WHAT’S THE PROPER FUNCTION OF DESIGN PATENT FUNCTIONALITY? AN UPCOMING CONFERENCE WILL DECIDE…
I will be part of a panel of practitioners in an upcoming conference entitled: “Navigating and Rectifying the Design Patent Muddle”, which will focus on the issue of design patent functionality. Joining me on the panel will be Elizabeth Ferrill, Jack Hicks, Charles Mauro and Prof. Estelle Derclaye. Our panel will be moderated by Chris Carani. The conference will take place on Friday, February 19, 2021 from 1:00-5:00 pm (US Eastern time). Registration information below.
There is also an academic panel moderated by Prof. Mark Janis. It includes Prof. Shyamkrishna, Prof. Christopher Buccafusco, Prof. Sarah Burstein, and Prof. Joshua Sarnoff.
It promises to be a barn burner of a conference, with both design patent protectionists and anti-protectionists making presentations.
Professor Peter Menell, organizer of the conference, wrote the following description:
“The design patent regime has long been an enigma, at least to me. It falls within Title 35 of the U.S. Code, which is principally associated with the utility patent regime, yet its standards (ornamentality, originality) parallel copyright law, and its infringement standard references consumer confusion (trademark law). Design patents overlap copyright protection of useful articles and trade dress. And due to the Federal Circuit’s lax functionality standards, design patents encroach on utility patent law’s domain.
I have long struggled to make sense of this overlap, which led to a deep dive into the history of the functionality doctrine in collaboration with Ella Corren, a Berkeley Law LLM graduate who is now pursuing her SJD. We have traced the doctrine back to its origins, which inspired BCLT/BTLJ’s upcoming symposium.
BCLT has assembled leading IP scholars and design patent practitioners to discuss this fascinating and, thanks to the smartphone wars (Apple v. Samsung), increasingly important part of the IP system. We very much hope that you and your students/colleagues/law clerks can join us for this symposium. Attendance is free for academics, students, and government employees, and reasonably priced for practitioners. For those of you teaching IP this semester, this event could provide material for good follow-up discussions with your students. The opening presentation will frame the architecture of the IP system and how the design patent evolved into its current confusing state.”
Lead paper: Design Patent Law’s Identity Crisis
Symposium website: BCLT/BTLJ Design Patents Symposium