Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights two articles discussing the Federal Circuit’s recent en banc decision changing the court’s interpretation of design patent law’s nonobviousness requirement, along with a memorandum from the U.S. Patent and Trademark Office addressing the same decision:
- an article detailing the effects that the Federal Circuit’s decision will have on design patent challenges;
- another article discussing how the new test has created uncertainty over what’s obvious; and
- a memorandum from the U.S. Patent and Trademark Office entitled “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corporation v. GM Global Technology Operations LLC.“
Maura O’Malley wrote an article for The Global Legal Post detailing the effects that the Federal Circuit’s recent decision in LKQ Corporation v. GM Global Technology Operations LLC will have on design patent challenges. In the article, she interviews Scott Hejny, an attorney at McKool Smith, who believes that the less rigid test set out in that ruling “won’t be viewed favourably by design patentees, because design patents will now be harder to obtain and much easier to challenge.” O’Malley also reports on remarks by the International Trademark Association, which said the elimination of the old test would “upset the carefully crafted, long-established balance between design patent and trade dress protection, to the detriment of both intellectual property owners and consumers alike.” We recently highlighted the Federal Circuit’s decision in a breaking news post on this site.
Michael Shapiro wrote an article for Bloomberg Law discussing how the new design patent test set forth in the same case has created uncertainty over what is obvious. In this article, Shapiro interviews Banner Witcoff partner Rob Katz, who predicts that the new test will cause “short-term havoc” in the design patent sphere of the judicial system. He predicts inconsistent application of the new test over the course of years by different district courts “until this new test and different fact patters are solidified.” Katz believes that a “better solution would be for Congress to rewrite the law governing design patents.”
The U.S. Patent and Trademark Office released a memorandum entitled “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corporation v. GM Global Technology Operations LLC.” In it, the Director of the USPTO provides instructions for USPTO personnel to use in making decisions in light of the new test. She explains that, “[t]o fully resolve the question of obviousness after LKQ, United States Patent and Trademark Office (USPTO) personnel must apply a flexible approach to obviousness similar to that applied in utility applications.”