The US Patent and Trademark Office (USPTO) has published a notice with supplemental guidance for its staff members examining design patent claims that include computer-generated images.
In December 2020, the USPTO sought public input on ‘‘whether its interpretation of the article of manufacture requirement in the United States Code should be revised to protect digital designs that encompass new and emerging technologies.”
In response to public comments, the USPTO determined that the public would benefit from further clarifications to MPEP section 1504.01(a)(I). This provides:
The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated icons comply with the “article of manufacture” requirement of 35 U.S.C. 171.
A. General Principle Governing Compliance With the “Article of Manufacture”Requirement
Computer-generated icons, such as full screen displays and individual icons, are 2- dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). The USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171. Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement of 35 U.S.C. 171. Since a patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation, a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof, to satisfy 35 U.S.C. 171. See MPEP § 1502.
As the USPTO explains in the notice,
35 U.S.C. 171 provides that ‘‘[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor’’ (emphasis added). The language ‘‘new, original and ornamental design for an article of manufacture’’ set forth in 35 U.S.C. 171 has been interpreted to include at least three kinds of designs:
(1) a design for an ornament, impression, print, or picture that is applied to or embodied in an article of manufacture (surface indicia);
(2) a design for the shape or configuration of an article of manufacture; and
(3) a combination of the first two categories
According to the guidance discussed in the notice, “the mere display of a computer-generated electronic image . . . on a display panel does not constitute statutory subject matter under 35 U.S.C. 171.”
As the notice explains,
The USPTO considers computer icons or GUIs to be two-dimensional images which standing alone are surface ornamentation (i.e., an ornament, impression, print, or picture). See MPEP section 1504.01(a)(I). Therefore, the title and the claim should not be for a computer icon or a GUI alone, but must be for an article of manufacture, for example, a ‘‘display panel with computer icon.’’
However, says the notice,
the USPTO considers a computer icon or a GUI shown on a display panel, or a portion thereof, to be more than a mere display of a picture on a screen because a computer icon or a GUI is an integral and active component in the operation of—i.e., embodied in and/or applied to—a programmed computer displaying the computer icon or the GUI. Therefore, a computer icon or a GUI is eligible under 35 U.S.C. 171, if properly presented and claimed (e.g., the drawing(s) fully discloses the design as embodied in the article of manufacture).
(A GUI is a graphical user interface that allows users to interact with an electronic device via icons and other visual indicators.)
The notice also provides helpful guidance and illustrations on how an icon or GUI can be claimed as part of an article of manufacture.
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