Mason Baranczyk, Justin DeAngelis, James Aquilina and Nicholas Schmidbauer Author IP Watchdog Article on Divisive Design Patent Case and Design Definiteness  

Quarles & Brady Intellectual Property attorneys Mason Baranczyk, Justin DeAngelis, James Aquilina and Nicholas Schmidbauer authored an article for IP Watchdog that provided analysis on a design patent case that was reviewed by the U.S. Patent Trial & Appeal Board. The case dealt with a nuanced aspect of intellectual property law associated with a major Court of Appeals decision from 2018, In re Maatita, which relates to written description and enablement of design patents. The case is the second design appeal to come from the PTAB in the last 12 months.

The article explains that the U.S. Patent and Trademark Office (USPTO) attempted to limit the reasonable certainty standard set forth in Maatita as applying only to designs with a single figure. The Board’s decision provides clarity that Maatita’s holding applies to all designs despite the USPTO’s current guidance to the contrary.

An excerpt:

Divisive at the time, the following statement by the U.S. Court of Appeals for the Federal Circuit sets forth the reasonable certainty standard, upon which the definiteness requirement of 35 U.S.C. § 112 is to be assessed in the context of design patents:

 “[A] design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure. . . . So long as the scope of the invention is clear with reasonable certainty to an ordinary observer, a design patent can disclose multiple embodiments within its single claim and can use multiple drawings to do so.”

In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018).

This flexible approach to definiteness embodies the idea that designs can be depicted in a variety of ways while still being reasonably understood by the ordinary observer. The standard also strikes a balance between allowing infringement and patentability to be assessed and allowing applicants to claim their design in the way that best reflects how that design is likely to be viewed in the real world, or focusing on what the applicant deems to be the most important aspects of their design. While an applicant may choose to claim three-dimensional aspects of design from one or more points of view, there is no requirement that every detail must be fully shown in multiple views from a variety of perspectives so that its three-dimensional nature can be exactly ascertained.