The Design Patent Emperor Wears No Clothes: Responding to Advocates of Design Patent Protection for Functionality

In Design Patent Law's Identity Crisis, we traced the origins of design patent law's ornamentality/non-functionality doctrine and showed how the Federal Circuit, the nation's de facto design patent emperor over the past four decades, has turned the doctrine on its head: it has upended the 1902 Act's intent and reversed three-quarters of a century of regional circuit jurisprudence. So much so that the post-1902 Act regional circuit design patent cases invalidating design patents on functionality grounds would come out oppositely under the Federal Circuit's lax standards. Those standards led to the absurd result that Apple could disgorge Samsung's profits on its smartphones because they employed rounded rectangular shapes. We showed that the applicable legislation limited design protection to original, ornamental articles of manufacture and excluded protection for functionality. This Article responds to the practitioners and academics who have defended the Federal Circuit's interpretation of design patent law in commenting on our article. While none of the commentators question, no less refute, our core finding that the Federal Circuit has flipped the ornamentality/non-functionality doctrine, several offer fig leaves to clothe the Federal Circuit's lax standards for design patent eligibility and infringement. We discuss the significant areas of agreement and show why the defenses of the Federal Circuit's interpretation of the design patent standards are mistaken as a matter of statutory interpretation and are bad intellectual property policy. We conclude by addressing ways in which the Supreme Court or the Federal Circuit could faithfully implement the design patent statute, the fundamental intellectual property channeling principle reflected in Baker v. Selden, and sound intellectual property policy.