Putting Designs to the Test - by Michael Shimokaji
In Egyptian Goddess, the Federal Circuit examined the rightful place and purpose of the new two-part design patent infringement analysis. After examining Gorham and the related case of Smith v. Whitman Saddle, 148 U.S. 674 (1893), the Federal Circuit held that there is no place within design infringement analysis for a point of novelty test, and the only test that should be applied is the ordinary observer test. In its decision, the court, sitting en banc, stated specifically that the cases that the point of novelty test was based on "are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art." In fact, the court expressly declared its intention to overrule and replace the point of novelty test in stating that the test "should no longer be used in the analysis of a claim of design patent infringement." The court continued: "the 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed." However, while the courts have erased the point of novelty test from the books, another issue remains to be concretely decided. Contact info@shimokaji.com for more information.
