Patent Office Alert: Updated Obviousness Guidelines for Design Patents/Patent Applications

The United States Patent and Trademark Office (USPTO) issued a memorandum to provide updated guidance and examination instructions (Guidance) on determining obviousness in design patent applications and design patents in view of the en banc Federal Circuit decision in LKQ Corp. et al. v. GM Global Technology Operations LLC.

The Guidance explains that the en banc Federal Circuit held “that the Rosen-Durling test requirements—that (1) the primary reference be ‘basically the same’ as the challenged design claim; and (2) any secondary references be ‘so related’ to the primary reference that features in one would suggest application of those features to the other—are improperly rigid.” The Guidance explains that the Federal Circuit replaced the Rosen-Durling test with a more flexible approach similar to the test of obviousness for utility patents/patent applications under the Supreme Court’s opinion in KSR International Co. v. Teleflex Inc.

The Guidance provides the following points:

1. The focus is on the “visual impression of the claimed design as a whole and not on selected individual pieces.”
2. Any prior art references relied upon must satisfy the “analogous art” test.
3. 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.”
4. It will be more difficult to show a motivation to combine when the prior art references are very different. The court explained: “Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context. Of course, it follows that the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.”

Practical Consequences

Overall, the Guidance tracks the framework established by the en banc Federal Circuit in LKQ Corp. v. GM Global Technology Operations LLC. The Guidance permits a more flexible approach while instructing Examiners to utilize Graham v. John Deere Co. of Kansas City factors for utility patents, including the scope and content of the prior art, differences between the prior art and claims, the level of ordinary skill and secondary considerations such as commercial success, long-felt but unsolved needs and failure of others. In addition, the Guidance includes the requirement that the prior art be in an analogous field as the claimed design, and the Examiner must show a motivation to combine/modify the prior art.

However, the Guidance and the court in LKQ Corp. v. GM Global Technology Operations LLC left open details regarding how to determine or evaluate analogous art, motivation and secondary considerations in the context of design inventions. For example, what is a problem to be solved in the context of designs? The court even acknowledged that it was uncertain whether factors such as a long-felt need and failure of others apply for design inventions. The end result is that these open issues will have to be resolved on a case-by-case basis by the courts and the USPTO over a period of years, providing ample opportunity for design applications, owners and litigants to shape the law for the future.

is a Partner in Manatt, Phelps and Phillips' Intellectual Property Protection and Enforcement practice and is the author of Patent Prosecution: Law, Practice, and Procedure, 2024 Edition, and Constructing and Deconstructing Patents (2d Edition 2016).

Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations LLC, Memorandum (May 22, 2024) (citing LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc)) – see .

LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 1293, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc).

KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007).

LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 1299, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc).

LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 1300, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc).

LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc).

Graham v. John Deere Co. of Kansas City, for utility patents. 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).