Computer-generated icons or electronic icons in patent drawings must be shown when applied to a finished article. The title must identify the finished article to which the electronic icon is applied.
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. 171.1
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 171.4
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 1.152.6
b. Review the title to determine whether it clearly describes the claimed subject matter.7 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.8
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,9 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.
Comments