The Design Patent Toolkit: A Roadmap From Drawings to Damages

Intellectual Property > Patent | Published 28 October 2025 - Updated 22 November 2025 | UpLaw - uplaw.us

A design patent guards the way a product looks, not the way it works—and because the drawings are the claim, the whole right is won or lost in decisions most inventors make before they ever talk to a lawyer. This roadmap walks the field from the first figure to the final damages award, and points at each turn to the deeper resource you actually need.

Keywords: design patent, 35 U.S.C. § 171, 35 U.S.C. § 289, ordinary observer test, Egyptian Goddess v. Swisa, LKQ v. GM, Graham v. John Deere, Samsung v. Apple, design patent drawings, broken lines, article of manufacture, functionality, total profit damages, patent marking, Hague Agreement, trade dress

How to use this toolkit

A design patent protects the ornamental appearance of a useful article—its shape, its surface decoration, or a combination of the two. The silhouette of a chair, the faceted body of a perfume bottle, the arrangement of icons on a phone screen, the grille of a pickup truck: each can be claimed, and each can be defended. What a design patent does not protect is how the article functions, what it means to consumers, or the idea behind it. Those belong, respectively, to utility patents, trademark and trade dress, and nothing at all.

This is a navigation guide, not a step-by-step manual for a single filing. It maps the terrain in eight stages, from subject matter through remedies, and at each stage sends you into the deeper UpLaw article, checklist, or toolkit that treats the subject in full. Read the roadmap to orient yourself; follow the cross-references to get to work.

Three audiences will find different things here. Founders and product teams deciding whether and how to protect a design should linger on Stages 1 through 3, where the strategic choices are cheapest to make and most expensive to get wrong. Prosecution counsel preparing applications will want Stages 3 through 5, where drawings, formalities, and validity meet. Litigators asserting or defending an issued patent should start at Stage 5 and run through Stage 8, because the ground under design-patent obviousness moved in 2024 and the damages exposure is unlike anything in the rest of patent law.

A quick vocabulary reset

Four regimes crowd around the appearance of a product, and confusing them is the most common—and most costly—mistake in this area.

A utility patent protects new, useful, and nonobvious inventions: how a machine or process works. 35 U.S.C. § 101; 35 U.S.C. §§ 102–103. A design patent protects a "new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. Trade dress under Lanham Act § 43(a), 15 U.S.C. § 1125(a), protects appearance that has come to identify a source in the minds of consumers. And copyright protects original works of authorship, which can include pictorial, graphic, and sculptural features of a useful article when those features can be perceived separately from its utilitarian function. 17 U.S.C. §§ 101–102; Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).

These regimes overlap constantly. A single product can carry a utility patent on its mechanism, a design patent on its look, a copyright on a decorative surface, and eventually trade dress in its shape. Choosing among them—or stacking them deliberately—is the strategic spine of everything that follows. For the wider comparison, see UpLaw's side-by-side analysis of copyright, trademark, patent, and trade secret and The Three Pillars of IP.

The roadmap at a glance

1. Understand the scope — what a design patent covers, its subject-matter limits, and its term.
2. Choose the vehicle — design versus utility versus trade dress versus copyright, and how to stack them.
3. Master the drawings — the figures are the claim; solid lines, broken lines, shading, and views.
4. Prosecute the application — the single claim, restriction, the no-provisional rule, priority, and the Hague route.
5. Clear validity — functionality, novelty, and the new Graham-based obviousness test after LKQ.
6. Analyze infringement — the prior-art-informed ordinary observer test.
7. Capture the remedy — total profit under § 289 after Samsung v. Apple.
8. Enforce and maintain — marking, venues, and portfolio hygiene across a term with no maintenance fees.

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Stage 1 — What a design patent actually covers

A design patent claims the visual characteristics embodied in or applied to an article of manufacture. Section 171 supplies the three-word test that decides most disputes at the threshold: the design must be new, original, and ornamental. The general provisions of the Patent Act apply to designs except where the statute says otherwise. 35 U.S.C. § 171(b).

Configuration, surface ornamentation, or both

A design can take any of three forms. It can be the configuration or shape of the article—the profile of a kettle, the taper of a garden-hose nozzle. It can be surface ornamentation applied to the article—a repeating relief pattern pressed into a rubber grip, a decorative motif printed across a speaker grille. Or it can be a combination of shape and surface treatment. MPEP §§ 1502, 1502.01. The claim reaches the article's overall appearance, not any single feature in isolation.

The article requirement is doctrinally strict. A design "in the abstract"—a shape or ornament floating free of any product—is not patentable. In re SurgiSil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. 2021), held that a design claim is limited to the particular article of manufacture identified in the claim and cannot cover the design divorced from that article. The point is not academic. In SurgiSil, a design for a stippled, cigar-shaped surgical instrument survived a rejection built on a prior-art art tool (a stump used for blending charcoal) that looked nearly identical, because the claimed article and the reference were different articles of manufacture. Same shape, different article, no anticipation.

Screens, icons, and graphical user interfaces

Computer-generated icons and graphical user interfaces qualify as ornamental designs for an article of manufacture when they are claimed as applied to a display screen or a portion of one. MPEP § 1504.01(a). That is why technology companies hold enormous GUI design-patent portfolios; the "article" is the display, and the claimed design is the arrangement of graphical elements shown on it. The doctrine matters far beyond phones—dashboards, wearables, medical-device readouts, and automotive infotainment screens all live here. For where GUI protection sits inside a broader software strategy, see Protectable Assets in a Mobile App: An IP Layer-by-Layer Guide and How the Law Protects Software.

The term and the no-maintenance-fee bargain

For applications filed on or after May 13, 2015, a design patent runs 15 years from grant. Because the term is measured from issuance rather than filing, patent term adjustment is not available for designs. MPEP § 2710. And unlike utility patents, design patents require no maintenance fees to stay in force. 37 C.F.R. § 1.362(b). The trade-off is that the term is shorter and cannot be extended; the compensating advantage is that a granted design patent is genuinely low-maintenance property—the only real upkeep is marking discipline and enforcement vigilance.

Hypothetical. A startup, Larke & Co., designs a cordless electric kettle with a distinctive faceted, gem-cut body and a floating handle that appears to hover a few millimeters off the shell. The internal quick-boil heating element is a candidate for a utility patent. The faceted body and floating-handle silhouette are candidates for a design patent. Years later, if buyers come to recognize that faceted shape as "the Larke kettle," the same shape may support trade dress. One kettle, three rights, each protecting something different—and each with its own clock. The design patent's clock starts at grant and stops, immovably, fifteen years later.

Primary and secondary sources. 35 U.S.C. § 171 (designs); § 171(b) (general provisions apply); § 173 (term); In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021); Automotive Body Parts Ass'n v. Ford Global Techs., LLC, 930 F.3d 1314 (Fed. Cir. 2019); MPEP §§ 1502, 1502.01, 1504.01(a), 2710; 37 C.F.R. § 1.362(b); USPTO, Design Patent Application Guide.

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Stage 2 — Choose the vehicle: design, utility, trade dress, and copyright

The most consequential decisions in this field are made early and cheaply—or made by default and paid for later. The first is which form of protection to pursue, and whether to pursue more than one.

Design versus utility

Utility and design patents are not alternatives so much as complements. A utility patent protects the inventive functional features that give a product a competitive edge and runs a nominal 20 years from the earliest effective U.S. filing date. A design patent protects the ornamental appearance and runs 15 years from grant. The two catch different infringers. As practitioners put it, an unsophisticated copyist simply clones the product and infringes both; a sophisticated competitor redesigns around the utility claims but may still be caught by the look—or restyles the look but is still caught by the mechanism. The narrower one right's coverage, the more the other has to carry. For the decision framework, see UpLaw's checklist Design Patent or Utility Patent and the guide Function or Appearance? Design Patents and Utility Patents Compared.

The double-patenting wrinkle

Filing both a design and a utility application on the same product raises obviousness-type double patenting when the claims are not patentably distinct—when the ornamental design and the functional invention are, in substance, two claims to the same inventive concept. The problem is manageable with terminal disclaimers and the § 121 safe harbor, but it must be spotted at the drafting stage, not discovered in litigation. UpLaw treats the mechanics in Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls.

Trade dress and the sequencing play

Trade dress is a different animal with a different clock. It is potentially perpetual—it lasts as long as the appearance identifies a source and stays in use—but it demands non-functionality plus distinctiveness, and product configuration trade dress can never be inherently distinctive. It always requires secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000); see also TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), and Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), on the functionality bar.

That timing mismatch is the source of a sophisticated portfolio play. A brand-new design has no secondary meaning yet, so trade dress is unavailable on day one—but a design patent protects it immediately. File the design patent early, build consumer recognition across its 15-year term, and by the time the patent expires the shape may have acquired the secondary meaning that trade dress requires. Protection is handed off from a right that starts strong and ends on a fixed date to a right that starts weak and can last forever. For the head-to-head and the layering strategy, see Protecting Product Configurations: Design Patents and Trade Dress Compared, Two Roads to Protecting a Product's Look, and Protecting Product Configuration Without Overreaching.

Copyright, and the Star Athletica seam

Copyright can also protect the artistic features of a useful article, but only where a feature can be perceived as a two- or three-dimensional work of art separate from the article and would qualify as protectable on its own. Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), reframed that separability test around the cheerleading-uniform surface designs at issue there. Where copyright and design patent both reach a surface pattern, a company may pursue both, remembering that copyright arises automatically on fixation while a design patent must be examined and granted. On the copyright side of aesthetic-but-useful objects, see The Fine Line: Copyright Protection for Style, Typefaces, and Fonts.

Hypothetical. Return to the Larke kettle. The faceted body is protected by a design patent. Suppose the team also presses an intricate, original botanical relief into the handle grip. That relief may be separable enough to carry its own copyright under Star Athletica, and it is surface ornamentation eligible for its own design claim. Meanwhile the quick-boil element is heading toward a utility filing. Four regimes, one kettle—and the double-patenting analysis has to run before the design and utility claims are locked.

Primary and secondary sources. 35 U.S.C. §§ 101, 171; 15 U.S.C. § 1125(a); 17 U.S.C. §§ 101–102; Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995); Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017); 37 C.F.R. § 202.10.

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Stage 3 — Master the drawings: the figures are the claim

Here is the sentence that governs everything else. In a design patent, the drawings are not illustrations of the invention—they are the invention. A design patent contains a single formal claim to "the ornamental design for [the article] as shown and described," and no written description is required beyond a reference to the figures. 37 C.F.R. §§ 1.153, 1.154; MPEP §§ 1503.01, 1503.02. Everything about the right's scope is a drafting decision made with a pen, not a word processor. The drawings are the patent's "key disclosure." MPEP § 1503.02.

Three conventions carry enormous strategic weight.

Solid versus broken lines

Solid lines are claimed; broken (dashed) lines are not. Dashed lines show environment, boundaries, or portions of the article that the applicant deliberately disclaims. 37 C.F.R. § 1.152; MPEP §§ 1503.02(III), 1504.04(I)(C). This single convention is the primary scope lever in design practice. Converting a feature from solid to broken line broadens the claim, because it removes that feature as a limitation—an accused product no longer has to share it to infringe.

The power runs both ways. A GUI drawn in solid lines inside a phone rendered in broken lines claims the interface without limiting it to that handset. A sole tread drawn in solid line ties the claim to that exact tread; dash it out, and the claim floats free of it. Because the single claim is "essentially a reference to the drawings," drawings of different claim scope can be created by putting broken lines in different places in otherwise identical figures. MPEP §§ 1503.02(III), 1504.04.

Surface shading and § 112

Surface shading conveys the three-dimensional contour of the design—whether a surface is flat, curved, raised, open, transparent, or solid. It should appear on claimed surfaces and never on unclaimed (broken-line) matter. 37 C.F.R. § 1.152; MPEP § 1503.02(II). Solid black shading is generally not permitted except to represent the color black or color contrast. Inconsistent, missing, or contradictory shading is a frequent ground for rejection under 35 U.S.C. § 112, because a design the figures do not clearly and definitely disclose fails the enablement and definiteness requirements that apply to designs as to any other claim.

Views and the enablement floor

A design must be disclosed with enough views—front, rear, top, bottom, left, right, and one or more perspectives—to make the entire claimed appearance clear and unambiguous. 37 C.F.R. § 1.152; MPEP § 1503.02(I). Views may be omitted only when they are truly redundant (a flat or mirror-image surface), and the omission should be stated. The governing standard is functional: the drawings must enable a designer of ordinary skill to make the design. In In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018), the Federal Circuit held that a single plan-view drawing of a shoe-sole design satisfied § 112 because the design was capable of being understood from that view; enablement and definiteness for designs turn on whether the drawing conveys the claimed design with enough clarity, not on a mechanical count of figures.

The broken-line family strategy

Because line type sets scope, the most valuable move in design prosecution is to file a family of related applications claiming the same product at different levels of generality. A "picture claim" rendering the whole product in solid line is narrow but unmistakable and hard to invalidate. A broader sibling that dashes out everything except the single most distinctive feature reaches copyists who change peripheral details. Thinking through this before filing—rather than after a competitor surfaces—is the difference between a portfolio and a paperweight.

The new-matter trap

Get the drawings wrong and the problem is often unfixable. Adding subject matter after filing—supplying a view that discloses previously hidden contours, or "correcting" a surface—risks a new-matter rejection under § 132, because the applicant cannot claim more than the original disclosure supported. This is why experienced counsel treat professional draftsmanship as non-negotiable and resolve broken-line strategy at the disclosure stage. UpLaw's guide to drafting an invention disclosure that maximizes patent scope and the companion invention-disclosure checklist walk through capturing the design fully at the outset.

Hypothetical. Meridian Lighting patents an articulating desk lamp with a hexagonal head, a knurled tension knob, and a slim triangular base. If all three appear in solid line in the only application, a competitor who swaps the triangular base for a round one and the knurled knob for a smooth one escapes—too many differences, viewed as a whole. Meridian's better play is a family: one picture claim showing the entire lamp in solid line, and a second application claiming only the hexagonal head and its junction to the arm in solid line, with the base, knob, and arm dashed out. The base-swapping, knob-smoothing competitor still infringes the head claim. Same product, two filings, dramatically different reach—and the choice was made with line type, not argument.

Primary and secondary sources. 37 C.F.R. §§ 1.84, 1.152, 1.153, 1.154; 35 U.S.C. § 112; In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018); MPEP §§ 1503.01, 1503.02, 1504.04; USPTO, Guide for the Preparation of Patent Drawings.

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Stage 4 — Prosecute the application

Design prosecution shares plumbing with utility prosecution—design applications are subject to the same rules except where the design rules provide otherwise (37 C.F.R. § 1.151; MPEP § 1501)—but in day-to-day practice it feels different.

One claim, one title, one specification

A design application carries exactly one claim. Examination centers on drawing sufficiency, novelty, and obviousness rather than on parsing claim language, because there is essentially no language to parse—the claim points to the figures. The title identifies the article, and the specification is spare: a preamble, a figure-description section, and the single claim. 35 U.S.C. § 111(a); 37 C.F.R. §§ 1.153, 1.154; MPEP § 1503. Typical design prosecution runs roughly 18 to 21 months from filing to grant.

Restriction and multiple embodiments

Design applications routinely draw restriction requirements. If a single application discloses two or more patentably distinct designs—embodiments that are not obvious variants of one another—the examiner requires the applicant to elect one and pursue the rest in divisional applications. MPEP § 1504.05. Related embodiments that are obvious variants can often stay together. Planning the family around this rule lets counsel decide in advance which embodiments to elect and which to spin into divisionals to build a layered portfolio.

No provisional, and the priority calendar

Three timing rules trip up newcomers. First, there is no design provisional. A design application may claim the benefit of an earlier utility or design application that provides adequate § 112 support (35 U.S.C. § 120; MPEP § 1504.20), but it may not claim the benefit of a provisional. 35 U.S.C. § 119(e); 37 C.F.R. § 1.53(c)(4). Second, a design application can claim foreign priority under 35 U.S.C. §§ 119(a)–(d) and 172, but only within six months of the foreign filing—half the twelve-month Paris Convention window that utility applications enjoy. Miss it and priority is gone. Third, the United States allows a one-year grace period for the inventor's own pre-filing disclosures (35 U.S.C. § 102(b)(1)), but most foreign jurisdictions do not; a public launch before filing can forfeit foreign design rights entirely. Coordinate the reveal with the filing calendar.

No pre-grant publication

Unlike utility applications, U.S. design applications are not published before grant. 35 U.S.C. § 122(b)(2)(A)(iv). Prosecution stays confidential until the patent issues, which can quietly extend the period before a design becomes visible to copyists—useful, but it also means competitors get no early warning and the applicant gets no provisional rights against pre-issuance copying.

The Hague route

For international protection, the Hague Agreement Concerning the International Registration of Industrial Designs, administered by WIPO, lets an applicant file a single international design application designating multiple member jurisdictions, including the United States. It streamlines multi-country filing, but it is not a panacea. Hague does not harmonize the formal drawing requirements of each designated office, so a set of figures that satisfies WIPO may still fail a national requirement—and amendments made to fix that at the national stage can be treated as unsupported new matter, costing the applicant that designation. The international application is also published roughly six months after registration, unlike a confidential U.S. filing, and several major markets—among them China, Canada, and others—have historically sat outside the system or require separate strategies. UpLaw's patent-prosecution roadmap situates design filings inside the broader prosecution workflow, and for cross-border coordination see Cross-Border Patent Litigation.

When the examiner does push back—on drawing sufficiency, novelty, or obviousness—the response toolkit is the familiar one: argument, amendment (within the new-matter limits), a request for continued examination, or appeal to the PTAB. See UpLaw's checklist for responding to a patent office action and Turning Patent Rejections Into Granted Claims.

Hypothetical. Larke files its kettle application showing two embodiments: the faceted body with the floating handle, and a smooth-bodied variant with the same handle. The examiner issues a restriction requirement, reasoning that the faceted and smooth bodies are patentably distinct. Larke elects the faceted body and files a divisional on the smooth one—keeping both alive rather than abandoning half its design for the price of a fight it would lose. Because Larke also filed in the EU within six months of its U.S. application, its foreign priority holds; had it waited the full twelve months it uses for utility cases, that priority would have evaporated.

Primary and secondary sources. 35 U.S.C. §§ 111(a), 119(a)–(e), 120, 122(b)(2)(A)(iv), 171, 172, 390; 37 C.F.R. §§ 1.151–1.155, 1.53(c)(4); MPEP §§ 1501, 1503, 1504.05, 1504.20, 2901; Hague Agreement (WIPO); USPTO Patent Center.

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Stage 5 — Clear the validity hurdles: functionality, novelty, and obviousness

Three grounds can sink a design patent. Understanding them shapes both how you prosecute and how you attack.

Functionality: two doctrines wearing one name

"Functionality" does two different jobs in design law, and conflating them causes endless confusion. The first is a validity doctrine: a design is unpatentable if it is primarily functional rather than ornamental—if its appearance is dictated by function rather than chosen for how it looks. 35 U.S.C. § 171; PHG Technologies, LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006); Automotive Body Parts Ass'n v. Ford Global Techs., LLC, 930 F.3d 1314 (Fed. Cir. 2019). Courts weigh a familiar cluster of factors: whether alternative designs achieve the same function (the more alternatives, the more likely the design is ornamental), whether the claimed design is the best or only engineering solution, whether the product's advertising touts utilitarian advantages of the shape, and whether particular features are dictated by their use. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993); Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997). Consumer appeal does not make a design functional; the existence of alternative ways to achieve the function pushes toward ornamentality.

The second is a claim-scope doctrine: even a valid design patent whose overall design is ornamental may contain individual features that are functional, and a court can factor those features out of the infringement comparison so that protection runs to the ornamental aspects of the design as a whole. Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010); Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016). The two doctrines are easy to blur and dangerous to mix up: the first can kill the patent; the second merely trims what it reaches. UpLaw untangles them in Functionality in Design Patent Law: Untangling Validity from Claim Scope.

Novelty: the ordinary observer, again

A claimed design is anticipated—and so invalid for lack of novelty under § 102—if a single prior-art reference discloses the same design to the ordinary observer. This is the same test used for infringement, applied to the prior art instead of the accused product. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009); see Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019). The symmetry is deliberate: whatever appearance would infringe if it came later anticipates if it came earlier. That which infringes, if later, anticipates, if earlier.

Obviousness after LKQ: the ground moved

For decades, design-patent obviousness ran on the rigid Rosen–Durling framework. Under In re Rosen, 673 F.2d 388 (C.C.P.A. 1982), a challenger first had to find a single primary reference that was "basically the same" as the claimed design; only then, under Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996), could secondary references be brought in, and only if they were "so related" that features from one would suggest their application to the other. If no primary reference cleared the "basically the same" bar, the inquiry ended—and many design patents survived on that threshold alone.

In LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc), the Federal Circuit overruled Rosen and Durling. It held that design-patent obviousness must follow the same flexible, fact-intensive approach the Supreme Court prescribed for utility patents in Graham v. John Deere Co., 383 U.S. 1 (1966), and reaffirmed in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). Courts now analyze (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed design, (3) the level of ordinary skill—here, an ordinary designer of articles of the type at issue—and (4) objective indicia of nonobviousness such as commercial success, copying, and industry praise. The rigid "primary reference basically the same" gate is gone; a broader field of prior art can be marshaled and combined, guided by the ordinary designer's perspective. Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379 (Fed. Cir. 2020), framed the ultimate question as whether the design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

The practical fallout is large. Some design patents are now easier to challenge, prior-art searches must sweep more broadly, and prosecution counsel should expect richer obviousness rejections and build records—alternative designs, objective indicia—that hold up under the new test. UpLaw covers the decision and its aftermath in After LKQ v. GM: Design Patent Obviousness Under the Graham Framework and situates it among the era's other shifts in Pivotal Patent Decisions of Late 2024. Because the test now mirrors utility obviousness, the general § 103 resources apply too: Obviousness Under Section 103 and the checklist for defeating a § 103 rejection.

A word on analogous art, which the Graham framework makes newly important. For surface ornamentation, a reference showing the same ornamentation can be analogous even if it sits on an unrelated article, because a decorative pattern can migrate across products. For shape and configuration, the nature of the articles matters more, and a change in shape drawn from a secondary reference generally requires that reference to come from an analogous art. MPEP § 1504.03; In re Glavas, 230 F.2d 447 (C.C.P.A. 1956).

Hypothetical. A competitor challenges Larke's kettle design as obvious. Under the old regime, it first needed a single prior kettle "basically the same" as Larke's faceted body; finding none, it would have lost at the threshold. After LKQ, the competitor can assemble a broader story—a faceted decanter here, a floating-handle carafe there—and argue that an ordinary designer of small kitchen appliances would have combined them. Larke's best defense is now the objective-indicia record: documented copying by rivals, design-award recognition, and evidence that many alternative kettle shapes existed, showing the faceting was an aesthetic choice rather than an engineering necessity.

Primary and secondary sources. 35 U.S.C. §§ 102, 103, 171; LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc); Graham v. John Deere Co., 383 U.S. 1 (1966); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007); In re Rosen, 673 F.2d 388 (C.C.P.A. 1982); Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996); Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379 (Fed. Cir. 2020); Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010); L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993); Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009); MPEP §§ 1504.01, 1504.03.

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Stage 6 — Analyze infringement: the ordinary observer test

Design-patent infringement is decided by a comparison, not a construction. Courts rarely translate the drawings into words; they let the figures speak and ask a jury to look. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc); MPEP § 1504.04.

From Gorham to Egyptian Goddess

The test is old. Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871), asked whether, "in the eye of an ordinary observer, giving such attention as a purchaser usually gives," two designs are "substantially the same"—so alike that the resemblance deceives the observer into buying one supposing it to be the other. The modern hypothetical observer is a typical retail purchaser of the accused product. Raffel Systems, LLC v. Man Wah Holdings Ltd., 570 F. Supp. 3d 613 (E.D. Wis. 2021).

In Egyptian Goddess, the en banc Federal Circuit did two things. It abolished the separate "point of novelty" test, under which a patentee had to show that the accused design appropriated the specific novel feature that distinguished the patent from the prior art. And it folded the prior art into the ordinary-observer inquiry itself: where the claimed and accused designs are not plainly dissimilar, the comparison is conducted in light of the prior art, so that differences between the claimed design and the closest prior art become the observer's focus.

The three-way comparison and the crowded-field paradox

That turns infringement into a three-way visual comparison among the patented design, the accused product, and the closest prior art. And it produces a genuine paradox. In a crowded field—where many similar designs already exist—an ordinary observer, now educated by the prior art, fixes on the small details that distinguish the patent. Those small differences loom large. An accused product that shares them, and so sits closer to the patent than to the prior art, will more readily be found to infringe. But the very crowding that sharpens infringement also narrows the patent and exposes it to invalidity. The patentee walks a tightrope, and a defendant's most effective move is often not to distinguish its own product but to find prior art closer to the patent than the accused product is—collapsing the space in which infringement can live.

Functional filtering and comparing to the claim, not the product

After examining the figures, a court may consider the claimed article's functional features and factor them out, comparing the ornamental aspects of the designs as wholes. Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). Two disciplines follow. First, the accused product is compared to the patent claim, never to the patentee's own commercial embodiment; comparing product-to-product is a classic error. Id. at 1344–45. Second, the comparison prior art must relate to the same article of manufacture as the claimed design; a reference showing a similar pattern on a different article is not comparison prior art. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 80 F.4th 1363 (Fed. Cir. 2023); see also Curver Luxembourg, 938 F.3d at 1342–43 (affirming dismissal where an ordinary observer would not buy an accused basket believing it to be the chair claimed in the patent, even though the surface pattern matched).

No separate doctrine of equivalents

There is no free-standing doctrine-of-equivalents analysis in design cases. The substantial-similarity inquiry under the ordinary-observer test already asks whether the accused design is close enough, so it subsumes the equivalents question. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014). Pacific Coast also confirmed that prosecution-history estoppel applies to design patents: a feature surrendered during prosecution—by amending it into broken line, say—cannot be recaptured in litigation. What you dash out to get the patent, you cannot claim back to enforce it.

For the litigation mechanics end to end, see UpLaw's Litigating Design Patents: From Claim Construction to Total-Profit Damages and, for the broader infringement framework, What Counts as Patent Infringement: An Anatomy of the Section 271 Analysis and Patent Infringement, Claims, and Defenses.

Hypothetical. Larke sues a rival whose kettle also has a faceted body and a handle that appears to float. The court lines up three things: Larke's patent drawings, the rival's kettle, and the closest prior-art kettle a defense searcher can find. If the prior art is full of faceted bodies, the ordinary observer zeroes in on the floating handle—and if the rival copied it, the resemblance to the patent outweighs the resemblance to the prior art, and infringement is likely. If the defense unearths an older carafe with the very same floating handle, the field collapses: the observer now sees Larke's design as a small step from the prior art, and both infringement and validity wobble at once.

Primary and secondary sources. Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc); Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020); Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019); Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 80 F.4th 1363 (Fed. Cir. 2023); Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014); 35 U.S.C. § 271.

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Stage 7 — Capture the remedy: total profit under § 289

Design patents carry a remedy that has no equal elsewhere in patent law, and it is the reason design patents moved from a sleepy corner of the field to the center of the smartphone wars.

Section 289: disgorge the whole profit

Under 35 U.S.C. § 289, whoever, without authority, applies the patented design (or a colorable imitation) to an article of manufacture, or sells such an article, is liable to the patent owner "to the extent of his total profit, but not less than $250." That is not a reasonable royalty and not the slice of profit attributable to the design feature—it is the entire profit on the article to which the design is applied. There is no apportionment requirement of the kind that constrains utility damages. The trade-off, set by statute and case law, is that a patentee who takes § 289 total profits cannot also stack § 284 damages or win enhancement on top of the § 289 award. Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992); Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998).

Samsung v. Apple: which article of manufacture?

The remedy's punch depends entirely on one question: total profit on what? For years the assumption was that the "article of manufacture" meant the entire product sold to the consumer—so a design patent on a phone's front face could reach the total profit on the whole phone. In Samsung Electronics Co. v. Apple Inc., 580 U.S. 53 (2016), the Supreme Court rejected that assumption. It held that the "article of manufacture" in § 289 need not be the end product sold to consumers; it can be a component of that product. A phone is an article of manufacture, but so is its front face or screen, and the profit base may be the component rather than the whole device.

The Court, characteristically, declined to lay down a full test for identifying the relevant article, leaving that to the lower courts. On remand, the district court adopted the four-factor test the Solicitor General had proposed: (1) the scope of the design claimed in the patent, including the drawings and written description; (2) the relative prominence of the design within the product as a whole; (3) whether the design is conceptually distinct from the product as a whole; and (4) the physical relationship between the patented design and the rest of the product. Those factors now frame the fight in every serious § 289 case, and the burden of production on identifying the article shifts between the parties as the evidence develops.

The result: total-profit awards remain available and remain enormous, but litigants now battle over the base. A patentee wants the article defined broadly (the whole phone, the whole appliance); a defendant wants it defined narrowly (the bezel, the faceplate, the one component the design actually adorns). For the strategic lessons of the whole saga, see UpLaw's Landmark Patent Wars, and for how design damages sit alongside the other IP measures, What an IP Case Is Worth: A Guide to Intellectual Property Damages.

Section 284, injunctions, and the ITC

A patentee may instead elect § 284 damages—a reasonable royalty or lost profits—when that yields more or when the § 289 base is small, and may seek enhancement for willfulness on a § 284 award under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). What it cannot do is double-recover. Injunctive relief is available under §§ 283 but is governed by the four-factor equitable test of eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), which applies to design and utility patents alike. And because design cases so often involve imported consumer goods, the U.S. International Trade Commission is a favored forum: a § 337 exclusion order can bar infringing imports at the border, backed by Customs recordation, without any damages at all.

Hypothetical. Larke wins liability against the rival kettle. Under § 289, Larke first argues the relevant article of manufacture is the entire kettle, so it should disgorge the rival's total profit on every unit sold. The rival counters that the patented design covers only the faceted outer shell, a separately manufactured component, and that total profit should be computed on the shell alone—cord, element, base, and electronics excluded. Applying the four factors, the court weighs how prominent the faceted shell is to a buyer and whether it is conceptually and physically distinct from the working parts. The gap between "profit on the whole kettle" and "profit on a molded shell" is the entire case, and it is litigated with cost accountants, not just designers.

Primary and secondary sources. 35 U.S.C. §§ 283, 284, 285, 289; Samsung Electronics Co. v. Apple Inc., 580 U.S. 53 (2016); Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998); Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006); Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016); Tariff Act of 1930 § 337, 19 U.S.C. § 1337.

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Stage 8 — Enforce and maintain the design patent

Two disciplines round out the life cycle, and both reward routine attention over heroics.

Marking and the notice clock

To recover damages for the period before suit, a patentee that makes or sells the patented article should mark it with the word "patent" (or "pat.") and the patent number, or use virtual marking—"patent" plus a freely accessible web address that lists the number—under 35 U.S.C. § 287. Marking is not required to keep the patent in force, but the consequence of not marking is sharp: without it, damages generally do not begin to accrue until the infringer receives actual notice, which usually means the day the cease-and-desist letter lands. In a fast product cycle, months of unmarked sales can mean months of uncollectable damages. The marking obligation also extends to licensees, and a patentee must take reasonable steps to ensure they comply. For the mechanics, see Patent Marking Requirements, the operational patent-marking checklist, and the cross-regime guide to patent, trade dress, and copyright marking.

The flip side is false marking under 35 U.S.C. § 292: marking a product with a patent number that does not cover it, or with an expired patent, with intent to deceive the public, carries its own liability. Mark accurately, and update the virtual-marking page when a patent expires at the fifteen-year line.

Venues and the enforcement toolkit

Design cases can move faster than utility cases because liability turns on a side-by-side visual comparison rather than a claim-construction slog. But defendants will press functionality and—post-LKQ—obviousness hard, and the article-of-manufacture fight now shapes the damages exposure from the first demand letter. Think about the full menu of forums and remedies: district-court suits for § 289 total profits or § 284 damages and injunctions; ITC § 337 exclusion orders and Customs recordation for imported goods; and, where the copyist is anonymous, expedited discovery and "John Doe" mechanics that are common against overseas online sellers. UpLaw's litigation roadmap and its patent-focused field guide for small businesses map the procedural terrain.

Portfolio hygiene over fifteen years

Because design patents carry no maintenance fees, "upkeep" is not a payment calendar—it is vigilance. Watch the market for copyists, keep the virtual-marking page current, prune expired patents from it, and revisit the family strategy as products evolve: a mid-life refresh of a product is a new design and a candidate for a new filing, with its own fresh fifteen-year term. Where a design is licensed, fold marking and quality obligations into the agreement; UpLaw's IP Transactions Toolkit and Monetizing a Patent Through Licensing address the deal side.

Primary and secondary sources. 35 U.S.C. §§ 287, 292; Tariff Act of 1930 § 337, 19 U.S.C. § 1337; MPEP § 1505; USPTO virtual-marking guidance.

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A field checklist: the design patent life cycle at a glance

Use this as a quick self-audit; each item maps to a stage above and, in most cases, to a deeper UpLaw resource.

• Subject matter. Is the design ornamental (not dictated by function) and tied to a specific article of manufacture, not claimed in the abstract? (§ 171; SurgiSil.)
• Vehicle. Have you decided among design, utility, trade dress, and copyright—and, if stacking, run the double-patenting analysis? (See Design Patent or Utility Patent.)
• Drawings. Are solid and broken lines set to the scope you actually want? Is shading consistent, and are enough views present to satisfy § 112? (Maatita.)
• Family. Do you have both a narrow picture claim and a broader broken-line sibling capturing the key feature?
• Priority. Is the six-month foreign-priority window docketed? Is the public launch synced to the filing so foreign rights are not forfeited?
• Restriction. Have distinct embodiments been slotted into a divisional plan rather than abandoned?
• Validity. Is there an objective-indicia record ready for the post-LKQ obviousness fight? Have functional features been identified?
• Infringement. Have you run the three-way comparison—patent, accused product, closest prior art—and confirmed the comparison prior art is the same article of manufacture?
• Damages. Have you framed the article-of-manufacture argument for § 289, and modeled the § 284 alternative? (Samsung.)
• Marking. Is the product (and are licensees) marked, or is a virtual-marking page live and current? (§ 287.)

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Related UpLaw Resources

Related Guides

• Function or Appearance? Design Patents and Utility Patents Compared
• Two Roads to Protecting a Product's Look: Design Patents and Trade Dress — An Overview
• Protectable Assets in a Mobile App: An IP Layer-by-Layer Guide
• What an IP Case Is Worth: A Guide to Intellectual Property Damages

Related Checklists

• Design Patent or Utility Patent: A Practical Checklist for Choosing Protection
• Drafting an Invention Disclosure: A Practical Checklist
• Defeating a Section 103 Obviousness Rejection: A Practical Checklist
• Responding to a Patent Office Action: A Practical Checklist
• Patent Marking and Constructive Notice: A Practical Checklist

Related Toolkits

• Prosecuting a Patent Application: A Roadmap and Research Guide
• Litigating Patent Infringement: A Roadmap and Research Guide
• Trade Dress Protection Toolkit: From Design and Packaging to Registration, Functionality, and Enforcement
• The IP Clearance Toolkit: Securing Freedom to Operate Before You Launch
• The IP Transactions Toolkit: A Roadmap for Licensing, Assignments, and Diligence

Related Articles

• After LKQ v. GM: Design Patent Obviousness Under the Graham Framework
• Litigating Design Patents: From Claim Construction to Total-Profit Damages
• Functionality in Design Patent Law: Untangling Validity from Claim Scope
• Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls
• Protecting Product Configurations: Design Patents and Trade Dress Compared — A Comprehensive Analysis
• Obviousness Under Section 103: A Comprehensive Guide to the Analysis
• Landmark Patent Wars: Strategic Lessons From High-Profile Case Studies
• Pivotal Patent Decisions of Late 2024 and Their IP-Strategy Fallout
• Copyright, Trademark, Patent, and Trade Secret Compared: A Practical Guide

This toolkit is general legal information from UpLaw (uplaw.us), not legal advice, and it does not create an attorney-client relationship. Design-patent law is fast-moving—especially after LKQ v. GM—and fees, deadlines, and USPTO rules change. Verify all current fees, dates, and requirements at the official USPTO site, uspto.gov, before acting.