In re SurgiSil : Much More than a Cosmetic Change to Design Patent Law

Quarles & Brady LLP

Quarles & Brady LLP

A recent decision of the United States Court of Appeals for the Federal Circuit has fundamentally altered the law on prior art anticipation for design patent applications. In this decision, captioned In re: SurgiSil, L.L.P. et al., No. 2020-1940 (Oct. 4, 2021), the Federal Circuit reversed a decision by the USPTO’s Patent Trial and Appeal Board (“Board”), which had previously affirmed an examiner’s anticipation rejection of a design patent claim for a lip implant based on a prior art reference depicting a similarly-shaped tool for artists.

SurgiSil design – “Limp Implant”

Asserted Prior Art – Dick Blick “Stump” Art Tool

Under 35 U.S.C. § 171(a), design patent protection is permitted to “[w]hoever invents any new, original and ornamental design for an article of manufacture.”  (Emphasis added).  Citing 35 U.S.C. § 171(a), the Federal Circuit first held in SurgiSil that a design patent claim does not broadly cover a design in the abstract, but is rather limited to the article of manufacture identified in the claim. SurgiSil, at *3. In so holding, the Federal Circuit concluded that the design patent application at issue, which includes a claim for an “ornamental design for a lip implant as shown and described,” is limited in possible scope to lip implants, and could not cover that design as applied to other articles of manufacture. Therefore, since the applied prior art reference discloses a design for an art tool—i.e., an article of manufacture different from that of a lip implant—the court concluded that the anticipation findings by the Board and the examiner rested on an erroneous interpretation of the scope of the claim, and thus reversed the Board’s holding.

The holding in Surgisil builds on another recent holding by the Federal Circuit, Curver Luxembourg, SARL, v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019), which held that claim language of a design patent (which must also match the article identified in the patent’s title) can limit the assertible claim scope to the article of manufacture enumerated in the claim. In Curver, the Federal Circuit found that a design patent for a “Pattern for a Chair” was not infringed by a basket having a very similar pattern, reasoning that baskets and chairs are not found in analogous art fields.

There is an old maxim in patent law, which states: “That which infringes if later, anticipates if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). Post-Curver, many design patent practitioners expected that the Federal Circuit and USPTO would need to revisit the design patent law on anticipation to preserve the Peters maxim, such that proper anticipatory prior art during the examination of design patent applications would need to come from an analogous art field. The holding of SurgiSil does just that, and will thus have very significant implications for design patent applicants now and in the future.

Moving forward, when drafting a design patent application, applicants should carefully consider and determine the article(s) of manufacture to which a design will be applied, and properly title the patent application accordingly. Post-SurgiSil it may also now be necessary to consider the filing of multiple, separate design patent applications for the same design, with differing titles/claims, in order to provide full coverage for a design that might find application in distinct art areas. On the flip side, anticipation rejections will likely now be significantly more difficult for the USPTO to make against design patent applications, since examiners must find prior art in an analogous art field to that identified in the claim.

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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