How Do I Know If My Design Is Patently Obvious? Episode 139

Design Patent Basics

I’m going to talk about an interesting case that has come up in design patent law. I’ve done several other episodes on design patents, so feel free to go back and search for those if you want more background.

Just as a reminder, design patents protect the look of a product—not its function. Patents for functional inventions are called utility patents.

The Case: LKQ Corp. v. GM Global Tech Operations

There was an en banc hearing at the U.S. Court of Appeals for the Federal Circuit involving LKQ Corporation v. GM Global Technology Operations.

A little background: the Federal Circuit is the appellate court just below the U.S. Supreme Court, and it primarily handles patent cases. While it technically hears other types of cases, most are patent-related.

You can think of it as the “Supreme Court for patents.” Now, don’t tell the actual Supreme Court that—the Federal Circuit’s decisions can be appealed to the Supreme Court, which has the final say—but the Supreme Court hears very few patent cases each year. So practically speaking, when the Federal Circuit rules on something, that’s usually the end of the road.

What Is an En Banc Hearing?

There are 12 judges on the Federal Circuit, but when your case is heard, it’s usually by a panel of three judges. If two out of three rule in your favor, you win. If you lose, you can request an en banc hearing, which means all 12 judges will hear the case.

The court rarely grants en banc hearings—only for particularly important legal issues. That’s what happened in this case.

The Rosen-Durling Test and the Question of Obviousness

At the center of this legal issue is the Rosen-Durling test, a two-step process used to assess the obviousness of a design patent. This test has been in place since the early 1980s but is now under scrutiny for being too rigid, potentially stifling innovation and competition.

To get a patent, your invention must be new and non-obvious. For utility patents, it must also be useful. But in design patents, there’s no requirement of usefulness—it’s all about appearance.

In this case, the issue is whether GM’s design patent covering a vehicle front skid bar was obvious over other prior designs and therefore should not have been granted. If you want to look it up, the patent is U.S. Patent No. D855,508.

Background: The KSR v. Teleflex Decision

Why is this coming up now? If you listened to previous episodes, you may remember the 2007 Supreme Court case KSR v. Teleflex. This was one of the rare patent cases taken up by the Supreme Court, and it changed how obviousness is analyzed for utility patents.

The Court ruled that a more flexible approach could be used, and that there didn’t need to be a specific teaching, suggestion, or motivation to make a modification. Obviousness could be inferred more broadly—even if nothing explicit in the prior art suggested the modification.

However, KSR was about utility patents, not design patents. The question now is: did KSR’s flexible standard implicitly overrule the rigid Rosen-Durling test for design patents?

What Is the Rosen-Durling Test?

The Rosen-Durling test comes from two cases: In re Rosen and Durling v. Spectrum Furniture Co.

Step 1: The court must identify a single prior art reference that has design characteristics that are “basically the same” as the claimed design. This reference must be so similar that it serves as a starting point for the obviousness analysis.

Step 2: The court considers whether this reference could be modified by someone with ordinary skill in the art—using other references—to arrive at the same overall visual appearance as the claimed design.

This means the court looks at combinations of prior art to determine if the design would have been obvious.

Why the Test Is Considered Rigid

The test is considered rigid because Step 1 requires you to start with a single prior art reference that is almost identical to the claimed design. If we abandon this approach, an examiner might say, “There’s no single reference that’s that close, but here are five that are kind of similar, and taken together, they make your design obvious.”

Under Rosen-Durling, that wouldn’t be allowed. But under a more flexible approach like KSR, it might be.

Arguments for and Against Flexibility

Even the attorneys arguing against the Rosen-Durling test admit that most of the time, you’d likely reach the same conclusion about obviousness regardless of which test you used.

But their point is: the rigid Rosen-Durling test shouldn’t be the only way. There could be situations where a flexible approach is more appropriate for determining design patent obviousness.

So the court now has to decide whether to stick with Rosen-Durling, adopt the KSR flexible approach, or come up with a middle ground.

What’s at Stake

If the Rosen-Durling test is overruled and the same obviousness test used for utility patents is adopted for design patents, it likely won’t drastically change how many design patents are granted.

Design patent applications already have a very high allowance rate—somewhere between 96% and 99%. Personally, I’ve never had a design patent rejected on obviousness grounds. [UPDATE - As of 2025, I have had two applications rejected on obviousness grounds]. I tell clients that as long as you came up with the design yourself, didn’t copy it, and haven’t seen it anywhere else, you have a very high chance of getting a design patent.

What Happens Next?

I’ll let you know in a future episode how this case turns out. And no matter how it comes out, there’s always a chance of appeal to the Supreme Court. But since the Supreme Court takes so few patent cases, statistically speaking, the Federal Circuit’s decision will likely stand—for a long time.

I'm Adam Diament, and until next time, keep on inventing!