In Re Maatita’s Guidance for Figures in Design Patent Applications

The Federal Circuit recently held in In Re Maatita that a single plan-view drawing in a design patent application for a shoe bottom sufficiently enabled the claimed design, and the lack of additional drawings did not result in an indefinite claim. This holding could help applicants with pending design applications that do not show the complete three-dimensional appearance of certain features. Additionally, when drafting a design application, the amount of the design that needs to be claimed with solid lines could be reduced in some cases.

The application included a plan view of a portion of the bottom of the shoe sole, with no indication of how the sole appeared in three dimensions. During the application process, the U.S. Patent and Trademark Office examiner rejected the claim as being indefinite and not enabled. According to the examiner, there were several different three-dimensional renderings that would result in the appearance of the two-dimensional drawings. Therefore, according to the examiner, the claim was indefinite and not enabled because one would not know which of the many possible distinct embodiments of the claim was the applicant’s in order to make and use the applicant’s design.

Below is the drawing in question, with the claimed area outlined. 

The examiner provided four different examples of how the shoe bottom could be shaped in three dimensions, with each example resulting in the appearance of Figure 1.

The applicant appealed to the Patent Trial and Appeal Board. The Board affirmed the rejection, concluding that the claimed shoe bottom was not enabled and the claim was indefinite because the single view did not adequately reveal the relative depths and three dimensionality between the surfaces provided.

On appeal to the Federal Circuit, the court reversed the decision of the Board. The court reasoned that because the purpose of the definiteness requirement is to ensure a sufficiently clear disclosure to give potential competitors notice of what design is claimed, the indefiniteness standard is connected to the infringement standard. According the court, given this purpose, in the design context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer.

The court stated that the level of detail required in the drawing should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration. As examples, the court pointed to rug designs being capable of being represented by a two-dimensional view, while a teapot would not. In this particular design, the court held that the fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional plan perspective. According to the court, a potential infringer is therefore not left in doubt as to how to determine infringement. However, the court did not explain why this particular design is capable of being understood from a two-dimensional plan-view.

According to the court, because a design of ordinary skill in the art, judging from the standpoint of an ordinary observer, could make comparisons for infringement purposes based on the single drawing, the claim meets the enablement and definiteness requirements.

This holding may change the decision as to which portions of a design to draw in solid lines in a design patent application. If you have questions about how this applies to your company’s applications, or questions about design patents in general, contact a Wolf Greenfield attorney.