Episode 3 of Prosecuting Design Patents for Enforcement, a series on what design patent litigation teaches about prosecution.
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.
What LKQ changed
When a design patent is challenged, obviousness historically has been one of the harder attacks to mount. In the LKQ case involving fenders, the Federal Circuit changed the test for obviousness. Whether the outcomes change remains to be seen, but the attack is now easier to frame, and challengers are already testing it. This episode covers what the new standard means for prosecution and how to build a file that is ready before anyone attacks.
From the early 1980s until 2024, design patent obviousness was governed by a rigid two-part test. A challenger had to identify a primary reference with design characteristics basically the same as the claimed design. Without one, the challenge failed at the threshold. That changed in LKQ. The Federal Circuit, sitting en banc, discarded the rigid test and replaced it with the Graham factors adapted for design patents: the scope and content of the prior art, the differences between the art and the claimed design, the level of ordinary skill, and objective evidence such as commercial success and copying.
What a challenger still has to prove
The practical effect is simple. The obviousness inquiry is more flexible than it used to be. A challenger no longer loses merely because it cannot find one reference that is basically the same. But it still needs analogous art, a primary reference design, and a record-supported reason, without hindsight, why an ordinary designer would modify that design to create the claimed overall appearance.
In Next Step Group v. Deckers, an early decision of the Patent Trial and Appeal Board applying LKQ, the challenger brought ten grounds against a footwear design patent. Some asserted images were not adequately proven to be prior art printed publications, and even putting that aside, the challenger did not adequately address the overall visual differences or explain why an ordinary footwear designer would choose the claimed configuration from the prior art references, especially the particular pull tab, opening proportions, and top line. The Board denied institution.
An obviousness challenge ultimately turns on the designs themselves and on the challenger’s proof. But where the challenger relies on a combination, it must supply a record-supported reason for that combination, and some decisions made during prosecution can make that job easier or harder. The prosecutor’s goal is to make it harder. Here are five ways to do it.
Five ways to build the record
First, consider doing your own prior art search and put the closest art on the record. Art the Office actually considered can make a later challenge harder. At the Board, the Office may deny review when the same or substantially the same art or arguments were already presented. And in district court, although the clear and convincing standard does not change, the fact that the examiner considered the same reference and argument can matter to the weight a fact finder gives the invalidity case. The most dangerous reference is often the one the record never squarely confronted.
Second, consider answering rejections with the claim, not with unnecessary commentary. Remarks must still squarely answer the rejection and explain why the design is patentable, but the words matter. Disclaimer requires a clear and unmistakable surrender, but specific emphatic distinctions can create that risk, especially repeated feature-by-feature callouts and absolute language such as essential, critical, or for this alone. Where argument is needed, frame it around the overall visual impression rather than individual features. Where the original disclosure supports it, converting broken lines to solid lines can place a distinctive feature within the claimed design and narrow away from the reference. Let the drawings do as much of the work as they can. Let the remarks do only the work they must.
Third, consider building a family, not a single design patent. Use supported continuation or divisional practice to pursue the full design, distinctive portions, and intermediate claim designs where the original drawings support them. That makes a challenger confront more than one overall visual impression. And keep a continuation pending where the commercial importance justifies it. If new art surfaces, it preserves an opportunity to pursue the supported claim scope that remains patentable.
Fourth, consider paying careful attention to the article title. The new test still requires that prior art be analogous. Designs from the same field of endeavor as the claimed article will qualify, and the court left open whether designs from other fields may also be considered. So choose the article title deliberately. It helps define the prior art a challenger may rely on, but it does not guarantee that designs from other fields will be excluded.
Fifth, consider keeping the claimed design aligned with the product. Objective evidence still counts: commercial success, copying, industry praise, but it needs a nexus to the claimed design. A claim that tracks what the market recognizes and buys gives that evidence a better chance to matter. And preserve the proof while it is fresh: the launch materials, customer research, design awards, sales records, and copying evidence that connect marketplace success to the appearance you actually claimed.
You cannot control the test a court will apply. You can control the record it will be applied to. The obviousness fight is often won or lost years before it starts: in the search, in the drawings, in the family, in the file. Build the record to defend against the attack, not just for the allowance.
The information in this post is general information only. It is not legal advice.
A free 50-minute extended preview on design patent obviousness after LKQ v. GM is on the Free Previews page.
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