Lips Aren’t the Same as Drawing Tools
In Brief: Design patents have to stay in their lane.
Here’s What Happened:
Surgisil, L.L.P. created a medical implant for thin lips. The beauty of Surgisil’s design is the implant enhances thin lips making them look natural and not like the result of a bee sting.
Surgisil applied for design patent for its lip implant. Design patents protect ornamentality, novelty and nonobviousness enablement. Surgisil’s patent application claimed an “ornamental design for a lip implant.”
The USPTO rejected the design patent application because the lip implant looked pretty much the same as Blick’s patented design for a drawing tool called “the stump”. When comparing the two, the implant looked like a crayon or pencil with a point at each end. The Examining Attorney felt that because the two were so similar, Surgisil’s application should be denied.
Surgisil appealed to the Patent Trial and Appeal Board. The Board affirmed the rejection. Surgisil then appealed to the Federal Circuit Court of Appeals.
The Federal Circuit reversed. Patent applications fall into different classes. Not every design forecloses every other similar design in a different class. Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design and utility classes.
The Federal Circuit held that the rejection was in error because the lip implant and the stump were two different things. Surgisil’s patent claims are limited to lip implants and don’t cover other articles of manufacture. Likewise, Blick’s art tool claims are limited to its use as an art tool and doesn’t cover other articles of manufacture. Citing an 1871 Supreme Court opinion, the Federal Circuit noted that design patents do not protect an abstract impression or picture; rather they protect new and nonobvious ornamentation on a useful object. So the Board’s finding that a drawing tool foreclosed a lip implant was based on an erroneous interpretation of the scope of Surgisil’s claims.
Why You Should Know This. The decision comes with a blessing and a curse. The blessing is that the examination process for design patents has to be within the stated class for the ornamentation and not in other classes. The curse is that sometimes the use of an ornamental design might be related to other classes. So a class designation doesn’t always tell the whole story. This decision will make it harder to enforce design patents across different classes.