Design patents have always represented a curious form of intellectual property protection. Unlike with utility patents, there is no prerequisite of a useful function. Unlike with copyright rights, in an infringement action there is no defense of independent creation. Finally, unlike with trade dress rights, there is no issue of secondary meaning. Nevertheless, as with other types of patents, the owner of a design patent is entitled to prevent unauthorized persons from making, using, offering for sale, selling, and importing products that contain the patented design.
The potential value of design patents has led many competitors to challenge their validity both in court and at the U.S. Patent and Trademark Office (USPTO). As with utility patents, the grounds for invalidating a patented design include both lack of novelty and obviousness. The novelty analysis is often straightforward, but as a recent decision from the U.S. Court of Appeals for the Federal Circuit (CAFC), Campbell Soup v. Gamon Plus, 2019 WL 4678100 (Fed. Cir. Sept. 26, 2019), illustrates, determining whether a design is obvious over the prior art can be challenging.
Patentability of Designs
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