Design patents are useful in protecting the non-functional ornamental shape of an article of commerce. A design patent relies primarily upon drawings and a single claim to communicate what is protected.
The claim generally refers to the drawings as a standard of what is protected. The United States Patent and Trademark Office has defined the design of an object to be the visual characteristics or aspects displayed by the object.
A design patent may be directed to ornamental configuration, surface decoration, or both. To qualify for a design patent, the ornamental shape must be new in the sense that no single, identical design exists in the known prior art, and the device must satisfy certain ornamental standards. It must also be unobvious on the basis of any previously existing design or combination of designs when viewed through the eyes of ahypothetical designer skilled in the art. Design patents cannot be obtained for ornamental features that are not visible when the product is in use.
A design patent is subjected to an examination in the U.S. Patent and Trademark Office, which includes a prior-art search. The design patent has a term of 14 years from the date it is granted. In many circumstances, one may obtain a design patent in addition to a utility patent for the same invention if the standards for each patent category are satisfied.
The design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an ordinary observer might purchase the infringing article, thinking it was the patented product. The ordinary observer is generally deemed to be the retail purchaser of goods of that particular type rather than an expert, who would be less likely to be fooled.
Comparison of a patented design and an accused design involves satisfying the
“Ordinary Observer” test to find infringement. The “ordinary observer” test was first enunciated by the United States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) in a case involving an ornamental design for silverware handles, which held that:
If, 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, the first one patented is infringed by the other.
In the case of Egyptian Goddess Inc. vs. Swisa, Inc. 543 F. 3d 665 (Fed. Cir. 2008) (en banc) the entire court rejected earlier case law which had increased the burden for establishing design patent infringement. As a result, the Federal Circuit has put real teeth back into the enforcement of design patents.
An industrial design patent can also be obtained in other countries. For instance, in Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet other the formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain). For the member states of WIPO, registration is afforded by application to WIPO and examination by designated member states in accordance with the Geneva Act of the Hague Agreement.
McHale & Slavin has extensive experience in advising clients as to the prosecution and protection of both U.S. and foreign design patents. Contact us for additional information or to schedule a consultation.
