USPTO bulletin highlights evolving international approaches to design protection for graphical user interfaces.
USPTO Industrial Design IP Policy websites highlight areas of focus and collaboration.
Objective 1.1 of the USPTO 2022-2026 draft Strategic Plan released January 6, 2023, for comment is to "Enhance the United States role as a global innovation leader" with strategies to "work with federal partners to identify key technologies the United States should focus on and support innovation and IP protection in those areas" and to "Work to ensure money invested by the government and companies in U.S. innovation is safeguarded with IP protection."
The USPTO Office of IP Policy and Affairs recently published a bulletin noting developments in industrial design and practice in significant economies across the globe. It notes advances in protecting graphical user interface (GUI) designs in Canada, China, the EU, Israel, Japan, Korea and Singapore, and the U.S.
Design protection for graphical user interface designs is also known to exist in Argentina, Brazil, Colombia, Hong Kong, Jordan, Mexico, New Zealand, Norway, Panama, Russia, Singapore, South Korea, Switzerland, Taiwan, Turkey, and with some limitations, Australia, Chile, Malaysia, and Thailand.
The bulleting notes that the USPTO began exploring protection of digital designs when it led a WIPO study in 2016 with Japan, and introduced an updated proposal for a joint recommendation for protection of graphical user interface designs with WIPO in 2021.
In April of 2022, the USTPO published a Summary of Public Views on the Article of Manufacture Requirement under 35 U.S.C. 171, in response to its Comment Request regarding the Article of Manufacture Requirement (Docket No. PTO–C–2020–0068; Fed. Reg. Vol. 85, No. 245 (Dec. 21, 2020).
Of 19 comments received, 13 comments favor protecting computer-generated image designs without limitation to a display screen.. (See our full response to the notice here.)
Current USPTO guidelines consider computer-generated images to be subject matter eligible for design patent protection under 35 U.S.C. §171 when the computer-generated image is a graphical user interface or icon which is integral to the operation of a programmed computer and is shown on a computer screen, monitor or other display panel. (Guidelines for Examination of Design Patent Applications For Computer-Generated Icons (hereinafter “Guidelines”)(Docket No. 950921236-6049-03; Fed. Reg. Vol. 61, No. 55 (Mar. 20, 1996); See M.P.E.P. 1504.01(a).)
Display technologies are advancing quickly, mainstreaming projected, augmented and virtual reality and immersive displays of computer-generated images without a traditional screen, leaving the USTPO’s screen requirement outdated and unduly limiting. (Although these technologies might utilize a screen, panel or lens in displaying a computer-generated image, explicitly requiring the image to be shown on a screen is not necessarily consistent with how the user experiences the displayed design, not on a traditional screen.)
Moreover, the Board decision on which the Guidelines are based acknowledges that appearing on a screen is not what makes computer-generated designs eligible. See Ex parte Strijland, 26 U.S.P.Q. 2d 1259 (B.P.A.I. 1992)(“It 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.”).
The display screen requirement was apparently adopted as a proxy to convey that the computer-generated image is displayed integral to the operation of a programmed computer, the computer being the relevant article of manufacture for eligibility purposes under 35 U.S.C. 171, not the display screen. When a programmed computer no longer displays the computer-generated image on a display screen, the display screen is not a useful proxy, and should not be required. The USPTO previously jettisoned the outdated physical article for digital type designs and should do so now for graphical user interfaces and icons, eliminating the screen requirement. (See M.P.E.P. Section 1504.01(a)(III), Treatment of Type Fonts, which explains: “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.”)
The USPTO should proceed to adjust its examination guidelines to eliminate the screen requirement proxy to keep pace with IP protection in other leading jurisdictions which have recently updated their laws to protect computer-generated designs beyond screens.
USPTO Industrial Design Policy Websites
The USPTO informs the public of industrial design IP policy issues through two websites, illustrated and linked to the right. These website provide information about areas of focus and collaboration.
For more information about design patent protection for graphical user interface innovations and industrial design IP policy, contact the author below:
George Raynal, Principal
george.raynal@designlawgroup.com
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