Landmark Decision: Federal Circuit Changes Design Patent Rules

Judge with gavel

More than 40 Years of Design Patent Rules Discarded for New Standard

If you have, or are trying to get a design patent, the old rules no longer apply.

Watch a summary video on YouTube

In LKQ Corp. v. GM Global Tech. Operations LLC  the Court of Appeals for the Federal Circuit (CAFC) changed the rules for design patent protection. They reversed their holdings in two longstanding cases that previously guided the Courts and the Patent Office regarding design patents.

The lawsuit involved GM’s design patent D797,625 on a vehicle front fender. Two figures from the design patent are shown below.

Chevrolet Equinox

This design is used on GM’s 2018–2020 Chevrolet Equinox.

The Old Test

The old test was known as the Rosen-Durling test. It had two requirements:

  1. the primary reference had to be “basically the same” as the challenged design claim; and
  2. any secondary references had to be “so related” to the primary reference that features in one would suggest application of those features to the other.

The Court found that the test was inflexible, and in view of the Supreme Court’s decision in KSR, more flexibility was required. The Court was specifically troubled by the “so related” requirement.

The New Test

The Court acknowledged that “design patents and utility patents are, of course, different. Nevertheless, “design patents, like utility patents, must meet the nonobviousness requirement of 35 U.S.C. § 103.”

There’s a two-part test to determine if a patent should be issued by the PTO, or to determine if it’s valid when challenged. The two-part test is defined by Sections 102 and 103 of the Patent Statute. Section 102 basically asks whether the invention is new, and section 103 asks whether the invention would have been obvious to one of ordinary skill in the art. The CAFC focused on Section 103 in its decision.

The Supreme Court addressed the meaning of Section 103 in Graham v. John Deere Co., a case decided in 1966 that involved utility patents. The Court in Graham listed four factors to be considered.

  1. The scope and content of the prior art, also known as analogous prior art.
  2. Differences between the prior art and the claims at issue.
  3. The level of ordinary skill in the pertinent art.
  4. Such secondary considerations as commercial success, long-felt but unsolved needs, failure of others, etc., might give light to the circumstances surrounding the origin of the subject matter sought to be patented and may be relevant as “indicia of obviousness or nonobviousness.”

“The ultimate question is whether differences between the claimed invention and the prior art (analogous art) are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the pertinent art at the time of the invention.”

Analogous art is prior art that one of ordinary skill in the art would turn to for solving the problem the invention solves.

The Scope and Content of the Prior Art

For “utility patents, there’s a two-part test to determine the scope of analogous art:

  1. whether the art is from the same field of endeavor as the claimed invention; and
  2. if the reference is not within the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.

The CAFC concluded that the first part of this two-part test applies to design patents in a straightforward manner. In other words, analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design but doesn’t need to be “basically the same” as the claimed design.

“The scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs… The rationale is that a person of ordinary skill “could not possibly be aware of every teaching in every art” and thus we limit the scope of the prior art to analogous arts.”

The Court pointed out that in considering whether the new design is obvious you must decide upon a primary reference, or piece of prior art to build upon.

“Whether a prior art design is analogous to the claimed design for an article of manufacture is a fact question to be addressed on a case-by-case basis. The Court said it would “leave it to future cases to further develop the application of this standard.”

Differences between the prior art and the claims at issue

“The Supreme Court has explained that design patents protect the appearance of the design on an article of manufacture, and thus, in the context of design patent infringement, we compare the visual appearance of the claimed design with that of the allegedly infringing design.”

To determine if a design is patentable, the visual appearance of the claimed design is compared to the prior art from the perspective of an ordinary designer in the field of the article of manufacture.

The level of ordinary skill in the pertinent art

For design patents, ordinary skill is determined from the viewpoint of an ordinary designer in the field to which the claimed design pertains. That would be “a designer of ordinary skill who designs articles of the type involved.”

The Court reminded everyone that motivation to combine is required.

“We have previously described this inquiry as whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design “to create the same overall visual appearance as the claimed design.”

The Court explained that there has to be a reason why, “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.”

These factors can include, “ordinarily skilled designer’s experience, creativity,” as well as “what market demands and industry customs exist” in the relevant field and, “which ornamental features are commonplace in the relevant field.”

Although the Court rejected the “basically the same” standard they did comment that if the primary reference and the secondary references are more different in overall appearance it would be more difficult to prove that the design is obvious.

Secondary Considerations

The obviousness inquiry for design patents still requires an assessment of secondary considerations.  Examples of these in utility cases are commercial success, long felt but unsolved needs, failure of others, etc., The Court noted that In prior cases involving design patents, we have confirmed that commercial success, industry praise, and copying may demonstrate nonobviousness of design patents.

The Court left “to future cases the determination of whether considerations such as long felt but unsolved need and failure of others will have significance to the obviousness inquiry in the design patent context.”

The Takeaway

This is a sweeping change in the determination of design protection. The Patent Office and the Courts have new standards to apply. These standards were developed over time for use in determining the obviousness of utility patents. Now they’re the standard for design patents. As the court noted, some may not fit, like the problem being solved, long felt need, and the failure of others.

As with all change, there will be a time of adjustment. Eventually, a new equilibrium will be obtained. Until then there will be confusion and uncertainty as to the patentability of design patents and their enforceability.

The new design patent standards are intended to be more flexible than the former rigid requirements. This will likely broaden the pool of secondary references that will be used to show that a new design is obvious. However, that pool is contained within the banks constructed by the four-part Graham test, and the Court’s requirement that a motivation must be shown to combine.

New strategies and arguments will need to be developed. Some of these will be in the definition of a designer of ordinary skill, what that designer would have considered to be relevant to the design, and whether the designer would have been motivated to combine the references. Patent attorneys with experience in obtaining utility patents will be in the best position to develop these strategies because of their experience in obtaining protection for utility patents.

It is likely that some of that strategy will result in the inevitable continued fight in this case. It is going back to the United States  Patent Trial and Appeal Board for a decision, and will likely find its way back to the CAFC with more guidance for us all.

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email, or call me at 248-433-7381.


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