To be directed to statutory subject matter, design applications for computer-generated electronic images must comply with the article of manufacture requirement of 35 U.S.C. 171.

I. GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED ELECTRONIC IMAGES

The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171.

A. General Principles Governing Compliance With the Article of Manufacture Requirement

As discussed in MPEP § 1504.01, a picture standing alone is not protectable by a design patent. Additionally, "[m]ere display of a picture on a screen is not significantly different … from the display of a picture on a piece of paper" and is not enough "to convert a picture into a design for an article of manufacture." Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Therefore, images merely displayed on a display panel (e.g., computer screen, monitor, computer display system, mobile phone screen, virtual reality/augmented reality goggles), or portion thereof are not considered eligible under 35 U.S.C. 171. However, the USPTO considers a computer icon or a graphical user interface (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).

Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). A patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. See MPEP § 1502. Thus, a computer icon or a GUI must be embodied in a display panel, or portion thereof, to satisfy 35 U.S.C. 171. Therefore, if properly presented and claimed, a display panel (or portion thereof) with a computer icon or a GUI constitutes statutory subject matter under 35 U.S.C. 171.

"We do not see that the dependence of the existence of a design on something outside itself is a reason for holding it is not a design ‘for an article of manufacture.’" See In re Hruby, 373 F.2d 997, 1001, 153 USPQ 61, 66 (CCPA 1967) (design of water fountain patentable design for an article of manufacture). The dependence of a computer icon or a GUI 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.

B. Procedures for Evaluating Whether Design Patent Applications Drawn to Computer-Generated Electronic Images Comply With the Article of Manufacture Requirement

USPTO personnel shall adhere to the following procedures when reviewing design patent applications drawn to computer-generated electronic images for compliance with the article of manufacture requirement of 35 U.S.C. 171.

The complete disclosure must be considered when evaluating a design claim that includes a computer-generated electronic image. 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:

1. (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. (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. (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). 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. (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 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 § 1504.01(c), subsection I).
   4. (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) or 37 CFR 1.1067(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 § 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 item (A)(1) above; see also item (C) and subsection I.C, example 2 below.
   5. (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.
2. (B) Review the specification to determine whether a characteristic feature statement is present. If a characteristic feature statement is present, determine whether it describes the claimed subject matter as a computer icon or a GUI embodied in a display panel, or portion thereof. See McGrady v. Aspenglas Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) (descriptive statement in design patent application narrows claim scope).
3. (C) 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). Since the claim must be in formal terms to the design "as shown, or as shown and described," the drawing provides the best description of the claim. 37 CFR 1.153 or 1.1025. USPTO personnel must also consider the following and, where appropriate, make the noted rejections.
   1. (1) If the drawing does not depict a computer icon or a GUI embodied in a display panel, or a portion thereof, in either solid or broken lines, reject the claimed design under 35 U.S.C. 171 for failing to comply with the article of manufacture requirement.
      1. (a) 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, indicate that:
         1. (i) The claim is fatally defective under 35 U.S.C. 171; and
         2. (ii) Amendments to the written description, drawings and/or claim attempting to overcome the 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 that affects the claim, the claim should be rejected under 35 U.S.C. 112(a).
      2. (b) 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. Suggest amendments that would bring the claim into compliance with 35 U.S.C. 171.
4. (D) Indicate all objections to the disclosure for failure to comply with the requirements of the Rules of Practice in Patent Cases. See e.g. 37 CFR 1.71, 1.81 -1.85, and 1.152 -1.154. Suggest amendments which would bring the disclosure into compliance with the requirements of the Rules of Practice in Patent Cases.
5. (E) Upon reply by applicant:
   1. (1) Enter any appropriate amendments; and
   2. (2) Review all arguments and the entire record, including any amendments, to determine whether the drawing, title, and specification clearly disclose a computer icon or a GUI embodied in a display panel, or a portion thereof.
6. (F) If, by a preponderance of the evidence (see In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)) ("After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument."), the applicant has established that the computer icon or a GUI is embodied in a display panel, or a portion thereof, withdraw the rejection under 35 U.S.C. 171.

C. Examples

The following examples are provided to assist USPTO personnel in determining whether design patent applications for computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171 and whether other objections are appropriate.

Example 1

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:

• 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

• 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) or 37 CFR 1.1067(a) because the title and claim adequately designate a particular article of manufacture (i.e., the computer display screen).

Example 2

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 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 subsection I.B above. In addition, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(a) for failing to designate a particular article of manufacture.

Example 3

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 subsection I.B above. In addition, the title and claim should be objected to under 37 CFR 1.153(a) or 37 CFR 1.1067(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 a mobile device screen

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 screen with a 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:

Example 4

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) or 37 CFR 1.1067(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:

• 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

• 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: lcon for computer Computer display screen with icon

Claim: The ornamental design for an icon for a computer display screen with icon as shown and described.

II. TREATMENT OF TYPE FONTS

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.

III. CHANGEABLE COMPUTER-GENERATED ELECTRONIC IMAGES

Computer-generated electronic images that change in appearance during viewing may be the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially, no ornamental aspects are attributed to the process or period in which one image changes into another. A descriptive statement must be included in the specification describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown. Examples of such a descriptive statement are as follows:

"The subject matter in this patent includes a process or period in which an image changes into another image. This process or period forms no part of the claimed design;" or

"The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. The process or period in which one image transitions to another image forms no part of the claimed design;" or

"The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. No ornamental aspects are associated with the process or period in which one image transitions to another image."

Example

The following example is provided to assist USPTO personnel in determining whether design patent applications for changeable computer-generated electronic images comply with the article of manufacture requirement of 35 U.S.C. 171 and whether other objections are appropriate.

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 animated image sequentially transitions between the images shown in Figs. 1-2. The process or period in 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) or 37 CFR 1.1067(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:

• 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

• 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 Aanimated 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.