New guidance published by the US Patent and Trademark Office Nov. 16 will help that agency’s personnel determine whether a design claim including a computer-generated electronic image is patentable.
The guidance attempts to clarify whether a design patent claim including a computer-generated electronic image per se, or a computer-generated electronic image shown on a display panel—such as a computer screen, monitor, computer display system, mobile phone screen, virtual reality/augmented reality goggles—satisfies the article of manufacture requirement in 35 U.S.C. 171.
Considering the rapid advances in technology including PHVAR (projections, holograms, and virtual and augmented reality) designs, many in the industry have welcomed and applauded the sorely needed updated guidance.
Road to Current Guidelines
Design patents have enjoyed increasing popularity over time, jumping from about 15,000 design applications filed in 1995 to 47,500 design filings in 2019.
Not surprisingly, the rising number of design patent applications reflects meteoric advances in technology. USPTO Director Kathi Vidal has said that because design patents have been shown to provide a “catalyst for growth” and a “competitive edge” for US manufacturers, maintaining clear and current guidelines is crucial.
The USPTO first issued guidelines for examining computer-generated designs in 1996. According to the statute governing design patents, whoever “invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor.”
Still, questions remained regarding what exactly constitutes an article of manufacture in the context of digital designs that “encompass new and emerging technologies.”
In particular, it was unclear whether a design patent claim including a computer-generated electronic image per se or a computer-generated electronic image shown on a display panel satisfies the article of manufacture requirement.
During public comment solicited by the USPTO, many expressed hope that the adjusted guidelines would clarify emerging technologies and harmonize US design protection with other patent offices internationally.
Some proponents pressing the USPTO to expand the guidelines to account for PHVAR designs pointed to Germany’s system as a model—it doesn’t consider a computer program to be a product.
Some commenters urged the USPTO to look to members of the five offices receiving the most design filings worldwide as examples, including Japan, China, Korea, and the EU. These jurisdictions either allow design rights to protect PHVAR designs or are adapting their practices to do so.
New Guidance
The USPTO guidance dictates that design patents are granted only for a design “applied to an article of manufacture, and not a design per se.” Accordingly, “a picture standing alone is not patentable.”
When a design claim is for a display panel with a computer-generated image or icon, the USPTO considers the terms “icon” or “GUI” (graphical user interfaces) in the title and the claim to indicate that the image on the display panel isn’t merely a displayed picture, but an integral and active component in the operation of a programmed computer displaying the image.
Further, the USPTO guidance explains that a “computer-generated electronic image shown on a display panel that is not a computer icon or a GUI is a mere illustration of a picture displayed electronically” and thus fails to comply with the article of manufacture requirement.
Dos and Don’ts
Helpfully, the clarified USPTO guidelines for examination of design patent applications for computer-generated icons, and design patent applications related to GUIs, provided useful examples of claim language and titles that do and don’t adequately describe a design for an article of manufacture.
Of course, neither list is exhaustive. For instance, claim language that doesn’t provide adequate descriptions and will likely be objected to, include:
- “Display screen with virtual image”
- “Virtual image for display on computer screen”
- “Computer icon”
- “Icon for computer screen”
Conversely, the USPTO says the following language is an adequate description of a design for an article of manufacture under 35 U.S.C. 171:
- “Computer screen with an icon”
- “Display panel with GUI”
- “Display screen or portion thereof with icon”
- “Portion of a computer screen with an icon”
- “Portion of a display panel with an icon”
- “Portion of a monitor displayed with an icon”
And, the USPTO has continued to accept solid-line or unclaimed broken-line representation of the article of manufacture from which or on which the claimed design is displayed, although it’s unclear whether some future court or USPTO action may require greater specificity in exactly what kind of article of manufacture is indicated.
In all instances, the important aspect repeated throughout the guidance is that the computer icon must be an integral and active component in the operation of a computer or other display device to comply with the article of manufacture requirement, and that this aspect must be apparent in the title, claim, and any drawing.
This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.
Author Information
Trevor K. Copeland is co-chair of Crowell & Moring’s patents practice group, specializing in medical devices and design protection.
April Barnard is a patent agent at Crowell & Moring, specializing in biotechnology.
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