The Evolution of Design Patent Functionality: Clarifying the Muddle

In the ever-evolving landscape of intellectual property law, design patents have long occupied a unique and sometimes contentious position. Straddling the line between aesthetics and utility, these powerful legal instruments have been the subject of much debate, particularly when it comes to the thorny issue of functionality. In this comprehensive exploration, we'll delve deep into the nuances of design patent functionality, tracing its evolution through key court decisions, examining common misconceptions, and providing clarity on this complex yet crucial aspect of IP law.

I. Introduction: The Design Patent Dilemma

Design patents, often overshadowed by their more widely understood cousins, utility patents, have become increasingly important in today's design-centric marketplace. From smartphones to sneakers, companies are leveraging the power of design to differentiate their products and capture consumer attention. But with this heightened focus on design comes a heightened need to understand the legal protections afforded to these visual innovations.

At the heart of the design patent debate lies a fundamental question: How do we protect the ornamental aspects of a product without inadvertently granting a monopoly over its functional features? This question has puzzled courts, confounded lawyers, and frustrated inventors for decades. The so-called "functionality doctrine" emerged as an attempt to address this conundrum, but its application has been far from straightforward.

Recent discussions in the legal community, exemplified by the paper "DESIGN PATENT LAW'S IDENTITY CRISIS" by Professor Peter S. Menell and J.S.D. Candidate Ella Corren of the University of California, Berkeley, School of Law, have reignited the debate over design patent functionality. Their work, while extensive and thought-provoking, has also highlighted some persistent misconceptions about the nature and scope of design patent protection.

In this article, we aim to cut through the confusion, offering a clear-eyed analysis of design patent functionality that is grounded in legal precedent, practical realities, and a forward-looking perspective on innovation. We'll explore the statutory foundations of design patents, examine the evolution of the functionality doctrine through key court decisions, and provide guidance on how to navigate this complex landscape in both prosecution and litigation contexts.

II. The Statutory Foundation: Designs for Articles of Manufacture

To truly understand the functionality debate, we must first ground ourselves in the statutory basis for design patents. The relevant law, 35 U.S.C. § 171, states:

"Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title."

This seemingly simple statement contains several crucial elements that have far-reaching implications for the functionality debate:

1. "New" and "Original": These requirements align design patents with the broader patent law principles of novelty and non-obviousness. A design must be both new (not previously known or used) and original (not derived from another source).

2. "Ornamental": This term is at the heart of the functionality debate. It suggests that design patents are intended to protect the aesthetic aspects of a design, rather than its functional features.

3. "Design for an Article of Manufacture": This phrase is critical. It explicitly ties design patents to physical objects that serve some utilitarian purpose. This inherent connection to utility is what gives rise to the functionality conundrum.

The inclusion of the term "article of manufacture" in the statute has profound implications. It means that, by definition, every design patent must be associated with an object that has some utilitarian purpose. This reality sets the stage for the inevitable intersection of form and function that characterizes the design patent landscape.

III. The Inherent Duality of Design Patents

The statutory language creates an inherent duality in design patents: they must simultaneously be ornamental (to qualify for design patent protection) and related to an article of manufacture (which inherently has utilitarian aspects). This duality is not a flaw in the system, but rather a reflection of the complex nature of product design itself.

Consider, for example, a chair. Its basic function is to provide a place for someone to sit. However, chairs come in an almost infinite variety of designs, from sleek modern creations to ornate antique styles. Each of these designs serves the same basic function, but they do so with vastly different aesthetic approaches. It is this aesthetic variation, layered on top of the underlying utilitarian purpose, that design patents aim to protect.

This inherent duality was aptly described by the Federal Circuit in Avia Group International, Inc. v. L.A. Gear California, Inc.:

"A distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture, or to obtain design and utility patents on the same article."

This distinction is crucial for understanding the proper role of functionality in design patent law. It acknowledges that utilitarian features will always be present in design patents, but it's the specific ornamental treatment of those features that is protected, not their underlying function.

IV. The Evolution of the Functionality Doctrine

The functionality doctrine in design patent law has evolved significantly over time, shaped by key court decisions that have attempted to strike a balance between protecting ornamental designs and preventing the monopolization of functional features. Let's trace this evolution through some landmark cases:

A. Early Approaches: The "Dictated by Function" Test

In the early days of design patent jurisprudence, courts often used a "dictated by function" test to assess whether a design was impermissibly functional. Under this approach, if the design of an article was deemed to be dictated solely by its function, it would be considered ineligible for design patent protection.

This test, while seemingly straightforward, proved challenging to apply consistently. How does one determine whether a design is "solely" dictated by function? What if functional considerations heavily influence a design but don't entirely dictate it?

B. The Alternative Designs Test: A More Nuanced Approach

As courts grappled with these questions, a more nuanced approach emerged: the alternative designs test. This test, which has gained widespread acceptance, posits that if alternative designs can perform the same function, then the design in question is not solely dictated by function and may be eligible for design patent protection.

One of the earliest and most influential cases to adopt this test was Bergstrom v. Sears, Roebuck & Co., which involved a design patent for a fireplace grate. The court reasoned:

"The evidence undeniably establishes that there are numerous possible design solutions for tubular fireplace grates which operate on convective heat principles.... Considerations of function may very well dictate the general "C" shape of the tubular fireplace grate. This does not mean that functional objectives invariably dictate the configuration found in the Bergstrom design, or that any tubular fireplace grate operating on convective heat principles will look the same.... The myriad of alternatives in terms of the appearance of fireplace grate designs, and the variables which exist in terms of the elements which comprise the overall design, compel the conclusion that the Bergstrom patent is not invalid for functionality."

This reasoning exemplifies the alternative designs test. By demonstrating that multiple design options exist to achieve the same function, the court concluded that the specific design at issue was not dictated solely by function and could therefore be protected by a design patent.

C. Best Lock Corp. v. ILCO Unican Corp.: The Limits of Alternative Designs

While the alternative designs test has been widely adopted, it's not without limitations. The case of Best Lock Corp. v. ILCO Unican Corp. illustrates a scenario where the test led to a finding of functionality. The case involved a design patent for a key blade blank. The court concluded that no other shape of this key blade design would fit into its corresponding mating keyway/lock, and thus the design patent was found invalid.

This case demonstrates that there are indeed situations where a design may be so constrained by its function that no viable alternatives exist. However, such cases are relatively rare, and the alternative designs test remains a useful tool for assessing functionality in most situations.

V. Debunking Common Misconceptions

The complexity of design patent functionality has given rise to several persistent misconceptions. Let's address some of these head-on:

Misconception 1: Design Patents Protect Functional Features

Perhaps the most common misconception is that design patents somehow protect the functional aspects of a product. This is simply not the case. Design patents protect the ornamental appearance of a product, not its underlying function.

Consider a hypothetical design patent for a smartphone. The patent might claim the specific ornamental design of the phone's shape, the arrangement of its buttons, and the pattern on its back panel. However, it does not prevent competitors from creating phones with touchscreens, volume buttons, or camera lenses in similar positions. It only prevents them from creating phones that look substantially the same as the patented design.

Misconception 2: The Presence of Functional Elements Invalidates a Design Patent

Another common misconception is that the presence of functional elements in a design renders it ineligible for design patent protection. This misunderstanding likely stems from an overly broad interpretation of the functionality doctrine.

In reality, virtually all products covered by design patents have functional elements. The key is not whether functional elements are present, but whether the overall design is dictated solely by function. If alternative designs exist that can perform the same function, then the design is not considered purely functional and can be eligible for design patent protection.

Misconception 3: Design Patents Provide a "Backdoor" for Protecting Functionality

Some critics have suggested that design patents offer a "backdoor" for protecting functional features that should only be protectable through utility patents. This concern, while understandable, is misplaced.

Design patents do not prevent others from using the same functional features; they only prevent others from creating products that look substantially the same as the patented design. Competitors are free to use the same functional elements as long as they create a design that doesn't infringe on the patented ornamental appearance.

VI. The Role of the USPTO in Design Patent Examination

One crucial aspect of design patent functionality that is often overlooked is the role of the United States Patent and Trademark Office (USPTO) in examining design patent applications. Unlike copyrights, which are simply registered without substantive examination, design patents undergo a rigorous examination process.

During this process, USPTO examiners assess several factors:

1. Novelty: Is the design new compared to prior art?
2. Non-obviousness: Would the design have been obvious to a designer of ordinary skill?
3. Ornamentality: Does the design have ornamental characteristics?

The examination process serves as an important gatekeeping function, helping to ensure that issued design patents meet the statutory requirements. This is a key difference between design patents and copyrights, and it has important implications for how functionality should be assessed in infringement cases.

VII. Functionality in Design Patent Infringement Analysis

The issue of functionality doesn't just arise in the context of patent validity; it also plays a role in infringement analysis. Over the years, courts have grappled with how to handle functional elements when comparing a patented design to an accused product.

A. The "Factoring Out" Approach

For a time, some courts adopted an approach of "factoring out" or "filtering" functional elements before comparing the patented design to the accused product. This approach was exemplified in the case of Richardson v. Stanley Works, Inc., which involved a design patent on a construction tool that combined the features of a hammer, crowbar, jaw, and handle.

The court in Richardson stated: "The district court here properly factored out the functional aspects of Richardson's design as part of its claim construction." This language led to confusion and inconsistent application in subsequent cases.

B. The Problems with "Factoring Out"

The "factoring out" approach, while well-intentioned, presented several problems:

1. Altering the Claimed Design: By removing functional elements, this approach effectively changed the design that was examined and approved by the USPTO.

2. Undermining Public Notice: Patents are meant to provide clear notice to the public about what is protected. Removing elements from the claimed design undermines this important function.

3. Practical Difficulties: Determining which elements are "functional" and should be factored out is often subjective and can lead to inconsistent results.

C. A More Holistic Approach: Ethicon and Sport Dimension

Recognizing these issues, recent Federal Circuit decisions have moved away from the "factoring out" approach in favor of a more holistic analysis. Two key cases in this evolution are Ethicon Endo-Surgery, Inc. v. Covidien, Inc. and Sport Dimension, Inc. v. Coleman Co.

In Ethicon, which involved a design patent for an ultrasonic surgical device, the Federal Circuit clarified that while certain elements of a design may serve functional purposes, this doesn't preclude those elements from having protectable ornamental aspects. The court emphasized that it's the particular appearance of functional elements, in combination with other design elements, that is protected by a design patent.

Sport Dimension further refined this approach. The court stated: "But in no case did we entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose." This language makes it clear that courts should not be in the business of removing elements from a claimed design, even if those elements serve functional purposes.

VIII. The Alternative Designs Test: A Powerful Tool

As we've seen, the alternative designs test has emerged as a powerful tool for assessing functionality in design patents. This test asks whether alternative designs could perform the same function as the patented design. If such alternatives exist, it's strong evidence that the patented design is not dictated solely by function and is therefore eligible for design patent protection.

The beauty of this test lies in its objectivity and practicality. It doesn't require courts to make subjective judgments about what is "functional" versus "ornamental." Instead, it focuses on the concrete question of whether design alternatives exist.

A. Applying the Alternative Designs Test

Let's consider how this test might be applied in practice:

1. Identify the Function: First, we need to identify the primary function of the article of manufacture. For example, if we're dealing with a chair design, the primary function would be to provide a stable surface for sitting.

2. Explore Alternatives: Next, we look at whether alternative designs could perform this same function. In the case of a chair, we know that countless chair designs exist, from simple wooden stools to elaborate throne-like structures. All of these serve the basic function of providing a place to sit, but they do so with vastly different ornamental designs.

3. Assess Constraints: We then consider whether there are any functional constraints that significantly limit design options. For instance, a chair generally needs a seat and some form of support, but beyond these basic requirements, designers have considerable freedom.

4. Draw Conclusions: If we find that numerous alternative designs exist that can perform the same function, this strongly suggests that the design in question is not dictated solely by function and may be eligible for design patent protection.

B. The Strength of the Alternative Designs Test

The alternative designs test has several advantages:

1. Objectivity: It provides a relatively objective measure for assessing functionality, reducing reliance on subjective judgments.

2. Flexibility: The test can be applied to a wide range of products, from simple tools to complex electronic devices.

3. Alignment with Design Reality: It recognizes that designers often have significant freedom in how they approach functional requirements, aligning with the realities of industrial design.

4. Preservation of Competition: By ensuring that functionally equivalent alternatives remain available, the test helps maintain healthy competition in the marketplace.

IX. The Ornamentality Requirement: A Low but Important Bar

While much of the functionality debate focuses on what design patents cannot protect (i.e., purely functional features), it's equally important to consider what they are meant to protect: ornamental designs. The statutory requirement that a design be "ornamental" to qualify for patent protection sets a threshold that all design patents must meet.

A. Defining Ornamentality

The concept of ornamentality in design patent law is not about aesthetic merit or beauty. Courts have wisely avoided making judgments about artistic value, recognizing that such assessments are subjective and outside their expertise. Instead, ornamentality in this context is better understood as visual distinctiveness or non-trivial variation from purely functional forms.

Judge Learned Hand provided a useful formulation in H.C. White Co. v. Morton E. Converse & Son Co., stating that an "ornamental" design is one that has "at least a rudimentary aesthetic appeal." This sets a relatively low bar, but it's an important one.

B. The Relationship Between Ornamentality and Functionality

Ornamentality and functionality are often presented as opposites, but in reality, they exist on a spectrum. Most designs incorporate both ornamental and functional aspects. The key question is whether the design, taken as a whole, has sufficient ornamental characteristics to warrant design patent protection.

C. Examples of Ornamentality in Functional Objects

To illustrate how ornamentality can coexist with functionality, let's consider some examples:

1. Smartphones: While smartphones are highly functional devices, their designs often incorporate ornamental elements like curved edges, unique button shapes, or distinctive back panel patterns.

2. Automotive Design: Cars must meet numerous functional requirements, but automakers invest heavily in creating distinctive ornamental designs for body shapes, grilles, headlights, and other elements.

3. Furniture: A chair must provide a stable sitting surface, but beyond this basic requirement, chair designs can incorporate an endless variety of ornamental elements in the shape of the back, the design of the legs, the textures used, and so on.

4. Kitchen Appliances: Even highly functional items like blenders or toasters often feature ornamental design elements in their overall shape, the design of controls, or surface treatments.

In each of these cases, the overall design goes beyond mere functionality to incorporate ornamental elements that contribute to the product's visual distinctiveness.

X. The Interplay Between Design Patents and Utility Patents

To fully understand the role of functionality in design patents, it's crucial to consider how design patents interact with utility patents. These two forms of intellectual property protection serve different purposes but can sometimes overlap in their subject matter.

A. Distinct but Complementary Protections

Utility patents protect the functional aspects of an invention - how it works, what it does. Design patents, on the other hand, protect the ornamental appearance of an article of manufacture. This distinction is fundamental to understanding why concerns about design patents creating a "backdoor" for protecting functionality are misplaced.

Consider a hypothetical example of a new smartphone:

• A utility patent might cover the novel internal circuitry that enables faster processing.
• A design patent might cover the unique shape of the phone's body or the distinctive arrangement of its buttons and screen.

These protections don't overlap - they protect different aspects of the product. The design patent doesn't prevent competitors from using similar internal circuitry (that's the domain of the utility patent), and the utility patent doesn't prevent competitors from creating phones with a similar appearance (that's what the design patent does).

B. The Possibility of Dual Protection

It's entirely possible - and indeed common - for a single product to be covered by both utility and design patents. This is not a flaw in the system or a "loophole," but rather a recognition of the multi-faceted nature of innovation.

The Federal Circuit acknowledged this reality in Avia Group International, Inc. v. L.A. Gear California, Inc., stating: "Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture, or to obtain design and utility patents on the same article."

C. The "Channeling" Principle

The idea that different forms of intellectual property should protect different aspects of a product is sometimes referred to as the "channeling" principle. This principle suggests that functional innovations should be channeled to utility patent protection, while ornamental designs should be channeled to design patent protection.

However, it's important to understand that this channeling is not absolute. The mere fact that a design has functional aspects does not disqualify it from design patent protection, just as the fact that a functional invention has an appearance does not disqualify it from utility patent protection.

The key is that each form of protection is limited to its appropriate sphere: - Design patents protect against copying of the claimed ornamental design, not the underlying functionality. - Utility patents protect against use of the claimed functional elements, regardless of the appearance of the product incorporating those elements.

XI. Functionality in Design Patent Prosecution

While much of our discussion has focused on how courts handle functionality issues in design patent litigation, it's equally important to consider how these issues play out during the patent prosecution process.

A. The Examiner's Role

USPTO examiners play a crucial role in assessing functionality during the design patent examination process. They are tasked with ensuring that design patent protection is not granted to designs that are primarily functional rather than ornamental.

Examiners typically consider several factors when assessing functionality:

1. Presence of alternative designs: If the examiner can identify alternative designs that perform the same function, this suggests the design is not purely functional.

2. Advertising materials: If the applicant's own marketing emphasizes the ornamental aspects of the design, this can support a finding of ornamentality.

3. Visibility in use: Design features that are visible during normal use of the product are more likely to be considered ornamental.

4. Relationship to function: The examiner will consider whether the design elements are closely related to the function of the article or if they appear to be arbitrary aesthetic choices.

B. Strategies for Addressing Functionality Rejections

When faced with a functionality rejection from an examiner, patent applicants have several strategies available:

1. Emphasize alternative designs: Providing evidence of alternative designs that perform the same function can be a powerful way to overcome a functionality rejection.

2. Highlight ornamental aspects: Drawing the examiner's attention to specific ornamental features of the design can help demonstrate that the design goes beyond mere functionality.

3. Explain design choices: If certain elements appear functional, explaining how they incorporate ornamental considerations can be helpful.

4. Use broken lines: In some cases, it may be strategic to show purely functional elements in broken lines, which excludes them from the claimed design.

5. Consider multiple embodiments: Filing applications for multiple design variations can help demonstrate the ornamental nature of the design choices.

C. The Importance of Thoughtful Drafting

Given the scrutiny that functionality receives during examination, it's crucial for design patent applications to be drafted with these issues in mind. This might involve:

• Carefully selecting which views to include in the drawings
• Thoughtfully deciding which elements to show in solid lines (claimed) versus broken lines (unclaimed)
• Drafting a clear and focused title that accurately reflects the claimed design without unnecessarily limiting its scope

XII. International Perspectives on Design Patent Functionality

While our discussion has focused primarily on U.S. law, it's worth noting that the issue of functionality in design protection is a global concern. Different jurisdictions handle this issue in various ways, which can create challenges for companies seeking international design protection.

A. European Union: The "Multiplicity of Forms" Approach

In the European Union, design protection is governed by the Community Design Regulation. The EU has adopted what's known as the "multiplicity of forms" theory, which is similar to the alternative designs test used in the U.S.

Under this approach, if multiple forms can achieve the same technical result, the design is not considered to be solely dictated by technical function and can be protected. This test is generally seen as more favorable to design protection than some other approaches.

B. Japan: Balancing Function and Aesthetics

Japan's design law explicitly excludes designs that are indispensable for securing the function of the article. However, Japanese courts have interpreted this provision narrowly, generally allowing design protection unless the design is the only way to achieve the function.

C. China: A Strict Approach to Functionality

China has traditionally taken a stricter approach to functionality in design patents. Designs that are primarily dictated by technical function are not eligible for protection. However, recent changes to China's patent law have introduced partial design protection, which may provide more flexibility in protecting designs with both functional and ornamental aspects.

D. Implications for Global IP Strategies

These international variations have important implications for companies seeking global design protection:

1. Tailored Filing Strategies: Companies may need to adapt their design patent filings to account for different functionality standards in various jurisdictions.

2. Comprehensive Protection: In some cases, it may be necessary to seek both design and utility patent protection to ensure comprehensive coverage across different countries.

3. Harmonization Efforts: There are ongoing efforts to harmonize design protection standards internationally, which could potentially lead to more consistent treatment of functionality issues in the future.

XIII. The Future of Functionality in Design Patent Law

As we look to the future, several trends and potential developments are worth considering:

A. Increasing Importance of Design

In today's market, product design is more important than ever. Companies invest heavily in creating distinctive, appealing designs as a way to differentiate their products and build brand identity. This trend is likely to continue, potentially leading to increased reliance on design patents and more litigation in this area.

B. Technological Advancements

Emerging technologies like 3D printing, augmented reality, and artificial intelligence are blurring the lines between physical and digital designs. These developments may challenge traditional notions of what constitutes an "article of manufacture" and how functionality should be assessed in these contexts.

C. Potential Legislative Action

While courts have made significant progress in clarifying the role of functionality in design patent law, there have been calls for legislative action to provide more concrete guidance. Whether Congress will take up this issue remains to be seen, but it's a possibility worth monitoring.

D. Continued Refinement of Legal Standards

We can expect courts to continue refining their approach to functionality in design patents. This might involve further development of the alternative designs test or new approaches to balancing ornamental and functional considerations.

XIV. Practical Implications for Innovators and Legal Practitioners

Given the complexities surrounding functionality in design patent law, what are the key takeaways for innovators and legal practitioners?

A. For Innovators:

1. Design with IP in Mind: Consider potential design patent protection early in the product development process. Where possible, incorporate ornamental elements that go beyond pure functionality.

2. Document Design Choices: Keep records of the design process, including alternative designs considered. This documentation can be valuable if functionality issues arise during prosecution or litigation.

3. Consider Multiple Forms of Protection: Depending on the nature of your innovation, consider whether both design and utility patent protection might be appropriate.

B. For Legal Practitioners:

1. Stay Informed: Keep abreast of developments in design patent law, particularly regarding functionality issues. The law in this area continues to evolve.

2. Craft Clear, Focused Claims: When drafting design patent applications, carefully consider which elements to claim and how to present them in the drawings.

3. Prepare for Functionality Challenges: Whether representing plaintiffs or defendants in design patent litigation, be prepared to address functionality issues. This might involve gathering evidence of alternative designs or analyzing the relationship between form and function in the patented design.

4. Consider International Implications: For clients seeking global protection, be aware of how different jurisdictions handle functionality in design protection.

XV. Conclusion: Embracing the Complexity of Design

The issue of functionality in design patent law is complex, but this complexity reflects the inherent nature of design itself. Good design seamlessly blends form and function, creating products that are both useful and aesthetically pleasing. Our legal framework for protecting these designs must be sufficiently nuanced to recognize this reality.

The evolution of the functionality doctrine in design patent law represents a commendable effort by courts and the USPTO to strike a balance between protecting innovative designs and preserving healthy competition. While challenges remain, the current approach - particularly the widespread adoption of the alternative designs test - provides a workable framework for addressing these issues.

As we move forward, it's crucial that we continue to refine our understanding of functionality in design patents. This will require ongoing dialogue between legal professionals, designers, and policymakers. By embracing the complexity of this issue rather than seeking oversimplified solutions, we can ensure that our design patent system continues to foster innovation and creativity in product design.

Ultimately, the goal should be a legal framework that recognizes the dual nature of design - its ability to be both functional and ornamental - and provides appropriate protection for truly innovative designs while maintaining a rich public domain of design elements for all to use. As the world of design continues to evolve, so too must our approach to protecting it.