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Design Patent Obviousness Guidance

Posted by James Juo | Jun 04, 2024 | 0 Comments

In LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, (Fed. Cir. May 21, 2024) (en banc), the Federal Circuit replaced the Rosen-Durling test with a more flexible obviousness test for design patents. The USPTO has since issued a memorandum to provide guidance to examiners for design patent applications.

The memo states that the obviousness analysis starts with a “primary reference” that is “something in existence” and “visually similar” to the claimed design to protect against hindsight. "The primary reference will typically be in the same field of endeavor as the claimed ornamental design's article of manufacture, but it need not be, so long as it is analogous art." To determine whether a prior art design outside the field of endeavor of the article of manufacture is analogous, the degree to which an ordinarily skilled designer would be motivated to consider other fields should be considered. The USPTO will compile examples of analogous art over time to assist examiners. 

After considering the scope and content of the prior art, the differences between the prior art designs and the design claim at issue must be determined. The memo notes that this approach does not use a threshold “similarity” requirement. Instead, the visual appearance of the claimed design is compared with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture. The memo emphasized that this inquiry "must focus on the visual impression of the claimed design as a whole and not on selected individual pieces." 

The primary and secondary references need not be “so related” that features in one would suggest application of those features in the other, but they must both be analogous art to the patented design. Also, the motivation to combine these references need not come from the references themselves. But there must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design. 

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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