Mark G. Kmiecik
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Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents
July 11, 2010

Two recent decisions by the Court of Appeals for the Federal Circuit provide new tools for design patent holders and new hazards for those attempting to design around products covered by design patents.

What are Design Patents?

Design patents are directed to a non-utilitarian or non-functional design that is embodied in or applied to a product or a portion thereof and not the utility or function of the product itself. Design patent protection includes ornamental designs of all kinds including surface ornamentation as well as the configuration of a product. Design patents are increasingly viewed as strategically important for innovators small and large because they are an efficient and cost-effective way to give an owner the right to prevent others from making, using or selling a product that closely resembles the patented design.

How are Design Patents Different from Other Forms of Intellectual Property?

Design patents cover the ornamental design of a functional product, in contrast to a utility patents, which protect the functional aspects of a product regardless of its ornamental design. Design patents differ from copyright protection, which is intended to protect the "form of expression” used in artistic works. However, such forms of expression must also be non-functional elements. Design patents also differ from trade dress protection, which only protects product designs that serve to identify the source of goods.

Recent Case Makes Proving Design Patent Infringement Easier

In the 2008 Egyptian Goddess case, the Federal Circuit eliminated the prior test of infringement in favor of an "ordinary observer” test. Infringement of a design patent is now proven by showing that an "an ordinary observer, giving such attention as a purchaser usually gives" would find the accused design "substantially the same" as the patented design. The Egyptian Goddess case has been seen as beneficial to design patent owners because infringement is now easier to prove. The prior test, known as the "points of novelty” test, required a court to determine whether the accused design incorporated the features of the patented design that distinguished the patented design (the "points of novelty”) from the prior art.

Recent Case Aligns Design Patent Anticipation With Test For Infringement

While the Egyptian Goddess decision made it easier to prove infringement of a design patent, the Federal Circuit has also clarified the law regarding anticipation of design patents. In the 2009 International Seaway Trading Corp. case, the court held that the "points of novelty” test for anticipation should also be eliminated and that courts should employ an "ordinary observer” test to determine novelty in determining the patentability of designs in the first instance.

The Federal Circuit’s elimination of the "points of novelty” test will reduce the complexity involved in separately identifying and analyzing the distinct points of novelty of a patented design and comparing them with the closest prior art reference to determine whether those same design elements are found in the prior art. Under the ordinary observer test the patented design is compared with the alleged anticipatory reference to determine whether an ordinary observer, in considering the designs as a whole, would find the two "substantially the same."

Conclusion

While the courts appear to have settled on the "ordinary observer” test for both anticipation and infringement of design patents, we expect that the Courts will continue to refine the treatment of individual differences in a patented design in the context of a comparison of the designs as a whole.

If you have any questions or would like more information regarding design patents, please contact Patrick M. Bergin at 414-225-7563 or pbergin@dkattorneys.com.

 

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