Infringement of a Design Patent
The tests used by federal courts to determine infringement of a design patent has changed several times over the last 25 years. Some tests have been more favorable to patent owners and some tests have been more favorable to alleged infringers. Today, the courts used a test regarded by most to be more favorable to patent owners because it simplifies the standard for proving infringement. The current test was applied in Apple’s lawsuit against Samsung ruled that: a design patent is infringed if an ordinary observer would think the accused device is substantially the same as the patented design when the two designs are compared in the prior art.
Are you infringing an existing Design patent?
If you are concerned about whether your product is infringing an existing design patent, you must first obtain a copy of the design patent and look at the title and the Figures. Does the title of the design patent cover describe or include your product? Do the Figures depict a product similar to your product? Note dash lines or dot date dot lines are not protected by a design patent. Next, conduct a comprehensive prior art search identifying features on the patented design also used in the prior art. Features used in the prior art are NOT protected by the design patent. Also, purely functional features are usually not protected by a design patent. You must identify ornamental features used on the patented design NOT found in the prior art, not functional, and unique to the patented design. You then must determine if your product includes these novel feature(s). If yes, then review the patented design’s secondary factors, such as overall visual appearance of the product and the interaction, significance, or visual impact the novel feature(s) have on the overall appearance of the product. Next, determine if your product as the same secondary factors.
Is a Competitor’s Product infringing your Design Patent?
If you are concerned about whether a competitive product may be infringing your design patent, an approach similar to the approach described above should be used. Is the Competitor’s product protected by a patent or ‘patent pending’? Next, review your design patent and identify novel, unique features and common, functional features and the secondary factors. Next, review the alleged infringing product and determine if it includes these novel features and have similar secondary factors. The more novel features and secondary factors shared, the more likely the competitive product is infringing.