Intelligent Design & Egyptian Goddess

Abstract

In Intelligent Design, Christopher Buccafusco, Mark A. Lemley, and Jonathan S. Masur make a compelling case against the United States’ current full-cumulation approach to design protection, which allows designers to obtain protection for a qualifying design under copyright, trademark, and design patent law all at the same time and without any requirement of election. They also argue that design rights, including design patents, “have become too powerful” and suggest several “policy changes designed to bring design rights more in line with social welfare.”

But while Buccafusco, Lemley, and Masur express great concern about what design patents cover, they do not discuss how the current test for design patent infringement actually works. Under that test, which was set forth ten years ago by the U.S. Court of Appeals for the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc., design patents are given a much narrower scope than the cases discussed in Intelligent Design might seem to suggest. While this does not undermine the larger argument made by Buccafusco, Lemley, and Masur—namely, that we should not allow designers to gain the functional equivalent of a utility patent using the design patent system—it does affect the way we should evaluate some of their proposed policy solutions.

Under Egyptian Goddess, the presumptive scope of a design patent is narrow and may be further narrowed if there is close prior art. Therefore, at least two of the proposals in Intelligent Design—namely, functionality screening, invalidity based on “principal features,” and adding an independent invention defense—may not be either appropriate or necessary. Adopting such proposals may have the unintended consequence of expanding or unnecessarily confusing design patent doctrine, results clearly not intended by the authors of Intelligent Design. Instead, a policy lever not discussed by Buccafusco, Lemley, and Masur—namely, statutory subject matter—may be more helpful in addressing the very valid concerns raised in Intelligent Design.

This response will explain how courts analyze design patent infringement under the Federal Circuit’s Egyptian Goddess test. Then, it will discuss how the contemporary test for infringement might affect some of the solutions proposed in Intelligent Design. Finally, it discusses how the question of what constitutes proper statutory subject matter may be a more fruitful policy lever to explore in addressing these important issues of design patent law and policy.