US Patent Office modernizes design patent examination for computer-generated designs

For more than 30 years, the United States has granted design protection for computer-generated designs such as graphical user interfaces and icons. These designs have traditionally been deemed a “surface ornamentation” design on a “display screen,” which serves as the requisite “article of manufacture” under 35 U.S.C. §171(a). MPEP § 1504.01(a).I.A. But the US Patent and Trademark Office’s (USPTO) guidance to examiners for computer-generated designs has shifted over time. Recent guidance clarifies disclosure requirements to account for emerging technologies, removing the specific requirement for a display screen, making clear that projections, holograms, and virtual and augmented reality (“PHVAR”) designs, which may not have a fixed display screen, are patentable subject matter. The guidance also provides helpful examples to practitioners.

Evolution of US Patent Office guidance

Early guidance from the 1990s was heavily influenced by Ex parte Strijland, a case establishing that “computer-generated icons are patent eligible . . . so long as the specification demonstrates, including specifically through drawings, the design applied to an article.” See 26 USPQ 2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Applicants were thus required to depict computer-generated designs on a display screen or similar device in the drawings, usually using a “broken line” encompassing the design to illustrate the unclaimed boundary of the display screen.

The 2020 guidance, however, marked a transitional phase, incorporating modern case law and expanding the interpretation of “article of manufacture.” For example, the guidance enforces that “a design for a computer-generated icon be… [e]mbodied in a computer screen, monitor… or portion thereof.” Federal Register, Notices, 85 Fed. Reg. 82,347 (Dec. 21, 2020). It also introduced broader discussions about the future of digital design protection, including the challenges posed by emerging technologies (e.g., AR/VR, projected displays, holograms, etc.), and asked for comments from the public, but did not provide any guidance.

By 2023, the USPTO shifted toward a more restrictive approach to the article of manufacture requirement, instructing examiners to require that the “drawing(s) fully discloses the design as embodied in the article of manufacture.” Federal Register, Notices, 88 Fed. Reg. 79,123 (Nov. 17, 2023). This guidance reaffirmed the requirement to depict of at least a portion of a traditional display screen or monitor, which arguably excluded from patent protection computer-generated images, such as holograms, that may not make use of those traditional types of display screens.

The 2026 guidance relaxes the USPTO approach to the disclosure requirements for graphical user interfaces (GUIs), icons, and other digital designs. While the statutory requirement remains unchanged, requiring a design to be applied to an “article of manufacture” (e.g., a computer), the guidance eliminates the USPTO requirement that a display screen be shown in the drawings, provided that both the title and claim identify the article of manufacture. The guidance also explicitly shows PHVAR images, such as a projected keyboard, as example patentable subject matter and provides detailed guidance to practitioners preparing these types of applications.

Comparison of US and global approaches

US design patent law is progressing more cautiously and incrementally than its international counterparts with respect to emerging technologies. The US remains one of the more restrictive jurisdictions due to its continued reliance on the statutory “article of manufacture” requirement. In contrast, other jurisdictions have adopted more flexible approaches. 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.” Federal Register, Notices, 85 Fed. Reg. 82,347 (Dec. 21, 2020). Likewise, “Japan modified its law to broaden the scope of subject matter for design protection to include… graphic designs viewed or provided through a computer network and projected images.” Id. As a result, applicants seeking global protection may consider adopting different strategies tailored to the jurisdiction, or filing a single application meeting the more restrictive article of manufacture requirements worldwide. Looking ahead, US law may gradually move toward greater alignment with these international approaches, but any meaningful expansion, particularly to encompass purely digital or non-physical designs, may require a modification of the governing statute, suggesting that change will remain incremental rather than immediate.

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