Knowing the Improper Subject Matter of Patents

Utility patents design patents offer two separate and different protections for articles under United States intellectual property law. Utility patents protect the practical and useful features of an invention. This includes all the parts of an invention and the unique configuration in which they have been constructed to carry out a specific function. Design patents are used to protect the cosmetic features of an article and cover the visible aspects including the way it is presented to the public. In some instances, an article in question may present features that have both ornamental and functional purposes, and as a result, they may be considered as a relevant feature in both a design patent and utility patent application.

Since the line between a utility and design feature of an article can become blurred, confusion is likely to arise in the submission process. This can cause the subject matter within a design patent application to be improperly identified as a design feature, when it is, in fact, a functional feature, lacking ornamentality. If a functional feature is incorrectly identified as a design feature in a design application, it is improper use of statutory subject matter under the code 35 U.S.C. 171.

Features of an article may lack a unique design or a distinctive shape within the design application and will be deemed inappropriate material. Under the same statute, a design must also be an original work, not simulating well-known designs that may be easily recognized. Finally, further inappropriate material which is not patentable under any terms by the United States Patent and Trademark Office (USPTO) includes subject matter considered to be offensive to any race, religion, sex, ethnic group or nationality.