The United States Patent and Trademark Office (USPTO) has published supplemental guidance for USPTO personnel to use in determining whether a design claim including a computer-generated electronic image is directed to statutory subject matter. This guidance reflects current USPTO practice and supplements the guidance provided in section 1504.01(a), subsection (I) of the Manual of Patent Examining Procedure (MPEP) (9th ed., Rev. 07.2022, February 2023).
Importantly, the guidance explains “that the 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) shown on a display panel does not constitute statutory subject matter under 35 U.S.C. 171. However, the USPTO considers a computer icon or a GUI shown 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., embodied 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 embodied in the article of manufacture).”
The guidance then emphasizes that USPTO personnel must consider the disclosure when evaluating whether the claimed design complies with the article of manufacture requirement. The guidance describes specific disclosures USPTO personnel should look for when reviewing the title and claim and when reviewing the drawings.
The guidance concludes with five example disclosures. The guidance states whether each disclosure is acceptable or if it should be rejected and/or objected.
A copy of the guidance is available in the Federal Register here.