Wednesday, October 16, 2013

Is There a “Design of Nature” Exception for Design Patents?

Authors comment: Contrary to the rumors you might have heard, the Ordinary Observer Blog is still alive and well. It turns out that litigating in a rocket docket is not conducive to consistent blogging, but with that out of the way, we will now return to our standard blogging regimen…

One of the most interesting aspects of design patent law is the fact that old cases really matter. One obvious example is Gorham v. White, which the Supreme Court decided in 1872 and which is still cited in almost every design patent decision. But even less routine questions of design patent law are often answered in decisions that are 20, 40, or even 80 years old. For example, a question that often comes up in design patent litigation and prosecution is the issue of designs that are inspired by nature, such as shapes and designs that are modeled after animals or naturally occurring objects. As is so often the case with design patents, the leading authority comes from old cases: two 1935 decisions of the Court of Customs and Patent Appeals both called In re Smith, 77 F. 2d 513 (Smith I) and 77 F. 2d 514 (Smith II).

In both of the Smith cases, the CCPA was asked whether the PTO had properly rejected applications for a design patent on a doll as not constituting design-patentable subject matter. The court described one doll design as follows:

the figure of a naked baby standing, holding its nursing bottle in its right hand, and applying a watch to its ear with its left hand. The appearance of the child is that of intense listening to the sound of the watch. The figure of the infant seems to be that of one about one year of age, and, so far as can be detected, is a representation of a normal child of that age, with no unusual features not found in the ordinary child.

Smith I. However, despite this seemingly unique scene, the CCPA upheld the PTO’s rejection of the designs as unpatentable because “what the appellant has done is to take a natural form, in a natural pose, and utilize it as his design. This does not constitute invention.” Id. Although the applicant pointed to several issued design patents for dolls, the Court held that those designs were distinguishable because each “had unusual, striking features, departing from the ordinary, and which were alluded to in the cited cases, such as the exaggerated headdress, elongated eyelashes, and the spit curls in the ‘Splashme’ doll. Here there are no such abnormal or grotesque features.”  Id.  Below are the patentable doll designs discussed in the case:

The CCPA explained its reasoning in Smith II, stating that "mere simulation or imitation of natural forms, which any artisan has the right to apply to any object, is not properly the subject of a patent." Smith II. “The difference between what constitutes invention and a mere imitation of natural forms suggests itself in the gargoyles of architecture and the unicorn and dragons of English and French heraldry. These abnormal forms might well constitute invention and be the subject of design patents, while mere imitation of reproductions of a normal horse or serpent or human face might not. It is the departure from the normal and usual which, in such cases, might constitute invention.” Smith I.

The Smith cases are still good law. Yet, in the years since they were decided, this obscure rule of design patent law seems to have received little attention, and one can find many examples of seemingly natural designs finding their way through the PTO, apparently without embellished or grotesque features:

However, with the renewed interest in utility patent eligibility under § 101, you may begin to see creative design patent defendants seek to reestablish this defense to design patent infringement. Designers should also seek to embellish their designs whenever possible, to ensure that their validity cannot be called into question for lack of design patent-eligible subject matter.

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