Patented, Yoda Was.
In 1982, the United States Patent and Trademark Office granted design patent no. 265,754 to Lucasfilm, Ltd. for Yoda. Well, for "TOY FIGURE."
Under United States patent law, "Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 171. So what is a design under the law, and how does a design patent differ from other patents?
Design v. Utility
A "design" encompasses the visual characteristics in or applied to a thing, rather than the way the thing is used and works. For example, a design patent may claim the configuration or shape of a thing, as well as surface ornamentation of the thing. In some instances, an article (thing) may be the subject of both a utility patent--claiming the way the article works--as well as a design patent, claiming how the article looks. In the case of Yoda the fictional character himself, Lucasfilm would not obtain a utility patent, though it is amusing to try to put together that claim language:
- Substantially green alien life form, the substantially green alien life form at least partially enclosed within a tattered robe;
wherein the substantially green life form is configured to:
carry at least one of a lightsaber and a walking stick;
perform at least one of force push, mind probe, levitation, and telekinesis; and
wherein the substantially green alien life form has a speech pattern favoring the placement of modifiers at the beginning of sentences spoken by the substantially green alien life form.
However, for example, if Lucasfilm (or today, Disney) were to invent a Yoda toy action figure with a novel mechanism, or function, that novel mechanism or function may be the subject of a utility patent depending on whether it met all the patentability requirements.
The design patent for Yoda is below:
A design patent also differs from a utility patent in that no description other than references to the drawings is required. 37 C.F.R. 1.153. For example, the Yoda patent has number of perspective drawings that describe Yoda's ornamental design:
In other words, the drawings or figures in a design patent are the description, with brief statements of how the drawings or figures are showing the design (for e.g. is it a top view? A side view?). As another example, in 1980, Twentieth Century-Fox Film Corporation was granted design patent 254,080 for "TOY SPACECRAFT" (X-wing):
Figure 1, shown on that first page of the patent is "a front perspective view of a toy spacecraft."
Here is another example. Can you guess what this is?
How about now?
If you guessed AT-AT Walker you are correct!
The first drawing above, Figure 8, is "a front elevational view" and Figure 9 is "a bottom plan view." By showing multiple views of the design, the design can be fully described.
Further, a design patent only has one claim. 37 C.F.R. 1.153, Manual of Patent Examining Procedure 1503 (III). In the case of the Yoda design patent, you can see the single claim simply states: "The ornamental design for a toy figure, substantially as shown." However, a utility patent can and typically does have multiple claims, both independent, and dependent.
The term of patent protection (the amount of time the patent holder can exclude others from making the patented invention) is another difference between a design patent and a utility patent. A design patent has a term of 15 years, if the application was filed on or after May 13, 2015, and a term of 14 years is the application was filed before May 13, 2015. 35 U.S.C. § 173. A utility patent has a term of 20 years. 35 U.S.C. § 154.
§ 171 Requirements
Under 35 U.S.C. § 171, the requirements for a design are that it be a "new, original and ornamental design for an article of manufacture."
Being "new," often described as "novelty," is a requirement that applies both to utility patents (35 U.S.C. § 101: "whoever invents any new and useful process, machine, manufacture, or composition of matter . . .") and design patents. 35 U.S.C. § 171. If a design is not new or inventive, it is not patentable. For example, in Blisscraft of Hollywood v. United Plastics, Co., the plaintiff manufactured and sold plastic pitchers which were the subject of a design patent. 294 F.2d 694 (2d Cir. 1961).
The Court's description of the design: "Plaintiff's pitcher is made of polyethylene. Structurally it is cylindrical in shape, has circular horizontal ridges around the body at uniform intervals, and has a flangelike base. It has an H-shaped handle with finger indentations, a scalloped snap-on lid with an extended pouring spout, and a hinged cap attached to the lid which fits over the spout."
Citing 35 U.S.C. § 171, the Second Circuit found the design patent was invalid. Noting that "[t]he design must not only be new, original and ornamental, it must also be the result of invention," the Court found first that the pitcher was "lacking in the indispensable inventive ingredient" because the prior art disclosed all the features of the pitcher, and the combination of those features in this instance did not "represent an exercise of inventive skill and creative talent beyond that of the ordinary designer chargeable with knowledge of the prior art." Id.
"Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 171
A design that is not ornamental is also not patentable. In Blisscraft, the Court found second with respect to the plaintiff's design that the pitcher design did not meet the ornamental requirement of 35 U.S.C. § 171:
To be patentable, a design, in addition to being new and inventive, must be ornamental. This means that it must be the product of aesthetic skill and artistic conception. Plaintiff's pitcher has no particularly aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. Its lid, body, handle and base retain merely their individual characteristics when used in conjunction with each other without producing any combined artistic effect. The reaction which the pitcher inspires is simply that of the usual, useful and not unattractive piece of kitchenware. The design fails to meet the ornamental prerequisite of the statute.
Id. In light of these findings, the plaintiff's design patent was held as invalid.
As Yoda might say, "with that pitcher, the force was not."
For more science fiction patented designs, you can check out D260,789 or visit the USPTO and see if you can find others.