USPTO Updates Guidelines Regarding Computer-Generated Images and Compliance under 35 U.S.C. § 171
In the ever-evolving world of technology, the United States Patent and Trademark Office (USPTO) has clarified the landscape of design patent applications and patentability. Let's delve into what this means for the industry.
Understanding the Scope:
The guidance primarily addresses the examination of design patents involving digital creations like computer-generated icons and GUIs. It responds to the need for clear directives in a domain where technology and creativity intersect uniquely.
Key Aspects of the Guidance:
Article of Manufacture Requisite: A pivotal point in the guidance is the emphasis on the design being applied to or embodied in an article of manufacture, such as a device screen, in order to qualify for a patent.
Statutory Subject Matter Compliance: The document guides examiners on ensuring that digital design patents comply with the statutory requirements under 35 U.S.C. 171.
Non-Substantive Rulemaking: This guidance doesn't enact new rules but seeks to align the examination process with existing USPTO policies.
Specifics for Icons and GUIs: The guidance provides detailed instructions for evaluating designs of computer icons and GUIs. A key takeaway is that these designs are patentable if they are integral to a functional computer program. Click here for more information about the specifics for Icons and GUIs.
Dealing with Rejections and Amendments: A crucial aspect of the guidance is the procedure for handling rejections and suggesting amendments. The USPTO personnel are instructed to review claims closely and propose adjustments to align with statutory requirements. For instance, a design claim for a “computer display screen with an animated icon” would be acceptable if it demonstrates integral functionality within a computer program.
Michael Jones is the managing member at Jones Intellectual Property. His practice specializes in all aspects of intellectual property, including patent, trademark, and copyright law. He can be reached at mjones@jonesipl.com.
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