By Sarah Burstein, Professor of Law at Suffolk University Law School
USPTO Notice, 88 FR 80277 (Nov. 17, 2023)
Last week, the USPTO released a document entitled “Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces.” In it, the USPTO reaffirmed its prior interpretation of the phrase “design for an article of manufacture” and did not—as many had hoped—expand its interpretation of that phrase.
The statutory subject matter provision for design patents, 35 U.S.C. § 171, states: “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” (emphasis added).
In the 1990s, the USPTO interpreted the phrase “design for an article of manufacture” to cover designs for “computer-generated icons”:
The PTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under section 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 section 171.
61 Fed. Reg. 11380, 11381 (footnotes omitted). This interpretation has been criticized by myself and others.
In support of this interpretation, the USPTO cited its own 1992 decision in Ex parte Strijland for the proposition that “[c]omputer-generated icons, such as full screen displays and individual icons, are two-dimensional images which alone are surface ornamentation.” Id. at 11382 (citing 26 U.S.P.Q. 2d 1259, 1262 n.2 (Bd. Pat App. & Int. 1992). In these original GUI Guidelines, the USPTO also suggested that it believed the relevant “article of manufacture” to be the “computer screen, monitor, other display panel, or portion thereof.” 61 Fed. Reg. 11380, 11381–82.
In late December 2020, the USPTO published a request for information on “The Article of Manufacture Requirement.” In this document, 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 particular, the USPTO asked for input on the protectability of designs for thing like “projections, holographic imagery, or virtual/augmented reality”—i.e., designs that “do not require a physical display screen or other tangible article to be viewable” or, as I call them, disembodied designs. The tone of the request seemed to suggest that USPTO wanted to expand its definition of § 171 to cover designs “not applied to or embodied in a physical article.”
In the request for information, the USPTO again pointed to Strijland but focused on a different part of that decision, the part that talked about icons being “integral to the operation of a computer.” See 85 Fed. Reg. 83063, 83064–65. (By contrast, the original GUI Guidelines did not mention the word “integral” at all. See 61 Fed. Reg. 11380.)
In February 2021, the USPTO published 19 comments that were submitted in response to the request, including these comments submitted by myself and other design law professors.
Over a year later, in April 2022, new USPTO Director Vidal announced the release of a “summary of public views on the article of manufacture requirement of 35 U.S.C. § 171” and announced that the USPTO would “immediately turn to reviewing the ‘Guidelines for Examination of Design Patent Applications for Computer-Generated Icons’ and the surrounding law.” The tone of the announcement, which framed the issue as whether the USPTO’s rules should be “reevaluated to incentivize and protect design innovation in new and emerging technologies,” seemed to suggest that the USPTO was planning to expand its interpretation of § 171. (For more on that summary, see this post.)
But it didn’t. In the “supplemental guidance,” the USPTO doubled down on its “it’s okay if it’s on a screen” interpretation of the statute but did not extend its interpretation of “design for an article of manufacture” to cover disembodied designs:
[T]he mere display of a computer-generated electronic image that is not a computer icon or a GUI (i.e., that is not an integral and active component in the operation of a computer) shown on a display panel does not constitute statutory subject matter under 35 U.S.C. 171. However, 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).
So what’s different here? The USPTO added “or a GUI” to the same category as “icons.” But that seems to be a codification of USPTO practice, not an actual change in policy. See, e.g., D1,001,156 (issued to Google in October for a “design for a display screen or portion thereof with graphical user interface”); D436,580 (issued to Sony in 2001 for a design for a “design for graphical user interface for a display screen”).
If anything major has changed, it’s the USPTO’s justification for its screen rule. The USPTO is now leaning hard on the “integral and active component” language from Strijland. But while that part of Strijland suggested the relevant article is the “programmed computer,” the USPTO seems to be sticking with its conclusion that the relevant article is the screen. And it remains to be seen just how expansively the USPTO will interpret and apply the phrase “integral and active component.”
Comment: Although many in the design patent community will no doubt be disappointed that the USPTO refused to expand its interpretation of § 171, the USPTO was right not to do so. As we pointed out here, providing protections for disembodied designs would raise serious First Amendment concerns, among other problems.
And as I pointed out here, disembodied designs are already automatically (and costlessly) protected by copyright as long as they can meet the low standard of creativity mandated by Feist v. Rural. That’s really what this debate is about—whether design patents can and should be awarded for designs that fail to meet the low bar set by copyright law. (And, no, the Feist standard is not subsumed by the requirements of § 102 and 103. For more on that issue, see this forthcoming article.)
As for the USPTO’s new defense of the status quo, the new justification is no more persuasive than the old one. But at least the USPTO didn’t make the situation worse.
After 20+ years I still don’t fully get it. If I draw something on paper it is protected by copyright. The drawing is really just applying one or more different compounds/elements to a substrate that selectively reflects one or more different wavelengths of light (photons) back to the human eye. Yet applying one or more different compounds/elements to the substrate fundamentally seems to be a design for an article of manufacture. If I program a device to generate an icon on a display, it is really just causing the display (fundamentally light sources) to selectively emit one or more different wavelengths of light (photons) to the human eye. On the other hand, if an icon on a display is patentable, there is really nothing on the physical display itself, instead the display is emitting one or more different wavelengths of light to the human eye. While the disembodied design from projections, holographic imagery or virtual/augment reality is also just emitting one or more different wavelengths of light from light sources to the human eye. In all cases, the eye is sensing the photons, and not really the source of the photons. On the other hand, if I touch an article of manufacture I am sensing the surface (ornamental design) of the article of manufacture itself.
I can’t see how the lighting of various- already installed- pixels to create an image can be an ornamental design for a display screen. That article of manufacture exists to activate pixels- that’s the functional use. The data displayed on the screen does not ornament the screen- even if the data is intended to be ornamental, it’s not the screen being decorated.
Obviously, the functional aspect is not determinative for a choice of design — your attempted point actually proves the opposite, and it is doubtful that you comprehended that while you were typing your post.
The screen is – in fact – being ornamented with choice of pixel decoration.
No, the output on the screen is – in fact- not ornamental.
Even if the content displayed is meant to be entertaining or creative, the screen is not the article being ornamented- the article of manufacture being ornamented is the software.
This would never survive a trip to the USSC.
Yes – ornamental.
The situation is NOT a binary choice between ornamental and functional.
Please consult your attorney prior to showcasing your 1gn0rance.
ps – you would have been better off providing a challenge of “being fixed” in a media, being that the ornamentation is highly dependent on transitory effect of “power on.”
As we pointed out here, providing protections for disembodied designs would raise serious First Amendment concerns, among other problems.
What are the “serious First Amendment concerns”? Wouldn’t these concerns also apply to all visual mediums — not just GUIs? I don’t see the difference.
The First Amendment concern arises from the lack of a fair use defense in design patent law so that literal infringement is occurring when the “design” is displayed on a screen for any reason, including “here is the obvious design we are talking about.”
Now go ahead and argue “Yes, but so what nobody will ever sue anybody for that.” Go ahead! You’re a very serious person.
“ displayed on a screen for any reason”
OMFG – your inanity is screaming out.
Please do not attempt to discuss things that you have so very little working knowledge of.
Phone a friend to help you find the words, Billy, that will explain to everyone how far off I am from the truth. Because we know you wouldn’t pipe up here just to expose yourself as some sort of obtuse, ultra-pedantic mental case.
LOL – you think that it is me that needs help?
Your mindless and off-aimed ad hominem cannot cover up your lack of understanding of merely displaying on a screen is just not the same as a graphical user interface.
There (again) is that troubling (for you) notion of functionality.
But you be you.
As usual, projecting away. I said nothing about functionality.
I said the article of manufacture being ornamented is the software, not the display.
Are you suggesting that the design is being applied to two articles of manufacture? Because something is happening with the software.
I suppose that you merely commented to the incorrect sub thread here.
As to “projecting away,” that does not make sense, as adding the element of functionality IS IN LINE with your very apparent error.
The software is NOT being ornamented. That is not the end that SEES the ornamentation. The software may be implicated, but your focus is off.
I suggest (heavily) that you have your patent attorney explain this to you before you respond again.
Wt,
The hyperlinks to earlier articles contain MANY excellent comments.
“at least the USPTO didn’t make the situation worse”
So (given the other misguided moves made and not made), is this then the best we can hope for from the reign of Vidal?
That things don’t get worse?
Ugh.
“Not getting worse” would be a major improvement over the relentless b s propagated by whatshisnsme Iancu.
translation: Wah
What happens when 3D image projection replaces screens? That could be a lot closer than you think.
Just like when 2D monitors replaced paper! Happened overnight. I still have a few sheets I pull out at Thanksgiving to amuse the kids.
First, let’s just acknowledge that to the extent there is a “design patent community” it’s a community of grifters and rent-seeking trash traders. This “community” is historically incapable of any reasoning beyond “WE WANT MORE.”
Second, the statute that (appropriately) limits design patents is already warped beyond repair. Any suggestion that it should be further EXPANDED by the courts or the PTO needs to be kicked into the gutter, washed into the sea and eaten by crabs.
Third, of course copyright is the answer to this non-existent utterly contrived “problem” of protecting ornamental displays.
… “community of grifters and rent-seeking trash traders”
Soooo – exactly how you feel about most anybody obtaining any patents.
(but you are not anti-patent, per your own gaslighting attempts, eh Malcolm?)
if you don’t have a screen, then doesn’t it fall within the realm of copyright, e.g., a movie?
“That’s really what this debate is about—whether design patents can and should be awarded for designs that fail to meet the low bar set by copyright law”
No.
Beyond a doubt, no.
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