Design patents are based
on the ornamental aspects of surface decoration, aesthetic
configuration, appearance and shape of an item. In contrast to a
utility patent, a design patent is issued for aesthetic features for
a new or an improved outward appearance; however, the subject claimed
in the design patent should have some practical utility.
To be eligible for a
design patent, the subject must satisfy the ornamental standards and
be novel. When viewed through the eyes of an imaginary designer
skilled in the art, the design must be non-obvious compared to any
previously available design. Also, a design patent cannot be obtained
for ornamental configurations that are not visible when the product
is in use.
The prior art search for
a design patent requires a close look at the ornamental aspects in
any existing designs similar to the new design attempting to be
patented. In essence, it is a visual search through volumes of
classification binders at the USPTO. Due to the fact that design
patents have minimal words defining the aspects of the design, a
prior art search mainly involves design class codes and only broad
keywords gathered after the typical USPTO design patent claim of “The
ornamental design for…”
It is possible to obtain
a design patent as well as a utility patent for the same invention if
each patent type fulfills the respective patent standards. In such
cases separate utility and design searches have to be performed.
An object with a design
that is substantially similar to the design claimed in a valid design
patent cannot be made, used, sold, copied or imported into the United
States. A substantially similar copy is liable for patent
infringement. In the case of a conflict, to detect infringement,
evaluation of a patented design compared to an accused design
involves satisfying the "Ordinary Observer" test, which was
introduced by the United States Supreme Court case Gorham Co. v.
White, 81 U.S. 511 (1871).
According to Gorham’s
“Ordinary observer” test, there is infringement "if in the
eye of an ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, the
resemblance is such as to deceive such an observer, inducing him to
purchase one supposing it to be the other."
observer" test is similar to the trademark infringement
conditions i.e. whether there is a "likelihood of confusion."
The patented and accused designs in the case of Gorham Co. v. White
were both silverware handle designs. The attempts of the defendant,
White, to establish the dissimilarity between the two designs was
Originating with Litton
Systems, Inc. v. Whirlpool Corporation, 728 F.2D1423 (1984), the
Federal Circuit added to Gorham’s “ordinary observer” test a
second test i.e. "point of novelty" test required to deal
with design patent infringement suits. i.e. the accused device
contains 'substantially the same points of novelty as the patented
design that differentiated the patented design from the prior art’.
On September 22, 2008,
the Court of Appeals for the Federal Circuit in Egyptian Goddess,
Inc. v. Swisa, Inc. (Fed. Cir. Dkt. No. 2006-1562) added conditions
to the "ordinary observer" test established by the Supreme
Court in 1871. The Federal Circuit provided guidance that will likely
benefit design patent plaintiffs. Egyptian Goddess suit alleged that
Swisa had infringed its U.S. Design Patent No. 467,389 that claims a
design for a nail buffer, consisting of a rectangular, hollow tube
having a generally square cross-section and featuring buffer surfaces
on three of its four sides.
Swisa’s product consists of a rectangular, hollow tube having a
square cross-section, but featuring buffer surfaces on each of its
The Federal Circuit
observed that the difference of buffer surfaces in three sides in the
design patent and buffer surfaces in all four sides in the Swisa
buffers cannot be considered minor.
Much to the relief of
many practitioners, the Federal Circuit found it difficult to
implement the “point of novelty” test to a design patent because
of the fact that it is difficult to provide a detailed verbal
description of the claimed design. The Federal Circuit giving the
decision for non-infringement unanimously held that the "ordinary
observer" test was the sole test to determine design patent
infringement, with the limitation that the ordinary observer is one
with knowledge of the prior art. The ordinary observer test requires
one to look for substantial similarity between the patented design
and the accused design; but familiarity with the prior art is needed
if the observer is to meaningfully compare the accused devices to the
patented claim to evaluate the differences from previous designs.
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