Three Reasons Why the SurgiSil Design Patent Case Is Important

On October 4, 2021, the U.S. Court of Appeals for the Federal Circuit reversed a U.S. Patent and Trademark Office (USPTO) decision rejecting a design patent application from medical device company SurgiSil. The Federal Circuit ruled that the design patent claim in question was limited to the article of manufacture referenced in the claim. In turn, the decision could 1) persuade design patent applicants to identify broader articles of manufacture, 2) make filing easier at the USPTO, and 3) build on design patent precedent. Managing Intellectual Property interviewed Finnegan partner Beth Ferrill for her insight on the decision.  

Beth suggested that if the designs are too similar to designs of other articles of manufacture, the USPTO could still block design patent registrations by arguing that they are obvious without citing prior art.

Additionally, the SurgiSil decision builds upon the precedent established in the Curver Luxembourg v. Home Expressions Federal Circuit case. Beth explained there was uncertainty over whether the Curver Luxembourg case was based on prosecution history estoppel, establishing that design patent owners could not sue competitors over subject matter they gave up in prosecution. While not addressing prosecution history estoppel, the SurgiSil decision clarifies that articles of manufacture stated in titles and claims did narrow the scope of the design patent.

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