all you need is conception (although practically, you have to put it down somehow to show that you have invented something.)
2) I don’t think under current Patent Office practice, they would allow you to claim a design for something so broad as “furniture” or “household items.” I looked into this about 6 months ago.
Although I bet with the recent Curver Luxembourg case, patent prosecutors will be trying to push the envelope on this. Anyone have any experience in this department?
Your assertion does not hold.
There is no ‘conflation’ as you seek to imbue. Not sure why you are refusing to accept the plain meaning of ’embody’ and assert that there is some error in doing so.
Your attempt at distinguishing copyright and design patents falls flat. What does “sketched onto a computer program” even mean? What does “put it down somehow” mean? How are these different, if at all, from the plain meaning of ’embody’ that you so fervently seek to disfavor?
Your 2) MAY have some merit – but then again, may not. What are the limits of ‘acceptable’ terminology? WHY are those the limits as opposed to something else? What is ‘too broad’ to be ‘so broad?’ What is NOT ‘too broad’ to be so broad? What are the legal and factual framework for any such designation?
I find this somewhat akin to the Ladders of Abstraction concept.
(not so b0ring after all, hmmm?)
Reply caught in a filter — by the way, thanks for returning!
… now released – thanks
Curver was rightly decided under current law. It shows how important the title/claim of the design patent is, and the emphasis on the “article of manufacture” requirement. Certainly the design patent bar, such as it is, is reconsidering how to claim a design so that it covers more than one “article of manufacture”. In the EU – a much better system – a design is covered per se, meaning there’s no requirement to specify a particular article of manufacture, and anyone who puts a registered design on an ashtray, a piece of candy, or a car, infringes. The USPTO has just announced that it is reconsidering how the term “article of manufacture” should be defined. Although aimed at new techologies, point 6 in the annoucement opens the inquiry a bit wider. file:///C:/Users/pjsai/Downloads/2020-28110.pdf
This is the right link to the USPTO annoucement: link to federalregister.gov
It appears that the desire to make the design ‘integral to the operation’ induces a bas tar dation upon “ornamental” (the notion of non-ornamental functionality).
Agreed, requiring a patented design to be ‘integral to the operation’ of “an article of manufacture” is inconsistent with the “ornamental” [NOT functional] nature of design patents. Furthermore in that respect computer screen GUI’s have been held design patentable [as shown on at least a portion of a screen] with no such ‘integral to the operation’ in the Expanded-Board decision [including the Director in person] in Ex parte Strijland (Bd. Pat. App. & Int. 1992). Note also the CCPA decision on fountain displays cited therein.
BTW, is not “design for an article of manufacture” an attempt to somewhat reduce overlap and/or duplication with copyright?
[I guess that excludes tattoos, but what else?]
I view it more of an attempt to inflate legal requirements than how you may want to distinguish copyright.
After all, a copyright is earned only when ‘fixed in a tangible medium’ – a non-fixed ‘expression’ cannot earn copyright — being fairly equivalent (or perhaps better put: synonymous) to the inability to have a design patent without the “for item of manufacture.”
… additionally (albeit tangentially) one may also draw as raised eyebrow to the fact that software earns copyright protection (for an aspect — and not to be confused with its only aspect) for being captured on some tangible medium. Is not though, that very same tangible medium (think Beauregard) deemable to be an article of manufacture (which would also throw factual cold water on the In the Nuitjen case)…?
… software sold (or merely licensed — which draws a separate raised eyebrow) only as a digital good….
Does such digital goods lack copyright protection (for an apparent lack of fixed media//article of manufacture)…?
… and before an answer is offered, keep in mind the (very very) large powers that be that would be eviscerated if some level of anti-patent consistency were to be applied to the notion of “manufactured goods” that are merely digital goods.
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