When is a design patent indefinite?

As design patents grow in popularity due to their cost-effectiveness and strong remedies, recent court rulings have sharpened the focus on how clearly patent drawings must define an invention, setting new boundaries for what constitutes indefiniteness in design patent law.

Design patents have experienced increasing popularity in the past decade, with the number of design patent applications filed yearly in the U.S. rising by over 65%, from about 37,000 in 2015 to over 62,000 in 2024. There are several reasons for this upsurge in appeal of design patents. On average, design patents are less expensive to obtain, faster to issue and easier to pass examiner scrutiny at the U.S. Patent and Trademark Office (USPTO). In addition, as detailed in a Jan. 14, 2014 article published in this paper entitled, “When it comes to damages recovery, design patents trump utility patents,” design patents have an advantage over utility patents when it comes to infringement damages recovery in that they include potential disgorgement of infringer’s total profits obtained as a result of infringement.

Against this backdrop, design patent law has been impacted by major court decisions in recent years. A major change occurred a few months ago with an en banc decision of the Federal Circuit Court of Appeals in LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024). That decision, which relaxed decades old design patent invalidity standard based on obviousness under 35 U.S.C. § 103, will likely make design patents harder to obtain and defend.

Another area of recent legal attention, which is the focus in this article, is design patent indefiniteness. The definiteness provision of the patent law, set forth in 35 U.S.C. § 112, applies to all patents, including utility and design patents, requiring patent claims to be specific and particular in identifying what the inventor regards as the invention. An additional provision of Section 112 deals with the written description of the patent and requires the patent to contain sufficient description of the invention to allow a person of ordinary skill in the field of the invention to make and use the claimed invention(s).

There is, however, a clear distinction between utility and design patents when it comes to the description of the invention and the definiteness of the claims. That is because whereas utility patents contain writings that describe the invention and define its claims, design patents do not include any words and instead describe their invention and define their claims through their drawings. In the seminal court of appeal decision in Egyptian Goddess, the Federal Circuit discouraged the use of words to describe design patents, pointing out that design patent claims are “better represented by an illustration than it could be by any description and a description would probably not be intelligible without the illustration.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,679 (Fed. Cir. 2008) 

According to the protocol for defining and designating design patent invention and identifying the scope of the invention based on the drawings, the claimed features in a design patent drawing are shown in solid lines, while broken lines correspond to context and environment that is not part of the claimed design. In re Maatita, 900 F.3d 1369, 1372 (Fed. Cir. 2018)

Against this backdrop the standard for patent definiteness is whether a person of ordinary skill in the field of the invention “would understand what is claimed when the claim is read in light of the specification.” See Manual of Patent Examining Procedures, §2173.02. Because design patents do not include words and the description of the invention is accomplished by reference to the drawings, which also define the patent claims, indefiniteness in the context of design patents often includes multiple, internally inconsistent drawings. In re Maatita, 900 F.3d 1369, 1375 (Fed. Cir. 2018). However, the Federal Circuit Court of Appeal has held that such inconsistencies are not by themselves sufficient for a conclusion of claim indefiniteness as long as a person skilled in the field of the invention is able to understand the scope of the invention from the drawings. The court of appeal has explained that this is because such inconsistencies may reflect different perspectives from which the patented object is depicted. Id. at 1376.

In one example, the Federal Circuit cited a lower court decision which had found design patent drawings depicting “three slight variations” on a single basic design of a streetlight, not to be indefinite. Id. at 1377. In another example provided by the court of appeal, the patent included two sets of drawings, with one set depicting a floor waxer from different angles and a second embodiment that showed the same design that included side braces. This, the court found, did not render the patent indefinite since the scope that the claim intended to cover was clear. Id.

In Maatita, the subject design patent application concerned a shoe sole that was depicted in the patent drawings by a single two-dimensional drawing. The patent examiner found the claim to be indefinite because the drawing had left out many visual features of the claimed shoe bottom, such as whether it was concave, flat or convex. The court of appeal reversed and found the patent drawing was not indefinite, pointing out that the three-dimensional aspects of the shoe sole need not have been included as they were not part of the claimed design. Maatita at 1375-79. The Federal Circuit decision added that “where the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration.” Maatita, at 1378. As an example, the appeal court distinguished the design for a rug or a placemat, which could be represented by two-dimensional drawings, from the design for an entire shoe or teapot, which are “inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing.” Id. at 1378-9.

Conclusion:

Along with increasing popularity of design patents, determination of design patent indefiniteness is likely to come under increased scrutiny, with a key area of focus being whether design patent drawings sufficiently convey the invention with the requisite specificity and clarity. 

Dariush Adli , President – ADLI Law Group