Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Fathoming functionality for designs


Panellists were invited to “tame the beast” of functionality in a panel on industrial designs, which also served as an appetiser ahead of the Working Question on design functionality scheduled for debate at next year’s AIPPI Congress in Milan

AIPPI designs EU
AIPPI designs US
AIPPI designs BR
AIPPI designs China

Design law is one of the least harmonised areas of IP, not least in the terminology used, Chris Carani of McAndrews Held & Malloy said. One issue that continues to cause difficulty is the exception, common to most laws, that covers functional attributes. Speakers from the United States, China, Brazil and the EU discussed various cases where functionality had been addressed (see images).

These cases raise two policy questions regarding functionality, said Carani: first, what is the test to establish whether a design is eligible for protection? And, second, what is the scope of protection when particular elements of a design are dictated solely by function – should any aspects of the design be disregarded?

On the first, as Sara Ashby of Redd Solicitors in the UK illustrated, many tests have been proposed, including the multiplicity of forms theory, the alternative designs theory, the aesthetic consideration test and the primarily functional test. She discussed the Lindner v Franssons case, concerning industrial cutters, where the OHIM 3rd Board of Appeal said that a design is functional if its “characteristic features” pursue a purely technical function.

Carani said that in the US there has only been one case where the Federal Circuit has found that a design was solely dictated by function: it concerned a key blade where only the blade itself was claimed. In Brazil, said Lucas Gaiarsa of  Gaiarsa Ferreira & Meyer, the statutory exceptions are clear, but he added: “The law is there but the application is not always something you understand ­completely.”

On the second question (whether to disregard aspects of the design in infringement cases), Lila Wu of CCPIT Patent and Trademark Law Office said China’s courts had been clear that “any design feature with technical function should not be considered and should be removed from the comparison of infringement”. As an example, she cited a case involving an electrical power unit, where the plug holes were held to be functional. Ashby pointed to a European dispute involving a Dyson vacuum cleaner, where a transparent bin was held to be functional (it lets you see the dirt).

Cases such as these could be examples of where “claim construction ends up being claim destruction”, said Carani. The discussion demonstrated, he added, that there is no clarity on this topic: “Hopefully AIPPI can help.” The Working Question next year is expected to cover all the relevant policy issues and tests and it may even be necessary to ask the fundamental question “Do we need a functionality exception and what are we trying to prevent?” said Carani.

more from across site and ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires