Using Patents to Protect Ornamental Objects

A design patent protects the ornamental features of a manufactured article. One of the requirements that an ornamental design must meet in order to qualify for a design patent, is that it must be original to the inventor or inventors that are seeking protection. The design patent statute is found in Title 35 of the United States Code. The first part of Section 171 imposes four requirements for design patentability: novelty, originality, ornamentality, subject matter that is an article of manufacture. The originality requirement excludes from patentability any simulation of known objects, persons or naturally occurring forms. The originality requirement also bars issuance of a design patent for a design derived from any source or person other than the individuals named as inventors.

Protection of the True Inventor

The originality requirement protects the interest of the true inventor and the general public. The requirement bars a patent even if the true inventor does not complain or if the true inventor is not known. Only a true and original inventor may obtain a patent. This requirement of originality bars issuance of a patent for a conception derived from any source or person other than the person or persons named as the inventorship entity. Originality serves to limit patent monopolies to those who actually expend inventive effort in a successful fashion. It also serves to reinforce other substantive requirements of patentability.

Joint and Sole Inventorship

The concepts of sole inventorship and joint inventorship are critical elements of originality. Sole inventorship occurs when one person conceives the solution to the problem, the means to the desired end, which constitutes the subject matter of the invention. Joint inventorship occurs when more than one person contributes to the conception of the solution. It is frequently difficult to determine who has in fact contributed to the conception of a given invention because the contribution must consist of more than suggesting a desired result or following the instructions of another. The originality requirement operates against both nonjoinder, which is the failure to name a joint inventor, and misjoinder, which is erroneously naming a joint inventor. However, where nonjoinder or misjoinder occurs because of error without deceptive intention, a patent or application may be corrected to reflect the proper inventorship entity without loss of rights.

Definition of a Joint Invention

Generally, a joint invention occurs when two or more persons, collaborating together, each contribute to the conception of the solution to a problem which constitutes the invention. A party does not become an inventor either by suggesting a desired end or result, with no suggestion of means, or by merely following the instructions of the person or persons who conceive the solution.

General Knowledge and Suggestions

An inventor may obtain information and suggestions of a general nature from other persons without thereby impairing the originality of the later invention or making the person providing such information a joint inventor.

Inventorship and Originality

In determining inventorship and originality, the focus is primarily upon who conceived the physical structure with new products or the operative steps with new processes that solves the problem at hand, but aspects other than structure may be of importance in determining patentability. The theory or explanation as to why a product or process works to achieve its aim is generally not viewed as part of the act of inventing. Hence, it would seem to follow that one whose sole contribution is discovery of such a theory or explanation is not a joint inventor.

Applicant and Assignee

Generally, the proper inventorship entity must actually file the application even though the underlying ownership rights in the application and any patent to be issued thereon have already been assigned to another. In certain circumstances, persons are allowed to make application on behalf of the inventor. In requiring application by the inventor, rather than the assignee, United States practice is contrary to that of most other countries.

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