Functionality in Design Protection Systems
Jason J. Du Mont
Max Planck Institute for Intellectual Property & Competition Law
Mark D. Janis
Indiana University Maurer School of Law
Journal of Intellectual Property Law, Vol. 19, p. 261, 2012
Indiana Legal Studies Research Paper No. 210
In comparison to functionality doctrine in trade dress cases, scholars have paid relatively little attention to the role of functionality doctrine in design protection systems such as the U.S. design patent system and the EU Community Design regime. Yet functionality considerations potentially affect many validity and scope determinations in the design protection area. In this Article, we critically evaluate judicial application of the functionality doctrine in design protection systems, focusing on the U.S. design patent and EU design protection regimes. We argue that the doctrine as applied in these settings is too often aimless and inconsistent. Some simple doctrinal refinements would help, particularly in the U.S., where the Federal Circuit should definitively adopt the “dictated by” standard and should distinguish explicitly between functionality for invalidity purposes and functionality for scope purposes. Ultimately, a more carefully-considered theoretical justification for the functionality doctrine in design protection systems is needed, one that recognizes that trade dress functionality and design protection functionality serve different goals.
Number of Pages in PDF File: 43
Keywords: design patent, functionality, community design right, unregistered, registeredAccepted Paper Series
Date posted: September 18, 2012 ; Last revised: July 12, 2013
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