[Federal Register Volume 88, Number 221 (Friday, November 17, 2023)]
[Notices]
[Pages 80277-80281]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-25473]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2023-0047]
Supplemental Guidance for Examination of Design Patent
Applications Related to Computer-Generated Electronic Images, Including
Computer-Generated Icons and Graphical User Interfaces
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Examination guidance.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
publishing supplemental guidance to be used by USPTO personnel in
determining whether a design claim including a computer-generated
electronic image is directed to statutory subject matter. This guidance
reflects current USPTO practice.
DATES: This supplemental guidance is applicable as of November 17,
2023.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, enter docket
number PTO-P-2023-0047 on the homepage and click ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this document and click on the
``Comment'' icon, complete the required fields, and enter or attach
your comments. Attachments to electronic comments will be accepted in
Adobe[supreg] portable document format (PDF) or Microsoft Word[supreg]
format. Because comments will be made available for public inspection,
information that the submitter does not desire to make public, such as
an address or phone number, should not be included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of comments
is not feasible due to a lack of access to a computer and/or the
internet, please contact the USPTO using the contact information below
for special instructions.
FOR FURTHER INFORMATION CONTACT: Erin Harriman, Senior Legal Advisor,
Office of Patent Legal Administration, at 571-272-7727; or Carolyn
Kosowski, Senior Legal Advisor, Office of Patent Legal Administration,
at 571-272-7688.
SUPPLEMENTARY INFORMATION: The USPTO has prepared supplemental guidance
for use by USPTO personnel in determining whether a design patent claim
including a computer-generated
[[Page 80278]]
electronic image per se or a computer-generated electronic image shown
on a display panel (e.g., computer screen, monitor, computer display
system, mobile phone screen, virtual reality/augmented reality
goggles), or a portion thereof, satisfies the article of manufacture
requirement in 35 U.S.C. 171. This 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).
This guidance does not constitute substantive rulemaking and
therefore does not have the force and effect of law. It has been
developed as a matter of internal USPTO management and is not intended
to create any right or benefit, substantive or procedural, enforceable
by any party against the USPTO. Rejections will continue to be based on
the substantive law, and it is these rejections that are appealable.
Consequently, any failure by USPTO personnel to follow the guidance is
neither appealable nor petitionable.
This guidance is not intended to announce any new USPTO practice or
procedure, and is meant to be consistent with current USPTO policy.
However, if any earlier guidance from the USPTO, including any section
of the current MPEP, is inconsistent with the guidance set forth in
this notice, USPTO personnel are to follow this guidance. This guidance
will be incorporated into the MPEP in due course.
I. 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.''
See The Article of Manufacture Requirement, 85 FR 83063. A summary of
the public comments is available to the public on the USPTO's website
at www.uspto.gov/sites/default/files/documents/USPTO-Articles-of-Manufacture-April2022.pdf.
The USPTO appreciates the feedback the public provided. MPEP
section 1504.01(a)(I) offers guidelines for the examination of design
patent applications for computer-generated icons (also referred to as
``computer icons'') that has also been used during the examination of
design patent applications related to graphical user interfaces (GUIs).
In response to the feedback received, the USPTO has determined that the
public would benefit from further clarifications to MPEP section
1504.01(a)(I). Such clarifications would also advance the mission of
the USPTO to issue and maintain robust and reliable patents. For
example, the USPTO has determined that the public would benefit from
additional clarity that the guidance in MPEP section 1504.01(a)(I) does
not permit design patent protection for a mere image on a screen. Thus,
the USPTO is issuing this notice to supplement the guidance in MPEP
section 1504.01(a)(I). This supplemental guidance does not change the
current guidance but provides important clarifications. The USPTO
welcomes public feedback on this supplemental guidance. Instructions
for submitting feedback are provided in the ADDRESSES section of this
notice.
This supplemental guidance will raise awareness regarding how to
file for protection for subject matter related to computer-generated
electronic images, if appropriate, including the proper claim language
and title to use when seeking such protection. Publishing these
guidelines will also promote consistent analysis by USPTO personnel of
the article of manufacture requirement in design patent applications
and reexamination proceedings and by the Patent Trial and Appeal Board
in both ex parte appeals and post-patent issuance proceedings. Thus,
this notice supports the USPTO's mission of promoting an efficient,
effective, and fair intellectual property ecosystem.
II. General Principles Governing Compliance With the Article of
Manufacture Requirement
35 U.S.C. 171 provides that ``[w]hoever invents any new, original
and ornamental design for an article of manufacture may obtain a patent
therefor'' (emphasis added). The language ``new, original and
ornamental design for an article of manufacture'' set forth in 35
U.S.C. 171 has been interpreted 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. 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.
As discussed in MPEP section 1502, a ``[d]esign is inseparable from
the article to which it is applied and cannot exist alone merely as a
scheme of surface ornamentation.'' See Curver Luxembourg, SARL v. Home
Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir.
2019) (noting ``that long-standing precedent, unchallenged regulation,
and agency practice all consistently support the view that design
patents are granted only for a design applied to an article of
manufacture, and not a design per se''). Further, as discussed in MPEP
section 1504.01, ``a picture standing alone is not patentable under 35
U.S.C. 171. The factor which distinguishes statutory design subject
matter from mere picture or ornamentation, per se (i.e., abstract
design), is the embodiment of the design in an article of manufacture.
Consistent with 35 U.S.C. 171, case law and USPTO practice, the design
must be shown as applied to or embodied in an article of manufacture.''
See also Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int.
1992).
III. Background Regarding MPEP Section 1504.0(a), Computer-Generated
Icons
In 1992, the Commissioner of Patents and Trademarks (the agency's
principal at that time) and Deputy Commissioner sitting in an expanded
panel of the USPTO Board of Patent Appeals and Interferences reviewed
In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931) and In re Zahn, 617
F.2d 261, 204 USPQ 988 (CCPA 1980) and determined that ``a picture
standing alone is not protectable by a design patent,'' and ``[t]he
factor which distinguishes statutory design subject matter from mere
picture or surface ornamentation per se (i.e., abstract designs) is the
embodiment of the design in an article of manufacture.'' Ex parte
Strijland, 26 USPQ2d at 1262. Applying prevailing case law to a new
technology of presenting a picture on a computer screen, the expanded
Board panel in Strijland explained that: ``[i]t should be noted,
however, we do not think that merely illustrating a picture displayed
on the screen of a computer or other display device, such as a
television or movie screen, is sufficient, alone, to convert a picture
into a design for an article of manufacture. Mere display of a picture
on a screen is not significantly different, in our view, from the
display of a picture on a piece of paper. Only the medium of display is
different.'' Strijland, 26 USPQ2d at 1263. The panel also noted that
appellants ``provided declaration evidence demonstrating that the icon
is an integral part of the operation of a programmed computer'' and
that ``[t]he declarations indicate that the intended design is not
merely a displayed picture, but an integral and active component in the
operation of a programmed computer displaying the design.'' Id. Thus,
the expanded Board panel explained that such an icon, ``if
[[Page 80279]]
properly presented and claimed would have constituted statutory subject
matter under 35 U.S.C. 171.'' Id.
Following the agency's decision in Ex parte Strijland, the USPTO
issued a notice of hearings and request for public comments. Public
Hearings and Request for Comments on Patent Protection for Software-
Related Inventions, 58 FR 66347 (December 20, 1993). Among other
questions, the USPTO sought public feedback on the language in Ex parte
Strijland, specifically asking whether ``a description in a
specification indicating how a displayed image is an `integral and
active component in the operation of a programmed computer displaying
the design' provide[s] a workable line between statutory and non-
statutory design subject matter.'' Id. at 66352. The notice made clear
that images displayed on a computer screen standing alone were treated
the same as mere pictures and did not qualify as computer icons, which
the agency had defined as integral and active components in the
operation of a programmed computer displaying the design. Id. Thus,
images merely displayed on a computer screen were not considered
eligible under 35 U.S.C. 171.
Over the next few years, the USPTO engaged with the public in a
process that resulted in the examination guidelines currently in MPEP
section 1504.01(a), subsection (I) in which computer icons (as opposed
to mere computer-generated images) are considered by the USPTO to
comply with the article of manufacture requirement of 35 U.S.C. 171
because they are integral and active components in the operation of a
programmed computer displaying the design. These guidelines have also
been used in the examination of design patent applications related to
GUIs in which GUIs are considered by the USPTO to be integral and
active components in the operation of a programmed computer displaying
the design. Therefore, if properly presented and claimed, a display
panel with a computer icon or a GUI--as an integral and active
component in the operation of a programmed computer displaying the
design--constitutes statutory subject matter under 35 U.S.C. 171.
IV. Supplemental Guidelines for Examination of Design Patent
Applications Related to Computer-Generated Electronic Images
In view of the above, the mere display of a computer-generated
electronic image that is not a computer icon or a GUI (i.e., that is
not an integral and active component in the operation of a computer)
shown on a display panel does not constitute statutory subject matter
under 35 U.S.C. 171. However, the USPTO considers a computer icon or a
GUI shown on a display panel, or a portion thereof, to be more than a
mere display of a picture on a screen because a computer icon or a GUI
is an integral and active component in the operation of--i.e., embodied
in and/or applied to--a programmed computer displaying the computer
icon or the GUI. Therefore, a computer icon or a GUI is eligible under
35 U.S.C. 171, if properly presented and claimed (e.g., the drawing(s)
fully discloses the design as embodied in the article of manufacture).
Office personnel must consider the complete disclosure when
evaluating whether a design claim that includes a computer-generated
electronic image complies with the article of manufacture requirement.
More specifically, USPTO personnel must read the disclosure to
determine what is claimed as the design and whether the design is
embodied in an article of manufacture. USPTO personnel must:
a. Review the title and claim language to determine whether the
title and claim adequately describe a design for an article of
manufacture under 35 U.S.C. 171. USPTO personnel must also consider the
following and, where appropriate, make the noted objections and
rejections.
1. A computer-generated electronic image shown on a display panel
that is not a computer icon or a 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. Therefore, a claim to the image
per se, to a display panel (or a portion thereof) with the image, or to
the image for display on a display panel, will not satisfy the article
of manufacture requirement, and such a claim should be rejected under
35 U.S.C. 171 for failing to comply with the article of manufacture
requirement.
2. 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). See MPEP section
1504.01(a)(I). 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.''
3. When a design claim is to a display panel with a computer-
generated image, the USPTO considers the term ``icon'' or ``GUI'' in
the title and the claim to be indicating that the image on the display
panel is not merely a displayed picture, but an integral and active
component in the operation of a programmed computer displaying the
image. See Ex parte Strijland, 26 USPQ2d at 1263. Therefore, a claim
and title directed to a display screen with an icon or a GUI adequately
describes a design for an article of manufacture under 35 U.S.C. 171.
(Note that though the underlying article of manufacture for an icon or
a GUI has functional properties, the design of the icon or the GUI
itself is not functional, and thus this subsection is not in tension
with, nor does it contradict, the functionality doctrine, which
requires that design patent protection extend only to the ``ornamental
design'' of an article of manufacture. See 35 U.S.C. 171(a); MPEP
section 1504.01(c), subsection (I)).
4. The following are examples of claim language and titles that DO
NOT adequately describe a design for 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.'' This list of examples is not exhaustive. These types
of claims and titles should be objected to under 37 CFR 1.153(a) for
failing to designate a particular article of manufacture, and the
objection should be maintained until the title and the claim language
are appropriately amended. See MPEP section 707.07(e). Note that a
determination must be made as to whether a rejection under 35 U.S.C.
171 is appropriate (e.g., the application fails to provide support for
an icon or a GUI). See paragraph (i) above; see also section (b) and
example 3 below.
5. The following are examples of claim language and titles that DO
adequately describe a design for an article of manufacture under 35
U.S.C. 171: ``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.'' This list
of examples is not exhaustive.
b. Review the drawing to determine whether a display panel, or a
portion thereof, is shown in sufficient views to fully disclose the
design as embodied in the article. See Changes to Patent Practice and
Procedure, 62 FR 53132, 53164 (October 10, 1997). USPTO personnel must
also consider the following and, where appropriate, make the noted
rejections.
1. If the drawing does not depict a computer icon or a GUI embodied
in a display panel, or a portion thereof, in
[[Page 80280]]
either solid or broken lines, USPTO personnel must reject the claimed
design under 35 U.S.C. 171 for failing to comply with the article of
manufacture requirement. See MPEP section 1504(a), subsection (I)(B).
i. If the disclosure as a whole does not suggest or describe the
claimed subject matter as a computer icon or a GUI embodied in a
display panel, or a portion thereof, USPTO personnel must indicate
that:
A. The claim is fatally defective under 35 U.S.C. 171; and
B. Amendments to the written description, drawings, and/or claim
attempting to overcome a non-final rejection will ordinarily be
entered; however, any new matter will be required to be canceled from
the written description, drawings, and/or claims. If new matter is
added, the claim should be rejected under 35 U.S.C. 112(a).
ii. If the disclosure as a whole suggests or describes the claimed
subject matter as a computer icon or a GUI embodied in a display panel,
or a portion thereof, USPTO personnel must indicate that the drawing
may be amended to overcome the rejection under 35 U.S.C. 171. USPTO
personnel must also suggest amendments that would bring the claim into
compliance with 35 U.S.C. 171.
V. Examples
Example 1
[GRAPHIC] [TIFF OMITTED] TN17NO23.014
Title: Computer display screen with icon
Description: The figure is a front view of a computer display
screen with icon, showing the new design. The broken lines showing a
portion of the computer display screen form no part of the claimed
design.
Claim: The ornamental design for computer display screen with icon
as shown and described
As presented, the claimed design in this example complies with 35
U.S.C. 171 because:
(1) the USPTO considers a computer icon or a GUI on a display panel
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 in broken lines.
In addition, the title and claim comply with 37 CFR 1.153(a)
because the title and claim adequately designate a particular article
of manufacture (i.e., the computer display screen).
Example 2
[GRAPHIC] [TIFF OMITTED] TN17NO23.015
Title: Animated Icon
Description: Figure 1 is a front view showing a first image in a
sequence for an animated icon showing a new design. Figure 2 is a
second image thereof. The appearance of the asimated image sequentially
transitions between the images shown in Figs. 1-2. The process or
period on which one image transitions to another image forms no part of
the claimed design. The broken lines showing a portion of a computer
display screen form no part of the claimed design.
Claim: The ornamental design for an animated Icon as shown and
described.
As presented, the title and claim should be objected to under 37
CFR 1.153(a) for failing to designate a particular article of
manufacture. However, as presented, the claimed design in this example
does comply with 35 U.S.C. 171 because:
(1) the USPTO considers a computer icon or a GUI on a display panel
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 display screen in broken lines and the description (i.e., the
broken line statement) describes a portion of a computer display
screen.
To address the objections to the title and claim, the application
could be amended as follows:
Title: Computer display screen with A animated Icon
Claim: The ornamental design for a computer display screen with an
animated Icon as shown and described.
The objections should be maintained until the title and the claim
are appropriately amended.
Example 3
[GRAPHIC] [TIFF OMITTED] TN17NO23.016
Title: Virtual paper stack
Description: The figure is a front view of a computer display
screen with a virtual paper stack showing the new design. The broken
lines showing a portion of the computer display screen form no part of
the claimed design.
Claim: The ornamental design for a virtual paper stack as shown and
described.
As presented, the claimed design in this example does not comply
with 35 U.S.C. 171. The image is merely a picture displayed on a
computer display
[[Page 80281]]
screen. Because the original disclosure does not provide support for
amending the claim to include a computer icon, the claim is fatally
defective under 35 U.S.C. 171 and should be rejected under 35 U.S.C.
171, as set forth in MPEP section 1504.01(a), subsection (I)(B). In
addition, the title and claim should be objected to under 37 CFR
1.153(a) for failing to designate a particular article of manufacture.
Example 4
[GRAPHIC] [TIFF OMITTED] TN17NO23.017
Title: Paper stack icon for use on a mobile device screen.
Description: The figure is a front view of a paper stack icon
showing the new design.
Claim: The ornamental design for a paper stack icon for use on a
mobile device screen as shown and described
As presented, the claimed design in this example would not comply
with 35 U.S.C. 171 because the drawing does not depict an article of
manufacture (e.g., a display panel) in either solid or broken lines.
Therefore, the claim should be rejected under 35 U.S.C. 171, as set
forth in MPEP section 1504.01(a), subsection (I)(B). In addition, the
title and claim should be objected to under 37 CFR 1.153(a) for failing
to designate a particular article of manufacture. Specifically, the
language ``for use on a mobile device screen'' does not adequately
designate a particular article of manufacture. However, because the
original disclosure provides support for a mobile device screen, the
application could be amended as follows:
Title: Mobile device screen with a paper Paper stack icon for use
on mobile device.
Claim: The ornamental design for a mobile device screen with a
paper stack icon for use on a mobile device as shown and described.
Description: The figure is a front view of a mobile device with a
virtual paper stack icon showing the new design. The broken lines
showing a portion of the mobile device screen form no part of the
claimed design.
Note that a replacement figure showing the portion of a mobile
device screen in either solid or broken lines must not introduce new
matter. The replacement figure shown represents a best practice for
applicants as it is the most likely amendment to be supported by the
original disclosure.
Replacement Figure:
[GRAPHIC] [TIFF OMITTED] TN17NO23.018
Example 5
[GRAPHIC] [TIFF OMITTED] TN17NO23.019
Title: Icon for computer display screen
Description: The figure is a front view of a computer display
screen with icon, showing the new design. The broken lines showing a
portion of the computer display screen form no part of the claimed
design.
Claim: The ornamental design for an icon for computer display
screen as shown and described
As presented, the title and claim should be objected to under 37
CFR 1.153(a) for failing to designate a particular article of
manufacture. In particular, the language ``for computer display
screen'' does not adequately designate a particular article of
manufacture.
However, as presented, the claimed design in this example complies
with 35 U.S.C. 171 because:
(1) the USPTO considers a computer icon or a GUI on a display panel
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 description and drawing depict the
design embodied in a computer display screen in broken lines and the
description (i.e., the broken line statement) describes a portion of a
computer display screen.
To address the objections to the title and claim, the application
could be amended as follows:
Title: Icon for computer Computer display screen with Icon
Katherine Kelly Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-25473 Filed 11-16-23; 8:45 am]
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