Panel 3—Patent Law in the Next Decade
Mark D. Janis, Robert A. Lucas Chair of Law, Indiana University Maurer School of Law & Jason Du Mont, Doctoral Candidate, International Max Planck Research School for Competition and Innovation
Design protection systems are not trivial, despite some wacky design patents that don’t seem commercially significant. The iPod, the VW Bug, the Croc—all subject of design patents.
More familiar narrative comes from within the law of trade dress—the theme of channeling, particularly channeling subject matter out of TM with its potentially unlimited duration to utility patents, for example. There’s a lot at stake in that narrative.
Four problem areas: ornamentality jurisprudence. Ornamental designs can be protected, but what counts as ornamental? Assessing beauty invites assessments of artistic merit. Another strand of design patent minimizes ornamentality out of existence with “matter of concern” test which turns into a test of visibility. Ornamentality is no longer doing much work. First class: ornamentality requires the product of aesthetic skill and artistic conception, and with no aesthetic appeal a design can’t be protected. Learned Hand: in aesthetics there are no standards, but this design for a trike lacks ornamentality and is therefore invalid. Trash-can dolly case, 8th Circuit says it’s too much to expect a trash-can dolly to be beautiful, but it’s enough that it’s not ugly: finds ornamentality. Problematic to use that as a primary screen for design patents.
But what other screens can you use? Some courts have said the question is whether the appearance “is a matter of concern.” To whom? Consumer, designer? Marginal case: the hip implant. Could appearance be a matter of concern? Court says it is if it’s of concern some time during the life of the article, and the surgeon goes to the trade show and sees the implant, so that’s ornamental.
Functionality: fouled up beyond recognition in design cases. Encourages design dissection, especially in scope determinations, and creates difficulty assessing alternative designs, especially in validity determinations. Undertaken without a coherent normative definition of what the functionality criterion is supposed to be accomplishing.
Dissection comes up in a lot of areas involving visuals—problematic in copyright, problematic in composite word marks, and unsurprisingly in design patent law too. Worst: Richardson v. Stanley Works: Fed. Cir. held that the district court properly factored out functional aspects of plaintiff’s design as part of claim construction. But each part of the tool was functional, and then there’s nothing left as a logical consequence. Problems: adopts sub silentio dual doctrines of functionality (validity is different from scope) by having a doctrine of functionality in claim construction. So two doctrines of functionality have to coexist. Invites reliance on “de facto” functionality: hammer head hammers, therefore is functional. But functionality is a competitive matter. Also inconsistent with the gravamen of Egyptian Goddess, which changed the infringement standard from a point of novelty test (except that in Egyptian Goddess the court explicitly opened the door to this kind of analysis). Most importantly, it’s not clear what the effect of factoring out is on scope. Most utility patent lawyers are happy to have claims taken out—makes the patent broader. But will factoring out narrow the scope of design patents? Invariably you change the design when you start poking holes in it.
Courts tend to grab aspects of trade dress law in assessing functionality: multifactor test looks suspiciously like old trade dress law. Problematic if you think that trade dress functionality ought to be something different than design patent functionality. Fed. Cir. has explicitly used Traffix functionality in design patent cases. Why reflexively accept the idea that because the doctrine has the same name as in trade dress that the test ought to be the same?
Du Mont: It’s worse in the EU. There is harmonization ongoing as a result of the 1998 Directive/Community Design Regulation, but there are still a bunch of different regimes. Community design has 2 types of rights. Unregistered design right, intended to offer many of the benefits of copyright—low cost, no registration—without the downsides—short (3 years from date made available to public) and novelty required. Unregistered: only anticopying protection. Registration: full range of exclusive rights. Registration is also very fast. 80% of applications granted within 45 days, and terms begin with 5 years, extendable in 5 year increments for 25 years. Requires novelty and individual character. Novelty is like US, but individual character means different overall impression on informed user than prior art. Also must take into account designer’s degrees of freedom.
EU has adopted feature-based approach excluding features that are required. Prone to the same problems as the US. Must identify features that are solely dictated by technical function; then look at whatever is left and determine its new/individual character, and then if it does compare for purpose of infringement/scope.
What does dictated by function mean? If alternative designs exist, does the exclusion apply? Some cases don’t ask whether the alternative design is worse. That’s the predominant view in member states. More recently, some have switched to the causative view: was the feature caused or promoted by anything other than functional constraints?
Ornamentality has largely been solved by the EU, but the other problems exist—dissection, alternative designs/functionality. More holistic degree of freedom approach helps. Similar problems with internal inconsistencies.
… and then I really had to do DMCA stuff, sorry!