DESIGN PATENT BLOG POSTS

In LKQ v. GM the en banc Federal Circuit discarded the rigid two-part test that had governed design patent obviousness since the early 1980s and replaced it with the Graham factors adapted for design patents. The inquiry is more flexible now, and challengers are already testing it, but as the Board’s denial in Next Step Group v. Deckers shows, a challenger still needs analogous art, a primary reference, and a record-supported reason, without hindsight, to modify it. This episode covers five things a prosecutor can do to make that job harder: put the closest art on the record, answer rejections with the claim rather than emphatic remarks, build a family rather than a single patent, choose the article title deliberately, and keep the claimed design aligned with the product so objective evidence has a nexus.

When a design patent’s drawings show no article, the title and claim language supply it, and that language can decide the case. This episode walks through Curver Luxembourg v. Home Expressions, where a pattern claimed for a chair could not be asserted against a basket, and In re SurgiSil, where the same language defeated anticipation, and explains how to choose and amend the title deliberately during prosecution.

This episode discusses how the Federal Circuit applied prosecution history disclaimer to a design patent in Top Brand v. Cozy Comfort, and what that means for how you draft and argue responses to office actions so the patent holds its scope when it is later enforced. It also covers the related doctrine of prosecution history estoppel.