Legal context Under 35 USC 103, a patent for a claimed invention may not be obtained if the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person of ordinary skill in the art to which the claimed invention pertains. The same statutory grounds for obviousness apply to both utility patents and design patents. In the 1980s, the US Court of Customs and Patent Appeals (‘CCPA’) and then its successor US Court of Appeals for the Federal Circuit (‘Federal Circuit’) applied a rigid and narrow test of obviousness for both utility and design patents. For utility patents, those courts would look for a specific teaching, suggestion or motivation to make a combination (known as the ‘TSM’ test). For design patents, starting with In re Rosen, 673 F2d 388 (CCPA 1982), in order to find a patented design obvious, a patent challenger was required to prove that there was an earlier design reference that had ‘basically the same’ design characteristics as the patented design. In 1996 the Federal Circuit, the circuit of authority for US patent cases, in Durling v Spectrum Furniture Co., built on the Rosen test to further require the court to determine whether it would have been obvious for a designer to modify the earlier reference to create the patented design in question (101 F3d 100 (Fed. Cir. 1996)). This two-part test is commonly referred to as the Rosen-Durling test.
Series
Intellectual Property Law & Practice ; 19, 10, 2024, 1747-1540.