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Back to the drawing board: Federal Circuit establishes new design patent test
Federal Circuit establishes new design patent test
The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, has overruled the long-standing test for whether a design patent is obvious. In its place, the court adopted a more flexible test that could make it more difficult to obtain design patent protection.
The case blueprint
LKQ Corporation filed a petition for inter partes review (IPR) of a patent for the design of a vehicle fender, claiming it was unpatentable based on “prior art” that made the design obvious. The prior art references were an earlier patent and a promotional brochure showing the front fender design of a 2010 Hyundai Tucson.
The Patent Trial and Appeal Board (PTAB) applied the Rosen-Durling test in its review. Under the test, the primary reference (here, the earlier patent) must be “basically the same” as the challenged design claim. In addition, any secondary references (the brochure) must be “so related” to the primary reference that features in one would suggest application of those features to the other.
The PTAB found that the primary reference wasn’t basically the same as the challenged design and ended its inquiry there. A three-judge panel of the Federal Circuit affirmed the PTAB’s finding. The Federal Circuit subsequently vacated that ruling and granted a rehearing before the full court.
Take two
The court concluded that the Rosen-Durling test requirements are “improperly rigid.” Instead of applying that test, it adopted a new framework that requires consideration of three factors:
- The scope and content of the prior art within the knowledge of an ordinary designer in the relevant field. This focuses on prior art that’s “analogous” to the claimed design, rather than “basically the same.” Courts will address whether a prior art design is analogous on a case-by-case basis.
- The differences between the prior art designs and the claimed design. This compares the overall visual appearance of the claimed design with prior art designs from the perspective of an ordinary designer in the designed item’s field.
- The level of “ordinary skill.” For design cases, the court said, it will consider the knowledge of a “designer of ordinary skill who designs articles of the type involved.”
After these factors are ascertained, the proper inquiry is whether an ordinary designer in the field to which the claimed design relates would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design. Where a primary prior art reference alone doesn’t make the claimed design obvious, secondary references may be considered, without the previous “so related” requirement.
Finally, the court stated that the obviousness inquiry still requires assessment of secondary considerations that may indicate nonobviousness. These include commercial success, industry praise and copying.
The court returned the case to the PTAB. The board will now apply the test to determine whether the patented design at issue was obvious.
The road ahead
The new test is more analogous to the longstanding nonobviousness test applied to utility patents. Thus, the court noted that because this test has proven workable for utility patents, it should be similarly workable for design patents. The court conceded that there may be some difficulties and uncertainties in applying its “fact-based nonrigid test.” But those qualms should, according to the court, be “amendable” on a case-by-case basis.
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