Virtual Designs

Guest Post by Mark D. Janis, Robert A. Lucas Chair of Law at the Indiana University Maurer School of Law and Jason Du Mont, Microsoft IP Fellow at the Indiana University Maurer School of Law

While design patents for generated images are commonly portrayed as the newest thing in design patent law, they've actually been around for some time. The USPTO implemented a relevant set of guidelines almost 20 years ago, and today well over 3500 design patents on generated images have been granted.

Nevertheless, scholars have paid relatively little attention to many of the core legal questions these design patents present, and no one has systematically studied how the PTO examines applications that claim these designs. In our recent article, Virtual Designs*, available here, we attempt to fill this vacuum. We analyze the core questions of design patent doctrine, and we provide the first rigorous empirical look at patenting in this sector.

Among the findings are three key points:

  1. Virtual designs are eligible designs "for an article of manufacture" (35 USC ยง 171).

    Virtual designs are akin to surface treatments. While some design patents protect the shapes of articles of manufacture, others protect surface treatments for articles of manufacture (wallpaper patterns, textile prints, etc.). Surface treatments are eligible subject matter, and always have been, starting with the first design patent provisions in 1842.

    Like other surface treatments, virtual designs (e.g., icons on a phone GUI) are eligible subject matter independent of the appearance of the associated article of manufacture (e.g., the phone).This is not a terribly exotic legal proposition. It's merely a manifestation of the concept thata protectable design may reside in some part of the article; it need not extend to the entirety of the article. Standard design patent claiming practice permits applicants to implement this concept by rendering the unclaimed portions of the article in broken lines.

    While virtual designs may be transient, design patent law has previously dealt with this question, too. The CCPA reversed the PTO's rejection in In re Hruby, involving a design for a spray pattern for a water fountain. The design patent eligibility analysis should not turn on whether the design is too ephemeral, whether the subject matter is a water spray pattern or a virtual design.

  2. Virtual designs equilibrate around the prosecution norms of other design patent sectors

    We studied all available design patents granted for virtual designs and their prosecution histories. We adapted empirical techniques developed for studying utility patents, and extended the traditional proxies used by economists for measuring the quality and private value of utility patents.

    Our analysis indicates that virtual designs are at least on par with design patents from other sectors when assessed by these traditional measures. And, if anything, an argument can be made that they might actually be more heavily scrutinized than others. They not only garner more rejections, but they also receive more prior art citations from examiners, and greater numbers of forward self-citations.

  3. Virtual designs will present a handful of doctrinal challenges

    We expect that design patents for virtual designs will present some challenges for existing rules of design patent anticipation, obviousness, infringement, and remedies. Ultimately, we propose a series of guidelines that seek to account for the transferability of the design among different mediums, and for the need to provide adequate public notice and room to engage in non-traditional, expressive uses of designs.

* We use virtual designs as a generic term that covers everything from GUIs to isolated icons and arrows grouped in classes D14/485 to 495 by the USPTO.

** Read the full article here: