Recently published guidance from the US Patent and Trademark Office (USPTO) on November 16 sheds light on the patentability of design claims that encompass computer-generated electronic images. The revised guidelines strive to provide clear directives as to when a design patent claim that includes a computer-generated electronic image per se, or such an image displayed on a display panel, fulfills the criteria specified in 35 U.S.C. 171.
The new directives are expected to address concerns arising from the rapid advancements in technology, particularly in the field of projections, holograms, and virtual and augmented reality (PHVAR) designs. The arrival of these revised guidelines has been greeted with positive responses from various industry sectors, as many assert the increasingly urgent need for these updated policies.
Progress in technology has greatly boosted the popularity of design patents, with the count of design applications increasing from approximately 15,000 in 1995 to 47,500 in 2019. Given this surge in design patent applications, the USPTO firmly maintains the need for lucid and current guidelines to manage this growth.
However, challenges ensue when attempting to discern what exactly constitutes an article of manufacture within the sphere of digital designs that “encompass new and emerging technologies”. The USPTO faced pressing calls to clarify their guidelines towards these emerging technologies in an attempt to harmonize US design protection with international patent practices. Regional court systems such as Germany—where a computer program is not deemed a product—were suggested as a possible model.
The updated guidance stipulates that design patents will only be granted for a design “applied to an article of manufacture, and not a design per se.” Therefore, “a picture standing alone is not patentable.” For a design claim to be patentable, a computer-generated image or icon displayed on a panel must not simply be a static image, but an integral and active component of a programmed computer.
Helpfully, the USPTO also provides explicit examples of claim language and titles, which attorneys may find useful in drafting future patent applications. In all instances, the updated USPTO directives emphasize that the computer icon must actively contribute to the operation of a computer or other display device to satisfy the article of manufacture requirement.
This information was written by Trevor K. Copeland, co-chair of Crowell & Moring’s patents practice group, and April Barnard, a patent agent at Crowell & Moring.
More details can be found in the full article.