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It’s been two years since the Federal Circuit’s ruling in Egyptian Goddess Inc v. Swisa. This landmark ruling, which effectively reset the standard for design patent infringement, has made a once relatively obscure and murky area of patent law only slightly clearer.

For over 25 years, infringement in design patent cases was determined by a two-pronged test. To infringe, the accused device had to meet both the so-called “point of novelty test” and the “ordinary observer” test. In Egyptian Goddess, the Court eliminated the requirement that a patent holder needed to show that the accused device “appropriated the novelty in the patented device which distinguishes from the prior art,” and re-established the “ordinary observer” test as the sole criteria for (literal) infringement in design patent cases.

The Standard for Infringement: Ordinary Observer

Under the “ordinary observer” test, as reformulated and reiterated by the Federal Circuit in Egyptian Goddess, infringement is found when the accused design is found to be substantially similar to the patented design, as determined by the ordinary observer. The Court has made it clear that it is the “overall appearance” of both the accused and patented designs that needs to be considered and specific features or points of novelty are no longer the proper bases for comparison.

The Standard for Anticipation: Ordinary observer

The Court has recently gone on to establish that the “ordinary observer” test is the only proper comparison when determining design patent validity. See International Seaway Trading Corp. v. Walgreens Corp. Specifically, the Court reasoned that because the “ordinary observer” test is the correct standard for infringement it must therefore also be the correct standard when comparing the patented design to the prior art. In short, it is clear that anticipation in design patent cases occurs if (and only if) the “ordinary observer” determines that the patented design is “substantially similar” to cited prior art.

The Standard for Obviousness

This, of course, leaves open the issue of obviousness in design patent cases. If the test for anticipation is “substantial similarity,” then what is the standard for obviousness? A few weeks after International Seaway, in Crocs v. International Trade Commission, the Federal Circuit applied the standard test for obviousness used in all patent cases. It examined (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention; and (4) the extent of any objective indicia of non-obviousness. Ultimately, the International Trade Commission’s finding of obviousness was reversed based on the finding that (a) one or more claimed features were missing from the cited prior art, (b) an ordinary artisan would not have been motivated to try adding the missing element(s), and (c) the accused product had significant commercial success.

The Effect of Functional Elements

One of the looming issues in any design patent case is the issue of what weight should be placed on the contribution of functional elements to the overall design. This was addressed fairly definitively in Richardson v. Stanley Works, where the Federal Circuit made clear that (a) the “deception that arises [must be] a result of the overall design, not of similarities in ornamental features in isolation” and (b) the functional elements of the designs are to be ignored when undertaking that analysis.

Whether this type of analysis is properly within the province of a Markman claim construction hearing or whether it should be left to the jury is still an open question.

What about fashion? Is help just down the catwalk?

Design patents are a useful tool and have been used successfully in a number of industries with longer product life cycles, such as consumer goods, tools, and jewelry. The fashion industry, however, has been clamoring for an efficient way to protect designs in a universe of short product lifecycles and instant knock-offs.

The latest attempt at a legislative “fix” for this problem is the Innovative Design Protection and Piracy Prevention Act (S. 3728). By amending the copyright law, rather than the patent law, this legislation would create a new special form of design right that would be applicable to fashion and fashion related items (e.g., clothing, wallets, handbags, belts, suitcases, and eyeglass frames). The version of the bill as of the date of this IP Bulletin provides three years of protection for any work within these categories that is (a) a result of the designer’s own creative endeavor, and (b) provides a unique non-utilitarian variation over prior designs for the same article. Infringement would require actual copying and the resulting work must be “substantially identical in overall visual appearance” as to the original elements of the protected design. The proposed legislation removes the registration requirement for pursuing an infringement claim and substitutes a more detailed pleading requirement for pursuing such cases.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.