The United States issues three different types of patents: utility patents, design patents and plant patents. Utility patents cover useful or functional inventions. Design patents cover ornamental designs. Plant patents cover certain types of asexually reproduced plants.

Utility patents are the most common type of patents and are generally thought of as the most valuable type of patent. However, a design patent can be a very valuable type of patent.

A recent decision by the U.S. Court of Appeals for the Federal Circuit emphasized that design patents cover ornamental designs that are limited to specific articles of manufacture, not designs in abstract. See In re SurgiSil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. October 14, 2021).

The patent-at-issue in SurgiSil was directed to lip implants. The patent was rejected over a prior art design for an art tool that was known as a “stump.” The Court determined that the scope of the design patent was limited to lip implants, so the Patent Trial and Appeal Board (i.e., the lower tribunal) erred in concluding that the stump design rendered the lip implant design not patentable (due to anticipation).

The decision reinforces the need to select a term that describes the article of manufacture that is not too narrow to limit the scope of the claims, unnecessarily, or too broad to encompass the prior art.