Panel 3—Patent Law in the Next Decade
Panelists:
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!
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