Article · Intellectual Property
Functionality in Design Patent Law: Untangling Validity from Claim Scope
- Type
- Article
- Jurisdiction
- National
- Date
- 2026-05-28
- Topic
- Intellectual Property
"Functionality" is the most misunderstood word in design patent law because it does two unrelated jobs under one label. As a validity defense under 35 U.S.C. § 171, it asks whether a design's overall appearance is "dictated solely by function" — a demanding, whole-article test that rarely defeats a patent outside cases like the key blade in Best Lock. As a claim-scope question at infringement, it asks how individual functional features inside a concededly valid design affect the breadth of protection an ordinary observer will recognize. This article separates the two inquiries, traces the doctrine from Avia and Berry Sterling through the Federal Circuit's rejection of "factoring out" in Ethicon and Sport Dimension, connects functionality to the Section 289 total-profit damages base after Samsung v. Apple, and examines Automotive Body Parts v. Ford's refusal to import trademark aesthetic functionality and its impact on the repair debate. It closes with prosecution strategy, the post-LKQ obviousness picture, an international comparison, and a step-by-step working framework.
The full text of this document is available to Executive subscribers and above. See plans.