Design Patent Law Research Articles

LKQ realigns US design patent law on obviousness with KSR

<i>LKQ</i> realigns US design patent law on obviousness with <i>KSR</i>

Forfeiting IP

Can IP rights be lost? That is, once IP rights are acquired, what—if anything—must owners do to keep those rights or risk forfeiting them. The answer varies widely across the IP landscape and has important consequences for follow‐on innovation, competition, and the public domain. This article takes the first close look at forfeiture mechanisms throughout the five major IP regimes—utility patent, trade secret, copyright, design patent, and trademark. I demonstrate how IP forfeiture mechanisms (e.g., maintenance fees, monitoring obligations, and use requirements) have weakened or narrowed over time. Building on prior scholarship, I also delineate the important functions that IP forfeiture mechanisms serve. By forcing IP owners to decide if the cost and effort of maintaining IP rights are worthwhile, forfeiture mechanisms help eliminate low‐value IP rights and enlarge the public domain, benefiting follow‐on innovators and society at large. In addition, forfeiture mechanisms serve an important notice or signaling role by forcing owners to engage in acts that inform second comers about the existence and scope of IP rights. These functions are particularly important when it comes to functional or useful subject matter (e.g., innovations that make a product work). Given forfeiture's role and its problematic narrowing across the IP landscape, I suggest the need for reform—particularly in design patent and copyright law, two areas that increasingly cover functional subject matter but lack any forfeiture mechanism.

Design Patents are Theft, Not Just a 'Fraud on the Public,' Who Need Legislation to Restore Their Repair Rights

This Comment, forthcoming in the Berkeley Technology Law Journal, commends the excellent and timely historical analysis of Menell and Corren addressing design patent law and the awful historical development of its current functionality doctrine. Peter S. Menell & Ella Corren, Design Patent Law’s Identity Crisis, 35 Berkeley Tech. L.J. __ (2021). But their cogent analysis fails to focus adequately on the harm to the public from such fraud and restricts the scope of the fraud to functionality. Instead, I argue that design patents and the law surrounding them have been a series of category errors from the beginning. The entire concept of a design patent is a “fraud upon the public,” and it is the public that loses its rights (and pays from its metaphorical wallet) when that fraud occurs. The Comment traces these various category errors, suggesting that design rights be relegated to a sui generis regime rather than included in a technological patent regime.

One Day on Designs

Our book, Patent Law: An Open-Access Casebook (2021), contains a full chapter on design patent law. This set of readings is adapted from that chapter. It is designed for professors who want to assign one day’s worth of materials on design patents. It is suitable for use in courses on patents, trademarks, in IP surveys, or in other courses.

What's In A Name? Curver Luxembourg and Its Implications for Design Patents

This Article examines design patent law in the context of the 2019 Court of Appeals for the Federal Circuit decision of Curver Luxembourg, SARL v. Home Expressions, Inc. It first explains the law of design patents as it was prior to the Curver Luxembourg decision — providing an overview of the three key requirements for design patent eligibility, the concept of an article of manufacture, and the design patent prosecution process. Then, it examines the Curver Luxembourg decision itself: the background of the case, the district court decision, and its affirmation on appeal. Finally, it examines the decision’s implications for design patent law, industry reactions to the decision, and specifically considers the increased importance of patent titles and the decision’s impact on the scope of prior art.

Design Patent Law’s Identity Crisis

Since its emergence during the industrial revolution nearly two centuries ago, design patent law has suffered from a profound identity crisis. Its drafters modeled the law nearly verbatim on the British copyright regime for surface ornamentation and sculptural features of three-dimensional articles such as textiles and stoves. Courts struggled to interpret protection for “useful” designs against the backdrop of a utility patent regime focused directly on technological inventions. Further complicating design patent’s role, some manufacturers used design patents as a nascent form of trademark protection until federal trademark protection emerged toward the end of the 19th century. In 1902, Congress clarified that design patents were limited to ornamental attributes of articles of manufacture and did not extend to functional attributes. Unfortunately, the Federal Circuit overlooked the legislation and the key regional circuit decisions interpreting it, cementing design patent law’s identity crisis into place. This article traces the origins of the ornamentality/non-functionality doctrine and shows how several early cases using the “dictated solely by utilitarian considerations” phrasing to deny design patent protection were misinterpreted to be the standard for determining whether a design was eligible for design patent protection. These decisions merely explained that designs “dictated solely by utilitarian considerations” were clearly outside of design patent eligibility. They did not mean that designs that only partially affected functionality qualified for design patents. Unfortunately, inattentive and protectionist judicial opinions caused the standard to drift far from these holdings and into direct conflict with the clear language and intent of the 1902 design patent amendments and fundamental, overarching intellectual property law principles reflected in the Supreme Court’s seminal Baker v. Selden decision. This article aims to correct this fundamental misinterpretation of intellectual property law. Part I tells the remarkable story of how the effort to transplant England’s design copyright regime to the United States spawned a confusingly labeled “design patent” regime and examines the confusion wrought by this mislabeled law during the mid to late 19th century. It also reveals a period in which design patent law served as a proto-federal trademark registration system before Congress established federal trademark protection in the late 19th century. Remnants of that dalliance still confusingly resonate in the design patent system today. Part II explores the 1902 amendments, which unequivocally limited design patents to the ornamental features of articles of manufacture and made clear that they did not extend design patent protection to functional elements. Part III traces the emergence and distortion of the ornamentality/non-functionality doctrine. The early decisions clearly grasped the need to exclude functionality from design patents. Unfortunately, later cases misapplied some of the language of those cases, resulting in standards that contradict the 1902 (and 1952) Acts as well as the logic reflected in Baker v. Selden and other Supreme Court cases dealing with the structure of the intellectual property system. Part IV traces the Federal Circuit’s tilting of the ornamentality/non-functionality doctrine toward over-broad protection of functionality within the design patent regime. Part V explores the forces that have led the design patent regime astray. Part VI proposes ways of rectifying design patent law’s wayward drift to restore fidelity to the statutory language and the overarching logic of the intellectual property system.

Recalibrating the Disgorgement Remedy in Intellectual Property Cases

The five major US intellectual property (IP) regimes — trademark, trade secrecy, copyright, design patent, and utility patent laws — have quite different rules about the availability of disgorgement of infringer profits as a remedy. Traditional principles of restitution and unjust enrichment support awards of disgorgement of profits insofar as they are (1) levied against conscious wrongdoers, (2) attributable to the wrongful conduct, and (3) subject to equitable discretion. Unlike awards of actual damages, which aim primarily to compensate plaintiffs for harms suffered because of a defendant’s wrongdoing, disgorgement awards primarily seek to deter wrongdoing by ensuring that wrongdoers do not profit thereby. This Article presents a formal model that supports our judgment that these principles are consistent with the goal of optimal deterrence of IP infringement. Much of the Article presents a close study of the doctrinal structure of the five IP regimes’ approach to disgorgement. We find that trademark law is the most consistent of the five regimes with traditional restitutionary principles and the goal of optimal deterrence. Trade secrecy law, like trademark law, is substantially consistent. Design patent, copyright, and patent laws deviate in more significant ways. Disgorgement awards are always available to owners of copyrights or design patents, even against innocent infringers. Moreover, design patent law even deviates from traditional approaches to restricting awards to amounts attributable to infringement: instead, design patent law requires awards of total profits on the manufacture or sale of whatever “article of manufacture” to which an infringing design has been applied. Further, courts have thus far rarely recognized that disgorgement awards should be subject to equitable adjustments in copyright and design patent cases, although this may change after the Supreme Court’s characterization of disgorgement as an equitable remedy for copyright infringement. Patent law deviates from traditional restitutionary principles in a very different way: courts have ruled that Congress repealed disgorgement as a remedy for utility patent infringement in 1946, but patent law’s reasonable royalty awards can, in effect, effect a partial disgorgement of infringer profits. The Article makes recommendations about how courts can, within the statutory bounds of each IP regime, render disgorgement awards that are more consistent with traditional restitutionary principles in a manner that will promote the overall goals of the IP laws.

Brief on Behalf of Amicus Curiae Open Source Hardware Association in Curver Luxembourg, SARL v. Home Expressions Inc., No. 18-2214 (Fed. Cir.)

Curver Luxembourg, SARL v. Home Expressions Inc. is a case of first impression for the Court of Appeals for the Federal Circuit. The question on appeal is whether a design patent’s scope is tied to the article of manufacture disclosed in the patent. In this amicus brief, the Open Source Hardware Association (“OSHWA”) explains the potential effects on open source hardware development, and design practice generally, of untethering design patent protection from the article of manufacture disclosed in the patent. A large percentage of open-source hardware combines both ornamental and functional elements, and industrial design routinely involves applying design concepts from disparate fields in novel ways. To engage in this practice, open-source hardware designers need to know the universe of available source material and its limits. Further, understanding the licensing requirements of open-source hardware begins with understanding how the elements that make up that hardware may or may not be protected by existing law. Accordingly, while many creators of open-source hardware do not seek patent protection for their own creations, an understandable scope of design patent protection is nonetheless essential to their ability to collaborate with other innovators and innovate lawfully. The brief argues that the District Court in the case—and every district court that has considered the issue—correctly anchored the patented design to the article of manufacture when construing the patent. The brief explains that anchoring the patented design to the disclosed article of manufacture is the best approach, for several reasons. Connecting the patented design to the disclosed article of manufacture calibrates the scope of design patent protection to the patentee’s contribution over the prior art. It avoids encumbering the novel and nonobvious application of prior designs to new articles of manufacture, a fundamental and inventive practice of industrial design. It aligns the scope of design patent protection with its purpose: encouraging the inventive application of a design to an article of manufacture. This balances protection for innovative designs with later innovators’ interest in developing future designs. Finally, anchoring the patented design to the disclosed article of manufacture helps fulfill design patent law’s notice function by clarifying the scope of protection.

The Disgorgement Remedy of Design Patent Law

U.S. design patent law has a unique statutory remedy that allows patentees to recover an infringer’s “total profit” on sales of “articles of manufacture” to which infringing designs have been applied. In the high-profile Samsung v. Apple case, the U.S. Supreme Court decided that the relevant article of manufacture could be either a component of an end product (i.e., the flat face of an electronic device) or the end product (i.e., smartphones). However, it provided no guidance about how to decide what the relevant article is or how to measure profits from sales of them. Upon remand, a jury awarded Apple $533 million for Samsung’s infringement of three patents on small external design features of smartphones. This was 25% higher than the “total profit” award that the Supreme Court vacated when rendering its Samsung decision. We are not alone in regarding this award as excessive and indeed punitive. This Article scrutinizes the legislative history of the total profit disgorgement remedy and offers guidance about how the disgorgement remedy in design patent cases should be analyzed and applied going forward. “Total profit” disgorgement on end products may have been an appropriate remedy when patented designs covered the overall appearance of end products (e.g., carpet or wallpaper designs), as we believe that they did when this special remedy was enacted. The explicit premise was that the infringer contributed (almost) nothing of value to the end product. The nature of the design entitlement has, however, changed over the past 40 years in two key respects. First and most important, the entitlement has fragmented so that ever smaller design elements of end products are being patented. Second, patents are issuing for some designs that are more functional than ornamental. These changes have enabled design patentees to claim total profit disgorgement even when the entire profit on sales of end products is manifestly not attributable to the infringed designs, as was the case in Samsung. The Article explains why and how courts should handle issues of causation and apportionment in applying the disgorgement remedy. Generally, total profits on an end product should be awarded only when none or very little of the profit is causally attributable to the defendant’s contributions to the infringing enterprise. When the defendant’s profit is attributable to the combination of its contributions to the infringing enterprise and the use of the infringing design, the initial problem is identifying profits the defendant would have made without use of the infringing design. The plaintiff is not entitled to any profits attributable to the defendant’s contributions. A second problem is to identify profits arising from the combination of the defendant’s contributions and its use of the infringing design. These profits should be apportioned. The Article concludes with recommendations about reforms. It argues that judges should decide the relevant article of manufacture issue as part of pre-trial claim construction. As disgorgement is historically an equitable remedy in intellectual property cases, judges should also decide about the profits to be disgorged. But if disgorgement is tried to juries, they should be instructed to apply principles of disgorgement in rendering awards in design patent cases.

의료기기 디자인 사건을 통해 본 미국 디자인 특허법상 기능성 원리

미국은 디자인 특허 등록의 소극적 요건으로서의 기능성 법리를 판례법을 통하여 가장 먼저 도입하였고 이후 유럽 등 다른 나라의 디자인권 법제에도 영향을 끼쳤다. 근래의 의료기기 디자인 사건에서 미국 연방순회항소법원은 기능성의 징표로서 동일한 기능을 달성하는 대체 가능한 디자인의 존부가 무엇보다 우선시됨을 확인하였다. 또한 디자인 특허의 권리범위 해석시에는 기능적 요소를 제한해야 하는데, 그 방법은 종전처럼 기능적 구성요소를 전부 제거하는 방식이 아니라 그 보호 범위를 좁히는 방식이 되어야 한다고 판시하였다. 다만, 미국에서 조차 디자인 특허의 맥락에서 기능성 요건은 어떤 역할을 해야 하는지, 그리고 그런 역할을 발휘하기 위하여 기능성을 어떤 기준으로 판단해야 하는지가 아직도 상당히 혼란스러운 상태인 점이 대상판결 및 그 후속판결을 통해 목격되고 있다. 이는 디자인권에서의 기능성 요건의 역할이 확고하게 고정된 것이 아니라 재음미와 재해석이 가능한 부분임을 의미하므로, 우리도 우리 디자인보호법 제33조 제4호 소정의 기능성에 부여할 정책적 목표를 먼저 구체화하고 다음으로 해당 정책목표를 충실하게 이행할 수 있는 해석론을 발전시켜 나가야 할 것이다. 그 정책목표로는 상표법상 기능성 원리에 부여된 것과 마찬가지로 특허와의 충돌방지와 자유경쟁의 부당한 제한방지라는 두 가지 목표를 생각할 수 있다. 다만, 독점기간이 반영구적인 상표와는 달리 디자인권은 등록이 되더라도 존속기간이 유한하다는 차이가 있으므로, 그 점이 디자인보호법상 기능성 요건 적용시 고려가 될 필요가 있고, 자유경쟁의 부당한 제한방지라는 정책목표에 충실하기 위하여는 기능성 요건의 판단시 대체가능한 디자인 이외의 요소들도 고려대상에 충분히 포함시킬 필요가 있다.

Brief of Amici Curiae on Behalf of Intellectual Property Professors in Support of Respondent Apple Inc. in Samsung v. Apple (U.S. 2016, No. 15-777)

This brief explores the historical foundations of design patent law's special remedies provision. We draw on its legislative history and British antecedent to contextualize the debate between Apple and Samsung over the appropriate method of calculating design patent damages under Section 289 of the Patent Act.

Brief of Amici Curiae Jason J. Du Mont and Mark D. Janis in Support of Appellee Apple Inc.

This brief explores the historical foundations of design patent law's special remedies provision. We draw on its legislative history and British antecedent to contextualize the debate between Apple and Samsung over the appropriate method of calculating design patent damages under Section 289 of the Patent Act.

Design Patent: U. S. Dramatic Changes Due to AIA

Everyone will benefit from a full discussion of the AIA impact on design patent law and practice. Comments and questions on this topic are welcomed. An effort will be made to post on the fryer.com web these communications, where feasible.Dramatic changes have occurred in U. S. design patent law and practice due to the America Invents Act (AIA), enacted on September 16, 2012, Patent Reform Act of 2011, H. R. 1249 (112th Cong., 1st Sess.), Public Law No: 112-29). A copy of this legislation should be close on each patent attorney's desk. It is available on the Thomas Library of Congress web site. This new law changes some of the core features of design patent law on novelty standards, strategy during patent examination before grant, and when infringement litigation may occur. For foreign patent attorneys, they will find the changes very close to their national law and practice. It is the U.S. attorney that will have to make the big adjustment and go back to school to learn the new U.S. patent law and reconsider their patent strategies.

Automotive Aftermarkets: A Case Study in Systems Competition

As automobiles have become more durable and complex, manufacturers have denied access to parts, information, and training to anyone but authorized dealers. Increased intellectual property law protection has greatly contributed to these developments. This article examines the aftermarket for collision repair parts and the aftermarket for maintenance and repair services, and finds that problems such as consumer myopia and third-party payers keep consumers from factoring the total cost of ownership into the price of an automobile. Even robust competition in the primary market for new automobiles may not inhibit manufacturers from reaping monopoly profits in these aftermarkets. Potential solutions to these issues in the aftermarket for maintenance and repair services may be found in mandating access for independent service providers. In the aftermarket for collision repair parts, a potential solution may be found by creating an exception to design patent law for third-party collision repair parts.

Must Patented Designs Be Attractive? An Experimental Study of Aesthetics and the Ornamentality Requirement in Design Patent Law

Must Patented Designs Be Attractive? An Experimental Study of Aesthetics and the Ornamentality Requirement in Design Patent Law

Legal Protection on IP Cores for System-on-Chip Designs

The current semiconductor industry has shifted from vertical integrated model to horizontal specialization model in term of integrated circuit manufacturing. In this circumstance, IP cores as solutions for System-on-Chip (SoC) have become increasingly important for semiconductor business. This paper examines to what extent IP cores of SoC effectively can be protected by current intellectual property system including integrated circuit layout design law, patent law, design law, copyright law and unfair competition prevention act.

The Automobile Aftermarket: Crash Parts, Design Patents, and the Escape from Competition

Automobile manufacturers have increasingly relied on design patents to prevent competition in the aftermarket for collision repair parts. This trend has competitive ramifications for consumers and other stakeholders in a number of related markets, including automobile insurance companies and collision repair services. The proposed “Access to Repair Parts Act” would create a limited exception to design patent law to promote competition in the collision repair parts aftermarket. This paper provides an overview of design patents, describes the aftermarket, elaborates on the anticompetitive effects design patents when enforced by the OEMs against third party parts distributors, and evaluates the proposal. Ultimately, this paper concludes that the proposal need not deny automobile manufacturers the profits that a design patent entitles them to receive, although it would shift their collection of that profit away from the aftermarket and toward the primary market. More importantly, the proposal would likely increase price competition in the aftermarket and benefit consumers in a variety ways, including improved transparency in the lifetime costs of different automobiles in the primary market.

Design Protection and the Legislative Agenda

Design protection was one of the topics that engaged Chairman Robert W. Kastenmeier most strenuously during his long tenure as legislative overseer of intellectual property rights. As a Congressman who genuinely believed that the public interest was best served by free competition,' he never fully persuaded himself that domestic design industries needed more protection than the design patent law already afforded.2 The same convictions led him to resist the drive to protect integrated circuit designs in literary and artistic property law, although that drive eventually produced the Semiconductor Chip Protection Act of 1984.3 Unfortunately, the very design industries that were denied sui generis protection in 19764 soon turned to federal unfair competition law for a substitute form of relief that has produced increasingly anti-competitive effects.5 Moreover, the decision to exempt one class of functional designs from the strict conditions of patent law in the