Design Patent Infringement Standards Simplified – Boon to Design Patent Owners

The patent appeals court, the Federal Circuit, recently issued a unanimous opinion simplifying how courts determine design patent infringement. The court discarded the longstanding “point of novelty” test, which a prior decision had said to require a “non-trivial advance over the prior art.” Infringement is now determined solely by the “ordinary observer” test developed in 1871 by the Supreme Court’s Gorham decision. The Gorham test focuses on whether there is “substantial similarity” between the patented design and the accused product. In addition, courts must now judge this similarity while keeping in mind the prior art, which may highlight the differences between the patent and the accused product. These changes should make it easier to prove design patent infringement, although we expect that the test will be further shaped by case law in the years to come. Egyptian Goddess, Inc. v. Swisa, Inc., 2008 U.S. App.LEXIS 20104 (Fed. Cir. 2008).