Three types of inventions are eligible for patent protection under the patent laws, specifically utility inventions directed to useful processes, machines, etc. , design inventions relating to ornamental features and plant inventions of asexually reproducible plant varieties.
A design invention was at issue in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 666 (Fed. Cir. 2008) (en banc). Egyptian Goddess, Inc., (“EGI”), the patent owner of a new design for nail buffers, accused Swisa, Inc. (“SI”) of infringing its design patent. The court of appeals for patent matters reviewed the various tests used to determine design patent infringement. These tests include the “ordinary observer”, the “points of novelty” and the “non-trivial advance” tests. The court identified various problems with applying the “points of novelty” test, and rejected both the “points of novelty” test and the “non-trivial advance” test which is a refinement of the “points of novelty” test.
The court held that the “ordinary observer” test is the sole test for determining whether a design patent is infringed. Under the “ordinary observer” test, the patented design is compared to the allegedly infringing design to determine whether the patented design and the allegedly infringing design are so similar that a purchaser familiar with prior designs would be deceived inducing him to purchase one supposing it to be the other.