Design Patent Practice UPDATE – Use Caution in Con’s

In prosecuting design patent applications, it is common practice to use dashed lines to depict a feature of the design that is illustrated for context or environment, but is not considered to be part of the claimed design.  In continuation practice, it has also been common practice to broaden the originally claimed design by amending the drawings to change solid lines in the original design – which show what is claimed – to dashed lines depicting unclaimed boundary lines.  This later practice was recently considered, and significantly limited, by the Federal Circuit in In re Owens, 2012-1261, Fed. Cir., March 26, 2013 (“Owens”).  In Owens, the Federal Circuit affirmed the PTO’s rejection of Owens’ claimed design since the parent was deemed to lack adequate written description for the continuation (so he could not claim the benefit of the earlier filing date) and Owen had sold product more than one year prior to the filing date of the continuation.  As it turns out, the problem Owens had was not with what he took out of the original claimed design, but what he put in—a single dashed line intended to indicate that Owens was claiming part, but not all, of a surface from the original design.

Owens’ original application claimed the design of a mouthwash bottle design, as shown below.  This application issued as D531,515.  In an effort to get broader protection, Owens filed a continuation application in which he dashed out all lines except those defining four triangular shoulder portions and two small crescent portions bounded by the shoulder portions.  Owens also wanted to claim a portion or the surface bounded by the triangular shoulders and the crescent portion.  To depict where the portion of the surface that was being claimed ended, Owens added a dashed line on the upper portion of the surface and removed the shading lines below the dashed line.  Significantly, there was no existing contour line where this new dashed line was being added.  It is this new dashed line, that all parties agree defines an unclaimed boundary, that is the center of the controversy in this case.

 

The patent examiner concluded that the newly added dashed line defined a “new” trapezoidal surface that was not previously claimed and this newly claimed feature meant that Owens could not claim the benefit of the original application’s filing date.  It was the examiner’s view that Owens was not in possession of the claimed subject matter that only included a portion of the disclosed surface, at the time of the original filing.  (In other words, there was insufficient written description under 35 U.S.C. 112 para. 1 in the original application for the new claim.)  Since Owens had sold bottles (of the original design) more than 1 year prior to the filing date of the continuation application, the examiner rejected the application under 35 U.S. C.  103 as being obvious over Owens’ own prior art sales.  The PTO board of appeals affirmed.

In affirming the PTO’s rejection, the Federal Circuit noted that the written description requirement for design and utility patents is the same.  The court further noted that “when the issue of priority arises under 120 in the context of design patents prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.” [Opinion at 7, citations omitted]    To distinguish over In re Daniels, 144 F. 3d 1455 (Fed. Cir. 1998) the court arrived at the somewhat strange result that removing an element in its entirety (as was the case in Daniels) is permissible whereas removing only a portion of the element (as Owens attempted to do) runs afoul of the written description requirement.  Although the question was not before the court, it seems that had Owens simply dashed out the original contour lines and not added the dashed line dividing the original surface (which would have made the claim even broader), the panel, following In re Daniels, would have been inclined to accept that as a proper amendment resulting in a claim that was supported by the original application. 

Owens will likely be significant in shaping future design patent litigation and prosecution.  A substantial number of design patents have issued from continuation applications in which the applicant broadened the original claim by adding dashed lines to define part of a previously claimed feature.  Under Owens, the priority date of these patents, and the underlying validity of the patent claim, will be open to new challenges.  During prosecution, care must be taken when preparing continuation applications.  Going forward, a prudent course may be to file the original design application with figures depicting a number of embodiments of varying scope ranging from the complete design to individual features that may be novel, non-obvious and commercially important.  This strategy will invite a restriction requirement from the PTO and divisional practice, but it will be far easier to demonstrate that the original application fully supports the later filed cases and avoid a later problem with written description.