Determining the scope of a design patent claim can be challenging when functional components form part of the claim. In Sport Dimension, Inc. v. The Coleman Company, Inc., the Federal Circuit provided a guide for determining whether components of the claimed design serve a functional purpose.
What This Means to You
- Design patents can be granted for designs having functional components
- Structural elements serving a functional purpose will not be entirely eliminated from a design patent claim
The Coleman Company owns a design patent directed to a personal floatation device (PFD). The claim to the ornamental design shows two arm bands attached to a torso piece. Sport Dimension sold a PFD including arm bands and a torso piece. The district court held that the arm bands and the side torso tapering were functional and therefore should not be part of the claim.
Design patents are for ornamental designs and are not available to protect designs that are strictly dictated by function. The question addressed by the Federal Circuit was what to do with claimed designs that include both ornamentation and components having function. Coleman, the patent holder, argued that the arm bands and tapered torso are not functional and should be part of the claim. The Federal Circuit held that these elements serve a functional purpose, but the elements should not be entirely eliminated from the claim. Instead, because of the design’s many functional elements and its minimal ornamentation, the overall claim scope is accordingly narrow in the eyes of the Federal Circuit.
As a guide for determining whether elements of the design serve a functional purpose as part of claim construction, the Federal Circuit looked to factors that have been used for determining whether a design claim was invalid due to being dictated by function. 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 related utility patents; and whether advertising touts features as having specific utility.
A design patent can be granted for a design that includes functional components, but the claim scope may be narrow in terms of the contribution of the functional components to the overall design. Unless an entire design is strictly dictated by function, it is worth considering a design patent to protect the look of a new product.