Statutory Subject Matter for Designs

35 U.S.C. 171

Patents for designs.

(a) IN GENERAL.—Whoever invents any new, original,

and ornamental design for an article of manufacture may obtain a patent

therefor, subject to the conditions and requirements of this title.

(b) APPLICABILITY OF THIS TITLE.—The provisions of

this title relating to patents for inventions shall apply to patents for

designs, except as otherwise provided.

(c) FILING DATE.—The filing date of an application

for patent for design shall be the date on which the specification as

prescribed by section 112 and any required drawings are filed.

The language “new, original and ornamental design for an article of

manufacture” set forth in

35 U.S.C. 171

has been interpreted

by the case law to include at least three kinds of designs:

(A) a design for an ornament, impression, print, or picture applied

to or embodied in an article of manufacture (surface indicia);

(B) a design for the shape or configuration of an article of

manufacture; and

(C) a combination of the first two categories.

See

In re Schnell,

46 F.2d 203, 8 USPQ 19 (CCPA

1931);

Ex parte Donaldson,

26 USPQ2d 1250 (Bd. Pat. App. & Int.

1992).

A picture standing alone is not patentable under

35 U.S.C. 171

. The

factor which distinguishes statutory design subject matter from mere picture or

ornamentation,

per se

(i.e., abstract design), is the embodiment of

the design in an article of manufacture. Consistent with

35 U.S.C. 171

,

case law and USPTO practice, the design must be shown as applied to or embodied in an

article of manufacture.

A claim to a picture, print, impression, etc.

per

se,

that is not applied to or embodied in an article of manufacture should

be rejected under

35

U.S.C. 171

as directed to nonstatutory subject matter. The

following paragraphs may be used.