Invalidating a design patent
Instead, a policy lever not discussed by Buccafusco, Lemley, and Masur—namely, statutory subject matter—may be more helpful in addressing the very valid concerns raised in Intelligent Design. This response will explain how courts analyze design patent infringement under the Federal Circuit’s Egyptian Goddess test. The Federal Circuit has had exclusive jurisdiction over patent appeals, including design patent appeals, since 1982. Thanks also to Leslee Roybal for additional assistance and support. See Sarah Burstein, The “Article of Manufacture” in 1887, 32 1, 11 n.64 (2017) (discussing one of those differences) (referring to Gorham Mfg. While this does not undermine the larger argument made by Buccafusco, Lemley, and Masur—namely, that we should not allow designers to gain the functional equivalent of a utility patent using the design patent system—it does affect the way we should evaluate some of their proposed policy solutions. Not all of their proposals would be affected by this analysis. In Intelligent Design, Christopher Buccafusco, Mark A. Masur make a compelling case against the United States’ current full-cumulation approach to design protection, which allows designers to obtain protection for a qualifying design under copyright, trademark, and design patent law all at the same time and without any requirement of election. 2018) (defining a “full cumulation” system of copyright and design protection as one where both rights “can subsist if the protection requirements are fulfilled and the two laws apply in tandem whether it raises regime clashes and/or overprotection, or not. But they don’t discuss how courts have applied the Egyptian Goddess test.. Although, “[i]n Egyptian Goddess, the Federal Circuit incorporated some of the language from—and suggested that it was adopting—the test announced by the Supreme Court in Gorham Manufacturing Co. For example, Buccafusco, Lemley, and Masur “suggest that the PTO increase application and maintenance fees for design patents and use the money for improved examination.” Buccafusco, Lemley & Masur, supra note 1, at 81 (footnote omitted). See Sarah Burstein, Costly Designs, 77 107, 156–57 (2016) (arguing that the USPTO’s current costly screen for design patents “could be enhanced by making broader claims even more expensive” and providing details about how that might be accomplished); id. The en banc Federal Circuit set forth the current test for design patent infringement in its 2008 decision in Egyptian Goddess, Inc. at 678 (emphasizing that the Gorham test focused on similarity of appearance). (14 Wall.) 511 (1871)) [hereinafter Burstein, The “Article of Manufacture” in 1887].
They do cite the case that set forth that test and note that it “do[es]not enable claimants to protect downstream ‘derivatives’ of their designs.” Id. Therefore, at least two of the proposals in Intelligent Design—namely, functionality screening, invalidity based on “principal features,” and adding an independent invention defense—may not be either appropriate or necessary. Egyptian Goddess, 543 F.3d at 672; see also Burstein, The “Article of Manufacture” in 1887, supra note 4, at 11 (“In this context, ‘the patented design’ means ‘the claimed design.’ Therefore, in analyzing infringement, the fact finder must compare the claimed portion of the design—i.e., whatever is shown in solid lines in the patent drawings—to the corresponding portion of the accused design.” (citing Egyptian Goddess, 543 F.3d at 662; Hutzler Mfg.
In other words, there are no mechanisms in the legislation to deal with these problems.”). at 156 n.282 (suggesting that “the PTO could also impose maintenance fees for design patents”); id.