Brett Trout
Design patents are different than utility patents. Design patents protect the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Like copyright, design patents cannot protect the functional aspects of any new product, only the aesthetics. This is opposed to utility patents, the type of patents people are usually talking about when they talk about patents, do protect function, unexpected properties, and utility of new products and methods. Whereas utility patents protect functional aspects of inventions, design patents are more like copyright, protecting the “look” of new designs.
Despite their differences, design patents and utility patents must both meet the nonobviousness requirement of 35 U.S.C. § 103. This means you cannot obtain a patent, design or utility, on something that is merely an obvious modification of an already existing product. Last week the obviousness test for design patents was: 1) is there something in existence (the “Rosen” reference) the design characteristics of which are basically the same as the claimed design; and 2) if a Rosen reference is found, can secondary existing designs be used to modify it to create a combined design that has the same overall visual appearance as the new design sought to be patented. When combining these secondary designs they had to be “so related [to the Rosen reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” This was the Rosen-Durling test. That was last week. This week, there is a new test in town.
The Graham Factors
In a blow to General Motors and other current and aspiring design patent holders and patent lawyers the United States Court of Appeals for the Federal Circuit has just ruled in LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC that the Rosen-Durling test is out and the tried and true Graham v. John Deere Co. of Kansas City, 383 US 1 (S. Ct. 1966) test is in… mostly. The “Graham factors” test used to assess obviousness in utility patents, now applies to design patents as well. The test includes four factors: 1) the scope and content of the prior art; 2) the differences between the prior art and the patent claims at issue; 3) the level of ordinary skill in the pertinent art; and 4) secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. The ultimate question, however, remains as to whether differences between the prior art and the claimed invention are such that they would, as a whole, have been obvious to a person of ordinary skill in the pertinent art at the time of the invention. The LKQ court went on to discuss application of the various Graham factors to design patents in detail:
Scope and Content of the Prior Art
Prior art includes any publicly available information. For purposes of considering obviousness in design patent matters, existing information only qualifies as prior art when it is “analogous to the claimed invention” when seen from the perspective of a person of ordinary skill in the art. In limiting the scope of prior art to analogous art, the LKQ court explained that a person of ordinary skill “could not possibly be aware of every teaching in every art.”
The obviousness determination will include a primary reference and may include one or more secondary references. The primary reference will likely be the prior art design most visually similar to the claimed design. Both the primary and secondary references must be art analogous to the claimed invention. The more visually similar the primary reference design is to the claimed design, the less likely the Patent Office will be to grant a design patent on the claimed design.
Differences Between the Prior Art and the Design Claim at Issue
The LKQ court explicitly overruled the threshold Rosen-Durling “similarity” requirement and replaced it with the second Graham factor: whether one of ordinary skill in the art would have combined the prior art to create the same overall visual appearance as the claimed design. In determining the differences between the prior art and the claimed design, the Patent Office must consider the differences in the visual appearance of claimed design as a whole, rather than examining individual design elements on their own. This consideration of the differences in visual appearance is again from the perspective of an ordinary designer in the field of the claimed design.
The Level of Ordinary Skill in the Pertinent Art
As it pertains to design patents, the level of ordinary skill in the art is the skill of a designer of ordinary skill who designs articles of the claimed design type.
Secondary Considerations
The LKQ court specifically refused to decide whether secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. apply to the obviousness analysis in the context of design patents. It therefore remains unclear to what extent, if any, secondary considerations factor into the obvious analysis as applied to design patents.
Assessing the Graham Factors
After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of the prior art, and the differences between the prior art and the claimed design, the Patent Office must determine to what extent the ordinary designer would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design. As before, this inquiry focuses on the visual impression of the claimed design as a whole and not on any individual features.
If the primary reference alone does not render the claimed design obvious, the Patent Office may consider secondary references. While the primary and secondary references must both be analogous art to the patented design, they need not be “so related” to one another that features in one would suggest application of those features in the other. As noted in KSR, the motivation to combine the primary and secondary references does not have to come from the references themselves. The Patent Office must, however, provide rational support in the record as to why an ordinary designer in that field would have used features in a secondary reference to modify the primary reference to create the same overall appearance as the claimed design. The more different the primary reference looks as compared to a secondary reference, the harder it will be for the Patent Office to establish a motivation in the person to alter the primary reference in light of the secondary reference without hindsight of the claimed design.
Conclusion
Given the significance of this new ruling, design patent owners and applicants cannot help but be affected. Not only will it likely be more difficult to obtain design patents moving forward, it is likely that many existing design patents will fail to survive a legal challenge of the basis of obviousness. As a result, if you have obtained, or are thinking about obtaining, a design patent, you would be well-advised to discuss the ramifications of this important ruling with your patent lawyer sooner rather than later.
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