Design Patent Law’s Identity Crisis

146 Pages Posted: 6 Aug 2020 Last revised: 25 Feb 2022

See all articles by Peter S. Menell

Peter S. Menell

UC Berkeley School of Law

Ella Corren

University of California, Berkeley - School of Law

Date Written: August 7, 2020


Since its emergence during the industrial revolution nearly two centuries ago, design patent law has suffered from a profound identity crisis. Its drafters modeled the law nearly verbatim on the British copyright regime for surface ornamentation and sculptural features of three-dimensional articles such as textiles and stoves. Courts struggled to interpret protection for “useful” designs against the backdrop of a utility patent regime focused directly on technological inventions. Further complicating design patent’s role, some manufacturers used design patents as a nascent form of trademark protection until federal trademark protection emerged toward the end of the 19th century. In 1902, Congress clarified that design patents were limited to ornamental attributes of articles of manufacture and did not extend to functional attributes. Unfortunately, the Federal Circuit overlooked the legislation and the key regional circuit decisions interpreting it, cementing design patent law’s identity crisis into place. This article traces the origins of the ornamentality/non-functionality doctrine and shows how several early cases using the “dictated solely by utilitarian considerations” phrasing to deny design patent protection were misinterpreted to be the standard for determining whether a design was eligible for design patent protection. These decisions merely explained that designs “dictated solely by utilitarian considerations” were clearly outside of design patent eligibility. They did not mean that designs that only partially affected functionality qualified for design patents. Unfortunately, inattentive and protectionist judicial opinions caused the standard to drift far from these holdings and into direct conflict with the clear language and intent of the 1902 design patent amendments and fundamental, overarching intellectual property law principles reflected in the Supreme Court’s seminal Baker v. Selden decision.

This article aims to correct this fundamental misinterpretation of intellectual property law. Part I tells the remarkable story of how the effort to transplant England’s design copyright regime to the United States spawned a confusingly labeled “design patent” regime and examines the confusion wrought by this mislabeled law during the mid to late 19th century. It also reveals a period in which design patent law served as a proto-federal trademark registration system before Congress established federal trademark protection in the late 19th century. Remnants of that dalliance still confusingly resonate in the design patent system today. Part II explores the 1902 amendments, which unequivocally limited design patents to the ornamental features of articles of manufacture and made clear that they did not extend design patent protection to functional elements. Part III traces the emergence and distortion of the ornamentality/non-functionality doctrine. The early decisions clearly grasped the need to exclude functionality from design patents. Unfortunately, later cases misapplied some of the language of those cases, resulting in standards that contradict the 1902 (and 1952) Acts as well as the logic reflected in Baker v. Selden and other Supreme Court cases dealing with the structure of the intellectual property system. Part IV traces the Federal Circuit’s tilting of the ornamentality/non-functionality doctrine toward over-broad protection of functionality within the design patent regime. Part V explores the forces that have led the design patent regime astray. Part VI proposes ways of rectifying design patent law’s wayward drift to restore fidelity to the statutory language and the overarching logic of the intellectual property system.

Keywords: Design Patent, Patent, Copyright, Trademark, Federal Circuit

JEL Classification: K19

Suggested Citation

Menell, Peter S. and Corren, Ella, Design Patent Law’s Identity Crisis (August 7, 2020). Berkeley Technology Law Journal, 2021, Available at SSRN: or

Peter S. Menell (Contact Author)

UC Berkeley School of Law ( email )

2240 Bancroft Way
Berkeley, CA 94720-7200
United States

Ella Corren

University of California, Berkeley - School of Law ( email )

215 Law Building
Berkeley, CA 94720-7200
United States

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