IP Law Daily, PATENT NEWS: USPTO issues supplemental exam guidance for design patent applications related to computer-generated images, (Nov 17, 2023)
Organizations Mentioned:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
By Thomas K. Lauletta, J.D.
The guidance reflects current USPTO practice.
The U.S. Patent and Trademark Office has published supplemental guidance for its personnel to use in determining whether a design patent claim including a computer-generated electronic image or a computer-generated electronic image shown on a display panel complies with statutory rules, including the “article of manufacture” requirement. The guidance supplements the guidance provided in section 1504.01(a), subsection (I) of the Manual of Patent Examining Procedure (MPEP) (9th ed., Rev. 07.2022, February 2023) (88 Fed. Reg. 80277, November 17, 2023).
The USPTO noted that under 35 U.S.C. 171, a patent can be issued for a “new original and ornamental design for an article of manufacture.” But a picture, standing alone will not qualify for a design patent; what is needed is the embodiment of the design in an article of manufacture.
Current USPTO examination guidelines state that computer icons and graphic user interfaces comply with the article of manufacture because they are integral and active components in the operation of a programmed computer displaying the design. When examining an application for a design patent related to computer-generated electronic images, USPTO personnel are directed to read the disclosure, giving attention to the title and claim language to determine whether the title and claim adequately describe a design for an article of manufacture.
The supplemental guidelines state that a computer-generated electronic image shown on a display panel that is not a computer icon or a graphical user interface, or GUI (i.e., that is not an integral and active component in the operation of a computer) is a mere illustration of a picture displayed electronically. Such an image will not satisfy the article of manufacture requirement and should be rejected.
The USPTO considers computer icons or GUIs to be two dimensional images which standing alone are surface ornamentation (i.e., an ornament, impression, print, or picture). Therefore, the title and the claim should not be for a computer icon or a GUI alone, but must be for an article of manufacture, for example, a “display panel with computer icon.”
The USPTP gave the following examples of claim language and titles that do not adequately describe an article of manufacture under 35 U.S.C. 171: “display screen with virtual image,” “virtual image for display on computer screen,” “computer icon,” and “icon for computer screen.” Examples of claim language and titles that do meet the article of manufacture requirement 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.”
USPTO personnel are also directed to review the drawing to determine whether a display panel, or portion thereof, is shown with sufficient views to fully disclose the design as embodied in the article.
Practitioner comments. Beth Ferrill, partner in Finnegan’s Washington, D.C. office with extensive design patent experience, told IP Law Daily that the supplemental guidance falls short of what many in the design patent bar had hoped for. “The guidance follows a 2021 Request for Comments from the USPTO that included inquiries about virtual and augmented reality designs,” Ferrill noted. However, rather than directly address any graphical user interface designs related to these newer technologies, the supplemental guidance published today unfortunately “seems to just repackage existing guidance on more traditional graphical user interfaces that are tied to a computer screen.”
Attorneys: Elizabeth D. Ferrill (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP).
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