A Non-Obvious Design: Reexamining the Origins of the Design Patent Standard

Jason J. Du Mont, A Non-Obvious Design: Reexamining the Origins of the Design Patent Standard, 45 Gonz. L. Rev. 531 (2010).

[PDF]    [Westlaw]    [LexisNexis] %CODE1%

I. Introduction

In Egyptian Goddess v. Swisa,1 the Federal Circuit recently ruled that the ordinary observer test is the sole test for determining design patent infringement, and it advised district courts they need not provide detailed verbal descriptions for design patents during claim construction.  Many commentators heralded this decision as ushering in a new era for design protection in the United States.2  While its holding should make it easier to enforce design patents,3 the origin of its issues lies much deeper than claim construction verbalization or its test for infringement.  Rather, the fundamental problem is that design patents simply cannot be viewed through the same substantive lens as utility patents.4  Indeed, many of the issues in Egyptian Goddess and throughout the history of American design patent jurisprudence result from courts blindly forcing or tweaking substantive and procedural laws from the utility patent context to fit the peculiar nature of designs.5  Consequently, design patent protection has witnessed dramatic pendulum swings between under and over-protection with more frequency than any other area of intellectual property law.6  This pattern will continue to repeat itself until Congress decouples certain utility patent requirements from design patents.7

One of these substantive requirements is nonobviousness.8  As a major hurdle to the grant of all patents, the nonobviousness requirement is one of the main levers used by the Patent Office and courts to deny design patent protection.9  Unfortunately, this bar to patentability enjoys a history that is nearly as obtuse as design law generally.10  The nonobviousness requirement, now codified in § 103 of the 1952 Patent Act, traces much of its genesis to the Supreme Court’s opinion in Hotchkiss v. Greenwood.11  The prevailing view of courts before Hotchkiss was that the subject matter of a utility patent need only be new12 and useful, no matter how simple or obvious the innovation.13  In the now infamous “doorknob case” the Court stated:

[U]nless more ingenuity and skill in applying the old method . . . were required . .     . than were possessed by an ordinary mechanic acquainted with the business,     there was an absence of that degree of skill and ingenuity which constitute     essential elements of every invention.  In other words, the improvement is the     work of the skillful mechanic, not that of an inventor.14

This language, forged from the ambiguous rubric of “invention,”15 spawned a century’s worth of efforts to define just how far beyond novelty a patentee must go.16  Indeed, only forty years after Hotchkiss, a weary Supreme Court lamented that invention simply could not be defined.17

Framed as a condition to patentability by the 1952 Patent Act,18 rather than the rubric of invention, it is now clear that the nonobviousness requirement applies to both utility and design patents.19  However, a careful review of the history of the early design patent acts suggests that the application of this requirement to design patents was not foreordained, nor does it remain appropriate today.  Indeed, this Article will demonstrate why the rubric of invention was likely never intended to apply to design patents at all.  Drawing from seldom-viewed personal letters, drafts of bills, and patent commissioner decisions from the 19th century, this Article contends that the nonobviousness requirement was actually forced on design patents through an odd series of administrative, legislative, and judicial mishaps.  It is clear from the countless number of design bills proposed since these events that industrial design protection does not fit within the strict confines of utility patent precedent.  Applying a historical lens, this Article establishes yet another basis for policy makers to free design patents from the unworkable and inappropriate nonobviousness requirement.

Part II of this Article chronicles how the early Patent Office commissioners inadvertently laid the foundation for the application of invention’s rubric to designs by eroding distinctions in subject matter and scope between design and utility patents.  Prior to this development, design patents’ substantive requirements were treated differently than those of utility patents.  From 1842 through the enactment of the 1870 Patent Act, the Patent Office and courts did not require designs to be the product of invention.  Rather, they were granted and adjudicated based on little more than novelty.20  This low threshold of patentability, coupled with increasing numbers of fraudulently cloaked design patents sought for purely functional innovations, led to rampant abuse by design patent applicants.  Those who could not meet the substantive requirements for a utility patent simply applied for a design patent instead.  Additionally, because marking conventions at the time did not distinguish between design and utility patents, the public had no idea which type of protection a manufacturer was claiming.

Part III details how the Commissioner of Patents impulsively sought to correct these abuses by equating design patents to utility patents and applying the same substantive standards to both.  Placing new weight on the statute’s language—which granted design patent protection to applicants who, by their “own industry, genius, efforts, and expense, ha[ve] invented or produced any new and original design for a manufacture”21—the Commissioner’s decisions proclaimed that design and utility patents must both be produced by inventive genius. Nearly thirty years after Hotchkiss, this was the first time that the rubric of invention had spread from utility to design patents.  Its application gained even more traction when, in what can only be described as a typographical error in the Revised Statutes, the statutory language of the design section was altered to grant design protection to applicants who had “invented and produced any new and original design[s]” under the same conditions.22

Part III further demonstrates how courts breathed new life into another section of the design statute in order to impose the requirement of invention on design patents.  This so-called catchall section simply applied the regulations and provisions governing utility patents to designs.  Although it was merely intended to apply limitations related to prosecution and enforcement, it became the perfect back door for courts to apply utility patent precedents, like the invention requirement, to designs.

Part IV of this Article concludes by reviewing the role that invention and nonobviousness have played as requirements for design patent protection in the 20th century.  It shows how the haphazard adoption of the nonobviousness requirement for all patents in the 1952 Patent Act removed any discretion that courts had in applying the common-law doctrine of invention and preserved the confusion surrounding industrial design protection. %CODE2%
%CODE3%

II. The Major Impact of the Early Patent Commissioners: Merger of Subject Matter & Scope From 1842 to 1871

The early Patent Office commissioners had an enormous impact on the development of the patent law and its practice.  The role of Commissioner of Patents was created at the same time as the modern Patent Office, under the 1836 Act.23  Prior to this Act, from 1793 to 1836, patents were granted through a system of registration,24 which many felt produced a “mass of worthless and conflicting patents, . . . excessive litigation[,] and many cases of fraud and extortion.”25  Congress reacted by reinstituting substantive examination26 under a radically different administration than the first patent act.27  The passage of the 1836 Act,28 along with a fire that completely destroyed the Patent Office a few months later,29 sparked a rebirth for patent law in the U.S.30  As the new face of its administration, the Commissioner of Patents was perfectly positioned to strongly influence the development of the new laws.31  Indeed, the Commissioner was the single highest appellate body within the Patent Office from 1836 to 1927,32 and his decisions became the main lens through which the new laws were interpreted by manufacturers, patent examiners, and courts.  These decisions were normally given great weight because they generally reflected the uniform practice of the Patent Office and provided insight regarding the intent of the law.33  Moreover, from 1869 until the turn of the 20th century, they were more readily available than most judicial opinions.34  The commissioners not only helped interpret the patent law, but they also were heavily involved in its legislation.  Indeed, they frequently suggested revisions in their annual reports to Congress,35 and some commissioners even played active roles on Congressional Patent Committees throughout its numerous amendments.36  More importantly, much of the evolution of design patent law before the 20th century can be attributed to the enormous impact of the early patent commissioners.

From 1842 to 1869 patent commissioners and courts treated the substantive requirements for design patents as separate and distinct from their utility patent counterparts.37  It was the compartmentalization of these two regimes that kept the widespread rubric of invention in utility patents from spreading to designs.  During this time, however, the Patent Office and courts struggled with the issue of functionality in design.  Today, design patents are not granted to designs that are “dictated by function alone.”38  This doctrine, however, did not fully develop until the design patent act began to resemble its modern form.39  As a result of its discordant treatment, the Patent Office and courts often impermissibly merged the subject matter and scope of protection granted to utility and design patents.  Indeed, this merger eventually led one commissioner to decree that all patents must exhibit the exercise of inventive genius.40  This Section will discuss this movement by tracing the merger of utility and design patent standards, resulting ultimately in the application of the nonobviousness requirement to designs.

A. Commissioner Ellsworth: The Act of 1842

In the United States, industrial design protection has always been an afterthought.41  It took half a century after the first federal patent and copyright acts were passed before design protection was even proposed.42  Many scholars attribute the impetus for the first act to Henry Ellsworth’s,43 Commissioner of Patents, annual congressional Patent Office report for 1841.44  However, the legislative history is not entirely clear on this point.  Indeed, a year prior to Ellsworth’s report,45 the Senate and House of Representatives received a petition from a large number of manufacturers and mechanics in the U.S. requesting some form of protection for designs.46  In the letter, the petitioners argued:

[T]he frequent ornamental and other improvements which are and can be made in articles of manufacture have rendered necessary a registration of new designs and patterns; that ornamental and useful changes can, in many cases, be made in the design and form of articles of manufacture, for which no patent can be obtained; that the said new designs and patterns often require a considerable expenditure of time and money, and can be made use of by any person so disposed, in such a manner as to undersell the inventor or proprietor.47

While the petitioners called for design protection by manner of registration, they did not request that it be protected under the aegis of the patent system.48  In an attempt to use international law to advance domestic change, they also pointed out that Great Britain’s Parliament recently passed legislation to protect designs,49 and they could “confidently affirm that the articles manufactured by them would equal any others in beauty, if new designs and patterns were secured by registration.”50  These British laws notably granted copyright protection—upon registration and deposit—to new and original designs.51  Nevertheless, the petitioners’ request for design protection is paradoxical, given the propensity of U.S. manufacturers, at the time, to copy foreign designs.52

Commissioner Ellsworth’s Annual Report for 1841 echoes many of the same sentiments in the manufacturers’ petition, such as competition with other nations that have design laws and the larger issue of pirating designs.53  Although he seemed to envision this form of protection for “new and original”54 designs somewhere between copyright and patent protection,55 he might have inadvertently precluded this by later stating:

All this could be effected by simply authorizing the Commissioner to issue patents for these objects, under the same limitations and on the same conditions as govern present action in other cases.  The duration of the patent might be seven years, and the fee might be one-half of the present fee charged to citizens and foreigners, respectively.56

Perhaps the most significant source of confusion surrounds the middle portion of this quote.  What did Commissioner Ellsworth mean when he suggested that design protection could be granted “under the same limitations and on the same conditions as govern present action”?  Were designs supposed to be subject to the same grounds for patentability?  The most plausible answer is that he was referring to limitations related to the acquisition of these new rights, such as claiming, filing, and general prosecution practice.  When read as a whole, this is also the only place in the report that addresses how these new rights could be effectuated.57  Although the legislative history from the first design act is sparse, the report, petition, and contemporary British design laws58 can account for most of its language and scope.59

Less than a year after the Commissioner’s letter, on August 29, 1842, Congress enacted the first statute authorizing patent protection for designs.60  It provided protection to citizens who by “their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture.”61  It also adopted the term, fee, and subject matter advocated in Commissioner Ellsworth’s annual report. 62  He had suggested that protection last seven years, cost half a utility patent, and apply to certain articles of manufacture (e.g., protecting designs for textiles, metals, busts, statutes, general shapes or configurations for articles of manufacture, etc.).63  Unfortunately the legislative history for this Act does not reveal why Congress adopted the terminology “invented or produced,”64 but it is clear that Congress envisioned the design patent standard differently than the utility patent standard.  Under the general patent act, utility patents were available to any person who “discovered or invented any new and useful art, machine, manufacture, or composition of matter.”65  Moreover, utility patents did not have to be created by “industry, genius, efforts, and expense.”66  This emphasis on the mode of creation and the amount of effort necessary to qualify for a design or utility patent was not unique to the patent system at the time.  Rather, similar analogies can be drawn to classic interpretations of the originality requirement in early American copyright law.67  Although the language of the utility and design patent statutes differed from each other, Congress did not provide any parameters for distinguishing the “discovery or invention” required for utility patents from the “production or invention” required for design patents.  Consistent with the Commissioner’s annual report, the 1842 Act also included a so-called catchall section, which adopted the patent act’s regulations and provisions related to obtaining and protecting utility patents that were not inconsistent with the 1842 Act.68  This section operated as shorthand for the Act’s drafters, saving them from reproducing the claiming, prosecution, and enforcement sections from the utility patent statute.69

While Commissioner Ellsworth might have envisioned design protection somewhere between copyright and patent, the question of where exactly it fell in the spectrum ultimately came to rest with the Patent Office.70  Most scholars attribute the incorporation of design protection into the patent regime to three things.71  First, the most concrete proposal came from the Commissioner of Patents.  Since Congress had adopted the subject matter advocated in his annual report, why not also adopt the “simple” procedure that he suggested.72  As the first commissioner under the 1836 Patent Act—which among other things, revived substantive examination for the first time since 1793—Commissioner Ellsworth was in the perfect role to ensure that this new form of protection was being appropriately granted.73  Second, the designs applied to articles of manufacture, which were already within the province of patent law, rather than to the “purely intellectual products” of copyright law.74  And lastly, there was no central copyright depository or registration at the time.75

One overlooked but congressionally persuasive reason for incorporating design protection in the patent regime is that it would also drive revenue into the federal government.76  At the time, each copyrighted work only generated 50 cents for the district court that it was deposited in—essentially paying the clerk to store, record, and transmit the work to the Secretary of State—but it did not generate any money for the U.S. treasury.77  By comparison, a granted design patent brought at least fifteen dollars directly into the treasury or Patent Office.78   Indeed, the senator that introduced the bill in 1842 described it as “intended to apply the rights of patents to new objects, and thereby bring additional revenue into the patent department.”79 Unfortunately for the treasury, very few design patents were ever granted pursuant to the 1842 Act.80  It is unknown whether this was the result of stringent examination or limited applications.  Additionally, little is understood about the patentability of designs under the 1842 Act because Patent Office decisions were not published until 1869,81 and there were only three reported cases involving design patents granted under the Act.82  Although this time period under the 1842 Act can be characterized as relatively quiet, in comparison to utility patents, two different patent commissioners’ annual reports reveal frustration with this new form of protection.83  By 1851, Commissioner Thomas Ewbank even called for removing design prosecution from the Patent Office altogether.84  Instead of protecting designs for articles of manufacture under patent law, and designs for engravings under copyright law,85 he proposed a single, unified registry for all designs.86  Likely reflecting his view that the new regime should follow a copyright model, Commissioner Ewbank also argued the registry should be handled by the district courts87 because placing “it in this Office gives it too much the prestige of a patent.”88

B. Commissioners Foote, Hodges & Fisher: The Act of 1861

About a month before the Civil War began, Congress made some minor changes to the design patent act when it passed the Act of 1861,89 effectively repealing portions of the 1842 Act.90  However, the design section was only one small portion of the 1861 Act.91  Rather, Congress’s goal was to improve the practice of the Patent Office by, among other things, giving it subpoena power,92 changing its internal appellate process,93 increasing salaries for some of its officials,94 and updating its fee structure.95  In fact, it was the alternation of the fees and terms for utility and design patents that likely necessitated including the design section in the 1861 Act.96  For utility patents, the Act changed the fee structure and term of protection from fourteen to seventeen years.97  And design patents went from a fixed seven-year term to a three-and-half, seven, or fourteen-year term that was elected during prosecution and subject to different fees.98  The Act also made some slight changes to the subject matter that was eligible for protection—removing “new and original design[s] for the printing of woolen, silk, cotton or other fabrics.”99  However, the most notable distinction between the two acts is the absence of any catchall section, as included in the Act of 1842, which might have made the regulations and provisions from utility patents applicable to designs.100  The most likely explanation for the omission of the catchall section was that the 1861 Act now specified most of the terms in the 1842 Act that were made by reference to the general patent laws.101  For example, instead of specifying the fee for a design patent, the 1842 Act provided that it was “one half the sum” of “the now existing laws.”102  Now that the 1861 Act expressly included these details (e.g., $10.00, $15.00, or $30.00 depending on the elected term), the catchall section was no longer needed.103

In Wooster v. Crane, the Circuit Court for the Southern District of New York was the first court to give judicial construction to the Act of 1861.104  At issue, was the validity of a design patent for “a reel for containing ruffles, ladies’ dress-trimmings, and other goods.”105

[Image removed]

The reel106 was made from “two parallel disks of pasteboard [in the shape of a rhombus, and] connected by four bits of wood, on which the ruffle . . . [was] wound, between the pasteboard sides.”107 The court’s analysis focused on the rhombus shaped pasteboard because “the reel itself, as an article of manufacture, [was] conceded to be old and not the subject of a patent.”108  Although the exact rhombus shape had never been applied to reels, the court found for the defendant because it was a well-known “mathematical figure” that was commonly applied to other articles of manufacture.109  Interpreting the statute’s language, the court stated:

[A]lthough it does not require utility in order to secure the benefit of its     provisions,     [it] does require that the shape produced shall be the result of     industry, effort,     genius, or expense, and must also, . . . be held to require that the     shape or     configuration sought to be secured, shall at least be new and original as     applied     to articles of manufacture.110

The court also proclaimed that the only “advantage” of its shape was its incidental use as a trademark.111  This use for design patents as a substitute for federal trademark protection is worth noting because some applicants prior to the 1870 Act, which granted federal trademark protection for the first time, sought design patents to fill in the gap.112

Although Wooster was decided well after Hotchkiss, the court did not require the design to be the result of invention, nor did it employ any of its associated phraseology.  It placed weight on the language of the statute that required a certain level of “production,” or labor, and not “invention.”113  Moreover, it lowered the patentability hurdle by modifying the statute’s language, which required the design to be created by “industry, genius, efforts, and expense,” to only whether it was created by “industry, effort, genius, or expense.”114  Although the court seemed to treat these initial terms of the statute as substantive requirements, it did little more than recite them.115  It is significant, however, that the court discussed the design’s manner of production, as opposed to its end result.  Nevertheless, courts and commentators during this time universally read Wooster as indicating a low order of patentability for designs.116

In sum, commissioners and courts from this early epoch in design law largely treated design patents’ substantive requirements differently than those of utility patents.117  The statutes were physically separate from one another because they were codified at different times and existed in different volumes of the Statutes at Large.  They were also conceptually separate because of the dissimilarity in their methods of creation and purpose.  Indeed, it was the compartmentalization of design protection—as a third form of protection between copyright and patent—that helped keep the rubric of invention in utility patents from spreading to designs.118  However, the wall between design and utility patent standards would not last.  Indeed, the following three sub-sections will briefly trace how three commissioners under the 1861 Act helped shatter that barricade and ultimately cleared a path for the invention requirement to move from utility to design patents.

1. Commissioner Foote: Crane

In his last decision as Commissioner of Patents, and the first published appellate commissioner decision dealing with design patents in 1869,119 Commissioner Elisha Foote120 chipped away at the perceived barrier between design and utility patents.121  In Crane, 122 the applicant designed a paper box that contained compartments for holding ladies’ furs.123

[Image removed]

After being denied a utility patent for not rising to the level of what the examiner termed a “new invention,” the applicant sought a design patent.124  However, this application was also rejected by the examiner and the Board of Examiners-in-Chief because they construed the Act as only covering “designs for ornament merely; something of an artistic character as contradistinguished to those of convenience or utility.”125  In other words, the Board rejected the application because the design did not possess ornamental features that could be distinctly separated from the underlying utilitarian article (i.e., box) they were applied to.  This approach to functionality was applied similarly in contemporary British design protection126 and is closely analogous to the modern separability requirement for protecting designs as works of applied art in Copyright law.127

On appeal from the Board, Commissioner Foote noted that the statute “does not say ‘ornamental’ design, or ‘artistic’ shape or configuration, and I am unable to perceive any good reasons why designs for utility are not fairly and properly embraced within the statute, as well as those relating to ornamentation merely.”128  Underscoring the difficulty of distinguishing between what was utilitarian or merely for ornament,129 he further stated:

I can perceive no necessity for the distinction.  There is a large class of improvements in manufactured articles that are not regarded as inventions, or as coming within the scope of general patent laws.  They add to the market value and saleability [sic] of such articles, and often result from the exercise of much labor, genius, and expense.  They promote the best interests of the country, as well as the creations of inventive talent.  It seems to me to have been the intent of Congress to extend to all such cases a limited protection and encouragement.  Whenever there shall be produced by the exercise of industry, genius, efforts and expense any new and original new design, form, configuration, or arrangement of a manufactured article, it comes within the provisions and objects of the act creating design patents, whatever be its nature, and whether made for ornament merely, or intended to promote convenience and utility.130

Without any further analysis, Commissioner Foote overruled the Board and granted the design patent for the box.  Notably, the Commissioner analyzed the design’s patentability as the overall arrangement or configuration of the article.131  He did not try to separate the box’s ornamental and functional elements.  Nor did he treat separability either as a threshold requirement for a design patent, or as a starting point for a novelty analysis.  Furthermore, the Commissioner placed emphasis on the language of the statute, requiring that the new design be produced by “industry, efforts, genius, and expense.”132  Similar to Wooster, design patentability seemed contingent upon its method of creation.  However, he too did little more than recite the standard.

At its narrowest construction, Crane meant that a design for an article of manufacture could not be denied patentability for merely having (i.e., de facto) functionality.  In other words, applicants did not have to demonstrate that their design was merely ornamental or that it contained separable ornamental elements.  As a class of inherently utilitarian articles, a narrower holding would vitiate shapes or configurations of articles of manufacture as a protectable class of design patents.  However, as Professor Gerard Magliocca points out, Crane could also be read broadly to indicate that a design could meet the patentability requirements through a combination of its aesthetic and utilitarian features (e.g., extending protection to de jure functional designs that are dictated solely by function).133  Although the Commissioner’s reasoning kept him from making a superficial distinction between the box’s ornamental and functional elements,134 the unfortunate corollary of his broad language led to an overlap between the scope of protection for design and utility patents.135

2. Acting Commissioner Hodges: Solomon

Less than four months later, in Solomon, Acting Commissioner Hodges136 applied Crane’s reasoning to extend137 the term of a design patent for an inkstand.138  To show that the design patent’s139 value to the public merited an extension, the petitioner submitted affidavits that accounted for the inkstand’s functional advantages.140  Despite never differentiating between its functional and ornamental value, Hodges granted the extension based solely on the affidavits.141  Applying Crane,142 he reasoned that the design patent covered “not only the beauty of the inkstand in point of form, but also all those advantages in point of utility and convenience, which result from its configuration . . ..[s]ome of these are old, it is true, but the combination of the whole is new.”143  Although Crane properly taught that the article could have (i.e., de facto) functionality, it did not explicitly extend the design patent’s scope of protection to those functional features.144  Rather, Hodge’s decision in Solomon was the first opinion to indicate this natural progression.

3. Commissioner Fisher: Bartholomew

In Bartholomew, Commissioner Samuel Fisher not only adopted the broad reading of Crane, but he also applied a much lower standard of patentability for designs than utility patents.145  The decision begins by parsing the language of the 1861 Act into five separate subject matter classes for designs.146  Commissioner Fisher believed that “[t]he first three of these classes . . . seem[ed] to refer to ornament only; the fourth, to ornament combined with utility, as in the case of trade-marks; and the fifth, to new shapes or forms of manufactured articles, which, for some reasons, were preferable to those previously adopted.”147  In this case, the applicant’s eraser148 fit into the fifth design class, as “[a] new and original shape or configuration of any article of manufacture.”149

[Image removed]

Next, Commissioner Fisher characterized the disputed questions under this class as follows: “(1) What variations may be claimed or covered by the patent, consistently with unity of design? (2) Is a new shape of an article of manufacture, whereby utility is secured, a subject of protection under this act? and (3) Is mechanical function of any kind covered by it?”150

Denying the applicant’s broad design claim, the Board of Examiners-in-Chief characterized the scope of protection afforded to designs by the Patent Office as uniformly covering only the figure that was fixed in the patent.151  Therefore, slight variations in protected designs were considered new and patentable.152  The Commissioner, however, did not agree that the practice of the Patent Office or the courts had been so uniform.  He reasoned that a new design “might be so generic in its character as to admit of many variations, which should embody its substantial characteristics and be entirely consistent with a substantial identity of form.”153  Because these patents cover designs that produce substantially the same appearance, and the law does not expressly restrict broad claiming for designs,154 then it follows that design patents could “be granted for a new genus or class of ornaments, as well as for specific ornaments,” so long as they are properly claimed.155  Indeed, by allowing applicants to broadly claim their designs, Commissioner Fisher openly applied claim conventions from utility patents to designs, further blurring their demarcation.

Despite these similarities, he treated their patentability requirements much differently.  Commissioner Fisher openly applied a much lower patentability standard for designs.156  He believed, “From the nature of the subject matter, there must always be more latitude in the issue of patents for trifling changes of form or outline, since it is only necessary that such changes should constitute a new design to entitle them to a patent of this class.”157  Accordingly, the eraser’s design was patentable as long as it was not substantially similar to another design.158

Analogous to the characterizations of the Patent Office in Crane and Solomon, the Board of Examiners-in-Chief also rejected the design application because the practice under the 1842 and 1861 Acts was uniformly understood to cover “articles making pretensions to artistic excellence, exclusively.”159  However, Commissioner Fisher again disagreed with this observation.160  He reasoned:

[D]enying that a new ‘shape or configuration’ of an article, whereby utility or convenience is promoted, is the proper subject of a patent, . . . the office would seem to have involved itself in the absurdity that if a design is useless it may be patented, whereas if it be useful it is entitled to no protection.

….

Articles have been, and are being constantly, patented as designs which possess no element of the artistic or ornamental, but are valuable solely because, by a new shape or configuration, they possess more utility than the prior forms of like articles.161

Adopting Commissioner Foote’s reasoning in Crane, Commissioner Fisher held that this fifth class of new and original shapes or configurations must include new changes of form that increase the object’s utility.162  As a result, he allowed the design claim for a rubber eraser contingent upon a slight amendment to its wording.163

Unfortunately, neither Bartholomew nor Crane provided any qualitative measure for determining the design’s utility.164  When compounded by a novelty standard that granted patents for “trifling changes of form,” there was no doctrinal counter balance for the expansion of design protection into the utility patent realm.165  Indeed, there was nothing to stop applicants that could not meet the patentability standards for utility patents from simply applying for design protection.  Despite this quagmire, Commissioner Fisher attempted to treat the considerations for design and utility patents differently.  In a later decision, he explained: “I regard the eleventh section of the Act of 1861 as distinct from the remainder of the law[,] as if it formed the subject of a separate statute, and the codifiers of the patent laws evidently so regarded it, for they collected all the matter relating to design patents in a separate chapter.”166  As someone who was instrumental to the subsequent revision of the patent laws,167 and who decided more appeals for design applications than all of the other commissioners before him combined, Commissioner Fisher notably confirmed the use of a lower patentability standard for design patents by only examining for novelty and ignoring whether the design was produced by industry, genius, efforts, or expense.168  Although he may have eroded the distinctions between design and utility patents, Commissioner Fisher believed their patentability requirements were unique.169  Moreover, despite being decided almost twenty years after Hotchkiss, no commissioners or courts had ever required design patents to exhibit invention or its rhetoric.170

C. Commissioners Fisher & Duncan: The Act of 1870

As part of a larger antebellum reform favoring codification over the perceived uncertainty of the common law, and a disparity in state laws following the Civil War, Congress realized that the Nation’s federal laws needed to be “simplified, arranged, and consolidate[d].”171  In 1866, under the authority of Congress, President Andrew Johnson appointed three commissioners to perform this heavy task.172  Although the weight of this duty proved to be too much for this group,173 it managed to send drafts of the intellectual property sections to Congress before two of the three commissioners were replaced in 1870.174  By congressional mandate, the Commission consolidated the Statutes at Large by removing those sections that had been overruled, and rearranged and simplified the remaining sections so that they were easier to comprehend.175  However, they were instructed not to substantively change the law.176  Because there were over twenty-five different amendments since the last major revision of the patent laws in 1836, this was no small task.177

While the Commission was assiduously wading through the remaining U.S. statutes, the Patent Office was struggling178 to keep up with the influx of patent applications after the war179 and was under significant judicial scrutiny for the patents it was granting.180  Nevertheless, this problem was not unique to the Patent Office during the 1870s.181  Rather, contemporary and modern scholars have long debated whether it is better for society if the Patent Office allocates its limited resources to grant fewer “high quality” patents that have longer pendency rates or to grant more “low quality” patents with shorter pendency rates.182  Although the Patent Office usually takes a position in the middle, after the Civil War the practice became slightly tilted towards one model and needed to be realigned to maintain the status quo.183  Historically, much of the frustration from courts during this time towards so-called “low quality” patents was reflective of a much larger anti-monopoly sentiment that was growing throughout the country.184 Because the Revised Statutes could not contain any substantive changes to the law, the Patent Office’s realignment had to be separately provided by Congress before the comprehensive Revised Statutes were passed.185

In an attempt to improve examination at the Patent Office,186 Congressman Thomas Jenckes, a former patent attorney and chairman of the House Committee on Patents,187 worked tirelessly with the Commissioner of Patents, Samuel Fisher,188 the Librarian of Congress, Ainsworth Spofford,189 and the House Committee on Patents to revise the draft of the Revised Statutes section covering intellectual property that was produced by the three commissioners.190 Although the group had the Commission’s report as a starting point, it was still not going to be easy to get the bill through Congress.191  In addition to its amendments aimed at improving procedural matters at the Patent Office, the bill also contained provisions granting federal trademark protection for the first time.192 Despite these obstacles, after a few revisions and a speech by Jenckes to Congress, that contemporary observers considered brilliant, the Act of 1870 was finally passed.193

The Act of 1870 took the single, long, and complexly worded section of the 1861 Act that granted design protection and simplified it by dividing it into six smaller sections.194 Additionally, the new act: (1) abolished applicant citizenship discrimination;195 (2) made design patents issued under the 1842 Act extendable for another seven years;196 (3) reincorporated the catchall phrase from the 1842 Act;197 and, (4) modified the subject matter that was eligible for protection.198  Although the sections covering designs came in their own chapter after the general patent section, as codified, they were no longer separate from utility patents.199  Indeed, this was the first time that design and utility patent protection had been enacted contemporaneously.  The sections covering designs also injected a slight language change from previous acts; for the first time, the statute explicitly distinguished “patents for inventions and discoveries” from “patents for designs.”200  However, the Act of 1870 still extended protection to any person who by her “own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture.”201

Likely applying Commissioner Fisher’s decision in Bartholomew, the House Committee on Patents202 made a slight modification to the 1870 Act’s subject matter by including the word “useful” in the shape or configuration class for articles of manufacture, so that it now granted protection to “any new, useful, and original shape or configuration of any article of manufacture.”203  This slight change in wording officially sanctified the muddled overlap given to design and utility patents by the Patent Office and provided the perfect methodology for protecting trivial innovations.204  Indeed, it cemented the shift from ornamentation to a mix of function and ornamentation in a quasi-utility model or petty patent manner.205  This meant that applicants could comply with marginal requirements indicative of second-tier protection, yet receive first-tier patent rights.206  Moreover, with no functionality doctrine and a low novelty bar, there was no doctrinal lever that could be used to limit the expansion of this second tier protection.  In other words, it cancelled any balance between the public and private domain that is achieved by lessening the rights associated with these forms of protection and ultimately impeded innovation.207  Alternatively, the term “useful” might have been added to this class of designs to indicate they applied to useful articles.  However, as an article of manufacture, this class already inherently applied to useful articles.  Additionally, this was not the reading that contemporary courts and commissioners gave this section.

Consistent with the new language of the statute, Acting Commissioner of Patents, Samuel Duncan,208 took the broad reasoning from Bartholomew, and almost completely merged the subject matter from design and utility patents in Fenno.209  As an example of how design patents were being used at this time, the applicant applied for a design patent to cover a stove-pipe damper after his utility patent application was rejected in light of prior art.210  Despite acknowledging that there was an inference the “applicant is now endeavoring to obtain covertly what he failed to accomplish by direct method upon the former application,” Duncan gave little weight to the applicant’s intentions.211  Applying the statute, he believed that its new language “expressly implie[d] that utility [could] be the sole object had in view, in the invention or selection of the particular form to be impressed upon the manufacture.”212  Duncan also stated “that under the present statute, if a new, and at the same time useful shape be devised for a particular article of manufacture, even though no ornamental effect be produced thereby, the inventor of the same is entitled to protection for it under the design section of the patent law.”213  He took this one step further by separately requiring the design to exhibit utility.214  In other words, he required this class of designs to be new, original, and now useful.215  Duncan then remanded the case, in part, so that the examiner could determine whether the difference between the design and the prior art produced a useful result that the prior art did not.216  Although Duncan’s decision in Fenno never stated that the design’s utility was protectable, when read in light of Commissioner Fisher’s decision in Bartholomew—which openly applied a low novelty standard and failed to limit or define utility for design patents—the perceived barrier between design and utility patents was irrevocably shattered.  Consequently, the stage was perfectly set for a severe backlash by the next commissioner.

III. Frustrated Commissioners, Legislative Oversight & Judicial Expansion: From 1871-1902

Once the Patent Office started overlapping the subject matter and scope of design and utility patents, it was not long before the Patent Office and the courts began treating their substantive requirements similarly.  The first new requirement to spread from utility to design patents was the demand that both be the product of invention.  Up until the Act of 1870, all prior design acts applied a low threshold of patentability; in practice, they only required identical novelty.217  This Section will demonstrate how courts placed new weight on the statutory language requiring that new and original designs be invented or produced, and expanded their interpretation of the statute’s catchall section to include substantive requirements from utility patents.

A. Commissioner Leggett & The Revised Statutes: Invented and/or Produced?

1. Commissioner Mortimer Leggett: Parkinson & Weinberg

Although the Act of 1870 was initially interpreted in the same manner as the previous design acts, as requiring only novelty,218 the new Commissioner of Patents would radically alter the landscape of design patents in the U.S.  In Weinberg, Commissioner Mortimer Leggett219 presided over an appeal from an examiner challenging whether color changes in surface ornamentation alone could form the proper subject of a design patent.220  In an attempt to eliminate some of the trademark-like protection that he felt design patents were being used to serve, Commissioner Leggett held that the exercise of inventive genius was required for both design and utility patents.221  He reasoned that, although the statute’s language indicated that the original design need only be “invented or produced,” the word “produced” was never intended to lower the standard for design patents.222  Commissioner Leggett explained:

The word “invent” had become so intimately associated with improvements in functional constructions and combinations, that the word “produced” was used in connection with the word “invention,” merely to relieve it of this functional signification.  When read in connection with the words “genius” and “original,” as found in the statute . . ., the word “produced” is evidently used with a much higher signification than merely made or constructed; it means created.  “Invented or produced,” as used in this section of the law, means the exercise of a higher faculty than would have been indicated by “invented” alone.223

Applying this logic, design patents were now held to a higher standard than utility patents.  They had to be produced by creative genius, which was somehow measured by their aesthetic effect.224  So in a rather circular fashion, the design’s method of creation was measured by its end result.  On the other hand, by making the barometer for creative genius the aesthetic effect of the design, its method of creation became irrelevant.  In a roundabout manner, Leggett was simply refocusing patentability on the design’s aesthetics, as opposed to its utility.  It is unfortunate, however, that he used “invention” as the mechanism for achieving this goal.  Additionally, central to this analysis was a more nebulous comparison than past administrations had applied—the aesthetic effect.225  This comparison was likely intended to provide a buffer from the prior art that was eroded by past administrations’ application of an identical novelty requirement.226  Moreover, it was expansive enough to act as a substitute for a cogent functionality doctrine.

Leggett’s use of the invention requirement to achieve this goal eventually led back to focusing on the design’s method of creation.  Nonetheless, prior to his decision in Weinberg, no courts or commissioners gave the terms “industry,” “genius,” “efforts,” and “expense” much weight.  These early decisions unanimously adopted a lower threshold of patentability for designs than utility patents.227  More than twenty years after Hotchkiss, Weinberg was the first time that the rubric of invention was applied to design patents.228  Since past administrations treated design patents similar to utility patents, and the 1870 Act codified these sections together for the first time, it was logical that the patentability requirements from utility patents would begin to coalesce with designs.  Yet despite past administrations’ complaints about design’s place in the patent regime, all of the commissioners tried to keep it as a separate form of protection between copyright and patent.  Once that framework was shattered, the invention requirement provided a necessary doctrinal lever that the system needed to achieve balance.

Less than two weeks after Weinberg was decided, Commissioner Leggett expanded his reasoning in Parkinson when rejecting the applicant’s claw hammer design.  Similar to the examiner’s rejection that was overruled in Crane, the hammer design application was also rejected on the basis that “function can form no part of a design patent.”229  While the Commissioner sustained the rejection, his analysis focused on the design’s nominal aesthetic differences from standard tack and nail hammers at the time.  He reasoned that design patent applicants “must do a little more than invent—[they] must produce, that is, create.  Creative genius is demanded in giving existence to a new and original design.”230  In an often quoted231 characterization of prior administrations, Commissioner Leggett also criticized the Patent Office’s approach to design patentability as “not only liberal[,] but lax.”232  He believed that earlier commissioners had “opened the door to design patents far too widely.”233  Unfortunately, neither Weinberg234 nor Parkinson235 shed much light on what it meant for a design to be invented by creative genius.  Additionally, no other commissioners’ decisions and no other courts dealt directly with any novelty or invention challenges under the 1870 Act.236

Although Commissioner Leggett voiced strong views about design’s place within the patent system, his underlying concerns were not unfounded.  As commissioner, he recognized that legions of rejected utility patent applicants regularly turned around and filed design patent applications for the same products merely so they could mark them as “patented.”237  This was problematic because the old marking statutes did not require patentees to distinguish the type of patent protection they were claiming—simply marking the product “patented,” and including the day and year of its grant was sufficient238—and Commissioner Leggett felt the public was being deceived into believing that the design patent covered more than just the product’s aesthetics.239  Indeed, the Commissioner in Parkinson stopped just shy of calling the applicant’s claw-hammer design a fraudulently cloaked utility application.240

In addition to the public’s confusion resulting from homogeneous marking conventions, courts and prior administrations also struggled to interpret the role of utility in design.241  To effectively read the term “useful” out of the statute, Commissioner Leggett developed a strained interpretation of “utility” to adhere to the fundamental purpose of design protection.242  He defined “utility” in terms of aesthetics.243  Moreover, he revived the requirement, eliminated by Crane, that the design must be merely ornamental.244  Although some courts eventually gave similarly strained readings to this term, many courts and commissioners went back and forth on this issue until the statute was finally amended in 1902.245

Like his predecessor, Commissioner Leggett was praised for reformation of the Patent Office during his administration.246  However, he was also widely criticized for erratic decisions247 concerning “questions of patentable novelty.”248  Knowing there was potential to amend the patent statute again before it was adopted as part of the comprehensive Revised Statutes,249 Commissioner Leggett devoted large sections of his annual reports to advocating procedural and substantive changes to the patent laws.250  Indeed, his first two annual reports strongly lobbied for replacing design patent protection with a trademark-like registration system.251  In his Annual Report for 1871, after discussing the marking problems and what he perceived to be a very low patentability threshold for design patents, the Commissioner wrote: “I am clearly of the opinion that the present mode of patenting designs is radically wrong, injurious to real inventors and the public, and not calculated ‘to promote the useful arts.’”252  He went so far as to call design patents “subversive of the fundamental object of the patent law.”253  Although past commissioners occasionally voiced their concerns about designs,254 none came close to articulating this level of frustration.  Given this environment, it is easy to understand why Commissioner Leggett advocated such a high standard of patentability for designs, in comparison to past administrations.  The incorporation of the design act into the larger patent chapter of the 1870 Act also helped eliminate any perceived barriers or distinctions between the two standards.  Although Commissioner Leggett applied invention to designs differently than he did to utility patents—equating invention to creative genius—his administration forever changed the way that design patents were viewed in the United States.

2. The Revised Statutes: A Typographical Error?

By 1873, the second three-year commission255 appointed to revise and consolidate the federal statutes finally presented its report to Congress that was intended to be the basis for the Revised Statutes.256  However, because the Joint Committee257 overseeing the Revised Statutes felt that the Commission had overreached its mandate by making substantive changes to the law, it appointed a third-party to identify and remove the alterations from the Commission’s report.258  The Joint Committee knew that any substantive changes to the law might jeopardize its passage.259  Given the enormous impact that Thomas Jefferson had on the development of the American patent system,260 it was perhaps fitting that the third-party Congress turned to was named Thomas Jefferson Durant.261  About nine months after being appointed, Durant completed his report for the Joint Committee and drafted the bill that became the Revised Statutes.262  In 1874,263 after Congress devoted several months of special evening sessions to amending the bill,264 the Revised Statutes were finally signed into law by President Ulysses Grant.

The patent section of the Revised Statutes is almost identical in substance, phraseology, and order to the 1870 Act because the only amendment to the patent laws between 1870 and 1874 involved a minor change concerning the publication of the Patent Office’s records.265  However, there were a few modifications to the language covering design patents.266  Indeed, the alteration of a single word in the Revised Statutes arguably eviscerated the old distinction between utility and design patents that courts and commissioners before Commissioner Leggett had observed.  With the substitution of the word “or” for “and,” the Revised Statutes extended protection to any person who by their “own industry, genius, efforts, and expense, has invented and produced any new and original design for a manufacture.”267 Previously, the statute granted protection to designs that were “invented or produced.”268  The alteration of this simple conjunction in the Revised Statutes now meant that “invention” and all of its baggage from utility patents applied to designs.  Given design law’s history, it seems fitting that the alteration was likely the result of a typographical error.269

At the time, the only precedent for changing the language of this section was Commissioner Leggett’s administrative opinions.270  According to its congressional mandate, however, the Commission was only supposed to compile and consolidate the Statutes at Large, changing the wording only where it was necessary for simplification.271  The Commission was not supposed to change the law, nor was there anything in its mandate about taking administrative opinions into account.272  Indeed, its report, which was presented to the Joint Committee for the Consolidation of the Revised Statutes, contains the same language as the Act of 1870—requiring that new and original designs be invented or produced by certain means, not invented and produced.273  Although Durant likely revisited this section274 because the citations in the margins of the Revised Statutes are slightly different than those found in the Commission’s report,275 the new case listed in the margin of the Revised Statutes does not support the application of invention to design patents.  There were also no other changes to the wording of this section that would have indicated that he intended to make any alterations.276  Nor was there any discussion during the House’s evening sessions devoted exclusively to the Revised Statutes indicating this change.  The Patent Office’s own rules, which were usually updated at least twice a year, did not reflect the change in wording until five years after the Revised Statutes were adopted.277  Therefore, the Patent Office either did not realize this section had been changed, or it thought it was a typographical error that would be corrected by Congress.  Given the complex and voluminous nature of the Revised Statutes,278 this assumption would not have been unreasonable because there were a myriad of typographical errors and other mistakes in the Revised Statutes.279  Moreover, there were other typographical errors in this section of the Revised Statutes alone, such as changing the word “pattern” to “patent” in one of the protectable designs classes.280 However, unlike some of the more egregious typographical errors, these seemingly minor alterations were never corrected in the numerous amendments to the Revised Statutes.281

B. The Catchall Section

Although Commissioner Leggett was the first to require design patents to exhibit invention, he never applied the same criteria for invention to utility and design patent applications.  However, once the Patent Office282 and courts started applying the rubric of invention to designs, it did not take long for the substantive criteria to merge.  In Northrup, the Eastern District of Michigan helped supply a strong basis for this merger283 when it invalidated a design patent for a provision or cheese-safe because the differences in size and molding from the prior art were well-known.284

II. The Major Impact of the Early Patent Commissioners: Merger of Subject Matter & Scope From 1842 to 1871

The early Patent Office commissioners had an enormous impact on the development of the patent law and its practice.  The role of Commissioner of Patents was created at the same time as the modern Patent Office, under the 1836 Act.285  Prior to this Act, from 1793 to 1836, patents were granted through a system of registration,286 which many felt produced a “mass of worthless and conflicting patents, . . . excessive litigation[,] and many cases of fraud and extortion.”287  Congress reacted by reinstituting substantive examination288 under a radically different administration than the first patent act.289  The passage of the 1836 Act,290 along with a fire that completely destroyed the Patent Office a few months later,291 sparked a rebirth for patent law in the U.S.292  As the new face of its administration, the Commissioner of Patents was perfectly positioned to strongly influence the development of the new laws.293  Indeed, the Commissioner was the single highest appellate body within the Patent Office from 1836 to 1927,294 and his decisions became the main lens through which the new laws were interpreted by manufacturers, patent examiners, and courts.  These decisions were normally given great weight because they generally reflected the uniform practice of the Patent Office and provided insight regarding the intent of the law.295  Moreover, from 1869 until the turn of the 20th century, they were more readily available than most judicial opinions.296  The commissioners not only helped interpret the patent law, but they also were heavily involved in its legislation.  Indeed, they frequently suggested revisions in their annual reports to Congress,297 and some commissioners even played active roles on Congressional Patent Committees throughout its numerous amendments.298  More importantly, much of the evolution of design patent law before the 20th century can be attributed to the enormous impact of the early patent commissioners.

From 1842 to 1869 patent commissioners and courts treated the substantive requirements for design patents as separate and distinct from their utility patent counterparts.299  It was the compartmentalization of these two regimes that kept the widespread rubric of invention in utility patents from spreading to designs.  During this time, however, the Patent Office and courts struggled with the issue of functionality in design.  Today, design patents are not granted to designs that are “dictated by function alone.”300  This doctrine, however, did not fully develop until the design patent act began to resemble its modern form.301  As a result of its discordant treatment, the Patent Office and courts often impermissibly merged the subject matter and scope of protection granted to utility and design patents.  Indeed, this merger eventually led one commissioner to decree that all patents must exhibit the exercise of inventive genius.302  This Section will discuss this movement by tracing the merger of utility and design patent standards, resulting ultimately in the application of the nonobviousness requirement to designs.

A. Commissioner Ellsworth: The Act of 1842

In the United States, industrial design protection has always been an afterthought.303  It took half a century after the first federal patent and copyright acts were passed before design protection was even proposed.304  Many scholars attribute the impetus for the first act to Henry Ellsworth’s,305 Commissioner of Patents, annual congressional Patent Office report for 1841.306  However, the legislative history is not entirely clear on this point.  Indeed, a year prior to Ellsworth’s report,307 the Senate and House of Representatives received a petition from a large number of manufacturers and mechanics in the U.S. requesting some form of protection for designs.308  In the letter, the petitioners argued:

[T]he frequent ornamental and other improvements which are and can be made in articles of manufacture have rendered necessary a registration of new designs and patterns; that ornamental and useful changes can, in many cases, be made in the design and form of articles of manufacture, for which no patent can be obtained; that the said new designs and patterns often require a considerable expenditure of time and money, and can be made use of by any person so disposed, in such a manner as to undersell the inventor or proprietor.309

While the petitioners called for design protection by manner of registration, they did not request that it be protected under the aegis of the patent system.310  In an attempt to use international law to advance domestic change, they also pointed out that Great Britain’s Parliament recently passed legislation to protect designs,311 and they could “confidently affirm that the articles manufactured by them would equal any others in beauty, if new designs and patterns were secured by registration.”312  These British laws notably granted copyright protection—upon registration and deposit—to new and original designs.313  Nevertheless, the petitioners’ request for design protection is paradoxical, given the propensity of U.S. manufacturers, at the time, to copy foreign designs.314

Commissioner Ellsworth’s Annual Report for 1841 echoes many of the same sentiments in the manufacturers’ petition, such as competition with other nations that have design laws and the larger issue of pirating designs.315  Although he seemed to envision this form of protection for “new and original”316 designs somewhere between copyright and patent protection,317 he might have inadvertently precluded this by later stating:

All this could be effected by simply authorizing the Commissioner to issue patents for these objects, under the same limitations and on the same conditions as govern present action in other cases.  The duration of the patent might be seven years, and the fee might be one-half of the present fee charged to citizens and foreigners, respectively.318

Perhaps the most significant source of confusion surrounds the middle portion of this quote.  What did Commissioner Ellsworth mean when he suggested that design protection could be granted “under the same limitations and on the same conditions as govern present action”?  Were designs supposed to be subject to the same grounds for patentability?  The most plausible answer is that he was referring to limitations related to the acquisition of these new rights, such as claiming, filing, and general prosecution practice.  When read as a whole, this is also the only place in the report that addresses how these new rights could be effectuated.319  Although the legislative history from the first design act is sparse, the report, petition, and contemporary British design laws320 can account for most of its language and scope.321

Less than a year after the Commissioner’s letter, on August 29, 1842, Congress enacted the first statute authorizing patent protection for designs.322  It provided protection to citizens who by “their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture.”323  It also adopted the term, fee, and subject matter advocated in Commissioner Ellsworth’s annual report. 324  He had suggested that protection last seven years, cost half a utility patent, and apply to certain articles of manufacture (e.g., protecting designs for textiles, metals, busts, statutes, general shapes or configurations for articles of manufacture, etc.).325  Unfortunately the legislative history for this Act does not reveal why Congress adopted the terminology “invented or produced,”326 but it is clear that Congress envisioned the design patent standard differently than the utility patent standard.  Under the general patent act, utility patents were available to any person who “discovered or invented any new and useful art, machine, manufacture, or composition of matter.”327  Moreover, utility patents did not have to be created by “industry, genius, efforts, and expense.”328  This emphasis on the mode of creation and the amount of effort necessary to qualify for a design or utility patent was not unique to the patent system at the time.  Rather, similar analogies can be drawn to classic interpretations of the originality requirement in early American copyright law.329  Although the language of the utility and design patent statutes differed from each other, Congress did not provide any parameters for distinguishing the “discovery or invention” required for utility patents from the “production or invention” required for design patents.  Consistent with the Commissioner’s annual report, the 1842 Act also included a so-called catchall section, which adopted the patent act’s regulations and provisions related to obtaining and protecting utility patents that were not inconsistent with the 1842 Act.330  This section operated as shorthand for the Act’s drafters, saving them from reproducing the claiming, prosecution, and enforcement sections from the utility patent statute.331

While Commissioner Ellsworth might have envisioned design protection somewhere between copyright and patent, the question of where exactly it fell in the spectrum ultimately came to rest with the Patent Office.332  Most scholars attribute the incorporation of design protection into the patent regime to three things.333  First, the most concrete proposal came from the Commissioner of Patents.  Since Congress had adopted the subject matter advocated in his annual report, why not also adopt the “simple” procedure that he suggested.334  As the first commissioner under the 1836 Patent Act—which among other things, revived substantive examination for the first time since 1793—Commissioner Ellsworth was in the perfect role to ensure that this new form of protection was being appropriately granted.335  Second, the designs applied to articles of manufacture, which were already within the province of patent law, rather than to the “purely intellectual products” of copyright law.336  And lastly, there was no central copyright depository or registration at the time.337

One overlooked but congressionally persuasive reason for incorporating design protection in the patent regime is that it would also drive revenue into the federal government.338  At the time, each copyrighted work only generated 50 cents for the district court that it was deposited in—essentially paying the clerk to store, record, and transmit the work to the Secretary of State—but it did not generate any money for the U.S. treasury.339  By comparison, a granted design patent brought at least fifteen dollars directly into the treasury or Patent Office.340   Indeed, the senator that introduced the bill in 1842 described it as “intended to apply the rights of patents to new objects, and thereby bring additional revenue into the patent department.”341 Unfortunately for the treasury, very few design patents were ever granted pursuant to the 1842 Act.342  It is unknown whether this was the result of stringent examination or limited applications.  Additionally, little is understood about the patentability of designs under the 1842 Act because Patent Office decisions were not published until 1869,343 and there were only three reported cases involving design patents granted under the Act.344  Although this time period under the 1842 Act can be characterized as relatively quiet, in comparison to utility patents, two different patent commissioners’ annual reports reveal frustration with this new form of protection.345  By 1851, Commissioner Thomas Ewbank even called for removing design prosecution from the Patent Office altogether.346  Instead of protecting designs for articles of manufacture under patent law, and designs for engravings under copyright law,347 he proposed a single, unified registry for all designs.348  Likely reflecting his view that the new regime should follow a copyright model, Commissioner Ewbank also argued the registry should be handled by the district courts349 because placing “it in this Office gives it too much the prestige of a patent.”350

B. Commissioners Foote, Hodges & Fisher: The Act of 1861

About a month before the Civil War began, Congress made some minor changes to the design patent act when it passed the Act of 1861,351 effectively repealing portions of the 1842 Act.352  However, the design section was only one small portion of the 1861 Act.353  Rather, Congress’s goal was to improve the practice of the Patent Office by, among other things, giving it subpoena power,354 changing its internal appellate process,355 increasing salaries for some of its officials,356 and updating its fee structure.357  In fact, it was the alternation of the fees and terms for utility and design patents that likely necessitated including the design section in the 1861 Act.358  For utility patents, the Act changed the fee structure and term of protection from fourteen to seventeen years.359  And design patents went from a fixed seven-year term to a three-and-half, seven, or fourteen-year term that was elected during prosecution and subject to different fees.360  The Act also made some slight changes to the subject matter that was eligible for protection—removing “new and original design[s] for the printing of woolen, silk, cotton or other fabrics.”361  However, the most notable distinction between the two acts is the absence of any catchall section, as included in the Act of 1842, which might have made the regulations and provisions from utility patents applicable to designs.362  The most likely explanation for the omission of the catchall section was that the 1861 Act now specified most of the terms in the 1842 Act that were made by reference to the general patent laws.363  For example, instead of specifying the fee for a design patent, the 1842 Act provided that it was “one half the sum” of “the now existing laws.”364  Now that the 1861 Act expressly included these details (e.g., $10.00, $15.00, or $30.00 depending on the elected term), the catchall section was no longer needed.365

In Wooster v. Crane, the Circuit Court for the Southern District of New York was the first court to give judicial construction to the Act of 1861.366  At issue, was the validity of a design patent for “a reel for containing ruffles, ladies’ dress-trimmings, and other goods.”367

[Image removed]

The reel368 was made from “two parallel disks of pasteboard [in the shape of a rhombus, and] connected by four bits of wood, on which the ruffle . . . [was] wound, between the pasteboard sides.”369 The court’s analysis focused on the rhombus shaped pasteboard because “the reel itself, as an article of manufacture, [was] conceded to be old and not the subject of a patent.”370  Although the exact rhombus shape had never been applied to reels, the court found for the defendant because it was a well-known “mathematical figure” that was commonly applied to other articles of manufacture.371  Interpreting the statute’s language, the court stated:

[A]lthough it does not require utility in order to secure the benefit of its     provisions,     [it] does require that the shape produced shall be the result of     industry, effort,     genius, or expense, and must also, . . . be held to require that the     shape or     configuration sought to be secured, shall at least be new and original as     applied     to articles of manufacture.372

The court also proclaimed that the only “advantage” of its shape was its incidental use as a trademark.373  This use for design patents as a substitute for federal trademark protection is worth noting because some applicants prior to the 1870 Act, which granted federal trademark protection for the first time, sought design patents to fill in the gap.374

Although Wooster was decided well after Hotchkiss, the court did not require the design to be the result of invention, nor did it employ any of its associated phraseology.  It placed weight on the language of the statute that required a certain level of “production,” or labor, and not “invention.”375  Moreover, it lowered the patentability hurdle by modifying the statute’s language, which required the design to be created by “industry, genius, efforts, and expense,” to only whether it was created by “industry, effort, genius, or expense.”376  Although the court seemed to treat these initial terms of the statute as substantive requirements, it did little more than recite them.377  It is significant, however, that the court discussed the design’s manner of production, as opposed to its end result.  Nevertheless, courts and commentators during this time universally read Wooster as indicating a low order of patentability for designs.378

In sum, commissioners and courts from this early epoch in design law largely treated design patents’ substantive requirements differently than those of utility patents.379  The statutes were physically separate from one another because they were codified at different times and existed in different volumes of the Statutes at Large.  They were also conceptually separate because of the dissimilarity in their methods of creation and purpose.  Indeed, it was the compartmentalization of design protection—as a third form of protection between copyright and patent—that helped keep the rubric of invention in utility patents from spreading to designs.380  However, the wall between design and utility patent standards would not last.  Indeed, the following three sub-sections will briefly trace how three commissioners under the 1861 Act helped shatter that barricade and ultimately cleared a path for the invention requirement to move from utility to design patents.

1. Commissioner Foote: Crane

In his last decision as Commissioner of Patents, and the first published appellate commissioner decision dealing with design patents in 1869,381 Commissioner Elisha Foote382 chipped away at the perceived barrier between design and utility patents.383  In Crane, 384 the applicant designed a paper box that contained compartments for holding ladies’ furs.385

[Image removed]

After being denied a utility patent for not rising to the level of what the examiner termed a “new invention,” the applicant sought a design patent.386  However, this application was also rejected by the examiner and the Board of Examiners-in-Chief because they construed the Act as only covering “designs for ornament merely; something of an artistic character as contradistinguished to those of convenience or utility.”387  In other words, the Board rejected the application because the design did not possess ornamental features that could be distinctly separated from the underlying utilitarian article (i.e., box) they were applied to.  This approach to functionality was applied similarly in contemporary British design protection388 and is closely analogous to the modern separability requirement for protecting designs as works of applied art in Copyright law.389

On appeal from the Board, Commissioner Foote noted that the statute “does not say ‘ornamental’ design, or ‘artistic’ shape or configuration, and I am unable to perceive any good reasons why designs for utility are not fairly and properly embraced within the statute, as well as those relating to ornamentation merely.”390  Underscoring the difficulty of distinguishing between what was utilitarian or merely for ornament,391 he further stated:

I can perceive no necessity for the distinction.  There is a large class of improvements in manufactured articles that are not regarded as inventions, or as coming within the scope of general patent laws.  They add to the market value and saleability [sic] of such articles, and often result from the exercise of much labor, genius, and expense.  They promote the best interests of the country, as well as the creations of inventive talent.  It seems to me to have been the intent of Congress to extend to all such cases a limited protection and encouragement.  Whenever there shall be produced by the exercise of industry, genius, efforts and expense any new and original new design, form, configuration, or arrangement of a manufactured article, it comes within the provisions and objects of the act creating design patents, whatever be its nature, and whether made for ornament merely, or intended to promote convenience and utility.392

Without any further analysis, Commissioner Foote overruled the Board and granted the design patent for the box.  Notably, the Commissioner analyzed the design’s patentability as the overall arrangement or configuration of the article.393  He did not try to separate the box’s ornamental and functional elements.  Nor did he treat separability either as a threshold requirement for a design patent, or as a starting point for a novelty analysis.  Furthermore, the Commissioner placed emphasis on the language of the statute, requiring that the new design be produced by “industry, efforts, genius, and expense.”394  Similar to Wooster, design patentability seemed contingent upon its method of creation.  However, he too did little more than recite the standard.

At its narrowest construction, Crane meant that a design for an article of manufacture could not be denied patentability for merely having (i.e., de facto) functionality.  In other words, applicants did not have to demonstrate that their design was merely ornamental or that it contained separable ornamental elements.  As a class of inherently utilitarian articles, a narrower holding would vitiate shapes or configurations of articles of manufacture as a protectable class of design patents.  However, as Professor Gerard Magliocca points out, Crane could also be read broadly to indicate that a design could meet the patentability requirements through a combination of its aesthetic and utilitarian features (e.g., extending protection to de jure functional designs that are dictated solely by function).395  Although the Commissioner’s reasoning kept him from making a superficial distinction between the box’s ornamental and functional elements,396 the unfortunate corollary of his broad language led to an overlap between the scope of protection for design and utility patents.397

2. Acting Commissioner Hodges: Solomon

Less than four months later, in Solomon, Acting Commissioner Hodges398 applied Crane’s reasoning to extend399 the term of a design patent for an inkstand.400  To show that the design patent’s401 value to the public merited an extension, the petitioner submitted affidavits that accounted for the inkstand’s functional advantages.402  Despite never differentiating between its functional and ornamental value, Hodges granted the extension based solely on the affidavits.403  Applying Crane,404 he reasoned that the design patent covered “not only the beauty of the inkstand in point of form, but also all those advantages in point of utility and convenience, which result from its configuration . . ..[s]ome of these are old, it is true, but the combination of the whole is new.”405  Although Crane properly taught that the article could have (i.e., de facto) functionality, it did not explicitly extend the design patent’s scope of protection to those functional features.406  Rather, Hodge’s decision in Solomon was the first opinion to indicate this natural progression.

3. Commissioner Fisher: Bartholomew

In Bartholomew, Commissioner Samuel Fisher not only adopted the broad reading of Crane, but he also applied a much lower standard of patentability for designs than utility patents.407  The decision begins by parsing the language of the 1861 Act into five separate subject matter classes for designs.408  Commissioner Fisher believed that “[t]he first three of these classes . . . seem[ed] to refer to ornament only; the fourth, to ornament combined with utility, as in the case of trade-marks; and the fifth, to new shapes or forms of manufactured articles, which, for some reasons, were preferable to those previously adopted.”409  In this case, the applicant’s eraser410 fit into the fifth design class, as “[a] new and original shape or configuration of any article of manufacture.”411

[Image removed]

Citing to the catchall section,412 Judge Henry Brown reasoned that because “[t]he same general principles of construction extend[ed] to both,”413  that designs must also be produced by “the exercise of inventive faculty.”414  Accordingly, “Mere mechanical skill is insufficient.  There must be something akin to genius.”415  On its face, this argument seems reasonable because the catchall section provides that: “All the regulations and provisions which apply to obtaining or protecting patents for inventions or discoveries not inconsistent with the provisions of this Title, shall apply to patents for designs.”416  However, as discussed above, the legislative history of this section reveals that it was only intended to make the laws related to prosecution and enforcement applicable to designs.

This catchall section, which is almost identical to § 76 of the Act of 1870,417 actually comes from the first design Act of 1842.418  When read as a part of the initial Act, it is clear from the lack of discussion concerning major issues such as filing requirements and remedies, that this phrase was added to the section so that the drafters did not have to reproduce the prosecution and enforcement provisions from the general patent act (i.e., shorthand).419  It was omitted from the Act of 1861 because many of these details were now included in the Act’s plain language, instead of by reference.420  When the Commission for the Revised Statutes began consolidating the Act of 1842 and the Act of 1861, it divided these acts into smaller, more comprehensible sections.421  As a result of its inclusion in the Act of 1842, the catchall section ended up as one of six separate sections covering designs in the Act of 1870.422  Indeed, this section was actually part of the draft that was sent by the Commission to the House Committee on Patents,423 which meant that by congressional mandate it could have only reflected what the law was at the time.424  Because the catchall section was not added by the House Committee on Patents to the Commission’s draft, this section could only have been intended by its drafters to apply the prosecution and enforcement provisions from utility to design patents, as it did before the Act.  The rules issued by the Patent Office during this time also gave the same construction to the catchall section.425  Moreover, in light of Commissioner Fisher’s Patent Office opinions, which expressly envisioned design patents as separate and distinct from utility patents,426 and his high level of involvement in the Act of 1870’s passage,427 it is not likely that the House Committee on Patents would have intended to apply the same substantive principles from utility patents.  Although Northrup was not the first court to cite the catchall section,428 prior to this opinion it was used only to apply statutes and precedent related to the prosecution and enforcement of utility patents.429

C. The Supreme Court’s Revolving Door

While there were still some holdouts430 after Justice Brown’s decision in Northrup and the typographical error in the Revised Statutes, most courts required designs to meet an invention or heightened novelty requirement.431  However, they all applied the new requirement differently.  Some courts required invention, but recognized a much lower standard for designs.432  Yet, other courts forced the same muddled precedent from utility patents onto designs.433  As a result of these disparities, the issue was ripe for review by the Supreme Court.434

In Lehnbeuter v. Holthaus, the Supreme Court was presented with an appeal concerning the validity of a design patent for a showcase.435

[Image Removed]

Comparing the patented design436 to the prior art, 437 Justice William Woods stated: “The design patented by the complainants differs essentially from any other which has been called to our attention. . . . Whether it is more graceful or beautiful than older designs is not for us to decide.  It is sufficient if it is new and useful.”438  Indeed, the Court flatly refused to apply anything beyond an identical novelty requirement.

The Court’s holding made it clear that designs did not have to satisfy the invention requirement or any of its related rubric.439  Unfortunately, Justice Woods’s concise wording provided little insight into the Court’s reasoning.440  Despite several opportunities over the next decade, the Supreme Court never disturbed its holding in Lehnbeuter.441

Drowning in the deluge of lower courts that continued to apply the invention requirement to designs after Lehnbeuter, the Supreme Court finally surrendered in Smith v. Whitman Saddle.442  Quoting a large section of Justice Brown’s opinion in Northrup—which relied on the application of the catchall section to support applying the invention requirement to designs—the Supreme Court concluded that “[t]he exercise of inventive or originative faculty . . . [was] required.”443  Indeed, the Court used similar language and reasoning in Hotchkiss when applying the invention requirement to a utility patent.444  In its patentability analysis of the horse saddle design, the Court explained:

Nothing more was done in this instance . . . than to put the two halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done.  The presence or the absence of the central open slot was not material, and we do not think that the addition of a known cantle . . . was common, in itself involved genius or invention, or produced a patentable design.445

Analogous to its utility patent approach, the Court concluded that the horse saddle design446 did not meet the invention requirement because it could be reconstructed by combining different halves of prior art saddle references (A+B = Patentee’s Design).447

[Image Removed]

It is noteworthy that the Court applied such a piecemeal approach to the invention requirement given its past decisions’ strong anti-dissection proclamations for infringement and novelty.448  Additionally, it seems odd that the Court would pull and plug elements of designs in such a mechanical fashion.  While the showcase design in Lehnbeuter would not have survived this approach,449 the Court reaffirmed its proclamation that utility could be a design patentability consideration for articles of manufacture.450

After Whitman Saddle, there was little doubt that design patents must exhibit invention.  Nevertheless, it is unclear why the Supreme Court finally changed its stance on the application of invention to designs after all this time.  When it decided Lehnbeuter, it was already distinctly in the minority.  What changed during those eleven years?  Did the Court undergo an ideological change, or was Whitman Saddle just representative of the idiosyncratic development of design patents?

The most likely reason for the Court’s flip-flop was the makeup of its bench.  Only four justices from Lehnbeuter were even alive when Whitman Saddle was decided.451  Moreover, only three of those justices sat and participated in both decisions.452  To clarify, Justice Horace Gray was a member of the Supreme Court when Lehnbeuter was decided; however, he did not sit or participate in the case because he was not a member of the Court when it was heard.453  Yet, he might have been partially responsible for the Court’s change.  Indeed, Justice Gray notably decided a design patent case—while circuit riding454 as a member of the Court between Lehnbeuter and Whitman Saddle—where he stated that design patents must be “the product of invention.”455

While this decision is noteworthy, the most seismic shift to the bench came when Northrup’s author, Justice Henry Brown,456 joined the Supreme Court a few years before Whitman Saddle was decided.457  It should not be surprising that the Court’s opinion in Whitman Saddle quoted nearly an entire paragraph from Northrup.458  Most importantly, the quotation began with Justice Brown’s understanding, based on the catchall section, that the laws applicable to designs did not “materially differ” from those applied to utility patents.459  Although it is impossible to know whether Justice Brown is responsible for the Supreme Court’s philosophical change towards design patents, the prominence of Northrup’s reasoning in the Whitman Saddle decision is strong evidence that his interpretation of the catchall section persuaded some members of the bench.460  Indeed, Northrup’s interpretation of this section and the new language of the Revised Statutes gave courts and examiners all of the support they needed to apply invention and its muddled tests to designs. 461

[To continue reading, please click here for PDF version]

Comments are closed.