Ordinary Observer Test

Design patents and utility patents protect different aspects of protecting a product. Utility patents protect how a product works, which has historically been easier to define, and design patents protect the ornamental design of a product. The courts have had a very difficult time setting a clear and reasonable standard for determining when someone is infringing on a design patent.

In 1872, the case Gorham v. White set the first standard for determining design patent infringement. The court stated that if the designs of two products are so similar that an average customer would confuse them, possibly causing them to buy one thinking it was the other, then that is infringement. This test came to be called the “ordinary observer test.”

Point of Novelty Test

The next major case that defined how design infringement was determined was Litton Systems, Inc. v. Whirlpool Corp. 1984. The “point of novelty test” was added to see if the design had novelty in light of prior art. If novelty could not be proven, there was no infringement. Furthermore, the patentee had to prove that what was being infringed upon was what made the original design patentable in the first place.

Egyptian Goddess v. Swisa

So what has changed with the Egyptian Goddess v. Swisa case? There are two very important changes that have strengthened design patents:

No Verbal Description

Previously, when deciding design infringement cases, the court required verbal descriptions of the design. These descriptions were not only easy to pick apart, but the decisions would often depend more on which parts of the design were focused on in the case than the design as a whole. By removing the burden of coming up with a verbal description, the court allows the pictures in the patent stand for themselves and puts the design as a whole, not just certain aspects of it, in the center of the case. Pictures are much harder to pick apart, since after all a picture is worth a thousand words.

Point of Novelty Test Deemed Unnecessary

The court decided that prior art should be used in determining the scale of infringement, but otherwise the “ordinary observer test” is enough to determine whether or not there is infringement. This takes much of the burden off of the patentee to prove novelty, thereby strengthening his or her design patent.

Will a Design Patent Work for You?

It may, but you will want to contact a patent professional to find out what will work best for your product. Our Patent Associate, Ron Reardon, gives free one-hour consultation for new clients where you can discuss this question.

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To see the announcement along with all its details, click here.

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This may sound strange coming from one who feeds his family by crafting, filing and prosecuting patent applications, but I encourage you to resist the temptation to file a patent application prematurely. Yes, I know that your invention is “the best thing since sliced bread”, that “everyone will want one”, and that there are other inventors who are about to beat you to the Patent Office with the same solution to the same problem. Even if all this is actually true, there are questions that you should ask prior to filing.

How long do you expect your product to sell?

If the answer is 3 years or less, understand that the probability of getting a Utility Patent within those 3 years is remote.

How much do you expect to earn from the sales of your product?

If that number is less than the cost of getting an issued patent (or not substantially greater than that) then this is a no-brainer for not filing.

What is the projected investment required to commercialize your innovation, versus the expected profit?

Whether you plan to form your own company, to pursue a license agreement, or to secure funding from investors, a realistic business case should show that the commercialization of the innovation makes good business sense and provides a better return on investment (ROI) than other options.

Has your invention already been patented?

There are several free patent search web sites available that you can utilize to determine if getting a patent is not in the cards. You can also visit a Patent Depository Library and the librarian will assist you in conducting a search. A professional search that includes both U.S. and Foreign patent documents can then be conducted to supplement your informal search. Just because you do not see your innovation in the marketplace does not mean that it has not been patented. For a variety of reasons, patented innovations are not commercialized.

Is a patent for your innovation prohibited by law?

If more than 1 year has passed since you sold, attempted to sell, used in public or disclosed in public how to make and use the claimed invention, then it is game-over before filing.

What is the expected level of patent protection?

A patentability opinion by a Patent Agent/Attorney can save major heartache down the road. If the best case scenario is very narrow patent protection then an issued patent will have virtually no commercial value and will be easy for competitors to design-around so that they do not infringe.

Are there better options than patenting?

A utility patent expires 20 years from the filing of the application; a design patent expires 14 years from the issuance of the patent; a trade secret, however, has the potential to be maintained forever. A Trademark may be better than a patent in certain circumstances, and can also be maintained indefinitely. First-mover-advantage can be more valuable than patenting in certain cases. Leveraging the market-power of an established industry player might negate the need for a patent due to massive advertising/distribution (“but wait, there is more, order now and we will double the offer…”).

As you can tell by the above questions, business strategy comes first ; the role of intellectual property strategy (patents, trademarks, copyrights, trade secrets) is to support the business strategy. First chart the course of your innovation from introduction and beyond; then determine the role, if any, of patents in that journey.

If after reviewing all the above questions the answer is YES patenting is important to protect the innovation , then the types of patent applications to file, the number of patent applications to file, the number and scope of claims to include in each filing, the timing of the filings, etc. need to be considered. We will explore that set of questions in a future article.

Ron Reardon
Registered Patent Agent

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Ron Reardon

We are pleased to announce that Ron Reardon has become the One Stop Invention Shop’s new Patent Associate! Ron has a very impressive background and we are sure his expertise will be a huge asset to us and to all of the One Stop Invention Shop clients! Take a look at his achievements below:

• Client Base: India, Switzerland, United Kingdom, Alabama, Arizona, California, Connecticut, Florida, Georgia, Illinois, Kentucky, Mississippi, Nebraska, New York, North Carolina, Ohio, South Carolina, Tennessee

• Better Business Bureau (BBB)
• American Intellectual Property Law Association (AIPLA)
• MIT Forum
• IndUS Entrepreneurs (TiE)

Contact Ron at:

Patents & More, Inc.
3356 Station Court
Lawrenceville, GA 30044
Phone: 770-241-4907
Fax: 866-894-3953
Email: rreardon@patentsandmore.com

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Currently provisional applications give inventors a low cost way to have one year of patent pending status to explore the market before applying for a much more expensive utility patent. The USPTO is considering extending the term to two years! To find out more information, click here.

The USPTO is looking for comments, so if you like this idea, let them know!

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http://www.uspto.gov/blog/

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