US Design patent protection becomes stronger

The Court of Appeals for the Federal Circuit has discussed in Egyptian Goddess v. Swisa the standard to apply for infringement in US design patents.

The "point of novelty" test as a requirement to prove infringement of a design patent has been rejected by Judge Bryson.

The court has ruled that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed."

The Gorham test originates from a Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). That case involved a design patent for the handles of tablespoons and forks. In its analysis of claim infringement, the Court stated that the test of identity of design "must be sameness of appearance, and mere difference of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity." Identity of appearance, the Court explained, or "sameness of effect upon the eye, is the main test of substantial identity of design"; the two need not be the same "to the eye of an expert," because if that were the test, "[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them."

The Gorham Court is that: "[I]f, 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 before it, the Court concluded that "whatever differences there may be between the plaintiffs’ design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing—so much alike that even persons in the trade would be in danger of being deceived."

Conclusion: It is expected that this decision will increase the value of design patent protection for its owner since the threshold for infringing a design patent becomes easier to reach.