Traditionally, design patent protection was narrow and weak, and was not useful unless obtained in bulk. However, the situation changed recently when the Federal Circuit held the “ordinary observer” test applies to design patent infringement. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008). Infringement is found when the claimed design and the accused design appear substantially the same to an ordinary observer. See Gorham Co. v. White, 81 U.S. 511, 528 (1872). Therefore, Google’s design patent would likely be infringed by a substantially similar layout even without a “Google” mark.
Given the simplicity of the Google search page interface, some eyebrows have been raised over Google’s design patent. Critics are concerned that by combining copyright, design patent and trademark together, Google is actually abusing its intellectual property rights by obtaining a series of overly broad IP rights. As a result, the “piling on” effect could make challenges too expensive even if Google’s potential claim of rights appears overreaching. In addition, people think Google may leverage this patent right against Yahoo!.com and Ask.com for their similar search pages.
It is also possible that Google may use the design patent as a bridge to obtain a nontraditional-trademark for the Google search page. Nontraditional-trademark laws favor applicants that can show a history of unique product designs. Providing evidence that a design was chosen for its departure from existing designs can help make the case that consumers will identify the unique design exclusively with the company. When Apple filed for the nontraditional trademark, it presented a list of the existing iPod design patents to help argue that the shape was uniquely Apple’s. Taking a similar route, Google can extend the protection period from fourteen years for its design patent to eternity for a trademark.
Although these concerns are legitimate, it may be an overreaction to focus on potential infringement lawsuits to be brought by Google. First, denying an otherwise properly awarded patent because of “potential abuse” is speculative and unfair. The Patent Law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. See 35 U.S.C. § 171. The awarding standard is relatively low – there is no requirement of obviousness or novelty. For example, Pat. No. D436,119 awarded a design patent for a sun-glasses design that does not substantially deviate from other sun-glasses. Yes, Google’s search page lacks novelty and uniqueness by just surrounding the Google search box with several buttons. However, given the totality of the entire search page, it is hard to say that the Google search page cannot satisfy the new and originality requirement. Absent a substantially similar prior design, Google has satisfied the design patent application standard.
Second, even if Google is going to leverage its IP rights against other search engines such as Yahoo! and Ask.com, it won’t be easy for it to win. The burden of proof faced by Google on such a claim requires a showing that the accused design is “substantially similar” with the claimed design, which gives the court enough discretion to consider the totality of circumstance. Given the simplicity of Google’s design, a court is likely to focus on the design detail to determine “substantiality,” leaving Google with very little basis for a claim of similarity.
It is also not likely that Google will deter new entry into the search engine industry by raising groundless design patent infringement actions and forcing out new providers. Using a design patent as an “entry barrier” is futile, simply because competitors can easily cross the barrier by using a different design. Even if Google can pile up its design patent, copyright and trademark rights, a new search engine can easily get itself out of trouble by designing its search page differently. Although it surprises people that Google can obtain so many IP rights by just putting two buttons under one box, it’s really too soon to say that it will guarantee Google’s total domination of the search engine market.
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