Digital designs and the “article of manufacture” requirement
The advancement of technology and the related environments in which designs are used—such as computer-generated icons that are integral to the operation of a computer system—has challenged U.S. design patent law in relation to its ability to provide protection for designs in digital and new technology environments. In particular, new designs in the digital economy in the forms of projections, holograms, and virtual and augmented reality (PHVAR), are presenting new challenges and considerations for industrial design protection systems across the globe. Several jurisdictions have recently amended or are now actively considering amendments to their industrial design protection laws and practice to take these advancements in technology into account and to provide more effective protection for these designs.
On December 21, 2020, the United States Patent and Trademark Office (USPTO) published a Federal Register Notice seeking public input on whether the USPTO’s interpretation of the “article of manufacture” requirement in the United States Code should be revised to protect digital designs that encompass new and emerging technologies. Comments received in response to this notice are available on Regulations.gov. A report summarizing the responses was published by the USPTO in April 2022.
Additionally, the USPTO, working with the World Intellectual Property Organization (WIPO) and the Industrial Design Forum (ID5), leads efforts to adapt global practices to accommodate these new technologies and to communicate with stakeholders about U.S. practices. Recent activities and reports include:
- USPTO report: Summary of public views on the article of manufacture requirement of 35 U.S.C. § 171 (April 2022)
- USPTO event: International forum on protection of industrial designs (February 2021)
- ID5 project report: Study of practices on protection of new technological designs (November 2016)
- WIPO report: Analysis of the returns to the second questionnaire on graphical user interface (GUI), icon, and typeface/type font designs (March 2021)
- WIPO report: Summary of the main points emerging from the information session on graphical user interface (GUI), icon and typeface/type font designs (February 2018)
- WIPO report: Analysis of the returns to the questionnaire on graphical user interface (GUI), icon and typeface/type font designs (January 2017)
In 2023, the USPTO and the U.S. Copyright Office undertook a joint study to consider intellectual property (IP) law and policy issues associated with non-fungible tokens (NFTs). This was preceded by a related Federal Register Notice and three public roundtables on NFTs and patents, trademarks, and copyright. For details, see the joint study on intellectual property rights and non-fungible tokens webpage.