SW Legal studies in Business

Test for Design Patent Infringement Simplified to Ordinary Observer Rule

Federal Circuit abandoned a dual test for infringement of design patents that it had used for 24 years and returned to a one part test. Courts should look to see if an ordinary observer, familiar with the prior art, would see imitation.

Topic Intellectual Property
Key Words

Patents, Design Patent, Test, Infringement

C A S E   S U M M A R Y

EGI sued Swisa for infringing on EGI’s design patent for a fingernail buffer that consists of a rectangular, hollow tube with a square cross-section and buffer surfaces on three of its four sides. The trial court upheld the design patent but found Swisa had not infringed with its nail buffer, which was similar but has buffer surfaces on all four sides. EGI appealed.


Affirmed. An ordinary observer familiar with prior art would not be deceived into believing that the Swisa buffer was the same as the patented EGI buffer. [Note: This case is important because it is a return to an old rule by the Federal Circuit regarding design patents. The test that is to be used is what an “ordinary observer” would recognize as infringing in two competing designs. Design patents generally cover the look and feel of a product, not detailed internal working mechanisms. For a number of years the court had also required the use of a “point of novelty” test. That made infringement more difficult to prove in design patent cases. The simpler rule means the focus is on what the product looks like to an “ordinary observer” who has some familiarity with the prior art. This is expected to result in stronger legal support for design patents.]

Citation Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir., 2008)

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