As every designer knows, there are concepts (for example, the idea of a sectional sofa) and there are designs (for exampe, the particular appearance of your sectional sofa). To be new (also referred to as “novelty”), a design must differ from all previous product designs (known as the “prior art”). You don’t have to come up with a new concept, only a new design.


A design must also be original, which means that it has to do more than simply imitate what already exists. A design that simulates a well-known object—for example, a paperweight replica of the Empire State Building—is not considered to be original. The design must be the result of “industry, effort, genius, or expense.” (Smith v. Whitman, 148 U.S. 674 (1893).)

It’s generally not considered original to depict something that occurs naturally, but this standard is interpreted loosely. For example, a design patent for a model of a human baby was invalidated (In re Smith, 77 F.2d 514 (CCPA 1935)), but the designers of a replica female breasts on beads were granted a design patent and successfully enforced it against competitors (Superior Merchandise v. M.G.I. Wholesale, 52 U.S.P.Q. 2d 1935 (E.D. La. 1999).)


What is Prior Art?

Prior art includes:

  • any design used on a useful object in public use or on sale in the U.S. before the filing date of your design patent application (with certain exceptions within one year prior to filing for sales  by the designer).
  • anything that was publicly known or used by others in the U.S. before the date of filing
  • anything that was made or built in the U.S. by another person before the date of filing
  • any work that was the subject of a prior design patent, issued before the filing date of your design patent, or
  • any work that was published before the filing date of your design patent

© 2012 Rich Stim