By Sarah Burstein, Professor of Legislation at Suffolk College Legislation College
USPTO Discover, 88 FR 80277 (Nov. 17, 2023)
Final week, the USPTO launched a doc entitled “Supplemental Steering for Examination of Design Patent Purposes Associated to Pc-Generated Digital Pictures, Together with Pc-Generated Icons and Graphical Consumer Interfaces.” In it, the USPTO reaffirmed its prior interpretation of the phrase “design for an article of manufacture” and didn’t—as many had hoped—increase its interpretation of that phrase.
The statutory subject material provision for design patents, 35 U.S.C. § 171, states: “Whoever invents any new, unique and decorative design for an article of manufacture might receive a patent therefor, topic to the circumstances and necessities of this title” (emphasis added).
Within the Nineties, the USPTO interpreted the phrase “design for an article of manufacture” to cowl designs for “computer-generated icons”:
The PTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject material eligible for design patent safety underneath part 171. Thus, if an software claims a computer-generated icon proven on a pc display, monitor, different show panel, or a portion thereof, the declare complies with the ‘‘article of manufacture’’ requirement of part 171.
61 Fed. Reg. 11380, 11381 (footnotes omitted). This interpretation has been criticized on my own and others.
In help of this interpretation, the USPTO cited its personal 1992 choice in Ex parte Strijland for the proposition that “[c]omputer-generated icons, akin to full display shows and particular person icons, are two-dimensional photos which alone are floor ornamentation.” Id. at 11382 (citing 26 U.S.P.Q. second 1259, 1262 n.2 (Bd. Pat App. & Int. 1992). In these unique GUI Pointers, the USPTO additionally advised that it believed the related “article of manufacture” to be the “laptop display, monitor, different show panel, or portion thereof.” 61 Fed. Reg. 11380, 11381–82.
In late December 2020, the USPTO printed a request for info on “The Article of Manufacture Requirement.” On this doc, the USPTO sought “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.” Specifically, the USPTO requested for enter on the protectability of designs for factor like “projections, holographic imagery, or digital/augmented actuality”—i.e., designs that “don’t require a bodily show display or different tangible article to be viewable” or, as I name them, disembodied designs. The tone of the request appeared to recommend that USPTO needed to increase its definition of § 171 to cowl designs “not utilized to or embodied in a bodily article.”
Within the request for info, the USPTO once more pointed to Strijland however centered on a unique a part of that call, the half that talked about icons being “integral to the operation of a pc.” See 85 Fed. Reg. 83063, 83064–65. (In contrast, the unique GUI Pointers didn’t point out the phrase “integral” in any respect. See 61 Fed. Reg. 11380.)
In February 2021, the USPTO printed 19 feedback that had been submitted in response to the request, together with these feedback submitted on my own and different design legislation professors.
Over a yr later, in April 2022, new USPTO Director Vidal introduced the discharge of a “abstract of public views on the article of manufacture requirement of 35 U.S.C. § 171” and introduced that the USPTO would “instantly flip to reviewing the ‘Pointers for Examination of Design Patent Purposes for Pc-Generated Icons’ and the encircling legislation.” The tone of the announcement, which framed the difficulty as whether or not the USPTO’s guidelines must be “reevaluated to incentivize and defend design innovation in new and rising applied sciences,” appeared to recommend that the USPTO was planning to increase its interpretation of § 171. (For extra on that abstract, see this submit.)
But it surely didn’t. Within the “supplemental steerage,” the USPTO doubled down on its “it’s okay if it’s on a display” interpretation of the statute however didn’t prolong its interpretation of “design for an article of manufacture” to cowl disembodied designs:
[T]he mere show of a computer-generated digital picture that’s not a pc icon or a GUI (i.e., that’s not an integral and lively part within the operation of a pc) proven on a show panel doesn’t represent statutory subject material underneath 35 U.S.C. 171. Nevertheless, the USPTO considers a pc icon or a GUI proven on a show panel, or a portion thereof, to be greater than a mere show of an image on a display as a result of a pc icon or a GUI is an integral and lively part within the operation of—i.e., embodied in and/or utilized to—a programmed laptop displaying the pc icon or the GUI. Subsequently, a pc icon or a GUI is eligible underneath 35 U.S.C. 171, if correctly offered and claimed (e.g., the drawing(s) totally discloses the design as embodied within the article of manufacture).
So what’s totally different right here? The USPTO added “or a GUI” to the identical class as “icons.” However that appears to be a codification of USPTO follow, not an precise change in coverage. See, e.gD1,001,156 (issued to Google in October for a “design for a show display or portion thereof with graphical person interface”); D436,580 (issued to Sony in 2001 for a design for a “design for graphical person interface for a show display”).
If something main has modified, it’s the USPTO’s justification for its display rule. The USPTO is now leaning laborious on the “integral and lively part” language from Strijland. However whereas that a part of Strijland advised the related article is the “programmed laptop,” the USPTO appears to be sticking with its conclusion that the related article is the display. And it stays to be seen simply how expansively the USPTO will interpret and apply the phrase “integral and lively part.”
Remark: Though many within the design patent group will little question be disenchanted that the USPTO refused to increase its interpretation of § 171, the USPTO was proper not to take action. As we identified right here, offering protections for disembodied designs would increase severe First Modification considerations, amongst different issues.
And as I identified right here, disembodied designs are already routinely (and costlessly) protected by copyright so long as they will meet the low normal of creativity mandated by Feist v. Rural. That’s actually what this debate is about—whether or not design patents can and must be awarded for designs that fail to satisfy the low bar set by copyright legislation. (And, no, the Feist normal shouldn’t be subsumed by the necessities of § 102 and 103. For extra on that challenge, see this forthcoming article.)
As for the USPTO’s new protection of the the established orderthe brand new justification isn’t any extra persuasive than the outdated one. However at the least the USPTO didn’t make the scenario worse.
