The Federal Circuit recently made changes to the obviousness requirement of design patents.[1] U.S. Patent Law provides for the protection of a “new, ornamental design for an article of manufacture”, i.e. the visual properties of a manufactured item.[2] The three types of design patents covered by these laws include (1) a design of an ornament, an impression a print, or picture on the surface or embedded in an item; (2) the shape or configuration of an item; or (3) a combination of (1) and (2).[3] Notably, any aspect that is a by-product of a functional or mechanical requirement of the item is deemed functional and not covered by a design patent, as it lacks the ornamental requirement.[4]
As part of the application process, the application must provide drawings depicting the claimed design, as well as any necessary support elements that are not claimed. The applications are reviewed for, among other requirements, novelty and nonobviousness, based on the shape of configuration being claimed.[5] The application is compared to typical prior art, namely catalogs, trade journals, other patent applications and patents.[6] Novelty relies on the “ordinary observer” test, which states that if a purchaser, giving the typical amount of attention to an item, would deceive the purchase of one item believing it was the other.[7] Thus, the prior art must be substantially the same as the ornament claimed in the application.[8] However, this comparison must take into account the prior art, with small differences in design likely important to the “ordinary observer”.[9]
Obviousness, as it currently stands, requires an understanding of a designer of normal skill in the field, meaning a designer commonly working with the manufactured item. The Federal Circuit recently overruled its “Rosen-Durling” test for obviousness,[10] which consisted of two factors- the primary reference must be essentially the same as the applied-for claim, and any secondary reference be “so related” to the primary reference to suggest application of the features to the primary reference.[11] The Federal Circuit found this test was overly stringent and not inline with Supreme Court precedent,[12] and replaced the test with the commonly-used utility patent obviousness test; using the Graham factors.[13] As such, the scope and content of the prior art must be determined, using analogous art.[14] Analogy in this instance relies upon (1) whether the art is in the same field of endeavor as the claimed invention, meaning article of manufacture or design; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved, which was left open.[15] Upon determination of the scope and content of the prior art, a comparison is performed between the prior art to the claimed ornamentation, i.e. the visual appearances.[16] The level of skill of an ordinary designer in the appropriate field must then be determined.[17] It is then determined “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.’”[18] Likewise with utility patents, the design claim must be considered as a whole, i.e. the visual impression of the claimed design, not on individual features.[19] Where multiple references are used, an articulated reason to combine the references must be articulated.[20] Secondary considerations of patentability, like commercial success, industry praise, and copying, must also be considered.[21]
The Federal Circuit’s decision brings the design arts into concurrence with the utility patent arena, though with potential unique considerations. This revision does make design patents more difficult to obtain, broadening the obviousness requirement, as argued by GM.[22] However, with the design patent obviousness requirement in line with utility patent obviousness requirement allows the USPTO and courts to use the over 10 years of obviousness case law stemming from KSR.
[1] LKQ Corp. v. GM Global Technol. Operations LLC, No. 2021-2348 (Fed. Cir., May 21, 2024).
[2] See, 35 USC §171(a).
[3] MPEP 1504.01.
[4] In re Carletti, 328 F.2d 1020, 1022, 140 U.S.P.Q. 653, 654 (CCPA 1964); Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp. 333, 337, 127 U.S.P.Q. 452, 454 (S.D.N.Y. 1960), aff’d, 294 F.2d 694, 131 U.S.P.Q. 55 (2d Cir. 1961).
[5] See, 35 USC §171(b), MPEP 1504.
[6] MPEP 1504; 1504.02.
[7] Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239, 1241, 93 U.S.P.Q.2d 1001, 1005 (Fed. Cir. 2009).
[8] Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 U.S.P.Q.2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).
[9] Int’l Seaway Trading Corp., 589 F.3d at 1239-1240.
[10] See, LKQ Corp. at 14.
[11] In re Rosen, 673 F.2d 388, 391, 213 U.S.P.Q. 347, 350 (CCPA 1982) (overruled); Durling v. Spectrum Furniture Co. Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (overruled).
[12] LKQ Corp. at 14-15. See also, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), Smith v. Whitman Saddle Co., 148 U.S. 674, 679- 680 (1893).
[13] LKQ Corp. at 16,19.
[14] Id. at 19-20.
[15] Id. at 22-23.
[16] Id. at 24.
[17] Id. at 25.
[18] Id. at 26 (citing to Campbell Soup, Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021)).
[19] Id. at 26 (citing In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996)).
[20] Id. at 26-27 (citing Campbell Soup, 10 F.4th at 1275).
[21] Id. at 27 (citing Campbell Soup, 10 F.4th at 1276–79).
[22] Id. at 28.
