Design patent infringement turns on the protected ornamental design, not simply whether two products perform the same function. The Federal Circuit’s Egyptian Goddess decision adopted the ordinary-observer test as the sole infringement test and rejected a separate point-of-novelty requirement. The comparison must be grounded in the patent’s claimed design and the relevant visual context. [1][2]
Start with the issued patent drawings
Identify the patent number, owner, term, and the design actually claimed. The commercial product may contain features not claimed in the patent or omit details shown in the drawings. A comparison of two marketing photographs alone can therefore miss the legally relevant design.
Section 171 permits patents for new, original, ornamental designs for articles of manufacture. Similar function is not enough to establish infringement, and a utility-patent claim analysis should not be substituted for the visual inquiry applicable to a design patent. [1]
Use the ordinary observer in the proper context
Egyptian Goddess explains that plainly distinct designs may be resolved without extensive prior-art comparison. In closer cases, prior art helps show what differences would be significant to an ordinary observer familiar with the earlier designs. The inquiry considers the overall appearance rather than mechanically counting matching features. [2]
For example, a shared common shape may carry less weight when many earlier products already used it. A smaller visible difference can become meaningful in a crowded design field. That does not revive the rejected separate point-of-novelty test; it informs the overall comparison.
Remedies require their own proof
Section 289 provides an additional design-patent remedy based on total profit for the relevant infringing application or sale, with a statutory minimum of $250. Profit is not the same as gross sales revenue. The statute also prevents double recovery of the same infringement profit even though other patent remedies may be available. [3]
Liability, the appropriate article of manufacture, and the amount attributable to the legally relevant remedy should be analyzed separately. Do not assume a finding of visual similarity automatically awards every dollar earned by an entire business.
Responding to a claim
- Preserve representative products, packaging, images, and sales records.
- Obtain the complete patent and relevant prosecution record.
- Collect dated prior-art designs.
- Separate noninfringement, validity, ownership, and damages questions.
For a focused comparison, see the ordinary-observer standard. earlier patent filing-date claims explains why the application’s history can matter when evaluating the asserted rights.
Primary sources
- 35 USC 171 – Patents for Designs
- Egyptian Goddess, Inc. v. Swisa, Inc.
- 35 USC 289: Additional design-patent remedy
Sources checked: October 31, 2026.