Navigating Functionality in Design Patent Prosecution and Litigation

Evaluating Ornamentality vs. Functionality, Overcoming Obviousness Challenges, Leveraging Recent Court Treatment

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, December 8, 2015

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will provide guidance to counsel on functionality in design patent litigation and in the USPTO prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the lack of certainty in both the prosecution and litigation contexts.


By definition design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Should functional aspects of a design be given patentable weight?

In litigation, functionality considerations can arise in validity and infringement contexts. In the infringement context, the Federal Circuit's decisions in Egyptian Goddess v. Swisa and Richardson v. Stanley Works gave district courts significant discretion in how to assess functional features of claimed designs. However, the lack of clear guidance concerning functionality has left substantial uncertainty surrounding some aspects of design patent litigation.

Listen as our authoritative panel of patent attorneys examines ornamentality and functionality in design patent law. The panel will discuss recent court treatment and how it has shaped the doctrine of functionality. The panel will examine functionality in the context of the design patent applications as well as in litigation and will offer strategies to optimize design patent protection.



  1. Functionality in design patent law
    1. The ornamentality requirement
    2. In design patent applications
    3. In litigation
  2. Recent court treatment
  3. Best practices


The panel will review these and other key issues:

  • What are the lessons from recent decisions regarding functionality in design patent applications?
  • How can counsel use functional aspects of a design to overcome an obviousness challenge?
  • What steps should counsel to patent owners take to factor out functional aspects during claim construction?


Tracy-Gene G. Durkin
Tracy-Gene G. Durkin

Sterne Kessler Goldstein & Fox

Ms. Durkin leads the firm’s Mechanical Patent and Trademark Group. With over 20 years of experience...  |  Read More

Daniel A. Gajewski
Daniel A. Gajewski

Sterne Kessler Goldstein & Fox

Mr. Gajewski focuses on utility and design patent application prosecution, and challenges to issued patents of both...  |  Read More

Lance Rake
Lance Rake

The University of Kansas

Mr. Rake both practices and teaches industrial design. Prior to serving as he taught full-time at Auburn University and...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video