Design patents occupy a peculiar niche in intellectual property law. For instance, they are different from copyrights in that an accused infringer has no defense of independent creation, different from utility patents in that there is no prerequisite of a useful function, and different from trade dress in that there is no issue of secondary meaning. Design patents also contain only one claim, which makes the applicant’s drafting task particularly challenging—she must strike a delicate balance between claiming broad protection and establishing novelty. Furthermore, in litigation, the design patent plaintiff must satisfy two tests of infringement: the ordinary observer and point of novelty tests. This article provides an overview of important aspects of design patent prosecution and litigation that will enable an attorney to increase the value of a client’s creative designs.
Scott D. Locke, Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion and Luxury Goods Companies, 5 J. Marshall Rev. Intell. Prop. L. 40 (2005)