AIPLA Submits Comments to USPTO Regarding the Article of Manufacture Requirement February 2, 2021

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On February 2, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the Article of Manufacture Requirement for Design Patents under 35 U.S.C. 171. The Notice was published in the Federal Register on December 21, 2020 under docket No. PTO-C-20200068 (85 Fed. Reg. 245), thanking the USPTO for undertaking this initiative and encouraging it to reconsider guidelines for protecting computer-generated designs.

The Notice states that “[t]he USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under section 171. For example, a claim for a computer-generated icon that is integral to the operation of a computer and that is shown on a computer screen, monitor, or other display panel complies with the article of manufacture. Because certain new and emerging technologies, such as projections, holographic imagery, or virtual/augmented reality to no require a physical display screen or other tangible article to be viewable, the USPTO is exploring whether its practice should be revised to protect such designs.”

In response, AIPLA indicated its support for a change in the interpretation of eligibility guidelines for computer-generated images to accept other articles of manufacture associated with the underlying programmed computer, instead of requiring that the image appear on a display screen.

The current USPTO guidance, requiring reference to a display screen in the drawings and title and claim language, is based on a non-precedential Board decision, Ex parte Strijland (26 U.S.P.Q. 2d 1259 (B.P.A.I. 1992), which indicated that an icon design which is integral to the operation of a programmed computer is applied to that article and therefore eligible. Despite the USPTO’s requirement of a display screen, Strijland indicates that the display screen is not dispositive of the design being more than a picture, but helps in understanding that the design is applied to a programmed computer. However, when a display screen does not exist, it can’t be helpful or reasonably be required to understand that the design is applied to a programmed computer, and instead, an Applicant should be able to identify another article associated with the display of the claimed image integral to the operation of a programmed computer.  A precedential Federal Circuit decision, In re Hruby, 373 F.2d 997 (C.C.P.A. 1967)  found that a design for a water fountain display was sufficiently applied to an article of manufacture and made no requirement that the design was integral to or interactive with the operation of the article. The comments also point out that the USPTO previously eliminate a requirement to illustrate a technologically obsolete article of manufacture for type faces as computer-generated image designs, and should do so again regarding the display screen requirement.

During the 25 years since the Guidelines for Examination of Design Patent Applications For Computer-Generated Icons were issued in 1996, technology and consumer experience with computer-generated image designs has progressed substantially. Consumers view and otherwise interact with computer-generated images on a daily basis, and the development of display technologies untethers computer-generated images from discrete, tangible display panels. To support innovation and the advancement of technology, AIPLA’s comments encourage the USPTO to amend its examination guidance to encompass computer-generated image designs displayed other than on a display screen, which should likewise be eligible for design patent protection when disclosed as being more than a mere picture on a screen by being displayed integral to the operation of a computer or a computer application.

19 comments were filed and 13 indicated support for a practice change, based on arguments and citations similar to those advanced by AIPLA. 

To read the full comments, please download the file.

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