On March 3, 2023, the United States Patent and Trademark Office (USPTO) announced an update to the Manual of Patent Examining Procedure (M.P.E.P.).

A change summary is available here, noting that for design patents, Chapter 1500 was revised to include court decisions clarifying that design claims are limited to the article of manufacture identified in the claim and do not cover designs in the abstract; to update several form paragraphs to better conform with statutory text; to clarify when a single plan or planar-view may be sufficient to comply with 35 U.S.C. 112; and to update form paragraph 15.24.06 to clarify that filing a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting rejection.

Additionally, for international design applications, Chapter 2900 was revised to clarify the basic flow of an application under the Hague Agreement; to clarify aspects of directly or indirectly filing an international design application; to clarify appointment of a representative and specification of a correspondence address; to clarify that an inventor may not be a juristic entity; to clarify requirements with respect to the title, description, and drawings; and to clarify the processes for foreign priority claims, corrections, and recording of changes.

Following the update, the language of Section 1502 regarding Definition of Design, is unchanged, noting that design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation, and there must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method, however supporting case cites were added - In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021) (“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.”) and Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir. 2019) (noting “that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se”).

Regarding title, the M.P.E.P. states, unchanged, that the title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim, but is now supported by Curver Luxembourg, SARL v. Home Expressions, Inc., Id. At 938 F.3d 1340 (“[I]dentifying the article of manufacture serves to notify the public about the general scope of protection afforded by the design patent”).

Regarding anticipation, the M.P.E.P. now states:

“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021). In SurgiSil, the Federal Circuit reversed an anticipation rejection of a lip implant over an art tool because it determined that the Board's anticipation finding “rests on an erroneous interpretation of the claim's scope.” Id. The court reasoned that where “[t]he claim language recites ‘a lip implant,’” and “the application’s figure depicts a lip implant, ... the claim is limited to lip implants and does not cover other articles of manufacture.” Id.

Importantly, the guide was updated to state that when the applicant has furnished the application title, applicant's authorization is required to make an examiner’s amendment to the application title or to the figure descriptions.

The updates also address single view claims:

Where three-dimensional aspects of a design are not claimed, a single plan- or planar-view may be sufficient to adequately disclose the claimed design. For example, in In re Maatita, 900 F.3d. 1369, 1378-1379, 127 USPQ2d 1640 (Fed. Cir. 2018), the Federal Circuit held that a claim to an ornamental design for a shoe bottom satisfied the enablement and definiteness requirements of 35 U.S.C. 112, where the scope of the claimed design was capable of being understood from a single, two-dimensional, plan-view. The Federal Circuit distinguished the design for a rug or a placemat from the design for an entire shoe or teapot, which is “inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing.” Id. The Federal Circuit held that because the scope of the claimed shoe bottom design was capable of being understood from a single plan-view, the claim satisfied the enablement and definiteness requirements of 35 U.S.C. 112. Id. at 1378-9.

For more information, contact the author below:

George Raynal, Principal

george.raynal@designlawgroup.com

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