Design Patents: The Basics

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A design patent will be issued by the U.S. Patent and Trademark Office for any “new, original, and ornamental design for an article of manufacture.” (35 United States Code, Section 171.) This includes three types of designs:

  • surface ornamentation—that is, a design applied to or embodied in an article of manufacture
  • a product shape or configuration, and
  • a combination of the first two categories.

Courts have limited design patents to one sense, vision—that is, the appearance presented by the article. A design patent will not be granted for sounds, smells, or tastes that ornament products. In addition, the design must be capable of reproduction and not merely the chance result of a method. A water fountain display—the combined appearance of the water and the underlying sculpture—is suitable subject matter for a design patent because it is definite (even though not permanent) and can be reproduced.

The protected design must be ornamental, not functional.

Example: A personal computer designed to resemble a classical robot might qualify for a design patent as long as the robot characteristics were purely ornamental. But if the robot characteristics were functional in some way—for instance, they provided the computer with mobility—a design patent on these characteristics would be precluded.

Often, two patents will be submitted for the same device: a utility patent covering the device’s functional characteristics, and a design patent protecting the device’s ornamental characteristics. In our robot computer example, it might be possible to obtain both types of patents if they cover different aspects of the device.

Although design patents are relatively easy to obtain, the fact that the design by definition lacks utility normally makes it easy to create another design that will also be novel and interesting without violating the design patent.

Test for Infringement

Prior to 2008, the Court of Appeals for the Federal Circuit (CAFC) used two standards to demonstrate design patent infringement: (1) The Ordinary Observer Test, in which the court compares the allegedly infringing device with design patent drawings to determine whether the allegedly infringing design is substantially similar; and (2) The Point Of Novelty Test, in which the court compares the patented design with the prior art to determine “the point of novelty” of the patented design and whether the allegedly infringing design appropriates the novelty.

The CAFC terminated the “point of novelty” test in a 2008 case involving a claim of infringement of a nail buffer design, Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 88 USPQ2d 1658 (Fed. Cir. 2008) (en banc). Instead, the court held that only an “ordinary observer” test was required. The CAFC also discouraged the “over-verbalization” of design patent claims, preferring more reliance on design patent drawings. In a post-Goddess case, a district court applied the new standard to a design patent for a “curvilinear zipper.” The district court applied the ordinary observer test, first comparing the differences between the patented design and the infringing design, and then considering the differences in relation to the prior art. The conclusion: no infringement. (Arc’Teryx Equipment, Inc. v. Westcomb Outerwear, Inc., 2008 WL 4838141 (D. Utah, November 3, 2008)). The CAFC also extended the ordinary observer test for design patents when determining if a design patent is anticipated by prior art. (International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 93 U.S.P.Q.2d 1001 (Fed. Cir. 2009)).

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