In re SurgiSil: much more than a cosmetic modification of design patent law | Quarles & Brady srl


A recent decision by the United States Court of Appeals for the Federal Circuit fundamentally altered prior art law for design patent applications. In this decision, captioned In re: SurgiSil, LLP et al., n ° 2020-1940 (October 4, 2021), the Federal Circuit overturned a decision of the Patent Trial and Appeal Board (“Board”) of the USPTO, which had previously confirmed the anticipated rejection of an examiner of a claim Design patent for an implant lip based on a prior art reference illustrating a similarly shaped tool for artists.

Conception SurgiSil – “Implant Limp”

Claimed Prior Art – Dick Blick “Stump” Art Tool

Under Section 35 USC § 171 (a), design patent protection is permitted to “[w]hoever invents all new original and ornamental design for an article of manufacture. “(Emphasis added.) Quoting 35 USC § 171 (a), the Federal Circuit held for the first time in SurgiSil that a design patent claim does not broadly cover a design in the abstract, but rather is limited to the manufactured item identified in the claim. SurgiSil, at 3. In so ruling, the Federal Circuit concluded that the design patent application at issue, which includes a claim of “ornamental design for a lip implant as shown and described”, is limited in scope. possible to lip implants and could not cover this design. as applied to other manufactured items. Therefore, since the applied prior reference discloses a design for a tool of the art, i.e. an article of manufacture different from that of a lip implant, the court concluded that the findings of anticipation by the Board and the Examiner were based on a misinterpretation of the scope of the complaint and thus overturned the Board’s decision.

Holding in Surgisil builds on another recent participation of the Federal Circuit, Curver Luxembourg, SARL, c. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019), who held that the claim language of a design patent (which must also match the article identified in the patent title) may limit the scope of the patent. claimable claim to the item of manufacture listed in the Claim. In Curve, the Federal Circuit found that a design patent for a “pattern for a chair” was not infringed by a basket with a very similar pattern, finding that baskets and chairs are not in similar artistic fields .

There is an old maxim in patent law, which says: “What violates if later, anticipates so soon.” Peters v. Active Mfg. Co., 129 US 530, 537 (1889). To post-Curve, many design patent practitioners expected that the Federal Circuit and the USPTO would need to revise the design patent law on anticipation in order to preserve the Peters maxim, so that the appropriate prior art when examining design patent applications should come from a similar field of art. Holding SurgiSil does exactly that, and therefore will have very important implications for design patent applicants today and in the future.

In the future, when drafting a design patent application, applicants should carefully examine and determine the item (s) of manufacture to which a design will be applied, and give the appropriate title to the application. patent accordingly. To post-SurgiSil it may also now be necessary to consider filing several separate design patent applications for the same design, with different titles / claims, in order to provide full coverage for a design that might find application in separate artistic fields . On the other hand, early rejections will probably now be much more difficult for the USPTO to make against design patent applications, since examiners must find the prior art in a field of art analogous to that identified. in the claim.


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