Design patents are useful in protecting the non-functional ornamental” design” of a product. The USPTO defines the design of an object to be the visual characteristics or aspects displayed by said 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 identical design exists, 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 a hypothetical designer skilled in the art. Design patents cannot be obtained for ornamental features that are not visible when the product is in use.
In many circumstances, an inventor may obtain a design patent in addition to a utility patent for the same invention if the standards for each patent category are satisfied.
A 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.
Comparison of a patented design against a design accused of infringement involves satisfying the “Ordinary Observer” test. This test was first discussed by the U.S. Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871), in a case involving an ornamental design for silverware handles, holding:
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 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 some 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.
ELO strives to best counsel our clients as to the prosecution and protection of design patents. Contact us for additional information or to schedule a consultation.