IEEE Power Electronics Magazine - December 2019 - 62

Patent Reviews

by Art MacCord

Protecting New Ornamental
Appearances With Design Patents

e haven't talked much
about design patents in
this column, and a recent
case involving them suggests that
it's time. Design patents protect the
ornamental appearance of useful
articles and have a term of 14 years
from the date of issuance, which
follows, of course, the filing and
pendency of the application. To
obtain a patent, the design must be
ornamental, novel, and more than
an obvious improvement from previously known things (separate and
combined). Design patents are
available only to protect the nonfunctional, aesthetic components of
an invention. By contrast, utility
patents protect useful and functional aspects.
The contents of design patents are
quite different from the utility patents we have discussed in previous
columns. There are very few words
in a design patent; it mostly consists
of drawings illustrating the novel
design that appears on an article of
manufacture. There is a handful of
words that say what kind of product
is being depicted and indicate that
the inventor created the design and
claims ownership of it as embodied
in the article of manufacture, which
could be a case or housing for an
electronic product.

Digital Object Identifier 10.1109/MPEL.2019.2947104
Date of current version: 17 December 2019

IEEE POWER ELECTRONICS MAGAZINE

was only the claim language that
The recent case involved a patent
supplied the definition of the protectwhose drawing was solely a depiced article of manufacture. The cortion of a surface ornamentation withrectness of that holding, in the
out an indication of what the surface
court's view, was reinforced by the
covered, so one might think that the
fact that the patent owner had made
surface ornamentation could have
the amendment during the proceedbeen applied to any of a wide range
ings to limit the claim language from
of possible goods. The patent appli"furniture (part of)" to "pattern for
cation originally said that it was
a chair."
applied to "furniture (part of)." The
The test for infringement of a
Patent and Trademark Office examdesign patent is whether an ordinary
iner said that the description was
ob s er ver wou ld pu rch a s e t he
too vague and suggested, instead,
accused device (in this case, the basthat the patent be amended to say
ket) with the pattern on it, believing
that the design was a "pattern for
that he or she was
a chair." Once the
acquiring what the
i nventor adopted
patent called for,
the suggestion, the
The same principles
namely, a chair with
examiner allowed
of law that apply to
the pattern on it.
the design patent.
furniture and chairs
Since a basket is so
Afterward, a comcan apply to items
d i f ferent f rom a
pany made baskets
such as the case or
chair, an ordinary
that had a pattern
housing for an elecobserver could not
on them that looked
be confused, and,
like the one shown
tronics circuit.
therefore, the patent
in the design patent.
was not infringed.
The patent owner
What does this have to do with
sued the basket seller for design patelectronics? The same principles of
ent infringement. Historically, courts
law that apply to fur niture and
have said that the drawings control
chairs can apply to items such as
what a design patent protects, so the
the case or housing for an electronpatent owner thought the similarity
ics circuit. For example, if a compaof the images would carry the day,
ny wants to dress up its goods for
but the design patent owner lost. The
the marketplace, it may adorn the
court said that the claim language to
housing of the electronics with a
"pattern for a chair" limited the
par ticular patter n, for example,
scope of the design patent to chairs,
a novel-looking finish. To protect
even though the limitation to a chair
that look regardless of the shape of
was not shown in the drawing and it

z December 2019

IEEE Power Electronics Magazine - December 2019

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