by Dennis Crouch
While a design patent can technically claim priority to a prior utility patent, that approach takes some planning and forethought to ensure that the utility patent's drawings and disclosure sufficiently show possession of the specific ornamental design features that will later be claimed in the design application. Ideally, the drawings in the utility filing would be identical to those later included in the design application.
This situation is exemplified by the Federal Circuit's recent decision In re Floyd (Fed. Cir. April 22, 2025) (non-precedential). The claimed design is a cooling blanket -- with the drawings showing a 6x5 array pattern. The priority filing included a 6x6 array, a 6x4 array, and a statement that the array could include a plurality of array layouts. But, the priority filing did not specifically and expressly include the 6x5. The result: priority claim denied for lack of written description.
The case also illustrates the "daylight" between written description and anticipation standards, creating a trap where an applicant's own published application can both fail to provide written description support yet anticipate a later filing. In this case, although Floyd's prior published application was insufficient as a priority document, the court found it served perfectly well as an anticipatory reference.
