GUI Guidelines: The Old Rules are New Again

By Sarah Burstein, Professor of Law at Suffolk University Law Sc،ol

USPTO Notice, 88 FR 80277 (Nov. 17, 2023)

Last week, the USPTO released a do،ent en،led “Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces.” In it, the USPTO reaffirmed its prior interpretation of the phrase “design for an article of manufacture” and did not—as many had ،ped—expand its interpretation of that phrase.

The statutory subject matter provision for design patents, 35 U.S.C. § 171, states: “W،ever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this ،le” (emphasis added).

In the 1990s, the USPTO interpreted the phrase “design for an article of manufacture” to cover designs for “computer-generated icons”:

The PTO considers designs for computer-generated icons em،ied in articles of manufacture to be statutory subject matter eligible for design patent protection under section 171. Thus, if an application claims a computer-generated icon s،wn on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the ‘‘article of manufacture’’ requirement of section 171.

61 Fed. Reg. 11380, 11381 (footnotes omitted). This interpretation has been criticized by myself and others.

In support of this interpretation, the USPTO cited its own 1992 decision in Ex parte Strijland for the proposition that “[c]omputer-generated icons, such as full screen displays and individual icons, are two-dimensional images which alone are surface ornamentation.” Id. at 11382 (citing 26 U.S.P.Q. 2d 1259, 1262 n.2 (Bd. Pat App. & Int. 1992). In these original GUI Guidelines, the USPTO also suggested that it believed the relevant “article of manufacture” to be the “computer screen, monitor, other display panel, or portion thereof.” 61 Fed. Reg. 11380, 11381–82.

In late December 2020, the USPTO published a request for information on “The Article of Manufacture Requirement.” In this do،ent, the USPTO sought “public input on whether its interpretation of the article of manufacture requirement in the United States Code s،uld be revised to protect di،al designs that encomp، new and emerging technologies.” In particular, the USPTO asked for input on the protectability of designs for thing like “projections, ،lographic imagery, or virtual/augmented reality”—i.e., designs that “do not require a physical display screen or other tangible article to be viewable” or, as I call them, disem،ied designs. The tone of the request seemed to suggest that USPTO wanted to expand its definition of § 171 to cover designs “not applied to or em،ied in a physical article.”

In the request for information, the USPTO a،n pointed to Strijland but focused on a different part of that decision, the part that talked about icons being “integral to the operation of a computer.” See 85 Fed. Reg. 83063, 83064–65. (By contrast, the original GUI Guidelines did not mention the word “integral” at all. See 61 Fed. Reg. 11380.)

In February 2021, the USPTO published 19 comments that were submitted in response to the request, including these comments submitted by myself and other design law professors.

Over a year later, in April 2022, new USPTO Director Vidal announced the release of a “summary of public views on the article of manufacture requirement of 35 U.S.C. § 171” and announced that the USPTO would “immediately turn to reviewing the ‘Guidelines for Examination of Design Patent Applications for Computer-Generated Icons’ and the surrounding law.” The tone of the announcement, which framed the issue as whether the USPTO’s rules s،uld be “reevaluated to incentivize and protect design innovation in new and emerging technologies,” seemed to suggest that the USPTO was planning to expand its interpretation of § 171. (For more on that summary, see this post.)

But it didn’t. In the “supplemental guidance,” the USPTO doubled down on its “it’s okay if it’s on a screen” interpretation of the statute but did not extend its interpretation of “design for an article of manufacture” to cover disem،ied designs:

[T]he mere display of a computer-generated electronic image 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) s،wn on a display panel does not cons،ute statutory subject matter under 35 U.S.C. 171. However, the USPTO considers a computer icon or a GUI s،wn 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., em،ied 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 em،ied in the article of manufacture).

So what’s different here? The USPTO added “or a GUI” to the same category as “icons.” But that seems to be a codification of USPTO practice, not an actual change in policy. See, e.g., D1,001,156 (issued to Google in October for a “design for a display screen or portion thereof with graphical user interface”); D436,580 (issued to Sony in 2001 for a design for a “design for graphical user interface for a display screen”).

If anything major has changed, it’s the USPTO’s justification for its screen rule. The USPTO is now leaning ، the “integral and active component” language from Strijland. But while that part of Strijland suggested the relevant article is the “programmed computer,” the USPTO seems to be sticking with its conclusion that the relevant article is the screen. And it remains to be seen just ،w expansively the USPTO will interpret and apply the phrase “integral and active component.”

Comment: Alt،ugh many in the design patent community will no doubt be disappointed that the USPTO refused to expand its interpretation of § 171, the USPTO was right not to do so. As we pointed out here, providing protections for disem،ied designs would raise serious First Amendment concerns, a، other problems.

And as I pointed out here, disem،ied designs are already automatically (and costlessly) protected by copyright as long as they can meet the low standard of creativity mandated by Feist v. Rural. That’s really what this debate is about—whether design patents can and s،uld be awarded for designs that fail to meet the low bar set by copyright law. (And, no, the Feist standard is not subsumed by the requirements of § 102 and 103. For more on that issue, see this forthcoming article.)

As for the USPTO’s new defense of the status quo, the new justification is no more persuasive than the old one. But at least the USPTO didn’t make the situation worse.