Somewhat analogously to the nuances between the standards for trademark registration versus infringement, which are sometimes confused, the patentability standard for design patents is different from the design patent infringement test. In a recent Federal Circuit decision, High Point Design LLC et al. v. Buyers Direct, Inc., the Federal Circuit provided some helpful guidelines for evaluating patentability for design patents, particularly regarding “obviousness” (merely obvious ornamental designs are not patentable).

To highlight the differences between the respective patentability and infringement standards for design patents, which pertain to the ornamental “looks” of a product, it is helpful to note that the general test for design patent infringement involves an analysis of whether an “ordinary observer” (purchaser/consumer) of an accused product would be deceived into purchasing one design supposing it to be the other. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).

With regard to patentability, in a case involving designs of slippers, the Federal Circuit in High Point Design LLC et al. v. Buyers Direct, Inc. held that the District court incorrectly used an “ordinary observer” standard in evaluating patentability of slipper designs when the lower court determined that the accused designs presented a “precise look that an ordinary observer would think of as a physical embodiment of the [design patent] drawings.” In contrast, the Federal Circuit explained that correct approach is to employ an “ordinary designer” standard, in which the fact finder first identifies a single reference that is visually “basically the same” as the patented design, and then identifies other prior art that appropriately modifies the primary reference to create the “same overall visual appearance” as the claimed design — all in the context of evaluating whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.