Does a design patent protect an object that performs a function? ABPA v. FORD

A patent is a set of exclusive rights that granted to the an inventor of a new invention. A United States patent grants its owner the exclusive right to make, use, sell and import an invention in the United States. If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement.

Patents can be divided into two major types utility patents and design patents. A utility patent is a patent that covers the creation of a new or improved and useful product, process, or machine. A design patent protects a new, original and ornamental design for an article of manufacture. 35 U.S.C. § 171(a). The distinction between the two types of patents can sometimes confuse the average person. That confusion is compounded the differences between the different forms of intellectual property, namely patent, trademark, and copyright.

Each type of intellectual property protects a specific asset. Patents protect ideas. Copyright protects artistic expression. Trademark protects product brand identifiers. Copyright and Trademark specifically protect ornamental things exclude protection for things that are functional. Utility patents are inherently functional. Design patents exist in a realm that is somewhere between functional an ornamental. Each type of intellectual property stands on its own and while similar principles apply to each type of intellectual property, a principle from one type cannot be applied to a different type.

A case that helps illustrate how design patent law is interpreted to allow ornamental designs that have a function is AUTOMOTIVE BODY PARTS ASSOCIATION v. FORD GLOBAL TECHNOLOGIES, LLC, 2018-1613 (C.A.F.C. 2019). The plaintiff in this case is a trade association for companies that import and distribute replacement parts for cars produced by the defendant. The products in question include replacement head lights and replacement engine hoods. The defendant filed a complaint with the United States International Trade Commission alleging that the plaintiff was selling products which infringed on design patents owned by the defendant. The plaintiff argued that the defendant’s design patents are invalid because head lights and car hoods are functional objects and design patents only protect ornamental designs. The International Trade Commission action was settled after the administrative judge in the case found that the plaintiff’s invalidity defense, that the design patents do not comply with the ornamentality requirement of 35 U.S.C. § 171 has no basis in the law.

The plaintiff then filed a complaint in district court requesting a declaratory judgment of invalidity or unenforceability of the defendant’s design patents. The district court denied the plaintiff’s motion for summary judgment and entered judgment in favor of the defendant sua sponte. The district court reasoned that the plaintiff has effectively asked the court to eliminate design patent protection. The plaintiff appealed the decision to the COurt of Appeals for the Federal Circuit.

The Federal Circuit agreed with the district court. In its decision the Federal Circuit noted that a design patent may not claim a “primarily functional” design. If a particular design is essential to the use of the article, it can not be the
subject of a design patent. There is no singular test to determine whether a design is primarily functional, but the Federal Circuit has enumerated several factors to consider. These factors include: Whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.

The plaintiff argued that when consumers purchase replacement parts, they want the parts to match what is being replaced, therefore consumer preference makes the parts functional. The Federal Circuit held that the aesthetic appeal of a design to consumers is inadequate to render that design functional.

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