By Dr. Mike Hammer, US Patent Attorney, Partner, JMB Davis Ben-David

In the United States, as in most jurisdictions around the world, the aim of design intellectual property rights is to protect the non-functional properties of an object.  This intent is clearly illustrated in the sole claim of a US design patent which states: “I/we claim the ornamental design for a [insert object of choice here] as shown and described.” The rights claimed are only to that which is ornamental and that which is shown (by the figures).  It is logical, and even the intent of the law, to conclude that if you are seeking to obtain property rights in an object’s function, a design patent (or registration) is not the framework in which to do so. While there are some “things,” such as some features of graphical user interfaces, for which this is certainly true; I question whether this principle is as hard and fast as it may at first seem. As we know from nature, function and structure are often inextricably linked. This is well illustrated by the following example.

For decades, scientists have made heroic efforts to determine the three-dimensional structures of the biomolecules that form and drive all living organisms, requiring years of work to elucidate even a single structure. All of this effort is because in molecular biology, our understanding of how molecules function (what they do) is illuminated by their structure (what they are). For example, which may be of particular interest in 2021, the ability for a viral protein (let us call it “Spike”) to bind a receptor protein on a cell surface, and therefore infect the cell, is inextricably linked to Spike’s structure and molecular charge. A closer fit between Spike and the cellular receptor will likely increase the strength by which they bind one to another, and by extension likely increase the chance that the virus will infect the cell.  Over time, changes in Spike structure that provide this enhanced function will become more prevalent in the total population of circulating viruses.  The converse is true: changes in Spike structure that reduce the ability of the virus to bind, and so reduce its function, will not be evolutionarily selected and will be lost.  

Although it has been debated whether function follows form, or (less likely in biology though more common in architecture and interior design) form in many cases follows function, I think it is more useful to consider that there are many instances (such as our nasty Spike) in which at least in part, function is in the form. And this brings us back to intellectual property (IP) and designs.

From an Applicant’s perspective, the goal of IP is to create property rights that will prevent someone from copying creative and inventive work without permission.  Often, patents are viewed as the best tool by which rights in an invention can be established, but an exclusive focus on patents misses the important role served by designs. Moreover, an exclusive focus on patents misses the opportunity to diversify IP protection for inventions in which there is function in the form.  It is true that multiple embodiments of a device can be defined within a single patent claim, thereby giving the impression of a patent being a “stronger” right.  However, a registered design can not only protect specific embodiments of the device, but can serve to protect functional aspects of it that cannot be sufficiently defined in the words of a standard patent claim. If the function of a device, namely, what it does, is intertwined in its appearance (what it is), then a design can be used to simultaneously protect both.  

For example, many cell phones now include a fingerprint sensor, the placement of which can have multiple consequences for the way the phone is constructed and the way that it functions.  Consider then the protection provided by a design for a cell phone that specifically shows the location of the sensor.  The design itself may appear simple, and may be more or less patentable (registerable) depending on a whole host of factors.  However, acquisition of such a design patent can effectively cover both its obvious form, as presented in the figures, but also the function that is linked to the form. In another example, the function intertwined with the form may not be beneath the surface, but directly results from the particular arrangement of a device’s components and the overall resulting appearance.  

Many inventions are a conjoined unity of so-called non-functional appearance and functional components.  When developing the IP that can help a business to protect its rights, it is always best to consider possible use of both patents and designs to achieve an Applicant’s goals. 

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