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Design Patents: Does Primarily Functional Mean Not Patentable?


I wanted to take a minute to discuss Design Patents. A design patent protects an object’s design and appearance. A design patent does not protect, or even describe, any of the underlying functionalities of the object.

It is somewhat of a known fact that design patents are easier to secure than utility patents. This is true in part because design patents focus on a particular appearance of the object. It is a lot less likely to replicate another’s design than it is to replicate functionality. For example, since toasters are known, you cannot invent another toaster that toasts bread. Your toaster will need to be a super-duper toaster to require a second look from the patent examiner. On the hand, you can change the style of a ubiquitous toaster and still get a design patent.


The question that everyone has is what if the design patent covers a purely functional feature. In legal terms the question is whether design patent may protect a primarily functional design.


To answer this, you must ask a question whether the design is essential to the use of the article. If the answer is yes, then the design patent cannot be valid. “549 U.S. 1252, 127 S.Ct. 1373, ” Static Control Components, Inc. v. Lexmark Int’l, Inc., 697 F.3d 387, 421 (6th Cir. 2012).

There are some examples of this. In Static Control Components, Inc. v. Lexmark Int’l, Inc., 697 F.3d 387, 421 (6th Cir. 2012), the issue was the design patent on printer cartridges. The court invalidated the design patent because the design of the cartridge was dictated by the requirement of the intended printer and thus purely functional. In Fuji Kogyo Co. v. Pacific Bay Int’l, Inc., 461 F.3d 675, 683, the design of a rifle scope mount was invalid since the configuration served solely functional purposes.


In other words, if the design is needed to perform the intended function and no other design can similarly perform this function, then the design is primarily functional. If it is possible to alter a design and still preserve the intended function, the design has ornamental value and is patentable.