Designers Beware: Prior Utility Patent Lacking Written Support Can Anticipate Later-Filed Design Patents

Background

On January 23, 2016, Applicant Bonnie Floyd filed a utility patent application claiming a cooling blanket with ventilated openings along a matrix of sealed compartments. The utility application disclosed figures of cooling blankets in six-by-six and six-by-four arrays.

Three years later, on March 27, 2019, Floyd applied for a design patent claiming the ornamental design of a cooling blanket with rectangular compartments separated by channels of ventilated openings. To secure an earlier filing date, Floyd claimed priority to her previously filed utility application. But unlike the six-by-six and six-by-four arrays depicted in prior utility application, the figures in her design application depicted a six-by-five array of rectangular compartments.

During prosecution of the design application, the Patent Office rejected Floyd’s priority claim to the earlier utility filing because it did not disclose the six-by-five design, and as such, “the claimed design include[d] new matter.” Once priority was denied, the previously-filed utility application became prior art, which the Examiner then relied upon to reject the six-by-five design as being anticipated by the same utility application.

The PTAB agreed with the Examiner’s finding that the utility application did not sufficiently disclose the six-by-five arrangement claimed in the design application. While the utility application contained a generic statement allowing the “embodiment to be made in any size,” the Board interpreted this as referring to the size of the rectangular compartments, not their arrangements. Id. at 4.

The PTAB likewise affirmed the Examiner’s findings that those same disclosures of the utility application anticipated the six-by-five design.

Floyd appealed, challenging both of the Board’s findings.

The Federal Circuit Decision

Recognizing that an earlier utility filing must “reasonably convey” the visual impression of the claimed design, the Federal Circuit found that nothing in Floyd’s utility application would allow a skilled artisan to appreciate the precise six-by-five ornamental arrangement of the later-filed design application. Nor were all intervening arrangements implicitly disclosed because the utility application never articulated a “range of possible arrays rather than the distinct examples depicted in the figures.” Accordingly, Floyd’s design could not claim priority to the earlier-filed utility application.

The Federal Circuit likewise dismissed Floyd’s “inherent” disclosure theory ─ namely, that the utility claims referred to “a plurality of individualized compartments” ─ because nothing in the specification suggested a skilled artisan would necessarily adopt the exact six-by-five arrangement of Floyd’s claimed design. The Federal Circuit instead held that the missing limitation must have necessarily flowed from the earlier utility filing, not merely that it could be selected among many possibilities.

Finally, the Federal Circuit explained that differing legal standards for written description and anticipation allow for a prior utility filing to anticipate a claimed design even though those same disclosures are insufficient to support a priority claim.

Practical Considerations

Prepare Parallel Design and Utility Filings. Where the commercial value of an invention lies in both its function and appearance, applicants should consider filing the design and utility applications in parallel, as opposed to relying on continuation practice. Parallel prosecution eliminates the risk highlighted in Floyd, as each application stands on its own written-descriptions. This dual-track strategy also broadens enforcement options. Whenever possible, applicants should budget for and execute parallel filings at the outset to avoid the evidentiary gaps that may arise when a later-filed design application attempts to retroactively mine aesthetic support from the utility specification.

Prepare Numerous Design Disclosures in the Earlier Utility Filing. If design protection cannot be pursued until after the utility filing, an applicant should consider including numerous design disclosures — drawings, photographs, or other depictions that, even if unnecessary to support the utility claims, unmistakably convey the varying aesthetic features of the product — so that any future design application can rely on the earlier filing as clear written-description support for the claimed design.

ArentFox Schiff will continue to monitor developments in this area of patent law and provide updates as warranted.