No point to novelty

As the US patent court does away with the ‘point of novelty’ test for design patent infringement, the case for registering design patents in the US becomes more compelling, says Daniel C DeCarlo

Design patents have traditionally played a far less prominent role in patent jurisprudence than the utility patents that dominate patent filings and litigation in the US, as elsewhere. In the 30-year period since 1978, over three million utility patents were issued by the US Patent and Trademark Office (USPTO) compared to just over 300,000 design patents.

But while representing a fraction of the overall patent universe, design patents should not be ignored by those interested in protecting aesthetic features. Not only are they substantially easier and less expensive to secure than utility patents, but a recent opinion by the US Federal Court of Appeals for the Federal Circuit has fundamentally changed the design patent landscape by making them far more valuable than they were prior to the ruling.

Protecting appearance
Utility patents protect useful articles, such as machinery, medical devices and unique methods (among other things); design patents, in contrast, protect aesthetic, non-functional features, similar to the protection offered by trade dress, some copyrights and by design rights in other countries. In other words, design patents protect what something looks like, rather than how it works.

More than 100 years ago, the US Supreme Court identified the standard for determining infringement of design patents in Gorham Company v White (1871) when it ruled 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 and sufficient to induce him to purchase one supposing it to be the other – the one first patented is infringed by the other.’

‘IN THE 30-YEAR PERIOD SINCE 1978, OVER THREE MILLION UTILITY PATENTS WERE ISSUED BY THE USPTO COMPARED TO JUST OVER 300,000 DESIGN PATENTS’

However, that test was amended more than 25 years ago, when the newly formed Federal Circuit Court of Appeals introduced an additional requirement that, arguably, was never a part of the original Supreme Court’s thinking. In the case of Litton Systems v Whirlpool Corp (1984), it said that in addition to an ordinary observer being confused or deceived, that confusion or deception must have stemmed from the similarity of certain ‘points of novelty’ present in the patented article.

Identifying difference
The so-called ‘point of novelty’ test was an effort to force patentees to identify certain design elements of the patented article that differed from anything that came before it, ie different from the prior art. This proved to be cumbersome, as jurors (as well as many lawyers and judges) often found it difficult to determine which aspects of a design were indeed novel and which were not.

This ‘point of novelty’ test issue was placed squarely before The Federal Circuit En Banc (the entire court) in 2008, in the case of Egyptian Goddess Inc v Swisa Inc. After analysing the development of the design patent laws, the Federal Circuit concluded that the ‘point of novelty’ test was never supported by the Supreme Court’s initial edict in Gorham, and therefore had to be eliminated; in other words, the Federal Circuit essentially acknowledged an error it had made 25 years earlier in creating the standard in the first place and, with a stroke of the pen, made it easier for design patent holders to enforce their rights.

It is likely that this new development will increase not only the value of design patents, but also the amount of litigation, as holders find it easier to establish infringement. For those doing business in the US through the sale of decorative items, the potential for design patent coverage is significantly more important than it was prior to the Egyptian Goddess decision. The ruling is a win for designers and patent holders, and serves as a welcome deterrent to potential infringers.


Daniel C DeCarlo is the vice chair of the IP Practice Group at US law firm Lewis Brisbois Bisgaard & Smith


This article first appeared in IP Review, issue 25