A case may be made that recent court decisions have made obtaining and enforcing a utility patent more difficult. Conversely, recent court decisions have been largely favorable as to design patents. Although design patents protect ornamental features while utility patents cover functional aspects of an invention, this article suggests that design patent protection deserves greater consideration.
Design patents are on the rise. This is largely due to the fact that the burden on design patent owners to prove infringement has been reduced, courtesy of the Federal Circuit's 2008 decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), cert. denied 129 S.Ct. 1917 (2009) that changed the test for design patent infringement, by dropping one of two previously required infringement tests. In particular, the Federal Circuit's point-of-novelty test was dropped in favor of the Court's ordinary-observer test. (Although the Federal Circuit also suggests that a test similar to the point-of-novelty test should be taken into consideration during the ordinary-observer test.) The patent in Egyptian Goddess was directed to the ornamental features of a nail buffer. While not a typical product for a design patent, the district court held that the infringer did not demonstrate the patent to be invalid. The Federal Circuit affirmed the finding of non-infringement.
In contrast, ongoing developments in patent law have been less favorable to owners of utility patents. The 2007 U.S. Supreme Court decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007) has changed the tests applied by the USPTO when deciding to grant a patent, and by the US courts when deciding whether to invalidate a patent. The ruling has created great consternation within the patent community, raising concerns that it would be very difficult to obtain a patent, and that issued patents en masse could be held invalid. The KSR decision considered a claim directed to a combination of an electronic sensor with an adjustable automobile pedal so that pedal's position can be transmitted to a computer that controls the throttle in the vehicle's engine. The Court held that the claim was invalid as a combination of familiar elements according to known methods which does no more than yield predictable results.
It remains unresolved whether the US Supreme Court intended KSR's patentability analysis to apply to design patents. The Federal Circuit declined to address this issue in its 2009 decision in Titan Tire Corp. v. Case New Holland, Inc., 556 F.3d 1372, 1384 (Fed. Cir. 2009). That case was directed to a design patent covering the ornamental features of a tractor tire. The Federal Circuit indicated that the issue of whether it was necessary to consider the KSR analysis was not relevant. Instead, the issue of obviousness, in the context of a preliminary injunction, was affirmed as to the district court's Durling analysis (Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)). The Titan Tire Corporation decision suggests that perhaps the analysis of KSR, which was directed to a utility patent, may not be applied to design patents.
Make no mistake. Design patents are a potent tool and should be given serious consideration as a means of intellectual property protection for a vast array of products, provided there is an ornamental aspect of the invention which is not dictated by function.
Vol. 53, June 2010