We would like to welcome David Lu!!, a Ph.D. Candidate in Computer Science from Washington University, St. Louis, to the Technically Legal team! Although David has not attended law school, he brings some excellent technical acumen to the table in additional to his strong laymen’s interest in technology related legal and policy concepts. David will be a regular member of our weekly podcasts as well as a contributing author to the site.
In case you are wondering, the exclamation points following his surname are not entirely grammatically incorrect, but actually part his of legal name. I’m sure there is a curious story behind the matter, but we have yet to get to the bottom of it. He will have a heck of a time explaining this to a U.S. Senate committee someday.
Comments Off Posted in: Commentary on September 27, 2009
The Berkman Center is hosting an open house, tonight 7pm in Cambridge, MA. Details here. I will be attending, if you are in the area be sure to stop by! Hope to see you there.
Several websites (see here, here and here) have recently commented on the Google patent search portal, which was granted a patent (D599,372) this last Tuesday. The application had been pending since 2004 and claims ownership over the design elements of the search page. As with most Google search portals, the Google Patents page has 28 words or less—total. Aside from minimalist design, the patent only lays claim to its iconic query field along with the two buttons “Search” and “I’m Feeling Lucky” as well as the typical hyperlinked text on a Google page. In fact, the design claimed is the 2004 Google Patent page, but it differs little from its current state today. Also, the Google logo is specifically disclaimed from the design.
What is most notable about this patent is not the audacity of the Mountainview company to claim these very basic portions of their webpage. It’s that the vast majority of patents that are issued today are “utility patents,” which claim inventive ownership to products, processes, machines, compositions of matter, and manufacture. Instead, this is a design patent, not a utility patent.
Design patents differ significantly from their cousins in the patent world. As noted above, the utility patent covers a range of inventions that are encompassed in Section 101 under the Patent Act. A utility patent protects the functional features of an invention, including use of the invention and method of functionality. Design patents can be found under Section 171 of the Act and are described as “any new, original, and ornamental design for an article of manufacture.” The most significant difference is that a design patent will only protect the ornamental features of a design, not any of its functional aspects. Note, however, that a single invention can be the subject of both separate design and utility patents.
Unlike utility patents—which can have several claims—a design patent has only one claim: the drawings. The protection afford focuses on the “visual appearance as a whole” claimed within the design patent with emphasis on “the visual impression it creates.” See Elmer v. ICC Fabricating, Inc. 67 F.3d 1571, 1577 (Fed. Cir. 1995), Durling v. Spectrum Furniture Co., 191 F.3d 100, 104-05 (Fed. Cir. 1996). If an owner of a design patent were to enforce her rights via an infringement lawsuit, the court generally applies two tests to compare the two designs: the ordinary observer test and the point of novelty test. In order to succeed, a plaintiff bears the burden of showing that both tests are satisfied.
The Supreme Court has explained the novelty test as the following: “[I]if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham v. White, 81 U.S. (14 Wall.) 511, 528 (1871). The more modern point of novelty test requires that the “accused design appropriates the novelty which distinguishes the patented design from the prior art.” See Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).
Typically, it is challenging to win design patent infringement cases because of the difficulty to meet the above tests. The designs must be very similar to one another. Hence, this is why people shouldn’t jump to the conclusion that search engines with similar interfaces are in immediate trouble just because the Google patent was issued this week.
Design patents do play an important role in the intellectual property world. They pick up where copyright law might leave off. Since copyright can be used to cover certain design features (any original expression fixed in a tangible medium) it would be a likely source of protection for elements on webpages. However, copyright does not protect the “functional aspects” of a work. Since certain elements on a webpage are arguably functional (think nearly any of the code or click feature design), there would be parts of a search engine interface that are not protected. Design patents allow for the ornamental features of these functional designs to be protected. So, maybe it’s not such a surprise, nor audacious, that Google opted to protect these elements by way of patent.