What is an Article of Manufacture for Design Patent Law? - Patently-O

USPTO is seeking public comment on the meaning of an “article of manufacture” as used in 35 U.S.C. 171(a):

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The Federal Circuit’s recent decision in Curver Luxembourg refocused attention on the importance of the particular article of manufacture in the design patenting process. That case reiterated the point that design patents must be tied directly to an article of manufacture, and not simply a design in the abstract.

[L]ong-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se.

Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019) (refusing to enforce Curver’s patent as a disembodied design).

[RFC Design Patents]

This particular RFC focuses on emerging technologies: projections; holographs; virtual/augmented reality; etc. I would also include screen icons that are only temporarily shown when electricity is applied. In general, the USPTO has deduced the following regarding screen icons from various precedential decisions:

they must be embodied in a computer screen, monitor, other display panel, or portion thereof;
they must be more than a mere picture on a screen; and
they must be integral to the operation of the computer displaying the design.

Particular questions from the RFC:

Please identify the types of designs associated with new and emerging technologies that are not currently eligible for design patent protection but that you believe should be eligible. For these types of designs, please explain why these designs should be eligible, how these designs satisfy the requirements of section 171, and how these designs differ from a mere picture or abstract design. In addition, if you believe that these types of designs should be eligible, but a statutory change is necessary, please explain the basis for that view.
If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is integral to the operation of a device (e.g., a virtual keyboard that provides input to a computer), is this sufficient to render the design eligible under section 171 in view of the current jurisprudence? If so,
please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view.
If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is interactive with a user or device (e.g., a hologram moves according to a person’s movement), is this sufficient to render a design eligible under section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view.
If the projection, holographic imagery, or image appearing through virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is projected onto a surface or into a medium (including air) and is not otherwise integral to the operation of a device or interactive with a user or device (e.g., is a static image), is
this sufficient to render a design eligible under section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the
basis for that view.
Do you support a change in interpretation of the article of manufacture requirement in 35 U.S.C. 171? If so, please explain the changes you propose and your reasons for those proposed changes. If not, please explain why you do not support a change in interpretation.
Please provide any additional comments you may have in relation to section 171, interpretation or application of section 171, or industrial design rights in digital and new and emerging technologies.

Deadline for comments: Feb 4, 2021

Method: Comment via the portal at www.regulations.gov (Docket No PTO-C-2020-0068).