Federal Circuit’s New Design Patent Test Sparks Controversy and Legal Uncertainty

The Federal Circuit's recent decision to adopt a more relaxed framework for invalidating design patents is poised to create significant legal and practical challenges in the years to come. This new standard, which aligns the obviousness test for design patents more closely with that for utility patents, has been met with both criticism and cautious optimism within the legal community.

The ruling stems from a case involving LKQ Corp.'s challenge to a General Motors Co. patented front fender design. The Federal Circuit directed the Patent Trial and Appeal Board (PTAB) to review the validity of GM's patent under this new framework. “We’re left with this kind of amorphous analogous art test” courts must use when deciding if a patented design is obvious, said Nathan Kelley, a former PTO solicitor. Judge Kara F. Stoll, authoring the opinion for the court, addressed concerns that this decision could lead to a chaotic and unpredictable patent landscape. She emphasized that the four-part obviousness test from a 1966 U.S. Supreme Court case, which has been effective for utility patents, should also be applicable to design patents. There may be “some degree of uncertainty for at least a brief period,” she acknowledged.

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Despite the court's confidence in the applicability of this test, critics argue that it could undermine the value of design patents.A better solution would be for Congress to rewrite the law governing design patents, Katz said." He further argued that this shift benefits manufacturers of knock-offs and counterfeits at the expense of industrial designers and companies investing in innovative designs. The decision is expected to make inter partes review (IPR) challenges of previously granted design patents at the PTAB a more attractive option for companies accused of infringement.Kelley predicted there could be “an unexpected influx” of filings beyond the LKQ-GM case now on remand. This potential increase in challenges underscores the need for the PTAB and district courts to develop robust analytical frameworks to handle the nuances of design patent obviousness under this new regime.

As the PTAB and the courts work through these issues, the legal landscape for design patents will likely remain unsettled. Companies and designers must stay vigilant and adaptable, anticipating further clarifications and adjustments from ongoing judicial and administrative reviews. The ultimate impact of this decision will depend on how effectively the courts and the PTAB can balance the need for clear, predictable patent standards with the protection of innovative design work.