Increased Burden of Writing “Survivor” and “Useful” Utility Patents in the Life Sciences Industry Extends to Design Patents – Intellectual Property


United States: Increased Burden of Writing “Survivor” and “Useful” Utility Patents in the Life Sciences Industry Extends to Design Patents

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Patents are undoubtedly central to many industries, and in recent years, decisions regarding patent eligibility, written description and clearance have certainly shaken the life science industry in particular. Applicants and patent holders are increasingly burdened with providing complex, lengthy and detailed disclosures in order to meet increasing standards of written description and clearance, as well as the added pressure of drafting multiple substantive claims. variable.

Although it is well known that design patents can complement utility patents and play an important role in further protecting innovations, design patents are often overlooked. Unlike utility patents, design patents protect the ornamental or non-functional characteristics of a product? the claim relates to the design incorporated or applied to the product, and not to the product itself. Unlike utility patents, design patents do not have a written description and are limited to a single claim.

In a way, the law behind design patents can be relatively simpler and straightforward, and patent applicants hope to avoid the struggles of the meticulous process of drafting utility patent applications. However, a recent ruling for a design patent in the life science industry indicates that design patent law is also growing.

Earlier this month, the Federal Circuit (CAFC) issued a ruling in In re: SurgiSil, LLP et al., n ° 2020-1940 (4 Oct. 2021). SurgiSil appealed a decision of the Patent Trial and Appeal Board (PTAB) upholding an examiner’s rejection of design patent application No. 29/491,550 (‘550 application). The ‘550 app claims an “ornamental design for a lip implant” and the figure of the app is shown below:


The Examiner rejected the claim of the ‘550 application as provided by an art tool called a stump, made of “soft gray paper coiled in a tight spiral” which is used “to smooth and blend large areas of pastel or charcoal”. The “strain” is shown below:


The PTAB considered that “it is appropriate to ignore the identification of the manufactured article in the language of the claim”. However, the court agreed with SurgiSil’s argument that the “stump” could not anticipate the claim because the stump is a “very different” article of manufacture from a lip implant. The court held that the relevant state-of-the-art test applicable to the claim at issue is limited to the particular “manufactured article” identified in the claim. Since the claim of the ‘550 application identified a lip implant and the figure of the application depicts a lip implant, the claim is limited to lip implants and does not cover other articles of manufacture.

Therefore, the claim language of a design patent can certainly limit the scope of the claim to the manufacture of the article set out in the claim, both when assessing a prior art rejection during of the prosecution and at the alternative end, when assessing the infringement in a dispute. This decision highlights the recent trend in utility patents and design patents, that the applicant should take careful considerations when drafting the application. For example, just as a clear and sufficient written description must be provided in utility patents, design patents must correctly title and identify the article of manufacture. Using a strategy similar to drafting multiple variable-scope claims in utility patents, applicants for design patents should also consider filing multiple separate design patent applications for the same design, identifying different items. and claims, to increase the scope of protection for design.

The good news for design patents is that unlike utility patents in the life science industry where prosecution has become more difficult and the threat of invalidation of patents due to issues such as lack of description writing and clearance has grown, it may be easier to pursue a design patent application, and perhaps more difficult to invalidate a design patent based on prior art, as the prior art must be for the same item of manufacture. Nonetheless, it remains to be seen how this decision will influence how design patents will be claimed in the future and how the USPTO responds to these changes.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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