Design Patents in the US – what is happening now?
Photo by Shubham Dhage on Unsplash
The Federal Circuit in the US has recently issued an unusual decision that impacts design patents.
What is the case?
In the case of LQK v. GM, the court has moved away from the long-standing Rosen-Durling test, which has been used for evaluating the obviousness of design patents for about 50 years. Instead, the court has decided that the Graham factors, traditionally used for utility patents, should now apply to design patents as well. This change is expected to make design patents more challenging to obtain and potentially easier to invalidate, shifting the landscape for those holding or seeking design patents.
An appeal of the LQK v. GM decision could be made to the Supreme Court, but it seems unlikely that the Supreme Court would grant the request until there is a final decision on the merits. The Supreme Court reviews only a few cases per year out of the thousands of requests submitted across all areas of law. On the other hand, if the Supreme Court did agree to hear an appeal, it could be an indicator that it might overturn the decision.
What does it mean?
Until now, designs have been evaluated using the Rosen-Durling test. This test set a high bar for obviousness rejections, requiring that the primary reference must be "basically the same" as the challenged design and that secondary references must be closely related. This high standard meant that design patents were relatively straightforward to obtain. However, the recent decision replaces this with the Graham factors, which involve a more rigorous analysis similar to that used for utility patents.
The application of the Graham factors involves considering the scope and content of prior art, differences between prior art and the design claim, the level of ordinary skill in the art, and whether there was motivation to combine prior art to achieve the same design. This shift aligns design patent evaluation in the US with the criteria of utility patents, potentially leading to more rejections during the application process and more successful challenges against existing design patents.
What should we do?
For applicants, this decision brings notable implications. Design registration may become more difficult to secure due to the stricter evaluation criteria, leading to a more cautious approach to pursuing design patents. Additionally, the ease of invalidating granted design patents means that while clients may face fewer risks from infringement lawsuits, their own ability to enforce design patents could be affected. This dual-edged outcome will influence strategic decisions depending on individual client needs and litigation profiles.
One alternative that applicants might consider is pursuing trade dress protection as a parallel strategy for designs actually in use. Trade dress protects the physical design of a product as an identifier of the source of goods. For example, Coca-Cola bottles are protected by both design patents and trade dress due to their distinctive shape. Trade dress protection offers benefits such as never expiring as long as it is in use, unlike design patents which expire 15 years after grant. It also allows for potentially greater damages under the Lanham Act than those permitted under the Patent Act. However, trade dress requires that the design be used in commerce and may require proving secondary meaning in the market, which could be easier if the design is granted in at least one jurisdiction but otherwise could be more challenging.
As the international landscape shifts (again), please reach out if you would like to talk about strategies for protecting your intellectual property.
With thanks to John Lyon, partner at Thomas Horstemeyer IP Attorneys, who took the time to explain all this to us.