Supplemental Guidance for Design Patent Applications Related to Computer-generated Images

The U.S. Patent and Trademark Office (USPTO) has published supplemental guidance for USPTO examiners to use in deciding whether a design application illustrating a computer-generated electronic image is directed to statutory subject matter. Specifically, the guidance clarifies when a design patent claim is to be considered a computer-generated electronic image per se that does not satisfy the article of manufacture requirement in 35 U.S.C. §171 and is not design patent eligible. In addition, the guidance clarifies when a computer-generated electronic image shown on a display panel, such as a computer monitor display, a mobile device display, a virtual reality head mounted display, and the like, does satisfy the article of manufacture requirement in 35 U.S.C. §171.

The guidance instructs that design patents are granted only for a design applied to an article of manufacture, but not a design per se. For example, a picture by itself is not eligible for a design patent. Therefore, the title and claim should not be for a computer icon or a graphical user interface (GUI) alone, but must be for an article of manufacture, e.g., a “display panel with computer icon.” The design claim should specify that the image on the display panel is not simply a displayed picture but an integral and active element in the function of a programmed computer displaying the image. The guidance instructs that a computer-generated electronic image shown on a display panel is simply a drawing of a picture displayed electronically and does not satisfy the article of manufacture requirement.

The guidelines provide helpful examples of claim language and titles that do and do not sufficiently illustrate a design for an article of manufacture.

Guidance Examples of “Don’ts”

Claim language that does not adequately describe a design eligible article of manufacture and will likely be objected, includes:   

•   “Display screen with virtual image”

•   “Virtual image for display on computer screen”

•   “Computer icon”

•   “Icon for computer screen”

Guidance Examples of “Do's”

Claim language that does sufficiently describe a design eligible article of manufacture under 35 U.S.C. §171, includes:

•   “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”

•   “Portion of a monitor displayed with an icon”

Practice Tips

The USPTO continues to permit unclaimed broken lines as the representation of the article of manufacture on which the claimed design is displayed. This is important because the specific article of manufacture might limit the scope of the computer generated image/design. The guidelines emphasize that the computer image must be an integral and active component in the operation of a computer or other display device to satisfy the article of manufacture requirement, and the title, claim, and drawing need to show that the image is integral with the computer or display device.

The guidelines include examples that practitioners should find helpful. The USPTO published additional and corrected examples in another supplemental notice. Practitioners should carefully review the examples for best practices.

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is a partner in Manatt’s Technology and Intellectual Property Litigation practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law. 

Supplemental Guidance for Examination of Design Patent Applications Related to Computer-generated Electronic Images, Including Computer-generated Icons and Graphical User Interfaces, 88 Fed. Reg. 80278 (November 17, 2023).

Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces, 89 Fed. Reg. 5506 (January 29, 2024).