Functionality in Design Protection Systems

Patents, Copyright and Trademark and Intellectual Property

Article Snapshot


Jason Du Mont and Mark Janis


Journal of Intellectual Property Law, Vol. 19, No. 2, pp. 261-303, 2012


The authors analyze functionality doctrine in the design patent context and offer suggestions for improving it.

Policy Relevance

Functionality doctrine has not been critically analyzed by scholars in the design patent context. This analysis reveals that functionality jurisprudence in the design context has not resulted in clear and predicable doctrines. Immediate changes and policy discussion starters are suggested.

Main Points

  • Functionality doctrine is the main method of separating the utility patents system from the design patent system. This is so in both United States law and European Union (EU) law.
  • If there were no functionality doctrine then trademark law, which grants infinite protection, could be used to control useful product features. Trade dress’s functionality requirement has been used to prevent this.
  • While functionality doctrine has been debated in the trademark context, scholars have paid little attention to it in the patent design context. In the design context the doctrine is aimless and inconsistent.
  • Patent design cases sometimes look to the “ornamentality” requirement, which has low benefits in comparison to its administrative costs. The requirement often devolves into a thinly veiled exercise in “raw artistic judgment” on the part of judges.
  • Patent design cases that rely on a functionality analysis are also not without issues; in such instances the Federal Circuit should recognize scope functionality and validity functionality and do an analysis in both contexts.
  • Another issue regarding functionality is the lack of a clear test for proving design patent functionality. The court has alternated between a balancing test and a categorical test.
  • The EU has confronted design’s role in intellectual property as well and its results have been both positive and negative. These results provide a comparison to U.S. results and provide a starting point for policy discussion.
  • The authors propose several immediate steps that courts could take to sharpen the functionality doctrine in the design context.
  • The doctrines of functionality in the trade dress context and in the design context ought to be very different from each other. In the design context functionality’s role is not necessarily always beneficial.


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