Design patents are a valuable tool for protecting the ornamental aspects of a product. However, when a design includes elements that are purely functional, it risks being invalidated on the grounds of lack of ornamentality. A compelling case study that highlights this issue is Sattler, U.S. Design Patent No. D823,093 (“the ‘093 patent”), entitled “VESA Mount Adapter Bracket.”

Background of the Case

The ‘093 patent was issued on July 17, 2018, from an application filed on February 17, 2017. It was eligible to be challenged in a Post-Grant Review (PGR) upon issuance. The claimed design included three tabs and eight spaced-apart grommet heads, with the perimeter of the body of the bracket appearing in phantom lines and thus not part of the claimed design.

Sattler filed a PGR challenging the validity of the ‘093 patent solely on the basis of a lack of ornamentality, arguing that the design was dictated by function. The Patent Trial and Appeal Board (PTAB) cited several factors in its decision to institute the PGR, including the functional nature of VESA mount adapter brackets, the grommet spacing following the screw mounting interface dimensions in the VESA Flat Display Mounting Interface Standard, and the size and height of the grommets being set by VESA standards.

The Importance of Excluding Unnecessary Functional Elements

This case underscores the importance of carefully considering which elements to include in the claimed design of a patent. The inclusion of the grommet heads, which were dictated by functional considerations, played a significant role in the PTAB’s decision to institute the PGR.

To mitigate the risk of a design patent being considered fully functional, it is advisable to exclude unnecessary functional elements from the claimed design. In the case of the ‘093 patent, disclaiming the grommet heads in dashed lines could have reduced the emphasis on their functional nature and strengthened the argument for the ornamentality of the design.

Conclusion

The Sattler case serves as a reminder that design patents should focus on the ornamental aspects of a product, with functional elements either excluded or clearly disclaimed. By carefully considering the inclusion of elements in the claimed design, patent applicants can reduce the risk of challenges based on functionality and enhance the enforceability of their design patents.

Recommended Webinars

Delve deeper into the topics discussed in this article by attending our webinars. These sessions provide further insights and offer the chance to interact with experts in design patent drafting and illustration.

• Design Webinars: Avoiding Non-Correctable Errors in Design Patents:: Discover how to avoid non-correctable errors in design patents and ensure the success of your applications in this informative webinar by IP DaVinci.
• Design Webinars: Handling Advanced Scenarios in Design Patents: Explore strategies for handling advanced scenarios in design patents in this insightful webinar by IP DaVinci, enhancing your ability to navigate complex cases.
• Design Webinars: Cost and Time Saving Tips for Design Patent Drawings: Learn cost and time-saving tips for design patent drawings in this practical webinar by IP DaVinci, aimed at streamlining your patent application process.

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