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.

Functionality in Design Patent Law: Untangling Validity from Claim Scope

Intellectual Property > Patent | Published 28 May 2026 - Updated 11 June 2026 | UpLaw - uplaw.us

Design-patent "functionality" is two doctrines wearing one name. One kills patents; the other only sizes them. This resource keeps them apart — validity under § 171 on one side, claim scope at infringement on the other — and follows the doctrine through the Federal Circuit's course corrections, the Section 289 damages base, the repair debate, and prosecution practice.

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