1504.01 Statutory Subject Matter for Designs [R-07.2015]
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.
¶ 15.07.01 Statutory Basis, 35 U.S.C. 171
The following is a quotation of 35 U.S.C. 171:
- (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.
¶ 15.09 35 U.S.C. 171 Rejection
The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.
Examiner Note:
This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either full or broken lines.
¶ 15.42 Visual Characteristics
The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.
¶ 15.43 Subject Matter of Design Patent
Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.
¶ 15.44 Design Inseparable From Article to Which Applied
Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
Form paragraphs 15.38 and 15.40 may be used in a second or subsequent action, where appropriate (see MPEP § 1504.02).