Design Patent and the Ornamentality Requirement

An article of manufacture may receive both a utility and design patent. A design patent is granted to protect the “ornamental aspects of a design” while a utility patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”1 The design patent may be for part of an article and not the design of the complete article.2

Like utility patent applications, design patent applications requires novelty, nonobviousness, enablement and definiteness, among other things, before a patent is granted. However, unlike a utility patent, ornamentality is required for a design patent. This means that the design must not be dictated by function alone.3 If the design is “essential to the use of an article, it cannot be the subject of a design patent.”4

The analysis of whether a design is dictated by function alone should begin by looking at alternative designs, which is “an important factor––if not dispositive­­––factor in evaluating the legal functionality of a claimed design.”5 Courts may also be guided by analyzing the PHG Factors, which are:

  1. whether the protected design represents the best design;
  2. whether alternative designs would adversely affect the utility of the specified article;
  3. whether there are any concomitant utility patents;
  4. whether the advertising touts particular features of the design as having specific utility; and
  5. whether there are any elements in the design or an overall appearance clearly not dictated by function.6

If there are several designs that could serve the same or similar function, the article is more likely ornamental.7 For more information on how to patent a design, contact us. If you have a design patent, you can prevent patent infringement of the same or substantially the same design.8

*The scope of this article is for U.S. patents. For information on filing international patents, contact us.

Other Resources: USPTO Manual of Patent Examining Procedure

1 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d. 1312, 1333 (Fed. Cir. 2015); 35 U.S.C. § 101

2 In re Zahn, 617 F.2d 261 (C.C.P.A. 1980)

3 Ethicon, 796 F.3d. at 1328

4 L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123

5 Ethicon, 796 F.3d at 1329-30

6 Id. at 1330 (citing Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997)

7 Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1460 (citing L.A. Gear, 988 F.2d at 1123-45)

8 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d. 665, 670 (Fed. Cir. 2008) (en banc) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)