Scott Locke’s article entitled “The Low Bar of the Non-Obviousness Standard for Design Patents” has been published in the New York Law Journal. Access the full article by following the “Read More” link below.

Design patents, like utility patents, are required to comply with a requirement that an applicant’s design is non-obvious. 35 U.S.C. §§103, 171. But design patents protect the non-functional aspects of a design of a product, Elmer v. ICC Fabricating, 67 F.3d 1571, 1577 (Fed. Cir 1995), and the concept of determining whether a design is obvious, when aesthetics are by definition subjective, requires at least a degree of cognitive dissonance.

Nevertheless, because Congress codified the non-obviousness requirement, the U.S. Court of Appeals for the Federal Circuit (CAFC) has developed, and both the lower courts and the U.S. Patent and Trademark Office (USPTO) have implemented, an analytic framework for applying this statutory requirement.

They have done so by establishing a very low bar for a design to be deemed non-obvious. This low bar has led to many designers across diverse industries obtaining large numbers of design patents. For example, on July 12, 2022 alone, the USPTO issued at least 25 design patents to Apple.

What is good for applicants is not necessarily good for their competitors. Designers who avail themselves of the protection that the patent laws have the right to prevent competitors from making, selling and using products that embody their patented design or a colorable imitation thereof. 35 U.S.C. §§271, 289.

In view of the low standard for non-obviousness that is now consistently being applied by the USPTO and the courts, in combination with both the high frequency at which companies across diverse industries obtain design patents and the right to sue for colorable imitations of patented designs, any client who has not previously considered adding designs patent protection to their intellectual property strategy would be well advised to do so.

Patentability of Designs and the Non-Obviousness Standard. Design patents are for ornamental designs of articles of manufacture, 35 U.S.C. §171, though the term “ornamental” is liberally construed, and thus, many design patents are directed not only to articles with aesthetic appeal, but also to what more commonly would be thought of as industrial designs.

A design patent contains a single claim, the scope of which is defined by a set of figures. The coverage afforded by a design patent extends to the appearance of the design as embodied in the claimed article of manufacture and colorable imitations thereof. 35 U.S.C. §§271, 289; Curver Luxembourg, SARL v. Home Expressions, 938 F.3d 1334, 1339 (Fed. Cir. 2019).

Among the requirements for patentability of a design is that the design must be non-obvious. 35 U.S.C. §103; 35 U.S.C. §171; In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996). When ascertaining whether a design is non-obvious, one asks whether the design as claimed would have been obvious to a designer of ordinary skill who designs the type of articles that are the subject of the patent or patent application. Spigen Korea Co., Ltd. v. Ultraproof, 955 F.3d 1379, 1383 (Fed. Cir. 2020).

With this perspective, one makes a two-step inquiry: (1) first one must find a primary reference that discloses a design that is basically the same as the claimed design; and (2) after identifying the primary reference, one must find one or more other references that may be used to modify the design of the primary reference in order to create the same overall visual appearance as the claimed design. High Point Design v. Buyers Direct, 730 F.3d 1301, 1313 (Fed. Cir. 2013).

Step 1: Identification of the Primary Reference. With respect to the first step, in order to identify a primary reference, one must discern the visual impression that is created by the claimed design as a whole and then determine whether there is a single reference that creates basically the same visual impression. Campbell Soup Company v. Gamon Plus, 939 F.3d 1335, 1340 (Fed. Cir. 2019). When looking for a primary reference, one should focus on the overall design and specific design characteristics as opposed to design concepts. In re Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993).

For a design in a reference to be deemed to create basically the same visual impression as a claimed design, there must be an absence of substantial differences in their overall appearances. Spigen, 955 F.3d at 1383. If major modifications are required to make a design look like a claimed design, then the two are not basically the same. Id. Conversely, slight differences is designs will not preclude a finding that a design in a reference renders that reference a primary reference. Id.

Pending design patent applications are not publicly accessible, and by definition, issued designs patents have been deemed by the USPTO to be non-obvious over the prior art of record. However, there are two recent appeals to the Patent Trial and Appeal Board (PTAB) that suggest a continuing trend of increasing difficulty in having a reference qualify as a primary reference.

In Ex parte Selfic, 2020 WL 2765731 (May 21, 2020 PTAB), the applicant had filed for protection of the design for a media extender. Reversing a finding by the ex parte examiner that the claimed design was obvious, the PTAB held that because the claimed design was a basic box with limited design elements, the difference between the relative dimensions of the claimed design and the design of the item in the reference was sufficient to disqualify the cited reference as a primary reference. Id.

Consistent with Ex parte Selfic, in Ex parte Lerman, 2021 WL 4050577 (PTAB Sept. 1, 2021), the PTAB maintained its application of design patent law to mean that a primary reference must disclose a design that is very similar to that of a claimed design. In that case, the claimed design was for a jar. In identifying a primary reference, the ex parte examiner relied on the underlying form or shape of the jar as the basis for denoting it a primary reference. Id. at 5.

The PTAB deemed the commonality of the overall shape to be insufficient to deem the cited reference a primary reference, emphasizing: “an overall visual impression, particularly in a crowded art, must reflect more than an overall shape, which is only one aspect of a design.” Id.

Taken together, Ex parte Selfic and Ex parte Lerman illustrate the high hurdle that the USPTO as well as challengers to the validity of design patents face when trying to identify a primary reference for purposes of establishing that a design is obvious. Absent the identification of a primary reference, no inquiry is needed into whether two or more references can be combined to deem a claimed design to be obvious.

Step 2: Combination of a Primary Reference and a Secondary Reference. As noted above, after a primary reference is identified, one must identity one or more secondary references that disclose the features that are absent from the primary reference.

However, a secondary reference may only be used to modify a primary reference if the two references are related to a sufficient degree that the appearance of certain ornamental features in one design suggests application of those features to the other design. Golden Eye Media USA v. Trolley Bags UK Ltd., 525 F. Supp. 3d 1145, 1194 (S.D. Cal. 2021).

In Ex parte Lerman, supra, the PTAB, explained the fundamental challenge in applying this second prong of the non-obviousness test for design patents, noting that when considering whether to combine the elements of two designs, one cannot search for a reason to combine them. Ex parte Lerman, at 7 (“Unlike with a utility application, there is no particular reason we can point to that a skilled designer would apply a feature of one design into another.”).

In the context of design patents, one cannot search for a reason to combine prior art references, because almost by definition what makes a design ornamental is that the designer created it when there was not a functional basis, i.e., a reason, for doing so.

Appreciating that it could not look for reasons to combining various prior art design elements, but still complying with the Patent Act’s requirement of application of the non-obviousness standard, and consistent with precedent, the PTAB held that the suggestion to combine the design of the secondary reference with that of the primary reference “must come from some similar aspects between the primary and secondary design to suggest minor changes in the primary reference… the primary and secondary reference must be ‘so related’ that the secondary reference suggests modifying the primary reference with such feature.” Ex parte Lerman, at 7.

The PTAB’s statement of the law is consisting with CAFC precedent. See MRC Innovations v. Hunter Mfg., 747 F.3d 1326, 1334 (Fed. Cir. 2014) (“it is the mere similarity in appearance that provides the suggestion that one should apply certain features to another design.”). Thus, under this standard, instead of a reason to combine prior art references, there must be sufficient similarity between some or all of the aspects of the designs.

Patent practitioners will readily note that this requirement is at odds with KSR v. Teleflex, 550 U.S. 398 (2007) in which the Supreme Court rejected the CAFC previously employed teach, suggest, or modify test under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art. Id. at 407, 419. Instead, the court emphasized that a person of ordinary skill in the relevant art also has “ordinary creativity” that must be taken into account in the inquiry into obviousness. Id. at 420.

The Supreme Court decided KSR in the context of a utility patent, and the CAFC has deemed it to be an unresolved issue is whether the holding of KSR applies to design patents. Titan Tire v. Case New Holland, 566 F.3d 1372 (Fed. Cir. 2009) (“… it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.”); see also Johns Manville v. Knauf Insulation, 2017 WL 378547, 17 (PTAB July 17, 2017) (the implications of KSR for design patents is an open question), aff’d 730 Fed. Appx. 934 (Fed. Cir. July 13, 2018); Caterpillar v. Miller International, Ltd., 2015 WL 4467389, 4 (PTAB July 9, 2015) (“We are unaware of any case law, nor has petitioner pointed us to any, that confirms the Supreme Court’s holding in KSR is germane to an obviousness determination in design patents.”).

However, one must question why the Supreme Court would distinguish inventors from designers with respect to a presumption of having ordinary creativity, particularly when Congress stated that the standards for patentability apply to both design patents and utility patents. 35 U.S.C. §171.

Recently, in Termax Co. v. Illinois Tool Works, 2022 WL 1618056 (PTAB May 12, 2022), following the requirement of the CAFC as set forth in MRC Innovations, supra, that the designs in cited references must suggest each other in order for them to be combined, the PTAB considered whether two different combinations of references were appropriate for invalidating a design patent at issue.

The PTAB emphasized that in order to combine the designs from two references, the designs need to be “so similar in appearance” that an ordinary designer would be led to incorporate the features of one into the other. Id. at 11.

At issue was the design for a fastener. In rejecting the first combination of references, the PTAB noted that the consideration of improved functionality by modifying the shape or a design in a primary reference would be insufficient to motivate the combination of a primary reference and a purported secondary reference. Id. at 12.

Doctrinally, this holding is consistent with the purpose of awarding design patents, i.e., that they protect new and non-obvious ornamental designs. But it also illustrates the challenges for examiners and accused infringers when trying to establish a basis on which to combine prior art references in order to deem a design obvious. Instead, if the primary reference and secondary reference are not closely related, justifying the combination of them is always going to be challenging.

Conclusion. The Supreme Court has a long history of thinking that the USPTO is too lenient when granting patents. See e.g., Sandra Park, Is the ‘Patent Happy’ Patent Office Violating the First Amendment?, ACLU (Feb. 27, 2014) (Justice Elena Kagan noting: “The PTO seems very patent happy” during oral argument in Association of Molecular Pathology v. Myriad, argued on April 15, 2013). But unless and until either a design patent case reaches the Supreme Court and presents the issue of whether KSR applies to design patents or Congress speaks to the issue, the low standard for non-obviousness will continue to be applied by both the USPTO and the courts.

For any company that brings products to market, the best defense is good offense, and if clients have not previously thought about pursuing design patent rights, or have done so only on limited scale, they should revisit this strategy. Obtaining these rights can increase the value of their companies.

Additionally, although holding a patent is not in and of itself a defense to infringement of someone else’s patent, having one’s own design patent, which by definition carries a presumption of novelty and non-obviousness, can be persuasive when trying to convince an aggressive holder of a design patent to forgo asserting infringement of their rights.

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