concurring-in-part and dissenting-in-part.
I concur in the decision with respect to the trade dress issues. I must, however, dissent from the court’s creation of a new rule specific to design patents, the panel majority holding that experimental use is “virtually inapplicable in the design patent context.”
In determining whether and when an on-sale bar, 35 U.S.C. § 102(b), starts to accrue, the “totality of the circumstances” must be considered. While the panel majority gives nodding recognition to this standard, my colleagues hold that it does not apply to design patents. Why not? I can think of no public policy that is served by removing design patents from the body of precedent that guides application of § 102(b). Indeed, the statute itself requires otherwise. See 35 U.S.C. § 171 (“The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”) There is no reason, in law or policy, for the panel majority’s new and special rule whereby the statutory bar accrues for design patents as soon as the basic design of the article is made, even when later modifications of the design, are essential to the utility of the article for its intended use. A patentable design is a design for an article of manufacture; see 35 U.S.C. § 171; L.A. Gear, Inc. v. Thom Me An Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed.Cir. 1993) (“A design patent is directed to the appearance of an article of manufacture. An article of manufacture necessarily serves a utilitarian purpose----”).
Thus the bar to patenting should not accrue until the design of the article is successfully completed. The design of an article of *1082manufacture is not complete until the design is useful, that is, until the article as designed has been shown to be capable of its intended use. In the course of achieving this result intervening design changes, whether viewed as experimentation or simply as steps toward the final design, are not statutory bar events.
In the case before us, the design concept for a plastic juice bottle was created for a potential customer who liked it and agreed to buy it, and a prototype mold for manufacture was made, six days before the critical date. However, the design failed. The prototype mold could not make the product, because of flaws in the design. Design changes were required and were made, followed by new prototype molds. The district court listed seven changes in the design. Five of these changes were made after the critical date, including changes to relative height, handle configuration, and label area. Some of the changes were essential to successful manufacture of the article, and others flowed from the essential changes. Although the changes were apparently minor from the viewpoint of overall appearance, they were critical to the manufacture of the bottle bearing the design. It can not be the correct law to hold that the on-sale bar accrued when the article as initially designed, before the critical date, was known to be incapable of manufacture. The designer can not be charged with accrual of the statutory bar before there was a successful design of the article. There must be a discernible event and date when the design is known to be completed and the designer knows that the one-year bar period has started to accrue.
Consideration of the totality of the circumstances includes considering whether the subject matter of the patent had been shown to be satisfactory for its intended use or whether it was still undergoing evaluation and changes. Sealr-Flex, Inc. v. Athletic Track and Court Construction, 98 F.3d 1318, 1323, 40 USPQ2d 1450, 1453 (Fed.Cir.1996); Baker Oil Tools Inc. v. Geo Vann, Inc., 828 F.2d 1558, 1563, 4 USPQ2d 1210, 1213-14 (Fed.Cir.1987). For design patents, as for utility patents, the totality of the circumstances standard requires consideration of whether the design is completed, such that it is a useful design for an article of manufacture. If the article can not be manufactured due to its design, the policy of the on-sale bar is not served by nonetheless accruing the bar while the design is still being modified. There is no reason to treat design and utility patents differently. See 35 U.S.C. § 171; cf. Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed.Cir. 1994). The nature and effect of the changes made in the patented subject matter is part of the totality of circumstances, see Allied Colloids Inc. v. American Cyanamid Co., 64 F.3d 1570, 1576, 35 USPQ2d 1840, 1844 (Fed. Cir.1995) (“[wjhether future improvements were contemplated or necessary is indeed relevant, for experimental use is determined on all the evidence”). Such considerations are as relevant to design patents as to utility patents.
The totality of the circumstances does not rise and fall with any single consideration; it is determined on all the facts. Evidence of experimentation or modification is part of the totality of the circumstances. As this court stated in the context of the public use bar of § 102(b): “It is incorrect to ask: “Was it public use?’ and then, “Was it experimental?’ Rather, the court is faced with a single issue: Was it public use under § 102(b)?” TP Laboratories, Inc. v. Prof l Positioners, Inc., 724 F.2d 965, 971, 220 USPQ 577, 582 (Fed.Cir. 1984); accord, Tone Brothers, 28 F.3d at 1198, 31 USPQ2d at 1325. This principle equally applies to the on-sale bar. When an inventor succeeds in interesting a potential customer in the concept of a design, but no sale can occur unless the article as designed is useful for its intended purpose, this is a critical consideration and can not be ignored.
The policies embraced in the totality of circumstances standard are ill-served by removing design patents from the established law of § 102(b). These policies, discussed in General Electric Co. v. United States, 228 Ct.Cl. 192, 654 F.2d 55, 211 USPQ 867 (1981) (en banc), include the following: First, there is the “policy against removing inventions from the public which the public has justifiably come to believe are freely available to all as a consequence of prolonged sales activity”; this policy is not served by accruing the *1083bar while the design is still being changed. Second, there is the policy favoring “prompt and widespread disclosure of new inventions to the public”; this' policy is unaffected when the design is for an unmanufacturable article and requires modification before the article can be manufactured. A third policy is to “prevent the inventor from commercially exploiting the exclusivity of his invention substantially beyond the statutorily authorized [] period”; this policy is not of practical significance for design patents, for the life of a design is rarely as long as the patent life. As the court remarked in Jack Adelman, Inc. v. Sonnets & Gordon, Inc., 112 F.Supp. 187 (S.D.N.Y.1934), “designs and , patterns usually are short-lived and with the conditions and time incidental to obtaining the [design] patent, this protection comes too late, if at all.” In contrast, the fourth and dominant policy in this case is that which gives the inventor a reasonable amount of time following completion of the invention to ascertain its value in the marketplace, thus saving the cost of filing patent applications for unsuccessful inventions.
The panel majority cites the third policy, stating that “[a]pplying experimental use negation in the design patent context would allow entities to increase the life of their design patents merely by tarrying over the production of the article of manufacture.” I doubt that a manufacturer will “tarry” in production in order to delay a design patent’s expiration. Indeed, in the case at bar the district court expedited its judgment because of the limited commercial lifespan of the design in suit:
As an initial matter, the Court notes Continental’s contention that container designs such as the one in issue have limited commercial “lifespans.” Continental therefore appears to have an interest in prosecuting as expeditiously as possible its appeal from the Court’s entry of summary judgment—
Continental Plastic Containers, Inc. v. Owens-Brockway Plastic Products, Inc., No. 95 C 4670 (N.D.Ill. July 10,1996) (Agreed Order and Final Judgment), slip op. at 5-6.
Continental states that its post-critical-date changes in the design were significant to manufacture of the bottle, although the product retained the general appearance of the prior design. The effect on the ornamental appearance is a factor to be considered, but it is not the only factor. In this case there was evidence that the modifications in the details of the design after the critical date converted a useless design into a design that was useful for its intended purpose. Had Continental not succeeded in modifying the design so that it could be manufactured, the sale could not have been completed, no matter how many orders had been written. The design that worked did not exist until after the critical date. In Tone Brothers this court held that “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” 28 F.3d at 1199, 31 USPQ2d at 1326. This reasoning is fully applicable to on-sale events. It is incorrect to charge Continental with knowledge or notice that in the midst of the changes it was making in its flawed design, the bar period started to accrue. The critical date can not be constructed with “judicial insight based on hindsight.” Seal-Flex, 98 F.3d at 1323, 40 USPQ2d at 1453. It must be recognizable when it occurs, so that the inventor knows the date of the forthcoming legal deadline.
As for all inventions, the critical date for a design patent arises when the completed design has been shown to be useful for its intended purpose. A drawing or model of the article does not start the § 102(b) bar when the article as designed is not capable of manufacture. Such a design is not useful for its intended purpose, for even if a potential customer is sufficiently interested to place an order, as here, the order could not be filled by the design as it was shown to the customer. Whether or not the ensuing changes in the design are “minor” from the viewpoint of the observer of the bottle, if it can not be manufactured until changes are made the design is not suitable for its intended purpose.
Thus I must dissent from the court’s new rule that the on-sale bar for a design patent invariably runs from any sales event accom*1084panying the initial drawing or model, whether or not modifications are later required in order to produce a useful design. The principles of law should not be so different for design patents and for utility patents. The totality of the circumstances must be considered, including experimentation, modification, and development of the design of the article of manufacture in order to achieve the intended utility of the designed article: