設計專利保護範圍及侵害之認定—以美國法為主

• Main Authors: Liao, Pei-ju, 廖珮如
• Other Authors: Chen, Wen-yin
• Format: Others
• Language: zh-TW
• Published: 2011
• Online Access: http://ndltd.ncl.edu.tw/handle/09997367822894124933

碩士 === 國立中正大學 === 財經法律學研究所 === 99 === Summary Industrial design is a combination of applied art and applied science, whereby the ergonomics, usability and aesthetics of products may be improved for marketability and production. In U.S.A., industrial design is protected under patent law as “design patent” that make exclusive the visual design of objects. Unlike utility patents, design patents are generally not accompanied by verbal claims. Rather, each design patent can only contain a single claim, represented by drawings. The United States Supreme Court and the Courts of Appeals had been making several influential decisions in design patent infringement litigation. The judicial decisions established the standards for design patent infringement, which is different from the standards for utility patents infringement. In 2008, the United States Court of Appeals for the Federal Circuit overturned design patent precedents in its en banc decision in Egyptian Goddess, Inc. v. Swisa Inc. Prior to Egyptian Goddess, courts had been applying a two-prong test to determine design patent infringement: (1) the ordinary observer of Gorham v. White and (2) the point of novelty test of Litton Systems, Inc. v. Whirlpool Corp. Egyptian Goddess eliminated the point of novelty test and focused on the ordinary observer test to determine design patent infringement. The Federal Circuit modified the ordinary observer test and held that it shall be the only test in determining design patent infringement. The author believes that the purpose of defining the scope of patent protection is to balance the interests between the patentee and the public, and the scope of exclusive right shall be corresponding the novelty in the patented device which distinguishes from the prior art. When comparing claimed design and accused design for establishing design patent infringement, the court shall ponder the point of novelty of the design patent. However, the scope of design patent protection is not equal to the point of novelty. Besides, if applying the point of novelty test to the cases in which the design at issue claimed multiple points of novelty, the precedents showed that the courts identified all the points of novelty and analyzed each of them separately. The situation that the courts improperly focus on a single point of novelty instead of the entire design violates the rationale of design patent law. The court in Egyptian Goddess noted that examining the novel features of the claimed design can be an important component of the comparison of the claimed design with the accused design and the prior art, and such a comparison “must be conducted as part of the ordinary observer test, not a separate test.” It redefined that the ordinary observer test was to determine “whether an ordinary observer, familiar with the prior art, would be deceived into believing that accused design was the same as patented design.” The Federal Circuit’s en banc opinion of Egyptian Goddess is more appropriate and meets the rationale of design patent law. We may take it as a lesson to our own judicial practice.