3510-16
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 950921236-6049-03]
RIN 0651-XX04
Guidelines for Examination of Design Patent
Applications For Computer-Generated Icons
AGENCY: Patent and Trademark Office, Commerce
ACTION: Notice
SUMMARY: The Patent and Trademark Office (PTO) is publishing the final version of
guidelines to be used by Office personnel in their review of design patent applications for
computer-generated icons. Because these guidelines govern internal practices, they are exempt
from notice and comment rulemaking under 5 U.S.C. 553(b)(A).
EFFECTIVE DATE: [Insert date 30 days after publication in the FEDERAL REGISTER].
FOR FURTHER INFORMATION CONTACT: John Kittle by telephone at (703) 308-1495,
by telefax at (703) 305-3600, by electronic mail through the INTERNET to "icon-pat@uspto.gov,"
or by mail addressed to the Assistant Commissioner for Patents, Washington,
D.C. 20231, Attn: John Kittle, Director, Group 1100/2900, Crystal Plaza 3, 8D19.
SUPPLEMENTARY INFORMATION:
I. Discussion of Public Comments
Comments were received by the PTO from eleven different individuals in response to the
request for comments on the interim guidelines for examination of design patent applications for
computer-generated icons published October 5, 1995 (60 FR 52170). All comments have been
carefully considered.
Two comments suggested the adoption of the interim guidelines as proposed. However, a
number of changes have been made to the interim guidelines in response to the other comments.
One comment suggested that computer-generated icons are not "ornamental" designs
within the meaning of 35 U.S.C. 171 because they are dictated by purely functional
considerations. These guidelines do not address the procedures to be used by PTO personnel in
assessing design ornamentality. Compliance with the ornamentality requirement of 35 U.S.C. 171
will be addressed on a case-by-case basis pursuant to prevailing laws, rules, and regulations. In
this regard, prevailing case law, such as Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853
F.2d 1557, 1563 (Fed. Cir. 1988), indicates that a distinction exists between the functionality of
an article and the functionality of the design of the article that performs the function. Based on
this distinction, the design of a computer-generated icon may not be dictated by the function
associated with the computer-generated icon.
Many of the comments suggested that the PTO delete the requirement for a solid line
depiction of the article of manufacture on the ground that it is not legally required. The PTO has
adopted this suggestion. The final guidelines simply require a depiction of an article of
manufacture in either solid or broken lines.
Two comments suggested that the PTO delete any requirement to depict an article of
manufacture on the ground that indication of an article of manufacture in the title should be
sufficient. This suggestion was not adopted. The depiction of an article of manufacture is
necessary to ensure that any design patent covers more than mere abstract, two-dimensional,
surface ornamentation.
One comment suggested that the language in the guidelines be amended to clarify that the
guidelines satisfy the "design for an article of manufacture" requirement of 35 U.S.C. 171. This
suggestion has not been followed. Computer-generated icons are designs within the meaning of
35 U.S.C. 171, but must be embodied in an article of manufacture to satisfy the statute. These
guidelines are directed to determining whether the icon is embodied in an article of manufacture,
not whether it is a design.
One comment suggested that the guidelines be amended to clarify that the drawing must
contain a sufficient number of views to constitute a complete disclosure of the appearance of the
article as required by 37 CFR 1.152. This suggestion was based on the language in the interim
guidelines that a computer-generated icon may be embodied in a portion of computer screen,
monitor, or other display panel. This suggestion has been adopted. See footnote 6.
One comment suggested that the interim guidelines be modified to require the depiction of
a central processing unit (CPU). This suggestion has not been adopted. The dependence of a
computer-generated icon on a CPU for its existence is not a reason for requiring depiction of a
CPU.
One comment suggested deleting the rejection under 35 U.S.C. 112, second paragraph for
failure to depict the article of manufacture in solid lines. This suggestion has been adopted.
Compliance with 35 U.S.C. 112, second paragraph, will be addressed on a case-by-case basis
under the usual laws, rules, and regulations applied to such questions.
One comment suggested that the guidelines include a statement that a portion of a
computer screen can be represented by a breakout of a screen portion without screen borders, and
some shade lines adjacent to the icon in the breakout portion to indicate a glass surface. The
suggestion for a statement regarding a breakout portion was not specifically adopted. However,
a statement was added to footnote 6 indicating that the design drawing must meet the
requirements of 37 CFR 1.84 which provides for exploded, partial, and sectional views.
One comment suggested that the guidelines include a statement that the characteristic
feature statement can be an appropriate invention title and that the title could be repeated as the
characteristic feature statement. This suggestion has not been adopted. The characteristic feature
statement should describe a particular feature of the design that is considered a feature of novelty
or non-obviousness over the prior art. The guidelines already suggest appropriate titles.
One comment suggested that some other form of intellectual property protection would be
a more appropriate method of protecting rights in computer-generated icons. The availability of
other forms of protection is not grounds for denying design patent protection to computer-generated icons
which meet the requirements of section 171.
One comment suggested that the interim guidelines may be construed as substantive
rulemaking. The final guidelines have been amended to indicate that they govern the internal
operations of the PTO. The guidelines have been developed to assist PTO personnel in their
review of design patent applications covering computer-generated icons for compliance with the
"article of manufacture" requirement of 35 U.S.C. 171.
II. Guidelines for Examination of Design Patent
Applications for Computer-Generated Icons
The following guidelines have been developed to assist PTO personnel in determining
whether design patent applications for computer-generated icons comply with the "article of
manufacture" requirement of 35 U.S.C. 171.
A. General Principle Governing Compliance with
the "Article of Manufacture" Requirement
The PTO considers designs for computer-generated icons embodied 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 shown on a computer screen, monitor,
other display panel, or a portion thereof, the claim complies with the "article of manufacture"
requirement of section 171.
B. Procedures for Evaluating Whether Design Patent
Applications Drawn to Computer-Generated Icons
Comply With the "Article of Manufacture" Requirement
PTO personnel shall adhere to the following procedures when reviewing design patent
applications drawn to computer-generated icons for compliance with the "article of manufacture"
requirement of section 171.
1. Read the entire disclosure to determine what the applicant claims as the design
and to determine whether the design is embodied in an article of manufacture. 37 CFR 1.71 and
1.152-54.
a. Review the drawing to determine whether a computer screen, monitor,
other display panel, or portion thereof, is shown. 37 CFR 1.152.
b. Review the title to determine whether it clearly describes the claimed
subject matter. 37 CFR 1.153.
c. Review the specification to determine whether a characteristic feature
statement is present. 37 CFR 1.71. If a characteristic feature statement is present, determine
whether it describes the claimed subject matter as a computer-generated icon embodied in a
computer screen, monitor, other display panel, or portion thereof.
2. If the drawing does not depict a computer-generated icon embodied in a computer
screen, monitor, other display panel, or a portion thereof, in either solid or broken lines, reject the
claimed design under section 171 for failing to comply with the article of manufacture
requirement.
a. If the disclosure as a whole does not suggest or describe the claimed
subject matter as a computer-generated icon embodied in a computer screen, monitor, other
display panel, or portion thereof, indicate that: (i) the claim is fatally defective under section 171;
and (ii) amendments to the written description, drawings and/or claim attempting to overcome the
rejection will not be entered because they would lack a written descriptive basis under 35
U.S.C. 112, first paragraph, and would constitute new matter under 35 U.S.C. 132.
b. If the disclosure as a whole suggests or describes the claimed subject
matter as a computer-generated icon embodied in a computer screen, monitor, other display
panel, or portion thereof, indicate that the drawing may be amended to overcome the rejection
under section 171. Suggest amendments which would bring the claim into compliance with
section 171.
3. Indicate all objections to the disclosure for failure to comply with the formal
requirements of the Rules of Practice in Patent Cases. 37 CFR 1.71, 1.81-85, and 1.152-154.
Suggest amendments which would bring the disclosure into compliance with the formal
requirements of the Rules of Practice in Patent Cases.
4. Upon response by applicant:
a. Approve entry of any amendments which have support in the original
disclosure; and
b. Review all arguments and the entire record, including any amendments, to
determine whether the drawing, title, and specification clearly disclose a
computer-generated icon embodied in a computer screen, monitor, other
display panel, or portion thereof.
5. If, by a preponderance of the evidence, the applicant has established that the
computer-generated icon is embodied in a computer screen, monitor, other display panel, or
portion thereof, withdraw the rejection under section 171.
III. Effect of the Guidelines on Pending Design
Applications Drawn to Computer-Generated Icons
PTO personnel shall follow the procedures set forth in this Notice when examining design
patent applications for computer-generated icons pending in the PTO as of the effective date of
these Guidelines.
IV. Treatment of Type Fonts
Traditionally, type fonts have been generated by solid blocks from which each letter or
symbol was produced. Consequently, the PTO has historically granted design patents drawn to
type fonts. PTO personnel should not reject claims for type fonts under Section 171 for failure to
comply with the "article of manufacture" requirement on the basis that more modern methods of
typesetting, including computer-generation, do not require solid printing blocks.
V. Notes
Dated: , 1996
Bruce A. Lehman,
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks