In February, the Federal Circuit made a decision to not alter or overrule its tried-and-true test for assessing the obviousness in design patents, popularly known as the Rosen-Durling test. This decision was made despite the contention that the Supreme Court had previously overruled it in KSR v. Teleflex. This has been a subject of ongoing debate within the legal community.
In a series of recent posts, the LKQ v. GM case’s challenge to the Rosen-Durling standard was highlighted. One post had even suggested that the Rosen-Durling test may find itself under close scrutiny in future en banc reviews.
The Federal Circuit’s decision has drawn a great deal of attention, and has been reported by Jones Day, among others. This decision is said to have significant implications for design patent law, given that the Rosen-Durling test has long been a touchstone in this area of legal practice.
According to further details provided by JD Supra, the Rosen-Durling test focuses on two components. The first it to determine whether the claimed design is primarily functional or ornamental. If it is found to be ornamental, the test then checks whether a designer of ordinary ability would have combined prior art designs to create a design similar to the patented design.
The role of the Supreme Court’s ruling in KSR v. Teleflex in this debate is critical. In this case, involving a dispute over an adjustable gas pedal system’s patent, the Court ruled that an approach to determining the obviousness of a claimed invention must go beyond the existing ‘teaching, suggestion, or motivation’ (TSM) test. The impact of this ruling on the Rosen-Durling test, and consequently on design patent law, continues to be a subject of discussion and speculation.
As the debate continues, legal professionals working with design patents need to stay informed and prepared for any potential changes to the legal landscape that may arise from future reviews of the Rosen-Durling test.