LKQ v. GM: Looser Standard Means More Design Patents Will Be Obvious

In LKQ Corp. v. GM Global Technology Operations LLC, the Federal Circuit Court made it harder to secure design patents for minor updates to product updates.  In particular, they enlarged the scope of prior art that can render a design patent obviousness. This decision is pivotal, as it sets a new precedent for a broader pool of prior art for design patents that the examiner can use to reject your design patent application. The ruling means that obtaining and keeping a design patent may be more difficult for businesses, as it opens up more avenues for prior art to be considered relevant.

Based on this case, the recommendation would be to seek a design patent only for truly unique and new designs, not minor improvements to last year’s models.  Design application for the minor improvements will see more rejections in the future.

Key Changes from the Rosen-Durling Standard to Analogous Art

Prior to this decision, the standard for assessing the obviousness of a design patent relied heavily on the Rosen-Durling test. This test required two conditions for prior art to be used to invalidate a design patent based on obviousness:

1. The primary prior art reference must be “basically the same” as the claimed design.
2. Any secondary references had to be “so related” to the primary reference that their features would be considered applicable to the primary design.

The Rosen-Durling test’s “basically the same” and “so related” requirements effectively restricted the pool of prior art references, helping many design patents survive invalidity challenges and making them easy to secure as a granted design patent. However, in LKQ v. GM, the Federal Circuit adopted a broader test by applying the concept of analogous art—similar to the standard used in utility patents.

What is Analogous Art?

Analogous art is prior art that is reasonably related to the field of the claimed invention or is pertinent to the problem faced by the inventor, even if it is from a different field. This expanded definition allows for more prior art to be used to reject or invalidate the patent, as it doesn’t need to meet the narrow “basically the same” or “so related” criteria. Now, prior art simply needs to be from an analogous field or address a related problem, making it easier to argue that a design is obvious in light of a broader range of references.

In my experience securing utility patents for clients, contesting an examiner’s choice of prior art as non-analogous is rarely successful. Inventors often react with surprise when prior art from a completely different field is cited by the examiner. They want to argue that the art is from an unrelated area and therefore shouldn’t apply to their invention. However, the USPTO consistently upholds a broad interpretation of analogous art, making it difficult to win on the argument that the reference is too unrelated. Now, with the Federal Circuit’s decision in LKQ, design patents will face this same challenge.

Implications of LKQ on Design Patents

This ruling means that:

1. It’s Harder to Get a Design Patent: The expanded scope of available prior art means design patent applications will more likely be rejected and not allowed, as examiners can cite a wider array of references in arguing that a design is obvious.
2. Greater Risk of Invalidity for Existing Design Patents: The LKQ decision opens up the possibility of invalidating existing design patents if they can be challenged based on analogous art from related fields.

Current Allowance Rates and Strategic Shifts

Prior to LKQ, the allowance rate for design patents was notably high, exceeding 85%. This high allowance rate has made design patents an attractive option for protecting intellectual property. If the aesthetics of the product, and not the function, were what an inventor wanted to protect, a design patent was the way to go. I would often tell clients that it was a relatively easy process due to the high allowance rate. However, in light of the LKQ decision, I now explain that this allowance rate may no longer be as high. With a broader range of prior art now considered relevant, examiners have more grounds to reject design patent applications on the basis of obviousness. This shift means that applicants may face more challenges in securing design patents, and existing patents could be more vulnerable to invalidation.

A New Strategy for Design Patents

Previously, a design patent could be secured for almost any slight design change. This was especially useful for companies introducing minor design updates year to year to keep up with trends or make subtle improvements. Now, under LKQ, such minor tweaks won’t easily be protectable unless they constitute a truly nonobvious design variant. Moving forward, inventors need to be more selective and focus on protecting only the significant, distinguishable design changes. This will require a more strategic approach to design patents, reserving them for designs that are genuinely novel and sufficiently differentiated from prior art.