A recent Federal Circuit Court decision has upended long-held standards for determining obviousness in design patents. Prior to this decision, the same Rosen-Durling design patent tests have been used for decades. Rosen-Durling is a two-step system. It first required that an earlier design with essentially the same visual appearance was required for a design patent to be considered obvious. The second part of the test was the determination of whether a designer would have been able to obviously create the design by simply modifying the existing design in a way that suggests using the features of one design in the other design.
The Court’s determination was that Rosen-Durling’s rules were too rigid. Going forward, the obviousness test should be used for design patents in a similar way to how they are used for utility patents. To apply the utility patent factors to design patents, examiners and courts should consider the content and scope of the existing art, the differences between the two designs, how much ordinary skill exists in the art, and what motivation there is to combine the design of the existing art with a secondary source.
The case in question was LKQ Corp v. GM Global Technology Operations LLC, which was a dispute over fender designs. GM previously secured a win in their case before the appeal was granted.
Part of the argument for reversing the decision was that car manufacturers use design patents to unfairly stifle competition and that the price of replacement parts would increase if the decision was affirmed. GM claimed its design was innovative and in need of protection.
After the decision to overturn the lower court’s ruling, LKQ’s attorney stated that the ruling would help consumers access numerous safe, quality parts for repairs to their vehicles.
How Did the Court Reach This Ruling?
The Judges referenced the United States Supreme Court’s past ruling calling for increased flexibility in similar patent cases. Specifically, the 2007 Supreme Court decision in KSR v. Teleflex. A notable detail in this Supreme Court case is that the patent in question was a utility patent, not a design patent. Despite this difference, the Federal Circuit Court believed that the four-factor utility patent test created by the Supreme Court in 1966 was the right choice for modern-day design patents.
In response to the concern regarding expected confusion in applying the new test, the Federal Circuit Court stated that the new test has been workable for utility patents for a significant amount of time and that considerable precedent exists for courts to reference in future decisions.
How Will This Change Impact Design Patents?
The new standard has looser requirements, which means design patents can be more easily invalidated. There is some concern that this shift will make design patents less worthwhile. The United States Patent and Trademark Office (USPTO) has updated its Guidance and Examination Instructions to reflect the change and model their inquiries based on the four-factor utility patent test established in 1966, as follows:
Factual Inquiry One
Rather than using the requirement that the design be basically the same, as was used in Rosen-Durling, the new standard is that the examiner identify a primary reference that has visual similarity. The primary reference must be either in the same field of endeavor or be analogous art.
The Federal Circuit Court did not specify in its ruling what the exact process for identifying analogous art would be. The Court stated that the classification of analogous art must be decided on a case-by-case basis and that future cases would be tasked with expanding this standard further.
Factual Inquiry Two
The differences between the two designs must be determined, which requires the examiner to compare the visual elements from the perspective of a regular designer.
Factual Inquiry Three
This inquiry involves the consideration of an ordinarily skilled designer’s knowledge to determine the obviousness of a patent claim. The examiner must use the perspective of an ordinary designer within the same artistic field or one that could create the design in question.
Factual Inquiry Four
When possible, a secondary consideration regarding obviousness should be considered.
The final step is to evaluate obviousness, which the examiner must do by deciding if an ordinary designer would have altered the original design to make a design with the same overall appearance. If so, the claim is rejected according to 35 USC 103.
There is still some uncertainty regarding how to apply the changed standard, and the full impact of this ruling can only be known with time.
SOURCES:
https://fingfx.thomsonreuters.com/gfx/legaldocs/znpnxdroypl/GM%20LKQ%20PATENT%20fedcir.pdf
https://www.law.cornell.edu/uscode/text/35/103