USPTO Guidance on Design Patents Including a Computer-Generated Electronic Image


The USPTO has prepared soon to be published supplemental guidance for design patent examination for computer-generated electronic images. This guidance relates to determining whether a design patent claim including a computer-generated electronic image per se or a computer-generated electronic image shown on a display panel (e.g., computer screen, monitor, computer display system, mobile phone screen, virtual reality/augmented reality goggles), or a portion thereof, satisfies the article of manufacture requirement in 35 U.S.C. 171. This guidance supplements the guidance provided in section 1504.01(a), subsection (I) of the Manual of Patent Examining Procedure (MPEP). According to the USPTO, this supplemental guidance does not change the current guidance but provides important clarifications.

In a prior post, we covered that in September 2023 the USPTO issued the 1 millionth design patent. One of the factors leading up to this milestone was the increase in design patents for computer generated icons and certain aspects of the graphical user interface (GUI) elements of a computer program. Due to a relatively recent Supreme Court decision, which has made it more difficult to obtain utility patent protection for some of the functional aspects of computer software, more companies are filing for design patents to supplement their utility patent protection.

Background

This guidance is a follow up to the USPTO’s December 2020 request seeking public input on whether its interpretation of the article of manufacture requirement should be revised to protect digital designs that encompass new and emerging technologies. A summary of the public comments are here.

It has long been the law that a picture standing alone or on a computer screen is not protectable by a design patent. The difference between statutory design subject matter and a mere picture or surface ornamentation per se is the embodiment of the design in an article of manufacture. Over time, the law evolved such that an integral and active component in the operation of a programmed computer displaying the design, if properly presented and claimed, would constitute statutory subject matter under 35 U.S.C. 171. This is reflected in the current examination guidelines in the MPEP.

Supplemental Guidance

The guidance clarifies:

The guidance provides additional details on the application requirements. It also includes examples with analysis of whether the examples meet the requirements. Some of the key takeaways are:

Given the more difficult environment regarding software-based utility patents, design patents for computer icons and GUIs have become more popular and should be considered as part of a comprehensive IP protection strategy. 


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National Law Review, Volumess XIII, Number 321