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Federal Circuit Overrules Longstanding Test for Non-Obviousness as Applied to Design Patents
Cantor Colburn Client Alert
Summary
The Federal Circuit recently discarded its long-established test for assessing non-obviousness as it relates to a challenged design patent and to design patent applications under examination at the U.S. Patent and Trademark Office. The court replaced the test with a modified version of the Graham multi-factor analysis currently used for assessing the validity of a utility patent and the non-obviousness of utility applications.
Takeaways
While this test is likely to be subject to modifications by the Federal Circuit in months and years to come, it appears the new non-obviousness inquiry as it applies to a challenged design patent or a pending design patent application, may spark more challenges to design patents at the PTAB and may impact efforts by design patent applicants seeking to secure patents on their designs. This is because the new test, which is akin to the Supreme Court’s Graham framework for assessing non-obviousness in utility patents, is significantly more flexible than the Rosen-Durling test.
For Further Information and Assistance
Cantor Colburn has substantial experience representing clients in all types of design patent matters, including litigation. Please do not hesitate to contact Daniel Drexler, Co-Chair of Cantor Colburn’s Design Patents Practice, at ddrexler@cantorcolburn.com, Michael Rye, Co-Chair of Cantor Colburn’s Litigation Practice, at mrye@cantorcolburn.com, or your Cantor Colburn attorney with any questions you may have regarding this matter and your IP in general.
Please note that each situation has its own unique circumstances and ramifications. This Client Alert is for informational purposes only and is not legal advice.
