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Intellectual Property Litigation: The Battle Over Design Patent Obviousness: Will The ‘Rosen-Durling’ Test Continue to Govern Future Design Patent Obviousness Inquiries?

March 13, 2024

Litigation partners Catherine Nyarady and Crystal Parker’s latest Intellectual Property Litigation column, “The Battle Over Design Patent Obviousness: Will The ‘Rosen-Durling’ Test Continue To Govern Future Design Patent Obviousness Inquiries?” appeared in the March 13 issue of the New York Law Journal. The authors discuss a forthcoming decision in which the U.S. Court of Appeals for the Federal Circuit will decide whether to amend its longstanding framework for assessing design patent obviousness, known as the Rosen-Durling test. The two-pronged obviousness test requires both the identification of a single primary reference with design characteristics that are “basically the same” as the claimed design, and secondary references that can be used to modify the primary reference to create a design with the “same overall visual appearance” as the claimed design. In what will be the Federal Circuit’s first en banc decision in a design patent case since 2008, the court will consider whether and how the obviousness test for design patents should be modified in light of the more flexible approach to obviousness that the Supreme Court has endorsed in the utility patent context. Any change to Rosen-Durling is likely to impact design patent holders and challengers for years to come. Litigation associate Allison Candal assisted in the preparation of this column.

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