The disclosure function figures prominently in many accounts of the utility patent system. But what of its role in the design patent system? Should it be dismissed as trivial? And if so, what are the practical consequences for design patent doctrine in view of the fact that the doctrines that implement the disclosure function in utility patent law also apply to design patents by statutory mandate? The disclosure theory posits that patent documents disclose technical information that serves as a quid pro quo for the patent grant. Even aside from controversies about whether the disclosure function is robust for utility patents, the lack of fit with design patents may seem self-evident: the design patent disclosure is not intended to convey technical information. Its chief purpose is to provide notice to the public as to the subject matter that the design patent protects, as the claims do in utility patents. Perhaps Judge Rich had this in mind when he wrote the opinion for the en banc court in Racing Strollers, Inc. v. TRI Industries, Inc., observing that the best mode requirement is "not applicable" to design patents and that complying with "the remaining requirements of " simply entails that the document contain "illustrations ... depicting the ornamental design."
Jason Du Mont and Mark D. Janis,
69 Vanderbilt Law Review
Available at: https://scholarship.law.vanderbilt.edu/vlr/vol69/iss6/7