Design Patent Law

Design Patent Infringement

The ordinary observer test, broken-line claiming, and total-profits damages.

Quick Answer

Design patent infringement is tested by whether an ordinary observer, familiar with the prior art, would be deceived into thinking the accused design is the same as the patented design (Egyptian Goddess, Fed. Cir. 2008). Damages can include the infringer's TOTAL PROFITS from the entire article under § 289 — the remedy that drove the $1B Apple v. Samsung jury verdict.

The Test

Egyptian Goddess — Ordinary Observer Standard

Before Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008 en banc), courts used a two-part test: the ordinary observer test AND a "point of novelty" test (the accused design must have appropriated the specific novel point that distinguishes the patented design from the prior art). The en banc Federal Circuit eliminated the point-of-novelty test entirely.

Current standard: infringement exists if, in the eyes of an ordinary observer giving such attention as a purchaser usually gives, two designs are substantially the same — the accused design would deceive that observer, inducing him to purchase the accused article supposing it to be the patented design. The ordinary observer is presumed to be "familiar with the prior art" — a comparison against the prior art provides context that helps the observer identify what makes the patented design distinctive.

Old test (pre-2008)

Ordinary observer would be deceived
AND accused design appropriated the specific 'point of novelty' — both required

Current test (Egyptian Goddess, 2008)

Ordinary observer familiar with prior art would be deceived into thinking designs are the same
Prior art context informs what's novel — but no separate 'point of novelty' element

Damages

§ 289 Total Profits — The Design Patent Advantage

Unlike utility patents, design patents have a special damages remedy in 35 U.S.C. § 289:

"Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit."

In Samsung Electronics Co. v. Apple Inc. (S.Ct. 2016), the Supreme Court held that the "article of manufacture" for § 289 purposes need not be the entire end product sold to consumers — it could be a COMPONENT of the product. This partially limited § 289 for complex multi-component products (smartphones) where the design patent covers only one aspect. On remand, courts must determine which component's profits are attributable to the design patent.

§ 289 Total Profits

TOTAL profit from the relevant article — no need to prove lost profits or reasonable royalty. Can be dramatically larger than § 284 damages for popular consumer products.

§ 284 Reasonable Royalty

Same as utility patent — reasonable royalty based on Georgia-Pacific factors, or lost profits if proven. Plaintiff can choose whichever is higher.

Injunction

Four-factor eBay test applies (irreparable harm, inadequate remedies at law, balance of hardships, public interest). Design patent injunctions more common when design is the main differentiator.

§ 285 Attorney's Fees

Exceptional case standard (Octane Fitness) applies to design patent cases. Bad-faith infringement or objectively unreasonable litigation position can trigger fee award.

FAQ

How is design patent infringement determined?

Under Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008 en banc), design patent infringement is tested by the 'ordinary observer' standard: whether an ordinary observer, familiar with the prior art, would be deceived into thinking the accused design was the same as the patented design. There is no 'point of novelty' test — the prior art is used only to provide context for the ordinary observer's comparison, not as an independent element to satisfy. The observer is assumed to have some knowledge of the prior art in the field.

What is the 'ordinary observer' in design patent cases?

The ordinary observer is a hypothetical purchaser or user who is familiar with the prior art but is not an expert trained to discriminate between designs. When comparing designs against a background of prior art, differences that might be overlooked by a casual observer may become significant. In Egyptian Goddess, the Federal Circuit eliminated the 'point of novelty' test (which required separately identifying the novel point and proving the accused design incorporated it) and unified the analysis around the single ordinary observer test.

Can a design patent cover only part of a product?

Yes — design patents can protect only a portion of an article through the use of broken lines (dashed lines) in the drawings. Solid lines in design patent drawings are claimed; broken lines indicate portions that are not claimed. Apple's design patents for the iPhone use broken lines extensively to claim only the ornamental features of the front face without claiming the entire device shape. The scope of a design patent is determined by what's shown in solid lines.

What damages are available for design patent infringement?

Design patent infringement has two distinct remedies not available for utility patents: (1) 35 U.S.C. § 289 TOTAL PROFITS — an infringer who applies a patented design to an 'article of manufacture' must pay the patent holder the infringer's TOTAL PROFIT from the sale of that article; (2) 35 U.S.C. § 284 reasonable royalty/lost profits (same as utility patents). Samsung v. Apple (S.Ct. 2016) held that the 'article of manufacture' for § 289 purposes need not be the entire end product — it can be a component. On remand, the jury can apportion profits to the relevant component.

How are design patents different from utility patents in terms of scope?

A utility patent protects the functional aspects — how an invention works. A design patent protects only the ornamental, non-functional appearance — how it looks. The same product can have both design and utility patent protection. Design claims consist entirely of drawings — there are no written claims defining scope by words. The scope is whatever is shown in solid lines in the figures. Design patent prosecution is much shorter (typically 18–24 months, no office actions common), term is 15 years from grant for post-AIA design patents, and maintenance fees are not required.