In a recent decision, the Federal Circuit stated that the and claim language can limit the scope of a design patent when the patent’s drawings don’t indicate what type of product is involved. The court’s reasoning could have significant ramifications for design patent law.

When considering the scope of a design patent, judges typically focus on the drawings that are included in the patent. People have been unsure about the importance of the patent’s and its claim when it comes to the scope of protection.

Most patent applicants generally have not been overly concerned if a patent examiner asks them to change the of an application.

In the case Curver Luxembourg SARL v. Home s Inc., Curver applied for a patent covering a “design for a furniture part.” Responding to an examiner’s suggestion, the company changed the patent to refer to a chair. The ruling illustrates the need to be careful when drafting the and claim language.

It is advised to be careful when it comes to changing the and the claim language. A small change may cause the narrowing of the claim scope.

d on this ruling by the Federal Circuit, it is better to attempt to use broader s in an effort to gain broader coverage.

Trying to get a broader scope by way of using broader and claim may cause prosecution issues as the USPTO may push for narrower and claim.

We believe there may be a conflict between the Federal Circuit’s ruling in Curver and the USPTO’s rule regarding novelty.

Patent examination manual states that “anticipation does not require that the claimed design and the prior art be from analogous arts.” That means an examiner could, for example, find a pattern for a chair is un-patentable because it is anticipated by a pattern on a basket.

The axiom in patent law is: “That which infringes if later, anticipates if earlier.” The basic idea is that the scope for infringement and anticipation are supposed to be the same. If a basket can’t infringe a pattern for a chair, there is an argument the basket shouldn’t be able to anticipate it either.

We believe the USPTO will re-evaluate their current rule d on the decision of the Federal Circuit.

In the meantime, we will use this case law to argue against possible Examiner’s request for narrowing the or claim of an application.

This may be the right time to evaluate the policy of single claim in design patents. If multiple claims in a design patent are allowed, one claim could identify a pattern for a chair, another a pattern for a rug, another a pattern for a basket, etc.

The case is Curver Luxembourg SARL v. Home s Inc., case number 18-2214, in the U.S. Court of Appeals for the Federal Circuit.