Did You Feel It? The Earth Just Shifted Under Every Designer and Design Patent Owner.

LKQ v GM image

In March and April, we reminded you that there are two types of patents – utility and design.  Utility patents address how the better mousetrap catches mice.  Design patents address the ornamental appearance of the mousetrap.  Our topic this month is again design patents.  Major change is afoot for designers and design patent owners.  

We explained that to qualify for a design patent, a design must be both (a) ’novel’ and (b) ‘unobvious.’  We explained that the test for novelty of a design is that if a later design is so similar to a prior design that a customer would confuse the two products, then the later design is not novel and hence not patentable.  Whether a design is ‘novel’ has not changed.

‘Obviousness’ in design patenting refers to whether an ordinary designer in the field of the new design would find the new design obvious based on prior designs. ‘Obviousness’ includes combining elements from two or more prior designs to achieve the new design.  For example, attaching the back half of one existing saddle (for horses) to the front half of another saddle was obvious and not patentable because ordinary saddle makers made such changes routinely.  The question of obviousness usually turns on which prior designs are combined and who would combine those designs.

In the distant past (say, before last week), the USPTO and the courts applied rigid, formulaic, and limited approaches to which designs would be combined and which were obvious.  As a result, design patents were easy to obtain, hard to reject or overturn, and, hence, popular. 

Last week, the Federal Circuit court issued the LKQ v GM decision upending which designs are too obvious to qualify for design patents.  The Federal Circuit has adopted a much looser and more flexible approach to design patent obviousness, similar to that applicable to utility patents.  If you’re a designer or design patent owner, that’s not good news.

GM, the automaker, designs automobiles and holds design patents for automobile body panels such as fenders.  LKQ is an aftermarket maker of body panels. LKQ wants to be able to copy the GM fenders without worrying about the GM design patents.  LKQ challenged a GM design patent for a fender before the USPTO.  The USPTO rejected the challenge, leaving GM’s design patent intact.  LKQ appealed.  The Federal Circuit, sitting en banc (meaning all twelve Federal Circuit judges acting together), reversed the decision and stuck a knife in the old, rigid approach.

The court concluded that the USPTO or a court must conduct a three-step analysis based on old Supreme Court decisions relating to utility patents.  The USPTO or a court must (a) identify analogous prior designs (referred to as ‘analogous art’), (b) determine the difference in overall appearance of the new design compared to the analogous art, and (c) determine whether an ordinary designer of the same type of article as the new design would find the design obvious based on the analogous art.

Only ‘analogous art’ is considered in the obviousness analysis.  ‘Analogous art’ is either prior designs from the same field (automobile fenders in the LKQ V GM case) or some other prior designs outside the field of the invention that would be in the scope of knowledge of a hypothetical ordinary designer of the type of object of the new design.  The court threw up its hands in trying to identify which other prior designs might be ‘analogous art,’ and said it’s a question of fact to be determined case-by-case.  Not helpful, Federal Circuit.

Once the analogous art is identified, the court or examiner must identify a ‘primary reference.’  The ‘primary reference’ is something that is already in existence (not something that hypothetically could be made up) and generally will be the closest similar art for the design.  If the ‘primary reference’ conveys the same ‘overall visual appearance’ as the new design, then the new design is obvious without more and is not patentable.

If the new design is not obvious based on the primary reference alone, the USPTO or court will consider whether the primary reference should be combined with other analogous art to “…create the same overall visual appearance as the claimed design.”  The USPTO or a court will determine whether a hypothetical ordinary designer would have been ‘motivated’ to combine the primary reference with one or more of the analogous art.  The motivation of the ordinary designer may be provided by “…ordinarily skilled designer’s experience, creativity, as well as what market demands and industry customs exist in the relevant field and which ornamental features are commonplaces in the relevant field.” 

If the USPTO or court concludes that the hypothetical ordinary designer would be motivated to combine the analogous art references to achieve the same overall appearance as the new design, then the new design is ‘obvious’ and is not patentable.

The LKQ v GM decision is of immediate effect and the USPTO wasted no time in issuing guidance to its design patent examiners on the application of the new standards.

The Bottom line:

The new and vague standards of design patent obviousness are not good for designers and design patent owners.  The ‘analogous art’ and ‘motivation to combine’ concepts are exceedingly vague and impossible to predict.  We anticipate that over the next several years court decisions and USPTO guidance will accumulate that give us (and judges and patent examiners) better insight into which prior designs will be ‘analogous art’ for any particular new design and when ordinary designers will be motivated to combine those references.  But not now.  In the interim, we anticipate much higher friction in the design patent field – higher costs and delays in obtaining design patents with more applications rejected and higher costs of enforcement and defense.  We anticipate that both USPTO expenses and USPTO fees will increase due to the increased costs of design patent examination.

When the Supreme Court made similar changes to obviousness in utility patenting in 2007 (shortly before an administration change, we might add), there followed a period of chaos in the USPTO where no one knew how to apply the vague new standards.  A management vacuum caused individual art units within the USPTO to develop their own practices.  Some examiners concluded that all inventions were ‘obvious’ and effectively stopped allowing utility patents.  In the years since, utility patent review standards have stabilized and predictability increased.  We can only hope that USPTO management avoids that 2007 debacle this time around.

— Robert Yarbrough, Esq.