Fender bender? Surprise change in 40 year old US design patent law

About a week ago the Federal Circuit issued its en banc opinion in the LKQ v. GM case. In it the 40 year old test for determining whether a US design patent is obvious was unexpectedly overturned, which will have significant consequences for those seeking to obtain US design patents and for the potential validity of existing US design patents. 

By way of background, GM alleged that LKQ infringed US design patent D797,625 relating to the front fender of a car. In response LKQ argued that the design patent was invalid on the ground that it was obvious in view of an existing US design patent and another existing fender. 

When assessing if the design patent was obvious, the Patent Trial and Appeal Board (PTAB) applied the long-standing Rosen-Durling test and concluded that the prior art was not “basically the same” as the design of the design patent - as such, the prior art did not constitute a “Rosen reference” under the Rosen-Durling test and hence the design patent was not rendered obvious by the prior art.

An initial Federal Circuit hearing upheld the PTAB’s decision. LKQ argued that the Supreme Court's KSR decision (KSR International Co. v. Teleflex Inc.), which relates to utility patents, overrules the Rosen-Durling test. The Federal Circuit granted a rehearing en banc seeking further guidance on whether KSR affects the Rosen-Durling test.

Given that the Rosen-Durling test has held fast for over 40 years, and how much of a potential upset, to both USPTO examination practice and legal certainty for existing US design patent holders, overturning the Rosen-Durling test would cause, it was widely expected that the Federal Circuit would maintain the status quo and reaffirm the Rosen-Durling test. 

It didn't - in light of KSR, it laid out a "more flexible approach" to determining the obviousness of a design patent, which resembles the test for obviousness already applied in the case of utility patents.

Whilst the harmonisation of the determination of obviousness for utility and design patents is welcome, the more flexible approach to determining the obviousness of design patents will make it more difficult to obtain a US design patent (the USPTO has already issued updated guidance to examiners since the Federal Circuit's decision) and easier for third parties to challenge the validity of existing US design patents. At first glance this would appear to lessen the value of US design patents, which is somewhat disappointing. However, as with any big change, we wait to see how the change manifests itself in practice… perhaps over the next 40 years after I have (hopefully) retired!