Virtual Designs

Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S. design patent applications for virtual designs represent one of the fastest growing forms of design subject matter at the USPTO. Our project is the first comprehensive analysis of design patent protection for virtual designs. We first take up the question of virtual designs as design patent-eligible subject matter, a question that has not yet been tested in the courts. We show that longstanding principles of design patent jurisprudence supply an answer to the question, with surprisingly little need for adaptation. We then present the results of an empirical study analyzing all issued U.S. design patents on virtual designs and their prosecution histories. Here we show how utility patent metrics for quality and value can be extended to design patents. Using these metrics, we show that design patents on virtual designs fare at least as well in quality and value as do design patents on other types of designs. In fact, design patents on virtual designs fare better in some respects. And, finally, we conclude by identifying issues that are likely to arise in anticipated future litigation over patents on virtual designs

Functionality in Design Protection Systems

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

Functionality in Design Protection Systems

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

Trends in Functionality Jurisprudence: U.S. and E.U. Design Law

Professor Janis\u27 contribution to this volume is chapter 2 Trends in Functionality Jurisprudence: U.S. and E.U. Design Law, co-authored by Du Mont.https://www.repository.law.indiana.edu/facbooks/1263/thumbnail.jp

Trends in Functionality Jurisprudence: U.S. and E.U. Design Law

Professor Janis\u27 contribution to this volume is chapter 2 Trends in Functionality Jurisprudence: U.S. and E.U. Design Law, co-authored by Du Mont.https://www.repository.law.indiana.edu/facbooks/1263/thumbnail.jp