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Kentucky Law Journal Volume 99 | Issue 3 Article 2 2011 Overcoming the "Impossible Issue" of Nonobviousness in Design Patents Janice M. Mueller University of Pittsburgh Daniel Harris Brean The Webb Law Firm Follow this and additional works at: https://uknowledge.uky.edu/klj Part of the Intellectual Property Law Commons Right click to open a feedback form in a new tab to let us know how this document benefits you. Recommended Citation Mueller, Janice M. and Brean, Daniel Harris (2011) "Overcoming the "Impossible Issue" of Nonobviousness in Design Patents," Kentucky Law Journal: Vol. 99 : Iss. 3 , Article 2. Available at: https://uknowledge.uky.edu/klj/vol99/iss3/2 This Article is brought to you for free and open access by the Law Journals at UKnowledge. It has been accepted for inclusion in Kentucky Law Journal by an authorized editor of UKnowledge. For more information, please contact [email protected]. Kentucky Law Journal VOLUME 99 2010-2011 NUMBER 3 ARTICLE Overcoming the "Impossible Issue" of Nonobviousness in Design Patents Janice M. Mueller andDaniel Harris Brean ABSTRACT The United States offers legal protectionfor designs-the overall aesthetic appearances of objects-through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitariandevice mandates a "nonobvious" advance over earlier technology, the patentability of a new and ornamental design requires that it differ from priordesigns to an extent that would not have been "obvious to a designer of ordinary skill who designs articles of the type involved." Ostensiblypromoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that time forward,the design patent system has languishedfrom prolonged inattention ratherthan benefitedfrom any purposeful development. Even the initialimposition of a qualitativerequirementfor "invention" in designs (from which the modern requirement of nonobviousness derives) was likely theproduct of a typographicalerror Failingto appreciatethe fundamental distinctions between designs and utility inventions, the legislature and judiciary have repeatedly sought to assimilate these very different types of intellectualproperty.Nowhere in the design patentsystem is this assimilation more harmful than in the imposition of the nonobviousness requirement. i Janice M. Mueller is a Professor of Law at the University of Pittsburgh, a registered pat- ent attorney, and a former law clerk to the late Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit. Mueller was a Visiting Professor at the University of Kentucky College of Law during the Spring 2oo semester. Daniel Harris Brean is an associate at The Webb Law Firm in Pittsburgh, Pennsylvania, and a registered patent attorney. Our thinking about how to improve legal protection for designs benefited greatly from conversations with Professor Dr. Annette Kur of the Max Plank Institute for Intellectual Property, Competition, and Tax Law, Munich, Germany; Donald S. Chisum, Co-Founder and President, Chisum Patent Academy; and Perry J. Saidman, Principal, Saidman DesignLaw Group. Industrial designers Randy Rossi, Ron Spears, George McCain, Tucker Viemeister, Cooper Woodring, Ron Kemnitzer, Tony Shoemaker, and Paul McGroary provided essential information and insights about the creative process of design. We thank Pitt Law Librarian Linda Tashbook and Pitt Law student Brian J. Jackson for their research assistance. All views expressed herein (as well as any errors) are our own and should not be attributed to our respective employers. We welcome comments by e-mail to [email protected] and [email protected]. 419 42o0 KENTUCKY LAW JOURNAL [Vol. 99 The U.S. Patent and Trademark Office (USPTO) and courts continue to struggle with gauging the nonobviousness of designs despite repeated acknowledgement that the requirement is inapt, subjective, unworkable, and even "impossible." Although design protection would be more appropriatelyprovided through a sui generis system outside the patent regime, a wholesale restructuringof U.S. designprotection appearsunlikely. Nonobviousness therefore continues to be imposedfor design patentability. Our insight is that courts and the USPTO have previously unrecognized flexibility in how they apply the nonobviousness requirement to designs. Drawingfromthe industrialdesign literatureas wellas our interviews with experienceddesigners of differing careerpaths, we conclude that the current nonobviousness framework is fundamentally misaligned with the creative processes and objectives of designers. We accordingly propose a number of powerful yet practical tools for reconceptualizing the nonobviousness requirement in a manner that truly promotes innovation in design. The Federal Circuit's recent decisions in Egyptian Goddess v. Swisa, Titan Tire v. Case New Holland, and International Seaway v. Walgreens signala welcomejudicial receptiveness to rethinking design nonobviousness. The time is rpe to bridge the gap between design patent standardsand the reality of design. ThisArticleoffers a roadmapforovercomingthesupposedly "impossible issue" of applying the nonobviousness requirement to designs. TABLE OF CONTENTS ABSTRACT . .................................................. 419 INTRODUCTION.............................................422 I. THE PURPOSE AND PROCESS OF DESIGN ..... .................... 433 A. The Traditional Purpose and Process of Utility Invention ... 435 B. The Motivation and Methodology of Design .............. 436 II. THE DISCORDANT DEVELOPMENT OF INDUSTRIAL DESIGN AND U.S. DESIGN PATENT LEGISLATION....................................445 A. The Origins of Industrial Design in the United States ........ 445 B. The Impetus for Design Protection Legislation in the United States... ............................... ..... 448 C. The Evolution and Impact of U.S. Design Patent Legislation ....................................... 452 D. Renewed Legislative Efforts Paralleled Emerging Schools of Industrial Design .... ................................ 461 E. Modern Congressional Inaction in the Face of the Design "Problem" ....................................... 465 I1. THE JUDICIARY'S ONGOING STRUGGLE WITH THE "IMPOSSIBLE ISSUE" OF NONOBVIOUSNESS IN DESIGNS ............................... 468 A. The Supreme Court's Mixed Messages in Gorham and Whitman Saddle... ............................. ........ 470 2010-2011 NONOBVIOUSNESS IN DESIGN PATENTS 421 B. Fallout and Dissonance in the Regional Circuits and the C.C.P.A ......................................... 478 1. District and Regional Circuit Cases ................... 478 2. C.C.P.A. Cases .................................. 480 a. In re Schnell's Initial Take on "Applied" Design ........ 480 b. The Apology of In re Faustmann for the Invention Requirement . ................................ 483 c. In re Jennings and In re Glavas on Whether and How to Combine References Cited Against Designs .............. 485 i. In re Rosen Sets the Modern Standard ............. 489 d. In re Laverne versus In re Nalbandian:Shifting Perspectives for the Design Nonobviousness Analysis....... ..... 493 C. Refinement in the Federal Circuit-For Better or Worse ...... 501 1. Clarifying the "Suggestion" Prong ....................... 501 2. Titan Tire Skirts the Looming KSR Issue .................. 507 3. InternationalSeaway Unncessarily Complicates the Analysis.. 511 4. Summary......................................516 IV. RECOMMENDATIONS ........................................... 516 A. Recognize That Supreme Court Decisions Applying the Nonobviousness Requirement to Utility Inventions Have Very Limited, if any, Applicability to Design Patentability ............ 517 B. Fine-Tune the Nonobviousness Requirement for Non-Utility Subject Matter by Looking to the Plant Patent Example ....... 523 C. Utilize Gorham's "Ordinary Observer" as the Statutory "Person Having Ordinary Skill in the Art" When Determining the Nonobviousness of Designs............................527 1. An "Ordinary Observer" Perspective Properly Emphasizes the Visual Nature of Design Patent Subject Matter ............. 529 2. The Validity/Infringement Parallelism of the Gorham "Ordinary Observer" Perspective Should Extend to Design Patent Nonobviousness........ .................. 531 3. The European Union's Design Protection Experience Should Inform the Proposed "Ordinary Observer" Perspective for U.S. Design Patent Nonobviousness ..................... 533 D. Limit Design Anticipation to "Strict Identity" Situations and Apply the Gorham "Substantial Similarity" Test as the Measure of Design Obviousness ................................ 540 E. Modify or Eliminate the Current Procedure of Combining Prior Art Designs to Establish Design Obviousness ... ............. 544 F. Implement Mechanisms in the USPTO to Obtain and Apply More and Better Design Prior Art ... ...................... 549 1. Improve Design Prior Art Searching Capability ............ 549 2. Make More Frequent Use of Examiner Requests for Information .................................... 550 422 KENTUCKY LAW JOURNAL [Vol. 99 3. Publish the Content of Pending Design Patent Applications... 551 4. Summary.... .......................... ...... 552 CONCLUSION ... .............................................. 553 INTRODUCTION make and ornamental features that D productsESIGNs-the visually exterior appealing shapes and desirable to consumers-are fundamentally different from the
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