Progress and Competition in Design

53 Pages Posted: 16 Nov 2013 Last revised: 6 Mar 2014

See all articles by Mark P. McKenna

Mark P. McKenna

UCLA School of Law

Katherine J. Strandburg

New York University School of Law

Date Written: January 13, 2014


This Article argues that applying patent-like doctrine to design makes sense only if a design patent system is premised on a patent-like conception of cumulative progress that permits patent examiners and courts to assess whether a novel design reflects a nonobvious step beyond the prior art. If there is a meaningful way to speak of such an inventive step in design, then design patent doctrine should be based on that conception. If nonobviousness has no sensible meaning in design, then a patent system cannot work for design. At present, design patent doctrine is in disarray because it is unmoored from any conceptual underpinnings. Design patents are not needed to incentivize technological invention, because that kind of innovation is the subject of utility patent law. Because aesthetic expression is not susceptible of an “inventive step” judgment, progress in aesthetic expression is not appropriately incentivized by a patent-like system. Indeed, copyright long has rejected the very possibility of incentivizing aesthetic progress with a “creative step” requirement because it has found no metric along which to measure aesthetic progress.

If there is any type of cumulative progress to be sought in design it must therefore involve the interplay between aesthetics and utilitarian function. Aesthetics and utility intersect at the integration of form and function and that, we argue, is where design patents must be justified, if they can be justified at all. Once stated, this point is intuitively appealing. The integration of form and function is what distinguishes industrial design both from purely artistic expression (for which we have copyright) and from technological invention (for which we have utility patent). The converse also follows: if there is no workable means to assess the nonobviousness of a given design’s integration of form and function, there can be no sensible design patent system.

Keywords: design patent, technological function, prior art, nonobviousness, patent doctrine, functional design

Suggested Citation

McKenna, Mark P. and Strandburg, Katherine J., Progress and Competition in Design (January 13, 2014). Stanford Technology Law Review, Vol. 17, 2013 (Forthcoming), Notre Dame Legal Studies Paper No. 1461, NYU Law and Economics Research Paper No. 13-42, Available at SSRN:

Mark P. McKenna (Contact Author)

UCLA School of Law ( email )

385 Charles E Young Dr E
Los Angeles, CA 90095
United States

HOME PAGE: http://

Katherine J. Strandburg

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012-1099
United States

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