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日本語版 Article information Article type: Reports and activities Category: Designs Topics: Similarity of designs, Examination and appeal practice First published on this site: 2026-10-11 Display/classification checked: 2026-10-11 Trial and Appeal Practitioners Study Group Report 2024 — Theme 5 (Designs) [Similarity of designs: the person whose perspective governs] Identifying the relevant person takes account of the nature, purpose and manner of use of the article embodying the

1. Identification of the essential portion The container shape (a rounded rectangle) and lid configuration already existed and were not treated as distinctive innovations (essential portions). Because the product attaches to a wall, consumers focus on the rear magnetic part to see whether it attaches securely.

US design patent infringement assessment originates in the ordinary observer test established by the Supreme Court's 1871 Gorham judgment. From the 1984 Litton Systems judgment onward, the CAFC introduced the point of novelty test alongside it. This required the accused design to possess the novel design features (points of novelty) distinguishing the patented design from prior designs.

1. A distinctive feature of the US design system: The article's use is disregarded US design law is part of patent law (35 U.S.C. §171), and patent principles apply. Its most significant feature is that the article's use stated in the claim preamble is, in principle, not limiting.

1. Four requirements for a whole design and a partial design to be found similar (Design Examination Guidelines) (1) Common use and function: The uses and functions of the articles, etc. of both designs must be identical or similar. (2) Correspondence between the part and the whole: The use and function of the whole design and those of the “claimed part” of the partial design must be identical or similar.

[Storage container] (Presiding Judge Hibiki Shimizu) *Not similar (the design right holder lost on reversal). <Identification of the essential portion>

[Packaging container / Partial design] (Presiding Judge Masuda) ★ A judgment clarifying whether a partial design and an overall design can be registered as related designs, and the difference in the scope of comparison in assessing novelty!! <Comparison with the principal design: related design, Article 10(1)>