Design Patents Post-LKQ v. GM: Navigating New Obviousness Test for Design Patents

Director Tracy Durkin was a speaker in Strafford’s webinar “Design Patents Post-LKQ v. GM: Navigating New Obviousness Test for Design Patents.” The webinar guided patent counsel on the Federal Circuit’s recent decision in LKQ Corp. v. GM Global Technology Operations L.L.C. (May 21, 2024) and its implications for design patents.

Webinar Overview

After applying the Rosen-Durling test for obviousness for over 25 years, the Federal Circuit has turned the design patent world on its head. In the recent en banc decision, the Federal Circuit rejected the Rosen-Durling test, finding the test was “improperly rigid.” The court determined that the test for obviousness that is used for utility patents should also be used for design patents.

The test for obviousness for utility patents was established in Graham v. John Deere (U.S. 1966) and KSR International Co. v. Teleflex Inc. (U.S. 2007). The USPTO issued a memorandum on May 22, 2024, to provide guidance and instructions on evaluating obviousness in design patent applications and design patents.

The decision in LKQ could make it tougher to get design patents. And could provide an easier path to invalidate design patents. Design patent counsel need to understand the new test for obviousness to carefully draft patent applications to avoid obviousness rejections and to be prepared to address them when they do arise.

Watch the On-Demand recording as our authoritative panel of patent attorneys examine the Federal Circuit’s decision in LKQ and its implications for design patents. The panel discussed the new test for obviousness and what hurdles it will present for design patents. The panel also offered guidance addressing obviousness issues in design patents.