Appeals Court Strengthens Design Patents

from the just-what-we-didn't-need dept

Most patent infringement lawsuits you hear about involve utility patents, but every once in a while we hear about cases involving design patents, which are about the ornamental design of a product, rather than the process or method. However, most IP attorneys are always quick to point out how weak design patents really are (which is why you rarely see them pop up in litigation). However, that may have just changed. CAFC (the Court of Appeals for the Federal Circuit, who handles all patent related issues) has released a unanimous ruling that lowers the standard for infringement of a design patent from the "point of novelty" test that the court has used for almost 25 years (which required that any design patent actually have something novel) to a "ordinary observer" test -- where infringement will be deemed to occur if an "ordinary observer" would think the designs are the same. It's difficult to understand why the courts wouldn't keep a novelty requirement, considering the very purpose of the patent system, but we've been confused by CAFC rulings on a regular basis for years, now. Anyway, you can now expect more lawsuits over design patents and perhaps a few more questions about why we need design patents when trademarks already exist.


Reader Comments (rss)

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  1.  
    identicon
    Anonymous Coward, Sep 29th, 2008 @ 5:48pm

    lawyer job security

    appeal the appeal

     

    reply to this | link to this | view in thread ]

  2.  
    identicon
    rooly, Sep 29th, 2008 @ 10:54pm

    myphone and the iphone

    almost everyone asks me if my openmoko phone is an iphone...so does that mean FIC is gonna get sued?

     

    reply to this | link to this | view in thread ]

  3.  
    identicon
    Anonymous Coward, Sep 30th, 2008 @ 1:16am

    Here in the UK, we have Registered Designs that cover precisely this - it sounds to me like design patents are the same thing, so subtly different from trademarks? For instance you could get a trademark on the name Coca-Cola and a registered design on the famous Coke bottle's shape (and a trademark on its image for use in ads and whatnot, but I digress). Is that more or less the point of design patents too?

     

    reply to this | link to this | view in thread ]

  4.  
    identicon
    Ceyarrecks, Sep 30th, 2008 @ 3:52am

    All The Cars

    Well, guess we will now see huge lawsuits from auto manufacturers against other auto manufacturers, since so many cars are designed (read: "look") so similar to other brands/models. Oh and the aluminum cans used by drink companies, well, more law suits there,...

    ARGH! the shoes! what about all the similarly designed shoes!! AND!! the cardboard boxes they come in?!!?!?

    did the intelligence level within the U.S. just drop again when I was not looking? Or is there just a terminal disease that affects liars,*cough*, I mean politicians/judges?

     

    reply to this | link to this | view in thread ]

  5.  
    identicon
    DMM, Sep 30th, 2008 @ 5:56am

    You are at least a little confused

    You apparently haven't read the case. And, while the implications of this case will not be fully known for some time, maybe even many years, the intent of the court was not to lower the standard, but to change the way in which design patent infringement is determined.

    Previously, design patent infringement was based upon two tests, the "ordinary observer" test and the "point of novelty" test. As the "ordinary observer" test was previously used, the "ordinary observer" could be like your "moron in a hurry" that you often talk about when discussing trademark infringement. Yes, the Court has now eliminated the "point of novelty" test, but it has also rolled up that test's requirements into the "ordinary observer" test by requiring that the hypothetical "ordinary observer" is fully knowledgeable of prior designs. This means that the "ordinary observer" can no longer be like your "moron in a hurry".

     

    reply to this | link to this | view in thread ]

  6.  
    identicon
    Willton, Sep 30th, 2008 @ 6:12pm

    Re: All The Cars

    Well, guess we will now see huge lawsuits from auto manufacturers against other auto manufacturers, since so many cars are designed (read: "look") so similar to other brands/models. Oh and the aluminum cans used by drink companies, well, more law suits there,...

    ARGH! the shoes! what about all the similarly designed shoes!! AND!! the cardboard boxes they come in?!!?!?

    did the intelligence level within the U.S. just drop again when I was not looking? Or is there just a terminal disease that affects liars,*cough*, I mean politicians/judges?

    Wow, you must be sweating bullets under that tin-foil hat of yours.

     

    reply to this | link to this | view in thread ]

  7.  
    identicon
    Andrew D. Todd, Oct 1st, 2008 @ 9:52am

    Functionality.

    Functionality is a defense against a design patent. If you can show that the look of your product arises out of a practical reason, then you are home free, unless, of course, the patentee can get himself a utility patent.

    It is precisely the manufacturers of expensive upscale products who are likely to want to sue for infringement of whatever. However, many expensive upscale consumer goods tend to have a distinctive look about them. They are aggressively hyperfunctional, in much the same sense that military equipment is hyperfunctional. Such equipment is commonly designed to be taken apart and put back together with as few tools as possible. This is what the military calls "field-stripping," eg. getting the mud out of a rifle after one has inadvertently dropped it in the Mekong Delta. In this kind of design, there are no housings which conceal function. About the only reason for a housing is to provide a handgrip, or to guard moving parts, etc. In the latter case, glass or transparent plastic is often preferred, because the user can see what is going on inside. In this kind of design scheme, there is no room for merely ornamental features. If it's not useful, get rid of it. If you want to read a manifesto of this kind of design, look at Victor Papanek's classic _Design for the Real World_ (English translation, 1972, Swedish original edition, 1970), and also his _Nomadic Furniture_ (with James Hennessey, 1973). In the latter book, he presented a wide variety of furniture which could be rapidly broken down into planks for moving.

    Needless ornamentation is characteristic of the inexpensive goods sold in chain stores.

     

    reply to this | link to this | view in thread ]


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