LawFlash
December 14, 2023
The US Patent and Trademark Workplace (USPTO) printed supplemental steerage on whether or not a design declare together with a computer-generated digital picture is directed to statutory subject material. Whereas the USPTO’s examination of design patent claims associated to pc icons and graphical person interfaces (GUIs) has not modified, there are extra examples of titles and declare language that the USPTO considers to represent statutory and non-statutory subject material.
BACKGROUND
On December 21, 2020, the USPTO printed a request for info searching for public enter on “whether or not its interpretation of the article of manufacture requirement in the US Code must be revised to guard digital designs that embody new and rising applied sciences.”[1]
The USPTO has interpreted this language to incorporate at the least three sorts of designs: (1) a design for an decoration, impression, print, or image that’s utilized to or embodied in an article of manufacture (floor indicia); (2) a design for the form or configuration of an article of manufacture; and (3) a mixture of the primary two classes.[2]
On November 17, 2023, on account of the requested public feedback, the USPTO printed a supplemental steerage to be used by USPTO personnel in figuring out whether or not a design patent declare together with a computer-generated digital picture per se or a computer-generated digital picture proven on a show panel (e.g., pc display, monitor, cell phone display, digital actuality display), or a portion thereof, satisfies the article of manufacture requirement in Part 171 of the Patent Act.[3]
Pointers for the examination of design patent purposes directed to computer-generated icons could be present in Handbook of Patent Inspecting Process Part 1504.01(a)(I), which can also be usually relied upon by the USPTO throughout the examination of design patent purposes associated to graphical person interfaces (GUIs).
Primarily based on these tips, the USPTO has in recent times thought-about pc icons and GUIs included in design patent purposes directed to them to be integral and lively elements within the operation of a programmed pc displaying the design. Due to this fact, the USPTO has handled these designs, if correctly offered and claimed as a show panel with a pc icon/GUI, to represent statutory subject material below Part 171 of the Patent Act.
SUPPLEMENTAL GUIDELINES
The USPTO confirmed that computer-generated digital pictures themselves—that’s, pc generated pictures not proven on a show panel—don’t represent statutory subject material. The USPTO reiterated that it’s going to proceed to require that pc icons or GUIs be proven on a show panel or portion thereof. To ensure that a design software directed to a pc icon or GUI to represent statutory subject material below Part 171, the USPTO maintains that it should be correctly offered and claimed.
When figuring out whether or not the design software is correctly offered and claimed, the USPTO offered, amongst different issues, the next steerage:
- To ensure that pc icons and/or GUIs to be correctly claimed, the title and declare language should adequately describe a design for an article of manufacture below Part 171.
- Some examples of declare language and titles that don’t adequately describe a design for an article of manufacture embrace “show display with digital picture,” “digital picture for show on pc display,” “pc icon,” and “icon for pc display.”
- Some examples of declare language and titles that do adequately describe a design for an article of manufacture embrace “pc display with an icon,” “show panel with GUI,” “show display or portion thereof with icon,” “portion of a pc display with an icon,” “portion of a show panel with an icon,” and “portion of a monitor displayed with an icon.”
- A show panel, or portion thereof, should be proven within the drawings.
For instance, the USPTO maintains that the under claimed design constitutes statutory subject material as a result of (1) a pc icon or GUI on a show panel is taken into account to be an integral and lively element within the operation of a programmed pc displaying the design and greater than a displayed image; and (2) the appliance absolutely discloses the design as embodied in an article of manufacture, because the drawing depicts the design embodied in a pc display as illustrated by the damaged line border.
For instance, the picture under depicts an icon with the damaged line border illustrating a portion of the pc show display. The specification would come with a disclaimer that the damaged line types no a part of the claimed design.
TAKEAWAY
Whereas many anticipated the USPTO to broaden on its issues for defense of computer-generated imagery, equivalent to holograms and digital actuality pictures, the supplemental steerage offered on November 17, 2023 as an alternative focuses on additional clarifying the prevailing examination procedures for pc icons and GUIs proven on a show panel.
Along with closing the loop on the request for info searching for public enter, the rationale and examples are a useful reminder for these engaged on design patent claims directed to pc icons and GUIs.
