Within the realm of intellectual property, design patents are a bit like suspenders or cocktail hats. They always appeal to a core of independent-minded and devoted individuals, but only occasionally does everyone else sit up and pay attention. The recent en banc decision of the U.S. Court of Appeals for the Federal Circuit in Egyptian Goddess v. Swisa, a case involving a patented mani/pedi nail buffer design, is one of those moments.
Design patents differ from their better known relatives, utility patents or simply "patents," in that they can protect a "new, original, and ornamental design for an article of manufacture." In other words, they apply to the appearance of an invention rather than its useful aspects.
This might sound perfect for new fashion designs -- but for the fact that it's not always easy for a design to qualify as "new," it's fairly expensive to get a design patent and almost always requires legal assistance, and it takes too long to be useful for most fashion designs. (As of today, the U.S. Patent Office reports that the average pendency of a patent application is 24.6 months. Even if design patent applications might be a bit quicker, over 2 years is an interminable wait in a seasonal industry.)
Still, shoes, handbags, decorative closures, and other accessories and portable design elements have a longer lifespan than clothing designs, making design patents more plausible as a route to protection. And with the Federal Circuit's new ruling, which simplifies the process of proving infringement, a trickle could become a trend.
Prior to the Egyptian Goddess decision, a design patent holder claiming infringement was subject to two separate tests: the "ordinary observer test" and the "point of novelty" test. The court has now overruled previous decisions to hold that only one test, a clarified version of the ordinary observer test, should be applied. The ordinary observer test, which dates back to a nineteenth-century case involving silverware patterns, Gorham Co. v. White, 81 U.S. 511 (1871), provided that "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."
Subsequent disputes raised concern that an ordinary observer could be deceived not because the patented design had been copied, but because both the patented design and the allegedly infringing design were similar to earlier designs. Thus, in Litton Systems, Inc., v. Whirlpool Corp., 728 F.2d. 1423 (Fed. Cir. 1984), the point of novelty test was born. (While defendent Swisa tried to connect the test back to another nineteenth-century Supreme Court case, the Federal Circuit wasn't buying.) Under the point of novelty test, a later design would only constitute infringement if it incorporated the element or elements of the patented design that distinguished the patented design from prior art. This worked fairly well for designs with only one distinguishing feature or point of novelty, but not so well for those with multiple points of novelty, since defendants could argue that their designs didn't copy all of those elements.
The court in Egyptian Goddess thus concluded that the best approach would be a single ordinary observer test -- but one hypothesizing an ordinary observer who is familiar with the prior art. There can be no deception and thus no infringement unless an accused design actually copies the patented design (as opposed to copying earlier elements or combinations of elements), but only one test is necessary.
In addition to simplifying the test for infringement, the Federal Circuit also essentially acknowledged that, when it comes to describing a design, a picture is worth a thousand words. Trial courts, which were previously required to engage in "claim construction" as they do in utility patent cases by providing a "detailed verbal description" of what exactly is protected, need no longer do so. Instead, it's up to the trial court to decide how much verbal description is necessary either to explain its own analyis or to guide a jury. According to the court, this change avoids placing undue emphasis on one particular design feature or on the individual features as opposed to the design as a whole, as depicted in the patent drawings.
Unfortunately for Egyptian Goddess, Inc., this nailbiter of a design patent tale didn't change the outcome of the dispute. The accused design doesn't infringe, either under the old tests or the new one. But as a design patent decision, Egyptian Goddess is likely to rule for the foreseeable future.
P.S. Counterfeit Chic correspondent and design devotee Perry Saidman forwarded information regarding a Federal Circuit Bar Association panel on the case taking place tomorrow, Tuesday, Oct. 7, at noon. Tune in via the internet or, if you're in D.C., join the panel for lunch. (Your favorite law prof has a prior commitment to
planning an estrogen-fueled global takeover participating in the Newsweek Women and Leadership Conference, but I'll be dreaming of design patents anyway.)