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Ornamentality in Relation to U.S. Design Patents

Written by Waheedan Jariwalla on 08 March 2010

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To be patentable, a design must be primarily ornamental.

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. It is clear that the ornamentality of the article must be the result of a conscious act by the inventor, as U.S. patent law requires that a patent for a design be given only to "whoever invents any new, original, and ornamental design for an article of manufacture." Therefore, for a design to be ornamental within the requirements of U.S. patent law, it must be "created for the purpose of ornamenting".

In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.

The court in Norco Products, Inc. v. Mecca Development, Inc. held that a "primarily functional invention is not patentable" as a design.

A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a determination based on their ornamental contribution to the design as a whole.

While ornamentality must be based on the entire design, in determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered. The court in Smith v. M & B Sales & Manufacturing states that if "significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations", this information may establish the ornamentality of a design.

However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. The distinction must be maintained between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.

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