Federal Circuit Finds that Design Patents May Claim Three-Dimensional Article Using a Single Two-Dimensional Drawing
Posted on Nov 6, 2018 in Articles
In a potentially far reaching case in the design patent world, the Federal Circuit’s recent decision in In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018) substantially increased design patent applicants’ ability to obtain broad scope, at least in certain circumstances.
In Maatita, a design patent application was directed to the “ornamental design for a Shoe Bottom ….” While the application included two views, each view was directed to a similar, but separate embodiment of a shoe bottom. FIG. 1 of the application is reproduced below.
Prior to the Maatita decision, an application for a two-dimensional drawing of a three-dimensional object was typically rejected by examiners at the U.S. Patent and Trademark Office (USPTO) for failing to meet the enablement and definiteness requirements of 35 U.S.C. § 112. However, in Maatita, the Federal Circuit concluded that design patent claims should not necessarily be rejected for the sole reason that the design is three-dimensional, but includes only a single two-dimensional view.
Essentially, the court held that (at least in certain limited circumstances) a single two-dimensional drawing sufficiently discloses a design when a person of ordinary skill in the art, when viewing the design as would an ordinary observer, would understand the scope of the claimed design with reasonable certainty based on the claim and visual disclosure.
For the shoe bottom at issue, since only a single two-dimensional view is shown, the fact that all depths of the various features of the shoe bottom are not specifically known would not preclude an ordinary observer from understanding the claimed shoe bottom with reasonable certainty. Based on the holding of Maatita, a shoe bottom having these features having substantially any reasonable depth would be an infringement.
At this point, it seems clear that this opinion will not apply to all three dimensional objects, but only to three dimensional objects such as the shoe bottom here, where there are reasonable limitations on the depth of the various features, such that an ordinary observer would understand the scope of the claimed design based on a singled two-dimensional view.