It may be more difficult for promotional products firms to obtain design patents following the Federal Circuit’s recent ruling.
On May 21, the appeals court overruled the Rosen-Durling test, which had been in place for more than 40 years for determining the obviousness of design patents.
- Unlike utility patents, design patents focus on appearance rather than functionality.
- Design patent obviousness involves combining two or more pre-existing designs to create a new design, rendering the later design “obvious” and not patentable, according to Garson Law.
The Rosen-Durling test required an earlier design to be “basically the same” as the challenged design, and any secondary reference to be “so related” to the earlier design that features in one would suggest application of those features to the other.
The Federal Circuit’s decision discarding long-standing tests for proving that a design patent is invalid as obvious means the world has changed for patent examiners and applicants. https://t.co/t9cuIIOjnu pic.twitter.com/AZGVk1vBfG
— Law360 (@Law360) June 3, 2024
New Legal Approach
In its first en banc decision (a special procedure where all judges of a particular court hear a case) in six years, the Federal Circuit ruled that the Rosen-Durling test was “improperly rigid” and that it doesn’t correlate with U.S. Supreme Court decisions requiring flexibility in the obviousness analysis.
- The decision came in the case of LKQ Corp. v. GM Global Technology Operations LLC, in which auto parts manufacturer LKQ challenged the validity of GM’s design patent after its licensing agreement expired.
As a result, the court has directed practitioners to instead rely upon the obviousness test used for utility patents. In this approach, the following factual inquiries must be made:
- the scope and content of the prior art
- differences between the prior art and the design as claimed at issue
- the level of ordinary skill in the art.
“This test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents. As with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent,” the court wrote.
In the wake of the Federal Circuit’s decision, the United States Patent and Trademark Office (USPTO) issued updated guidance and examination instructions for making a determination of obviousness in designs. “The USPTO is continuing to study LKQ in the context of existing precedent; further guidance and training will be forthcoming,” the guidance states.
Promo’s Navigating Uncharted Legal Territory
Legal experts say the decision creates plenty of uncertainty as to how the obviousness of design patents should be assessed in the future.
“It’s a unique situation where there’s just not a whole lot of guidance right now, and it seems like the examiners and the patent office will play a pretty significant role early on in dictating how this proceeds,” Joseph Anderson, partner at national law firm Ballard Spahr LLP, told Law360.
Meanwhile, Christopher Gloria, partner at international law firm Morrison & Foerster LLP, predicts that more design patent applications will be rejected. “That’s going to obviously be a lot more costly to clients, just responding to office actions, yes, but also appeals, as the whole practice tries to figure out what this new test means,” Gloria told Law360.
Rob Katz, partner at national law firm Banner Witcoff, argues that the Federal Circuit has “devalued designs and the design system.”
“This is a big win for knockoffs and counterfeit and the companies who make and sell them and a loss for industrial designers and companies who invest in cutting-edge designs,” Katz told Bloomberg Law.
