Federal Circuit Ruling Raises Design Patent Questions

The Federal Circuit's ruling in LKQ Corp v GM Global Technology Operations changes the approach to determining the obviousness of design patents, potentially making it easier to invalidate these patents. Finnegan partner Beth Ferrill told Managing Intellectual Property that the decision will create more opportunities for lawyers to bring in different kinds of evidence to invalidate design patents. "But I don't think the basic framework is all that different from the Rosen-Durling test," she said.

Beth also noted that this decision may lead to more design patents being rejected for obviousness, although the impact may be on a small number of applications.  She added that in terms of litigation, allegations of obviousness will potentially go further than they used to.

Beth emphasized the importance of design patent filers reviewing their applications to ensure they are sufficiently different from previous designs, stating that "design patent filers are often their 'own worst enemy'." She said, “Usually, the closest art to what they're filing for is their own previous design. Applicants should take a hard look at their application before they file it and ask themselves if it's different enough from their previous design."

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