Is it obvious? Let’s Reconsider. Design Patent Obviousness vs. Utility Patents

Please join the New York Intellectual Property Law Association (NYIPLA) Fashion Law Committee for our first in-person event of the year, on Wednesday November 1st at Pryor Cashman LLP.

This in-person meeting will be hosted by Co-Chairs Douglas A. Miro, Partner at Amster, Rothstein & Ebenstein LLP and Dyan Finguerra-DuCharme, Partner at Pryor Cashman LLP, with distinguished guest speakers including Jeffrey L. Snow, Partner and Chair of the Patent Department at Pryor Cashman LLP, Lee Curtis, Partner and Chartered Trademark Attorney, and Suzan Moss, Senior Chartered Trademark Attorney, HGF Limited - a UK based IP firm. 

For the first time in over five years, the Federal Circuit will be hearing a patent case en banc. The Court will hear LKQ Corporation v. GM Global Technology Operations LLC, which pertains to the current standard of non-obviousness that is applied to design patents. LKQ was a repair part vendor for GM.

Currently, there is a two-part test for non-obviousness for design patents, referred to as “the Rosen test.” First, the challenger must show there is a single primary reference which is close to the claimed design. Second, the challenger must show that the difference between the primary reference and the claimed design can be bridged by one or more secondary references. These references must be related enough to the claimed design that “an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design.”

For utility patents and obviousness, KSR v. Teleflex rejected strict tests in determining obviousness for utility patent claims. KSR held, inter alia, that an inventor of ordinary skill in the art could look to nonanalogous art. The Court stated that obviousness inquiries should use “an expansive and flexible approach” rather than “a rigid rule.”

LKQ is arguing for the more flexible KSR approach.  GM wants things to stay the same with the more rigid Rosen test. 

Our panel will discuss how the LKQ case may impact the fashion industry.  In particular, if the Court abandons the Rosen test in favor of KSR approach, design patents may be more vulnerable to attack in litigation, which is fair or unfair depending on which side you are on.  Adopting the KSR approach could also lead to uncertainty and more litigation, at least in the beginning, while courts determine how exactly to adapt the KSR standard to design patents.

This program is CLE-accredited and designed for experienced attorneys and newly admitted attorneys. 

The presentation will begin promptly at 6:30 pm, but all attendees are welcome to arrive at 6 for networking.

Materials | Speaker Biographies | CLE Evaluation Form

The New York Intellectual Property Law Association extends its gratitude to the sponsor of this event, Pryor Cashman LLP