Duhaime's Law Dictionary

Point of NoveltyTest Definition:

A test to assist in determining whether a product infringes upon an existing design patent; whether the accused product appropriates the novelty of the patented one.

Related Terms: Patent, Industrial Design

In a dispute over a design patent for an ice hockey skate, Torspo sued Kor, and the case came before Justice Patrick Schiltz of the United States District Court (Minnesota).

"To prove infringement, Kor will need to establish that Torspo's accused skates incorporate the design claimed in (Kor's) patent.... Determining whether a design patent is infringed requires (1) construction of the patent claim, and (2) comparison of the construed claim to the accused product.

"An accused product incorporates a claimed design, and therefore infringes a design patent, only if two tests are met. First, under the ordinary observer test, the accused design must so resemble the claimed design that an ordinary observer would confuse the two. Second, under the points of novelty test, the accused design must also appropriate the novelty which distinguishes the patented design from the prior art.

"The Federal Circuit has cautioned that these tests are distinct, and that it is legal error to merge the two tests, for example by relying on the claimed overall design as the point of novelty.

"The first step in conducting the point-of-novelty test is identifying precisely what the points of novelty are. A point of novelty is an element of the claimed design that distinguishes it from the prior art. The patentee bears the burden of establishing a claimed design's points of novelty. To meet this burden, the patentee must introduce into evidence, at a minimum, the design patent at issue, its prosecution history, and the relevant prior art references cited in the prosecution history; and must present, in some form, its contentions as to points of novelty. Whether a particular design element is a point of novelty is a question of fact. A determination of the differences between the patented design and the prior art is not especially different from the factual determinations that district courts routinely undertake on other issues, such as obviousness."

In Bernhardt, Justice Bullock of the United States District Court (North Carolina) wrote:

"The points of novelty for design patents are those features that distinguish the design over the prior art. In determining the points of novelty, a court may consider the prior art before the patent examiner during prosecution as well as prior art that was not before the examiner during the prosecution of the design patent application. A plaintiff must prove that the accused design appropriated the novelty of the patented design. The purpose of the point of novelty test is to focus on those specific aspects of a design which render the design different from prior art designs."


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