Wednesday, October 20, 2021

Federal Circuit - In re Surgisil - Favorable to Grant of Design Patents

The USPTO grants three types of patents: utility, design, and plant. Utility patents issue for new and useful processes, machines, manufactures, compositions, and improvements thereof. Plant patents issue for new and distinct plants, and design patents issue for new designs of article of manufacture.

When you read about patents, nearly always people talk about utility patents rather than design patents. Yes, utility patents can protect technology advances in software, hardware, products, and drugs, but design patents also have an important role. Thus, if an invention's appearance is new, you should consider seeking a design patent, because it is relatively inexpensive compared to seeking a utility patent, it may support large damage awards, and it can stop copyists.

Further, the Federal Circuit’s recent decision In re Surgisil has made it easier to obtain a design patent. There, the Federal Circuit held that 35 U.S.C. 171 grants design patents for articles of manufacture rather than for shapes in the abstract. It is not as USPTO argued: "appropriate to ignore the identification of the article of manufacture in the claim." The Federal Circuit held prior designs only anticipate (i.e., block issuance) if they are identical in shape to the claimed design and relate to the same article of manufacture. Thus, a drawing stump (used by illustrators) with the same shape did not anticipate a claim for an ornamental design for a lip implant. It's unclear if "related articles of manufacture" will become the ground of an obviousness rejection, but it should help applicants overcome anticipation rejections based on similar shapes for different articles of manufacture.

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