Another common design patent myth is that the Patent Act’s “nonobviousness” requirement is a very high barrier to protection for designs.
In order to be patentable, a design must not only be new (or “novel”), it must be sufficiently new (or “nonobvious”). Section 103 of the Patent Act states that a patent “may not be obtained” for an invention that “would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.”
This requirement applies to both utility patents and design patents. But obviousness is analyzed quite differently in each context.
To determine if a design is obvious, the Federal Circuit uses a two-part test. The first part is the identification of a proper “primary reference.” This means that the court (or patent examiner) must find a pre-existing design that has “basically the same” appearance as the claimed design.
If there is a proper primary reference, then the inquiry proceeds. (For the purposes of this post, the details of the second part of the test aren’t important. But you’re curious, I've written about them here.) But if there is no primary reference, the inquiry is over—the design cannot be deemed obvious.
So how similar does a pre-existing design have be to be deemed “basically the same” as the claimed design? There’s never been a really clear answer. But it is clear that “basically the same” must be something different than “the same.” If a prior design has “the same” appearance, then the new design would be invalid for lack of novelty.
In the past few years, the Federal Circuit has been interpreting “basically the same” to require a very high degree of similarity between the claimed design and the pre-existing design. For example, in Apple v. Samsung, the court decided that the tablet shown below on the right was not similar enough to be a primary reference for the tablet design shown below on the left:
And in another recent case, the Federal Circuit suggested (though it did not decide) that the slipper shown below on the right might not be similar enough to be a primary reference for the slipper design shown below on the left:
Because such a high degree of similarity is required, it’s quite difficult for courts (and the PTO) to even reach the second part of the § 103 inquiry—let alone conclude that a design is invalid as obvious. Therefore, in practice, § 103 is not a particularly difficult obstacle.
That’s not to say it’s impossible for an accused infringer to prevail on a § 103 defense. Earlier this year, a federal judge in Ohio decided that two design patents for sports jerseys for dogs were invalid as obvious. But we’ll see how that decision holds up on appeal.
In the meantime, it’s worth pondering whether the Federal Circuit’s test has a KSR problem. In KSR Int’l Co. v. Teleflex Inc., the Supreme Court admonished the Federal Circuit against using “rigid and mandatory formulas” in applying § 103. And the more similarity the Federal Circuit requires for primary references, the more rigid this test looks. Of course, the Supreme Court hasn’t heard a design patent case in a very, very long time. But maybe this issue could pique its interest.
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