Key Takeaways

  • Design patent infringement occurs when another product’s appearance is substantially similar to a patented design in the eyes of an ordinary observer.
  • Courts use the Ordinary Observer Test and sometimes a Three-Way Comparison Test to determine substantial similarity.
  • Remedies for infringement include damages, injunctions, and recovery of profits attributable to the infringing design.
  • Defenses may include invalidity, functionality, independent creation, or non-infringement based on distinct overall visual impressions.
  • Preventive steps, like comprehensive prior art searches and product design modifications, can help avoid infringement claims.
  • The Apple v. Samsung case reshaped how damages are calculated, limiting awards to the relevant component, not the entire product.

What Is Design Patent Infringement?

Design patent infringement occurs when a company or person violates a design patent's terms. A design patent protects a manufactured product's ornamental features. To claim infringement, you must prove that an ordinary observer wouldn't be able to tell the difference between a patented object's design and an accused object's design when both designs are side by side.

High-Profile Cases of Design Patent Infringement

Design patents have existed as long as utility patents, patents that protect a product's unique functions. Courts have begun awarding the plaintiff damages by making the standard for proving that infringement on a product's ornamental features has taken place. In 2013, the popular electronics manufacturer, Apple, sued Samsung Electronics Co. Apple claimed that Samsung violated Apple's design patent on its iPhone design.

Apple brought up violations of certain features protected under the iPhone's design patent. The jury favored Apple in this case, and Apple received an award of $290 million in damages.

After the Verdict

In late 2016, the Apple v. Samsung design patent infringement case came to the U.S. Supreme Court. In the case, Apple argued that damages should have been paid on the profit from the phone. As part of a unanimous decision, the U.S. Supreme Court justices overturned the earlier decision made in Apple's favor. The court's opinion stated that an award for damages for design patent infringement may be restricted to profits that a company can attribute to a part of an article of manufacture, not the entire product itself.

How Does This Case Impact Design Patent Infringement Today?

Design patent infringement can be a real issue for many inventors. When you bring a court case against someone who violates your design patent, you must show the value of your design to present a stronger case.

A strong case should include three major elements:

  1. The scope of the design protected in the design patent
  2. The design's importance to the overall product
  3. The design's uniqueness as related to the overall product

Damages are another part of a design patent infringement case. Figure out how much money you might have lost to the person or company that violated your design patent. Coming up with a reasonable amount of money loss can help a jury understand the financial hardships you faced.

Tests to Determine Design Patent Infringement

The two standard tests for design patent infringement are:

  • "Ordinary Observer"
    • This test looks at whether an ordinary person (not someone who is a design expert) can see a definite similarity in the designs of two objects. Think of someone standing in a store trying to decide between two items to buy. If that person can't tell a difference when looking only at the outside design, you may have a case for design patent infringement based on substantial similarity.
    • An "ordinary observer" is important because a patent holder can't look at something objectively. However, an outside observer who has no training in design can look at objects without any bias.
  • "Three-Way Visual Comparison Test"
    • The three-way visual comparison test uses three different examples for comparison. You place the patented design on one side, the accused design in the middle, and other designs that look like the closest prior art (designs produced before a patent filing date) on the other side.

Since these tests rely so much on how any one person looks at something, you could find your results of these tests challenged in court.

How Courts Determine Design Patent Infringement

Courts primarily apply the Ordinary Observer Test, established in Gorham Co. v. White (1871), which asks whether an ordinary observer familiar with prior designs would find two designs substantially the same. If the observer is deceived into purchasing one product believing it to be the other, infringement exists.

In modern cases, courts may also use a Three-Way Visual Comparison—comparing the patented design, the accused design, and prior art—to focus on the novel ornamental aspects rather than functional or previously known features.

Additionally, context matters: the scope of protection depends on how detailed and unique the design is. A broad, simple design (like a basic shape) receives narrower protection, while intricate ornamental features typically receive broader protection.

Courts often reference precedent from Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008), which refined the test by removing rigid “point of novelty” analysis in favor of a holistic visual assessment.

Why Is Design Patent Infringement Important?

When you create a product design, you need to know if you're infringing on someone's intellectual property for a design patent. If you hold a design patent, watch for others who might try to copy your design.

When inventors or designers are thinking about applying for a design patent, they should look for designs that already exist. Some people choose to do this research on their own. You may be limited to how much information you can find, though. Patent lawyers can help you make more detailed searches.

If you have a unique design for a product, you need to make sure no patent already exists on a similar product. If that design does, you'll spend too much time and money moving forward with your idea. You may also put yourself at risk of infringing on a design patent. Make sure you search for prior art.

Those who hold design patents must also watch out for potential infringements. If a company or person violates your design patent, you have legal rights.

Preventing Design Patent Infringement Before Product Launch

Avoiding design patent infringement begins with comprehensive prior art searches. Before finalizing a product, designers should:

  • Search the USPTO database for existing design patents.
  • Compare both overall visual impression and key ornamental elements.
  • Modify any design elements that create substantial similarity with existing patents.
  • Document the design process to show independent creation in case of dispute.

Companies often use freedom-to-operate (FTO) opinions from patent attorneys to evaluate whether their products could infringe existing design rights. This can be crucial for mitigating future litigation risk and ensuring compliance with intellectual property laws.

Working with an intellectual property attorney on UpCounsel can help you perform these searches effectively and obtain professional guidance before investing in production.

What Should You Think About Before Taking Legal Action for Design Patent Infringement?

Look at the merits of the claim

The merits will support your case in court. Keep detailed records and present your case in a way that's easy to understand.

Ask yourself if your claim is valid

You will need to support your claim that someone else infringed on your design patent. You may find help working with an independent design expert who will support your claim. For some high-profile design patent infringement cases, independent experts played major parts in the cases' outcomes.

You should also review the value of the design. Include details about how valuable that design is to your customers. Online comments, reviews, letters, or notes will help prove design value.

Review changes to past court rulings and standards

Before taking legal action, do a thorough prior art search. As a result of the Apple v. Samsung case, the U.S. Supreme Court also took away several earlier standards, including non-trivial advance and point of novelty. Non-trivial advance focuses on how significant changes are when they are compared against another design. Point of novelty, a test used in earlier cases, required proof that a design accused of design patent infringement has several unique aspects that set it apart from prior art.

Legal Remedies for Design Patent Infringement

If infringement occurs, the patent holder can pursue several remedies under 35 U.S.C. § 289, which allows the recovery of the total profit from the sale of the infringing product’s relevant component. Additional remedies may include:

  • Injunctions: Courts can prohibit the infringing party from further sales or use.
  • Monetary Damages: Compensation may include lost profits or a reasonable royalty.
  • Destruction of Infringing Goods: Courts can order the destruction of infringing products.
  • Enhanced Damages: In cases of willful infringement, courts may increase awards up to three times the actual damages.

The Apple v. Samsung ruling clarified that damages should be tied to the specific article of manufacture that embodies the protected design, not necessarily the entire product.

What Could Happen When You Commit Design Patent Infringement?

The penalty for design patent infringement depends on which side you hold in a case.

  • If you commit design patent infringement, a patent holder may sue you for damages. The damages might include money the patent holder lost because people bought a copied product. Damages could also include financial distress the company faced during the time the copied product was for sale in the marketplace.
  • The patent owner also receives a royalty. Role reversal is one tool used to figure out royalty amounts and damages due. Patent lawyers put themselves on the other side of the case. In doing so, they consider the opposite standpoint and what claims might be made to reduce the royalty payment. This exercise is useful to prepare to fight against a design patent infringer.

If your company infringes on a design patent, your company might be sued in court. A lawsuit could hurt your company's reputation and cause your company to lose loyal customers.

On the other side, those who are victims of design patent infringements have a few options:

  • Send a cease-and-desist letter to the person or company infringing on the patent.
  • If a company or person continues to infringe on your design patent even after you send a letter, you can consider legal action. Work with a patent lawyer with experience in design patent infringement. Your lawyer can present a case that shows exactly how a company or person infringed on your design patent.

Common Defenses to Design Patent Infringement

Defendants in design patent infringement cases may raise several defenses, including:

  • Non-infringement: Arguing that the accused product’s design is visually distinct when viewed as a whole.
  • Invalidity: Claiming the patent should not have been granted because the design was not novel or was obvious over prior art.
  • Functionality: Asserting that the design is primarily functional rather than ornamental, making it ineligible for design patent protection.
  • Independent Creation: Demonstrating that the design was created independently without copying.

Functional features cannot form the basis of infringement because design patents only protect ornamental aspects, not utilitarian ones. Courts therefore disregard elements driven purely by function when evaluating similarity.

Common Mistakes

If you don't search for patents well before producing a new design, you may commit design patent infringement. Free online resources, such as the Google Patent Search, are helpful, but you should use them as a starting point for further research.

If you're suing someone who infringed on your design patent, you have only one chance to present your information in a case. Working with a patent lawyer can ensure you have the best representation possible.

Tips for Strengthening and Enforcing Your Design Patent

Frequently Asked Questions

  1. What is the difference between design and utility patent infringement?
    Design patent infringement focuses on a product’s appearance, while utility patent infringement concerns how a product functions.
  2. Can a single component of a product infringe a design patent?
    Yes. Courts may find infringement even if only a specific component shares the patented ornamental design, provided it creates a similar visual impression.
  3. What factors do courts ignore in design patent cases?
    Courts disregard functional features, internal mechanisms, and non-visible elements not shown in the patent drawings.
  4. What happens if the infringing product was made overseas?
    Importing an infringing product into the U.S. still constitutes infringement and can be stopped by the International Trade Commission (ITC).
  5. Can two products look similar but not infringe?
    Yes. If differences in overall visual impression are noticeable to an ordinary observer, the design may be considered distinct and non-infringing.

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