'Big Deal': Federal Circuit Ruling May Mean More Design Patent Rejections, Experts Say

The U.S. Court of Appeals for the Federal Circuit's recent decision could make it easier to invalidate design patents for obviousness, replacing the rigid Rosen-Durling test with a more flexible framework. Finnegan partner Beth Ferrill, told the National Law Journal that, " I think there’ll be more (design patent rejections), but I don’t think this is going to be some sort of sea change," noting that she doesn’t see the language used in the two tests as being majorly different.

Beth explained that the new approach will involve considering if a proposed reference is "analogous" to the claimed design, assessing whether it comes from the "same field of endeavor" and whether it is visually similar, rather than "basically the same." She highlighted that the court broadened the test for obviousness, allowing for motivation to combine references to come from outside the references themselves. "What the court is now saying is you can find motivation to combine in the references or you can go outside of those references to other sources and in that way the test is broader," she said.

Beth also mentioned that historically, very few design patents were rejected for obviousness, so while the recent decision will likely lead to more denials, the overall effect might be limited. She predicts that more disputes will go to juries rather than being resolved on summary judgment, as the decision provides more opportunities for defendants to invalidate patents. "It will give defendants who are trying to invalidate patents in litigation, it will give them more tools and more types of evidence that will be seen as relevant," she said.

Additionally, Beth anticipates that experts will play a larger role in determining what constitutes analogous art and in making arguments about validity. "I think the experts on both sides will get more involved in terms of thinking about what art really is analogous and what art should be considered for this analysis," she said. "And I think because the court is labeling certain pieces of the analysis as questions of fact, I think arguments about validity will go further."

Read “'Big Deal': Federal Circuit Ruling May Mean More Design Patent Rejections, Experts Say”