Patenting for Inventors Ep. 139 - How do I Know if My Design is Patently Obvious?

Illustration by @max_gps

Patenting for Inventors Ep.139

The law may be changing soon on how to determine whether your new design is patentable. In this podcast episode, learn the about the controversy behind the patentability standard for design patent obviousness. Does the case of KSR v. Teleflex apply to design patents like it does for utility patents? Or will the Rosen/Durling Test still reign supreme!

Podcast Transcript:

Speaker 1:

You are listening to the Patenting for Inventors podcast, part of the LOOK.Legal Pods from the law firm of Nolan Heimann, the number one source for your intellectual property, business, and entertainment law needs. Now here's your host, registered patent attorney, Adam Diament.

Adam Diament:

Hello and welcome to the Patenting for Inventors podcast. This is episode 139 and is titled, How Do I Know if My Design Is Patently Obvious? My name is Adam Diament, a registered patent attorney and partner at the law firm of Nolan Heimann in Los Angeles, California. I'm going to talk today about an interesting case that has come up in design patent law. I had several other episodes about design patents, so you can just go back and search for design patents and episode titles and listen to them.

But just to remind you about design patents a little bit, they protect the look of a product, not its function. Patents for functional inventions are called utility patents. There was an en banc hearing at the US court of Appeals for the Federal Circuit, and the case is LKQ Corporations versus GM Global Technology Operations. A little bit of background information. The Federal Circuit is a court just below the Supreme Court where most of the cases that are heard there are about patents. There are other kinds of cases too, but most of them are patent related. You can think of it like the Supreme Court for patents, but don't tell the actual Supreme Court that because someone can appeal their decision from the Federal Circuit that they lose and ask the Supreme Court to hear it, and the Supreme Court can overrule the Federal Circuit. But the Supreme Court takes so few patent cases per year that, for all intents and purposes, if the Federal Circuit makes a decision on patent law, it's pretty close to being the final decision unless the Supreme Court decides to take it up, which is pretty rare.

So what does en banc mean? There are 12 judges at the Federal Circuit, but when your case gets heard there, you don't get that entire panel of 12 judges. You usually just get three judges to hear your case, and it's the majority rule. So if two out of three rule in your favor, then you win. And if you lose, you can ask for an banc hearing, and that means that you want to be heard by all 12 judges. Now, most of the time, the Federal Circuit doesn't think your case is important enough for all 12 judges to hear your case after the three-Judge panel. But if it's a really important area of law, you might be granted an en banc hearing, and that's what happened here. At the center of this legal saga is the Rosen-Durling test. It's a two-step process used to assess the obviousness of a design patent, and this test has been used since the early 1980s. However, it's under scrutiny for being overly rigid and potentially stifling innovation and competition. So what is rigid about this test and what's the alternative?

Now, if you remember, in order to get a patent, your invention has to be new and non-obvious. If it's a utility patent, there has to be some usefulness to it, but in design patents, there's no real use. It's just a design. What's at stake here is whether GM's patent covering a vehicle front skid bar was obvious over other designs, therefore shouldn't have gotten a patent. Now, if you want to look it up, you could look up U.S. Patent Number D855,508. Now, why is this coming up? If you listen to the previous podcast in 2007, I talked about. There was a very important Supreme Court case called KSR v. Teleflex. It was one of the rare cases that the Supreme Court took up, and without going into too much detail, the case was about obviousness as well. And it said, in order to find obviousness, it can be a more flexible approach to finding obviousness, and it didn't need to be a rigid approach.

Instead of specifically requiring an explicit teaching suggestion or motivation in order to find something obvious, there didn't need to be anything explicit about the modifications to make something obvious. It could be more implicit or just less about something explicit that would cause someone to modify something into a new invention. But that case was about a utility patent, and it didn't really specifically address design patents. And the question is whether KSR also made that more flexible approach to design patent obviousness, and whether the rigid Rosen-Durling test was essentially overruled. Now, I haven't even said what the Rosen-Durling test is. So this is what it's about. The Rosen-Durling test came from two landmark cases. These cases were called In re Rosen and Durling v. Spectrum Furniture Company. The first step is that the core must identify a prior art reference that has designed characteristics basically the same as the claimed invention.

Now, this requires a finding of a single reference that's important, single reference in the prior art, so similar to the claimed design that it can serve as a starting point for an obviousness analysis. Remember that prior art essentially means anything that was publicly known before the filing date of an application. The next step involves considering 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 step assesses the combination of prior art references to determine if they would make the claimed design obvious to a person skilled in the art.

So what is rigid about this? The first step requires you to find a single prior art reference that is very similar to the new design and then determines whether modifications could be made to that. If we were to abandon the Rosen-Durling test, then you wouldn't be required to find a single prior art reference. So an examiner maybe could say, "Well, there's no single prior art reference that's the closest to the new design, but here are five designs that are all kind of similar, and taking together the modifications of your design are obvious. That really wouldn't be allowed in the Rosen-Durling test." Now, even the attorneys arguing against the rigid Rosen-Durling test say that probably most of the time, whether something is obvious or not, you're going to come to the same conclusion on whether something is an obvious design difference or not. So it's not a horrible test, but it shouldn't be the test they argue because there can be situations where a flexible approach in determining whether design is obvious is better.

And that's what the court is going to decide, or the court may decide to come up with some type of middle ground between the rigid Rosen-Durling test and the Flexible KSR test. If the rigid Rosen-Durling test is overruled, and the same test that is used for utility patents to determine non-obviousness is now going to be used for design patents. It's probably not going to make a huge difference and how many design patents get granted, but it may make some differences around the edges. Overall, design patent applications have a very high grant rate. I've seen somewhere between 96 and 99% are granted. That's opposed to utility patents, where I think it's around 70% right now. I personally never had a design patent not be granted on the grounds of obviousness, and I tell clients, "As long as you came up with the design yourself, you didn't copy it from somewhere else, and you haven't seen it anywhere else, there's a very high chance that you'll get a design patent."

I'll let you know in a future episode how this came out, and no matter how it comes up, there might be a chance that it gets appealed to the Supreme Court, and then we'll see whether the Supreme Court takes up this case or not. There's so few patent cases that the Supreme Court takes up, so just by statistics alone, whatever the Federal Circuit says is probably going to be the rule, at least for a very long time. Hope you enjoy the episode and keep on inventing.

Speaker 1:

Thanks for listening to the Patenting for Inventors podcast. If you enjoy the show, please kindly rate and review on your favorite podcast platform. The contents of this podcast are intended for general informational purposes only. The facts of every legal matter are unique, and the content of this podcast should not be construed as offering legal advice for your specific legal situation. For more information about how we can help with your own legal needs, check out our services@nolanheimann.com. Or call Adam Diament directly at 424-281-0162. The preceding information may be considered an attorney advertisement and does not establish any attorney-client relationship.