May 2024

In a pivotal ruling, the U.S. Court of Appeals for the Federal Circuit has revamped the criteria for determining the obviousness of design patents. Moving away from the stringent Rosen-Durling test, the court has embraced a more flexible approach aligned with the Supreme Court’s KSR v. Teleflex decision for utility patents. This shift is encapsulated in the recent LKQ Corp. v. GM Global Tech Operations LLC decision.

The previous Rosen-Durling test required identifying a single reference, known as a “Rosen reference,” with design characteristics essentially the same as the claimed design. Secondary references could only be considered if they were closely related to the Rosen reference. The process was terminated if no suitable Rosen reference was found.

The LKQ decision overrules the rigid Rosen-Durling test, adopting a flexible approach based on the Supreme Court’s KSR decision and the Graham framework for utility patents.

Graham Factors:

• Scope and content of the prior art.
• Differences between prior art and the claimed invention.
• Level of ordinary skill in the art.
• Prior art must be analogous, meaning from the same field or reasonably pertinent to the design problem.

Under the new test, the visual appearance of the claimed design must be compared to prior designs from the perspective of an ordinary designer in the field. The motivation to combine references does not need to originate from the references themselves but must be supported by the record without hindsight. Secondary considerations, such as commercial success and industry praise, continue to be relevant.

This decision relaxes the standards for finding a design patent obvious, potentially benefiting patent challengers while making it harder to patent new designs by lowering the barrier for obviousness. It also provides patent owners with avenues to argue non-obviousness through non-analogous prior art, lack of motivation to combine references, and secondary considerations.

Overall, the Federal Circuit’s decision is set to significantly influence the validity of existing design patents and the process for obtaining new ones, allowing for a broader and more nuanced assessment of obviousness.

McCoy Russell has an active design patent practice and advises companies on strategic design patent filings in the US and abroad.

Patexia recently released its Trademark Intelligence report which examines all US-Registered trademarks to identify the most outstanding attorneys and law firms for trademark prosecution. Based on performance, Anna McCoy stands among the top 250 attorneys.

Serving start-ups to iconic brands, Anna has helped establish McCoy Russell as a partner with its clients in developing strong branding rights. Learn more about the firm’s trademark and branding specialty (link here) or contact us if we can be of assistance.

McCoy Russell had the pleasure of hosting the Oregon Patent Law Association (OPLA), U.S. Patent & Trademark Office (USPTO), and invited attendees from other local IP law firms and in-house counsel to help create a dialogue between the USPTO and those involved in the patent system. The goal of this meeting was to foster meaningful conversation between USPTO personnel and Portland-area stakeholders regarding recent initiatives and directives as well as the current overall experience with the USPTO. Participants agreed that the meeting was both productive and informative.

Design patents often rely heavily on visual representations to protect the unique aesthetic features of an invention. Drawings that show the claimed design need to be consistent. As it is generally preferable to have six figures to show a full article to cover all its aspects, it is important to be mindful of the perspective views. Perspective views may also be included, but some applicants rely on perspective views without all corresponding six views. This can create issues as perspective views may cause distortion and thus inconsistency with the other six views. As another example, if only perspective views are used, there may be aspects of the design that are not fully shown, which can be fatal to the application.

One potential approach to supplement disclosure of a design application in case problems arise in prosecution is to utilize an appendix. While appendices may be an uncommon addition in utility patents, they emerge as invaluable assets in design patents. These supplementary materials, comprising images, photographs, and materials, offer comprehensive support beyond what drawings alone may provide. Such additional support can be especially useful for international applications and for depicting intricate details that are not clearly shown in the drawing. Appendices enrich the patent disclosure, ensuring a robust path for prosecution, particularly in the US.

McCoy Russell has a specialty design practice that makes use of both in-house drawing specialists and trusted drafts teams to support its clients’ designs. Please contact us at [email protected] if we can be of assistance.

Once again the Multnomah Bar Association is supporting it Battle of the Lawyer Bands event to fundraise for Multnomah Bar Foundation’s CourtCare, CourtSupport and CourtConnect. McCoy Russell is excited to not only participate in this charitable event that brings together legal professionals from various firms to showcase their musical talents, but contribute to a cause that makes a significant impact on access to justice for those in need.

We thank fellow Rockstar Sponsors Farleigh Wada Witt and Menache Properties for their support of this event.

Please see the Multnomah Bar Association website to purchase tickets for the event on Thursday, August 15, 2024.

The Oregon Patent Law Association recently relaunched its 2024 Conference at Salishan. The conference brought together intellectual property professionals from the Pacific North West, Arizona, Canada, and UK. Among these professionals was Justin Wagner who currently serves as OPLA’s President and helped coordinate the conference along with OPLA Board Members.

OPLA’s conference was a weekend devoted to fostering connections among patent professionals and featuring expert speakers addressing key topics in Patent Law. McCoy Russell is proud to continue its active support of OPLA and its events examining advanced topics in Patent Law.

The United States Patent and Trademark Office (USPTO) recently replaced the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) with Assignment Center.

Sometime after the transition, a programming oversight inadvertently allowed unauthorized access to certain bibliographic information. This bibliographic information was limited to the application number (the two-digit series code plus the six-digit serial number) and title of the invention.

The USPTO has issued error notices and McCoy Russell has already established processes that have managed this issue proactively. The firm’s collaborative and dedicated action teams continue its meticulous processes and review all inbound documentation and update docketing for its clients.

We note the USPTO first identified the software error on March 28, 2024, and promptly rectified it by March 29, 2024. It is important to clarify that only application numbers and titles were disclosed; applicant specifications and claims were not accessible during this incident.