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 presents a rare opportunity for the public to help guide the USPTO’s treatment of these emerging digital designs.
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.” 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. 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). 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.” 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.’”
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.
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.”
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. 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.” 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. 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.
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.
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:
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.
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 authors, John L. Hemmer (Philadelphia) and Ehsun Forghany (Silicon Valley), or any of the following lawyers from Morgan Lewis’s intellectual property team:
Scott D. Sherwin
Jason C. White
Louis W. Beardell, Jr.
Kenneth J. Davis
Brent A. Hawkins
Brett A. Lovejoy, Ph.D.
Dion M. Bregman
Michael J. Lyons
 USPTO, Request for Information: The Article of Manufacture Requirement, Docket No. PTO-C-2020-0068 (Dec. 18, 2021).
 “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor,” 35 U.S.C. § 171 (emphasis added).
 Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016).
 Id. at 436.
 Id. at 434-35 (for “article,” citing J. Stormonth, A Dictionary of the English Language 53 (1885), and American Heritage Dictionary 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”)).
 Id. at 435.
 Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019).
 MPEP 1504.01(a)(I)(A).
 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).
 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).
 WIPO, Analysis of the Returns to the Second Questionnaire on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, SCT/43/2, at 37 (Feb. 5, 2020).
 Id. at 18.