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In a Significant Change, Federal Circuit Narrows Scope of Prior Art That Could Stand in the Way of a Design Patent Application

Many patentable items will not only do something; but will look like something. A utility patent may in part protect what an “article of manufacture” does, while a design patent protects what an article of manufacture looks like (i.e., its unique exterior appearance, such as its shape, configuration, or surface ornamentation). But what happens when an applicant seeks a design patent similar to a prior design for a completely different type of “article of manufacture”? A recent decision by the U.S. Court of Appeals for the Federal Circuit addressed that issue, and the opinion has significant implications for those seeking protection for the appearance of their goods.

Lip Implant v. Art Tool

In re: SurgiSil, L.L.P., et al. involved a design patent application for “an ornamental design for a lip implant as shown and described.” The art submitted by SurgiSil for its lip implant showed the design as follows:

The Patent Examiner at the U.S. Patent and Trademark Office (USPTO) rejected SurgiSil’s design patent claim as being “anticipated” by a patented design for an art tool sold by art material supply company Dick Blick:

A design patent is only issued if the design is considered “novel.” A design will not be considered novel if it is “anticipated” by prior art; that is, if a single prior art reference in a previously granted patent shows a substantially similar design, the design will not be novel.

The Patent Trial and Appeal Board (PTAB) affirmed the Examiner’s rejection of SurgiSil’s application, finding that the differences in shape between SurgiSil’s claimed design and Blick’s art tool were minor and explaining that to determine anticipation, “it is appropriate to ignore the identification of the article of manufacture in the claim language.” 

Anticipation Not Found in Similar Designs for Different “Articles of Manufacture”

On October 4, 2021, the Federal Circuit reversed PTAB’s decision to reject SurgiSil’s application. The Court found that SurgiSil’s claimed lip implant was not anticipated by Blick’s art tool, holding that “[a] design claim is limited to the article of manufacture identified in the claim; [and] it does not broadly cover a design in the abstract.” Since SurgiSil’s claim language limited its invention to a design for “lip implants, Blick’s prior art directed to an artist’s tool did not anticipate a claim to a lip implant.”

The Federal Circuit’s decision means that to anticipate a design patent claim appropriately, the prior art needs to come from an analogous art field. This is a dramatic shift from previous practice in which Examiners could rely on art from any field to find anticipation. Since the scope of prior art that could impede a design patent application is now significantly narrower, applicants may find a more favorable outcome in obtaining design patents going forward.

If you would like more information about the In re SurgiSil decision or design patent applications generally, please contact the attorneys at The Dobrusin Law Firm.

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