Federal Circuit gives kiss of life to lip filler design patent

Medical device company SurgiSil has persuaded the US Court of Appeals for the Federal Circuit that its application for a design patent covering a lip filler was erroneously rejected by the US Patent and Trademark Office (USPTO).

The Federal Circuit delivered its decision on Monday, October 4.

SurgiSil had applied to register design patent application number 29/491,550, covering an “ornamental design for a lip implant”. A visual depiction of the application looks like the outline of a double-sided crayon.

An examiner at the USPTO rejected the application after finding that its sole claim was anticipated by an earlier-disclosed art tool, called a stump. The stump, which is used for smoothing and blending large areas of pastel or charcoal, visually presents as a partially shaded double-sided crayon.

SurgiSil argued that the stump could not anticipate the ‘550 application because it disclosed an entirely different article of manufacture to that of the lip implant.

However, the US Patent Trial and Appeal Board (PTAB) affirmed the examiner’s decision and said that the identification of the article of manufacture in the claim language should be ignored.

The PTAB also found that the differences in shade between the ‘550 application and the stump were minor.

PTAB erred

SurgiSil appealed against the PTAB’s decision.

On Monday, the Federal Circuit held that the PTAB “erred in holding that the claimed design is not limited to the particular article of manufacturer identified in the claim”.

A design claim is limited to the article of manufacture identified in the claim and it does not broadly cover a design in the abstract, according to the Federal Circuit.

Here, SurgiSil’s ‘550 application identified a lip implant and the visual presentation of it depicts the same. As such, the application is limited to that of lip implants and does not cover other articles of manufacture. Meanwhile, the stump disclosed an art tool and it does not cover other articles of manufacture, such as a lip implant.

“The board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope,” the Federal Circuit held. “Because the board erred in holding that the claimed design is not limited to lip implants, we reverse.”

Alan Herda, chair of Haynes Boone’s IP department and lead patent attorney for SurgiSil, commented: “This ruling is significant because it clarifies the scope of a design patent claim.”

Upon reversing the PTAB’s decision, the Federal Circuit awarded SurgiSil costs.

The USPTO declined to comment on the ruling.

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