In today’s competitive market, the visual appeal and unique ornamental design of a product can be as crucial to its success as its name or functionality. Protecting the distinctive look and feel of your company’s products can enhance brand identity, protect against knockoffs, and help ensure the broadest possible protection of your company’s intellectual property. One way to protect the look and feel of your company’s products is with a design patent.

When most people think of patents, they think of protecting utilitarian or functional-type inventions. This is accomplished with one type of patent: a utility patent. On the other hand, design patents are another option for companies trying to protect the look and feel of a product because design patents protect the ornamental features of the product rather than the product’s functionality. For example, a design patent can protect the layout of a smartphone user interface or the ornamental design of a valve.

For decades, when determining whether a design patent is new and patentable or whether it is obvious and unpatentable, courts have asked whether the design is “basically the same” as an older design. Although this test sounds simple, it can be difficult to fairly apply. In May, the Federal Circuit rejected the old rigid framework and held that the same obviousness test used for utility patents must be applied to design patents.  See LKQ Corp. et al. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024). This multi-factor analysis considers the scope and content of preexisting designs, level of skill in the art, and secondary considerations regarding commercial realities just as one would evaluate when determining whether a utility invention is unpatentable as obvious.  According to the LKQ court, this multi-factor test avoids “rigid preventative rules that deny factfinders recourse to common sense.”

The day after the LKQ decision, the U.S. Patent and Trademark Office issued a statement adopting this approach to its examination procedure, promising to issue further guidance, examples, and training consistent with LKQ. In light of the LKQ decision and the USPTO’s new guidance, companies should consider the following:

1. Review your product portfolio
   LKQ changes the legal landscape of what may be protected by a design patent, and whether this has a positive or negative impact on your company depends on your design and others like it that exist now or were previously in the marketplace. Companies should examine their new product designs and consider design patent protection for ornamental or unique designs.
2. Consider old designs (prior art)
   Prior art searches were historically more common with utility patent applications than with applications for design patents. The new approach to design patent obviousness requires a broader understanding of existing designs, so companies should consider conducting a search before applying for a design patent to more fully understand the scope of the prior art and its impact on patentability.
3. Leverage secondary considerations
   Secondary considerations may now become a turning point in design patent prosecution or litigation. While the old “basically the same” test did not focus on commercial evidence, LKQ requires review of secondary considerations such as commercial success, addressing long-felt needs, and showing others failed to achieve similar commercial results. Depending on how this evidence fits with a particular design, it may impact patentability of a product design.
4. Expect initial uncertainty in the USPTO and courts
   Although the PTO’s recently updated approach requires consideration under the new, more flexible obviousness standard, patent examiners are likely to have difficulties (at least initially) applying this test to new design patent applications. As a result, companies should be ready to provide explanation and evidence supporting a design’s patentability. Such evidence is equally important to those pursuing or defending against design patent claims in litigation and may present new arguments of enforcing or invalidating a design patent.

The Federal Circuit’s LKQ decision marks a significant shift in the evaluation of design patents and applications that could render more design patents invalid and make design patent applications more difficult to obtain. How it affects your company depends on the various factual considerations the USPTO and courts must now examine, which presents both opportunities and challenges to protecting product designs. Ultimately, however, leveraging this new legal landscape can help protect your intellectual property, brand loyalty and market share by deterring competitors from copying.