Functionality in Design Patent Prosecution and Litigation

Description

By definition, design patents protect ornamental designs. Those designs are often applied to functional articles. But sometimes design protection is denied—or revoked—for designs that are too functional. Though it applies rarely, practitioners should be aware of the functionality doctrine, and how to protect against it or use it to their advantage.

The question of functionality can affect a design’s very eligibility for patent protection, and can influence how a design patent claim is construed in litigation. The Federal Circuit has set forth factors and standards to help evaluate a claimed design’s functionality, but still the “functionality” line remains fuzzy. The lack of clear guidance has left uncertainty surrounding some aspects of design patent prosecution and litigation.

Listen as our authoritative panel examines ornamentality and functionality in design patent law. The panel will discuss recent court treatment, including the use of expert witnesses, and how it has shaped or applied the doctrine of functionality and will suggest strategies to optimize design patent protection in both prosecution and litigation. The panel will also discuss functionality’s sister doctrine, affecting protection for designs that are “hidden in use,” and will contrast the functionality doctrine with the markedly different trademark doctrine of the same name.