New Federal Circuit Guidelines on Design Patents: Key Points to Remember for Companies Seeking Protection – Intellectual Property


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With few substantive decisions regarding design patents, it is always exciting to see new guidance from the United States Court of Appeals to the Federal Circuit on how these valuable intellectual property assets are prosecuted and enforced. In two recent decisions, the court clarified the correct application of two different parts of the relevant legal provision, 35 USC § 171. In Auto Body Parts Association vs. Ford Global Technologies, the court noted the low level of ornamentation of the designs by refusing to invalidate two patents incorporated in Ford’s F-150 pickup truck. And in Curver Luxembourg, SARL c. Home Expressions, the court noted that the scope of a design patent is limited by the article of manufacture set out in the claim. Both decisions guide the development of effective patent strategies.

ABPA: The ornamentation remains a low bar

Design patents may be granted to inventors of a “new, original and ornamental design for a manufactured article”. 35 USC § 171. Although the article itself is generally functional, the design sought to be protected may not be one primarily dictated by function. This ornamental requirement was the basis of the ABPA declaratory judgment trial.

The ABPA, an association of auto parts distributors, argued in the U.S. District Court for the Eastern District of Michigan that two of Ford’s design patents – one covering the hood of the F-150 and the other the lighthouse – were invalid because they were mainly functional. Borrowing from trademark law and arguing that aftermarket buyers prefer hoods and headlights that match the original appearance of the vehicle, ABPA concluded that the functional benefit of aesthetic compatibility made patents invalid. The district court dismissed ABPA’s motion for declaratory judgment and held that the patents were not invalid under 35 USC § 171.

In asserting the lower court, the Federal Circuit also rejected ABPA’s theory of functionality, holding that, regardless of consumer preference for matching pieces, “the aesthetic appeal of a design to consumers is insufficient to make this design functional “. On the contrary, as Justice Stoll wrote for the court, a preference for Ford’s designs over competing parts that perform the same function “is exactly the kind of advantage in the market” that is clearly envisioned.[d]’by Congress in laws authorizing design patents. “

The Federal Circuit declined ABPA’s invitation to extend the trademark law principle of aesthetic functionality to design patents, explaining that although trademarks and design patents have certain similarities, they serve different purposes. , and “[t]The considerations underlying the doctrine of aesthetic functionality in trademark law simply do not apply to design patents. “

Although the court did not impose a specific test to determine whether a design is functional, case law has often viewed the presence of alternative designs as an indication that the design is primarily used for ornamental purposes. In that case, the Federal Circuit noted that Ford presented “abundant evidence” showing that many alternative headlight and hood designs physically fit its trucks and perform the same functions as the original parts.

The ABPA theory that Ford’s patents were unenforceable under the exhaustion doctrine also failed. Exhaustion is the principle that once a patentee sells an object covered by his patent, the purchaser does not infringe the patent by using the purchased article. It was already well established for utility patents that exhaustion only applied to the specific item sold and did not give the purchaser the right to make additional copies of the patented invention. However, ABPA argued that a different rule should apply to design patents. In particular, ABPA insisted that the sale of an F-150 truck would exhaust Ford’s design patent rights and allow the designs to be used on aftermarket parts intended for use with Ford’s trucks. Ford. In rejecting this argument, the tribunal noted that “we apply the same rules to design and utility patents to the extent possible”. The Federal Circuit found no reason why design and utility patents should be treated any differently with respect to exhaustion, concluding that it “applies only to items sold by or with the permission of the patent holder ”, and that since“ ABPA members ”sales are not authorized by Ford; it follows that exhaustion does not protect them. “

The ABPA also argued that its members have the right to repair their trucks and are therefore free from counterfeiting. It is well established that the purchase of a patented article includes the right to repair it. In the context of utility patents, this right does not extend to the complete reproduction of the patented article or to a license to produce other patented articles independently. The court refused to establish a special rule for design patents with reasoning similar to that used for ABPA’s exhaustion argument, ruling that Ford’s sales of F-150s did not include the right to produce replacement hoods and headlights because “the designs … are covered by separate patents.

The federal circuit ABPA This decision demonstrates the important role that design patents can play in protecting the aftermarket from aftermarket sales by competing manufacturers. It makes it clear that the ornamental requirement is a low bar and that the aesthetic appeal of a design does not in itself make the design primarily functional.

Businesses seeking protection in this space should consider the availability of alternative designs to support an ornamental claim. They should also carefully consider the scope of design patent claims. The ABPA The ruling specifically noted that if Ford had patented its designs in the context of the entire truck, rather than just the headlight or hood, the truck’s purchases would have come with a right to repair the truck by replacing those components. Thus, companies should seek to file design patents on separate components that they expect to replace throughout the life of the product as a whole.

Curver Luxembourg: A case of first impression

The Federal Circuit has also weighed in on the scope of design patent claims in Curver Luxembourg, SARL c. Home Expressions, a first impression case confirming a New Jersey judge’s ruling that Home Expressions baskets with an overlapping “Y” pattern did not infringe Curver’s patent showing a similar design.

While the ornamentation requirement of § 171 was at issue in ABPA, involved in Curver Luxembourg was the legal requirement that the design be applied to a manufactured item. In determining the scope of a design patent, courts have traditionally looked at the numbers shown in the patent. Critically, however, while the title, description and claim of the subject patent, US D677,946, recites a “pattern for a chair”, the figures only show the pattern itself.

Curver sued Home Expressions in New Jersey District Court, alleging that Home Expressions made and sold baskets incorporating the “Y” pattern claimed by Curver and thereby infringed the ‘946 patent. Home Expressions decided to dismiss the case under federal civil procedure rule 12 (b) (6), arguing that its baskets did not infringe because the patented design was limited to chairs. The district court agreed. Applying the “ordinary observer” test for design patent infringement claims, the court interpreted the scope of the design to be limited to the article of manufacture (here, a chair) listed in the patent and a concluded that an ordinary observer would not buy Home Expressions products. basket with an overlapping “Y” pattern, assuming the purchase is for an ornamental “Y” pattern applied to a chair. The court noted that, during the prosecution, Curver changed the title to meet the requirement of the article of manufacture after the examiner found that the original title of “Furniture (part of)” was too vague.

On appeal to the Federal Circuit, Curver argued that the district court erred in relying on advocacy language reciting a “model for a chair,” rather than focusing on the numbers, which only showed not an article of manufacture. The case therefore tasked the federal circuit with answering a single question: how to interpret the scope of a design patent when an article of manufacture is cited in the claim but not shown in the drawings. Concluding that Curver’s argument “does indeed collapse[d] to a patent application on an ornamental surface design in itself“, the court declined to interpret the scope of design patent law so broadly, relying on the precedents and practice of the US Patent and Trademark Office to support its decision that the patents of design are only granted for designs applied to an article of manufacture. when the language of the claim provides the only example of an article of manufacture which does not appear anywhere in the figures ”.

The decision in Curve has several implications for companies seeking design patent protection. In the initial drafting of design applications, companies must strike a balance between limiting the scope of prior art and obtaining broad protection when deciding how to define the prior art. manufactured item to which the design is attached. Companies should consider including support for a range of manufactured items with a different scope in their applications. Companies with pending claims should also consider filing lawsuits claiming their designs applied to articles of manufacture of different scope to the extent that their existing specifications support such claims. Finally, if a reviewer requests a title change during the lawsuit, companies should carefully review all recommended titles to determine the potential impact on the scope of the claim.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.


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