Design Patents: Choosing the Right Article

The Court of Appeals for the Federal Circuit made an important update to  design patent law in In Re Surgisil.  

Surgisil -- a medical device company specializing in the design, development, and commercialization of silicone-based products for plastic and cosmetic surgery -- appealed the Patent Trial and Appeal Board’s rejection of Surgisil's design application covering a lip implant device.  The examiner rejected Surgisil’s design (Figure 2) in view of Blick’s “stump” (Figure 3) -  made of “tightly spiral-wound, soft gray paper” and is used “for smoothing and blending large areas of pastel or charcoal.”  

The Court of Appeals for the Federal Circuit reversed the PTAB and ruled that design patents are only anticipated by articles of manufacture identified in the claim.  In this case, the claim identifies a “lip implant.”  Thus, the universe of designs that could anticipate the claim were other lip implants and not the “stump” art tool or other articles with a similar design.  

The upshot – there is some strategy to choosing the article of manufacture in a design patent claim.  Being creative can enlarge the scope of your claim. But being greedy could lead to patentability challenges.  This likely is not the last word of design patent claims so stay tuned...

You can read the brief opinion here: https://cafc.uscourts.gov/opinions-orders/20-1940.opinion.10-4-2021_1843781.pdf

‍