New USPTO Director Quickly Focuses on Much Needed Protection of Virtual Designs

“PHVAR designs are simply a new form of graphical user interface (GUI), just like screen-based GUI designs. A design for an interface is not a design per se, nor is it severed from an article of manufacture, the computer system that creates it.” U.S. Patent and Trademark Office’s (USPTO’s) new director wasted no time getting down to business in terms of protecting design innovation in the United States. Only two days after being sworn in, Director Kathi Vidal announced the release of the USPTO’s Summary of public views on the article of manufacture requirement of 35 U.S.C. § 171. This report summarized public comments received in response to a December 2020 request by the USPTO.

It is fitting to see the USPTO giving attention to protecting design innovation in new and emerging technologies since, as Director Vidal noted, design patents have been shown to provide a “catalyst for growth” and a “competitive edge” for U.S. manufacturers.

With advancements in technology since the USPTO first issued guidelines for examining computer-generated designs in 1996, the Office wisely sought the public’s comments on whether its approach to 35 USC § 171’s requirement that a design be for an article of manufacture should be revised to account for new and emerging technologies.

Who Responded

The USPTO received 19 responses to its request for comment, overall showing strong support for changing the USPTO’s guidelines to account for “PHVAR” designs (projections, holograms, and virtual and augmented reality). The 13 supportive commenters represent design patent application filers with significant experience using the U.S. design patent system and include intellectual property organizations with thousands of members (like the Intellectual Property Owners Association, the American Intellectual Property Law Association, and the International Trademark Association), design-conscious companies (Apple, Volvo), and several patent attorneys and law firms (including the authors’ firm, Sterne Kessler). The six opponents of reform are largely not users of the design patent system and include organizations and individuals often critical of intellectual property rights and design patent modernization and harmonization.

Comments that support acknowledging PHVAR designs as eligible for design patent protection explained that the current requirement to show a display screen in the patent drawings is unduly restrictive and not required under the law. The supportive comments also noted that longstanding examination of type fonts, and case law affirming eligibility of even ephemeral designs like water fountains, show that depicting a display screen is not a requirement for eligibility of a computer-generated design under Section 171.

Examining the Critics’ Arguments

The comments critical of protecting PHVAR designs were fewer, yet more varied. Some contended that Section 171 bars PHVAR designs from design-patent eligibility “because they are not designs for tangible articles” or “because they do not give form to an article of manufacture.” Setting aside whether these statements are accurate, they suggest higher standards than that laid out in Section 171 by including additional terms and limitations not found in Section 171: “tangible,” “give form to.” The term for (as in a design for an article of manufacture, as used in Section 171) is a broad and inclusive term, not subject to the kinds of extra-textual limitations that some of the critical comments seek to impose on it.

Some of the critical commenters propose that PHVAR designs are inherently designs per se, and therefore ineligible because they are “severed entirely from the article of manufacture.” But PHVAR designs are simply a new form of graphical user interface (GUI), just like screen-based GUI designs. A design for an interface is not a design per se, nor is it severed from an article of manufacture, the computer system that creates it.

Comparisons to In re Nujiten are Inapt

Other critical comments trace back to a U.S. Court of appeals for the Federal Circuit utility patent decision (In re Nuijten) dealing with whether a signal is patentable subject matter under Section 101 (a section of the patent statute that is not even applicable to design patents). The claims were held unpatentable for, among other things, not being “manufactures.” These commenters essentially equate PHVAR designs with the utility-patent-ineligible signal at issue in that case. But the court in Nuijten explicitly said that it was not deciding whether a signal like the one at issue would merit a design patent. And further, far from being “fleeting” or “devoid of any semblance of permanence during transmission” like the signals described in Nuijten, PHVAR designs are visible, they have an appearance, which is itself a “semblance of permanence.”

Toward Harmonization

One of the critical commenters criticized the USPTO’s reference to practices in Singapore that embrace design protection for PHVAR designs. The commenter suggested that the USPTO instead look to Germany’s system, which the commenter contended does not consider a computer program to be a product. Many jurisdictions, including Japan, China, Korea, and the EU (all members of the ID5—the five Offices receiving the most design filings worldwide), allow design rights to protect PHVAR designs or are adapting their practices to do so. Hopefully, the USPTO’s renewed effort on this important topic will help harmonize U,S, design protection with that of its peer Offices around the globe.

Addressing Broader Consequences

Several more of the critical commenters’ objections are at their core not specific to design protection and are policy critiques of larger aspects of the U.S. intellectual property protection system, couched in terms of PHVAR design protection. For instance, one commenter warns that patenting PHVAR designs will stifle innovation and creativity by enabling “early market entrants to bar smaller companies and later innovators from carrying out their own research or developing their own products.” But this is simply the patent system working as intended. The U.S. patent system encourages innovation and creativity by securing for inventors exclusive rights in their inventions for a limited time. See U.S. Constitution, Art. 1, § 8.

One critical commenter predicts that expanding protection to PHVAR designs would “wreak havoc” on the U.S. economy, and that current technological advances have been made possible because designers have not been able to protect their PHVAR designs. This takes a very low view of American innovation. Having the ability to protect their work by a design patent encourages designers and companies to invest more in good design, good interfaces, which benefits the users of those interfaces. Just as with utility patents and design patents generally, protection of PHVAR designs by design patent gives those that develop them the incentive to invest in their creation. Far from grinding to a halt if a designer could protect their holographic user interface, American ingenuity would advance, by designing a new user interface, maybe a better one, furthering the mission of the patent system to encourage innovation.

Another commenter worried that examination of PHVAR designs would be too hard for the USPTO to undertake because PHVAR designs hadn’t previously been patented in the United States and so there would not be a pool of patent-based prior art for examiners to search. But examiners aren’t limited to patent-based prior art, they already effectively look beyond patent-based prior art when searching GUI designs, and there in fact does exist a body of patent-based prior art in the databases—accessible to U.S. examiners—of other countries that already permit design protection for PHVAR designs.

Some critical commenters noted that U.S. law already provides protection to creators and owners of visual work under copyright and trademark law. But these regimes are distinct from design patents. Their existence and potential applicability to PHVAR designs is not grounds for denying design patent protection to PHVAR designs that meet the requirements of Section 171.

Copyright and trademark are fundamentally different forms of protection from design patents. And they can persist for much longer. A copyright’s term extends for 70 years after its author dies, while a trademark’s can theoretically extend forever. Accordingly, copyright and trademark law have particular requirements attendant to those forms of long-term protection. For example, copyright’s separability and creativity requirements or trademark’s source identification, non-functionality, and secondary meaning requirements. But these high bars are in place partly due to the long potential terms of copyright and trademark, and are not needed for the short, 15-year term of a design patent. Design patents, with their much shorter duration, suit PHVAR designs as they have long suited display-screen-based GUI designs.

Another critical commenter fears that expanding design patent protection to PHVAR designs could result in design patents covering photos and movies—traditionally the domain of copyright—which could lead to a way around copyright doctrines like fair use. This is not a PHVAR issue. The same could be said of display-screen GUI designs, which have regularly been protected by design patents for decades without issue. This is because a GUI design patent—like a PHVAR user interface design patent—does not extend to a mere picture, photo, or movie by its very nature as a user interface.

Further, though the risk of design patents covering photos and movies is at best speculative, it could be easily dealt with by expanding design patent protection to PHVAR in a way that still exempts photos and movies, as other countries have done. This would not be controversial. Such a remote and easily managed risk should not derail the USPTO’s advancement toward equitably protecting the work of all designers, including those who create PHVAR designs.

An Effort to Applaud

The USPTO’s proactivity in looking at this issue now should be commended. Users of the system appreciate the efforts of USPTO leadership and welcome changes that will strengthen the U.S. design system, including the ability to adequately protect PHVAR designs.

Image Source: Deposit Photos
Author: Syda_Productions
Image ID: 159390952 


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

One comment so far.

  • [Avatar for Anon]
    May 8, 2022 06:43 pm

    Is it semantics to assert that the image “is not severed” if that same image is not “FIXED in a tangible media?”

    Nature as an interface bespeaks functionality – an aspect that is not at play with design patents.

    So while I “get” the assertion that 101 and the In re Nuitjen case are not pertinent, so to, a large portion of the provided argument is not pertinent – you cannot have THAT aspect both ways.

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