Articles

Patent infringement analysis entails two steps: the first step is known as claim construction or interpretation and requires the Court to determine the meaning and scope of the patent claims; the second step requires the fact finder to compare the properly construed claims to the device or product accused of infringing. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996).

Patent infringement for a design patent involves the same two-part test as for utility patents: “(1) the court first construes the claim to determine its meaning and scope; (2) the fact finder then compares the properly construed claim to the accused design.” Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir. 2020) (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)).

“[D]esign patents ‘typically are claimed as shown in drawings,’ and claim construction ‘is adapted accordingly.'” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (quoting Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007)). “Words cannot easily describe ornamental designs.” Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir.
2016).

Therefore, “the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design” and instead allow the design to be represented by its illustration. Egyptian Goddess, Inc., 543 F.3d at 679.

US Design Patent — 15 year term measured from issue date; no maintenance fee

EU Design Registration — 5 year term measured from filing date, renewable 5 times, at increasing fees, up to 25 years

Japanese Design Registration — 25 year term measured from filing date (increased in 2020 from 20 years)

Korean Design Registration — 20 year term measured from filing date

Chinese Design Patent — 15 year term measured from filing date

All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.” Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348–49 (Fed. Cir. 2016).

An inventor under the patent laws is the “person or persons who conceived the patented invention.”  C.R. Bard, Inc. v. M3 Sys., 157 F.3d 1340, 1352 (Fed. Cir. 1998)

An inventor may “use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent.” Ethics, Inc. v. United States Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998).

One may not qualify as a join inventor by “merely assisting the actual inventor after conception of the claimed invention.” Id.

Each contributor need not make the same type, or amount, of contribution to the invention. Id.

Under 35 U.S.C. § 256, a district court may order correction of inventorship when it determines that an inventor has been erroneously omitted from a patent.

An alleged joint inventor must show that he contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim, and that these contributions arose from “some element of joint behavior, such as collaboration or working under common direction” with the other inventor(s). Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371 (Fed. Cir. 2020).

Generally, if a design was created in the U.S., it requires a foreign filing license before it can be filed in a foreign IP office.

A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country or in a foreign or international intellectual property authority if the invention was made in the United States, and an application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed; or no application on the invention has been filed in the United States.

A foreign filing license is generally granted on the filing receipt of a U.S. design patent application. A request for a foreign filing license can be requested by fax.

AI Search

In 2025, the USPTO launched DesignVision, the first artificial intelligence (AI)-based image search tool available to design patent examiners providing centralized access and federated searching of design patents, registrations, trademarks, and industrial designs from over 80 global registers, and returns search results based on, and sortable by, image similarity.

Inventorship

In Thayler v. Vidal, the CAFC agreed with the USPTO interpreting the Patent Act definition of “inventor” at 35 U.S.C. 100(f) to require a natural person.

On November 28, 2025, the USTPO issued Revised Inventorship Guidance for AI-Assisted Inventions, which rescinds earlier guidance, applies to design patents, and refocuses the inventorship inquiry around conception as the touchstone of invention – whether the natural person possessed knowledge of all the limitations of the claimed invention such that it is so “clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.”

Under now-revoked USPTO Guidance from 2024, AI-assisted designs were considered patentable where human inventors contribute in some significant manner to the conception (definite and permanent idea of the complete and operative invention as it is thereafter applied in practice) or reduction to practice of the invention and make a contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention; a person who takes the output of an AI system and makes a significant contribution to the output to create an invention could be a proper inventor.

Prior Art

Whereas AI-generated designs might not be patentable, for lack of inventors, it nevertheless could be prior art if publicly accessible.