Three types of inventions are eligible for patent protection: utility inventions (useful processes, machines, etc.), design inventions (ornamental features), and plant inventions (asexually reproducible plant varieties). In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 666 (Fed. Cir. 2008) (en banc), the Federal Circuit clarified the standard for design patent infringement.
In this case, Egyptian Goddess, Inc. (EGI), which held a design patent for a nail buffer, accused Swisa, Inc. (SI) of infringement. The Federal Circuit reviewed and rejected previous tests used to assess design patent infringement, including the “points of novelty” and “non-trivial advance” tests. Both tests focus on specific distinguishing features, but the court found them problematic and inconsistent with design patent law’s emphasis on the overall appearance.
The Ordinary Observer Test as the Sole Standard
The court established the “ordinary observer” test as the sole criterion for assessing design patent infringement. According to this test:
- The patented design is compared to the allegedly infringing design.
- Infringement occurs if an ordinary observer, familiar with prior designs, would find the two designs so similar as to be likely deceived, potentially leading them to purchase one product believing it to be the other.
By focusing on the overall visual similarity of the designs rather than individual novel elements, the “ordinary observer” test ensures that design patent infringement aligns with how consumers perceive product appearance, particularly in distinguishing one product from another.
Key Takeaway
The Egyptian Goddess decision streamlined design patent infringement analysis by making the “ordinary observer” test the exclusive standard. This shift emphasizes that design patents protect the overall visual impression of a product, helping to prevent consumer confusion while focusing on appearance rather than isolated features.
For questions about design patent infringement or help protecting the ornamental aspects of your product, please contact me at (949) 433-0900. As a seasoned patent attorney serving Orange County, Irvine, Los Angeles, San Diego, and surrounding areas, I’m here to provide the support you need for all your design patent concerns.