Sunday, 18 June 2017

Design patents, utility patents and trade dress under US law

Design patents are the patents that have been granted for any non-functional invention for a device, for example, the inventive value of the aesthetic aspect of a device. Unlike copyrights, these are enforceable under a court of law and damages are paid for infringement of these patents, even if any person developed and manufactured the same design independent of the patent holder. These patents are granted to real innovative design which is not very obvious as a product design, along with novelty.

The granting or denying of such a patent has been well established by the “ordinary observer” test[1], where the observer is aware of prior art and can not identify the design present in front of him as violating the prior work of some other design made by some other person.

Design patents strictly have to adhere to the principle of non-functionality and functionality can not be included in design patents. To prove that there is no basis of functionality in what is invented for a device, makes it eligible as a candidate of design patent. So, only aesthetics and not any technological advancement can be patented under the purview of design patent.

Utility patents, on the other hand form the functional basis of a device, and unlike design patents, these never form the aesthetic part of the device. These patents are the safeguards of the inventor who invent the underlying technology in a device, like the wireless technology used in a device, which are not even visible to most ordinary men. Here the inventions are about the basic functionality of the device on which the device will run and perform.

Trade Dress is a part of trademark law. Covered by the Lanham Act, distinctiveness is a must to get a trade dress under Section 43. Distinctiveness so much as to be an ikon design in the market is required and mandatory. If a person makes a look alike using the signature feature of the product of the company, it violates its trade dress, as it confuses consumers as to the origin of the goods. This distinctiveness is elaborated as the following:

When we talk about distinctiveness, the distinctiveness must be such that at one glance of the product, any ordinary man would think of one product and one product only, which happens to originate from the company who applies for that particular trade dress. For example, the term ‘Cadbury’ is synonymous with ‘chocolate’, and the term ‘cadbury’ does not make any other person think twice as to what it might be – it refers to one and only one product in the market, or in this case a class of products in the market with different models or flavours.

Now, when we talk about design, distinctiveness must not be generic. Any company who sold their automobile with the name of ‘car’ cannot claim it as a trade dress even if it satisfies the above condition laid down as mandatory by the courts in the United States. For, it is absurd to have a trade dress for something so generic – it is a term used in general and never used to denote some specific product or method a product is used for.

Now, when we talk about design, the thing that brings us back to ‘design patents’ in this context is functionality again. This is a critical point for determining the validity of a design patent of a product. By speaking of functionality we plainly take the literal meaning of functionality, that is, whether the particular thing patented in the design patent serves for a particular functional purpose in the device or not. If it actually does serve a particular function, it goes beyond the purview of ‘design’ and becomes a ‘utility’ patent for that device, and in such circumstances, design patents are invalidated.

Coming to the term ‘functionality’, it is of two types –
·         Operable functionality is the way the product works – the functionality that consists of the core functions of the device and is a mandatory of the device.
Aesthetic functionality, on the other hand, forms a non-essential part of the core functions of the device. This is merely to please the eyes – like the aluminium lining coming in newer model phones today. They serve no purpose in the functioning of the device but make the device aesthetically pleasing to look at.

This functionality rule is therefore a very important aspect of the determination of the validity of design patents in any intellectual property rights case that whether it is functional or not to be called as a design patent. And what means by the word ‘functionality’ and what comes under the purview of the same has been already discussed and elaborated above.



[1]Formulated in Gorham Co. v. White 81 U.S. 511 (1871)

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