Here is a link to my recent article Design Patent Functionality: A Sensible Solution that was published in in the Nov/Dec 2014 edition of the ABA’s Landslide® publication. FULL ARTICLE
The article is an in-depth analysis of functionality doctrine as it applies to design patents. The are two distinct topics, each have been percolating in my head for the last dozen years. Specifically, I discuss (1) the subject matter eligibility provision of “ornamental” for design protection under 35 U.S.C. § 171 (the analogous provision for utility patents being “useful” under 35 U.S.C. § 101), and (2) the 800lb gorilla in the room – how/whether to excise out functional aspects of a design patent claim from protection. As each case passes, more and more confusion is generated in the design patent jurisprudence on these topics. Here is a short synopsis of the two major topics discussed in the article.
Statutory-Functionality 35 U.S.C. § 171 (Overall Appearance of Claimed Design)
With respect to the § 171 issue (i.e. “Statutory-Functionality”), although there are some minority views on the topic that lace through the case law, courts largely, and rightfully, have coalesced around the “dictated solely by” standard for determining whether a design claim passes muster under the subject matter eligibility provision requiring a design to be “ornamental.” 35 U.S.C. § 171 Under the “dictated solely by” standard, a design is deemed ornamental so long as the overall appearance of the claimed design is not “dictated solely by” its function. By framing the issue this way, the courts effectively assume that a design has enough ornamental quality to pass statutory muster, unless it is shown that the design is dictated solely by its function. In other words, the test asks did the designer exercise any independent design judgment in arriving at the design or was the overall appearance dictated solely by the functional requirements of the design? For if the entire appearance was preordained by the functional requirements of the article of manufacturer, then, in fact, nothing was designed and no patent reward should grant.
The current prevailing approach wisely side-steps the hairy task of deciding whether a design is “ornamental enough.” The approach recognizes the reality that “beauty is in the eye of the beholder,” and thus it is futile for the law to qualitative assess ornamentality, including the relative merit of design movements such as art Bauhaus, functionalism, art deco, minimalism, maximalism, etc. At the same time, the approach provides sufficient safeguards against the rare, but still unwanted, backdoor monopolization of functional ideas through design patent protection. Lastly, this approach leaves the door amply open to accommodate the boundary-pushing creativity of the world of design.
Claim Construction-Functionality (Attempts to Weed out Functional Aspects)
Design patents do not protect functional attributes, concepts or characteristics of the underlying article of manufacture to which the claimed design is applied. (Some courts have used the phrase “functional aspects” as an umbrella term for functional attributes, concepts or characteristics.) In trying to stay true to this principle, however, an increasing number of courts are wrongly using claim construction to coarsely lop off visual features, elements and portions from the claimed design under the reasoning that they are “functional.” (e.g. construing a design patent claim to not include things like handles, locking mechanisms, rivets, etc.) This approach is wrongheaded. No attempt should be made to factor out visual features, elements and portions of a claimed ornamental whole. The claim is the overall appearance of the claimed design including all portions thereof, regardless of whether a visual feature is new/old, functional/ornamental or significant/insignificant. (Imagine a court lopping off portions of utility patent claim.) A design patent is directed to the tout ensemble of all elements directed in solid lines.
Design patent claim construction methodology that purports to separate functional and ornamental elements of the overall claimed design is wrongheaded. Like the now defunct point of novelty approach (which sought to separate out new and old elements), the point of ornamentality approach (which seeks to separate out ornamental and functional elements) conflicts with the tenet that a design patent protects the overall appearance of the claimed design, and is fraught with logistical problems. Instead, claim construction functionality concerns could be addressed with an instruction to the fact-finder (whether judge or jury) that design patents only protect the appearance of the overall design depicted in the drawings, and not any functional attributes, purposes or characteristics embodied in the underlying article of manufacture embodying the claimed design. Without this fundamental tenet firmly in place, design patent jurisprudence will continue to operate in a state of confusion.