Design Patents

In the early 1840s, typefounders were seriously threatened by plagarism for the first time: The new process of electrotyping, invented by German Moritz von Jacobi in 1838, facilitated production of matrices [the “masters” for typecasting] from a competitor’s type.¹ George Bruce (Bruce’s New York Type-Foundry [Bruce]) convinced the US Patent Office to issue “Letters of Patent” for designs demonstrated as new.

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. Besides type, design patents extended to such decorative arts as cigar boxes, carpet motifs and ceramic tile patterns. Similar “registration” procedures have existed in the UK since 1839.

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

Also in 1874, application dates were first stated in patent documents. This information is of prime importance because approval sometimes lagged by months or years. The record-holder, Litho Roman#, was filed by an executive of Inland TF in 1907 and issued in 1914—three years after Inland was purchased by ATF (1911)!

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.

Incidentally, original digital fonts are likewise 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. Sometimes the affidavit language indicates whether the specimen is an impression of the type itself—an important clue in deducing attributions. Specimen pages of some 19th-century fonts have been lost or mis-filed by the USPTO.

Only approved patent applications are available for examination; 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 exists. 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.

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” against litigation may have been factors in the decision. Apparently after the merger of 1892, all ATF applications were filed by the designers. At about the same time, ATF-independent TFs adopted the same practice—perhaps there was a new USPTO regulation on this issue.

 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; it must be assigned. This practice was standard in the type industry since c1866.⁶

Freelancers naturally named the client as assignee in the affidavit and staff designers usually did so; employers usually did not. Exceptions: In 1874-1875, C.E. Heyer patented twelve faces not assigned to BTF, then his employer since c1869. Because his signatures were witnessed by the company treasurer and the faces were shown in BTF specimen books, ownership agreements are implied. 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 application process suggest several 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 possibly additional attorney fees) of delegating the application to him for assignment, when the design legally belongs to my company anyway?
• 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.
• 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 Inventor.
• This man designed this font, so he should apply for the patent and assign it to my company.

It is unclear whether the patent-holder/assignee had sole right to derivatives during the term. For example, commercial specimens of 19th-century fonts sometimes displayed the patent notice for an obviously related version that was 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.

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.