Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. § 101, which can lead to a significant portion of utility patent invalidations that occur.[2] Further, while utility patents are frequently attacked in post-grant challenges before the PTAB, design patents are rarely challenged in that forum, and they face significantly lower rates of institution.[3] Finally, finding infringement of a design patent is relatively simple and straightforward under the applicable “ordinary observer” test. Specifically, if an ordinary observer would find the accused product to be “substantially the same” as the claimed design, there is infringement.[4]

On top of these benefits, the Federal Circuit recently provided another benefit to design patent applicants. In a unanimous precedential opinion, the panel decision of In re: Surgisil, LLP significantly narrowed the field of prior art that can be used to invalidate a design patent as anticipated.[5]

At issue in the case was a claim directed to an “ornamental design for a lip implant as shown and described”:

The PTO had rejected the design patent application, citing minor differences between the above lip implant and a Dick Blick art catalog that contained an image and description of an art tool called a stump:

The stump was described as being made of “tightly spiral-wound, soft gray paper” and used “for smoothing and blending large areas of pastel or charcoal.”[6]

The Federal Circuit found that the PTO had erred as a matter of law by finding that the lip implant design would be anticipated by the stump art tool. The court explained that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.”[7] Therefore, prior art directed to the different field of art tools did not anticipate a lip implant design.

This ruling is significant in the realm of design patent law because it changes course from decades of prior practice at the PTO. Namely, examiners traditionally have been able to rely on prior art from any field to establish anticipation,[8] relying on a 1956 Court of Claims case, In re Glavas. The In re Surgisil opinion squarely rejects this 60-year-old rule.

The takeaway for patent owners is that it should be easier to obtain design patents because the realm of art for anticipation grounds significantly shrank due to the In re: Surgisil, LLP opinion.

[1] 35 U.S.C. § 289.

[2] In re Finch, 535 F.2d 70, 71-72 (C.C.P.A. 1976).

[3] Of the 1,513 AIA petitions filed in fiscal year 2020, just 20 were directed to design patents, and only 14% of such petitions were instituted. AIA Trial Statistics FY 2020 Roundup, at 6, 11 (Oct. 1, 2019, to Sept. 30, 2020), available at

[4] Egyptian Goddess Inc. v. Swisa Inc. 543 F.3d 665, 671 (Fed. Cir. 2008) (en banc). Notably, the claim scope is limited to the same article of manufacture enumerated in the claim. Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019).

[5] 2021 WL 4515275, at *2 (Fed. Cir. Oct. 4, 2021).

[6] Id. at *1.

[7] Id.

[8] MPEP § 1504.02, Novelty, available at