The Federal Circuit's recent decision in LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, (Fed. Cir. May 21, 2024) (en banc) has overruled the longstanding test for obviousness of design patents. Specifically, the Federal Circuit found that the test for obviousness, known as the Rosen-During test, was inconsistent with Supreme Court precedent that called for "a more flexible approach than the Rosen-During test for determining non-obviousness."
In place of the Rosen-During test, the Federal Circuit has chosen to align design patents obviousness with that of utility patents. Specifically, invalidity based on obviousness of a patented design will be determined based on the application of the Graham factors laid out by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). These factors include "the scope and content of the prior art"; "differences between the prior art and the claims at issue"; and "the level of ordinary skill in the pertinent art." In addition to these factors, secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., may be relevant as "indicia of obviousness or nonobviousness."
Regarding the test for obviousness based on the Graham factors, the Federal Circuit noted that "[t]his test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents. As with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent."
Just one day after the Federal Circuit handed down their opinion in LKQ, the USPTO issued updated guidance and examining instructions on evaluating obviousness in design patent applications and design patents. Following an introduction to the implications of the Federal Circuit's LKQ ruling on obviousness for designs, the USPTO provided examining instructions that addressed each of the Graham factors as Factual Inquiry One, Two, and Three.
Of note, Factual Inquiry One ("the scope and content of the prior art") still requires that a primary reference be identified. Instead of the primary reference being "basically the same" (as under the Rosen-During test), the primary reference need only be "something in existence — not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature." The primary reference does not even have be in the same field of endeavor as the claimed design so long as it is analogous art. Any secondary reference must also be analogous art. The USPTO guidance notes that "the Federal Circuit did not define how to determine whether a prior art design outside the field of endeavor of the article of manufacture is analogous." The USPTO guidance does not explain how to determine whether a prior art design is analogous, but does instruct examiners to "consider the degree to which an ordinarily skilled designer would be motivated to consider other fields." If the examiner still is unsure, then the examiner should contact their SPE, though it is unclear what metric the SPE will use to help the examiner decide. The USPTO will also begin compiling examples of when a reference has been determined to be analogous art.
In evaluating obviousness of design applications, the USPTO guidance cautions that "there must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design. Design examiners should keep in mind that, generally, the more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the primary prior art design in light of the secondary one and set forth a prima facie case of obviousness."
The now-overruled Rosen-Durling test was very workable and helped maintain a high allowance rate for design applications and helped to make it difficult to invalidate existing design patents based on obviousness. Regardless of how workable this new obviousness test proves to be in the design context, it certainly has created a lot of questions for practitioners and examiners, and we will be closely following its implementation.
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