The Federal Circuit Court of Appeals upended decades of case law in a recent decision involving design patents. In LKQ Corp. v. GM Global Technology Operations LLC, the Federal Circuit established a new standard for assessing the nonobviousness of design patents under 35 U.S.C. § 103, holding that design patents should be subject to the same obviousness test used for utility patents.
The more flexible standard will arguably make it easier to show obviousness; however, there is uncertainty regarding how the test previously reserved for utility patents will transfer to design patents. While the Federal Circuit offered some guidance on how the new standard should be applied, it also left many issues to be addressed in future cases.
Obtaining Design Patent Protection
Design patents are unique in that they protect the appearance of an article, such as its distinct shape, configuration, or surface decoration, rather than the article itself. Pursuant to 35 U.S.C. § 171, applicants must satisfy four requirements for design patentability: novelty, originality, ornamentality, and the subject matter must be an article of manufacture.
While design patents and utility patents are different, they are still subject to many of the same requirements, including the nonobviousness requirement of 35 U.S.C. § 103. As set forth in the statute:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Prior to the Federal Circuit's recent decision, courts applied what is known as the Rosen-Durling test to assess nonobviousness with respect to design patents. Under the two-part test, a claimed design is obvious when the primary reference is “basically the same” as the challenged design claim, and any secondary references are “so related” to the primary reference that features from one would suggest application to the other.
New Test for Design Patent Obviousness
Sitting en banc, the Federal Circuit concluded in LKQ Corp. v. GM Global Technology Operations LLCthat the existing standard is too rigid, putting it at odds with the broad standard for obviousness set forth in § 103 and U.S. Supreme Court precedent. It wrote:
We answer in the affirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. We adopt an approach consistent with Congress's statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining non-obviousness.
The Federal Circuit largely adopted the approach set forth in Graham v. John Deere Co., 383 U.S. 1 (1966) for evaluating the obviousness of design patent claims going forward. The so-called Graham test examines four factors: the scope and content of the prior art, differences between the prior art and the challenged claim, level of ordinary skill, and secondary considerations. The court also adopted Graham's “analogous art” test to determine what types of references should be considered.
In its opinion, the Federal Circuit confirmed that the first factor of the two-part analogous art inquiry — whether the art is from the same field of endeavor as the claimed invention — applies to design patents. However, it did not decide whether the second factor — whether the reference is reasonably pertinent to the particular problem faced by the inventor — should similarly apply, leaving the issue to be addressed in future cases.
The Federal Circuit also acknowledged that there will be a learning curve for patent owners, practitioners, and lower courts; however, it concluded that any challenges will be brief. “This test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents,” the court wrote. “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.”
UPTO Design Patent Guidance
On May 22, 2024, the U.S. Patent and Trademark Office issued new guidance responding to the Federal Circuit's LTK decision. Its updated guidance and examination instructions state that examiners “must apply a flexible approach to obviousness similar to that applied in utility applications.”
With regard to the first factor, the USPTO advised that since 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 design examiner should consider the degree to which an ordinarily skilled designer would be motivated to consider other fields.”
When evaluating obviousness, USPTO further advised examiners 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.” The USPTO added that it is continuing to study the Federal Circuit's LTQ decision and further guidance will be forthcoming.
Consult With an Experienced Design Patent Attorney
The shifting legal landscape makes it even more important for patent owners and applicants to seek counsel from intellectual patent attorneys who are knowledgeable and experienced in designing patents. At Scarinci Hollenbeck, our skilled patent attorneys understand the unique and often challenging legal issues that arise in design patent protection and enforcement. We encourage entities that may be impacted by the Federal Circuit's recent decision to contact us with any questions. We will also continue to post updates as the USPTO and the courts provide clarity on the application of the new obviousness standard.
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