Design Patents

When inventors and designers embark on creating new products, the boundary between functionality and ornamentality often becomes a key consideration, especially in the realm of design patents. According to the United States Patent and Trademark Office (USPTO), an ornamental design is one "created for the purpose of ornamenting" and should not merely be a by-product of functional or mechanical considerations (In re Carletti, 1964). This distinction is critical as it determines whether a design can be protected under patent law, specifically under 35 U.S.C. 171, which requires a design to be new, original, and ornamental. The Essence of Ornamentality The principle of ornamentality stipulates that a design must be primarily ornamental rather than functional. This means that the design's aesthetic appeal should be its main purpose. The courts have consistently reinforced this view by analyzing the overall appearance of the product rather than the individual features when determining a design's patentability (L.A. Gear Inc. v. Thom McAn Shoe Co., 1993). Therefore, even if certain elements of a product are functional, the overall design must contribute aesthetically to the product's appearance to qualify for a design patent. Functionality vs. Ornamentality One of the pivotal challenges in design patent law is distinguishing between what is functional and what is ornamental. A purely functional design, one that is dictated by utilitarian purposes, is not eligible for a design patent. This was affirmed in Norco Products, Inc. v. Mecca Development, Inc. (1985), where the court held that a primarily functional invention could not be patented as a design. However, this does not mean that a functional item cannot have an ornamental design. The design itself must add an ornamental value that is independent of the item's functional aspects. The [...]