By J. Karl Gross
An applicant for a design patent may seek to protect multiple ornamental designs in order to protect variations on a common theme or to show the inventive design as applied on different articles or in different contexts. The applicant thus may be tempted to include, in a single application, different variations or embodiments by submitting several sets of drawings. In fact, the international Hague Agreement on industrial designs allows for the registration of up to 100 industrial designs in a single international application (See 37 C.F.R. § 1.1021(a)(8).
During prosecution, however, the U.S. Patent Office will routinely require the applicant to restrict the application to a single independent or patentably distinct design for examination and, if allowed, patenting. The requirement to restrict design applications to a single design derives in part from the rule that a design patent can include only a single claim, unlike utility applications that can include plural claims directed to multiple inventions. The single design requirement is so fundamental to design applications that the common retort against restriction in utility applications, that examination of the application can be made without serious burden to the examiner, is wholly inapplicable.
As may be done in utility applications, a design applicant confronted with a restriction requirement has the option of filing divisional applications to pursue unelected designs. In fact, failing to file divisional applications may adversely affect any design patent granted on the elected designs. The adverse effects of restriction in design patent applications arises from the Federal Circuit’s opinion in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), in which the court held that the doctrine of prosecution history estoppel may potentially limit the scope of a design patent claim.
In Pacific Coast, the applicant submitted drawings showing multiple variations of a windscreen for a motorboat, which differed from each other by the inclusion, shape, and number of air vents located therein. The Patent Office issued a restriction requirement among the distinct groups of designs in the drawings, and the applicant elected one design while abandoning the rest.
The Federal Circuit, in an appeal during an ensuing litigation over the resulting design patent, held that an applicant’s election or other amendments made during prosecution can give rise to prosecution history estoppel in a design patent. Furthermore, the court held that prosecution history estoppel may apply to the unique test for infringement of a design patent in a manner that can completely prelude infringement of an accused design.
In the utility patent context, prosecution history estoppel arises only during infringement assertions under the doctrine of equivalents. For example, if a claim element is not literally included in the accused product, a patent owner may argue that the product includes a legal equivalent and still infringes under the doctrine of equivalents. Prosecution history estoppel limits the patent owner from broadening the claims to cover subject matter surrendered by amendment during prosecution. If the accused product includes all identical claim elements and literally infringes the utility patent, prosecution history estoppel is inapplicable.
The test for design patent infringement differs by comparing the claimed design and the accused product for substantial similarity. The literal mapping of claim elements and identical features in the accused products is not required. “For design patents, the concepts of literal infringement and equivalents infringement are intertwined.” Id. at 701. Because of the merger of infringement doctrines, prosecution history estoppel applies universally to the assessment of design patent infringement.
In Pacific Coast, where the applicant abandoned certain windscreen embodiments, the pertinent question became whether the accused windscreen fell within the scope of surrendered subject matter. In other words, does the accused design appear more similar to the elected design and infringe, or the restricted designs and thus outside the scope of protected subject matter?
Sensible applicants will therefore prosecute design applications to avoid the limiting effects of prosecution history estoppel. Filing divisional applications to cover restricted designs will avoid surrendering subject matter and creating safe harbors for accused infringers. Filing more than one design application in anticipation of restriction will preempt prosecution history estoppel altogether. Applicants in Hague Agreement applications will benefit from analyzing and separating independent or patentably distinct designs prior to filing the national stage applications in the U.S. Patent Office.
