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...


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...


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, 2015 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, 2015 at 16:13

1 Answer 1


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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