Guest Post: Design Protection and Functionality: Does the PTO or the Copyright Office Apply a More Rubbery Stamp?

Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law, and Ella Corren, University of California at Berkeley School of Law, J.S.D. Candidate

In Design Patent Law’s Identity Crisis, presented at the Berkeley Center for Law & Technology’s February 2021 “Design Patents” symposium, we traced the origins of design patent law’s ornamentality/non-functionality doctrine and showed how the Federal Circuit, the nation’s de facto design patent emperor over the past four decades, has turned the doctrine on its head: it has upended the 1902 Act’s intent and reversed three-quarters of a century of regional circuit jurisprudence. So much so that the post-1902 Act regional circuit design patent cases invalidating design patents on functionality grounds would come out oppositely under the Federal Circuit’s lax standards. Those standards led to the absurd result that Apple could disgorge Samsung’s profits on its smartphones because they employed rounded rectangular shapes. We showed that the Patent Act limited design protection to original, ornamental articles of manufacture, and excluded protection for functionality.

BCLT invited practitioners and academics to comment on our analysis. While none of the commentators questioned, no less refuted, our core finding that the Federal Circuit has flipped the ornamentality/non-functionality doctrine, several offered fig leaves to clothe the Federal Circuit’s lax standards for design patent eligibility and infringement. In responding to our article, practitioner Perry Saidman and Professor Mark McKenna suggested that the design patent regime can be justified in part based on the tighter functionality screen that the PTO applies to design patents than the low threshold that the Copyright Office applies to copyright registrations to useful articles.

We found the suggestion that the PTO is more rigorous than the Copyright Office in applying the functionality screen intriguing and decided to test it out: Does the PTO or the Copyright Office apply a more rubbery stamp?. This commentary presents some of our findings.

Before turning to some illustrations, we note that the Compendium of U.S. Copyright Practices, in contrast to the Manual of Patent Examining Procedure, implements limiting doctrines in relatively clear and concise terms. As regards originality, the Compendium states that copyright law does not protect “words and short phrases,” “familiar symbols and designs,” “mere variations of coloring,” spatial format and layout design, blank forms, and common geometric shapes, either in two-dimensional or three-dimensional form.” The Patent Office applies no such limitations, notwithstanding that the design patent statute specifically requires that articles of manufacture be original to obtain design patent protection.

Turning to our findings, we begin with Universal Robots’ “UR5” robot arm. In 2015, it sought copyright registration of this useful article as a sculptural work.

The Copyright Office refused registration on the ground that UR5 “is a ‘useful article’ which does not contain any separable authorship.” Universal Robots appealed the decision to the Copyright Office, arguing that the UR5 contains conceptually separable artistic elements that are not necessary to its performance of its utilitarian function, namely its “raised circular caps containing the stylized ‘UR’ design,” and the ‘“T’ shaped, modular interlocking wrist.” The Copyright Office affirmed its rejection, explaining that the UR5 “does not contain any separable, copyrightable features” because “the caps and wrist of the arm are both integrated parts of the ‘overall shape’ of the arm.” In September 2016, Universal Robots filed a second appeal for reconsideration, in which it contended that since the blue caps are “capable of being physically removed from the robotic arm without altering the useful aspects of the article,” and “are not necessary to the utilitarian functioning of the device,” they are “conceptually separable, artistic and protectable.” Universal Robots also asserted that the T-shaped piece was “designed to achieve a sleek, modem and aesthetically pleasing appearance,” is “not necessary to the utilitarian function of the article,” and could have been designed in many other ways, rendering this part protectable as well. Universal Robots claimed that these elements of the Work “embody more than the mere ‘modicum’ of creativity that is required for copyright registration,” highlighting that the designers are Danish and inspired by the Danish Modem movement.

In rejecting the second appeal, the Copyright Office concluded “that the elements Universal Robots identifies as expressive—namely the plastic caps and the T-shaped piece—could be visualized as works of authorship separate and independent from the Work’s utility.” And that “[e]ven if those features could be deemed separable, however, they simply are not sufficiently original to warrant copyright protection.”

Universal Robots then filed a design application for the UR5 in January 2020. See U.S. Design Patent No. D915,487 (Apr. 6, 2021). The Patent Office granted the design patent in April 2021.

Robotic arms with similar functional configuration have long been the subject of utility patents. See, e.g., U.S. Patent No. 4,273,506 (Jun. 16, 1981) (“Industrial Manipulator for Placing Articles in Close Proximity to Adjacent Articles”).

This pattern of copyright registration refusal/design patent grant is a common occurrence. In another poignant example, the Copyright Office declined registration for the Purple® pillow, concluding that the overall shape of the pillow—featuring an interior grid of hollow triangles—is unprotectable and not capable of conceptual separation from the useful article. The Copyright Office explained that the triangles have an “intrinsic utilitarian function” and thus are useful articles themselves,” noting that Purple’s marketing materials make “clear that these triangles are wholly utilitarian,” including that the Work’s “hundreds of little triangles . . . give the core of the pillow lateral strength so it retains its oh-so supportive, head-cradling comfort all night” and emphasizing the word ‘SCIENCE!’ in all capital letters; and “[e]ven if the grid of triangular prisms was not functional, however, it would not be a basis for copyrightability. The Copyright Office’s refusal to register quoted the Compendium of U.S. Copyright Practices: ‘The Copyright Act does not protect common geometric shapes’ including triangular prisms.”

Nonetheless, the design patent application for the Purple Pillow sailed through the Patent Office. See U.S. Design Patent 909,790 (Feb. 9. 2021) (“Pillow”).

The design patentee continues to emphasize the ergonomic advantages of its pillow design: “Unique to the Purple Harmony Pillow, the Deluxe Hex Grid is specially formulated and engineered for head and neck support. The soft hexagon-shaped air channels optimize the dynamic response and airflow for unbelievable comfort.”).

We explore these and other examples in The Design Patent Emperor Wears No Clothes: Responding to Advocates of Design Patent Protection for Functionality.

These minimalist designs raise serious functionality and originality concerns. They demonstrate the rubber stamp quality of the Patent Office and that the design patent system as currently administered results in significant overprotection of functional features and designs. And even though design patents have “only” 15 years of duration, that length of time can be an eternity in some design markets and substantially diminish competition. The utility patent supremacy/channeling principle is about preserving competition in exactly the same way as trademark’s functionality doctrine—the channeling of functionality protection exclusively to utility patents is meant to subject all other, not sufficiently innovative, functional features to unimpeded market competition.

38 thoughts on “Guest Post: Design Protection and Functionality: Does the PTO or the Copyright Office Apply a More Rubbery Stamp?

  1. 5

    Pillow talk.
    The good professor lauds the Copyright Office’s refusal to register a design for a pillow, and criticizes the USPTO for issuing a design patent on the same pillow. However, the thrust of the CO’s refusal appears not to have been that the pillow is “functional”, but rather than it’s not “original” because it consists of a combination of common geometric shapes (even this is arguable; take a close look at the design). Functionality and originality are 2 separate and distinct issues in copyright. In fact, after Star Athletica clarified (and loosened the standards of) the core issue of copyright separability/functionality, the CO is relying less on separability/functionality refusals, and more on “lack of originality” refusals. The CORB (Copyright Office Review Board) is now reversing many separability/functionality refusals on such “functional” items as lamps, floor mats, and sneakers.
    Regarding the design patent on a portion of the pillow (D909,790), the examiner considered 73 pieces of prior art before allowing the claim, and the application was pending over 2 years, attesting to the fact that it did not “sail through” the USPTO as stated by the professor.

    1. 5.2

      If design patent examiners were just rubber stamps, they wouldn’t be taking a magnifying glass and scrutinizing each square millimeter of the figures to make sure that absolutely every single feature that appears in a perspective figure shows up as it should in a plan or elevation view.
      If design patent examiners have a fault, in my recent experience it has been that they acknowledge the existence of a Federal Circuit decision when pressed (e.g., In re Surgisil) but they won’t incorporate into their examination practices as a controlling authority on their own volition.

    2. 5.3

      Perry — Paraphrasing Shakespeare, methinks that you doth protest too much. In your response to my article with Ella Corren, you stated “[i]t is notable that copyright applications are not examined by the Copyright Office, whereas design patent applications undergo a rigorous examination by the U.S. Patent and Trademark Office (USPTO) resulting in a design patent that carries a statutory presumption of validity.” Our commentary tested your proposition and confirm what design patent attorneys well know: if at first you don’t succeed at the Copyright Office, try the PTO design patent regime. It’s an easy mark.
      Your cavalier statement about the “rigorous” design patent examination was too juicy to resist. Your proposition does not hold up to scrutiny. The PTO does not apply a more exacting functionality or originality screen than the Copyright Office. Your PatentlyO comments concede and pivot away from the testable proposition.
      As regards the “sail through” characterization, how else can one characterize the PTO’s failure to consider the Copyright Office’s straightforward basis for rejecting registration and Purple Pillow’s public statements about the functionality of its design?
      Histrionics have no place in scholarly debate. You have yet to discuss the main point of our research: that the Federal Circuit has not confronted the meaning of the 1902/1952 statute nor the three-quarters of a century of regional circuit court jurisprudence. You declined to respond to our core research in your response and you continue to mislead and change the topic here. Utility patent law is the appropriate regime to protect functionality, not design patent law (or copyright law).
      PatentlyO asked us to limit our commentary to about 1,000 words. We invite interested readers to review the full article and response to your commentary.

      1. 5.3.1

        If it were possible to leave a mark on an oil slick, that would comment would leave a huge one. Ouch!

        Just so there’s no confusion, even Perry’s first comment below is a bizarre attempt at deflection:

        a design patent does not protect utilitarian features of a claimed design, it protects only the overall visual impression of the design.

        Uh … okay except that subject under discussion here is not what design patents are supposed to do but what actually happens as a result of the PTO failing to examine them. When the PTO grants design patents with solid lines protecting (obviously) functional features, then those features are “protected”. Is Perry arguing that this doesn’t happen because the PTO does such a rigorous job policing this issue during examination?


          When the PTO grants design patents with solid lines protecting (obviously) functional features, then those features are “protected”

          You clearly do not understand Design Patent law.

          Your feelings (in general being anti-patent) are showing.


          You said: ” When the PTO grants design patents with solid lines protecting (obviously) functional features, then those features are “protected”.

          Only the VISUAL APPEARANCE of the OVERALL claimed design is protected. An individual “functional” feature that is shown in solid lines as part of the overall claimed design is not protected. All that aside, what is “protected” is the APPEARANCE of the features, NOT how they work. If you want to use such a functional feature in your own design that does not LOOK LIKE the overall claimed design, you are free to do so, as long as the functional feature is not claimed in a utility patent.

          What is not clear about this? Where’s the deflection of which you speak?



            In case you missed the note, “The Prophet” is Malcolm Mooney, having returned from his just-over-a-year hiatus.

            He is better treated in a John Maynard Keynes sharp word manner.

      2. 5.3.2

        Dennis, thank you, thank you, thank you for limiting responses to 1000 words. Here’s my one word response to Peter: bullocks.

      3. 5.3.3

        Don’t expect intellectual honesty from persons whose livelihoods depend on the twin pillars of the PTO handing out design “patents” for functional designs, and the courts handing out obscene awards for “infringement” of things like rounded corners on a smartphone.

      4. 5.3.4

        The professor’s initial 147 page paper “Design Patent Law’s Identity Crisis” file:///C:/Users/pjsai/Downloads/SSRN-id3668032.pdf formed the basis for his February 2021 conference at which I was invited to speak (along with Chris Carani and others). I was asked to write a paper encapsulating my position; it is entitled “A Primer on Design Patent Functionality”. It was, and needed to be, only 20 pages long, all that was necessary to refute the professor’s broad assertions. Now he has published his 44 page critique of my paper (which hasn’t even been published yet). It’ll probably take only 10 pages to refute it.

        As an aside, it must be nice to have a cadre of law students at one’s disposal to do legal research encompassing the last 170 years of design patent legislative history and case law. Being in the real world of private practice, I do not have access to a similar cadre, so Peter’s protestations to the effect that I failed to address this, that and the other is a bit unfair. And I don’t pretend that these exchanges come anywhere close to “scholarly debate”.

        Keeping in mind Dennis’s 1000 word limitation, here is a portion of the Introduction to my paper that raised two basic issues that the professor has himself failed to address.

        “First, a product that has utilitarian features has an associated appearance that, if claimed in a design patent, must be taken into account in determining patentability/validity. It is true that obtaining a design patent on a product that has utilitarian (functional) features prevents others from making, using, or selling a product whose overall appearance is substantially the same as the claimed design. However, it does not prevent someone from making, using, or selling a product having the same utilitarian features. In other words, even though the system removes that one patented design from the universe of designs available to a competitor, it does not remove the competitor’s ability to use the same utilitarian features among the many choices of designs open to it. Thus, it is misleading and inaccurate to suggest that a design patent somehow protects a design’s utilitarian features. It protects only their appearance in combination with all other features.

        Second, Menell and Corren’s paper advocates that utilitarian features should be “filtered out” of a patented design, i.e., excluded from consideration, before determining infringement, akin to copyright law. This is contrary to the fact that such utilitarian features all have an associated appearance that, if claimed, must be taken into account in infringement analysis. The failure of Menell and Corren’s paper to take into account these two basic principles undermines his premise that design patents somehow monopolize utilitarian features of a design.

        It is notable that copyright applications are not examined by the Copyright Office, whereas design patent applications undergo a rigorous examination by the U.S. Patent and Trademark Office (USPTO) resulting in a design patent that carries a statutory presumption of validity. In other words, determination of what is copyrightable is left to the courts, while the USPTO determines what is patentable before any court action. This leaves courts in copyright actions to feel free to filter out features that are not novel, too simple, or have solely utilitarian features. In contrast, since a design patent protects the overall appearance of a claimed design, the issued design patent can, and frequently does, consist of features that, when taken alone, are perhaps not novel and/or are simple or utilitarian. It is only when an entire claimed design is not novel or is solely utilitarian will patentability be denied by the USPTO.

        Contrary to the assertions in Menell and Corren’s paper, the design patent system does not foist a “fraud upon the public,” nor present a “troubling collision with the utility patent regime.” Given that design patents protect only the appearance of products and not any utilitarian features that may be part of the overall appearance, any purported conflict with utility patents is illusory. Menell and Corren rely on ancient design patent case law decided long before the courts came to properly analyze so-called functionality. Also, the “filtering out” shibboleth propounded by the paper has been quite properly dealt with by recent Federal Circuit decisions.”

        The body of my paper has extensive case law citations supporting these basic principles.

        The professor invites everyone to read his 147 and 44 page papers and comment. I look forward to comments from those of you in the real world, should you have the intestinal fortitude to read those papers. On the other hand, I’m happy to send my 20-pager to whoever wants it.

      5. 5.3.5

        Professor, I agree that the Copyright Office has a radically different standard for separability/functionality than the USPTO. This stems at least in part from the fact that a copyright registration is in force virtually forever, while a design patent expires after 15 years. So of course the CO applies a stricter standard for getting a perpetual right than the USPTO which grants a very limited right.

        The other thing that must be pointed out is that the test for separability in the CO is and has been for many years like a nose of wax that can be twisted and turned to suit the whims of the courts, examiners, and CORB. No one can predict when a useful article will meet the separability test, even after Star Athletica. I’m sure you’re aware of the hundreds of articles that have been written in the past about this crazy separability test. Star Athletica at least tried to resolve the split in the circuits, but it has been only minimally effective. The CO has a long history of antipathy towards useful articles; they don’t want to register designs, period.

        On the other hand, USPTO examiners know what you don’t seem to acknowledge, despite my repeating it again and again and again: A DESIGN PATENT DOES NOT PROTECT FUNCTIONAL/UTILITARIAN FEATURES, ONLY THEIR APPEARANCE. We agree (weird, huh?) that if someone wants to protect functional features per se, go apply for a utility patent.

        Regarding your “sail through” comment, and (almost) needless to say, the USPTO does not likely pay attention to CORB decisions as they are not precedential (on USPTO findings, or on anyone else for that matter). But this would not prevent a smart litigator from drawing from CORB decisions in trying to invalidate an opponent’s design patent.

        And if you ever deign to occupy the real world, you’d realize that a broad design patent claim receives incredible scrutiny at the USPTO. Examiners fight tooth and nail not to allow broad claims. The narrow claims, of course, sail through, since there’s usually no prior art against a narrow design patent claim. Oh yes, there’s the forgotten prior art examination, another screen at the USPTO. Copyright doesn’t have one – you can register a copyright on a design that’s been around for 50 years – there’s nothing similar to a statutory bar in copyright.

        Regarding your research of 75 years of design patent precedent and legislation, is it not possible that the courts (especially the Federal Circuit) have become more sophisticated when it comes to the issue of functionality? The old cases simply say: if a design has a function, it’s not patentable (which is patently wrong, see my CAPS above). The newer cases say: just because a design has utilitarian features doesn’t mean that the appearance of those features are disqualified for protection (see the recent Ethicon and Sport Dimension cases).

        And speaking of the 1952 Act, in the statutory subject matter section (sec. 171) it says that you can only get a design patent “for an article of manufacture”. Articles of manufacture inherently have utilitarian features. If the presence of utilitarian features disqualifies a design from being patented, as you posit, there would be no design patents. Which is clearly your unspoken goal.


          Perry – My goal is to illuminate these issues. BCLT invited you and other practitioners to the symposium to ensure that all voices were heard and to provide the most thorough check on the research presented in the lead paper. I join you in inviting practitioners, scholars, judges, and policymakers to examine the papers presented at the symposium and to stream the videos. Here is the URL: link to

          I have had quite a bit of experience in what you refer to as the “real world.” Readers of PatentlyO may be familiar with the Patent Case Management Judicial Guide, my work on claim construction (cited in the Supreme Court’s Teva decision), and my work seeking to rectify the 101 mess. I do, however, bring a different perspective. Unlike you, I don’t have clients. My research is aimed at understanding the sources and interpretation of law and policy.

          As regards your suggestion that the Federal Circuit might have become “more sophisticated when it comes to the issue of functionality,” I am open to that possibility. But I am not so naïve and reductionist to conclude that the old cases “simply say: if a design has a function, it’s not patentable.” The regional circuit courts, writing at the time of the critical legislation and consistently over the ensuing decades, had a sophisticated understanding of the balances struck. That is part of the reason that our paper is lengthy. As our research shows, the Federal Circuit has never once discussed the legislation (the 1902 Act) that established the ornamentality/non-functionality standard nor the numerous thoughtful regional circuit court jurisprudence. Furthermore, as I noted in responding to Charles, Congress did not in creating the Federal Circuit intend to wipe away three-quarters of a century of sensible regional circuit interpretation of the design patent regime. This was an unintended consequence of a structural change in the federal judiciary focused on harmonizing utility patent law.

          We hope that this research will rectify this oversight.

          Thank you for taking the time to share your perspective.


            I am not seeing illumination.

            I am seeing you avoid the point that Perry is presenting, and thus question your stated “altruistic” aim.

            In other words, not buying what you are selling.

            Perry simply has the better read here.


            The good professor says:

            “But I am not so naïve and reductionist to conclude that the old cases “simply say: if a design has a function, it’s not patentable.” The regional circuit courts, writing at the time of the critical legislation and consistently over the ensuing decades, had a sophisticated understanding of the balances struck. That is part of the reason that our paper is lengthy.”

            Peter, here are some examples, taken from your first paper, of courts’ “sophisticated understanding” that actually support my interpretation of these cases that essentially say that if a design has a function, it’s not patentable.

            On pp. 35-36, you cite the Second Circuit’s Baker v. Hughes-Evans Co. case where the judge, in considering both a utility patent and a design patent on the same product, said: “it is not true that the design can ever be used to appropriate (per se) the mechanical function.”

            This court recognized a design patent does not protect the mechanical [functional] aspects of the design.

            On p. 37, you cite Theodore W. Foster & Bro. Co. v. Tilden-Thurber Co. where the court said: “[s]uch a [design] patent, indeed, would cover the new shape or configuration only in its ornamental and not in its merely useful aspect, nor would it be infringed by an article securing the same merely useful result through shape or configuration, unless so nearly the same in appearance as to come within Gorham Co. v. White.”

            In other words, the court recognized that you are free to use the useful [functional] aspects of a patented design provided your product doesn’t LOOK LIKE the patented design.

            On p. 43, you cite Hueter v. Compco Corp. where the Seventh Circuit invalidated a design patent on an “Article Holding Guard”, saying:
            “Consideration of the use for which plaintiff’s device was designed dictated a front bar for the holder in order to keep articles from falling off the front side of the dashboard, and the wings were likewise necessary to prevent the articles from sliding sidewise and falling to the floor.”

            Hence, the court found that the article performed a function, so it’s not design patentable.

            On p. 45, you cite Tupper Corp. v. Tilton & Cook Co., where the court said:
            “Given the problem of designing a container for a pack of cigarettes and a book of matches, the obvious and natural result would be a case following the general configuration of the cigarette package with a bulge on one side of the size and shape necessary to allow the book of matches to be placed therein. . . . Thus the essential features on which plaintiff relies as producing the new and pleasing aesthetic impression are merely the natural results of the functional elements of the Tupper case.”

            Hence, the court found that the cigarette and match case perform a function, so it’s not design patentable.

            On p. 47, you cite Jones v. Progress Industries, Inc., where the court, in invalidating a design patent, said:
            “Considering all of the evidence, I am satisfied that the shape, size, and contour of the visor and lens section, the recess for the nose, the curved lens, the ventilation ports and holes, the molded lip overhanging the lens at the front of the visor, the loops for receiving the head strap, the acute angle between the head and visor section, the heads of the detachable bolts and all of the essential features of plaintiff’s design are functional rather than ornamental.”

            Essentially the court said that since the device performs a function, it’s not design patentable.

            On p. 49 you cite Blisscraft of Hollywood v. United Plastic Co. where the court found the design patent invalid:

            “The patent is also invalid on the ground that the novelty, if any, is functional rather than ornamental. The spout cover serves to close the spout opening; the handle and the tapered body make for ease in molding. The finger indentations on the ‘pistol grip’ prevent the pitcher from slipping out of one’s hand. The horizontal lines around the body permit measuring and also strengthen the body. The scalloped lower edge of the lid serves to keep the lid on more tightly and to prevent leakage; and the flange or base prevents tipping. Each of these features is basically functional.”

            Oh gosh, there are features that perform a function, so your design patent is invalid.


            Happy Thanksgiving, one and all (this includes you, Peter)!


              Perry — It is nice to see that we are finally down to brass tacks and to hear your acknowledgement that each of these designs is ineligible for design patent protection under the ornamentality/non-functionality doctrine. It would be great to see the Federal Circuit taking note of the wisdom and logic of these cases in developing the doctrine. As Oliver Wendell Holmes wrote in New York Trust Co. v. Eisner: “a page of history is worth a volume of logic.”

              As we explain in our response to you and others, each of these designs would likely qualify for design patent protection under the Federal Circuit’s lax alternative design standard. And without filtration of functional aspects, such design patents would have impeded legitimate competition.

              Happy Thanksgiving!



                Gosh, Peter, you misinterpreted my post. I was simply proving that the ancient court decisions – that you yourself cited in your paper – were predicated on the misbegotten notion that simply because a design performs a function, or has utilitarian elements, does not mean that its design patent is invalid. (LET’S GO CAPS!).

                Many of the cases in your article, which I cited in my previous post, also rely on a finding that the shape of the design was “dictated by function”. For example, in the Heuter case, the 7th Circuit said: “the shape and configuration of the structure of the plaintiff’s design were not ornamental but were dictated by functional requirements rather than by those of design”.

                And in the Tupper case, relying on Heuter, the court held the design patent invalid because “The essential question is whether the design is ornamental, rather than a design dictated by the functional and mechanical requirements of the subject matter….The general shape and configuration of the Tupper case is clearly one dictated by functional requirements.”

                And in Blisscraft, the court found that the design “was dictated solely by functional and mechanical requirements” and therefore invalidated the design patent.

                Let me be perfectly clear. I do not cite the foregoing cases to agree with you. I cite those pre-historic cases to refute your notion that the Federal Circuit has ignored all pre-1982 case law on design patents, and has erroneously switched to using the alternative designs test to determine functionality.

                In reality, the Federal Circuit has embraced the “dictated solely by function” test, fulfilling your dream that it has taken note of the “wisdom and logic” of those cases. As it said in the 2002 case of Rosco, Inc. v. Mirror Lite Co.: “…the design of a useful article is deemed functional where “the appearance of the claimed design is `dictated by’ the use or purpose of the article”, citing L.A. Gear and in re: Carletti.

                The Court advanced its analysis with the only logical conclusion that could stem from the “dictated by function” test, namely, a design is not dictated by function if there are other designs that can be used to perform that function, i.e., the alternative designs test. The latter also supports the underlying purpose of the functionality doctrine: you can’t use a design patent (or trademark or copyright) to protect that which can only be protected by a utility patent.

                Gobble Gobble!

      6. 5.3.6

        Peter, not to mention the continued refusal of the Fed. Cir. to even discuss why it does not ever even cite the Sup. Ct. KSR decision definitions of 103 in any of its design patents decisions, even though the exact same 103 statute is supposed to apply, as at least one D.C. has pointedly noted.


          Perhaps Peter would jump on that hobby horse of yours Paul (goodness knows Perry has explained that to you several times now, but to no avail).


            Paul’s KSR screed lives on, refusing to die! BTW, Paul, what is the district court case of which you speak? Did it apply KSR in a design patent case? Pray tell…

  2. 4

    Does the file history argument of non-functional “raised circular caps containing the stylized ‘UR’ design,” make these robot arm joint lubrication access caps easily designed-around by caps with a different design?

    1. 4.1

      Assuming that a design patent were to issue claiming the “UR” logo (which would be silly to do) (D915,487 disclaims the caps in their entirety, including the logo), there’s an argument, at least, that if your cap has a prominent logo different from “UR”, e.g., “PM” in honor of the professor, you arguably would not infringe the design patent on the ground that it’s not substantial the same in overall appearance as the patented design (see the Federal Circuit’s rather poor decision in Colunbia v. Serius).

  3. 3

    Peter, Peter, Peter: Here you go again. This is the same POV that you put forth in the conference you referenced in your paper. It still amazes me that legal academics, even extraordinary academics like yourself, continue to proffer opinions on the patentability of specific product design submissions when you have virtually no relevant experience in the subject matter in question. Are you a POSITA in the design of robotic arms or smartphones (Apple vs. Samsung)? Of course not and that is exactly why all of this back and forth is a waste of everyone’s time. Having an opinion does not make it so.

    1. 3.1

      It is LESS a matter of “having an opinion,” and MORE a matter of “this is the narrative that must rule the day.”

      Academics — in very large part — want the latter as opposed to the former. That you may think the former just does not make a dent to the mission of the latter.

    2. 3.2

      Charles — The design card does work here. The Copyright Office’s decisions and the Purple Pillow advertisements speak for themselves. Our full article and response to your commentary offer numerous examples of the PTO’s rubbery stamp. Originality and functionality are often not so complicated that we need a design expert to know which way the wind is blowing, especially in the realm of minimalist design.
      Moreover, the problems that we identify trace to legal interpretation. The PTO is following the Federal Circuit’s flawed interpretation of the 1902/1952 Acts, not an area where a design degree is a trump card. Ella and I methodically reviewed and chronicled every appellate design decision going back to 1842. Congress did not, in creating the Federal Circuit, intend to wipe away three-quarters of a century of sensible regional circuit interpretation of the design patent regime. This was an unintended consequence of a structural change in the federal judiciary focused on harmonizing utility patent law.

  4. 2

    Is it not so, that in very many fields of manufacture (excluding high fashion, I suppose) any distinction is illusory, between fitness of a design feature to appeal to the eye, and fitness of a design feature to function satisfactorily?

    One can safely designate as “functional” a design which, in order to function at all, MUST be a particular shape. Perhaps the tip of a drill bit which a robot arm is going to wield. But consider a doctor wielding a hand-held surgical instrument. Are the features of shape of the new pistol grip hand unit, of which its manufacturer is so proud at market launch, devoid of visual appeal, 100% functional? Duuuuuh. Of course they are not. To have any chance of attracting the acclamation of surgeon users, the thing has to look “good”, doesn’t it?

    But those hand unit design features are not 100% ornamental either, are they?

    How to protect that new hand unit? In other jurisdictions it is obvious: by registering its design for 25 years-worth of exclusive rights, with no requirement for the rights-owner to prove copying.

    No wonder the EU Design Registration process is so popular.

    Time for Congress to intervene, to craft a design protection regime that stands comparison with that elsewhere in the world? Mr Saidman, when you get back to this thread, any thoughts?

    1. 2.1

      Max, you hit the nail on its proverbial head.

      Speaking of surgical instruments, there’s the Federal Circuit’s Ethicon decision. Although the professor opines that the Court has gone off the rails with respect to functionality, he couldn’t be more wrong. In fact, the Court has put to rest the professor’s notion that just because a design performs a function (as it must to satisfy Sec. 171) does not mean the design is disqualified from design patent protection. In Ethicon the Court said it well: “Although … design patents do not protect … general design concepts of utilitarian elements… they nevertheless protect the particular appearance of the elements.” In other words, as I point out in my paper, every utilitarian element has an associated appearance, and it’s that appearance that is protected by the design patent, not the so-called functionality thereof. Any competitor is free to design its own surgical instrument that performs exactly the same function as a claimed design, as long as it doesn’t look like it.

      Regarding the EU, I have long advocated passage of a US design registration law that essentially tracks the EU’s system. In fact, I have drafted legislation that would effect that goal by amending the existing Vessel Hull Act in 17 USC to broaden it to cover all designs, not just vessel hulls.

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        For me, the most interesting words in the EU’s Design Regulation are “individual character”. To be registrable, a design needs it. To catch an infringer you need to be able to find the same “character” in the accused product. Thus it is, that the more crowded the field gets, the smaller the remaining amount of “design freedom” there is, and so, inevitably, the smaller the scope of protection given by registration.

        In other words, a self-policing scheme for granting exclusive rights.

        How is it with the Vessel Hull Act, Perry?


          Max, I agree that the “degree of freedom” provision is a good one. It is I think provided in our design patent infringement test where Egyptian Goddess requires substantial similarity to be judged “in the context of the prior art”. A similar provision doesn’t appear in the Vessel Hull Act; perhaps it should.

          Only a few dozen vessel hulls have been registered, and I don’t know of any court decisions involving a vessel hull registration. Infringement of a vessel hull registration requires copying, akin to the EU’s unregistered design right, so in that sense the protection is very narrow. There’s nothing similar to requiring the design to have “individual character” (which is akin to non-obviousness). Here’s the Act’s provision on infringement:

          “As used in this section, an ‘infringing article’ is any article the design of which has been copied from a design protected under this chapter, or from an image or verbal description of the design, without the consent of the owner of the protected design. An infringing article is not an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium. A design shall not be deemed to have been copied from a protected design if it is original and not substantially similar in appearance to a protected design.”

          My so-called “legislation” was first drafted in 2007, and didn’t get any traction. It will “obviously” (pun intended) need to be reviewed/revised if the design stakeholders ever gather the political will to push it.

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        Perry — Your comment overlooks the key issue in ornamentality/non-functionality law–separability (or merger) of form and function. The Federal Circuit’s jurisprudence also sidesteps this critical question.


          Any quick examples of where the merger doctrine should have been applied, was not applied, and the application thereof would have changed the decision?


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    Unfortunately, I have only a few minutes this morning before a meeting, and admit to not having digested (I don’t want to get a stomach ache this early in the morning) the illustrious professor’s entire guest post. I do have time, however, to point to a basic flaw in his reasoning, which is that design patents somehow protect functional features of a claimed design. As pointed out in my paper “A Primer on Design Patent Functionality”, submitted as part of the conference materials to which the professor refers (and yet to be published [what’s taking so
    long?] copies available upon request), a design patent does not protect utilitarian features of a claimed design, it protects only the overall visual impression of the design. To protect utilitarian features, one needs to obtain a utility patent. Period. (stay tuned).

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      You say it doesn’t “protect” the utilitarian features; yet the penalty for design patent infringement is “total profits.” So this metaphysical discussion about what is “protected” seems (at least to me) largely irrelevant unless there is a robust invalidity defense for a design patent being overly-functional. The remedy for design patent infringement is like getting hit with a nuclear bomb. So either we find better ways to invalidate these or else Congress should amend the remedy and make it a royalty rather than a punitive “total profits” provision. Just IMHO.

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        The total profit provision in 35 USC 289 is perfectly appropriate. Virtually all infringers copy patented designs – that’s right, copy – in an attempt to trade off a successful design, and sell their knock-offs. Samsung (v. Apple) is a good example. If the only rememdy was a royalty, those guys would copy again, and again, and again, treating the royalty as a cost of doing business. It is only by disgorging their profit will they be discouraged. I say drop a nuclear bomb on those copycats. I’ll ride in the plane and pull the trigger.
        Again, the copycats are free to use so-called functional features of a patented design in their own products as long as those products don’t LOOK LIKE the patented design. To the knock-off artists I say go and design something yourselves – using all the so-called functional features you want – instead of copying someone else’s successful design.


          You nailed it Perry.

          But Litg8or is obviously not someone on the ‘protect the innova8or’ side of the fence.

          Your point here should be considered as a de facto standard on the utility side of the fence.

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