Is a Design Patent Right For You?

Until recently, design patents were the patent you got if it didn’t work out to get a utility patent. But the recent Egyptian Goddess v. Swisa case has strengthened design patents and redefined how design patent infringement has been determined for over the last 25 years. Now inventors and intellectual property professionals are considering design patents in this new light. Design patents are no longer the patent you get if nothing else works out–they now offer valid protection for some products. But for which products? Let’s first take a short look at the history of how design patent infringement has changed.

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 registered patent agent Don Debelak or another patent professional to find out what will work best for your product. To contact Don Debelak, please write to