Federal Court Clarifies the Scope of Drawings in a Design PatentSeptember 11, 2018
Design patent filings have increased dramatically in recent years, as companies gain appreciation for the ability of these patents to prevent counterfeits and grey market imports. With the higher volume of patent filings comes a higher volume of legal disputes. In one such dispute, the Federal Circuit held that a design patent application that uses two-dimensional drawings to describe a three-dimensional product may be acceptable under patent law.
As with utility patent applications, the law requires a written description of the invention. However, unlike utility patent applications, the “written description” in a design patent application is primarily in drawings. The description must enable others to make and use the invention (after the patent expires) and must be definite. One way in which design patent applications can fail to meet these requirements is if the application includes apparently inconsistent drawings, which can cause uncertainty concerning the patent's scope.
In the recent Federal Circuit case In re: Ron Maatita, a patent examiner had argued that because an application for a shoe sole design was filed with a single, two-dimensional drawing to represent a complex three-dimensional product, this could not sufficiently illustrate all claimed aspects of the design, such as depth, and could be understood as covering multiple embodiments. On appeal, the Patent Trial and Appeal Board agreed with the examiner and upheld the rejections.
The applicant then appealed to the Court of Appeals for the Federal Circuit, which reversed the Board and the examiner, finding that the design patent application was sufficiently definite. The Federal Circuit noted that the definiteness analysis in the context of a design patent is “connected” to an infringement analysis. In particular, a person of ordinary skill in the art would be “an ordinary observer, familiar with the prior art,” and an application is indefinite if this ordinary observer “would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” Further, the Federal Circuit noted that there is no prohibition against a design patent's covering multiple embodiments of a product.
The Federal Circuit also announced that, in determining when two-dimensional drawings may sufficiently describe a three-dimensional product, the required level of detail depends upon whether the claimed design for a product “is capable of being defined by a [flat] two-dimensional . . . illustration.” The Federal Circuit gave several examples of three-dimensional objects that could or could not be described using a two-dimensional drawing. Whereas a rug or a placemat could be fully understood through the use of a two-dimensional drawing, the design of a teapot would likely require drawings from multiple perspectives. Applying this test, the Federal Circuit rejected the examiner’s argument that the shoe sole design at issue must be indefinite due to ambiguity as to the depths of the claimed features, because the applicant’s “decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two‑dimensional [flat] view perspective shown in the drawing.”
If you have products that feature two- or three-dimensional ornamental designs, a design patent might help halt counterfeits and grey market imports. The attorneys at Lewis Rice have experience in obtaining design patents for clients and enforcing design patent rights. If you would like to protect your products, assert your design patent rights, or defend against allegations of infringement of a design patent, please contact us to discuss your needs.