Determination of Obviousness in Design Patents

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While it is not common to receive a prior art rejection for a design patent, it can certainly happen, especially if the design is widely claimed. In utility patents, the question of obviousness is an analysis of what a person of ordinary skill in the field would find obvious in light of the same or similar problem. When it comes to design patents, obviousness is based on the “ordinary viewer” test, which is an analysis of the claimed design and its prior art viewed as a whole instead of to compare the claimed drawing to the drawing of the state of the art element by element. While the ordinary observer’s test requires consideration of the design as a whole in the context of its environmental characteristics, the scope of the claim is still very important in terms of how the design will be examined.

The typical Section 103 (obviousness) analysis for utility patents is a bit more like arithmetic – the examiner is looking for claimed elements a, b, and c. The US Patent and Trademark Office (USPTO) obviousness assessments for utility patents often occur in a vacuum, without the context of the environment. When reviewing designs, it is much more important to think about the context of the claimed design, which is usually presented as unclaimed or dotted elements.

Where the USPTO uses a combination of designs to assert that the claimed design is made obvious, the ordinary observer’s test asks whether a designer of ordinary skill would have combined the teachings of the prior art to create the same overall visual appearance as the claimed design. . In this case, the examiner must present a main reference, which is a unique reference which contains essentially the same visual impression as the claimed design. A master reference cannot have substantial differences in overall visual appearance, and it cannot require major changes to create similarity in overall visual appearance. Then, if a primary reference exists, the secondary reference is evaluated to determine whether an ordinary designer would have altered the primary reference given the secondary reference to create an overall appearance identical to the claimed design.

So when it comes to a combination of references, the main or primary reference should actually be very close to the claimed design. In fact, it should be basically the same as the claimed design, with no substantial differences, no major modifications necessary. The secondary reference only compensates for the slight defects of the primary reference.

While this may sound simple, it’s really not a black and white test – what is a primary benchmark? What basically looks like something else? As always, evidentiary standards and procedural posture can throw a real wrench into the analysis.

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