The Federal Circuit should reject the request from major players in the repair parts industry, LKQ and Keystone Automotive Industries, to scrap the existing framework for assessing design patent obviousness. These companies’ appeal, which aims to displace a framework that has assisted the public, courts, and the US Patent and Trademark Office for over 40 years, will be heard on February 5 Bloomberg Law reported.
Design patents protect aesthetic appearances, while utility patents secure utilitarian solutions. Given these fundamental differences, the Federal Circuit has developed different tests for ensuring compliance with these statutory requirements, such as the “all elements rule” for utility patents, and the “ordinary observer test” for design patents. The current controversy revolves around the non-obviousness requirement of 35 USC § 103, a statute that applies equally to design and utility patents
Comparing the differences between a patent claim and the prior art, the statute posits whether these dissimilarities would have been “obvious” to an individual with ordinary skill in the art at the time the patent application was filed. An analysis of relevant Supreme Court precedent, such as KSR v Teleflex, reveals that the criteria used to assess obviousness in utility patents is not applicable to design patents.
The Federal Circuit should hold onto the wisdom of the existing framework. They ought to preserve the practical, reasonable, and reliable approach established by the US Court of Customs and Patent Appeals in 1982 in In re Rosen, a reference referred to as the Rosen-Durling framework.
Altering the current framework will result in unnecessary uncertainty in an otherwise stable and functional area of the law. As such, it is in the best interest of the US design patent system for the Federal Circuit to uphold the Rosen-Durling framework. The final decision is anticipated in the case of LKQ Corp. v. GM Global Tech. Ops. LLC.