When deciding whether to apply for a design patent vs. a utility patent, the usual dividing line is that you use a utility patent for function and a design patent for appearance. Utility patents cover how an invention works, while design patents cover what an invention looks like. Yet, the line between function and ornamentation is simpler in theory than in reality.<\/p>\n\n\n\n
Some recent legal developments have highlighted the distinctions and overlap between design and utility patents. The separation between them may be closer to a dotted line than a solid line. When we litigate design patent claims, we rely on guidance from the courts and the United States Patent and Trademark Office (USPTO) about where that line sits despite its murkiness.<\/p>\n\n\n\n
To qualify for a patent, an invention must be:<\/p>\n\n\n\n
Patent challenges often relate to the novelty or obviousness of the invention.<\/p>\n\n\n\n
U.S. patent law establishes three types of patents:<\/p>\n\n\n\n
The overlap between plant patents and the other types tends to be minimal compared to the overlap between elements of design and utility patents.<\/p>\n\n\n\n
A utility patent can cover:<\/p>\n\n\n\n
Utility patents make up the bulk of U.S. patents.<\/p>\n\n\n\n
Design patents cover ornamentation on articles of manufacture\u2014not functional features. Articles of manufacture are items created through a manufacturing process.<\/p>\n\n\n\n
Evaluating whether an invention is novel and nonobvious usually requires considering prior art. Prior art includes references or documents related to a particular invention, including:<\/p>\n\n\n\n
An obvious invention or one that is not novel may infringe on prior art. If an invention is not novel because of its similarity to prior art, we say the invention anticipates the prior art.<\/p>\n\n\n\n
Two recent opinions from the Federal Circuit Court of Appeals on novelty and obviousness in design patents changed how courts and the USPTO approach design and utility patent litigation. These opinions collapsed some of the patent distinctions, further muddying the line between them.<\/p>\n\n\n\n
On September 15, 2023, the Federal Circuit decided Columbia Sportswear North America, Inc., v. Seirus Innovative Accessories, Inc.<\/em> The case involved allegations that Seirus infringed on Columbia\u2019s D\u2019093 design patent, which covered the ornamental design on heat-reflective material in certain Columbia products.<\/p>\n\n\n\n A jury concluded Seirus did not infringe on Columbia\u2019s patent, and Columbia appealed, finding issues with the comparison prior art presented to the jury. The art the jury relied on included three utility patents covering products that did not<\/u><\/strong> use heat-resistant material.<\/p>\n\n\n\n The Federal Circuit concluded the prior art examples that did not use heat-resistant material were inappropriate comparison prior art. Like anticipatory prior art, comparison prior art should contain designs applied to the \u201csame article of manufacture\u201d at issue. This significantly limited the types of prior art that could be used to invalidate design patents. This is a favorable precedent for patentees, but a challenging one for those on the defense side.<\/p>\n\n\n\n But here comes the Federal Circuit again, to soften the impact of that restrictive ruling. On May 21, 2024, the Federal Circuit decided LKQ Corporation v. GM Global Technology Operations LLC<\/em>. In LKQ<\/em>, the Federal Circuit overturned the previous standard for deciding obviousness in design patents, called the Rosen-Durling<\/em> test.<\/p>\n\n\n\n The court concluded the Rosen-Durling<\/em> test was too rigid and adopted the utility patent standard for obviousness: the four-part Graham <\/em>test. The Graham<\/em> factors are considered from the perspective of an ordinary designer in the claimed design\u2019s field. They include:<\/p>\n\n\n\n The court clarified that design-patent-focused factors like commercial success, industry praise, and copying of the design remained relevant to a design\u2019s obviousness. Yet, by discarding the Rosen-Durling<\/em> test and adopting the Graham<\/em> factors, the court collapsed another distinction between utility and design patents.<\/p>\n\n\n\n While design patents cover ornamentation and utility patents cover function, recent case law reveals potential on-the-ground overlap. Some aspects of a single invention may qualify for both types of patents. We explore how design and function can overlap in the following example, which we hope grounds the discussion in reality\u2014even if the example inventions are fantastical.<\/p>\n\n\n\n Suppose an inventor creates a machine that allows individuals to fly\u2014a human flying machine (HFM). The invention has several components, including a wind-powered engine with a wind pattern and wings with a special feather design.<\/p>\n\n\n\n Both the wind and wing designs are engraved during the manufacturing process. While the wind design does not affect the HFM\u2019s function, the feather design helps distribute the forces that enable the wings to fly. The HFM can fly without the wing pattern, but the flight is slightly bumpier.<\/p>\n\n\n\n Some of the HFM\u2019s aspects fit neatly into a design or a utility patent, but some elements overlap:<\/p>\n\n\n\n Although the utility and design patents overlap on the engine, the wind engraving serves no function and is solely a design patent example. The wings, however, serve functional and ornamental purposes, causing utility and design to overlap.<\/p>\n\n\n\n Another inventor has several pending patent applications for a bicycle flying machine (BFM). Its engine is solar-powered with a painted sun logo, and the machine also includes wings made of a similar alloy. Though the wings have a slightly different design, they, too, help distribute the forces that allow the bike to fly. Although differences exist, the BFM may be prior art for the HFM.<\/p>\n\n\n\n The BFM\u2019s inventor may argue that:<\/p>\n\n\n\n Although the wind engraving and the painted sun logo may avoid infringement, the other claims might be valid.<\/p>\n\n\n\n The outcome of a wing design dispute would likely come down to two issues. For anticipation (novelty-based infringement), you would compare specific details of the designs as they are used in the wings and the specific alloys used to create them. For obviousness, consider whether the ordinary person in this theoretical field would have understood how to make the HFM from seeing details about the BFM.<\/p>\n\n\n\n To identify prior art, consider the physical appearance of a design and any overlapping functional features, like heat-resistant material or aerodynamic engraving.<\/p>\n\n\n\n Look at the specific field and an ordinary person\u2019s perspective when considering obviousness. Depending on your perspective, you might tweak how you define that field to be broader or narrower. In our example, the inventors may identify the field as human-sized wing ornamentation to support the BFM or bicycle-related wing ornamentation to support the HFM.<\/p>\n\n\n\n Most importantly, remember that specifics matter. Every case could come down to one little but significant distinction.<\/p>\n\n\n\n Resources:<\/p>\n\n\n\n When deciding whether to apply for a design patent vs. a utility patent, the usual dividing line is that you use a utility patent for function and a design patent for appearance. Utility patents cover how an invention works, while design patents cover what an invention looks like. Yet, the line between function and ornamentation […]<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"off","_et_pb_old_content":"","_et_gb_content_width":"","footnotes":""},"categories":[1],"tags":[],"class_list":["post-1163","post","type-post","status-publish","format-standard","hentry","category-intellectual-property"],"_links":{"self":[{"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/posts\/1163"}],"collection":[{"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/comments?post=1163"}],"version-history":[{"count":0,"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/posts\/1163\/revisions"}],"wp:attachment":[{"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/media?parent=1163"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/categories?post=1163"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/tbillicklaw.com\/wp-json\/wp\/v2\/tags?post=1163"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}<\/a>Obviousness<\/h3>\n\n\n\n
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<\/a>A Design Patent vs. a Utility Patent Example<\/h2>\n\n\n\n
<\/a>One Invention, Multiple Patents<\/h3>\n\n\n\n
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<\/a>Prior Art Example<\/h3>\n\n\n\n
<\/a>Infringement<\/h3>\n\n\n\n
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<\/a>Distinguishing Function from Ornamentation in Design Patent Litigation<\/h2>\n\n\n\n
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