UCLA School of Law

This contribution to the Berkeley Technology Law Journal's spring 2021 symposium, Navigating and Rectifying the Design Patent Muddle, responds to Peter Menell and Ella Corren's important article, Design Patent Law's Identity Crisis. It agrees with Menell and Corren that design patent law's ornamentality requirement should get more attention because that requirement is supposed to differentiate design patent from utility patent. It also agrees that current law does not exclude functional design features aggressively enough. It suggests, however, that there really are two distinct but related problems with ornamentality doctrine.The first problem is that the Federal Circuit has reduced the concept of ornamentality to nonfunctionality: The only question courts and the Patent Office ask in considering whether a design meets the statutory requirement of ornamentality is whether the design features are nonfunctional. The second problem is that the Federal Circuit defines functionality nearly exclusively in terms of the availability of alternative designs.These are related but distinct problems, and they warrant separate discussion. Ornamentality is not simply nonfunctionality; for configuration, at least, it is commonly the case that features are both ornamental and functional, just in different proportions. And even where functionality is the right question, the availability of alternative designs need not, and should not, be its only measure.