Imagine That IP Law Blog

On Tuesday, the Federal Circuit issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, case number 21-2348 (Fed. Cir. May 21, 2024) (en banc) overruling decades long precedent for challenging design patents based on obviousness under 35. U.S.C. § 103.

The prior test, known as Rosen-Durling, required as a primary reference an earlier design that had "basically the same" visual impression as the patented design, to which features could be added from additional prior art designs that are "so related" to it that the appearance of features in one design ... Read More ›

In the case of In re Cellect, the Federal Circuit upheld a United States Patent and Trademark Office (USPTO) decision that the patentee’s (Cellect’s) patents were unpatentable due to Obviousness-type Double Patenting (ODP). In reaching its decision, the Court ruled that Patent Term Adjustments (PTA) and Patent Term Extensions (PTE) should be treated differently when considering ODP.

In particular, the Court held that when different patent family members have different expiration dates based on PTA, the patent family members that expire on an earlier date can be relied upon ... Read More ›

The Federal Circuit issued a decision in In re Cellect on August 28, 2023 which may have far-reaching consequences during the assertion of one or more patents that are related members in a patent family, and that include claims that may be subject to an argument for invalidity for obviousness-type double patenting (ODP). The Federal Circuit found that when two or more related family member patents in a patent family cover similar enough or overlapping inventions, ODP can be applied to invalidate one of the patents where the related family member patents expire at different times due to ... Read More ›

Design patent protection is an under-utilized tool that can provide fifteen (15) or more years of protection at a fairly reasonable cost for the new and non-obvious ornamental appearance of different Articles, which can vary from consumer and industrial products to computer icons.  Once a design patent is issued, one study has shown that design patents provide a higher probability for obtaining an infringement verdict and a substantially lower chance of being found invalid than utility patents.  Accordingly, where appearance distinguishes a product from others in the ... Read More ›