Design Patents as Alternatives to Utility Patents

Design patents are rarely encountered in the chemical process industry and yet they constitute a significant portion of the patents issued by the U.S. Patent and Trademark Office. The proportion is slowly increasing, with approximately one design patent now being granted for every ten utility patents. While design patents are directed to ornamental features, they are not limited to decorative articles, and a recent case illustrates how a pre-recorded optical disk can qualify for a design patent by virtue of features that are unrelated to anything printed on the disk label.

Design patent application no. 29/058,031 sought a patent on an optical disk whose metallized region is restricted to the central area of the disk, with a relatively wide transparent region encircling the central metallized area and extending to the outer rim of the disk. Since a design patent relies on ornamental features and overall visual effect for patentability, the ornamental and visual effect in this case had to be found in the arrangement of the two regions, or at least in the presence of the wide transparent outer region, rather than any functional effect that the transparent region might have.

Like utility patents, however, the design in a design patent must be both novel and "nonobvious" over the "prior art." In utility patents, the key to patentability is functionality, and nonobviousness is fairly easy to quantify or judge. In design patents, ornamental features and overall visual effect serve as a substitute for functionality. Differentiating between a new design and a prior art design on the basis of ornamental and visual effects is more esoteric––how does one know whether a difference between a new design and a prior art design is obvious or nonobvious?

The prior art that the disk design with the wide transparent rim had to distinguish over was a disk revealed in another patent that was cited as a reference. Like the typical optical disk, the disk in the reference patent had a transparent substrate on which optically readable information was imprinted. The optically readable information was contained in an annular zone, bounded by concentric inner and outer zones that did not contain optically readable information. Since the reference patent was a utility patent, the problem that it addressed was that of defects in the substrate, particularly the portion forming the outer zone, that tend to interfere with the disk readout. The solution offered by the patent was to apply either a matte finish, printing or label to the backside of the entire disk so that any light entering the outer zone from the readout side would be either absorbed or reflected in at least a partially diffuse manner rather than be reflected out by a defect in a manner that would cause a readable signal. The outer zone of the disk in this reference patent was comparable in width to the transparent region of the disk design for which a design patent was now being sought.

In its examination of the design application, the PTO took the view that the design was obvious and therefore not patentable, since conventional disks have a transparent outer rim, and any disk designer who knew of the reference patent with its wide outer zone would consider it obvious to widen the rim of a conventional disk to the width shown in the reference patent and thereby achieve the same design that was now being applied for. The applicants argued to the contrary and took their case to the Court of Appeals for the Federal Circuit, who agreed with the applicants and overturned the decision of the PTO. In rendering its decision, the Court explained that not only did the reference patent treat the disk to obscure the transparent substrate in the outer zone, it did so with a distinct purpose in mind, which was to conceal any manufacturing defects in the substrate. The reference patent therefore expressly discouraged the disk manufacturer from leaving the outer zone transparent, and in so doing, it "taught away" from the design that was not being claimed. Claiming something that the prior art teaches away from is a very effective means of establishing nonobviousness in both utility and design patents.

Since the disk in the design application maintained a transparent outer zone, would it encounter the defect problem addressed by the reference patent? This question did not arise and was neither of concern nor interest to the PTO or the Court in this case, since the application was for a design patent, which by its very nature is concerned only with ornamental features and overall visual effect and not with functionality. Nonobviousness is thus assessed in terms of ornamental features and overall visual effect, but it is interesting to note how the functional reason for the reflective coating in the reference patent helped convince the Court that the ornamental features and visual effect in the new design were nonobvious.