BCLT/BTLJ Design Patents Symposium: Navigating and Rectifying the Design Patent Muddle

Agenda
Resources
Speaker biographies

Recordings

• Introduction
• Presentation: Design Patent Law’s Identity Crisis
• Academic panel
• Practitioner/Comparative Law Panel
• Discussion

Corporate or Law Firm: $100.00
Academics, non-profit, government and students: complimentary
BCLT Sponsor: complimentary
Speaker: complimentary

Since its emergence during the industrial revolution nearly two centuries ago, U.S. design patent law has suffered from a profound identity crisis. U.S. copyright law did not yet extend to the shape or ornamentation of three-dimensional works. The drafters of the first U.S. design protection regime modeled the law on the British copyright regime for surface ornamentation and sculptural features of three-dimensional articles but confusingly labeled the regime “design patent.” Courts and the Patent Office struggled to interpret protection for “useful” designs against the backdrop of a utility patent regime focused on technological inventions. Further complicating design patent’s role, manufacturers used design patents as a nascent form of trademark protection until federal trademark protection emerged. And in 1870, Congress expanded copyright law to protect sculptural works. In 1902, after a persistent split in the courts and the Patent Office over design patent eligibility for functional designs, Congress clarified that design patents were limited to “ornamental” articles of manufacture and did not extend to functional attributes. Regional federal circuit courts faithfully limited the design patent regime’s reach, but the tests that they enunciated were cautious and incomplete.

In 1982, appellate jurisdiction over design patents shifted to the newly established U.S. Court of Appeals for the Federal Circuit. Later that decade, the Federal Circuit expanded the scope of design patent protection, paving the way for design patent law protection for minimalist and functional articles of manufacture. This shift helped to fuel the “smartphone wars” of the past decade. Apple’s design patent claims to rounded rectangles proved to be the most valuable (and profitable) weapon in its seven year battle with Samsung.

This Symposium will explore the history of design patent protection and the evolution of the key ornamentality/non-functionality doctrine. The lead paper, Design Patent Law’s Identity Crisis authored by Professor Peter Menell and Ella Corren, frames the Symposium. Panels comprised of academic and practitioner commentators will discuss the past, present, and future of design protection.

3.75 total hours of CLE credit will be offered.