A recent decision of the United States Court of Appeals for the Federal Circuit has fundamentally altered the law on prior art anticipation for design patent applications. In this decision, captioned In re: SurgiSil, L.L.P. et al., No. 2020-1940 (Oct. 4, 2021), the Federal Circuit reversed a decision by the USPTO’s Patent Trial and Appeal Board (“Board”), which had previously affirmed an examiner’s anticipation rejection of a design patent claim for a lip implant based on a prior art reference depicting a similarly-shaped tool for artists.
Continue Reading In re SurgiSil : Much More than a Cosmetic Change to Design Patent Law

The Federal Circuit’s recent decision in Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc. reinforces best practices for design patent enforcement and procurement. An important takeaway from this decision is that when enforcing design patents in litigation, patent owners should develop record evidence from fact and expert witnesses to assist the court in the ordinary observer analysis to ensure that motions for summary judgment of non-infringement are decided with a sufficient record. Another important consideration for design patent holders is that when protecting designs, rights holders should consider robust filing strategies to protect iterative and varying aspects of important designs. These strategies may help companies avoid early judgment of non-infringement when they enforce their design patents by limiting the options of a defendant during the early stages of litigation.
Continue Reading Pepper Spray Manufacturer’s Successful Self-Defense Reinforces Best Practices for Design Patents