A Landmark Summer for Design Patent Law

September 18, 2024

Written By Lorelei Graham and Ahmed Elmallah

The world of intellectual property (IP) underwent some significant transformations this summer, with recent changes from the U.S. Federal Circuit and the Canadian Intellectual Property Office (CIPO) reshaping the landscape of design patent law. These updates reflect a broader trend towards more flexible and inclusive IP protection, ensuring that innovators can better safeguard their relative designs.

U.S. Federal Circuit Overrules Rosen-Durling Test for Design Patents

In a landmark decision on May 21, 2024, the U.S. Federal Circuit overruled the long-standing Rosen-Durling test for determining the obviousness of design patents. This test, which had been in place since the 1980s, required that a primary reference be “basically the same” as the claimed design and that any secondary references be “so related” to the primary reference that their features could be combined. Critics argued that this approach was overly rigid and inconsistent with the Supreme Court’s decision in KSR v Teleflex, which emphasized a more flexible approach to obviousness.

The Federal Circuit has now replaced the Rosen-Durling test with the four-factor Graham test, originally established for utility patents. The Graham test considers:

1. The scope and content of the prior art.
2. Differences between the prior art and the claimed design.
3. The level of ordinary skill in the pertinent art.
4. Any secondary considerations, such as commercial success or long-felt but unsolved needs.

This shift aligns the obviousness analysis for design patents with that of utility patents, promoting a more holistic and adaptable approach. The decision is expected to create some uncertainty as courts and practitioners adjust to the new framework, but it ultimately aims to foster a more nuanced and equitable evaluation of design patent claims.

CIPO’s New Practice for Industrial Designs Applied to Buildings and Structures

On June 14, 2024, CIPO introduced a significant change in its practice regarding industrial designs applied to buildings and structures. Previously, CIPO did not consider buildings and structures as registrable under industrial design protection, viewing them as unfinished articles. However, following a comprehensive review of the legislative framework and relevant case law, CIPO has revised its stance. Now, buildings and structures, including those constructed on-site, are recognized as finished articles eligible for design protection.

This change brings Canada in line with international best practices and addresses the needs of architects, engineers, developers, and property owners who seek to protect their innovative designs. The new practice ensures that these stakeholders can now secure industrial design rights for their creations, fostering a more robust IP environment in Canada.

Implications for Innovators and Practitioners

The updates from the U.S. Federal Circuit and CIPO underscore a commitment to strengthening IP protection for design innovations. For U.S.-based designers, the adoption of the Graham test means a more flexible and comprehensive approach to evaluating the obviousness of design patents. This change is likely to impact how design patents are drafted, prosecuted and litigated, encouraging a more detailed and thoughtful analysis of design elements.

In Canada, the expanded protection for buildings and structures means that designers in the construction and architecture sectors can now secure IP rights for their unique creations. This development is expected to stimulate innovation and investment in these fields, providing designers with the legal tools they need to protect their work.  As the IP landscape continues to evolve, staying informed about these changes is crucial for anyone involved in design innovation. The updates from the U.S. Federal Circuit and CIPO reflect a broader trend towards more flexible and inclusive IP protection, ensuring that creators can effectively safeguard their innovative designs. By understanding and adapting to these new practices, innovators and practitioners can navigate the complexities of the IP world with greater confidence and success.

Authors