Court of Appeals alters test for design patent infringementOctober 1, 2008 | Intellectual Property News
The test for design patent infringement has been well understood to include certain discrete steps. First, the court must determine the “points of novelty” of the patented design. Because a design patent often includes a mix of elements that are new and old, functional and aesthetic, the court has been required to separate the new and aesthetic features from the rest of the design. Second, the accused product is evaluated to determine whether it includes the so-called points of novelty. If not, then the product would not infringe the design patent even if it otherwise seemed quite similar. If the accused product included the points of novelty, then the design patent as a whole would be compared to the accused product as a whole to determine whether an ordinary person would be confused into thinking that the two designs are the same. The accused product would infringe the patent if it both included the points of novelty and had an overall appearance that was confusingly similar to the design in the patent.
In Egyptian Goddess, Inc. v. Swisa, Inc., http://www.cafc.uscourts.gov/opinions/06-1562.pdf, the Federal Circuit Court of Appeals abandoned this technical approach to design patent infringement that dissected the design patent for points of novelty. Instead, patent infringement is to be evaluated by comparing the design patent with the accused product, while at the same time keeping an eye on the previously existing designs so that the new components of the patented design can be afforded greater weight. This simultaneous evaluation of the patent, the accused product, and the prior art brings its own challenges, and the manner in which the courts implement it will continue to evolve.
While the distinction may eventually be more procedural than substantive, conventional wisdom seems to be that design patents will be stronger with this decision. The points of novelty test had been used in many cases to whittle a design patent down to a few trivial points of distinction that were arguably missing from the accused product. This new test considers the design patent as a whole and should lead to a broader scope of protection for design patents.