Imagine That IP Law Blog

The landscape of design protection has seen significant developments on both sides of the Atlantic, with the U.S. undergoing a pivotal shift in design patent law following the Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), while the European Union continues to operate under the established framework for Community Registered Designs (CRDs). Both systems aim to protect the aesthetic aspects of industrial designs, but their approaches diverge significantly in terms of standards for protection, enforcement, and invalidity.

The Impact of LKQ v. GM on U.S. Design Patent Law

The decision in LKQ v. GM marked a considerable shift in the evaluation of design patent invalidity under 35 U.S.C. § 103 (see here for additional information on LKQ). Historically, the Federal Circuit applied a combined two-part test from In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996), requiring (i) a single "primary reference" with nearly identical overall visual impression to the claimed design before (ii) considering secondary references to show obviousness, so long as the secondary references were “so related” to the primary reference that the application from one to the other was obvious. This high bar for invalidity often favored patent holders.

In LKQ, the Federal Circuit questioned the ongoing validity of these tests, particularly in light of the Supreme Court’s guidance on obviousness in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The court suggested that the rigid requirement for a “primary reference” may not align with modern obviousness principles, signaling a loosening of the standards for proving invalidity of design patents.

If this more flexible standard becomes entrenched, it could have profound implications for U.S. design patent law by making it easier to invalidate designs that do not exhibit a sufficient leap of creativity over prior art. This may lead to an increase in invalidity challenges, particularly in industries like automotive and consumer electronics, where designs often evolve incrementally.

The Community Registered Design Framework in the EU

In contrast, the European Union’s Community Registered Design (CRD) system operates under the European Union Design Regulation (Council Regulation (EC) No 6/2002). To qualify for protection, a design must be:

1. New: No identical design must have been made available to the public before the filing date.
2. Possess individual character: The design must create a different “overall impression” on the informed user compared to prior designs.

Under the regulations:

A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Council Regulation (EC) No 6/2002, Article 6.

Accordingly, under the CRD framework, individual character ensures that only designs with a distinct aesthetic identity receive protection. This concept requires that a design, when viewed by an informed user, creates an overall impression distinct from any earlier design. The informed user is presumed to be more discerning than the average consumer but not as specialized as a design expert, and the evaluation focuses on the design’s appearance as a whole rather than isolated features. Minor differences that do not substantially alter the design’s overall impression may be insufficient to establish individual character, emphasizing the importance of clear and distinguishable visual elements.

The assessment of individual character is inherently comparative, relying on a side-by-side evaluation of the design in question and prior designs. Courts and tribunals consider factors such as the designer’s degree of freedom, the density of the design field, and the significance of differences between designs. In crowded fields where designs are highly similar due to functional constraints, even small differences may suffice to create a unique overall impression. Conversely, in areas where designers enjoy significant creative freedom, more pronounced variations are necessary.

As a result, the “individual character” as viewed by an “informed user” standard, while objective, introduces a nuanced analysis of the design’s distinctiveness. The European system does not require a “primary reference” or strict framework akin to In re Rosen. Instead, all prior art can be considered in evaluating novelty and individual character. This approach aligns with the EU’s focus on promoting innovation while discouraging monopolies on incremental variations.

Key Differences and Implications

The threshold for protection previously varied significantly between the U.S. and the EU. In the U.S., post-LKQ, the potential relaxation of the primary reference requirement shifts the bar for invalidity closer to the EU’s “overall impression” test. In the EU, the focus on individual character often results in a broader examination of prior art, potentially making it harder to protect marginally distinct designs.

Further, the scope of rights differs between the systems. U.S. design patents provide a strong monopoly but are limited to the specific design as claimed in the drawings, while CRDs cover any design that does not produce a different overall impression, offering broader but arguably less precise protection. Invalidity challenges also reflect these differences. The U.S. historically favored patentees with stringent invalidity tests, but LKQ may tilt the balance. Meanwhile, the EU’s CRDs face consistent scrutiny under the informed user standard, leading to frequent debates over subtle aesthetic differences.

Looking Ahead

The design law systems in the U.S. and EU reflect their distinct legal traditions and economic priorities. The outcome of LKQ could usher in a more flexible approach to design patent invalidity, potentially narrowing the gap between the U.S. and EU systems. For global businesses, understanding these evolving standards is critical to crafting robust design protection strategies.

As the U.S. courts refine the application of the LKQ decision, and as EU case law continues to clarify the “overall impression” test, practitioners must stay vigilant. Collaboration between U.S. and EU counsel will be more important than ever in navigating these parallel yet distinct systems.