On May 21, 2024, the Federal Circuit issued an en banc decision (full court, instead of the typical three-judge panel) in LKQ Corp. et al. v. GM Global Technology Operations LLC, overturning the long-standing obviousness test for design patents.

The court ruled that the obviousness test for design patents should be similar to the test for utility patents. This presents a potentially significant shift for design patent law.

Obviousness rejections, while common in utility patent applications, have been relatively rare in design patent applications. This may be in part because the now-overturned obviousness test for design patents had a high bar that likely made it difficult for examiners to issue obviousness rejections.

What was the old test for design patent obviousness?

The old test for design patent obviousness, called the Rosen-Durling test, was a two-part test:

1. Part one: a primary reference that is “basically the same” as the claimed design must be identified. If this primary reference is not found, the obviousness inquiry ends. This “basically the same” requirement was a relatively difficult standard to meet.
2. Part two: secondary references may be used to modify the primary reference to create a design that has the same overall visual appearance as the claimed design. However, these secondary references must be “so related to the [primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”

The court viewed both parts of the test as improperly rigid and inconsistent with Supreme Court case law on obviousness, such as in KSR v. Teleflex.

What is the new test for design patent obviousness?

The court ruled that design patent obviousness analysis should be similar to utility patent obviousness analysis. However, the court acknowledged that some aspects of utility patent obviousness analysis may not be fully translatable to design patents. Thus, there is uncertainty as to how patent examiners and courts will apply this new standard.

It is clear, however, that the court has eliminated the requirement of a primary reference that is “basically the same” as the claimed design, thus likely lowering the bar for what can qualify as a primary reference. In addition, citing KSR, the court stated that the motivation to combine references need not come from the references themselves.

In addition, the court stated that an analogous art requirement applies to design patent obviousness analysis. While the court did not define a complete analogous art test for design patents, they stated that prior art designs for the same field of endeavor as the claimed design will be analogous. The court explicitly left open the possibility that other art could also be analogous.

What effect will this change in the law have?

We may potentially see more obviousness rejections of design patent applications at the US Patent and Trademark Office. Issued design patents may be more vulnerable to obviousness attacks.

What to consider going forward?

Design patent applicants facing obviousness rejections can still utilize non-analogous art arguments against prior art. Choosing a strategic title for the design patent application can help with such arguments.

Design patent challengers should consider utilizing obviousness grounds for invalidity, including in inter partes review (IPR) petitions.