The recent decision by the U.S. Federal Circuit Court in LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024). has sent ripples through the intellectual property (IP) world, particularly for those involved in design patents. This landmark ruling overturned the long-standing Rosen-Durling test, a two-part test that had acted as a strict gatekeeper for design patents for decades set by the Supreme Court in Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996). The ramifications of this decision have the potential to usher in a new era for design patent law, with significant implications for both designers and companies that rely on design patents to protect their innovations.
Background and Federal Circuit Court’s Decision
The Rosen-Durling test demanded a high bar of obviousness for patent applications – specifically, the claimed design must have demonstrable difference from existing designs. In order to be deemed patentable, a design patent application had to meet two strict criteria. First, there had to exist a prior art design that was “basically the same” as the claimed design. Second, any additional existing designs (known as secondary references) had to be “so related” to the primary reference that their features would have been obviously suggestive of incorporation into the claimed design.
The Federal Circuit Court’s decision to abrogate the Rosen-Durling test stemmed from its incompatibility with recent Supreme Court precedents that established a more flexible framework for assessing obviousness in other areas of intellectual property. In particular, the precedent set in the case KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) played a pivotal role in this shift. This case established a more nuanced framework for assessing obviousness in utility patents. This framework considers a broader range of factors beyond just superficial similarities, including the overall design aesthetic, the rationale behind the design choices made by the inventor, and the relationship between the claimed design and existing art in the field. The abrogation of the Rosen-Durling test removes its rigid requirements and aligns design patent obviousness with the more flexible KSR framework. This means courts will consider a broader range of factors when evaluating obviousness, including the overall design aesthetic and the reasoning behind design choices.
The shift towards a more nuanced approach in design patent obviousness evaluation holds significant promise for the design community. One key benefit is the potential for less rigidity and a more comprehensive evaluation process. Courts will now be able to delve deeper, considering the rationale behind a design, rather than simply focusing on superficial similarities to existing designs. This could lead to a more holistic understanding of the inventive step involved in a design, potentially opening the door for a wider range of design features to be considered patentable.
Potential Effects of Abrogating the Rosen-Durling Test
Another potential benefit is the possibility of obtaining design patents for features that were previously deemed obvious under the Rosen-Durling test. With a less rigid standard, the path to design patent protection could become smoother for certain design elements. This has the potential to incentivize companies to invest more heavily in design innovation, fostering a more competitive and dynamic design landscape.
However, it’s important to acknowledge that there will likely be a period of transition as courts adapt to applying the KSR framework to design patent cases. This period of uncertainty may lead to some initial challenges. Building a strong case for non-obviousness will become even more crucial in the new landscape. This could lead to more patent litigation until clearer standards emerge. Evidence showcasing the unique aspects of a design, such as unexpected results, commercial success, or industry recognition, may become more important in patent applications and any potential litigation. Under the KSR framework, evidence showcasing the non-obviousness of a design, such as unexpected results, commercial success, or industry acclaim, will become more important in patent applications and litigation.
Overall, the overturning of the Rosen-Durling test marks a significant turning point for design patents. While there may be some initial hurdles as courts navigate the new framework, this change has the potential to foster a more holistic and innovative design patent landscape, resulting in more design patent applications submitted in the U.S. As the legal landscape continues to evolve, staying informed about the latest developments will be key for designers and companies alike.