Home > About BNE > Press Room > 2009 Archive > August > Understanding design patents

Understanding design patents

by Harris Beach, PLLC

Design patents, which protect the ornamental appearance of products, rather than their function, are an important tool in protecting brand identity.   Design patents may be used to protect the ornamental design of almost any consumer product, including cell phones, tennis shoes and furniture, to give a few examples.  Protecting the unique design of a product fosters consumer recognition and prevents competitors from trading on the patent holder’s product design, look or feel, as well as enhances the product’s brand recognition.  Design patents prevent competitors from selling designs that are the same as the patented design.  These patents are inexpensive to obtain and provide a simple means for protecting the unique, ornamental features of a product.  

 These advantages are the by-product of a recent decision by the Federal Circuit Court of Appeals in Egyptian Goddess, Inc. v. Swisa, Inc. increases a design patent holder’s ability to protect its valuable designs against infringement.  The court unanimously held that the long-standing “ordinary observer” test is best used to determine if an infringed design is substantially the same as a patented design, rejecting the old “point of novelty” test used in analyzing claims for design patent infringement.       

 The Federal Circuit started with the premise that Supreme Court precedent required that the test for identity of design be "sameness of appearance" and that a mere “difference of lines in the drawing or sketch … or slight variances in configuration … will not destroy the substantial identity.”  (citing Gorham Co. v. White). The Supreme Court further provided that infringement is found: “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.”  (Id.)  As noted by the Federal Circuit, this test has been referred to as the "ordinary observer test" and it had been adopted by its predecessor as the proper standard for determining design patent infringement. 

 Later Federal Circuit cases, however, had engrafted an additional requirement on the "ordinary observer" test. That Federal Circuit precedent also required that the accused design “appropriate the novelty of the claimed design in order to be deemed infringing.”  (citing Litton Systems, Inc. v. Whirlpool Corp.)  Under this so called "point of novelty" test, the Federal Circuit had required that the test for design patent infringement consider both the perspective of the ordinary observer and the particular novelty in the claimed design. It regarded the ordinary observer and point of novelty tests as two distinct tests that must be met in order to prove infringement. The Federal Circuit noted, however, that although the point of novelty test worked well in simple cases where the claimed design is based on a single prior art reference from which it departs in a single respect, it “had proven more difficult to apply where the claimed design has numerous features that can be considered points of novelty, or where multiple prior art references are in issue and the claimed design consists of a combination of features, each of which

could be found in one or more of the prior art designs.” Partly because of this difficulty, the Federal Circuit reconsidered the use of the point of novelty test and abandoned it, stating that the infringement of a design patent should be determined by the ordinary observer test alone. It found that the use of that test was better grounded in Supreme Court precedent. The test simply requires a determination of whether the accused design “embod[ies] the patented design or any colorable imitation thereof” – in other words, whether the designs are “substantially the same” to the ordinary observer.

 The Federal Circuit’s decision also clarified that, while the burden of production of the prior art lies with the accused infringer, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence, whether or not the accused infringer elects to present prior art that it considers pertinent to the comparison between the claim and the accused design. Finally, the Federal Circuit clarified the district court's burden in claim construction, holding that the district court need not provide a detailed verbal description of the claimed design and that its decision regarding the level of detail to be used in describing the claimed design is a matter of discretion. 

 As noted above, design patents are an inexpensive means that can be used to protect the novel ornamental features of any utilitarian object. A design patent is an effective way of fostering brand identity by affording protection to the product’s design, look and/or feel.  Obtaining a design patent will prevent competitors from trading on the brand recognition of a product by preventing the sale of products that have “substantially the same” design.  Under the recent holding in Egyptian Godess, proving infringement of a design patent has become easier, strengthening the protection afforded by such patents.