The University of Kentucky’s Law Journal has published the article by Janice M. Mueller and Daniel Harris Brean, Overcoming the “Impossible Issue” of Nonobviousness in Design Patents, at 99 Ky. L.J. 419, 419-554 (2011). Abstract:
Through its patent system, the United States offers legal protection for industrial designs—the overall aesthetic and external appearance of everyday objects ranging from automobiles to iPads. To be patentable, a utilitarian device must be a “nonobvious” advance over earlier technology; similarly, a new and ornamental design must 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.” In contrast with utility inventions, the nonobviousness requirement for designs originated and evolved as a result of prolonged inattention by the legislature and judiciary rather than through any purposeful development. Drawing from the industrial design literature and the authors’ original interviews with designers from varied industry sectors, this Article postulates that existing nonobviousness precedent reflects an ignorance of the creative processes commonly employed by industrial designers. To bridge the gap between design patent standards and the reality of design, this Article proposes powerful yet practical tools to exploit recent judicial receptiveness to rethinking design patent law generally.
Mueller’s co-author Daniel Brean is a 2008 graduate of Pitt Law. Brean is currently serving as a law clerk to the Honorable Jimmie V. Reyna, U.S. Court of Appeals for the Federal Circuit, in Washington, D.C.
Link to article