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Design Patent Perspective:
The Ordinary Observer Test - Part 3

By Robert G. Oake, Jr.

Robert G. Oake, Jr. specializes in design patent litigation.  He is a registered patent attorney and is board certified as a civil trial advocate by the National Board of Trial Advocacy.  Robert earned a master of laws degree in patent and intellectual property law (with highest honors) from The George Washington School of Law, a general master of laws with concentrations in international business and technology transfer law from the SMU School of Law, and a J.D. from South Texas College of Law, where he was school moot court champion his first year and state moot court champion his third year.

Robert served as lead trial and appellate counsel for Egyptian Goddess, Inc. in Egyptian Goddess v. Swisa (en banc).

Robert lives and works in Allen, Texas where he is raising three sons with his wife Kim.  He enjoys coaching his sons’ baseball teams and playing the guitar.  Robert maintains legal websites at and  He may be contacted at

In parts 1 and 2, we reviewed the history of the ordinary observer test and the reasons for the rise and fall of the separate “point of novelty” test. We now are prepared to examine the current status of the ordinary observer test and to contemplate its future.

Gorham v. White1 is the most authoritative case on the ordinary observer test. In the words of the Supreme Court: “if, in the eye of an ordinary observer, giving such 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.” The primary purpose of the test is to protect the market the design patent was granted to secure.

Since the purpose of the test is to protect the market, the test focuses on potential purchasers, which in turn means the objective standard is that of an ordinary observer and not that of an expert. The comparison is made by viewing each design as a whole and not by comparing individual design elements without considering their effect on each entire design. Even if an expert can detect differences in detail when viewing the patented and accused designs side by side, if an ordinary observer is deceived into thinking the accused design is the patented design because ...

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