Tuesday, September 23, 2008, 6:22 AM

Federal Circuit Strengthens Design Patents

In a decision long-awaited by the intellectual property community, the Federal Circuit on Monday handed down the decision in the design patent case Egyptian Goddess v. Swisa. In the en banc decision, the court addressed several major issues for those holding design patents, including whether the "point of novelty" test should continue to be used as a test for infringement and whether district courts should perform claim construction in design patent cases.

After review of Supreme Court and Federal Circuit precedent, the court ultimately scrapped the "point of novelty" test in favor of the "ordinary observer" test. Previously the court required a patent holder to prove infringement under both tests. Now, a design patent holder needs only to show that an ordinary observer would have difficulty distinguishing the two designs and be induced to buy one, thinking they were buying another. Under the new test there is a three-way comparison between the prior art, the patented design, and the infringing design. The accused infringer bears the burden of showing likenesses to the prior art of either its design or the patented design. However, the patent holder still bears the burden of providing infringement.

In addition, the Federal Circuit held that the district courts are not required to attempt to construe the claims of a design patent by providing a verbal description of the design. The court held that it would not be reversible error for a district court to do so and that the district courts are free to provide reasonable guidance to a jury as to key features of the designs at issue.

A full copy of the opinion may be found here.

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