What You Need to Know
- Key takeaway #1
The Federal Circuit has abandoned the decades-old obviousness test for design patents.
- Key takeaway #2
Practitioners are being directed to subject design patents to the same obviousness test used for utility patents, despite lingering questions and uncertainty surrounding how exactly this test will be applied to design patents.
In its first en banc decision in six years, the Federal Circuit in
Under the Rosen-Durling test, the obviousness of a claimed design was assessed using a two-step analysis. First, a single primary prior art reference needed to be identified that had "basically the same" design characteristics as the claimed design. Durling v.
Overruling the Rosen-During test, the Federal Circuit found that the test was too rigid as applied, rendering it inconsistent with Supreme Court precedent that had rejected such rigid tests in favor of more flexible approaches. See generally, KSR Int'l Co. v.
Rather than modify these rigid aspects of the Rosen-Durling test to increase flexibility, the Federal Circuit abandoned it outright, and directed practitioners to instead rely upon the obviousness test used for utility patents, along with its associated body of caselaw. Now, assessing the obviousness of design patents will include determining: (1) the scope and content of the prior art; (2) differences between the prior art designs and the claimed design at issue; (3) the level of ordinary skill in the pertinent art; and (4) whether any secondary considerations of non-obviousness apply. No longer restricted to references that are "basically the same" as the challenged design or "so related" to the primary reference, practitioners can now rely upon any prior art reference from the same field of endeavor or analogous art as the claimed design. Further, consistent with KSR, the motivation to modify the primary reference with features of the secondary references does not need to come from the references themselves, so long as there is still some record-supported reason for the modifications.
Design patents are, of course, distinct from utility patents, with different considerations involved in determining obviousness between the two. For example, assessing the obviousness of design patents involves considering the overall appearance, visual impressions, artistry, and style of ornamental subject matter, while assessing the obviousness of a utility patent focuses on unexpected properties, the problem being solved, general utility, and function. Although the Federal Circuit's decision acknowledges these differences, the Court's opinion does not dwell on them or discuss potential problems that may arise from subjecting design patents to a test previously developed and used exclusively in the realm of utility patents. Instead, the Court has left such questions for future cases to resolve, conceding that practitioners may have to deal with at least a brief period of uncertainty in the interim.
In the wake of the Federal Circuit's decision, the USPTO issued updated guidance and examination instructions for making a determination of obviousness in designs, but the updated guidance did not offer much substance beyond what was already included in the Federal Circuit's order. With many lingering questions and much uncertainty surrounding how the USPTO or the district courts will apply the Federal Circuit's ruling in
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