Edison: Describing A Design – When Enough is Enough! (Saidman et al.)

Perry J. Saidman

Kerry W. Leonard

Saidman Designlaw Group, LLC

Full Article

In order to “promote the Progress of Science and useful Arts,”2 the U.S. Constitution granted Congress the power to create and legislate a federal patent system. The resulting U.S. patent laws were clearly designed with the purpose of incentivizing inventors to share their creations with the public. Specifically, an inventor is granted a limited monopoly on his or her invention provided that he or she publicly discloses his or her new discovery by filing for and obtaining a patent.

This quid pro quo exchange is the primary purpose behind U.S. patent law. The ability to temporarily exclude others from making or practicing an invention is one of the best motivators to encourage an inventor to divulge the secrets of his or her invention. Patents help to shield their owners from competition by giving them a time-limited, legal right to exclude others from making, using, importing or selling the patented invention and, as issued patent claims are presumed to be valid, patents confer a significant advantage whenever infringement proceedings are initiated.

Very few cases from the U.S. Court of Appeals for the Federal Circuit have specifically interpreted this law as it pertains to design patents; the majority of decisions focus on utility patents. However, according to 35 U.S.C. § 171, nearly all of the rules that govern utility patents are applicable to designs. The few exceptions are noted in Chapter 1500 of the Manual of Patent Examination Procedure (MPEP).4 In particular, it is clear that § 112 applies to both utility and design patents. It has been left to design patent practitioners to determine just how the written description requirement translates when applied in the design patent realm.

This paper will discuss the written description requirement of § 112 as it applies to both utility patents and design patents in order to draw parallels between the two types of applications and to demonstrate how the written description requirement for utility patents informs and parallels the same requirement for design patents.

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