The US Patent and Trademark Office (USPTO) published supplemental guidance on whether a design claim including a computer-generated electronic image is directed to statutory subject matter. While the USPTO’s examination of design patent claims related to computer icons and graphical user interfaces (GUIs) has not changed, there are additional examples of titles and claim language that the USPTO considers to constitute statutory and non-statutory subject matter.

BACKGROUND

On December 21, 2020, the USPTO published a request for information seeking 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.”[1]

The USPTO has interpreted this language 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.[2]

On November 17, 2023, as a result of the requested public comments, the USPTO published a supplemental guidance for use by USPTO personnel in 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, mobile phone screen, virtual reality screen), or a portion thereof, satisfies the article of manufacture requirement in Section 171 of the Patent Act.[3]

Guidelines for the examination of design patent applications directed to computer-generated icons can be found in Manual of Patent Examining Procedure Section 1504.01(a)(I), which is also typically relied upon by the USPTO during the examination of design patent applications related to graphical user interfaces (GUIs).

Based on these guidelines, the USPTO has in recent years considered computer icons and GUIs included in design patent applications directed to them to be integral and active components in the operation of a programmed computer displaying the design. Therefore, the USPTO has treated these designs, if properly presented and claimed as a display panel with a computer icon/GUI, to constitute statutory subject matter under Section 171 of the Patent Act.

SUPPLEMENTAL GUIDELINES

The USPTO confirmed that computer-generated electronic images themselves—that is, computer generated images not shown on a display panel—do not constitute statutory subject matter. The USPTO reiterated that it will continue to require that computer icons or GUIs be shown on a display panel or portion thereof. In order for a design application directed to a computer icon or GUI to constitute statutory subject matter under Section 171, the USPTO maintains that it must be properly presented and claimed.

When determining whether the design application is properly presented and claimed, the USPTO provided, among other things, the following guidance:

• In order for computer icons and/or GUIs to be properly claimed, the title and claim language must adequately describe a design for an article of manufacture under Section 171.
• Some examples of claim language and titles that do not adequately describe a design for an article of manufacture include “display screen with virtual image,” “virtual image for display on computer screen,” “computer icon,” and “icon for computer screen.”
• Some examples of claim language and titles that do adequately describe a design for an article of manufacture include “computer screen with an icon,” “display panel with GUI,” “display screen or portion thereof with icon,” “portion of a computer screen with an icon,” “portion of a display panel with an icon,” and “portion of a monitor displayed with an icon.”
• A display panel, or portion thereof, must be shown in the drawings.

For example, the USPTO maintains that the below claimed design constitutes statutory subject matter because (1) a computer icon or GUI on a display panel is considered to be an integral and active component in the operation of a programmed computer displaying the design and more than a displayed picture; and (2) the application fully discloses the design as embodied in an article of manufacture, as the drawing depicts the design embodied in a computer screen as illustrated by the broken line border.

For example, the image below depicts an icon with the broken line border illustrating a portion of the computer display screen. The specification would include a disclaimer that the broken line forms no part of the claimed design.

TAKEAWAY

While many expected the USPTO to expand on its considerations for protection of computer-generated imagery, such as holograms and virtual reality images, the supplemental guidance provided on November 17, 2023 instead focuses on further clarifying the existing examination procedures for computer icons and GUIs shown on a display panel.

In addition to closing the loop on the request for information seeking public input, the rationale and examples are a helpful reminder for those working on design patent claims directed to computer icons and GUIs.

[1] USPTO, Request for Information: The Article of Manufacture Requirement, Docket No. PTO-C-2020-0068 (Dec. 18, 2021). See our previous LawFlash on this topic, USPTO Seeks Public Input on Design Patent Protection for Digital Designs Displayed Outside Screens.

[2] See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int. 1992). See also MPEP section 1504.01.

[3] “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor,” 35 U.S.C. § 171.

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