Design patents must be non-obvious under 35 USC 103. But, because the examiner is visually comparing different drawings, this analysis can be subjective.
Just had your design patent application rejected as “obvious” (unpatentable) given a combination of other prior-art designs? Welcome to MPEP 1504.03 and the murky world of design patent obviousness law.
Design patent obviousness vs. utility patent obviousness:
Utility patent claims are written in words that describe how the invention is built or operates. Examiners evaluate these claims using logical arguments. By contrast, design patents only describe the ornamental design of an article in images, and examiners evaluate these by eye. Here there is a problem. Human visual pattern recognition is subjective, and the results are hard to communicate and justify.
Utility patents and design patents are thus very different. Should they be evaluated using the same rules? Don’t bother trying to think this through! Although some countries use different rules, in the US the answer is “yes.” They are evaluated using the same rules!
There are problems with using the same rules, and the results of a design patent obviousness analysis can be a bit random. Consider the ornamental designs of the two very different bicycles shown above. They have many differences. For example, the front wheel on the left bicycle is much larger than the rear wheel, while on the right, both wheels have identical sizes. In a utility patent, it is easy to explain the differences using words. But in a design patent application, there are only figures. What if the examiner rejects the design application for one bicycle by arguing that the other bicycle also has two wheels, and the other differences are obvious?
Fortunately, this doesn’t happen very often. The USPTO quotas allow design patent examiners to accept most applications. Also, most examiners are reasonable. But examiners do have a small quota of rejections to fill, and some examiners are unreasonable.
Don’t just point to pictures, use words:
So, if you encounter an “obvious” design patent rejection, what do you do? I recommend that you consider expressing the design in words and then use words to point out the flaws in the examiner’s design patent obviousness analysis.
Your results may vary: Examiners must follow the MPEP rules but otherwise tend to ignore any case law not referenced by the MPEP. In my opinion, the MPEP is biased in favor of the examiner. It tends to over-report legal rationales for rejecting patents and under-report defense rationales.
The MPEP is inadequate:
Unfortunately, the MPEP only contains tiny hints at possible defense methods. It falls far short of fully explaining what to do. But still, some defense methods exist. One way is to submit outside evidence of nonobviousness. Do this if you can, but it may not be feasible. There is one other method, however.
- MPEP 1504.03 section 15.67 references “In re Frick, 275 F.2d 741”. In this case, the court addressed a design patent obviousness issue by analyzing the design using words. However, the MPEP is passive-aggressive. It cites the case but then gives a misleading summary. So the examiner isn’t taught to analyze the design using words.
- However, the Federal Circuit likes the Frick case and has cited it in later decisions, such as Highpoint Design LLC v Buyers Direct, Inc., 2012-1455. Although the MPEP does not reference these decisions, they represent good law:
“The district court erred by failing to translate the design of the ‘183 patent into a verbal description. See Durling, 101 F.3d at 103 (“From this translation, the parties and appellate courts can discern the internal reasoning employed by the trial court to reach its decision as to whether or not a prior art design is basically the same as the claimed design.” [Emphasis added]”
Federal Circuit, Highpoint Design LLC v Buyers Direct, Inc., 2012-1455
Expressed more simply, the Federal Circuit has stated more than once that for a design patent obviousness analysis you should: translate the various designs into words. Then use the translated version to either validate or expose flaws in the underlying 35 USC 103 rejection.
Your examiner may or may not like this method (depends on the examiner). However, it is reasonably likely to hold up to subsequent analysis by PTAB or the courts, who tend to follow these Federal Circuit cases.
Unfortunately, the rules just changed!
On May 21, 2024, in the LKQ Corporation vs. GM Global Technology case, the Federal Circuit ruled that the Supreme Court’s “flexible” approach to obviousness review also extends to design patents. To the jaundiced eye, this approach appears too close to unfettered discretion. In other words, the examiner or judge now has more power to decide whatever they want!
This ruling is retroactive to both pending and issued design patents. It will take a while to determine the ultimate impact on design patents. However, if nothing else, the ruling means that design patent litigators will be busy.