A New Era for Design Patents: KSR Obviousness Standard Adopted

  • May 28, 2024

By: Amanda V. Cardona

Federal Circuit Decision Overturns Rosen-Durling Test in LKQ Corp. v. GM Glob. Tech. Operations LLC.

In an opinion held by the Federal Circuit in LKQ Corp. v. GM Glob. Tech. Operations LLC, the Rosen-Durling test for design patent non-obviousness determinations was overturned as being inconsistent with the Supreme Court’s decision in KSR v. Teleflex, which applies the Graham factors test (allowing more flexibility) in an obviousness analysis. The Rosen-Durling test, requiring that references applied to the evaluation of obviousness be “so related” to the claimed design, is thus replaced with a standard that allows consideration of common sense and suggestions from a much broader range of art.

Subsequently, the U.S. Patent and Trademark Office (USPTO) issued a guidance and updated examination instructions for design patent applications based on the LKQ decision. Effective immediately, the evaluation of obviousness in design applications will follow the KSR approach. This approach gives Examiners more flexibility when applying prior art with regard to the scope and alleged reasons to modify the prior art to arrive at the invention. However, to protect against hindsight analysis, the USPTO asserted that examination will incorporate Rosen-Durling by starting with a “primary reference” that is “something in existence” and “visually similar” to the claimed design.

Post-KSR, the evaluation of obviousness in utility patent applications became a much greater hurdle during examination. Practitioners are concerned that the decision in LKQ will produce a similar effect in the evaluation of design patent applications, which have historically benefitted from a more straightforward determination of non-obviousness.

This IP Advisory was prepared by Lando & Anastasi, LLP. The information provided in this Advisory does not, and is not intended to, constitute legal advice; instead, all information, content, and materials are for general informational purposes only. Readers should contact an attorney to obtain legal advice with respect to any particular legal matter.

© 2024 Lando & Anastasi, LLP


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