Chapter 3 Patent

I . Utility Patents

1. Introduction

Thomas Jefferson’s desire to provide an incentive to invent,but draw a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not" ,is reflected in U. S. Patent Act,35 U. S. C. A. § § 1 -376,and in the extensive case law that construes and applies it. The Patent Act provides that in order to qualify for a utility patent,an invention must be"novel" ,id. , § 102;"non - obvious" ,id. , § 103 ;and" useful," § 101.

The United States Patent and Trademark Office ( " PTO" ) , which is a part of the Depart­ment of Commerce, initially determines whether an invention merits a patent. Inventors seeking a patent must submit a detailed application, containing specific claims which describe the inno­vative qualities of the invention. A patent examiner, with technical training in the field of the in­vention , then conducts a search of the prior art, or existing knowledge in the field, and deter­mines whether the invention meets the novelty, non - obvious, usefulness and other Patent Act requirements. A disappointed applicant may appeal a rejection to the Board of Patent Appeals and Interferences,35 U. S. A. § 134,and from there he may either appeal directly to the Unit­ed States Court of Appeals for the Federal Circuit,id. , § § 141,144,or obtain de novo review of the denial in the U. S. District Court for the District of Columbia. Id. , § 145.

If it is determined that patentability requirements are satisfied, the PTO will issue a pa­tent. The PTO’s issuance of a patent,however,only provides a presumption that the invention is patentable. Id. , §282. If the patentee attempts to enforce her monopoly in an infringement ac­tion, the defendant may challenge the validity of the patent, leading the court to undertake its own review. If the court determines that the invention fails to satisfy the provisions of the Patent Act, it will declare the patent invalid and refuse to enforce it.

2. The Subject Matter of Utility Patents

As the Diehr opinion indicates, abstract ideas, scientific principles, laws of nature, and mathematical formulas are not patentable. Specific, physical applications of ideas, principles, laws or formulas are patentable. Thus,while Sir Issac Newton could not obtain a patent on the law of gravity, he could obtain a patent on a new machine or process which incorporates the law of gravity in its operation.

3. Standards of Patentability

1. Utility

A patent may be denied for lack of usefulness if the invention fails to operate as claimed. For example,in Newman v. Quigg,877 F. 2d 1575,11 U. S. P. Q. 2d 1340( C. A. F. C. ) ,modi­fied 886 F. 2d 329(C. A. F. C. 1989) ,cert. denied 495 U. S. 932,110 S. Ct. 2173,109 L. Ed. 2d 502 (1990) ,the applicant claimed to have invented a device that generated more usable en­ergy than it consumed(a" perpetual motion" machine). The P. T. 0. found that such a device would violate" either the first or second law of thermodynamics" ,and rejected the application. In the course of district court review of the rejection, the application was ordered to submit a working model of the invention to the National Bureau of Standards for testing. When the Na­tional Bureau of Standards reported that tests failed to support the applicant’s claims of more energy output than input, the district court held the claimed invention unpatentable for lack of usefulness.

See also Fregeau v. Mossinghoff,776 F. 2d 1034,227 U. S. P. Q. 848(C. A. F. C. 1985). In that case the applicant claimed a method for enhancing the flavor of beverage by passing them through a magnetic field. A highly skeptical patent examiner rejected the claims for lack of utility due to inoperativeness. The applicant then submitted declarations from a Professor of Food Science who had conducted taste tests, averring that the test results demonstrated that the invention worked. The examiner remained unconvinced,finding that the declaration was not" ev­idence of the type convincing to the scientific community. "The Board of Patent Appeals and Interferences and the district court agreed with the examiner. The f ederal Circuit affirmed, no­ting that a jorima facie case of inoperability had been established simply by the nature of the in­vention, thus shifting the burden to the applicant to rebut the presumption.

2. Novelty

Most nations grant patents to the first inventor to file an application, which leads to a" race to the patent office" when two or more sets of inventors are working on similar projects. The U- nited States,in contrast,favors granting a patent to the first person to make the invention. The novelty provisions in Section 102(a), (e) ,and(g) work together to make it very difficult for a" subsequent inventor" to obtain a patent.

Section 102 ( a) provides that an applicant will be denied a patent if, prior to the applicant’s invention date, any of four things happened: (i) the invention was" known" in the U­nited States; (ii) the invention was" used" in the United States; (iii) the invention was the sub­ject of a patent anywhere in the world ;or(iv) the invention was revealed in a" printed publica­tion" anywhere in the world.

Section 102(e) provides that even if the earlier invention was not disclosed to the public in any of the ways enumerated in subsection(a), its existence will preclude the subsequent invent­or from obtaining a patent if it was disclosed in a U. S. patent application that was pending on the subsequent inventor’s invention date and was'later granted. Note that pending patent appli­cations are kept in secrecy,35 U. S. C. A. § § ,122,so that our subsequent inventor applicant may have had no way of knowing the earlier invention’s existence.

Section 102(g)places a final obstacle in the subsequent inventor’s path to the Patent Of­fice by providing that the earlier invention’s existence will preclude a patent if the earlier inven­tion was made in the United States and was not abandoned, suppressed or concealed.

Lack of novelty(" anticipation") under Section 102 of the Patent Act entails" the presence in a single prior is disclosure of all elements of a claimed invention arranged as in that claim. " Connell v. Sears,Roebuck and Co. ,722 F. 2d 1542,1548,220 U. S. P. Q. 193,198 (C. A. F. C.

1983. . Essentially,the test for anticipation is the same as that for literal infringement. If some­thing disclosed in a single reference would have literally infringed the patent if it arose after the patent issued,then it will anticipate if it arises before the applicant’s invention.

The novelty,statutory bar,and obvious determinations are all made with reference to the prior art—earlier patents,publications and other" disclosing" events identified in Section 102. However,while the obviousness determination may be made by combining two or more prior art reference, Section 102 anticipation requires that the invention be revealed in a single refer­ence—a single earlier invention, patent or publication. Additional reference may only be used to interpret the single reference, or show that the single reference would have enabled a person with ordinary skill in the art to practice the invention.

3. Non - obviousness

The obviousness determination distinguishes which inventions are worthy of the" public embarrassment of a monopoly" and which are not. It is the most difficult standard to satisfy,and the most difficult to administer. The John Deere Court states that in order to assess the obvious­ness of an invention under Section 103 , three basic factual findings must be made: (i) the scope and content of the prior; (ii) the differences between the prior art and the claims at issue; and (iii)the level of ordinary skill in the pertinent art. Once these facts are ascertained,then the question of law can be determined: would the subject matter of the patent application have been obvious at the time the invention was made to a person having ordinary skill in the art and knowledge of the pertinent prior art?

4. Novelty         v. Obviousness

It would seem that an invention that is disqualified for lack of novelty would also be dis­

1984. . That being the case, do we need a separate novelty provision? See R. L. HARMON, PATENTS AND THE FEDERAL CIRCUIT 43 -44(2D ED. 1991).

4. The Geographic and Temporal Scope of a Patent

As Deepsouth points out,a U. S. patent is only effective to prevent infringing acts in the U- nited States, during the Prescribed patent term. In Magna - Graphics, the majority expressed concern that a ruling in favor of the defendant would effectively deprive the patentee of the ben­efit of the last year of its patent term.

Assume that A owns a patent for a process, and B begins to market a machine that carries out the patented process. Completion of a sales contract,and usually taken five years to build. A’s patent will expire in four years. Under Magna - Graphics,is there an infringement? See Joy Technologies Inc. v. Flakt Inc. ,6 F. 3d 770,28 U. S. P. Q. 2d 1378 ( C. A. F. C. 1993).

As we have seen in prior cases, the law generally looks unfavorably on a patentee’s at­tempts to extend his monopoly beyond the intended patent term. Licenses to exploit a patented invention that attempt to impose royalty obligations beyond the expiration of the patent are deemed unenforceable as a matter of public policy. Brulotte v. Thys Co. ,319 U. S. 29,85 S. Ct. 176,13 L. Ed.2d 99(1964).

Patent protection commences when the patent issues. There can be no infringement liability for acts occurring before that time. Because a patent gives no retroactive rights,the legend"pa­tent pending" ,often found on articles of commerce,has no legal significance. It only notifies the public that the invention may later be the subject of monopoly rights,if the PTO acts positively on the application. States Industries,Inc. v. A. 0. Smith Corp. ,751 F. 2d 1226,1236,224, U. S’. P. Q. 418 (C. A . F. C. 1985). The public is free to exploit the invention until the day the patent issues.

5. The Patentee’s Right

Section 154 of the Patent Act , as amended, states the rights afforded by patent in the nega­tive; The patents has the right to" exclude others from making, using, offering for sale or selling the invention throughout the United States or importing the invention into the United States. " If the invention is a process,the patented has the right to"exclude others from using,offering for sale or selling throughout the United States,or importing into the United States,products made by that process. " Note that a patent does not convey any affirmative rights to the patentee to make,use,sell,and offer to sell or import the invention herself.

Likewise, to grant a patent does not compel the patentee to make, use, sell or import the invention,or license others to do so. Some nations subject patentees who fail to" work" their pa­tents ( exploit their inventions)domestically to compulsory license,which are issued to third par­ties wishing to exploit the invention, or provide that the" non - working" patentee forfeits the pa­tent.

1. The Right to Exclude Others from Directly Infringing the Patent.

DEEP SOUTH PACKING CO. ,INC. v. LAITRAN CORP.

Supreme Court of the United States, 1972

406 U. S. 518,92 S. Ct. 1700,32 L. Ed. 2d 273,173 U. S. P. Q. 769

MR JUSTICE WHITE delivered the opinion of the court

Petitioner and respondent both hold patents on machines that devein shrimp more cheaply and efficiently than competing machinery or hand labor can do the job. Extensive litigation be­low has established that respondent, the Laitram Corp. ,has the superior claim and that the dis­tribution and use of petitioner Deepsouth’s machinery in this country should be enjoined to pre­vent infringement of Laitram’s patents. We granted certiorari to consider a related question_: Is Deepsouth, barred from American market by Laitram’s patents, also foreclosed by the patent law from exporting its deveiners,in less than fully assembled form,for use abroad?

I

A rudimentary understanding of the patents in dispute is a prerequisite to comprehending the legal issue presented. The District Court determined that the Laitram Corp. held two valid patents for machinery used in the process of deveining shrimp. One,granted in 1954,accorded Laiream rights over a" slitter" which exposed the veins of shrimp by using water pressure and gravity to force the shrimp down an inclined through studded with razor blades. As the shrimp descend through the trough their backs are slit by blades or other knife - like objects arranged in a zig - zag pattern. The second patent, granted in 1958, covers a" tumbler" ," a device to me­chanically remove substantially all vein from shrimp whose backs have previously been slit" ,by the machines described in the 1954 patent. This invention uses streams of water to carry slit shrimp into and then out of a revolving drum fabricated from commercial sheet metal. As shrimp pass through the drum the hooked" lips" of the punched metal," projecting at an acute angle from the supporting member and having a smooth rounded free edge for engaging beneath the vein of a shrimp and for wedging the vein between the lip and the supporting member," engage the veins and remove them.

Both the slitter and the tumbler are combination patents, that is, none of the parts referred to be new,and none are claimed as new;nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all,arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the ( machine) in the manner therein described, is stated to be the improvement and is the thing patented. Prouty v. Ruggles, 16 Pet. 336,341,10

L Ed.985(1842).

The slitter’s elements as recited in Laitram’s patent claim were; an inclined trough, a" knife" (actually,knives)positioned in the trough,and a means(water sprayed from jets)to move the shrimp down the trough. The tumbler’s elements include a" lip," a" support member," and a"means" (water thrust from jets). As is usual in combination patents,none of the elements in either of these patents w^:ere themselves patentable at the time of the patent,nor are they now. The means in both inventions,moving water,was and is,of course,commonplace. (It is not sug­gested that Deepsouth infringed Laitram’s patents by its use of water jets. ) The cutting instru­ments and inclined troughs used in slitters were and are commodities available for general use. The structure of the lip and support member in the tumbler was hardly novel: Laitram concedes that the inventors merely adopted punched metal sheets ordered from a commercial catalog in order to perfect their invention. The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way—a novel union of old means was designed to achieve new ends.

II

The lower court’s decision that Laitram held valid combination patents entitled the corpora­tion to the privileges bestowed by 35 U. S. C. § 154, the keystone provision of the patent code. " [F]or the term of seventeen years" from the date of the patent, Laitram had" the right to exclude others from making, using, or selling the invention throughout the United States...." The § 154 right in turn provides the basis for affording the patentee an injunction against di­rect, induced, and contributory infringement,35U. S. C. §283,or an award of damages when such infringement has already occurred ,35 U. S. C. § 284. Infringement is defined by 35 U. S.

3. § 271 in terms that follow those of § 154;    

1. Except as otherwise provided in this title, whoever without authority makes uses or seUs any patentedinyention., within _the_ United States during the tenn of the patent therefore,

[ directly] infringes the patent.

2. Whoever actively includes infringement of a patent shall be liable as an infringer.
3. Whoever sells a component of a patented machine,manufacture,combination or com­position , or a material or apparatus for use in practicing a patented process, constituting a mate­rial part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non - infringing use, shall be liable as a contributory infringer.

As a result of these provisions the judgment of Laitram’s patent superiority forecloses Deepsouth and its customers from any future use (other than a use approved by Laitram or oc­curring after the Laitram patent has expired) of its deveiners" throughout the Unites States. " The

patents provisions taken in conjunction with judgment below also entitle Laitram to the injunc­tion it has received prohibiting Deepsouth from continuing to" make" or,once made,to" sell" de- veiners"throughout the United States. " Further,Laitram may recover damages for any past un­authorized use,sale,or making"throughout the United States. "This is not much disputed.

The Court of Appeals for the Fifth Circuit reversed, thus departing from the established rules of the Second,Third, and Seventh Circuits. In the Fifth Circuit panel’s opinion those courts that preciously considered the question" worked themselves into. . . a conceptual box" by adop­ting" an artificial,technical construction" of the patent, laws,a construction,moreover, which in the opinion of the panel," [subverted] the Constitutional scheme of promoting the Progress of Science and useful Arts’ by allowing an intrusion on a patentee’s rights. "

We disagree with the Court of Appeals for the Fifth Circuit. Under the common law the in­ventor had no right to exclude others from making and using his invention. If Laitram has a right to suppress Deepsouth’s export trade it must be derived from its patent grant, and thus from the patent statute. We find that 35 U. S. C. § 271 ,the provision of the patent laws on which Laitram relies,does not support its claim.

Certainly if Deepsouth’s conduct were intended to lead use of patented deveiners inside the United States it’s production and sales activity would be subject to injunction as an induced or contributory infringement. But it established that there can be no contributory infringement with­out the fact or intention of a direct infringement. In a word,if there is no [direct] infringement of a patent there can be no contributory infringer. Mercoid Corp. v. Mid - Contiment Co. , 320 U.S. 661,677,64 S. Ct. 268,276,88 L. Ed. 376 (1994) (Frankfurter, J. , dissenting on other grounds).  . •

The statutes make it clear that it is not an infringement to make or use a patented product outside of the United States. 35 U. S. C. § 271. Thus,in order to secure the injunction it seeks. Laitram must show a §271 (a)direct infringement by Deepsouth in the United States,that is, that Deepsouth" makes,"" uses," or" sells" the patented produce within the bounds of this coun­try.

Laitram does not suggest that Deepsouth" uses" the machines. Its argument that Deepsouth sells the machines—based primarily on Deepsouth’s sales rhetoric and related indicia such as price—cannot carry the day unless it can be shown that Deepsouth is selling the" patented in­vention. " The sales question thus resolves itself into the question of manufacture_: did Deep- south" make" (and then sell)something cognizable under the patent law as the patented inven­tion, or did it"make" (and then sell)something that fell short of infringement?

The Court of Appeals, Believing that the word" make" should be accorded" a construction in keeping with the ordinary meaning of that term, "held against Deepsouth on the theory that"

makes" "mean what it ordinarily connotes—the substantial manufacture of the constituent parts of the machine." Passing the question of whether this definition more closely corresponds to the ordinary meaning of the term than that offered by Judge Swan in Andres 35 years earlier( some­thing is made when it reaches the state of final" operable" assembly) ,we find the Fifth Circuit’s definition unacceptable because it collides head on with a line of decisions so firmly embedded in our patent law as to be unassailable absent a congressional recasting of the statute.

It was this basic tenet of the patent system that led Judge Swan to hold in the leading case, Radio Corp. of America v. Andrea, 79 F. 2d 626 (CA2 1935) ,that unassembled export of the elements of an invention did not infringe the patent.

" [The] relationship is the essence of the patent.

"... No wrong is done the patentee until the combination is formed. His monopoly does not cover the manufacture or sale of separate elements capable of being,but never actually,as­sociation is made outside the territory for which the monopoly was granted. "Id. ,at 628.

We reaffirm this conclusion today.

2. The Right to Exclude Others from Assisting Third Parties to Infringe.

HEWLETT - PACKARD CO. v. BAUSCH&LOMB INC.

United States Court of appeals for the Federal Circuit, 1990 909 F. 2D 1464,15 U. S. P. Q. 2d 1525

RICH,CIRCUIT JUDGE.

Section 271 ( b) provides that" Whoever actively induces infringement of a patent shall be liable as an infringer. "At the outset,we feel that it is necessary to make clear the distinction, often confused,between active inducement of infringement under § 271(b) and contributory infringement under § 271 (c). Prior to the enactment of the Patent Act of 1952, there was no statute which defined what constituted infringement. However, infringement was judicially divid­ed into two categories;" direct infringement," which was the unauthorized making,using or sell­ing of the patented invention, and" contributory infringement." which was any other activity where,although not technically making,using or selling,the defendant displayed sufficient cul­pability to be held liable as an infringer. Such liability was under a theory of joint tortfeasance, wherein one who intentionally caused, or aided and abetted, the commission of a tort by another was jointly and severally liable with the primary tortfeasor.

The most common pre - 1952 contributory infringement cases dealt with the situation where a seller would sell a component which was not itself technically covered by the claims of a product or process patent but which had no other use except with the claimed product or process. In such cases, although a plaintiff was required to show intent to cause infringement in order to establish contributory infringement, many courts held that such intent could be pre­sumed because the component had no substantial non - infringing use.

The legislative history of the Patent Act of 1952 indicates that no substantive change in the scope of what constituted" contributory infringement" was intended by the enactment of § 271. However,the single concept of" contributory infringement" was divided between § §271 (b) and 271 (c) into" active inducement" (a type of direct infringement) and" contributory infringe­mentrespectively. Section 271 (c) codified the prohibition against the common type of con­tributory infringement referred to above, and made clear that only proof of a defendant’s knowl-

edge,not intent,that his activity cause infringement Was necessary to establish contributory in­fringement. Section 271 (b) codified the prohibition against all other types of activity which, pri­or to 1952,had constituted"contributory infringement. "

That,however,leaves open the question of what level of knowledge or intent is required to find active inducement under § 271 (b). On its face, § 271 (b) is much broader than § 271 (c)and certainly does not speak of any intent requirement to prove active inducement. Howev­er, in view of the very definition of" active inducement" in pre - 1952 case law and the fact that § 271 (b) was intended as merely a codification of pre - 1952 law, we are of the opinion that proof of actual intent to cause the acts which constitute the infringement is a necessary prereq­uisite to finding active inducement.

8. Plant Patents
9. The Plant Patent Act

The Plant Patent Act was passed in 1930,long after utility patents had been established in the United States. It was later codified in the Patent Act of 1952 at Section 161 - 164. Section 161 provides that utility patent provisions should apply to plant patents, except as otherwise pro­vided. As the Fifth Circuit’s opinion indicates, adopting provisions created and construed with new and useful machines, compositions of matter, manufactures and processes in mind to plants raises some conceptual problems.

2. The Plant Variety Protection Act

Congress excluded sexually reproduced plants(Plants reproduced from seeds,rather than through cloning)from the Plant Patent Act because in 1930,it was believed that new varieties could be reproduced true - to - true through seeds. By 1970, however, it was generally recog­nized that true - to - true reproduction was in fact possible. This lead Congress to enact the Plant Variety Protection Act(" PVPA" )to extend patent - like protection to new sexually repro­duced varieties of plants. The PVPA,which is codified at 7 U. S. C. A. § § 2321 -2582,pro­tects new varieties through certificates of plant variety protection, issued by the Department of Agriculture.

As recently amended by the Plant Variety Protection Act Amendments of 1994,Pub. L. No. 103 - 349,108 Stat. 3136,the PVPA extends protection to sexually reproduce and tuber propagated plant varieties other than fungi and bacteria. 7 U. S. C. A. § 2402. To qualify,the

new variety must be new, distinct, uniform, and stable. Id. The latter two conditions underscore the need to ensure that the variety reproduces itself true - to - type. Congress declined to in­clude a nonobviousness requirement. There are,however,statutory bar provisions reminiscent of Patent Act Section 102(b) .7 U. S. C. A. § 2402.

3. Utility Patents for Plants

After the Supreme Court determined, in Diamond v. Chakrabarty ,that the scope of utility patents extends to living matter,it became evident that new plant matter could qualify for utility patent protection even if it also qualified for a plant patent or a certificate of plant variety pro­tection. The PTO’s Board of Patent Appeals and Interferences confirmed this in ex parte Hibb- erd ,227 U. S. P. Q. 2d 443 (PTO Bd. Pat. App. 1985 ) , when it found that plants, plant seeds, and plant tissue cultures constituted patentable subject matter under Section 101 of the Patent Act.

4. The International Convention of the Protection of New Varieties of Plants

The United States is a member of the International Convention for the Protection of New Varieties of Plant,Dec. 2,1961 ,last revised, 1991,33 U. S. T. 2703 ,T. I. A. S. No. 10,199. The Convention, which is administered by the Union for the Protection of New Varieties of Plants (" UPOV") ,in Geneva,provides for national treatment and a filing right of priority, as well as a number of substantive common rules. Among other things, it specifies a minimum number of genera and species that must be protected, standards for predictability, and a minimum term of protection, and minimum rights that must be offered. It provided, however, that member nations may design their protection either in the form of a special title, such as a plant variety protection certificate, or the patent.

IV. Design Patents

Congress created design patents in 1842. The present design provisions can be found at Sections 171 -173 of the Patent Act. Section 171 authorizes patents for" any new, original and

• ornamental design for an article of manufacture'' , and specifies that the provisions relating'' to patents for inventions shall apply to patents for inventions and shall apply to patents for de­signs, except as otherwise provided. "35 U. S. C. A. § 171. Pursuant to this directive, courts have imposed the" novelty" and" nonobviousness" standards developed in connection with utility patents to judge the patentability of design. " Omamentality ” replaces" usefulness" as the third standard of design patentability.

According to the Supreme Court;

The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appear­ance. The thing invented or produced,for which a patent is given,is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which

it gives form. The law manifestly contemplates that giving certain new and original appearance to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious producer of those appearances the advantages flowing from them.

1. Design Patents

A design patent is not concerned with how an article of manufacture was made or how it works. It is only concerned with how it looks. The protected design may consist of surface orna­mentation , the article’s configuration, or a combination of both. Given the purpose of design pa­tents , however, only those design aspects open to human view are eligible for protection. The Court of Appeals for the Federal Circuit has held that an article’s design is eligible for protec­tion if,at some point in the life of the article,its appearance is a matter of concern. Thus,for ex­ample , if the appearance of an article of manufacture, such as a vitamin tablet or a casket, is de­signed to attract purchasers, it is patentable even though the appearance will be hidden when the article is put to its intended use.

2. The"OrnamentaIity" Requirement

To qualify for a design patent, the design of an article of manufacture must be primarily or­namental, rather than functional. As the Court of Appeals for the Federal Circuit has ex­plained ," when function dictates a design, protection would not promote the decorative arts, a purpose of the design patent statute. " Avia Group International,Inc. v. L. A. Gear California, Inc. ,853 F. 2d 1557,1563,7 U. S. P. Q. 2d 1548,1553 (C. A. F. C. 1998). Moreover, protec­tion of functional designs would undermine utility patents. See Lee v. Dayton - Hudson Corp. , Matrix International,Inc. ^838 F. 2d 1186,1188,5 U. S. P. Q. 2d 1625,1627 ( C. A. F. C. 1988). In Lee,the patented article was a massage device consisting of an elongated handle with two opposing balls at orie end. The patentee argued that the scope of design patent extended to the configuration of the device, and thus that any massage device with that general configuration infringed the patent. The court rejected the argument, limiting the scope of infringed the patent. The court rejected the argument , limiting the scope of-the patent to the surface ornamentation of the device, on the grounds that the configuration was dictated primarily by functional considera­tions. The court observed that"by obtaining a design patent,not a utility patent,Mr. Lee limited his patent protection to the ornamental design of the article. " Design patents do not and cannot include claims to the structural or functional aspects of the article.

3. The Relationship of Design Patents to Utility Patents

To begin,the term of design patents is 14 years,commencing on the date of issuance. De­sign patent applicants enjoy a shorter foreign filing priority period, and do not have the benefit of the new provisional application procedure, made available for utility and plant patents under the Uruguary Round Agreement Act. See 35 U. S. C. A. § 172. On the other hand,unlike utili­ty and plant patentees, design patentees may recover certain infringing defendants’ profits, as