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New Court Precedent makes Design Patents Harder to Obtain, Easier to Challenge

by | May 23, 2024 | Blog, Patent Law

Attorney Jaclyn S. Alcantara


On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) overruled the Rosen-Durling test, long used to assess nonobviousness of design patents, and replaced it with a new flexible approach already used to assess utility patents. This precedential decision in LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc) appears poised to make obtaining design patents more challenging while making invalidating existing design patents easier in many cases.

For nearly 30 years, the Rosen-Durling test was used to assess the nonobviousness of design patents and required: (1) the primary prior art reference be “basically the same” as the challenged design claim; and (2) any secondary prior art references be “so related” to the primary reference that features in one would suggest application of those features to the other. However, the Court ruled that the Rosen-Durling test is too rigid and is inconsistent with the Supreme Court’s general guidance in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). Specifically, the KSR decision found that rigid rules that limit the broad obviousness standard set forth in 35 U.S.C. § 103 “deny factfinders recourse to common sense” and “are neither necessary under our case law nor consistent with it.” Id. at 421.

Although the KSR decision involved a utility patent, not a design patent, the Court explained in the LKQ decision that both design and utility patents must meet the nonobviousness requirement of 35 U.S.C. § 103. Therefore, the Court concluded that the interpretation of 35 U.S.C. § 103 in the KSR decision applies to both utility and design patents. In particular, the Court found that the rigid Rosen-Durling test limitation that the primary reference be “basically the same” as the claimed design is absent from 35 U.S.C. § 103.

As a replacement for the Rosen-Durling test, the Court turned to the Graham four-part obviousness test for utility patents, just as the Supreme Court did in the KSR decision. The Graham obviousness test considers the following factors: 1) the scope and content of the prior art; 2) the differences between the prior art and the claimed invention; 3) the level of ordinary skill in the pertinent art; and 4) secondary considerations of non-obviousness.

The Court in the LKQ decision does admit that some of these factors pose unique challenges when being applied to design patents as opposed to utility patents. For example, the scope of the prior art for a utility patent is traditionally determined using a two-part test that considers (1) whether the art is from the same field of endeavor as the claimed invention and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. For a design patent, which is directed to an ornamental design of a manufactured item, there is no problem being solved. However, the Court explicitly leaves it to future cases to further develop the application of this standard.

In this specific instance, the LKQ case began as a petition for inter partes review (IPR) before the Patent Trian and Appeal Board (PTAB) to invalidate U.S. Design Patent No. D797,625, and as a result of the Court’s decision has now been remanded back to the PTAB, which will be tasked with making a new obviousness determination based on the Court’s new guidelines.

In the meantime, it is unfortunately expected that both uncertainty and expense for prosecution and litigation of design patents will increase in light of the Rosen-Durling test being overruled.

If you have questions about the validity of a design patent, contact Jaclyn Alcantara.


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