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I have finished a design patent for an antenna. This effort was based on the existence of many design patents for antennas in the USPTO...

https://www.google.com/?tbm=pts#q=antenna&tbm=pts&tbs=ptst:d

Many of these patented antennas have clear ornamental features (for the housing, etc.) unrelated to actual function of the antenna. Some, however, have ornamental features that represent 100% of the functionality of the antenna such as this one...

https://www.google.com/patents/USD573589

My antenna's ornamental shape is derived solely from the functional characteristics... as is any antenna's shape.

Then I read in "Understanding Functionality in Design Patent Law" on this web site...

"[. . .] a design is not patentable unless it is ornamental, and a design is not ornamental if it is 'functional.'" - http://www.designpatentschool.com/

...that makes the case ornamental features that are purely functional may not necessarily be used to combat infringement if a particular ornamental feature exists only for functionality rather than artistic expression.

If the shape of an item in a design patent is derived solely from functional characteristics, an antenna being a perfect example, is this shape not protected by the design patent?

Are all the 100% functionally derived antennas with design patents pointless?

  • Is there a reason not to pursue a utility patent for your invention? Why do you want a design patent? – Riccati Dec 16 '15 at 22:37
  • A utility is in the works as well. I was just curious as to how the "ornamental test" works in design patent litigation. – JSH Dec 17 '15 at 16:13
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Are all the 100% functionally derived antennas with design patents pointless?

Yes—at least for enforcement. A design patent granted for something that is entirely dictated by function would be invalid, and could not properly be enforced.

This is based on 35 USC § 171, which provides:

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

As you noted, something which is dictated by function is inherently not ornamental. Per MPEP § 1504.01(c):

An ornamental feature or design has been defined as one which was “created for the purpose of ornamenting” and cannot be the result or “merely a by-product” of functional or mechanical considerations.

However, there may still be a point, depending on how you wish to run your IP portfolio. A design patent may be worthwhile simply to dissuade competitors. You would never be able to enforce it, and a competitor may suspect it is invalid. However, given the cost of having a patent revoked, and the cost of defending (even successfully) an infringement suit, the competitor may simply steer clear altogether. Sometimes even having invalid IP is enough to win the war.

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