Surgisil, Subject Matter, and Scope

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

11 thoughts on “Surgisil, Subject Matter, and Scope

  1. 6

    I received a post-Surgisil Office Action from an Examiner. In my response to the Non-Final, I cited Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), and pointed out that the Examiner failed to address the language of the preamble of the claim, and that the prior art cited by the Examiner was not directed to the article of manufacture cited in the preamble of the claimed. The Examiner ignored addressing the preamble issue, and sent out a Final three weeks after the Surgisil decision came down.
    I left a message for the Examiner asking them if they were aware of Surgisil, and to reconsider the Final in view of Surgisil. I also left a message for their SPE.
    I got a voicemail from the Examiner that ducked the question and referred me to their SPRE. No response from the SPE.
    Anyone want to bet that the Office is going to try to ignore Surgisil?

  2. 5

    Why design patents at all though? What is innovative design? How is shaping a handbag handle like a paperclip worthy of patent and exclusivity?

    1. 5.1

      Whether or not “design” (being non-functional and outside of utility) should be protected by SOME type of law is a different question.

      Whether it should be force-fit INTO the contours of utility protection is AN EASY question (hint: the answer is NO).

  3. 4

    Does Surgisil herald trade dress and design patents drawing even closer together with the nature of the article being viewed as relevant or does it signal new friction between the two? Can one obtain a design patent for a handle that is shaped like a Coca-Cola bottle and then go after Coca-Cola selling collectable merchandise in the form of an umbrella or some other article that uses a Coca-Cola bottle shaped handle? Does trade dress provide any defense to Coca-Cola?

  4. 3

    So under this ruling, could Hot Wheels get a design patent on a 1/48 scale model of a Tesla Model S, even though Tesla has a design patent on the actual car?

    What about a computer mouse shaped just like a Tesla Model S (a real product, BTW)… Could the mouse manufacturer patent “their” design for a PC peripheral?

    1. 3.1

      There is serious bleed over on your questions to Trademark law.

      (which is yet another indication that the notion of ‘design’ being force-fit into the UTILITY patent law section of IP protection is simply a heinous thing)

  5. 2

    No sane (or even reasonable) person would mistake a binder clip for a handbag unless the binder clip is made by Hermes and costs $61,795. (That is not even close to the really expensive handbags.)

    1. 2.1

      I think I will write a book called, “The Woman Who Mistook a Binder Clip for a Handbag.”

  6. 1

    “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. “

    Those aren’t “entirely different issues.” On the contrary, what is protectable with a design patent IS the issue Dennis was referring to and it’s certainly relevant to the result in Surgisil.

    Design patents are for protecting ornamentation, not functionality. That is the starting point. It is a mistake to start from the desired result (“every design should be protectable if fancy lawyer makes a clever argument!”) and work backwards. That kind of mistake is one of the main reasons that the current state of design patent “law” is that it is a horrific mess.

    1. 1.1

      Another way of approaching the issue in Surgisil is that for certain objects — e.g., objects whose only utility is their functionality because they are not visible when being used for their intended purpose — it makes total sense to require that any design patentable ornamentation on that object have no bearing whatsoever on the functionality of the object, and it also makes sense for that ornamentation to be novel and non-obvious as applied to any similarly shaped object regardless of its function. In other words, I shouldn’t be able to get a design patent on a candy-striped column just because the column is used as part of an artificial knee.

      1. 1.1.1

        You appear to be assuming your conclusion with your statement of

        and it also makes sense for that ornamentation to be novel and non-obvious as applied to any similarly shaped object regardless of its function.

        This appears to do the very opposite thing that the premise of “design applied TO something” provides. Your statement presumes the design regardless of ANY application, with but the “shape” being tossed in (and by the way, shape is often functional, so not sure how that folds into your views).

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