Court decision may help protect design patents

OCTOBER 2, 2008 – The Journal Record interviews intellectual property attorney Martin Ozinga for expert insight into the impact a recent federal appeals court decision that may make it easier to protect design patents from infringement.

Court decision may help protect design patents

Marie Price, Enterprise Reporter, The Journal Record

OCTOBER 2, 2008 – Believe it or not, a federal appeals court decision involving something as mundane as a fingernail buffer may make it easier to protect design patents from infringement.

Oklahoma City attorney Martin Ozinga said it is difficult, with design patents, to prove the usual patent factors of newness and non-obvious improvement over what others have done previously.

“It becomes more of a visual approach over a legal, written description approach,” he said of a recent decision out of a federal circuit court.

Design patents cover what a product’s ornamental features look like, not its functionality.

Think of the distinctive shape of a Coca-Cola bottle versus its Pepsi and Dr Pepper rivals.

In 1871, the U.S. Supreme Court’s Gorham decision adopted an “ordinary observer” test for deciding whether a design patent has been infringed. Gorham involved a design patent for tablespoon and fork handles.

“They tried to come up with a way to talk about how you can tell how two things look differently, in order to decide whether someone should get a patent, and whether someone is infringing on a design patent,” said Ozinga, head of the intellectual property department of the Phillips Murrah law firm.

Ozinga said the new Egyptian Goddess v. Swisa decision “is going to make it easier for people who have patents to defend them.”

The unanimous decision out of the Court of Appeals for the Federal Circuit moves away from a verbal approach to design patents – the separate “point of novelty” test that requires explaining differences – to a more visual method.

“In other words, you can look at it and give it more of an eyeball test, than trying to put something in words to describe what you’re looking at,” Ozinga said.

As an example, he said, a person looking at two soda bottles can easily see that they are different, but explaining those differences through words can be more difficult.

In previous decisions, courts used the point-of-novelty test to determine whether an “accused device” appropriated the novel features of a patented device that distinguish it from previous designs.

In its decision, the federal circuit court said the point-of-novelty test has proven difficult to apply in situations where a claimed design has numerous features that can be considered novel, or where a design consists of a combination of features, each of which could be found in one or more prior-art designs.

The court used the Eqyptian Goddess case to reject point-of-novelty as a separate test, but stopped short of saying that differences between a claimed design and prior-art designs are irrelevant.

“[T]he comparison of the designs, including the examination of any novel features, must be conducted as part of the ordinary observer test, not as part of a separate test focusing on particular points of novelty that are designated only in the court of litigation,” the court said, holding that the ordinary observer test should be “the sole test for determining whether a design patent has been infringed.”