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Stanford Technology Law Review, Vol. 18 (2014) (Forthcoming)


This article, prepared for a symposium on Design Patents in the Modern World, argues that applying patent-like doctrine to design makes sense only if a design patent system is premised on a patent-like conception of cumulative progress that permits patent examiners and courts to assess whether a novel design reflects a step of some magnitude beyond the prior art. If there is a meaningful way to speak of an inventive step in design, then design patent doctrine should be based on that conception. If nonobviousness has no sensible meaning in design, then a patent system makes no sense for design. At present, however, design patent doctrine is in disarray because it is unmoored from any conceptual underpinnings. It goes astray primarily for two reasons. First, design patent law lacks a coherent concept for limiting the scope of its subject matter. While courts attempt to distinguish design patent from utility patent by interpreting the ornamentality requirement to rule out “functional” designs, this distinction has never proven to be a stable one. Second, design patent law errs by attempting to impose a nonobviousness requirement on primarily aesthetic expression. The copyright system long has rejected the very possibility of incentivizing aesthetic progress with such a “creative step” requirement because it has found no metric along which to measure aesthetic progress. It is no wonder that the design patent system’s attempt to impose such a requirement has been an utter failure.

Design patents are not needed to incentivize technological invention, because that kind of innovation is the subject of utility patent law. And because aesthetic expression is not susceptible of the same sort of “inventive step” judgment, progress in aesthetic expression is not appropriately incentivized by a patent-like system. If there is any type of cumulative progress to be sought in design it must therefore involve the intersection between aesthetics and utilitarian function. Aesthetics and utility intersect at the integration of form and function and that, we argue, is where design patents must be justified, if they can be justified at all. Once stated, this point is intuitively appealing. The integration of form and function is what distinguishes industrial design both from purely artistic expression (for which we have copyright) and from technological invention (for which we have utility patent). The converse also follows: If there is no workable means to assess the nonobviousness of a given design’s integration of form and function, there can be no sensible design patent system.

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design patent, technological function, prior art, nonobviousness, patent doctrine, functional design