The PTAB has been tough on design patent holders, invalidating all design patents to reach final written decision in an IPR. For patent owners looking to beat these odds, one way to overcome the prior art at issue would be to prove a valid priority claim to secure an earlier effective filing date. For a design patent, the priority claim could be to an earlier-filed, co-pending design application, or even a utility application. However, obtaining the benefit of an earlier-filed utility application poses a special challenge in showing that the utility application provides adequate support—that is, showing the disclosure of the earlier-filed utility application demonstrates that the inventor was in possession of the design claimed in the later-filed design application.

This requirement was reiterated by the PTAB in its first IPR decision regarding a design patent, a decision that has now been affirmed by the Federal Circuit (cert denied). The challenged design patent was directed to a children’s drinking cup, and in Munchkin, Inc. and Toys R US, Inc. v. Luv N’Care, Ltd., the PTAB held that the drawings of the priority application did not show the shape of the claimed spout.

Interestingly, though the challenged patent was a design patent, the priority application was a utility application and the patent owner argued that the text of the priority application provided adequate written description. Namely, the patent owner pointed to the textual disclosure that aspects of the spout could have oval shapes as providing support for the oval shape shown in FIG. 3. The Board held that this excerpt did not identify the specific shape of the claimed spout or otherwise reasonably convey that the inventor had possession of the claimed design.

The PTAB did not rule out entirely that a utility application could provide adequate support for a design claim. A combination of the text and associated drawings could provide support for the later-filed design application. Unfortunately for the patent holder in this case, words were just not as good as a picture of the design, and the support was deemed inadequate. As a result, several references became usable as prior art to invalidate the patent.

Issues of priority might be addressed during prosecution of a design patent application, before it reaches the PTAB. If you have concerns that certain aspects of a design application are not adequately supported by a priority application, those aspects might be removed from the design claim by redrafting the figures. You could also include multiple embodiments in the design application, some with and some without that particular feature. Either way, claiming priority in a design application may be helpful because, once the PTAB institutes a trial on a design patent—at least based on the small number of cases so far—patent owners will need all the help they can get.