미국의 디자인 진보성 판단기준인 Rosen-Durling 법리를 폐기한 미국연방관할항소법원(CAFC)의 LKQ v. GM 전원법정 판결

This article examines the changes in the standard for determining non-obviousness (inventive step) of U.S. design patents and their implications, focusing on the en banc decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in LKQ v. GM, issued on May 21, 2024. Although U.S. patent law applies the same non-obviousness provision (35 U.S.C. § 103) to both utility inventions and designs, the CAFC has long applied a unique and strict standard known as the “Rosen-Durling test” to prevent the error of hindsight bias, which is prone to occur due to the visual nature of designs. This doctrine has served as a powerful safeguard, making it difficult to invalidate registered designs by mandatorily requiring the existence of a primary reference that is “basically the same” as the claimed design and a “so related” connection between the primary and secondary references to establish obviousness. However, in the LKQ v. GM decision, the CAFC en banc held that the rationale of the Supreme Court's 2007 KSR decision—which rejected the rigid TSM test by emphasizing flexibility in determining the non-obviousness of utility inventions—should also apply to design patents, thereby officially overruling the rigid Rosen-Durling test. This article analyzes in detail the background leading to this decision, the procedural history of the lower courts and the appeal, and the arguments of various Amici Curiae. While design patent holders, such as Apple, advocated for maintaining the existing doctrine by emphasizing the intrinsic differences between designs and utility inventions, the automotive parts industry argued for the adoption of the KSR standard to ensure the uniform application of patent law and to promote competition; the court ultimately sided with the latter. The author predicts that due to this ruling, obtaining design patents in the U.S. will become more difficult, and the invalidation rate will rise, leading to a weakening of design patent protection. Furthermore, the author presents a critical view of the U.S. court’s approach of mechanically applying the same non-obviousness doctrine to both utility inventions (function) and designs (appearance), despite their fundamental differences in subject matter and attributes. In conclusion, this article suggests that the Korean Design Protection Act should seriously consider introducing the European “individual character” doctrine, which determines distinctiveness based on differences in overall impression, rather than the U.S.-style “non-obviousness (creative difficulty)” requirement.