The elusive primary benchmark for assessing the non-obviousness of design patents


Design patents have always represented a curious form of intellectual property protection. Unlike utility patents, there is no prerequisite for a useful function. Unlike copyright, in an infringement action there is no independent creation defense. Finally, unlike trade dress rights, there is no issue of secondary significance. However, as with other types of patents, the holder of a design patent has the right to prevent unauthorized persons from making, using, offering for sale, selling and importing products containing patented design.

The potential value of design patents has led many competitors to challenge their validity both in the courts and with the United States Patent and Trademark Office (USPTO). As with utility patents, the grounds for invalidation of a patented design include both lack of novelty and obviousness. The novelty analysis is often straightforward, but like a recent decision by the United States Court of Appeals for the Federal Circuit (CAFC), Campbell Soup vs. Gamon Plus, 2019 WL 4678100 (Fed. Cir. September 26, 2019), illustrates, it may be difficult to determine if a design is obvious compared to the prior art.

Patentability of designs

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