For technology companies navigating the increasingly hostile terrain of software utility patent protection and Section 101 rejections, design patents have quietly become a more strategically important tools in the IP toolkit. Now, the USPTO has issued significant new supplemental guidance that makes design patent protection for computer-generated icons, graphical user interfaces (GUIs), and even projected and holographic interfaces dramatically more accessible. The updated supplemental guidance provides design patent applicants with more flexibility in choosing how to present a new, original, and ornamental designs for a computer-generated interface or icon. This development underscores the need for this type of design patent to be considered as part of an overall IP protection strategy.
The Section 101 Problem: Why Software Companies Are Rethinking Their IP Strategies
For years, software companies relied heavily on utility patents to protect their innovations. But the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International fundamentally disrupted that approach by making it more difficult to obtain and sustain utility patent protection for software-related inventions under 35 U.S.C. § 101. USPTO examiners now routinely reject software patent applications as directed to “abstract ideas,” and courts have invalidated many issued software patents on the same grounds. The practical result for technology companies is a significant gap in IP protection – particularly for the visual and interactive dimensions of their products that are most visible to users and often commercially valuable. Design patents have become more commonly used to fill that gap. The USPTO’s new guidance has now broadened the scope of design patents considerably.
Why Design Patents?
Design patents protect the ornamental appearance of an article of manufacture, not its underlying function. Under 35 U.S.C. § 171, a design patent may be granted for a “new, original, and ornamental design for an article of manufacture.” Design patents are not subject to the § 101 abstract idea doctrine that has proven so damaging to software utility patents. This makes design patents a uniquely durable form of protection for the visual and interactive elements of software products. And with the new guidance, obtaining that protection will become easier and more flexible.
The New USPTO Supplemental Guidance: What Has Changed?
The USPTO’s supplemental guidance remedies previously issued guidance that unnecessarily limited flexibility for design applicants. The guidance is effective upon its publication in the Federal Register and applies to all design patent applications or proceedings filed before, on, or after that date. This retroactive application makes the guidance immediately relevant to pending applications, not just new filings.
The guidance makes five major changes:
1. The Drawing No Longer Needs to Depict a Physical Screen
This is the single most significant change for applicants. The USPTO is removing the requirement in MPEP 1504.01(a) that the drawing depict the article of manufacture (e.g., a computer or a portion thereof) in either solid or broken lines for design patent applications drawn to computer-generated interfaces or icons where both the title and claim properly identify an article of manufacture.
Previously, examiners would reject design patent applications for computer icons if the drawings did not show a display screen or portion of a screen in solid or broken lines. If the article of manufacture is properly identified in both the title and claim but not shown in the drawings, the claim will be considered compliant with the article of manufacture requirement of 35 U.S.C. § 171, provided the design is properly disclosed and claimed in accordance with the pertinent rules and statutory requirements. Applicants may continue to depict the display panel or portions thereof in the drawings, but they are no longer required to do so.
2. Claim Language Using “For” Is Now Expressly Acceptable
The guidance clarifies that claim and title language indicating that an icon or interface is “for” a computer, computer system, or computer display panel adequately describes a design for an article of manufacture under 35 U.S.C. § 171, and examiners will no longer be instructed to object to such claims and titles.
A claim that reads, for example, “icon for display panel,” “projected interface for computer,” or “interface for computer system” meets the requirements of 35 U.S.C. § 171 since the term “for” indicates that the claim is not for an interface or icon per se, but a design for an article of manufacture. Examiners will no longer be instructed that these examples of claim language and titles do not adequately describe a design for an article of manufacture, and applicants continue to also have the option of claiming the article according to prior guidance (e.g., by reciting “a display panel with computer icon”).
The following are examples of claim language and titles that adequately describe a design for an article of manufacture under 35 U.S.C. § 171:
“computer screen with an icon”
• “display panel with GUI”
• “display screen or portion thereof with icon”
• “portion of a computer screen with an icon”
• “portion of a display panel with an icon”
• “portion of a monitor displayed with an icon”
• “icon for display screen”
• “GUI for display panel”
• “projected interface for a computer”
• “virtual reality interface for a computer”
• “augmented reality interface for a computer” and
• “computer icon.”
This list is not exhaustive.
3. Projections, Holograms, and Virtual/Augmented Reality Interfaces Are Now Protectable
Perhaps the most forward-looking aspect of the new guidance is its express recognition that design patent protection extends beyond icons and interfaces displayed on traditional screens. Designs of computer-generated interfaces and icons now exist beyond designs used on a display panel. The dependence of a design of a computer-generated interface or icon on a central processing unit and computer program for its existence is not itself a reason for holding that the design is not for an article of manufacture. Thus, digital designs including projections, holograms, or other virtual and augmented reality designs of interfaces or icons for computer systems that are not necessarily displayed on a conventional display screen are also protectable if they are properly disclosed and claimed.
More specifically, the guidance has identified additional types of design patent eligible designs for computer-generated interfaces and icons, including projections and holograms, when (a) the appearance of the interface or icon is separate from the computer, computer display, or computer system that generates it, and (b) the interface or icon is for a computer, computer display, or computer system such that the interface or icon is more than a transient or disembodied picture or three-dimensional image.
4. The Meaning of “Computer” and “Interface” Is Broadly Defined
An “icon,” as used in the guidance, refers to a visual symbol or image that represents a computer program, file, application, or function and allows users to quickly access and interact with various items on their computer display. An “interface” refers to the space where interactions between users and computers, computer displays, and computer systems occur, and encompasses the visual and interactive elements that users engage with (e.g., pages, screens, buttons, forms, and other visual components). While the underlying article of manufacture for an icon or interface has functional properties, the design of the icon or interface itself is not functional, and this guidance is therefore not in tension with the functionality doctrine, which requires that design patent protection extend only to the “ornamental design” of an article of manufacture.
A “computer system,” for purposes of the guidance, is an integrated combination of hardware and software and includes various types of computer systems such as personal computers, handheld devices, servers, mainframes, and supercomputers.
5. The Complete Disclosure Controls — Drawings Still Matter
While the drawing requirement has been relaxed in important ways, drawings remain central to design patent protection. The drawing provides the best description of the claim, and since the claim must be in formal terms to the design “as shown, or as shown and described,” applicants must provide sufficient views to fully disclose the design. Applicants must still comply with all patentability requirements, including 35 U.S.C. §§ 102, 103, and 112, and must provide a sufficient number of views to constitute a complete disclosure of the appearance of the design — to the extent that a skilled artisan would be on reasonable notice as to the metes and bounds of the claimed design.
What the Guidance’s Examples Tell Us
The guidance provides examples that illustrate how the new rules apply in practice. These examples are highly instructive for both applicants and practitioners.
Compliant claim structures include:
• Title: “Computer display screen with icon” where the drawing shows the design embodied in a computer display screen in broken lines and the claim recites “the ornamental design for a computer display screen with icon as shown and described.”
• “Icon for a computer display screen” where the term “for” with “computer display screen” indicates that the claim is not for an icon per se.
• A “paper stack icon for a computer display screen” where the drawing shows only the icon without the display screen depicted – this is a key new example confirming that the screen no longer needs to appear in the drawings when the title and claim properly identify the article of manufacture.
• A “projected paper stack icon for a computer” a projected design where the icon’s appearance is separate from the computer that generates it is likewise also deemed proper despite not showing a screen because the title, claim, and description recite “icon for a computer” which indicates that the icon is “not merely transient or disembodied picture or three-dimensional image”.
• A “projected interface for a computer system” where drawings showed a perspective view of a projected keyboard interface for a computer (shown in broken lines) projects the design. The scope of the claim is limited to overall appearance shown in figures and the scope of the claim may not protect appearance of the projected surface on a curved or irregular surface where no such drawings are provided.
• A “graphical user interface for a computer” where the drawing shows only the icon separate from the computer that generates it
• A “virtual reality motorcycle interface for a computer” shown in three views (top-down, front, and perspective) illustrating how three-dimensional VR interface designs can be claimed using multiple views to constitute a complete disclosure.
Non-compliant claim structures include:
• A bare “paper stack icon” where none of the title, claim, or description recite an article of manufacture and the drawing also does not depict one – the new guidance does not eliminate the article of manufacture requirement; it simply relaxes how that requirement can be satisfied.
• A “paper stack icon” where the drawing shows a front view of a computer display screen in broken lines with a paper stack icon showing the new design complies with article of manufacture requirement because the description recites a “computer display screen” but the title and claim do not identify an article of manufacture.
• A “virtual reality motorcycle interface” (without reference to “for a computer” or any article of manufacture) even for the most cutting-edge technologies, the claim must link the design to an article of manufacture.
• A “digital motorcycle picture” – a design that, on its face, appears to be a transient or disembodied image with no article of manufacture identified in the title, claim, description, or drawings.
The key lesson from these examples is clear: the article of manufacture requirement is alive and well but it can now be satisfied through title and claim language alone, without requiring a physical screen to appear in the drawings.
Key Takeaways
1. Conduct a GUI and Icon Audit Now
If you have not systematically reviewed your product’s visual elements (e.g., icons, buttons, GUIs, animated transitions, projected interfaces, AR/VR overlays) for design patent filing opportunities, now is the time. The new guidance has expanded the universe of protectable designs.
2. Review Your Pending Applications
The new guidance applies retroactively to all pending applications. If you have design patent applications that were previously rejected or narrowed because of the drawing requirements under the old guidance, those applications should be reviewed in light of the new rules. An amendment to the title and claim language may be sufficient to bring a previously rejected application into compliance.
3. Leverage the New “For” Claim Language Flexibility
Claim language such as “icon for display screen,” “GUI for display panel,” or “projected interface for computer” is now expressly acceptable and meets the article of manufacture requirement under 35 U.S.C. § 171. Work with your patent counsel to determine whether simpler, more flexible claim language untethered from a depicted screen better serves your strategic objectives.
4. Protect Your AR/VR and Projected Interface Designs
If your company is developing or deploying augmented reality, virtual reality, or projected interface technologies, the new guidance provides a new, clear path to design patent protection. Projected and holographic designs of interfaces or icons for computer systems that are not necessarily displayed on a conventional display screen are now protectable. File applications now before competitors do.
5. Remember: Drawings Are Still the Heart of the Claim
While the screen no longer needs to appear in the drawings, applicants must still provide a sufficient number of views to constitute a complete disclosure of the appearance of the design, to the extent that a skilled artisan would be on reasonable notice as to the metes and bounds of the claimed design. Invest in high-quality, professionally prepared drawings. In a design patent, the drawings are the claim and inadequate drawings can fatally undermine an otherwise strong application.
6. Coordinate Design and Utility Patent Strategies
Design patents and utility patents protect different aspects of the same product and should be pursued in parallel. A well-constructed IP strategy for a software product will typically combine various types of IP, for example:
• Utility patents for novel algorithms, system architectures, functionality (where § 101 can be overcome) and
other patent eligible subject matter;
• Design patents for the ornamental appearance of icons, GUIs, and interface elements (including projected and VR/AR designs);
• Copyright registrations for source code and graphical works;
• Trade Secrets for aspects of the software that are not disclosed or readily discernible from use
7. File Early — Especially for International Protection
Design patent applications must be filed within one year of public disclosure to preserve U.S. novelty rights. In many foreign jurisdictions, any public disclosure before filing can destroy novelty entirely. For products with imminent launch dates, design patent filings should be part of the pre-launch IP checklist.
Conclusion: A Turning Point for Digital Design Protection
The USPTO has recognized that its prior guidance may have unnecessarily limited flexibility for design patent applicants in the field of computer-generated interfaces and icons and has moved decisively to update its approach providing applicants with more flexibility in choosing how to present a new, original, and ornamental design for a computer-generated interface or icon. For technology companies, the practical message is straightforward: the legal environment for design patent protection of digital interfaces has meaningfully improved. Combined with the persistent difficulties of obtaining durable software utility patent protection in the post-Alice era, this guidance makes design patents a more important and more accessible component of a comprehensive IP strategy.
