Yesterday, the United States Patent and Trademark Office (USPTO) issued a memorandum to provide updated guidance and examination instructions effective immediately on evaluating obviousness in design patent applications and design patents in light of the en banc Federal Circuit decision in LKQ Corp. v. GM Global Tech. Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024) (LKQ). 

The Federal Circuit concluded “that the Rosen-Durling test requirements—that (1) the primary reference be ‘basically the same’ as the challenged design claim; and (2) any secondary references be ‘so related’ to the primary reference that features in one would suggest application of those features to the other—are improperly rigid.” In place of Rosen-Durling, the Court provides a more flexible approach which amounts to a restatement of KSR for design patent claims while recalibrating the helpful aspects of Rosen, namely starting with a “primary reference” that is “something in existence” and “visually similar” to the claimed design to protect against hindsight. 

The USPTO is continuing to study LKQ and further guidance will be forthcoming.