The test for determining design patent infringement has been revised. It makes it easier for patent owners to enforce their rights. It also impacts the strategies used to protect those rights.
In contrast to utility patents for technological innovations, design patents protect unique product shapes. They can provide powerful protection for design features that differentiate innovative products from competing products. This is especially true for many product categories—like consumer electronics—where distinctive design is critical to commercial success and aesthetic appeal drives purchase decisions.
Design patents confer the right to exclude competitors from exploiting the patented design. The scope of that right is defined by the patent figures. To determine whether a design patent is infringed, the patented design—typically depicted by black and white line drawings—is compared to the three-dimensional product design that is accused of infringement.
This comparison is easy for knock-off products that copy patented designs, but it can be difficult for designs composed of combinations of similar or overlapping elements. A framework is required to guide this comparison.
Ordinary Observer Test
The Supreme Court established such a framework—the so-called “ordinary observer test”—long ago in 1871. It posed a simply-stated question: Would an ordinary observer be deceived by the sameness of the patented and accused designs such that (s)he would purchase one believing it to be the other, after giving the usual attention of a purchaser? If so, the patent is infringed.
The design patent infringement analysis evolved since 1871. The Court of Appeals for the Federal Circuit—the appeals court that reviews all U.S. patent disputes—built upon the framework of the ordinary observer test. In doing so, it encouraged an evolution of that test that ultimately departed from the Supreme Court’s original construct.
Point of Novelty Test
The first step in this evolution came with the Federal Circuit’s 1984 introduction of the “point of novelty test.” It was intended to discount from the infringement analysis any similarities between the accused design and prior designs, focusing instead on the novelty of the patented design. The point of novelty test supplemented the ordinary observer test with an additional and distinct question: Did the accused design appropriate the point of novelty that distinguished the patented design from prior designs?
In addition to satisfying the ordinary observer test, the patent owner also had to establish that the accused design appropriated the novelty of the patented design. And more recently, yet another question was introduced: If the point of novelty was appropriated by the accused design, was it a “nontrivial advance” over prior designs?
New Test of Egyptian Goddess
Last year, the Federal Circuit reconsidered the test for design patent infringement in the Egyptian Goddess case. The court asked whether point of novelty should be a test for design patent infringement. In answering this question, the evolution of the Supreme Court’s ordinary observer test was stopped and reversed.
Most importantly, the Federal Circuit abolished the point of novelty test and the related nontrivial advance requirement. It concluded that the ordinary observer test is the only test for determining whether a design patent has been infringed. It also clarified that the ordinary observer is deemed to view the differences between the patented design and the accused design in the context of the prior art, and it placed the burden of producing the prior art for this analysis on the alleged infringer.
As stated by the court, the question is “whether an ordinary observer, familiar with the prior … designs, would be deceived into believing the [accused design] is the same as the patented [design].” Though it did not provide a detailed framework for this newly-articulated ordinary observer test, the Federal Circuit did provide several helpful guidelines:
§ “[W]hen the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” In other words, are the patented and prior designs so similar that even small differences between the accused and patented designs stand out?
§ “If the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing.” Put differently, has the accused design appropriated a feature of the patented design that is distinct from prior designs?
§ “If the claimed design consists of a combination of old features that creates an appearance deceptively similar to the accused design, even to an observer familiar with similar prior art designs, a finding of infringement would be justified.” So, does the patented design include combined features that appear deceptively similar to the accused design?
The Federal Circuit also recognized the difficulties in describing three-dimensional ornamental designs in words for this analysis. It concluded that a design patent claim is preferably not interpreted by creating a detailed verbal description of a claimed design. Instead, the figures should be the basis for such interpretation, guided by other factors impacting the scope of the patented design, including:
§ features of the patented design as they relate to the accused design and prior designs;
§ the role that design patent drafting conventions—e.g., the use of broken lines to show unclaimed features and the use of surface shading to illustrate surface contours—play in patent interpretation;
§ the effect of communications between the applicant and the Patent Examiner during examination of the design patent application; and
§ distinctions between ornamental and functional features of the patented design.
The Federal Circuit’s Egyptian Goddess test typically requires a three-way comparison among the patented design, prior designs, and the accused design. As illustrated in the accompanying diagram, the accused design is juxtaposed with the patented design and prior designs. If the accused design is deceptively similar to the patented design when viewed in the context of prior designs—e.g., the accused design is “closer” to the patented design than the prior designs—then infringement may be found.
The new infringement test has several important and practical implications for design rights, design strategies, and the way in which designs are created:
§ With the elimination of the point of novelty test as a second element of the infringement analysis, it is now easier for owners of design patents to enforce their design rights. Patent owners have one less hurdle to clear when proving infringement.
§ As a flip side to the increased ease of design rights enforcement, increased vigilance and due diligence are required when introducing new product designs that may conflict with design rights of others. This is important from the perspective of proactive risk management.
§ It has always been good business to develop and protect distinctive product designs. By emphasizing the three-way comparison among the patented, prior, and accused designs, the newly articulated ordinary observer test serves as a fresh reminder that design rights can be strengthened by establishing a strategic distance from prior designs—what can be called strategic design differentiation.
§ The newly articulated test also serves as a reminder of the importance of carefully prepared design patent applications. This includes careful attention to patent drafting conventions and well-crafted communications with Patent Examiners.
The revision to the design patent infringement test made in Egyptian Goddess does indeed favor patent owners. The new test makes it easier to enforce design rights by eliminating the separate point of novelty test. It also informs design protection and risk management strategies—even the design process itself.