Design Patents protect the ornamental or aesthetic aspects of a design as opposed to the functional aspects that are protected by a Utility Patent. The “ornamental design” or “aesthetic aspects” means the shape of the design, and/or the surface decoration on the design. A grant or registration for a design provides 14 years of protection from the date the patent is granted. The design patent prevents third parties from making, using, offering to sell, or selling the patented design within the United States or from importing it into the United States without license or permission.
As opposed to the written worded claims in a utility patent application, the scope of the claim is defined by the drawing(s) in the design patent. Taking account all figures in the patent, consideration of all features as a whole and not merely isolated portions or individual features of the claimed design should be considered. Features depicted in solid lines contribute to the claim and overall appearance of the design. Features in dashed lines are excluded from the claimed design. Design patents do not cover aspects that are purely functional. The design may be inextricably intertwined with a functional aspect, but if the design can be made in more than one or more design to perform the same function, then the function does not necessarily drive the design and the design is still considered (design) patentable. If the design is purely driven by the function, then it is entirely possible that the aspect is not protectable under design patent laws.
Determination of infringement involves comparing the overall appearance of the allegedly infringing design and the claimed design. A plaintiff must show, by a preponderance of evidence, the overall appearance of the allegedly infringing design is substantially the same as the overall appearance of the claimed design.
When the claimed design is visually close to the prior art designs, small differences between the allegedly infringing design and the claimed design may be important to the determination of infringement. If the allegedly infringing design includes a particular feature of the claimed design that departs conspicuously from the prior art, the inclusion of that particular conspicuous feature in the allegedly infringing design is an important factor in favor of finding infringement. If the allegedly infringing design is visually closer to the claimed design than it is to the closest prior art, this can also be another important factor in favor of finding infringement. Notwithstanding, the standard for determining infringement is a bit subjective as the test finds infringement if, in the eyes of an ordinary observer familiar with the prior art, the overall appearance of the allegedly infringing design is substantially the same or similar as the overall appearance of the claimed design.
As with utility patents, a design patent generally has two primary substantive requirements. First, the design must be new or novel and second, the design must not be obvious in view of the existing prior art.
Regarding novelty, if the design is “anticipated by the prior art,” the design is not entitled to patent protection. A Defendant trying to defend from a claim of infringement must prove with clear and convincing evidence that the claimed design is not new or lacks novelty. A successful defense could involve finding a prior art reference that to an ordinary observer when viewed as a whole is “identical in all material respects” to the overall visual impression of the claimed design. Minor differences between the prior art and the claimed design do not necessarily preclude a finding of anticipation.
Regarding the “not obvious” standard or more accurately, non-obviousness, a claimed design is considered patentable if it is non-obvious in view of existing prior art. Put in another way, a claimed design is considered invalid as obvious if considered obvious to a designer of ordinary skill in the art. Combining known elements in a known fashion is generally not patentable but a new material element combined with an existing element that creates a combination in a new and integral design could be considered non-obvious. The general test is whether the difference between the prior art and the claimed design would have been obvious to one of ordinary skill in the art at the time of patenting. If the combined references suggest only portions or components of the claimed design, but not the overall appearance, the claimed design may be considered non-obvious. The USPTO may also consider secondary factors to find a determination of non-obviousness such as evidence of a long felt need for a new design, commercial success due to appearance rather than due to advertising and promotion, evidence of licensing, expressions of admiration for the claimed design by third parties, or evidence of third party copying.
Pablo Meles, P.A. 