In the past decade, there has been a renewed interest in the concept of patentable subject matter – that is, what kinds of things can you get a patent for? But this attention has, to date, been focused on utility patents, the patents that protect how things work. There has been scant attention paid to statutory subject matter and design patents, the patents that protect how things look. These patents have gained prominence in both practice and scholarship since the $1 billion verdict in Apple v Samsung. The time has come to take the question of design patentable subject matter seriously. Today, the USPTO allows applicants to claim any visual characteristic of an article as a separate ‘design’, including small, immaterial, or functional fragments of an article. This Article argues that design patents should only be granted for whole designs – whole shapes, surface designs, or combinations – for articles of manufacture. This approach would better match the statutory text, allow for the development of intellectually coherent design patent doctrines, and better promote the progress of the decorative arts. It would also help define a clear domain for design patents to better channel designs among intellectual-property regimes.
Burstein, Sarah, Whole Designs (2020) 92 University of Colorado Law Review 181 (2020).