Design Patent Obviousness After LKQ v. GM: A Practical Checklist

The Federal Circuit's 2024 LKQ v. GM decision rewrites design patent obviousness under 103, discarding the rigid TSM test in favor of the flexible KSR framework — and before assuming any effect on design-patent allowance rates, verify current USPTO data yourself, since no 2026 figures are established here.

The answer changes with the condition of the analysis: because obviousness allows an examiner to combine multiple references and account for differences from the claim, the strength of your single-reference position no longer controls the outcome.

How It Works

Before LKQ Corp. v. GM Global Technology (Federal Circuit, 2024), a design patent was invalidated as obvious only if the challenger found a single prior-art design that was "basically the same" as the patented one — the old Rosen test. LKQ threw that out. The court held that the obviousness analysis for design patents under 35 U.S.C. § 103 now follows the same flexible, fact-driven framework the Supreme Court set out in Graham v. John Deere and KSR v. Teleflex, the framework long used for utility patents. As Lexology put it, the inquiry is no longer strictly limited to the rigid TSM approach but is an evolving determination the Federal Circuit can shape. That means an examiner or challenger can now combine multiple prior-art designs and modify a primary reference to reach the claimed design — something the old single-reference test made much harder.

The mechanism runs in steps. First, the court identifies a primary reference — the closest prior-art design, which no longer has to be "basically the same," only a suitable starting point. Second, it asks whether a designer of ordinary skill in the relevant art field would have had a motivation to modify that primary reference, using secondary references, in the way the claim recites. Third, it weighs the Graham factors: the scope and content of the prior art, the differences between the prior art and the claim, and the level of ordinary skill. Fourth, it evaluates secondary considerations such as commercial success or industry praise, if raised. Under MPEP guidance on anticipation versus obviousness, anticipation demands an exact match in one reference, while obviousness allows combining multiple references and accounting for differences — LKQ imports that same distinction into design law.

Key terms to know: a "primary reference" is the base design being modified; "secondary references" supply additional design features; "motivation to modify" replaces the old requirement of a suggestion to combine; and "ordinary designer" replaces "person having ordinary skill in the art" as the hypothetical actor. The "ordinary observer" test still governs infringement — LKQ changed validity analysis, not infringement.

One check matters before you rely on any granted design patent: under 35 U.S.C. § 282(a), every issued patent is presumed valid, and the challenger bears the burden of proving obviousness by clear and convincing evidence. LKQ lowered the substantive bar for that challenge, but the evidentiary burden did not move. Verify which framework the examiner or court actually applied — a rejection or invalidity argument built on the old Rosen "basically the same" standard is now vulnerable, and one built on LKQ must still clear the presumption of validity.

Practically, this means your clearance search should stop asking "is there one identical design?" and start asking "can two or more known designs be combined, and would a designer of ordinary skill see the combination as motivated?" Patently-O notes obviousness is already the most common rejection basis, with the vast majority of applications initially rejected as obvious — under LKQ, that pressure now extends to design filings that previously sat safely outside a single-reference attack.

Key Factors to Consider

Before you commit budget to a design-patent validity opinion or an invalidity challenge, three decision criteria and a short list of figures do the sorting. This section alone lists the top decision criteria and numbers; treat everything below as a pre-commitment checklist you complete before money moves, not as a legal conclusion.

Criterion one: the reference count. Ask how many references the rejection actually rests on, because the count changes the standard you have to meet. LegalClarity's summary of MPEP 2131 draws the line cleanly: anticipation under 35 U.S.C. 102 demands an exact match in one reference, while obviousness under 35 U.S.C. 103 permits an examiner to combine multiple references and account for the differences between them and the claim. A single-reference file and a multi-reference file are not the same exposure, even when both arrive labeled obviousness. Get the count in writing before you price the work.

Criterion two: the documented level of ordinary skill and the field searched. Blank Rome LLP's analysis of the Federal Circuit's framework describes a more flexible, Graham-anchored inquiry. The practical consequence for you is a verification step: confirm the record establishes who the ordinary designer is and which art fields are properly in play, rather than accepting the assumption that one reference defines the universe. If the record is silent on either point, that silence is your negotiating room.

Criterion three: objective indicia, evidenced rather than argued. Copying, commercial success, and industry praise carry weight only when they appear as exhibits. The Supreme Court's KSR decision, as summarized by OC Patent Lawyer, moved obviousness toward a broader, common-sense inquiry under 35 U.S.C. 103 — and broad inquiries reward record evidence. Count the exhibits you can actually produce before you count the arguments you can make.

When the legacy route wins: if your prior art search turns up a single design that is nearly identical to the patented article, the old test remains the cleanest path. One reference, one comparison, no motivation argument to build. Anticipation under 35 U.S.C. 102 still demands an exact match in one reference, per MPEP 2131 guidance summarized by LegalClarity, so a true single-reference kill is the shortest distance to invalidity.

When the post-LKQ route wins: if your best reference is close but not "basically the same," the old test dead-ends and the new framework does not. LKQ imports the Graham and KSR logic that the Supreme Court applied to utility patents — the approach described by OC Patent Lawyer as aligning obviousness with a common-sense, functional inquiry — so you can combine a primary design reference with secondary references and argue the differences would have been obvious to a designer of ordinary skill. That is the decisive difference: the new route converts a near-miss into a viable challenge.

The winner, for most real-world searches, is the post-LKQ route. For the reason priced out above — that obviousness is already the dominant rejection basis — LKQ simply opens the combination-analysis door that utility-patent challengers have long used, and design patents now sit behind it too.

Verify before you commit: pull your strongest single reference, measure it against the "basically the same" standard, and if it falls short, budget for the multi-reference obviousness argument instead of abandoning the challenge.

What to do next

Frequently Asked Questions

Did LKQ v. GM keep or discard the TSM test for design patents?

It discarded the rigid TSM test in favor of the flexible KSR framework, making the obviousness inquiry an ever-evolving determination rather than one strictly limited to teaching-suggestion-motivation.

Can an examiner combine multiple references to reject a design claim under 103?

Yes, obviousness under 103 permits combining multiple references and accounting for differences between them and the claim, unlike anticipation under 102, which demands an exact match in one reference per MPEP 2131.

Who bears the burden when challenging a granted design patent's validity?

The challenger bears the burden of overcoming the presumption of validity under 35 U.S.C. 282(a), since courts assume every USPTO-granted patent meets all statutory requirements.

Is the post-LKQ obviousness analysis a fixed legal test or something else?

It is a flexible, fact-driven inquiry, following the Supreme Court's KSR decision, which reframed obviousness away from a fixed legal construct.

Which framework did the Federal Circuit adopt for design patent obviousness?

The Federal Circuit adopted the Supreme Court's KSR framework for design patents under 35 U.S.C. 103.

Has LKQ changed design-patent allowance rates at the USPTO?

The article warns not to assume any effect on design-patent allowance rates and to verify current USPTO data yourself, since the text notes no complete data on that point was available.

Quick answers

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