Federal Circuit Narrows Scope of Prior Art Available for Design Patents

Morgan Lewis

Morgan Lewis

The US Court of Appeals for the Federal Circuit’s recent decision on an appeal from the Patent Trial and Appeal Board to limit prior art for design patent applications to only analogous fields may make it easier for applicants to obtain design patents and more difficult for challengers to invalidate them.

The Federal Circuit’s decision in In re SurgiSil LLP[1] found that the claim language specifying a particular article of manufacture limited the scope of the design patent—and the prior art that can be used to anticipate it.

SurgiSil’s design patent application, US Patent Application No. 29/491,550 titled “Lip Implant,” claims an “ornamental design for a lip implant as shown and described.” The US Patent and Trademark Office (USPTO) examiner rejected the claim as anticipated by a catalog disclosing a Dick Blick art tool used to smooth and blend areas of pastel or charcoal drawings.

Claimed Lip Implant

Claimed “Lip Implant”

Dick Blick

Dick Blick’s Art Tool

The Patent Trial and Appeal Board affirmed the rejection, finding that the differences in shape between the claimed design and Dick Blick Art Tool were minor and explained that for anticipation purposes, “it is appropriate to ignore the identification of the article of manufacture in the claim language.” Further, although these might not be analogous art, “whether a reference is analogous art is irrelevant to whether that reference anticipates.” [2]

On appeal, the Federal Circuit reversed and held that SurgiSil’s claim language limited its invention to a design for “lip implants.” As such, prior art directed to drawing stumps and pencils do not anticipate a claim to a lip implant. [3]

The holding extends the Court’s 2019 decision in Curver Luxembourg, SARL v. Home Expressions Inc.[4] which held that claim language specifying a particular article of manufacture limited the enforceable scope of the design patent. In Curver, which was discussed in a prior LawFlash, the Federal Circuit found that a design patent for a “Pattern for a Chair” was not infringed by a basket having a similar pattern, reasoning that baskets and chairs are not found in analogous art fields.  The holding of In re SurgiSil therefore closes the loop following Curver and confirms that in order to properly anticipate a design claim, the prior art needs to come from an analogous art field.[5]

In view of this decision, while narrower titles may help the USPTO with properly classifying designs and for examiners to focus their searching, narrowing the pool of prior art will likely generally make it more difficult for an examiner or patent challenger to find anticipatory prior art for a design patent claim. For applicants, this decision will likely make obtaining design patent protection easier, particularly for minimalist and partial designs that previously would have been rejected using non-analogous prior art references. To maximize patent coverage for a design that could extend to different art areas, applicants may want to carefully consider the appropriate title, file multiple concurrent design applications having different titles, or provide support in the application to allow for claim amendments or continuation filings directed to different types of articles.

[1] No. 2020–1940 (Fed. Cir. October 4, 2021)

[2] Id, slip op. at 2.

[3] Id, slip op. at 3.

[4] 938 F.3d 1334 (Fed. Cir. 2019).

[5] It should be noted that the three judge panels in both In re SurgiSil and Curver were unanimous and comprised of completely different judges, making an en banc Federal Circuit challenge to this decision unlikely.  

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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