Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal Circuit affirmed the US Patent Trial and Appeal Board’s (PTAB’s) decision denying a design patent application the benefit of an earlier utility application’s filing date. Ironically, the same utility application used for priority was then cited as prior art to reject the design for lack of novelty under 35 USC § 102.

The inventor Bonnie Iris Floyd initially filed a utility patent application (No. 15/004,938) on January 23, 2016 for a cooling blanket featuring an integrated ventilation system and multiple sealed compartments. The application included figures depicting six-by-six and six-by-four arrays of compartments.

On March 27, 2019, Floyd filed a design patent application (No. 29/685,345) claiming an ornamental design for a cooling blanket with a six-by-five array configuration, asserting priority to the earlier utility application. Figures from the utility and design patent applications are shown below.

Figs. 1 and 1A from the parent utility application.

Fig. 1 from the design patent continuation.

PTAB DECISION

During prosecution, the examiner rejected the design application’s priority claim, concluding that the claimed six-by-five configuration was not adequately supported by the utility application’s disclosure. Because priority was denied, the utility application became prior art and was found to anticipate the claimed design under 35 USC § 102.

The PTAB affirmed the examiner's decision, emphasizing that while the utility application included general statements about the blanket being made in “any size,” those statements did not sufficiently disclose the specific ornamental features—namely, the six-by-five array—claimed in the design application.

FEDERAL CIRCUIT RULING

The Federal Circuit upheld the PTAB's decision, agreeing that the design application was not entitled to the earlier filing date of the utility patent. Importantly, the court also confirmed that the utility application could serve as prior art against the design application once priority was denied.

In addressing the seeming contradiction—how a utility application could simultaneously lack written description support yet anticipate the design—the court clarified that the standards for written description and anticipation are distinct. A prior application may anticipate a later claim even if it fails to support a continuation of that claim under the written description requirement.

PRACTICAL IMPLICATIONS

Filing a design patent that claims priority to a utility application can sometimes be a strategic move—for example, to obtain protection for aesthetic elements not originally claimed. Also, since the term of a design patent is measured from the grant date (not the filing date), a continuation design application filed years after the original utility filing could potentially yield up to an additional 15 years of protection.

However, In re Floyd underscores a crucial caveat: for a design patent to properly claim priority to a utility application, the earlier application must clearly and specifically disclose the ornamental features being claimed in the design. Similar designs, general language or broad functional descriptions will not suffice.

BEST PRACTICES MOVING FORWARD

Include Design Variants Early

If design protection is anticipated, applicants should include robust visual disclosures—such as detailed figures, shading, and alternate configurations—within the initial utility filing.

Mirror Drawings Where Possible

Ensure that drawings in the design application closely resemble those in the utility application to strengthen written description support.

Understand Priority Limitations

Design patents cannot claim priority to provisional applications. When relying on a utility application for priority, the design application's effective filing date may be later than expected.

Consider Parallel Filings

Given the risks illustrated by In re Floyd, applicants may wish to pursue design and utility patents in parallel, rather than relying on continuation practice. This ensures independent support for both functional and ornamental aspects of an invention.

In re Floyd serves as a cautionary tale for patent practitioners: the interplay between design and utility applications is more than procedural—it can be determinative of patentability. Strategic foresight at the drafting stage is essential to preserving rights across patent types.