[Federal Register Volume 85, Number 245 (Monday, December 21, 2020)]
[Notices]
[Pages 83063-83066]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-28110]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-C-2020-0068]


The Article of Manufacture Requirement

AGENCY: Patent and Trademark Office, Department of Commerce.

ACTION: Request for information.

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SUMMARY: The United States Patent and Trademark Office (USPTO) seeks 
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.

DATES: Comments must be received by 5 p.m. EST on February 4, 2021.

ADDRESSES: You may submit comments and responses to the questions below 
by one of the following methods:
    (a) Electronic Submissions: Comments can be submitted through the 
Federal eRulemaking Portal at www.regulations.gov. To submit comments 
via the portal, enter docket number PTO-C-2020-0068 on the home page 
and click ``search.'' The site will provide a search results page 
listing all documents associated with this docket. Find a reference to 
this notice and click on the ``Comment Now!'' icon, complete the 
required fields, and enter or attach your comments. Attachments to 
electronic comments will be accepted in ADOBE[supreg] portable document 
format 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.
    (b) Written/Paper Submissions: Send all written/paper submissions 
to: Mail Stop OPIA, United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22314, ATTN: Elizabeth Shaw. Submission packaging 
should clearly indicate that materials are responsive to Docket No. 
PTO-C-2020-0068, Office of Policy and International Affairs, Comment 
Request: Article of Manufacture Requirement of 35 U.S.C. 171. Although 
comments may be submitted by postal mail, electronic submissions are 
encouraged.
    Submissions of Business Confidential Information: Any submissions 
containing business confidential information must be delivered in a 
sealed envelope marked ``confidential treatment requested'' to the 
address listed above. Submitters should provide an index listing the 
document(s) or information that they would like the Department of 
Commerce to withhold. The index should include information such as 
numbers used to identify the relevant document(s) or information, 
document title and description, and relevant page numbers and/or 
section numbers within a document. Submitters should provide a 
statement explaining their grounds for objecting to the disclosure of 
the information to the public as well. The USPTO also requests that 
submitters of business confidential information include a non-
confidential version (either redacted or summarized) that will be 
available for public viewing and posted on https://www.regulations.gov. 
In the event that the submitter cannot provide a non-confidential 
version of its submission,

[[Page 83064]]

the USPTO requests that the submitter post a notice in the docket 
stating that it has provided the USPTO with business confidential 
information. Should a submitter either fail to docket a non-
confidential version of its submission or to post a notice that 
business confidential information has been provided, the USPTO will 
note the receipt of the submission on the docket with the submitter's 
organization or name (to the degree permitted by law) and the date of 
submission.

FOR FURTHER INFORMATION CONTACT: Elizabeth Shaw, USPTO, Office of 
Policy and International Affairs, at <a href="/cdn-cgi/l/email-protection#5f1a3336253e3d3a2b37710c373e286d1f2a2c2f2b3071383029"><span class="__cf_email__" data-cfemail="0a4f6663706b686f7e622459626b7d384a7f797a7e65246d657c">[email protected]</span></a> or 571-
272-9300. Please direct media inquiries to the USPTO's Office of the 
Chief Communications Officer at 571-272-8400.

SUPPLEMENTARY INFORMATION:

Background

    Section 171 of title 35 United States Code, provides that 
``[w]hoever invents any new, original and ornamental design for an 
article of manufacture may obtain a patent therefor'' (emphasis added). 
To satisfy the requirement that the design must be for an article of 
manufacture, applicants have been required to show the design as 
applied to or embodied in an article of manufacture.\1\
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    \1\ Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 
1334, 1337 (Fed. Cir. 2019) (confirming 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''); Manual of Patent Examining Procedure (MPEP) 1504.01.
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    The 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.\2\ For example, a claim for 
a computer-generated icon that is integral to the operation of the 
computer and that is shown on a computer screen, monitor, or other 
display panel complies with the article of manufacture requirement.\3\
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    \2\ MPEP 1504.01(a)(I)(A). Note that a computer-generated icon 
is considered to be integral to the operation of a computer. See Ex 
parte Strijland, 26 U.S.P.Q.2d 1259, *4-5 (B.P.A.I. 1992).
    \3\ MPEP 1504.01(a)(I)(A).
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    Because certain new and emerging technologies, such as projections, 
holographic imagery, or virtual/augmented reality do not 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 digital designs.
    Although current jurisprudence has not addressed whether a digital 
design not applied to or embodied in a physical article is eligible for 
design patent protection, the following section outlines current law 
and practice regarding the article of manufacture requirement.

35 U.S.C. 171--Patents for Designs

    The language ``new, original and ornamental design for an article 
of manufacture'' set forth in section 171 has been interpreted by the 
courts to include at least three kinds of designs:
    (A) A design for an ornament, impression, print, or picture applied 
to or embodied in an article of manufacture (surface indicia);
    (B) a design for the shape or configuration of an article of 
manufacture; and
    (C) a combination of the first two categories.\4\
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    \4\ Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429, 435 
n.3 (2016) (explaining the legislative history behind the ``article 
of manufacture'' requirement in section 171, ``[a]s originally 
enacted, the provision protected `any new and original design for a 
manufacture.' [sec] 3, 5 Stat. 544. The provision listed examples, 
including a design `worked into or worked on, or printed or painted 
or cast or otherwise fixed on, any article of manufacture' and a 
`shape or configuration of any article of manufacture.' Ibid. A 
streamlined version enacted in 1902 protected `any new, original, 
and ornamental design for an article of manufacture.' Ch. 783, 32 
Stat. 193. The Patent Act of 1952 retained that language. See [sec] 
171, 66 Stat. 813.''); In re Schnell, 46 F.2d 203, 209 (C.C.P.A. 
1931); MPEP 1504.01.
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    A patentable design ``gives a peculiar or distinctive appearance to 
the manufacture, or article to which it may be applied, or to which it 
gives form.'' \5\
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    \5\ Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429, 432 
(2016) (citing Gorham Co. v. White, 81 U.S. 511, 525 (1871)).
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Defining Article of Manufacture

    The 2016 decision by the Supreme Court in Samsung Electronics Co. 
v. Apple Inc. is instructive on the ``article of manufacture'' 
requirement of section 171.\6\ In that decision, the Court analyzed the 
term ``article of manufacture'' under 35 U.S.C. 289, a provision that 
provides additional remedy for infringement of a design patent. It 
found that the term ``article of manufacture'' has a broad meaning, and 
as used in section 289, encompasses both a product sold to a consumer 
and a component of that product.\7\ The Court found 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,'' and 
concluded that an ``article of manufacture'' is ``simply a thing made 
by hand or machine.'' \8\ Moreover, the Court confirmed that its 
definition of ``article of manufacture'' comported with 35 U.S.C. 171 
and 101, specifically noting that ```article of manufacture' in 
[section] 171 includes `what would be considered a ``manufacture'' 
within the meaning of [s]ection 101.' '' \9\
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    \6\ Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 
(2016).
    \7\ Id. at 436.
    \8\ Id. at 434-435 (for ``article,'' citing J. Stormonth, A 
Dictionary of the English Language 53 (1885) and American Heritage 
Dictionary, at 101 (``[a]n individual thing or element of a class; a 
particular object or item'')); id. at 435 (for ``manufacture,'' 
citing Stormonth, at 589 and American Heritage Dictionary, at 1070 
(``[t]he act, craft, or process of manufacturing products, 
especially on a large scale'' or ``[a] product that is 
manufactured'')).
    \9\ Id. at 435 (quoting 8 D. Chisum, Patents 23.03[2], pp. 23-12 
to 23-13 (2014)); see also In re Nuijten, 500 F.3d 1346, 1356 (Fed. 
Cir. 2007) (determining that the Supreme Court's ``definitions 
address `articles' of `manufacture' as being tangible articles or 
commodities,'' and thus concluding that ``[a] transient electric or 
electromagnetic transmission does not fit within that definition'' 
because during transmission, ``energy embodying the claimed signal 
is fleeting and is devoid of any semblance of permanence,'' and does 
not meet the definitions of ``articles'' of ``manufacture''). 
Indeed, the Nuijten court noted the Supreme Court had defined 
``manufacture'' in the context of utility patents as ``the 
production of articles for use from raw or prepared materials by 
giving to these materials new forms, qualities, properties, or 
combinations, whether by hand-labor or by machinery.'' 500 F.3d at 
1356 (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). 
Note that this definition is similar to the ones for ``article,'' 
``manufacture,'' and ``article of manufacture'' espoused by the 
Supreme Court in Samsung as applied to design patents.
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A Picture Alone Is Not Eligible for Design Patent Protection

    Historically, a picture standing alone is not patentable under 
section 171.\10\ The factor that distinguishes statutory design subject 
matter from a mere picture or ornamentation has been the embodiment of 
the design in an article of manufacture.\11\ For this reason, the USPTO 
has required that the design must be shown as applied to or embodied in 
an article of manufacture.\12\
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    \10\ Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 
1334, 1340 (2019) (quoting Gorham v. White, 81 U.S. 511, 524-25 
(1871) for this proposition). In Gorham, the Court discussed the 
reach of design protection as follows: ``The acts of Congress which 
authorize the grant of patents for designs were plainly intended to 
give encouragement to the decorative arts. They contemplate not so 
much utility as appearance, and that, not an abstract impression, or 
picture, but an aspect given to those objects mentioned in the 
acts'' 81 U.S. at 524-25 (emphasis added). See also MPEP 1504.01.
    \11\ MPEP 1504.01. see also Ex parte Strijland, 26 U.S.P.Q.2d 
1259, *4-5 (B.P.A.I. 1992).
    \12\ MPEP 1504.01. see also supra note 5; Samsung, 137 S. Ct. at 
435 (citing Application of Zahn, 617 F.2d 261, 268 (C.C.P.A. 1980) 
(``Section 171 authorizes patents on ornamental designs for articles 
of manufacture. While the design must be embodied in some articles, 
the statute is not limited to designs for complete articles, or 
`discrete' articles, and certainly not to articles separately sold . 
. . ''); Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 
1334, 1340 (2019) (affirming this principle by relying on In re 
Schnell, 46 F.2d 203, 209 (C.C.P.A. 1931) (``[I]t is the application 
of the design to an article of manufacture that Congress wishes to 
promote, and an applicant has not reduced his invention to practice 
and has been of little help to the art if he does not teach the 
manner of applying his design.''), and Ex Parte Cady, 232 O.G. 619, 
621-22 (Comm'r Pat. 1916) (``[a] disembodied design or a mere 
picture is not the subject of [design] patent'')).

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[[Page 83065]]

Guidelines for Computer-Generated Icons and Type Fonts

    In 1995, the USPTO introduced examination guidelines for design 
patent applications claiming computer-generated icons.\13\ These 
guidelines are based on the USPTO's understanding of the case law and 
the USPTO Appeal Board's decision in 1992 in Ex parte Strijland 
regarding a ``design for an information icon for the display screen of 
a programmed computer system.'' \14\ To be eligible for protection, the 
USPTO currently requires that a design for a computer-generated icon 
be: (1) Embodied in a computer screen, monitor, other display panel, or 
portion thereof; (2) more than a mere picture on a screen; and (3) 
integral to the operation of the computer displaying the design.\15\
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    \13\ MPEP 1504.01(a)(I).
    \14\ Ex parte Strijland, 26 U.S.P.Q.2d 1259 (B.P.A.I. 1992).
    \15\ MPEP 1504.01(a)(I)(A); Ex parte Strijland, 26 U.S.P.Q.2d 
1259, at *4-5 (B.P.A.I. 1992). Furthermore, section 1504.01(a)(I)(A) 
of the MPEP applies the holding in In re Hruby, 373 F.2d 997 
(C.C.P.A. 1967) to icons, noting that ``the dependence of a 
computer-generated icon on a central processing unit and computer 
program for its existence itself is not a reason for holding that 
the design is not for an article of manufacture.'' However, section 
1504.01(a)(IV) explains that computer-generated icons that include 
``images that change appearance during viewing'' may be eligible for 
design patent protection, but ``no ornamental aspects are attributed 
to the process or period in which one image changes into another.''
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    The guidance with respect to type fonts is different.\16\ Examiners 
are instructed not to reject claims for type fonts under section 171 
for failure to comply with the ``article of manufacture'' requirement 
on the basis that more modern methods of computer-generated fonts do 
not require physical printing blocks.\17\
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    \16\ MPEP 1504.01(a)(III).
    \17\ Id. Traditionally, type fonts have been generated by solid 
blocks from which each letter or symbol was produced. Consequently, 
the USPTO has historically granted design patents drawn to type 
fonts. USPTO personnel should not reject claims for type fonts under 
35 U.S.C. 171 for failure to comply with the ``article of 
manufacture'' requirement on the basis that more modern methods of 
typesetting, including computer generation, do not require solid 
printing blocks.
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Absence of Precedent Directly Addressing New Technologies

    Recent technological advances have allowed the development of 
designs that are not applied to or embodied in a physical product but 
can perform a utilitarian function, such as controlling electronic 
devices rather than just serving as merely a displayed picture. 
Examples include virtual laser keyboards used in receiving key strokes 
and hand movements as inputs and projected images for an automobile or 
for augmented and virtual reality applications. The USPTO is not aware 
of any judicial decision that addresses whether a claimed design that 
lacks a static ``physical form'' but is used as an integral part of the 
function of a digital product satisfies section 171.

Global Trends

    Other jurisdictions have updated their laws and practices to 
accommodate design protection for new technologies. For example, 
Singapore modified its law to eliminate a requirement that a design 
must be applied to a physical article in order to be protected. Its law 
now provides protection for both non-animated and animated graphical 
user interface (GUI) designs that are applied to an article or a ``non-
physical product.'' \18\ In defining a ``non-physical product,'' 
Singapore law recognizes ``anything that (a) does not have a physical 
form; (b) is produced by the projection of a design on a surface or 
into a medium (including air); and (c) has an intrinsic utilitarian 
function that is not merely to portray the appearance of the thing or 
to convey information.'' \19\ Likewise, Japan modified its law to 
broaden the scope of subject matter for design protection to include 
digital images that are not displayed on an article, such as graphic 
designs viewed or provided through a computer network and projected 
images,\20\ including images on screen, and images appearing through 
virtual and augmented reality.\21\
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    \18\ See Intellectual Property Office of Singapore, Practice 
Direction No. 4 of 2018 (June 20, 2018); cf. Intellectual Property 
Office of Singapore, Practice Direction No. 4 of 2014 (Dec. 10, 
2014).
    \19\ Id.
    \20\ See Ministry of Economy, Trade and Industry (METI), Cabinet 
Decision on the Bill for the Act of Partial Revision of the Patent 
Act (Mar. 1, 2019), https://www.meti.go.jp/english/press/2019/0301_003.html (last visited July 16, 2019).
    \21\ Id.
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    In addition, there have been discussions at the World Intellectual 
Property Organization (WIPO) about design protection for new 
technologies, and a summary of a WIPO questionnaire on the matter 
included the following observation:

    The majority of responding jurisdictions do not require a link 
between a GUI/icon design and an article as a prerequisite for 
registration. This is mainly because of the nature of new 
technological designs, which may be used in different articles/
environments. In most of these jurisdictions, the indication of an 
article is optional. In all of them, a patent design/design 
registration can be obtained for a GUI/icon design per se if it is 
represented alone. In most of them, the patent design/design 
registration covers the use of the claimed GUI/icon design in any 
article/environment.\22\
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    \22\ WIPO, Analysis of the Returns to the Second Questionnaire 
on Graphical User Interface (GUI), Icon and Typeface/Type Font 
Designs, SCT/43/2, Feb. 5, 2020, at 37, available at https://www.wipo.int/edocs/mdocs/sct/en/sct_43/sct_43_2.pdf.
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Topics for Public Comment

    The public is invited to submit comments on any topics related to 
35 U.S.C. 171 that they deem relevant. The USPTO is particularly 
interested in receiving views and comments on the questions presented 
below. The tenor and substance of the questions should not be taken as 
an indication that the USPTO is predisposed to any particular views, 
positions, or actions. The USPTO also invites the public to share their 
views and insights on other aspects of section 171 that are not 
addressed in the questions.
    To be eligible for patent protection, a design must comply with the 
``article of manufacture'' requirement of section 171. The USPTO has 
interpreted the jurisprudence to require that designs for computer-
generated icons meet the following 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. Some stakeholders have expressed that they are unable to obtain 
design protection for certain new and emerging technologies (e.g., 
projections, holographic imagery, and virtual/augmented reality) 
because they do not meet the current criteria.
    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

[[Page 83066]]

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.

Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2020-28110 Filed 12-18-20; 8:45 am]
BILLING CODE 3510-16-P


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