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Design Patent Perspective:
Prior Art and the Ordinary Observer Test

By Robert G. Oake, Jr.

The test for design patent infringement requires an ordinary observer to compare the patented and accused designs in light of the prior art. But just what "prior art" is considered in the comparison? Is it the same "prior art" formerly used in the now abandoned "point of novelty" test? Or has a change in the ordinary observer test also changed the scope of prior art considered? Let's begin our investigation of these questions by first understanding their importance.

In Egyptian Goddess v. Swisa,1 the Federal Circuit held that when determining whether design patent infringement exists, an ordinary observer compares the patented and accused designs in light of the prior art. Prior to Egyptian Goddess, the infringement test took place in two separate and distinct steps. First, the patented and accused designs had to appear substantially similar as a whole to an ordinary observer. Second, and independently, the accused design had to "contain substantially the same points of novelty that distinguished the patented design from the prior art."2 The separate point of novelty test proved unworkable in practice because it was difficult, if not impossible, to consistently and predictably identify points of novelty, particularly in complex designs with...

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