A Theory of Legal Protection for Industrial Design

Companies in a number of industries are involved in the creation of what we refer to as “design-sensitive” technologies. By this, we mean technological products, such as computer devices, high-end athletic shoes, smartphones, and cars, in which design and functional utility both play a crucial role in these products’ creation and likely in consumer demand for them. Importantly, in design-sensitive technologies, design and function are typically deeply intertwined. We are interested in how these companies producing design-sensitive technologies think of the relationship between appearance and utility when they design and market these products. Patent law thinks of appearance and function as separate, or at least separable, things: Utility patent law protects novel, useful inventions, whereas novel, ornamental designs are channeled into the separate jurisdiction of design patent law. Industrial designers or mechanical or electrical engineers, however, typically maintain that the relationship between appearance and function is far from dichotomous. We set out to interview these participants in the design process, to discover how appearance and functionality are conceptualized by those responsible for the way design-sensitive technologies look and function. This project is ongoing, but thus far what we are finding suggests that the relationship between appearance and function varies depending on the innovation strategy that underlies a particular design-sensitive technology. We have also found early indications that patents—and particularly design patents—are used in ways that might be surprising to lawyers viewing a technology company’s patenting strategy from the outside. Sometimes, design patents are used as stand-ins for trade dress protection—not least because they have become easier to obtain, while trade dress rights have gone the other way. In other instances, design patents are used in conjunction with utility patents to capture specifically the fusion of design and function—precisely obverse to the conceptual framework that pervades the dichotomy of design and function in patent law. That is to say, sometimes design patents are used to capture elements of appearance that are driven by functional innovation. And sometimes utility patents are used to capture elements of function that are made possible by innovative designs. What looks from the outside like overlapping protection can be understood as claiming, within the conceptual framework of a legal regime that insists on form-function dichotomy, different aspects of an integrated form-function innovation. There is a paradox embedded in this observation. One could imagine a patent regime in which appearance and function were united in a single patent. But such a patent would only protect that particular integration of form and function. It would not allow the patent owner to control which forms are mated up with a particular function, and vice versa. Whether one believes that giving the patent owner that degree of control is normatively desirable is an open question. But as a matter of patenting strategy, the option is attractive to companies that deal in design-intensive technologies.