By David Honig, Esq.*
A common question in the legal, intellectual property, world is whether something is patentable. For example, is making Balloon Dogs sculptures patentable? After all, a patent provides a huge amount of legal protection. However, unlike its intellectual property sister, copyright, patents don’t protect creativity but rather novelty. While creativity and novelty have similarities, and often one leads to the other, there is a decisive difference between the two. Novelty, which will be discussed in more detail below, is a harder condition to establish than creativity, especially since the threshold for creativity is so low, Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345 (1991). Since copyright protects creative works artists often turn to the copyright system for protection, but an artist can also look to and even obtain the greater, albeit shorter, protection available under patent law.
The misconception that copyright is for creative works whereas patents are for science is only partially true and is somewhat based on a misunderstanding of the “Copyright Clause,” Article I Section I Clause 8 of the United States Constitution. The Copyright Clause authorizes Congress to grant copyrights and patents. The clause states “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
The misunderstanding can be summarized thusly, today patents are commonly thought of as being scientific whereas copyright is thought of as artistic so the word “science” must be for patents and the word “art” must be for copyright. But, this line of thinking is incorrect. Copyright was designed to promote the progress of science whereas patents were designed to promote the useful arts. There are many ways to prove this, such as discussing the meaning of “science” and “useful arts” or by examining the sentence structure. However, any one of these methods would require a lot of analysis for little payoff. It is simply worth noting that patents protect the “useful arts” and as such the term “art” is often used in patent law.
While it is true that there are certain categories of discoveries that cannot be patented, which will be discussed bellow, art does not automatically fall into any of those categories. So, the answer to the question of whether art can be patentable, like most questions in law, really cannot be answered with a blanket “yes” or “no.” Instead, each situation must be looked at individually to determine whether the necessary conditions have been satisfied. If the art meets the requirements of patentability then it can be patented, plain and simple.
It should be noted from the outset that this is a cursory overview of the United States patent system and in no way legal advice. Not all patent topics will be covered and in fact many important aspects and requirements will be left out. Additionally, if you think you have an idea that is patentable you should obtain advice from a patent attorney before you share your idea with anyone else. It should also be understood that unless otherwise noted the examples and hypothetical situations in this article do not reflect patentable inventions. In fact it is quite likely that most of the examples are not patentable. These examples and hypotheticals were inserted in the hopes that they would help illustrate certain patent concepts.
Part One: What type of Patent Covers My Invention?
United States law allows for there different type of patents – plant, design and utility. Each of these types of patents has its own requirements and term (i.e. length of protection). In order to obtain any of these patents an inventor would have to file an application with the United States Patent & Trademark Office (USPTO) and comply with USPTO’s own requirements as well as those created by Congress via statute.
The first type of patent, plant patents, are the least likely to be awarded for a work of art. A plant patent is awarded when an inventor creates or discovers a new variety of plant, such as the “New Dawn” rose variety, which can only be reproduced through asexual propagation. Plant patents prevent anyone besides the patent holder from using or reproducing the plant. USPTO limits what type of plants people can obtain patents over but it also expands the definition of “plant” to include algae and certain fungi. While it is possible an artist could have met the requirements of a plant patent the amount and cost associated with the necessary scientific research makes it unlikely.
The second type of patent, design patent, is the type that is most often associated with and used to protect art. Design patents protect the physical appearance but not the underlying structure or use. For example US D322,227 S is a patent for a wrist watch with five faces designed by Andy Warhol. This patent only covers the look of the watch not the underlying technology used to make it or the movement that allows the watch tell time. Anyone can use the underlying technology to make a watch but only the holder of the patent can make a watch that looks like the one described in the patent. Although limited in their protection design patents could apply to works of art.
The final type of patent is a utility patent. When most people talk about patents the are referring to utility patents. A utility patent is the type of patent most likely to be discussed when someone uses the word “patent” without a qualifier to denote the type of patent. This is because a utility patent covers more inventions than plant patents and provides more protection than a design patent. Utility patents protect processes, machines or products that are “useful.” Because utility patents cover the widest array of subject matter, moving forward it will be the only type of patent that will be discussed in this article.
Part Two: What are the Requirements of a Utility Patent?
A utility patent has four main requirement. If all those requirements are met then a patent will be granted. So, if a particular piece of art meets these requirements then the artist/inventor will be able to obtain a patent over the art. Before explaining the requirements of a utility patent it is worth noting that utility patents are a “one size fits all” type of protection. Meaning, a patent awarded for a pharmaceutical, that took millions of dollars to perfect, is awarded the same exact protection, in terms of scope and years, as a simple mechanical device. Additionally, regardless of how complex or simple an invention is the inventor, or owner, must prove all of the elements.
The first requirement, as alluded to above, is novelty. Novelty is the idea that the invention must not exist in the public domain in any form. This does not mean that if the invention is not patented the invention is novel. For example, there might not be a patent that covers painting in general, but the public as a whole knows that if you apply certain chemicals to canvas they will stick to the canvas based on the motion of the stroke. Because the public has this knowledge a patent will not be awarded to an inventor who filed a patent even if no patent has ever been issued. However, if someone finds a way to improve how to paint they can’t get a patent on their improvement, but the scope of the patent is limited the improvement (i.e. what was outside the public domain or prior patents).
The second requirement that needs to be satisfied to obtain a patent is nonobviousness. Nonobviousness is a difficult concept in patent law that is a lot more confusing than it might appear. Simply put, nonobviousness is the requirement that someone would not be able to easily create the invention merely by looking at what has already been invented. The law places various restrictions as to what prior inventions can and cannot be used for determining nonobviousness and what type of person is used to determine whether an invention is obvious. For instance, in determining whether a new metal alloy or the method to produce it is obvious a court or USPTO might look to see whether it was obvious to a sculptor who works with metals and therefore might have a sufficient knowledge of metallurgy. However, the same court would not look to a sculptor who deals primarily in marble, since that sculptor would have no knowledge of the relevant medium, to determine obviousness.
The third requirement, utility is defined by the invention having a known use. While utility is nowhere near as complex as nonobviousness it does have its eccentricities. For instance, whether an invention can achieve its stated purpose is one of the requirements of utility. So, if an artist creates a new method of glazing ceramics and claims that staring at the new gaze will cure cancer the patet will not be awarded for the nonexistent cancer curing properties.
The final requirement for obtaining a patent is that the invention is of the type that a patent can be awarded. Section 101 of the patent act, 35 U.S.C. 101, defines what can be patented, the utility requirement discussed above is also derived from this section. A plain reading of this section would seem to suggest that a patent can be awarded for any invention as long as it satisfies the other three requirements. However, the courts have used section 101 to carve out and exclude certain discoveries from being patented. Patentable subject matter is best thought of as a negative requirement. An inventor should look to see if her invention falls into one of three categories: abstract ideas, physical phenomena and laws of nature, if so the invention cannot be patented. There are some examples like the law of gravity that clearly fall into laws of nature and therefore are not patentable; unfortunately determining whether an invention falls into one of these categories has never been easy and is currently more confusing than ever since the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International.
If any of these four requirements are lacking then the invention is not patentable.
Part Three: How Can Art be Patented?
Up until now, there has been quite a lot of law and very little art. There is a good reason for that. Although the examples used to, hopefully, better explain the concepts are all based on different forms of art it is difficult to say whether any particular work of art is patentable. This would require looking to see whether all the elements are met.
A painting itself will most likely never satisfy the novelty and utility requirements but, USPTO has granted a number of patents for novel methods of painting – a method patent covers a process instead of the product of the process, so anyone can produce the product but only the holder of the patent can use the patented series of steps. In fact, so many patents have been issued for methods of painting there is a patent class dedicated to “COATING PROCESSES” – USPTO has created the patent classification system as a way to group, sort and easily find inventions based on similar characteristics or uses.
An example of a patent awarded for a painting method is US 4,341,821. This patent covered a method for applying water based paints in such a way as to prevent certain defects such as the paint running and bubbles. While it is unclear whether the technology in this patent was invented by an artist, it is clear that artists are always figuring out ways to overcome issues with materials used to create art. Artists have always taken up the challenge presented by seemingly inherent limits of materials, and should be rewarded for their ingenuity and ability to overcome problems. One way to reap the reward would be to obtain patents.
In fact, many patents have been applied to art and at least a few have been granted for new methods of making art. On such patent is US 3,249,502 Embalming material and method. The method described in this patent, or a similar method, was used by Damien Hirst in a series of works using Formaldehyde. Had the method been discovered by Damien Hirst he might have been awarded a patent, assuming all other patent requirements were met.
Another good illustration of patents applied to art is Body Worlds. Body Worlds is a series of exhibits, by Gunther von Hagens, that display human tissue and bones preserved using a process called Plastination. The process of Plastination involves replacing certain fat cells with plastic to prevent decay allowing these bodies to go on display around the world. Plastination was developed by von Hagens in the mid-70s and USPTO issued him a patent, US 4,205,059, over the process on May 27, 1980. While, von Hagens did not set out to make art, he eventually used his patented process to do just that.
The fact that the above patents do not mention their artistic uses leads to an interesting question, whether artistic value would satisfy the utility standard required to obtain a patent. While some might argue that art is not useful and therefore cannot meet the utility standard it appears that USPTO is not among this group. Among the patents awarded that relate to art are US 1,249,390, US 5,534,315 and US 8,420,205. The earliest, US 1,249,390, was issued in 1917 for a method of painting aptly titled “Fine Art of Painting.” This patent covers a method of painting with celluloid based paints. The method described was designed to overcome certain problems experienced when using celloid paints at the time.
The second, US 5,534,315, covers a “Decorative art form.” This patent covers a form of art where two sheets are cut out into designs and then held parallel to each other. Based off of the drawings, a good example of this patent in use would be double sided Christmas decorations depicting Santa or Reindeer. What is special about this patent is it is not a method patent. Instead, this patent covers a piece of art. This is special because the owner of the patent can prevent anyone from reproducing this decorative art form as long as the replica legally infringes the patent regardless of how it is made.
The final patent, US 8,420,205, covers “Mixed Media Artwork and Methods of Creation.” The patent describes a “mixed media artwork” made up of sheets of metal that are cut into shapes and decorated with various coatings, referred to as “polymers” in the patent. The cut up sheets of metal are arranged in such a way as to create a 3D piece of art. This patent was issued fairly recently, April 16, 2013. And while it took almost three years from the time of filing for the patent to issue, this patent shows that as recently as two years ago USPTO was willing to grant patents over art. While it was mentioned earlier in this article that there is some uncertainty in the definition of patentable subject matter following the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, the uncertainty has nothing to do with art. While some art will be preempted from being patented by this decision, nothing in the decision says or even alludes to the fact that art is not patentable.
It is plain to see from these examples that artists can not just use the information from patents to create art but also obtain patents. It is worth noting again, that not all discoveries are patentable no matter how useful they may be. Another important note is that patents are not the only way to protect an invention or discovery. In fact it is possible to protect those discoveries that the United States court system will not allow inventor to obtain patents over.
Part Four: Alternatives
There are strict requirements that must be met before a patent is granted. If even one requirement is missing a patent will not be issued. Additionally, even if a patent is issued it can be challenged and invalidated. Because of the costs and uncertainty associated with the patent system some people forgo the whole process. That being said, the patents system is not the only way to obtain protection. As mentioned above copyright is a form of protection that is often associated with art. Additionally through use and a cultivation of consumer recognition artists can also obtain protection through trademark and related principles.
But, there is a problem with both copyright and trademark. Just like patent law, each is limited in scope of protection. There is, however, a fourth member of the intellectual property family, trade secrets, which could step in where other IP protections end. Unlike its intellectual property cousins, trade secrets is not limited in what can be protected as long as the requirements are met. Protection is derived from information being kept secret and commercial value of the information partially caused by the information being secret. For instance the way a painter mixes paint or how a ceramist stokes a wood fire kiln to release a certain amount of carbon into the glaze as its firing can be protected under a theory of trade secrets.
Just as the list of subject matter that can be protected through trade secret law is not finite neither is the length of protection. For example, the method to make the Stradivarius string instruments which resulted in exquisite sound quality would still be protected today, if someone had knowledge of the method, even though it was first used by Antonio Stratdivari more than three hundred years ago. As long as all the elements, usually independent commercial value and reasonable efforts to keep the subject secret, are satisfied protection will continue indefinitely. One interesting aspect of trade secrets is that just because an idea is known by some of the population does not mean it is ineligible for trade secret protection.
If this seems a bit confusing there is a good reason. Trade secrets, unlike copyright and patents, is not governed by federal law. This means that each state deals with trade secrets in its own way. Additionally how a person or corporation goes about protecting a secret can differ in the same state, yet all can be provided protection. Trade secrets have no hard and fast requirements and the standard used to determine if the owner kept the secret secret enough varies from industry to industry. It is hard to say what is required to own a trade secret.
Very often the owner of a trade secret must use confidentiality agreements, among other safety precautions, but sometimes these requirements are not enough while in other instances they are not needed at all. This makes trade secrets a very difficult subject to give a blanket overview. Which is why it is important to remember the note at the beginning that this article is not legal advice nor should it be used by anyone to make legal determinations. Rather this article should be used to think about possible forms of protection and begin exploring them further with or without the help of an attorney.
About the Author: David Honig is a post graduate fellows at the Center for Art Law. He is a member of the Brooklyn Law School class of 2015. While attending law school he focused his studies on intellectual property and was a member of the Brooklyn Law Incubator & Policy (BLIP) Clinic. He is currently pending admission to the New York and is admitted to New Jersey state bar.
Disclaimer: This article is for educational purposes only and is not meant to provide legal advice. Readers should not construe or rely on any comment or statement in this article as legal advise. Instead, readers should seek an attorney.