Dec. 11, 2019 — A leading intellectual property law scholar recently described how the method in which legal protections for manufactured products are granted requires more clarity during the University of Houston Law Center’s Institute of Intellectual Property & Information yearly fall lecture.
University of Oklahoma College of Law Professor Sarah Burstein’s delivered her talk, “Toward a Normative Theory of Design Patents” at the Houston Club in November.
"The U.S. has granted patents for ornamental designs since 1842 but there are still few explanations for — let alone any clear consensus about — why the system exists and what its goals should be," Burstein said. "Now that high-profile cases like Apple v. Samsung have put the U.S. design patent system back in the spotlight and put millions of dollars on the line, it is more important than ever to figure out what we want this system to do, if anything.
“Should the goal be to deter any and all copying in the design space? To encourage the subjective expression of designers? To incentivize any and all types of design? Do we even need design patents at all?"
Design patents, in contrast with utility or plant patents, protect the appearance of things rather than the functionality of them. Although this suggests design patents may consist solely of images, they must include words as well.
The current rule for design patents states that whoever, “invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title,” according to 35 U.S. Code § 171.
“What’s new and original? No one knows,” Burstein said. “There’s some dicta that says maybe originality means something like copyright originality, but we don’t have any decisions on this.
“Ornamental does not mean what you think it means unless you’ve read a lot of federal circuit opinions. Basically it means not dictated by function and not hidden during the completed length it has.”
In analyzing these definitions, Burstein illustrated problems with the ambiguous language used in the governance of design patents, and shared cases of infringement.
“The level of similarity that’s required is very high,” she said. “Much higher than you would need for trade dress infringement. Much higher than you would need for copyright infringement. To claim infringement, they have to look the same, not do the same thing.”
Burstein inquired as to where design patents fit in among other patents and things like trademark and copyright, and argued that the word “design” has impeded a standard notion of patent designs from developing.
“The word ‘design’ has been a Salon des Refusés where all the stuff that doesn’t fit into fine arts kind of got lumped for years,” she said.
Burstein proposed that design patents could take on a clearer purpose if their objective was redefined.
“What if we’re trying to incentivize new and better designs by trying to maximize consumer aesthetic choice? Coming up with new designs is easy, but making a product that actually works well and looks good is really hard. Just coming up with ideas probably isn’t enough, and then we can let the market decide,” she said.
In Associate Dean Greg Vetter’s opening remarks, he praised Burstein and credited the Houston Intellectual Property Law Association, which served as a sponsor of the event.
“One of the greatest things about my job is all the wonderful people I get to meet and interact with: all of you, my colleagues, my students and certainly Professor Burstein,” Vetter said. “We can’t think more strongly or kindly of Professor Burstein amongst all the people we know in the academy.
“Every member of HIPLA can take pride in the excellence of tonight’s lecture and the wonderful speaker we have.”
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