the firm's post-grant practitioners are some of the most experienced in the country.

Kevin Ross  Davis
Andrew M. Ollis
Richard D. Kelly
Jay E. Rowe, Jr., Ph.D.
Robert  Tarcu
Johnny  Ma
Tao  Feng, Ph.D.
Grace E. Kim
Diane  Jones
Philippe J.C. Signore, Ph.D.
Norman F. Oblon
Alec M. Royka
Ching-Cheng (Tony)  Chang
Yuanyi (Alex) Zhang, Ph.D.
Sameer  Gokhale
Anna Z. Lloyd
Ryan W. Smith
Stephen G. Baxter, Ph.D.
Colin B. Harris
Bogdan A. Zinchenko
Chika (Teranishi) Iitoyo
David M. Longo, Ph.D.
Eckhard H. Kuesters
Robert W. Downs
Alexander B. Englehart
Yuki  Onoe
Thomas M. Cunningham, Ph.D.
James R. Love
Arthur I. Neustadt
Marina I. Miller, Ph.D.
Vincent K. Shier, Ph.D.
Tia D. Fenton
Christopher  Ricciuti
Akihiro  Yamazaki
Christopher I. Donahue
Long  Phan, Ph.D.
Charles L. Gholz
Daniel J. Pereira, Ph.D.
John F. Presper
Eric W. Schweibenz
Nicholas  Rosa, Ph.D.
Nanlin  Wang, Ph.D.
Yin Y. Nelson, Ph.D.
Kevin M. McKinley
Craig R. Feinberg
Dale M. Shaw
Carl E. Schlier
Jianping (James)  Wu
Kurt M. Berger, Ph.D.
Stefan Uwe  Koschmieder, Ph.D.
Kasumi  Kanetaka
Michael R. Casey, Ph.D.
Kevin L. Hartman, Ph.D.
Edwin D. Garlepp
Robert T. Pous
Derek  Lightner, Ph.D.
Jenchieh (Joseph) Yuan
Erik M. Stang, Ph.D.
Brian B. Darville
Aristotelis M. Psitos
John S. Kern
Peifang  Tian, Ph.D.
Jeffrey B. McIntyre
Yanwen  Fei
Yorikatsu  Hohokabe, Ph.D.
Surinder  Sachar
Frank J. West
J. Derek  Mason, Ph.D., CLP
Teddy S. Gron
Elissa L. Sanford
Steven B. Chang
Aldo  Martinez
John  Sipos

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Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.

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1968
Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

Increased Burden in Drafting "Surviving" and "Useful" Utility Patents in the Life Sciences Industry Extends to Design Patents

  • October 15, 2021
  • Article

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Patents are undoubtedly essential to many industries, and in recent years, the decisions regarding patent eligibility, written description, and enablement have certainly shaken up the life sciences industry in particular. There is an increasing burden on patent applicants and patentees to provide complex, lengthy, thoroughly written disclosures to satisfy the rising standards for written description and enablement, as well as the added pressure to draft multiple claims of varying scope.

Although it is well known that design patents can complement utility patents and play an important role in further protecting innovations, oftentimes design patents are overlooked. In contrast to utility patents, design patents protect the ornamental or nonfunctional features of a product – the claim is directed to the design embodied in or applied to the product, not the product itself. Unlike utility patents, design patents have no written description and are limited to one claim.

In a way, perhaps the law behind design patents may be relatively more simple and straightforward, and patent applicants would hope to skip the struggles of the meticulous process of drafting utility patent applications. However, a recent decision for a design patent in the life sciences industry indicates that design patent law is also developing.

Earlier this month, the Federal Circuit (CAFC) issued a decision in In re: SurgiSil, L.L.P. et al., No. 2020-1940 (Oct. 4, 2021). SurgiSil appealed a decision of the Patent Trial and Appeal Board (PTAB) affirming an examiner’s rejection of design patent application No. 29/491,550 (’550 application). The ’550 application claims an “ornamental design for a lip implant” and the application’s figure is shown below:

The examiner rejected the claim of the ’550 application as anticipated by an art tool called a stump, made of “tightly spiral-wound, soft gray paper” which is used “for smoothing and blending large areas of pastel or charcoal.” The “stump” is shown below:

The PTAB took the position that “it is appropriate to ignore the identification of the article of manufacture in the claim language.” However, the court agreed with SurgiSil’s argument that the “stump” could not anticipate the claim, because the stump is a “very different” article of manufacture than a lip implant. The court held that the relevant test for applicable prior art for the claim at issue is limited to the particular “article of manufacture” identified in the claim. Because the claim of the ’550 application identified a lip implant, and the application’s figure depicted a lip implant, the claim is limited to lip implants and does not cover other articles of manufacture.

Therefore, the claim language of a design patent can certainly limit the claim scope to the article manufacture recited in the claim, both when evaluating for an anticipation rejection during prosecution, and at the alternative end, when evaluation for infringement during litigation. This decision highlights the recent trend in both utility patents and design patents alike, that the applicant must take careful considerations when drafting the application. For example, just as clear and sufficient written description must be provided in utility patents, design patents should properly title and identify the article of manufacture. Using a similar strategy as for drafting multiple claims of varying scope in utility patents, design patent applicants should also consider filing multiple, separate design patent applications for the same design, identifying different articles of manufacture and claims, to increase the scope of protection for the design.

The good news for design patents is that unlike for utility patents in the life sciences industry where prosecution has become more challenging and the threat of patents being invalidated based on issues such as lack of written description and enablement has amplified, it may be easier to prosecute a design patent application, and perhaps harder to invalidate a design patent based on prior art, as the prior art must be for the same article of manufacture. Nevertheless, it remains to be seen how this decision influences how design patents are claimed in the future, and how the USPTO reacts to these changes.