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Part A: Determine if the design patent is active
The first part of the analysis is a determination of whether the patent, which the product is possibly infringing upon, is active. “[D]esign patents resulting from applications filed on or after May 13, 2015 have a 15 year term from the date of grant. However, patents issued from design applications filed before May 13, 2015 have a 14 year term from the date of grant.”[1] The date of grant is found in the upper right hand corner of the published patent, written as the “Date of Patent.”
A design patent may have a shorter term if there is a terminal disclaimer. A terminal disclaimer occurs when the term of the patent ends prematurely giving the patent rights to the public. Notice of a terminal disclaimer can be found on the upper left hand part of a published patent. Also, in order to double check a terminal disclaimer, in case a terminal disclaimer was made after the publication of the patent, a terminal disclaimer should be checked on Public Pair[2] under the Image File Wrapper tab with the possible existence of a document with the document description of “Terminal Disclaimer Filed,” which will contain a terminal disclaimer if one exists.
Some adjustments in the patent term, which affect other types of patents, do not affect design patents. “Since the term of a design patent is not affected by the length of time prosecution takes place, there are no patent term adjustment provisions for design patents.”[3] This is different from utility or plant patents, where the patent term can be adjusted based on delays during the application process.[4] Also, design patents do not require maintenance fees, which are required for utility patents.[5] A utility patent is no longer active if maintenance fees are not paid,[6] although this does not affect design patents.
Part B: Compare the product in question to the design patent
Once it is determined that the design patent is still active, then there is a comparison of the accused product to the design patent. During the comparison there are two steps.
The first step is to construe the scope of the design patent,[7] which means determining what the patent is protecting. A design patent has one written claim and as many drawings as necessary to show the design. The claim is usually very simple, but gives a general description of what the design patent is protecting. The drawings will show what is protected in detail. When looking at the drawings, if there is a portion of a drawing that has broken lines, that portion is not protected in the patent, but gives a reference to surrounding environment or the boundary of the design which is not included as part of the design. The surrounding environment means, something else near the design. Using a design patent related to table legs as an example, if the legs to a table are in solid lines and the top of the table is in broken lines then the top of table is not part of the claimed design. If there is a broken line between the legs of the table and the top of the table then that is a boundary of the design, but that element, or line, is not part of the design.
The second step in the comparison is to compare the accused product to the claimed design as construed.[8] The comparison of the accused product to the claimed design will be done under the “ordinary observer test.”[9] Under the ordinary observer test, an accused product infringes a design patent if in the eye of a hypothetical ordinary observer the two designs are substantially the same, such that the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.[10] This comparison by the hypothetical ordinary observer will be “comparing the patented design with the article's overall appearance.”[11] “[T]he patented and accused designs need not be identical in order for design patent infringement to be found.”[12] There can be minor differences and still infringement. The comparison should be “evaluated in the context of the claimed design as a whole, and not in the context of separate elements in isolation.”[13] It is improper to do “an element-by-element comparison.”[14] Although small differences can have an effect on how the hypothetical ordinary observer views the overall appearance. The hypothetical ordinary observer will look at the claimed design and the accused product “giving such attention as a purchaser usually gives.”[15] “The ordinary observer is considered to be familiar with prior art designs, and when the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.”[16] Prior art designs are the designs that are similar to the claimed design and that existed before the claimed design.
References:
[1] MPEP 1505.[2] Public Pair is a USPTO website which shows the prosecution history of the patent, which includes the application documents and communication between the applicant and USPTO, among other information related to the patent. Public Pair is available at https://portal.uspto.gov/pair/PublicPair.[3] MPEP 2710.[4] Id.[5] 35 U.S.C. 41(b)(3).[6] 35 U.S.C. 41(b)(2).[7] Curver Luxembourg v. Home Expressions Inc., 938 F.3d 1334, 1338 (Fed. Cir. 2019).[8] Id.[9] Id.[10] Id.[11] Hafco Foundry & Mach. Co. v. GMS Mine Repair & Maint., 2018-1904, at *10 (Fed. Cir. Mar. 16, 2020)[12] Id. [13] Id. [14] Id. [15] Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019)[16] Id.
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