New Obviousness Standards for Design Patent Applications
On May 22, 2024, the U.S. Patent and Trademark Office (USPTO) issued updated guidance for evaluating obviousness in design patent applications following the Federal Circuit's decision in LKQ Corp. v. GM Global Technology Operations LLC. The decision replaces the allegedly rigid Rosen-Durling test with a more flexible approach akin to the KSR International Co. v. Teleflex Inc. standards used for utility patents.
Author: Kenny Knox
Obviousness in design patents will now follow a flexible approach, considering the scope of prior art, differences between prior art and the claimed design, and the skill level of an ordinary designer. A primary reference should be “visually similar” to the claimed design but need not be “basically the same.” It should be something that exists, not a hypothetical combination of features. Both primary and secondary references must be from the same field of endeavor or analogous art, motivating a skilled designer to consider them.
Examiners must identify a primary reference that is visually similar and exists in the same or an analogous field. They should compare the visual appearance of the claimed design to prior art from the perspective of an ordinary designer and consider the knowledge and skill of a designer in the relevant field. Secondary considerations, such as commercial success, should be included as potential indicators of non-obviousness.
In evaluating obviousness, examiners must determine if an ordinary designer would have been motivated to modify prior art to achieve the claimed design's overall visual appearance. Primary and secondary references must be analogous art, and motivations to combine must be justified without hindsight.
The Patent Trial and Appeal Board must adhere to the LKQ ruling and the updated guidance in their decisions. The USPTO will continue to study LKQ in relation to existing precedents and will provide further guidance and training.
To view the updated guidance, please follow the link below:
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