Q: Is an article “hidden in its normal use”’ eligible for design patent protection?

A: Yes, an article “hidden in use” is protectable so long as the ornamental features are of consumer concern at some point in its commercial lifetime

35 USC 171: Eligibility of Articles Hidden in Use for Design Patents

  • Articles being hidden in normal/final use is not, alone, a prima facie showing of ineligible subject matter for design patents.
  • One must consider the entirety of its commercial life from the moment manufacturing/assembling ends.1
  •  To issue a §171 rejection, the examiner must demonstrate prima facie that a claimed design lacks ornamentality based on an evaluation of the appearance of the design itself.2
  •  Ex: Vacuum cleaner brush replacement, in commercial lifetime, often are not noticed for ornamentality and assessed only for functionality, even if the brush may be visible.³ MAYBE not ornamental.
  • Ex: Vitamin tablets, or caskets, are often noticed for ornamentality, despite being hidden entirely in ultimate use. YES ornamental.

Validity Challenge for Design Patents in Litigation

  • Aesthetic-functionality recently declined to extend to design patents.4
  •  Infringer must demonstrate by “clear-and-convincing” standard that patent protects function rather than ornamentation.5
  • Matter-of-concern test: does a consumer care about the particulars of design/ornamentation at some point in its commercial life?