Be Careful What You Title Your Design Patent Application. Episode 93

Why I Usually Avoid Case Law Discussions

In this podcast, I really try to focus on the process of getting a patent—drafting the application, corresponding with the Patent Office, and so on. I don’t usually go into current cases or legal developments, because most of them deal with specific minutiae of patent law. My goal here is to help you see the forest for the trees.

There are plenty of other podcasts focused on intellectual property cases and current legal topics, but that’s not my focus. However, I do want to talk about a particular case that just came out a couple of weeks ago, because I think it’s highly relevant to drafting your patent application.

The Case: Curver Luxembourg SARL v. Home Expressions

The case is Curver Luxembourg SARL v. Home Expressions. I recommend you actually look at the design patent involved. Go to Google Patents or Free Patents Online and search for D677,946. It’s titled “Pattern for a Chair.” Since it starts with a D, you know it’s a design patent.

Most episodes of this podcast focus on utility patents. I’ve discussed design patents a little bit before, but they haven’t been the main focus. If you remember, when I talked about design patents, I said that the drawings are your invention. There’s just one claim in a design patent, and it typically reads something like, “The ornamental design, as shown and described.” That’s it. The hard part of a design patent application isn’t the claim; it’s getting the drawings right to maximize your protection.

Why Titles Usually Don’t Matter… Until They Do

I’ve also told you that, in general, the title of your patent isn’t going to make much of a difference. However, I still recommend using a broad title, just in case. Even if the title doesn’t usually matter—especially for utility patents—it’s still safer to be broad. You never know when someone might argue that your title limits your invention.

Let’s say you come up with a new remote control. If you title your invention “Remote Control for a TV,” but someone else uses the same remote control for a printer, they could argue they’re not infringing. Even though the claims don’t mention a TV specifically, the title might work against you. That’s why I advise avoiding titles like “for a TV”—it can only hurt you, not help you.

How the Title Limited the Scope in This Case

This new case centered on whether the title and language in a design patent limit the claim. The Federal Circuit Court said that yes, the title and words in a design patent do limit your invention—it’s not just about the drawings.

If you’re unfamiliar with the Federal Circuit, here’s a quick overview: If you sue someone for patent infringement, the case starts in a federal district court. If you appeal, it goes to the Federal Circuit. If you want to appeal that decision, you go to the Supreme Court—but they only hear about three patent cases a year. So practically speaking, the Federal Circuit is often the last word in patent law.

The Design Patent That Never Showed a Chair

If you look at the patent in question, it’s titled “Pattern for a Chair,” and it includes five figures. But none of those figures actually show a chair. Instead, they show a pattern—specifically, a woven or rattan-like pattern that could be used in chair construction. It’s more like a design made up of overlapping and underlapping elements. You should really take a look at it.

The brief description of the drawings says things like “Fig. 1 is a front view of a design for a pattern for a chair” and similar language for the other figures.

So they got a patent for this design. Then someone else came along and used this pattern—not for a chair, but for a basket. The question was: Is that infringement?

If you just looked at the figures, yes—it’s the same design. But if you look at the words and the title, they say it’s a pattern for a chair, and the accused product was a basket. So does that matter?

Is It About the Pattern Alone, or Its Use on a Chair?

This case asked whether we should take the title and descriptive words into account when determining the scope of protection. Is it just the design shown in the figures that matters, or must the design also be used on a chair?

The court said the words in the title and claim are important. In this case, because the design was described as “for a chair,” and the accused infringer used the design on a basket, they were not infringing. So yes, the words in your design patent can limit the scope of protection.

Why Not Just Call It a Pattern?

You might be wondering: why did the inventors have to say it was “for a chair”? Why not just call it “overlapping pattern” or something broader?

Actually, when the application was first filed, they did use a broader title: “Furniture Part.” That might not have helped with baskets, but it could have covered things like a dresser. If someone made a dresser with the same pattern, “Furniture Part” might have allowed infringement to be found. So why did they have to narrow it?

The Role of the Examiner and Title Requirements

There’s a rule in design patents—37 CFR § 1.153—that says, “The title of the design must designate the particular article.” The examiner objected to “Furniture Part,” saying it was too vague and didn’t identify a specific article. The examiner suggested using “Pattern for a Chair,” and the applicant amended the title and descriptions accordingly.

They probably didn’t realize the full ramifications of that change. But if the examiner insists on it, and the only thing you have is a chair with that pattern, it may not seem worth the fight. So they made the changes, and the patent was allowed. The claim ended up being: “The ornamental design for a pattern for a chair, as shown and described.”

So the core issue becomes: what is the invention? Is it just the pattern? Or is it the pattern specifically for use on a chair?

The court said the words in the application do make a difference. If the design isn’t used on a chair, just copying the pattern isn’t enough to constitute infringement.

The Court’s Reasoning and Impact on Design Patents

The court specifically stated that “the scope of a design patent is limited to the article of manufacture listed in the patent.” The district court had said that an ordinary observer would not mistake a basket for a chair—even with the same pattern.

Curver appealed, arguing that the district court was being too restrictive, because none of the figures even showed a chair. But the Federal Circuit responded that you cannot get a design patent for abstract surface ornamentation—a design patent must be tied to a specific article of manufacture.

This was the first case where none of the drawings depicted the article of manufacture. Still, the court held that design patents must apply to an article, even if it’s not pictured in the figures.

Advice Going Forward

So what can you do? My best advice is to try to be as broad as possible in your title and description. In this case, they tried to use “furniture part,” but the examiner forced them to be more specific.

Let’s say you have a fabric weave design. Fabric itself is an article of manufacture. For example, Patent D785,340 is simply titled “Fabric.” Another one, D974,116, is titled “Design for a Textile Fabric.”

Now, let’s say you only use that fabric on chairs. Should you title your invention “Fabric for a Chair,” or just “Fabric”? You probably don’t want to include “chair” in the title, because that limits the article of manufacture. If someone uses your fabric design for curtains, they might escape infringement under the reasoning in this case.

So the moral of the story is: try to be as broad as possible when describing your article of manufacture. The words in your design patent can be used against you.

I’m Adam Diament, and until next time, keep on inventing.