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United States Patent and Trademark Office › Patents › Obviousness

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Erise IP

Eye on IPRs: August 2024

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Selective Readings of Cellect: Federal Circuit Carves out First Exception to Burgeoning Double Patenting Challenges

Rothwell, Figg, Ernst & Manbeck, P.C. on

Last year, the Federal Circuit surprised many observers of patent law in In re Cellect LLC, 81 F.4th 1216, 1228–29 (Fed. Cir. 2023) when—for the first time—it affirmed a U.S. Patent & Trademark Office decision cancelling an...more

MoFo Life Sciences

Federal Circuit Clarifies Scope Of Obviousness-Type Double Patenting In Allergan USA V. MSN Laboratories

MoFo Life Sciences on

On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024) clarifying the scope of...more

Kilpatrick

5 Key Takeaways - A New Era Dawns for Design Patent Validity - How the Federal Circuit Has Rewritten Design Patent Obviousness Law

Kilpatrick on

Kilpatrick partners Megan Bussey, Nicki Kennedy, and Michael Bertelson recently presented at the 20th annual KTIPS (Kilpatrick Townsend Intellectual Property Seminar) on the topic of “A New Era Dawns for Design Patent...more

Baker Botts L.L.P.

Intellectual Property Report - August 2024

Baker Botts L.L.P. on

Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more

WilmerHale

Feeding and Generating AI Creates Patent Application Challenges

WilmerHale on

The explosion of artificial intelligence has raised some challenging questions in patent law, particularly with prior art, or the body of knowledge available prior to the filing of patent application. Two of the most...more

Harris Beach PLLC

Court Ruling on Design Patents Could Have Huge Impact

Harris Beach PLLC on

A recent Federal Circuit decision overturning the long-standing obviousness test for design patents could have wide-ranging implications for design patent owners. The en banc decision in LKQ Corp. et al v. GM Global...more

Sunstein LLP

Federal Circuit Upends Obviousness Test for Design Patents, Leaving Uncertainty and Potential Opportunity

Sunstein LLP on

On May 21, 2024, the Federal Circuit upended decades of precedent regarding design patents in its decision LKQ Corporation v. GM Global Technology Operations LLC. Sitting en banc, a panel of Federal Circuit judges overturned...more

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

Strafford

[Webinar] Design Patents Post-LKQ v. GM: Navigating New Obviousness Test for Design Patents - July 10th, 1:00 pm - 2:30 pm EDT

Strafford on

This CLE webinar will guide patent counsel on the Federal Circuit's recent decision in LKQ Corp. v. GM Global Technology Operations L.L.C. (May 21, 2024) and its implications for design patents. The panel will discuss the new...more

Mintz - Intellectual Property Viewpoints

A Typo to Remember: Erroneous Patent Number in Terminal Disclaimer Destroys Exclusive Rights

Mintz - Intellectual Property Viewpoints on

Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

Jones Day on

Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

Levenfeld Pearlstein, LLC

Redesigning Design Patent Validity

Levenfeld Pearlstein, LLC on

The U.S. Court of Appeals for the Federal Circuit sitting en banc recently overruled the long-standing test for determining obviousness of design patents in LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global...more

Womble Bond Dickinson

Overhaul of the Rosen-Durling Test: A New Era for Design Patent Obviousness

Womble Bond Dickinson on

In the recent case of LKQ Corporation v. GM Global Technology Operations LLC, the en banc (for the first time in five years) Federal Circuit overruled the long-established Rosen-Durling test used for evaluating the...more

Miller Canfield

Strong Headwinds for the USPTO’s Terminal Disclaimer Proposal

Miller Canfield on

The United States Patent and Trademark Office (USPTO) is facing vigorous backlash to its proposal to change terminal disclaimer practice used in patent applications and, not so subtly, discourage the use of continuation...more

Morgan Lewis

Federal Circuit Overhauls Test for Assessing Design Patent Obviousness

Morgan Lewis on

In a landmark decision, the US Court of Appeals for the Federal Circuit has overruled the longstanding test for assessing whether a design patent is considered obvious in view of prior art. This decision represents a pivotal...more

Quarles & Brady LLP

R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

Quarles & Brady LLP on

Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness – USPTO Follows Quickly with Guidance

Akin Gump Strauss Hauer & Feld LLP on

In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents.  The challenged framework, derived from two cases, In re Rosen, 673 F.2d...more

Knobbe Martens

Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference...

Knobbe Martens on

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Unanswered Questions After Federal Circuit Overrules 40 Years of Precedent Defining Design Patent Obviousness

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On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, overruled more than 40 years of precedent defining the design patent obviousness standard. The decision eliminates the Rosen-Durling test,...more

Womble Bond Dickinson

USPTO Issues Updated Examination Guidance After Federal Circuit Overhauls Test for Design Patent Obviousness

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

Ballard Spahr LLP

Full Federal Circuit Eliminates “Improperly Rigid” Tests for Design Patent Obviousness

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In an en banc decision, the Federal Circuit decided this week that well-established tests for determining design patent obviousness are “improperly rigid,” in violation of U.S. Supreme Court precedent such as KSR v. Teleflex,...more

Bodman

Federal Circuit Overrules the Rosen-Durling Test for Determining Obviousness of Design Patents

Bodman on

On May 21, 2024, the Federal Circuit overruled the longstanding Rosen-Durling test for evaluating the obviousness of design patents.  LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21,...more

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