[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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