The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on December 21, 2020, requesting comments from the public related to the “article of manufacture” requirement for design patent eligibility appearing in Title 35, United States Code, Section 171. In particular, the USPTO asked whether the article of manufacture requirement should be revised to encompass “disembodied” designs made perceptible by new and emerging technologies. The comment period closed on February 04, 2021, with a total of 19 public comments received.
Design patent law covers all manner of manufactured products, and the law as written includes the language “for an article of manufacture.” Decades ago, the USPTO reasoned that designs embedded in software were eligible for design patent protection, so long as those designs appear on a display screen and relate to the operation of software. As technology has continued to advance, many designs are being created that are holographic or otherwise projected from a device, without appearing on the device itself. With these technological advances, the USPTO has stated that some confusion has arisen around whether such designs are eligible for design patent protection under the law and current USPTO requirements.
Topics for Comment
There are six topics for which the USPTO requested comments. First, the USPTO broadly requested the public to identify designs associated with any new and emerging technologies that are not currently eligible for design patent protection under §171. The second through fourth topics focused on the eligibility under current guidelines related to design patent eligibility for designs that are not displayed on a computer screen but are integral to the operation of a device, interactive with a user or device, or projected on a surface. On the fifth topic, the USPTO requested whether there is support for changing the interpretation of “article of manufacture” under §171. Finally, the sixth topic included a request for any additional comments related to §171 or industrial design rights in digital and new and emerging technologies. The tenor and substance of the USPTO topics did not indicate that the USPTO has taken any particular views, positions, or actions with respect to the various topics for which comments were requested.
Multiple organizations and groups submitted comments, with the strong majority—including all major IP stakeholder organizations—taking the position that the “article of manufacture” eligibility requirement may be satisfied even if a design is holographic or otherwise projected from a physical device. The collected comments are available here, including submissions from premier IP organizations like the International Trademark Association (INTA) and the American Intellectual Property Law Association (AIPLA).
The comments from both INTA and AIPLA submit that digital images should be eligible for design patent protection without the need for illustration of a display panel, and without any need to change the language of §171. Instead, they argued that the language of §171 has historically been interpreted broadly to provide protection for “projected” designs, citing to the Federal Circuit precedent of In re Hruby in which a pattern of emitted water droplets was deemed eligible as a design for a fountain. Further, both AIPLA and INTA called attention to the USPTO’s treatment of digital typesets and fonts, which are patent eligible as two-dimensional designs without any need to show an underlying device.
While a few dissenting viewpoints were presented, the consensus among the various commenting entities that include design patent owners and design patent practitioners as their members is that no additional conditions or requirements should be necessary for projected, holographic, and virtual or augmented designs to be considered patent eligible under §171, and that the present legal framework is more than adequate to allow for the protection of designs created by advancements of technology.
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