Egyptian Goddess: Rebooting Design Patents and Resurrecting Whitman Saddle
James Juo · SSRN Electronic Journal · 2009
To infringe a design patent, it is well established that the accused design and the patented design must appear substantially the same to an “ordinary observer.” In recent years, however, the law has become ever more convoluted and confusing with respect to an additional test for infringement known as “point of novelty.” In Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit reinterpreted its controlling precedents, and abolished “point of novelty” as a separate test, leaving the ordinary observer test is the sole test for design patent infringement. Lifting the burden of having to prove a separate point of novelty test for design patent infringement should strengthen design patents, especially those that have been drafted with careful attention to the novel ornamental features to be protected. In returning to the guidance of the Supreme Court’s early decisions in Gorham Manufacturing Co. v. White and Smith v. Whitman Saddle, the Federal Circuit has signaled a more flexible approach to considering prior art in the infringement analysis for design patents.