In a decision handed down this week, the Court of Appeals for the Federal Circuit (CAFC) revised what is needed to establish infringement of a patent on an ornamental design.  In a case entitled Egyptian Goddess v. Swisa, Inc. (Fed. Cir. No. 2006-1562, 9/22/08), the court threw out the so-called “point of novelty” test and held that the only test that should be applied is that established by the U.S. Supreme Court over 135 years ago in Graham Co. v. White, 81 U.S. 511, 1871.

Under Graham, “If in the eye of an ordinary observer, given the attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  This has been referred to as the “ordinary observer” test.

Beginning in 1984, the CAFC added a further requirement to a finding of infringement that required that the accused infringing design also embody the feature that comprised “the point of novelty” of the patented design, i.e., the aspect that distinguished the patented design from the prior art.

In the Egyptian Goddess case, the CAFC concluded that the “point of novelty” test should no longer by used in the analysis of a claim of design patent infringement and that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed.  The CAFC went on to say, however, that in applying the “ordinary observer” test, an examination of any novel feature of the patented design must also be considered, i.e., the prior art must be taken into account.

Even though the Egyptian Goddess case attempted to lay the “point of novelty” test to rest, the mummy still stalks the earth.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com