AN OBVIOUS WAY TO RESOLVE THE DESIGN PATENT NON-OBVIOUSNESS PROBLEM

Is there a better way to protect designs that would take the problem of non-obviousness out of the equation?  You betcha!

As background, as you likely know the Federal Circuit has granted an en banc rehearing in the LKQ v. GM case.  The rehearing raises the significant issue of whether the long-standing test for design patent non-obviousness, as enunciated in the seminal In re Rosen and Durling v. Spectrum Furniture cases, should be changed or overruled in view of the Supreme Court’s KSR case which involved only utility patent non-obviousness.  On its face, this seems to be a ridiculous proposition, since as aptly pointed out by concurring Judges Lourie and Stark in the initial LKQ opinion, utility patents and design patents are such different animals that it makes total sense that the tests for non-obviousness should be different for these distinct forms of intellectual property.

As pointed out in my previous blog post, changing the 40-year-old Rosen standard and the 30 year old Durling standard would have the effect of throwing up for grabs the validity of about 400,000 unexpired design patents that were examined and issued based on Rosen and Durling.  As Laurel & Hardy might comment to the court: what a mess you’ve gotten us into.

There are two questions one must ask.  First, what does it actually mean for a visual design to be “non-obvious” over the prior art?  Second, are design patents the best way to protect industrial designs?

Since the Federal Circuit and numerous amicus briefs will soon address the first question, this blog post will focus on the second question.

The answer to how best to protect industrial designs is neither new nor easy. One scholar has characterized the seemingly intractable problem of protecting industrial designs as “the world’s oldest intellectual property dilemma.” (Graeme B. Dinwoodie, Federalized Functionalism: The Future of Design Protection in the European Union, 24 AIPLA Q.J. 611, 618 (1996)).  Great minds have given great thought to solving this problem by drafting and introducing legislation, organizing ad hoc coalitions, and testifying before Congress, including: Hon. Giles S. Rich, Alan Latman, Henry D. Williams, Pasquale J. Federico, Cooper Woodring, Senator Herman Talmadge, Congressman Carlos Moorhead, and several Registers of Copyright (e.g., Thorvald Solberg, Arthur Fisher, Barbara Ringer, and Ralph Oman).

Absent some new approach to protecting industrial designs, we are left with the design patent system, one which, through an unfortunate accident of history, was shoehorned into the utility patent system (35 USC 101 et seq) that was crafted largely to protect functional and utilitarian features of products rather than their visual features that were left to design patents.  There are many sections of 35 USC that simply make no sense when it comes to design patent subject matter, and non-obviousness (35 USC 103) is one of them.

What’s the answer?  I posit that adopting a new system for registering designs (instead of examining them) should be given serious consideration.  Two of the main advantages of a design registration system, such as the one used in the European Union, are that it would be faster and cheaper than our current system that requires design patent applications to be examined by the USPTO for novelty, nonobviousness, written description requirements, functionality, etc.  Recently a lot of time has been spent to determining the “article  of manufacture” to which the patented design must be applied, as required by 35 USC 171.  Clearly, our design patent examination system soaks an incredible amount of time and money.  No design patent practitioner could say otherwise.  And after the design patent applicant jumps through all those hoops, all of the same issues involving patentability can then be raised again as a defense in an infringement suit to enforce the patent.   Why not do it once?  Issue a quick and relatively inexpensive design registration, and then if it comes time to enforce it, let the accused infringer raise all the invalidity defenses it wants.

This is a clear way to resolve the design patent nonobviousness brouhaha.  I believe that a design registration system would better serve designers, their employers and clients, and the involved government agencies. 

I am not alone in this belief.

The late, great Judge Giles Rich spoke directly about this in the seminal case of In re Nalbandian 661 F.2d 1214 (C.C.P.A. 1981) [note:  the C.C.P.A. was the predecessor court to the Federal Circuit].  The main issue in Nalbandian was whether the person judging non-obviousness should be an ordinary observer or ordinary designer, the court deciding on the latter.

In his concurring opinion, the legendary Judge Rich, intimately involved in design protection, not only questioned the wisdom of using non-obviousness as a measure for determining patentability of designs, but offered a sensible, workable solution:  adopt a design registration system.

Some form of design registration system has been advocated since 1914 when a group called the Design Registration League (which included stove manufacturers, Eli Lilly & Co., Meinecke & Co., Cadillac Motor Car Co., and pocket watch, lace and embroidery manufacturers) went before Congress to propose amending the copyright statute to protect industrial designs using a registration system.  It bears serious consideration today, especially in view of the LKQ brouhaha.

Judge Rich’s entire quote from Nalbandian is worthy of reading.  He said:

“The real problem … [is] … the necessity under Title 35 of finding non-obviousness in a design. (emphasis added). The problem long antedates 1952 and its Patent Act and existed from the beginning, the pre-1952 test being the presence of "invention" in a design. The problem was well known to the drafters of the 1952 Act (of which I was one) and it was also known that many prior legislative efforts had been made to solve it. When work on revision of the patent statutes began in 1950, a deliberate decision was made not to attempt any solution of the "controversial design problem" but simply to retain the substance of the existing design patent statute and attack the design problem at a later date, after the new Title 35 had been enacted.  Records I made in the mid 50's show that, beginning in 1914, some 45 bills were introduced in the House and Senate directed to some improved form of protection for designs. Many of these bills were, of course, duplicates, substantially the same bill being introduced in each house or reintroduced in successive years. Those interested in the history can examine Barbara A. Ringer's 70-page Bibliography on Design Protection published for Copyright Office use June 1, 1955, and an enlarged 160-page version or "supplement" compiled by W. Strauss, Varmer, Caruthers, and Berger on June 1, 1959, bearing the same title. Fabulous amounts of time and effort have been poured into solving the design protection problem with, to date, no legislative solution. See also Kelsey M. Mott's two-installment article The Standard of Ornamentality in the United States Design Patent Law, 48 ABA J. 548, 643 (June, July 1962). Thus it was that the patentability of designs came to be subject to the new § 103 which was written with an eye to the kinds of inventions encompassed by § 101 with no thought at all of how it might affect designs. (emphasis added). Therefore, the design protection problem was in no way made better; perhaps it was made worse. The intention of the drafters of the 1952 Patent Act to tackle the design protection problem was carried out, by both the private and public sectors, commencing in 1954, by a new "Coordinating Committee" of which I was chairman, and by 1957 new legislation was introduced in the 85th Congress, 1st Session in the form of Willis Bill H.R. 8873. In the 86th Congress, 1st Session, S. 2075 was introduced by Senators O'Mahoney, Wiley, and Hart, being the same bill in substance. From that time on, the legislative effort was continuous until the bill became Title III of the Copyright Revision Bills, later became Title II, and finally was jettisoned to facilitate passage of the main bill, the Act of October 19, 1976, Pub.L. No. 94-553, now 17 U.S.C. § 101 et seq. (1977). Congressmen said they would deal with designs later. The point of this review is to call attention to the resulting presently pending legislation, H.R. 20, 97th Congress, 1st Session, introduced January 5, 1981, by Mr. Railsback, a bill "To amend the copyright law, title 17 of the United States Code, to provide for protection of ornamental designs of useful articles." The present case and its companion, In re Spreter, 661 F.2d 1220 (Cust. Pat.App.), concurrently decided, are but the latest examples of the need for a law tailored to the problems of designers, of their employers and clients in the business world, and of the government agencies now concerned. (emphasis added). The now pending legislation is substantially the same bill introduced in 1957, after the refining process of 24 years of legislative consideration. It is time to pass it and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. (emphasis added).”  

He went on to say:

“Commissioner of Patents and Trademarks Gerald Mossinghoff in his maiden speech to the ABA Patent, Trademark and Copyright Law Section in New Orleans on August 8, 1981, said:  “We are again urging enactment of an inexpensive and effective form of registration protection for designs and, specifically, we are supporting H.R. 20 introduced by Congressman Railsback last January largely because the concept of unobviousness is not well suited to ornamental designs. We believe a registration system, such as that contemplated in H.R. 20, would serve industry better at lower cost. [Judge Rich’s emphasis.] The bar would do well to devote its energies to backing this effort of the PTO rather than pursuing appeals such as these which may sometimes result in patents to "extraordinary" designers whose patents, as the Commissioner also pointed out, may then suffer a 70% mortality rate in the courts at the hands of judges reviewing the § 103 unobviousness of the designs. (emphasis added).”

In 1987 Judge Rich testified in the US Senate hearings in favor of a sui generis industrial design law: “The main purpose of the bills before you is to create a more equitable, practical and workable law for the protection of ornamental designs than the inequitable conglomerate we now have, namely, inadequate patents, overprotective copyright and a great middle ground still inadequately provided for.” (The Industrial Innovation and Technology Act: Hearings on S. 791 Before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary. 100th Cong., 22 (1987)).

The failed efforts to create a design registration system referred to by Judge Rich carried through to the early 1990s when the last such bills were introduced (H.R. 902, H.R. 3017, H.R. 3499).  They failed to pass, due in large part to staunch opposition from the auto parts knock-off industry.

Then something interesting happened. The boat industry, in desperate need of protection against rampant knocking off of vessel hulls, resurrected the most recent drafts of the failed design registration bills and cleverly defined “vessel hulls” as the designs to be protected.  This resulted in legislation directed only to the registration of vessel hulls.  That bill, now known as the Vessel Hull Design Protection Act of 1998, 17 U.S.C. 1301 et seq., (hereafter the Vessel Hull Act) passed Congress without objection.  The U.S. Copyright Office was charged with implementing the system.  Although infrequently used, it is a template for a successful design registration system, having its roots in legislation introduced periodically in the previous 75 years, including those spearheaded by Judge Rich. 

Then another curious thing happened.  Several years after implementation of the Vessel Hull Act, the fashion design industry desperately needed to protect against the copying of high fashion, Paris-runway designs that were knocked off within weeks of introduction. Quick protection was critical since the half-life of fashion designs was perhaps 3 months.  The fashion industry saw the success of the Vessel Hull Act, and got legislation introduced (The Innovative Design Protection and Piracy Prevention Act [H.R. 2511]) to amend the Vessel Hull Act to add fashion designs to vessel hulls as the two classes of goods that could be registered. However, the Fashion Bill, as it was called, faced stiff opposition from the California-based knockoff clothing industry, and despite being re-introduced over several years, and having had several Congressional hearings, never passed.

The Vessel Hull Act exists and operates today as this country’s only design registration system (excluding the rather unrelated Semiconductor Chip Protection Act of 1984 which upon registration protects the layout of an integrated circuit). 

Clearly, the Vessel Hull Act – already a law - is a template of what can be done to register all industrial designs, by simply substituting “designs” for “vessel hulls”. 

Enactment of a design registration system is a ready alternative to answering  the unanswerable question of what a non-obvious design is. And a registration system will be easy to implement since it can simply be an amendment to a design protection law that’s already on the books.

It’s obviously time to move away from nonobviousness. 

I will follow up this post in a few days to describe my previous efforts to promote a design registration system.