2023 Year-in-Review: Design Patent Law

Year-In-Review Design Patents


January 20, 2023; July 5, 2023

En Banc Federal Circuit Panel to Address Challenge To Established Design Patent Obviousness Test


In LKQ Corp. v. GM Global Technology Operations LLC, No. 21-2348  (Fed. Cir. Jan. 20, 2023), a three-judge panel for the U.S. Court of Appeals for the Federal Circuit clarified the obviousness test for design patents.  The panel determined that the Supreme Court’s obviousness test for a utility patent established in KSR International Co. v. Teleflex 550 U.S. 398 (2007) did not change the established test for obviousness of a design under In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and Durling v. Spectrum Furniture, 101 F.3d 100 (Fed. Cir. 1996) (“the Rosen-Durling test”). 


LKQ initially challenged a GM design patent directed to the design for a “vehicle front skid bar” before the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“the Board”).  LKQ argued that GM’s design patent should be invalidated for lacking novelty and being obvious, in view of prior art references identified by LKQ.  The Board applied the established Rosen-Durling test to determine obviousness, which required two steps: (i) identifying an existing prior art reference that has “design characteristics of which are the same as the claimed design” (Rosen, 673 F.2d at 391) and (ii) determining whether the primary (Rosen) reference can be modified with other reference(s) to provide “the same overall visual appearance as the claimed design.”   (Durling, 101 F.3d at 103.)   The Board upheld GM’s design patent.  In determining the design was not obvious, the Board found that LKQ failed to identify a sufficient prior art reference under the first part of the Rosen-Durling test. 


On appeal, LKQ argued that the Board should have instead applied the KSR obviousness test for utility patents, which it alleged was more flexible and “implicitly overruled” the forty-year old Rosen-Durling test for obviousness of design patents.  However, the Federal Circuit avoided answering the question altogether, stating that it could not overrule the Rosen-Durling test “without a clear directive from the Supreme Court.”  It then applied the Rosen-Durling test and affirmed the Board’s decision upholding GM’s design patent.


LKQ subsequently filed a petition for a rehearing en banc, which, in a rare move, the Federal Circuit granted.  Given the significant impact the outcome of this case will have on the validity of existing design patents, as well as the procurement of future design patents, it is being closely watched.  Numerous amici curiae have also submitted briefs, including Apple, Inc., automobile companies (e.g., Kia, Hyundai, Ford),  intellectual property law associations, insurance companies, and other companies related to the automotive industry. 



September 15, 2023

Comparison Prior Art Limited To Claimed Article of Manufacture In Design Patent Infringement Analysis


In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299 (Fed. Cir. Sep. 15, 2023), a precedential case of first impression, the Federal Circuit addressed what constitutes “comparison prior art” in a design patent infringement analysis, i.e., what prior art a fact finder may consider during the “ordinary observer” design patent infringement analysis.  The Federal Circuit concluded that the prior art must be directed to the same article of manufacture claimed by the patented design, narrowing the overall scope of available prior art and strengthening existing design patents.


Columbia filed suit in District Court, alleging that Seirus’s HeatWave products infringed Columbia’s design patent directed to a wavy design for a “heat reflective material.”  Prior to a jury trial, the District Court limited admissible comparison prior art to “wave patterns on fabric.”  A jury determined that the Seirus HeatWave products did not infringe, based on three comparison prior art references that were directed to plastic sheets, fabric for tires, and outerwear.


On appeal to the Federal Circuit, Columbia challenged the use of the three comparison prior art references, arguing that because the design patent claim was directed to a heat reflective material (i.e., the article of manufacture),  the comparison prior art should also be limited to the same article of manufacture.  The Federal Circuit agreed and held that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.”  The Federal Circuit reasoned that in an infringement analysis, the comparison prior art is intended to “help inform an ordinary observer’s comparison between the claimed design and the accused design.” Moreover, the Court harmonized the scope of prior art available in an obviousness analysis, with the scope of prior art available in an anticipation analysis, which similarly limits prior  art to the same article of manufacture. The Federal Circuit remanded the decision back to the District Court.



September 26, 2023

One Millionth Patent Issues; Design Patent Filings Continue To Increase


On September 26, 2023, the USPTO issued the one millionth U.S. Design Patent, which is directed to the ornamental design of a “dispensing comb” with an attached bottle.  Since the first design patent was issued in 1842, it took 181 years before the one millionth design patent was issued, as compared to the one millionth utility patent, which was issued 121 years after the first. Nonetheless, this significant milestone recognizes that design patents provide an invaluable form of intellectual property protection.  The USPTO reported a 20% increase in design patent application filings over the last five years, with more than 50,000 patent applications submitted and 34,370 design patents issued in 2022.   Assuming the number of design patent filings and issuances continues to increase (or at least hold steady), the two millionth design patent is expected to issue within the next thirty years.



November 15, 2023

USPTO Establishes the Design Patent Bar


The USPTO issued a final rule that establishes a new design patent practitioner bar.  This historic change, which takes effect in January 2024, widens the pool of individuals eligible to practice before the USPTO.  Current patent bar practitioners must meet certain criteria and hold certain science degrees, such as engineering, biology, chemistry, genetics, physics, and materials science.  The design patent bar allows individuals with a bachelor’s, master’s, or doctorate degree in one of the following areas to practice before the USPTO:  industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education. The design patent bar degree requirements harmonize the education requirements of design patent practitioners with the education requirements of design patent examiners.  The rights of practitioners who are already registered to practice before the USPTO in all patent matters will not be affected.  To distinguish design-only patent practitioners from those practitioners authorized to practice in all patent matters, design-only patent practitioners will be assigned a unique registration number from a new series.