New Design Patent Application Obviousness Test. Episode 143

Background and the Rosen-Durling Standard

About two months ago, I did a podcast episode about the possibility that the test for obviousness for design patents might be changing, because the full Federal Circuit was going to be hearing a matter and making a decision. Listen to Episode 139 if you want to know the full backstory.

Just as a quick review, the old standard was the Rosen-Durling test. Under that test, it was considered a very rigid approach. The examiner had to find one design that was nearly identical to what you were trying to patent—called the primary reference—and then find secondary references that had some of the other features. Those secondary references had to clearly suggest that their features could be combined with the primary reference.

Because it was so rigid, this made it harder for the examiner to argue that your design was obvious, since they had to find a primary reference that was nearly identical.

New Guidance from the USPTO

Last week, the Patent Office issued new guidelines for design patent examiners, following the decision in LKQ Corp. v. GM Global Technology Operations LLC. The guidelines are only four pages long and instruct examiners on how their review process should change in light of the decision. I’m going to give you a brief summary.

Examiners are now instructed to use a more flexible, less rigid approach, more in line with how utility patent applications are evaluated.

The Four-Step Obviousness Test for Design Patents

Here’s the four-step inquiry examiners are now instructed to follow:

Step 1: Define the Scope and Content of the Prior Art

The examiner doesn’t need to find something that is essentially the same as your claimed design. Instead, they need to identify analogous art. I covered this in Episode 140. Typically, analogous art is in the same field or solves the same problem.

For example, if your design is for a showerhead, the examiner might find other showerhead designs. But they could also find a hose sprinkler design that, while not from the same field, is analogous. There will be some gray areas in determining what counts as analogous.

If the primary reference alone doesn’t render your design obvious, then secondary references can be brought in.

Step 2: Assess the Differences Between the Prior Art and the Claimed Design

There’s no longer a requirement that the prior art be highly similar. The examiner will now look at the differences between your design and prior designs, from the perspective of an ordinary designer in the field.

Step 3: Determine the Level of Ordinary Skill in the Art

This step ensures the analysis is made based on what an ordinary designer—not just any person—would know. So, if you’re submitting a new phone design, the comparison should be based on what phone designers would find obvious. For a lamp design, it would be based on what lamp designers know.

Step 4: Consider Secondary Considerations of Obviousness or Non-Obviousness

These are also called indicia. I covered them in Episode 49. One example is commercial success. Let’s say your newly designed product is flying off the shelves, and customers are leaving reviews saying, “I love this new design—it looks so much better than the old one!” That’s evidence that the design might be non-obvious, and you can use that to support your argument with the examiner.

Putting It All Together

If an ordinary designer would have been motivated to modify the prior art to create the same overall visual appearance as your claimed design, and there’s no compelling secondary evidence, then the examiner will likely reject your design application.

Importantly, the examiner is supposed to focus on the overall visual impression of the design, not just isolated individual features. When incorporating features from secondary references, the references must be analogous, and there must be a reason an ordinary designer would combine those features.

The more different the overall appearance is between the primary and secondary references, the harder it will be for the examiner to argue obviousness.

Practical Impact of the New Test

In practice, will this new flexible test make a big difference? Probably not much—at least for most inventors.

It may have an effect on edge cases. I’ve mentioned before that I’ve never had a design patent application rejected based on obviousness. Rejections tend to happen for other reasons, like incorrect drawings.

If you’re a company that produces a series of similar products and continues to tweak designs to get more design patents, then you might face more scrutiny under this new flexible standard. But if you’re a solo inventor with a brand-new design—and you didn’t copy anyone—this new test likely won’t change much for you.

Conclusion

So, to sum it up: the examiner no longer has to find a single prior art reference that looks almost identical to your design. They can now be more flexible, combining multiple references, as long as there’s a clear rationale for doing so. Until next time, I’m Adam Diament—keep on inventing.