Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

In an earlier post, Professor Crouch discussed the Federal Circuit’s recent decision in In re Surgisil. In that decision, the Federal Circuit recognized that 35 U.S.C. § 171 provides for the grant of patents for designs for articles of manufacture, not designs in the abstract. In doing so, the court’s decision was in accord with the rationale—if not the limited express holding—of its earlier decision Curver Luxembourg.

Professor Crouch is correct that this holding means that the scope of § 102 prior art for designs is limited. And yes, it means you could take a shape developed for one article of manufacture and apply it to a different type of article and potentially get a design patent for it. But there is nothing wrong with that. Designing a shape for a binder clip, for example, is a different design problem than designing a shape for a handbag. Using the shape of the former for the latter could be a valuable act of design, as I argued in this article (which was relied on heavily by Surgisil though not cited by the court).

There may be cases where this kind of shape adaptation might be obvious, but that is a problem for § 103, not § 102. It is true that, for utility patents, the universe of prior art for § 102 is broader than it is for § 103. But, given the different nature of the inventions protected and the different claiming conventions, it makes sense to treat designs differently.

I respectfully disagree with Professor Crouch’s suggestion “Surgisil is in some tension with precedent holding that the claim scope should be limited only to ornamental features.” The cases he cites, In re Zahn and OddzOn, deal with entirely different issues—the concept of what constitutes a protectable “design” in Zahn and the question of “functionality” filtering in OddzOn. (And in any case, Zahn is a terrible decision that should be overruled.)

And there is nothing inconsistent about recognizing that a design patent’s scope should be tethered to the claimed article and the principle that design patents protect how things look, not how they work. Recognizing that the statutory subject matter here is a design for a surgical implant does not change the fact that the patent’s scope extends only the claimed visual appearance. The court’s decision in Surgisil does not mean that the use of the article is protectable per se; it merely limits the scope of the patent to instances in which the accused product is directed to the same design problem. And none of the cases cited by the USPTO require design patents to cover designs per se.

One more thing: At oral argument, the USPTO argued that its “article doesn’t matter” approach was necessary to effectuate the idea of the “broadest reasonable interpretation” (BRI) of a design patent claim. BRI is a concept that was developed in the context of utility patents and it’s not clear that it has any useful application to design patents. But to the extent that it does, the BRI of a design patent claim might be something like Egyptian Goddess step 1—i.e., the shape (or surface design) in the abstract, considered without consideration of any potentially narrowing prior art.

Federal Circuit Further Eases Path for Obtaining Design Patents