What is an article of manufacture?
Design patents cover only those designs that may be applied to articles of manufacture [see MPEP 1503]. An “article of manufacture” essentially means a physical end product, or a component thereof, that results from the manufacturing process. There is no such thing as a pattern design patent or a design patent that simply covers a picture in the abstract without regard to a tangible product.
Examples of what would not constitute an article of manufacture include natural articles (e.g., fruits), processes or methods, machines and compositions of matter. Such categories would not be eligible for design patent protection.
Can a patented design be separated or disembodied from the article of manufacture?
No, design patents do not protect pictures, images, graphic designs, patterns or any other 2-dimensional visual imagery in the abstract. A patented design must be tied to an article of manufacture. In fact, the patent examination manual known as the MPEP requires that each design patent application specify the article of manufacture in the title and claim. For example, a design patent application simply entitled “LEOPARD PATTERN” or “CHEETAH PRINT” would be objected to by the patent examiner since such a title fails to designate a particular article. A more appropriate title would include an article of manufacture such as “CHAIR WITH LEOPARD PATTERN.” But, can a design patent for a chair be enforced against products that are not chairs?
Can a design patent for one article be enforced against a different type of product?
You can see where this is going. IP owners seeking broad coverage of a particular pattern or graphic design in the abstract will not be able to accomplish this objective with a single design patent. Recently, an owner of a design patent for a pattern for a chair unsuccessfully tried to stop a competitor from using an allegedly similar pattern on a basket. Design patents do not protect designs disembodied from the products.
The other takeaway from this case is that you cannot enforce a design patent for a chair against a basket, no matter how closely similar the allegedly infringing pattern may be. Those are two different articles, and the design patent in the lawsuit covered only chairs. Notice how the similarity of the accused design and patented design was not the issue.
How to obtain broad design patent coverage for patterns and artwork
We just said that designs cannot be patented apart from the articles of manufacture. If a particular design must always be tied to a tangible article or component, why not file multiple design patent applications with the same design as applied to different articles of manufacture? Such a strategy can help establish exclusivity in the marketplace by preventing others from copying a particular pattern or artwork onto a variety of articles. The challenge might be budgeting this effort and deciding which articles would be most popular for a particular design.
Filing both design patent and copyright applications
One comprehensive IP strategy may be to file both design patent applications and copyright applications concurrently. While copyright protection may be granted to two-dimensional visual artwork, keep in mind that copyright registration carries its own set of requirements that differ from those of design patents.