How does the “suggestion test” apply to design patent obviousness determinations?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The “suggestion test” is an important aspect of design patent obviousness determinations. The MPEP describes its application:

“If a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references, the claimed design would have been obvious.“

Key points about the suggestion test in design patents:

• It assesses whether the prior art would have suggested the modifications necessary to arrive at the claimed design.
• The test considers what would be obvious to an ordinary designer in the field.
• It requires a proper motivation or reason for combining or modifying references.
• The suggestion can come from the prior art itself, market forces, or other sources.

When applying or responding to the suggestion test, it’s crucial to articulate clear reasoning for why an ordinary designer would or would not have been motivated to make the specific modifications that result in the claimed design.