Design patents provide valuable protection in a patent portfolio, including conferring different strategic advantages over utility patents. For example, design patents recover âfull profitsâ – not just lost profits or reasonable royalties as expected for infringing utility patents. Likewise, design patents are not attacked under 35 USC Â§ 101, which can result in a significant portion of utility patent invalidity. Additionally, while utility patents are frequently attacked in post-grant challenges before the PTAB, design patents are rarely challenged in this forum, and they face significantly lower institution rates. Finally, the finding of infringement of a design patent is relatively straightforward and straightforward under the applicable âordinary observerâ test. More specifically, if an ordinary observer finds that the accused product is “substantially the same” as the claimed design, there is infringement.
In addition to these benefits, the Federal Circuit recently provided another benefit to applicants for design patents. In a previous unanimous opinion, the decision of the panel of In re: Surgisil, LLP dramatically reduces the scope of prior art that can be used to invalidate a design patent as intended.
The litigation involved a claim for an “ornamental design for a lip implant as shown and described”:
The PTO had rejected the design patent application, citing minor differences between the above lip implant and a Dick Blick art catalog that contained an image and description of an artistic tool called a stump:
The stump has been described as being made of “soft gray paper coiled in a tight spiral” and used “to smooth and blend large areas of pastel or charcoal”.
The Federal Circuit found that the PTO erred in law in concluding that the design of the lip implant would be anticipated by the stump tool. The court explained that â[a] the design claim is limited to the article of manufacture identified in the claim; it does not largely cover a drawing in the abstract. Consequently, the prior art oriented towards the various tools in the field of the art did not anticipate a design of an implant for the lips.
This decision is important in the field of design patent law because it changes course from decades of practice prior to the PTO. Namely, examiners have traditionally been able to rely on the prior art of any field to establish prior art, based on a 1956 Claims Court case, In Glavas. The In re Surgisil public opinion categorically rejects this 60-year-old rule.
The point to remember for patent holders is that it should be easier to get design patents because the field of art for anticipation reasons has shrunk considerably due to the In re: Surgisil, LLP opinion.
 35 USC Â§ 289.
 In re Finch, 535 F.2d 70, 71-72 (CCPA 1976).
 Of the 1,513 AIA requests filed in FY2020, only 20 were for design patents, and only 14% of those requests were filed. Summary of AIA testing statistics for fiscal year 2020, at 6, 11 (October 1, 2019 to September 30, 2020), available at https://www.uspto.gov/patents/ptab/statistics.
 Egyptian Goddess Inc. c. Swisa Inc. 543 F.3d 665, 671 (Cir. Fed. 2008) (en banc). In particular, the scope of the claim is limited to the same article of manufacture listed in the claim. Curver Luxembourg, SARL c. Home Expressions, Inc., 938 F.3d 1334 (Cir. Fed. 2019).
 2021 WL 4515275, at * 2 (Fed. Cir. October 4, 2021).
 Identifier. to 1.
 MPEP Â§ 1504.02, New, available at https://www.uspto.gov/web/offices/pac/mpep/s1504.html#d0e153408.