When people talk about patents, they generally mean a “utility patent.” To date, over 8 million utility patents have issued in the United States. In contrast, only about 680,000 design patents have ever issued. Why that discrepancy? It’s hard to fathom, especially after Apple Corp. recently won a $1.05 billion jury verdict for design patent infringement against Samsung Electronics in the ongoing battle for cell-phone supremacy. So, the oft-neglected and overlooked design patent is clearly “no lightweight” in high-stakes patent litigation between heavyweights. Nonetheless, the utility patent has almost entirely subsumed the entire concept of “a patent” in the public mind.
While a utility patent provides exclusive rights in useful technology, its neglected design patent cousin provides exclusive rights in “ornamental designs.” As marketing executives know, the ornamental design of a product is often as significant, or even more compelling, as the useful features of the product, especially in the consumer products marketplace. Recently, the Federal Circuit Court of Appeals decided an appeal from a design patent case relating to a slipper design in High Point Design,  and succinctly stated the standards for obtaining a design patent, the standards applicable for determining design patent infringement, and the tests for determining the validity of a design patent.
How Do I Get a Design Patent?
A design patent is available for any design that is “primarily ornamental.” An article can perform a useful function, and still be “primarily ornamental” in overall appearance. For example, headlights on automobiles light up the road ahead, but headlights can have a variety of different, and often quite distinctive, designs. These headlight designs may be regarded as primarily ornamental, and may qualify for design patent protection.
Those familiar with utility patents know that the wording of the patent claims define the subject matter in which the patentee has exclusive rights. The claims of a design patent are not expressed in words, but are the drawings showing the ornamental design. And, the design patent provides exclusivity only in those features of a product shown in the patent drawings. A knowledgeable patent attorney would often exclude features of the object depicted in the drawings to remove features that are not being claimed. For example, if only the headlight design is being claimed, and the drawings depict the headlights as mounted to a generic car so that the design is seen in context, the car would be shown in broken lines. Those features drawn in broken lines are not part of the design patent claim. If the car were not in broken lines, the entire generic car shown would be part of the patented design and it is unlikely such a patented design would be of any commercial value. As a further example, in design patent drawings, bolts and fasteners are usually drawn in broken lines (or not shown at all) to indicate they are not part of the ornamental design that is being claimed. However, when they are drawn in solid lines, then they are also part of the ornamental design. The visible placement and shape of bolts and fasteners may be “primarily ornamental,” although they also perform an important function, and may impart an “industrial” design motif to the patented design.
Design patent applications are filed with the US Patent Office and are examined, like utility patents, by comparing the applied-for design with prior designs to ensure that the design is novel, and also to ensure it is not an obvious variant of prior designs. Once issued, a design patent has a 14-year life from the date it is granted and becomes enforceable, subject to paying maintenance fees. The US Patent Office publishes a useful brochure about design patents which may be accessed at http://goo.gl/XrUxd.
Of course, once you have an issued design patent, and a competitor markets a product that looks the same or very similar to yours, you may go to the federal courts to enforce your design patent.
What Standard Does a Court Apply to Decide Design Patent Infringement?
The plaintiff in a design patent lawsuit must prove that more likely than not (i.e. by a preponderance of the evidence) the accused device is “substantially similar” to the patented design (i.e. the ornamental features shown in the drawings). The test the courts apply is referred to as the “ordinary observer” test. This test is well-settled law and asks the question: “Would an ordinary observer, giving such attention as a purchaser usually gives, regard the two designs as substantially the same?” Designs are substantially the same if the resemblance is such as to deceive the ordinary observer, inducing him to purchase one supposing it to be the other.
In some instances the “substantially similarity” of the claimed and accused designs may be readily apparent to an ordinary observer. In other cases, the resolution of the question of whether the ordinary observer would consider the two designs to be substantially the same will require further analysis involving looking at prior designs. (This more complex analysis will not be detailed here.) In yet other situations, the claimed design and the accused design will be sufficiently distinct that it will be clear, without further analysis, that the patentee cannot meet its burden of proving the two designs would appear “substantially the same” to the ordinary observer.
What Standards Will A Court Apply in Determining Design Patent Validity?
When a charge of design patent infringement is asserted, the defendant can counter with the usual defenses to patent infringement, which include, but are not limited to, defenses of non-infringement and patent invalidity. In a charge of patent invalidity, the defendant has the burden of proving invalidity by “clear and convincing evidence.” This is higher standard of proof than the “more likely than not” standard, but less than the “beyond reasonable doubt” standard applied in criminal cases.
One basis for assertion of invalidity is that the design lacks novelty or is obvious, in a legal sense. Another basis for asserting invalidity of a design patent is that the design is primarily functional and not primarily ornamental. By “functional” we do not mean that elements of the article perform a function, but rather that its design is dictated by a utilitarian purpose of the article.
- The Design Lacks Novelty, or is Obvious
The test for invalidity with regard to lack of novelty is simple: is the identical design shown in the prior art? If not, the design is novel, and the patent is not invalid.
The test for obviousness of a claimed design would have been obvious to a designer of average skill who designs goods of the kind at issue. This is known as the “ordinary designer” test. The question then arises as to what criteria a court should apply as a guide to determine what might be obvious to such a designer.
The High Point Design court stated the judicial criteria for resolving what might be obvious to an ordinary designer. The criteria requires two distinct steps:
In the first step, the defendant must find a single reference (prior art publication or product) with design characteristics that are “basically the same” as the patented design. In this step, the court must “discern the correct visual impression created by the patented design as a whole.” In addition, it must determine whether there is a single reference that creates “basically the same visual impression.” Since this first step includes looking at the design as a whole, it can be loosely regarded as an overview of the design, as compared to an overview of a reference to see if they create basically the same visual impression.
In a second step, once the reference meeting the requisites of the first step has been found, other references may now be added to modify it to create a design that has the same overall visual appearance as the patented design. 
In determining the visual impression created by the “patented design as a whole,” the trial court must translate the impression into a verbal description. The trial court cannot merely say what the article is. For example, the trial court’s description: “slippers with an opening for a foot, that can contain a fuzzy fleece lining and have a smooth outer surface,” is inadequate as a description of the design. The description must add sufficient detail to “evoke a visual image consonant with the design.”
The trial court must then make a side-by-side comparison between the patented design and the reference to determine whether they create the same visual impression. In High Point Design, for example, the trial court should have made the following comparison:
From the above, the prior art reference has a seam that runs all around the perimeter of the outer surface slightly above the sole, creating a more structured look to the upper of the slipper than the more “rounded and shapeless” look of the patented design. Moreover, the fleece of the prior art reference spills over the outer surface all around the opening of the slipper, while that of the design does not. So, do they create the same visual impression? The High Point Design court remanded the case to the trial court to make that determination.
As with utility patents, when obviousness is asserted, design patents may also rely on the “secondary considerations” of Graham v. John Deere to bolster non-obviousness to defend against a charge of invalidity. So, for example, evidence of commercial success of the patented product and/or evidence of copying by others may be submitted into evidence to buttress the position that the design is one that is successful in the market place and hence, by inference, not obvious but patentable.
- The Design is Primarily Functional
Another basis for asserting obviousness of a patented design is that it is primarily functional. High Point Design addresses the functionality issue and pointed out an error in the trial court’s understanding of “functionality.” The trial court had erred in the assumption that if the patented design’s primary features can perform a function, the design is primarily functional and therefore the patent is invalid. High Point Design then points out that:
[A] distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture . . .
The court goes on to say that the functionality of an article should not be confused with its function, and that the utility of each element of a design is not a relevant inquiry in a design patent. The court instructs that there are various factors that may help assess whether the features of the design as a whole are dictated by functional consideration, and these include:
 whether the protected design represents the [*22] best design;  whether alternative designs would adversely affect the utility of the specified article;  whether there are any concomitant utility patents;  whether the advertising touts particular features of the design as having specific utility;  and whether there are any elements in the design or an overall appearance clearly not dictated by function. 
The High Point Design court remanded the case to the trial court to re-evaluate the defendant’s asserted functionality of a patented design using these factors.
Design patents are valuable, as Apple has demonstrated in court, and can provide commercially valuable exclusive rights in “primarily ornamental” features of a product. The useful features of a product may include novel and non-obvious technology in which exclusive rights may be obtained through a utility patent, while additional exclusive rights may be also be obtained in the novel and non-obvious (primarily) ornamental features of the product. Neither should be overlooked.
 Apple Corp. v. Samsung Electronics Company, No. 11-CV-01846 (N.D. Cal.), 2012 US Dist. LEXIS 109400 (four Apple design patents held infringed).
 High Point Design LLC v. Meijer, Inc., Sears Holding Corp., and Walmart Stores, Inc, slip op 11-CV-4530 (SD NY) (September 11, 2013), 2013 U.S. App. LEXIS 18836.
 Id. At page 9.
 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 668 (Fed. Cir. 2008) (the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under the “ordinary observer” test, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.”)
 Gorham & Co. v. White, 81 US 511, 1871 US Lexis 1018 (1871).
 High Point Design, 2013 US App. LEXIS 18836, supra, at page 9.
 Id at page 8.
 Id at p. 8-9.
 Graham v. John Deere, 383 U.S. 1 (1966).
 High Point Design, 2013 US App. LEXIS 18836, supra, at page 10.
Shaukat Karjeker is a partner at Carstens, Allen & Gourley, LLP. He offers over 20 years of experience in patent and trademark litigation and prosecution before both US and foreign patent and trademark offices.
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