Federal Circuit Explains Significance of Deleting Drawings from Design Patent Applications

January 10, 2014

When a company deletes drawings from a US design patent application during “prosecution” before the patent office, the fact that it did so may later be considered by a court when assessing the scope of the patent. However, the deletion of drawings will not necessarily stop the patent owner from asserting that the patent covers more than just exact copies of the drawings that were left in the application and included in the resulting patent. So ruled the Court of Appeals for the Federal Circuit on January 8, 2014, in Pacific Coast Maritime Windshields Ltd. v. Malibu Boats, LLC, no. 2013-1199, deciding an issue of first impression for that court. The decision illustrates that the practice of including multiple sets of drawings in an original design patent application can create litigation issues, but will not necessarily limit the scope of protection afforded to a design patent.

The patentee had included three separate sets of drawings in its original patent application, one showing a design with no holes on a corner post of a boat windshield, one with two holes on the post, and one with four holes on the post. The patent office required the applicant to limit the application to one set of drawings, and the resulting patent included only the set of drawings showing a four-hole arrangement. The accused infringer later adopted a three-hole design, and the trial court concluded that the patent was not infringed because a three-hole arrangement was "within the territory between the original claim and the amended claim" and thus could not infringe the patent.

The appellate court reversed. It held that cancelling drawings in response to a restriction requirement can create prosecution history estoppel. The scope of the surrender, however, is limited to the design(s) shown in the cancelled drawings. There is no surrender of rights in the design shown in the drawings that are retained, and the patentee is not precluded from asserting that the rights in that design extend beyond exact duplication of that design.

If you have questions about the Pacific Coast decision, please contact an attorney at Marshall, Gerstein & Borun LLP.

The information contained in this alert is for informational purposes only and is not legal advice or a substitute for obtaining legal advice. Under applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2014 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.

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