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By J.D. Houvener
Patent Attorney and Founder

JD: Matt, how’s that?

Matt: Nice, look at that!

JD: About a week ago, and we don’t get many of these, we had a presidential patent decision come down from the federal circuit.

Matt: But tell me, what’s the federal circuit and why is it important for patents and trademarks?

JD: Oh my gosh, so in the federal land, which is where patents and trademarks exist—meaning we’re not beholden to any state laws; we’re nationwide—the court system starts with district courts. There are many district courts, some states have several, while smaller states may have just one. The district courts answer to one federal circuit, and then the only place to go from there is the Supreme Court. So, the federal circuit is one step below the Supreme Court, and it’s really important because they are ostensibly the experts on these matters.

Matt: Got it. So, they’re the experts.

JD: Now, let’s get to the facts here. The case is LKQ Corporation versus GM Global Technology Operations LLC. It’s a mouthful, but let’s call it LKQ.

Matt: Is this a door handle case?

JD: No, sorry. This is about a design patent. Design patents are changing the precedent now. There are about 400,000 design patents out there today that are not expired, meaning patent holders with enforceable design patents might be on shaky ground. Just because you get a patent granted doesn’t mean you’re locked in. The law changes, and now those may be subject to invalidation.

JD: The federal circuit panel said that obviousness—one of the core tenets of getting a patent, which has to be novel and non-obvious—should no longer follow the age-old standard. The Supreme Court in 1982 and 1996 affirmed the Rosen Burling test, which simply said that for a prior art or an infringing design to be invalid, it has to be basically the same as the patented design. For years, that’s what won the day for Apple over the Samsung device, for instance.

JD: But now, they’re saying no. We should look at it the same as utility patents. They are forcing the same standard under KSR, which has been in place since 2007 for utility patents. This involves the TSM test—teaching, suggestion, and motivation. Is there anything in the prior art that suggests, teaches, or motivates what’s being patented? It’s a much broader standard, not just about being basically the same.

JD: So, in order for a design patent to get through, it has to meet this harder, more difficult standard under KSR. This could invalidate a lot of design patents and make it tougher to get new ones approved. That’s quite an update.

Matt: Absolutely. Not a lot of people are happy about it. Typically, if you can’t get a utility patent, you might look to get a design patent as an alternative.

JD: Design patents protect the three-dimensional object based on solid drawings; no words matter, just the pictures and drawings. With utility patents, the written claims control and give you the rights.

Matt: If we can’t do design patents as easily, we might need to consider doing a trade dress application instead.

JD: And for that, we can go right down the hall to Mr. PTH Chambers, where he can help move something forward for you.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/