The Patent and Trademark Office recently published "Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces" in the Federal Register (PTO-P-2023-0047).
There, the Patent Office confirmed that both a graphical user interface (GUI) and a computer-generated icon can be covered by design patents. Design patents protect "new, original and ornamental designs for an article of manufacture." 35 U.S.C., Section 171. Protected ornamental designs can include at least three kinds of designs:
- a design for an ornament, impression, print, or picture that is applied to or embodied in an article of manufacture (surface indicia)
- a design for the shape or configuration of an article of manufacture
- a combination of the first two categories
A U.S. design patent gives the owner the right to exclude others from using a design that infringes the design patent. Remedies include injunctive relief, an award of the design patent owner's damages, an award of the infringer's profits and an award of the design patent owner's attorneys' fees and costs incurred in litigation of the infringement issue. The available remedies give a design patent owner significant leverage to stop infringers.
According to the Patent Office, if properly presented and claimed, a display panel with a computer icon or a GUI—as an integral and active component in the operation of a programmed computer displaying the design—constitutes patentable subject matter. For example, the computer display screen with icon shown below is patentable.
Similarly, the GUI shown below is covered by a patent:
These are patentable, according to the PTO, because:
"(1) the USPTO considers a computer icon or a GUI on a display panel to be an integral and active component in the operation of a programmed computer displaying the design and more than a displayed picture; and
(2) the application fully discloses the design as embodied in an article of manufacture, as the drawing depicts the design embodied in a computer screen in broken lines."
We recommend that our clients who have developed novel computer icons or GUIs seek our advice as to whether a design patent application should be filed. In this regard, it is important to know that there are statutory deadlines for filing design patent applications. For this reason, we suggest consulting one of our patent attorneys as soon as possible; ideally before the design is used.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
