Design Patents

 

USPTO design patents are cornerstones of THP research. The attorneys who drafted the applications chose certain words for certain reasons—some of the same 19th-century firms still practice today as Intellectual Property specialists.

When closely examined with particular attention to the application or (frequently earlier) signature date noted in the affidavit, analyzed and interpreted in the context of 19th-century literature, patent clues tell many tales. In the process, the same evidence sometimes contradicts the conclusions of later historians.

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In the early 1840s, typefounders worldwide were seriously threatened by plagiarism for the first time: The new process of electrotyping, invented by German Moritz von Jacobi in 1838, facilitated production of matrices from a competitor’s type.1 George Bruce (Bruce‘s New York Type-Foundry) convinced the US Patent Office to issue “Letters of Patent” for designs demonstrated as new. Similar “registration” procedures had existed in the UK since 1839.

The first US design patent was issued to Mr. Bruce in 1842 for an existing collection of script and ornament fonts that he personally designed. Only display faces were patentable; text fonts were not considered “new, original and non-obvious.” Besides type, design patents extended to such decorative arts as cigar boxes, carpet motifs and ceramic tile patterns.

Until 1856, Bruce was the only US type producer to exercise this right. By the mid-1860s, when the US began to “catch up with” the Industrial Revolution after the Civil War, type design patents were common. Some US type producers nearly always applied for design patents; others, apparently rarely or never.

US patents serve two purposes intended to benefit the public by rewarding personal initiative and building progress based on competition:

(1) Exclusive right to income for the inventor or assignee during a certain term; and (2) after expiration of the term, allowing others access to the original IP [“public domain”] for possible improvement.

Until 1861, the term for design patents was fixed at seven years.2 Thereafter, applicants chose terms of 3.5, 7 or 14 years, depending on the fee paid.3

Starting in 1873, application dates were stated in patent documents. This information is of prime importance because approval sometimes lagged by months or years. The record-holder, Litho Roman#, was applied for by an executive of Inland TF in 1907. The patent was issued in 1914—three years after Inland was purchased by ATF (1911)!

Term length was first stated in type design patent documents in 1874. Unlike tradenames, design patents are not renewable when the term expires.

Patentable designs must demonstrate novelty [“newness”] and originality. As Dan X. Solo explains,4 patent Examiners are qualified to make this determination as experts in specialized fields (for example, type) highly knowledgeable of past and present designs in the US and abroad. For this reason, design patents offer far stronger defense against infringement than copyright, which is automatic and inexpensive to register without an attorney.

As government bureaucrats, 19th-century USPTO personnel naturally changed over the years. Ideally, at least one Examiner at a given time was qualified to evaluate applications for patents of type designs. Otherwise, approvals (hopefully!) were delayed in the meantime.

Incidentally, original digital fonts are automatically copyrighted in the US (even if not
registered) regardless of the letterforms—no “version of the alphabet” is eligible. This IP
protection exists only because when the code is printed on paper, it forms a unique pattern.5

By requirement, the first page of a design patent application illustrates a representative specimen. Specimen pages of some 19th-century fonts have been lost or mis-filed by the USPTO. Sometimes the affidavit language indicates whether the specimen is an impression of the type itself—an important clue in deducing attributions.

Only approved patent applications are available for examination today; those that may have been denied remain a mystery. Numerous specimens shown in trade catalogs and advertisements display notices of patents “pending” or “applied for” that are not validated by USPTO records. In some cases, legitimate applications may have been denied. If a novel face was denied a patent, then (provided the USPTO retained denied applications), the application specimen itself may have sufficed as evidence of infringement.

In other cases, these notices may have been like warning signs reading Beware of the Dog when no dog existed. Either way… The mere implication that a patent application had been duly delivered to the USPTO wielded approximately the same clout as a “done-deal” US design patent (without the expense of actually filing one)—and it was approximately as useless in international IP litigation.

US patents have always been issued only to individuals―not to organizational entities, and applications must be filed by an Inventor.

  • A letterpress type designer had no use for a patent unless he commanded the facilities and capital to manufacture, market and distribute the finished product (e.g. Bruce, Page).
  • Most designers assigned their patents to a producer in the application affidavit, thereby transferring legal protection of daunting financial risk.
  • When no assignee was named, identification of a signature witness as a producer representative implies ownership agreements.

  Inventor of Record. Patent procedures were inconsistent among 19th-century producers: Some applications were usually (rarely always) submitted by the designer; in other cases, by a company principal historically unqualified as a type designer. Record-keeping, royalty income, personal “IOUs” and/or a corporate “shield” may have been factors in the decision.

By the late 1870s, legal language describing the applicant’s claim to a type design was fairly consistent throughout the US type industry; THP interprets the meanings as follows:

  • To qualify for a patent, all applicants claimed that they invented the design (even if they purchased it).
  • Designers usually claimed only that they invented it.
  • When designers claimed that they invented and produced it, they designed and cut it.
  • Non-designer producers claimed that they invented and produced it.

Accordingly, typical patent application affidavits read, “I, [name, place of residence], have originated and designed…” vs “invented and produced….”  This is another important clue, especially in eliminating attributions.

  Work for Hire. Unlike copyrights (administered by US Library of Congress), a design patent for work performed by a salaried or commissioned Inventor is not automatically the property of the employer or client; it must be assigned. The first example of this practice in the type industry occurred in c1866.6

In the late 1870s, independent designers-cutters commissioned by patent-seeking clients began filing the applications and assigning the designs to the producers; by the late 1880s, this procedure applied to most TF employees as well.

With the possible exception of Joseph W. Phinney, all applications filed by ATF personnel after the merger of February 1892 were designers. At about the same time, certain ATF-independent TFs (Keystone, BBS) adopted the same policy—perhaps there was a new USPTO regulation on this issue.

Freelancers naturally named the client as assignee in the affidavit, and staff designers usually did so; employers usually did not. Two exceptions: (1) In 1872-1875, C.E. Heyer patented ten faces not assigned to BTF, then his employer since c1867. Because the Boston Type Foundry was a coöperative of shareholders including employees,7 perhaps there was no one to “assign it to.” Ownership agreements are implied because his signatures were witnessed by the company treasurer and the faces were shown in BTF specimen books. (2) All MSJ executives who applied for patents assigned them to the company.

Surely every successful type producer recognized the same reality: “This designer has made me a rich man—it is wise to treat him well, pay him handsomely and cultivate his loyalty.” Their approaches to the design-patent application process suggest a gamut of “mindsets” that may explain the inconsistency of their policies:

  • The designer has no use for a patent—so why bother with the intermediate step (and additional fees?) of delegating the application to him for assignment?
  • I must keep this designer’s identify a secret so no competitor will try to lure him away from me. As my attorney advised, he has signed an agreement authorizing me to apply for (some or all) patents of his work naming myself as Inventor.
  • In exchange for his granting me the legal right to name myself as Inventor of Font X, I will reimburse/share with him the dollar amount saved in related attorney and/or USPTO fees—or award him a royalty percentage of income from Font X.
  • My marketing strategies, personal aesthetic tastes, supervision and guidance of his work determine what this man does as “work for hire.” So I am the true designer.
  • This man conceived and designed this font, so he should apply for the patent and assign it to my company.

It is unclear whether the applicant (or assignee) owned sole right to derivatives during the term. For example, commercial specimens of 19th-century fonts sometimes displayed patent notices traced to obviously related versions different in weight, width/height, ornamentation, etc. Were these “piggy back” patents valid, or was the owner risking infringement by economizing on duplicate fees?

Nor is it clear whether designs of printing fonts were considered “new” when adapted from other media. Type cutters were frequently issued patents for faces clearly designed by someone else (personal handwriting, lithographic or engraved lettering, etc.). At other times, they realistically designed faces that the Inventor of Record may have only sketched or described, perhaps in reference to one or more competitors’ specimens.
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Footnotes    (← returns to text)
  1. Solo, D.X.: An Argument in Opposition to Copyright Protection of Printing Types. Expert testimony presented to the United States Copyright Office, pages 22-23.  Self-published illustrated manuscript (Oakland, CA 1974).
  2. Ladas & Parry LLP, personal communication 2011.
  3. Dan X. Solo, personal communication 2007.
  4. Solo, ibid.1-18.
  5. Dan X. Solo, personal communication 2007.
  6. USPTO D2577: Julius Herriet Sr./Bruce TF, approved February 1867.
  7. Bullen, H.L. [pen-name Quadrat](1906-1908): Discursions of a Retired Printer. In The Inland­ Printer 38:38, Oct 1906.