USPTO Seeks Public Input on Design Patent Protection for Digital Designs Displayed Outside Screens

The US Patent and Trademark Office has issued a request for public comment seeking the public’s input on whether design patent protection should extend to digital designs that encompass new and emerging technologies, such as projections, holographic imagery, and virtual/augmented reality.

Although design applicants are currently required to apply their computer-generated icons to “articles of manufacture” to be eligible for design patent protection, the US Patent and Trademark Office (USPTO) is exploring whether that protection should extend to emerging digital designs that “do not require a physical display screen or other tangible article to be viewable.” Because no judicial decision has addressed the eligibility of designs lacking a static, physical form, this request for public comment[1] presents a rare opportunity for the public to help guide the USPTO’s treatment of these emerging digital designs.

BACKGROUND

Section 171 of the Patent Act states that “[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor.”[2] Relying on this language, the USPTO requires design applicants to apply or embody their design in an article of manufacture to obtain a patent. While the article of manufacture requirement has historically received little attention in design patent jurisprudence, the popularity of digital designs has refocused attention on this statutory requirement.

The Supreme Court’s 2016 decision in Samsung Electronics Co. v. Apple Inc. is particularly instructive on this point.[3] There, the Court held that the term “article of manufacture” as used in Section 289—a provision providing profit disgorgement as an additional remedy for design patent infringement—has a broad meaning that encompasses both a product sold to a consumer (e.g., a smartphone) and a component of that product (e.g., the graphical user interface).[4] After finding that an “article” is just “a particular thing” and “manufacture” means “the conversion of raw materials by the hand, or by machinery, into articles suitable for the use of man” and “the articles so made,” the Court concluded that an “article of manufacture” is “simply a thing made by hand or machine.”[5] Importantly, the Court confirmed that its definition of “article of manufacture” comported with 35 U.S.C. §§ 171 and 101, recognizing that “‘article of manufacture’ in [Section] 171 includes ‘what would be considered a “manufacture” within the meaning of Section 101.’”[6]

More recently, in Curver Luxembourg, SARL v. Home Expressions Inc., the US Court of Appeals for the Federal Circuit ruled that a design patent’s claim language—reciting the “ornamental design for a pattern for a chair”—may limit the patent’s scope even though the patent figures depicted the claimed pattern design disembodied from any article of manufacture, as shown below.[7]

In so holding, the Federal Circuit found 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.”[8]

Based on this jurisprudence, the USPTO has required computer-generated icons to satisfy three criteria: (1) they must be embodied in a computer screen, monitor, other display panel, or portion thereof; (2) they must be more than a mere picture on a screen; and (3) they must be integral to the operation of the computer displaying the design.[9] Because digital designs not applied to or embodied in a physical article may not satisfy this criteria, some stakeholders have called for the USPTO to revise its guidelines to keep up with and accommodate new technologies that display designs outside a physical screen (e.g., projections, holographic imagery, and virtual/augmented reality).

Indeed, several jurisdictions have already updated their laws and practices to accommodate these new technologies. The European Union, for example, broadly defines products to include disembodied digital designs, such as graphical symbols and typographic typefaces, but excluding computer programs. As another example, Singapore no longer requires applicants to tie their designs to a physical article; patent eligibility now extends to graphical user interface (GUI) designs for a “non-physical product.”[10] Likewise, Japan broadened design protection eligibility to capture digital images that are not displayed on a tangible article, including those appearing on a computer network or through virtual or augmented reality.[11] And the World Intellectual Property Organization (WIPO) recently observed that 67% of member jurisdictions do not require a GUI/icon design to be “linked” to an article as a prerequisite for registration.[12]

WIPO Treatment of Digital Designs Per Se

Infographic - Datasource Item: IP-LF-Pie-Chart
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Notably, in every jurisdiction where no link between a GUI/icon design and an article is required, that jurisdiction has also extended design patent protection to GUI/icon designs per se—that is, digital designs represented alone, without any article such as a screen or a device.[13]

TOPICS FOR PUBLIC COMMENT

While the public may submit comments on any topics related to the article of manufacture requirement, the USPTO is particularly interested in responses to the following six questions:

1. Please identify the types of designs associated with new and emerging technologies that are not currently eligible for design patent protection but that you believe should be eligible. For these types of designs, please explain why these designs should be eligible, how these designs satisfy the requirements of Section 171, and how these designs differ from a mere picture or abstract design. In addition, if you believe that these types of designs should be eligible, but a statutory change is necessary, please explain the basis for that view.
2. If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is integral to the operation of a device (e.g., a virtual keyboard that provides input to a computer), is this sufficient to render the design eligible under Section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of Section 171, please explain the basis for that view.
3. If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is interactive with a user or device (e.g., a hologram moves according to a person’s movement), is this sufficient to render a design eligible under Section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of Section 171, please explain the basis for that view.
4. If the projection, holographic imagery, or image appearing through virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is projected onto a surface or into a medium (including air) and is not otherwise integral to the operation of a device or interactive with a user or device (e.g., is a static image), is this sufficient to render a design eligible under Section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of Section 171, please explain the basis for that view.
5. Do you support a change in interpretation of the article of manufacture requirement in 35 U.S.C. 171? If so, please explain the changes you propose and your reasons for those proposed changes. If not, please explain why you do not support a change in interpretation.
6. Please provide any additional comments you may have in relation to Section 171, interpretation or application of Section 171, or industrial design rights in digital and new and emerging technologies.

Like other requests for public comment, the tenor and substance of these questions does not indicate that the USPTO has taken any particular views, positions, or actions.

RESOURCES TO HELP RESPOND TO REQUEST FOR PUBLIC COMMENT

The February 4, 2021 deadline for comments is fast approaching. If you have any questions or would like Morgan Lewis to help you prepare a response to the USPTO, please contact the author, John L. Hemmer (Philadelphia), or any of the following lawyers from Morgan Lewis’s intellectual property team:

Chicago
Scott D. Sherwin
Jason C. White

Philadelphia
Louis W. Beardell, Jr.
Kenneth J. Davis

San Francisco
Brent A. Hawkins
Brett A. Lovejoy, Ph.D.

Silicon Valley
Dion M. Bregman
Michael J. Lyons