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99 Ky. L.J. 419 (2010-2011)
Overcoming the Impossible Issue of Nonobviousness in Design Patents

handle is hein.journals/kentlj99 and id is 425 raw text is: Kentucky Law Journal VOLUME 99 2010-2011 NUMBER 3 ARTICLE Overcoming the Impossible Issue of Nonobviousness in Design Patents Janice M. Mueller and Daniel Harris Brean ABSTRACT The United States offers legal protection for designs-the overall aesthetic appearances of objects-through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitarian device mandates a nonobvious advance over earlier technology, the patentability of a new and ornamental design requires that it differ from prior designs to an extent that would not have been obvious to a designer of ordinary skill who designs articles of the type involved. Ostensibly promoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that time forward, the design patent system has languished from prolonged inattention rather than benefited from any purposeful development. Even the initial imposition of a qualitative requirementfor invention in designs (from which the modern requirement of nonobviousness derives) was likely the product of a typographical error Failing to appreciate the fundamental distinctions between designs and utility inventions, the legislature and judiciary have repeatedly sought to assimilate these very different types of intellectualproperty. Nowhere in the design patent system is this assimilation more harmful than in the imposition of the nonobviousness requirement. i Janice M. Mueller is a Professor of Law at the University of Pittsburgh, a registered pat- ent attorney, and a former law clerk to the late Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit. Mueller was a Visiting Professor at the University of Kentucky College of Law during the Spring 2oo semester. Daniel Harris Brean is an associate at The Webb Law Firm in Pittsburgh, Pennsylvania, and a registered patent attorney. Our thinking about how to improve legal protection for designs benefited greatly from conversations with Professor Dr. Annette Kur of the Max Plank Institute for Intellectual Property, Competition, and Tax Law, Munich, Germany; Donald S. Chisum, Co-Founder and President, Chisum Patent Academy; and Perry J. Saidman, Principal, Saidman DesignLaw Group. Industrial designers Randy Rossi, Ron Spears, George McCain, Tucker Viemeister, Cooper Woodring, Ron Kemnitzer, Tony Shoemaker, and Paul McGroary provided essential information and insights about the creative process of design. We thank Pitt Law Librarian Linda Tashbook and Pitt Law student Brian J. Jackson for their research assistance. All views expressed herein (as well as any errors) are our own and should not be attributed to our respective employers. We welcome comments by e-mail to mueller2@pitt.edu and dbrean@webblaw.com. 419

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