In response to public comments submitted in response to its request thereof regarding the “article of manufacture” requirement for design patent eligibility appearing in Title 35, United States Code, Section 171, and as explained in our previous post, the U.S. Patent & Trademark Office (USPTO) recently published a notice entitled “Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces.”

As suggested by the title of the notice itself, the USPTO did not expand its interpretation of the subject matter eligibility of computer-generated electronic images under Section 171, but instead reiterated its current practice noting that “[t]his supplemental guidance does not change the current guidance [i.e., MPEP § 1504.01(a)(I)] but provides important clarifications.” 80 Fed. Reg. 80,278 (Nov. 17, 2023) (emphasis added). Thus, under the USPTO’s newly-clarified guidance of the status quo, for a computer-generated electronic image to be afforded protection under Section 171 the computer-generated electronic image must be: (i) “an integral and active component in the operation of a computer” (i.e., a computer icon or a graphical user interface (GUI)); and (ii) be embodied on or in a display panel, or a portion thereof.

Further, to the dismay of many looking for clarification regarding subject matter eligibility of some emerging technologies, e.g., projected and holographic imagery and virtual/augmented reality—which were the focus of the majority of the six topics for public comment listed in the USPTO’s request for comments—the USPTO ignored pleas from and to extend its interpretation of design patent eligibility to these particular types of computer-generated electronic images.

Accordingly, “disembodied” designs that are not tied to a physical article of manufacture (e.g., a display panel), such as holograms projected into the air or some types of images displayed in virtual reality, might continue to be considered ineligible subject matter under the USPTO’s interpretation of Section 171 and thus may not be afforded protection under design patent law. As such, creators of such “disembodied” designs may need to continue to rely only on copyright law to protect such designs as artistic works unless and until Congress intervenes to expand subject matter eligibility under Section 171.