By Robert G. Oake, Jr.
In time the courts likely will sort out much of the uncertainty surrounding functionality in design patent law. But time is something industrial designers do not have much of. Their creative designs for articles of manufacture - the very things the design patent statute was intended to promote - need proper protection now. And those trying to design around and avoid infringement need to know their rights as well. So let’s try to apply our functionality knowledge from parts 1 and 2 and see if we can develop some effective strategies. Many standards and procedures are still evolving, so a cautious approach should serve us well.
Let’s begin with functionality in the validity context. The issue can arise during the patent application process and also in litigation when a defendant is attempting to invalidate a design patent. Those applying for design patents should become familiar with Manual of Patent Examining Procedure (MPEP) section 1504.01(c) entitled “Lack of Ornamentality.”1 The ornamental standard is discussed in the initial paragraph of part I (entitled “Functionality vs. Ornamentality”), which ends with the sentence “[t]herefore, for a design to be ornamental within the requirements of 35 U.S.C. 171, it must be ‘created for the purpose of ornamenting.’” (emphasis in original) (citing In re Carletti).