(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of 'Article of Manufacture'

Abstract

Design patents protecting electronic designs, including computer-generated imagery (CGI), have rapidly become an important and valuable intellectual property asset class. Designs for CGIs have enjoyed design patent protection since 1996, when the United States Patent and Trademark Office (USPTO) reversed its original position that CGI were not design patent eligible. Previously, the USPTO consistently rejected design applications claiming CGI for failure to meet the “design for an article of manufacture” requirement of 35 U.S.C. § 171. This USPTO policy change proved prescient and important, as the focus of design innovation has shifted from traditional, tangible articles of manufacture to designs, such as CGIs, intended mainly for evanescent, electronic display. However, the USPTO’s allowance of CGI design patents continues to be hotly debated among design patent practitioners and scholars. Remarkably, no court has directly upheld the USPTO’s determination that CGI can qualify under the “article of manufacture” requirement of § 171. Furthermore, granting design patent protection for CGI has introduced tensions into the intellectual property protection for visual subject matter law by altering the balance that had previously prevailed among copyright, trademark, and design patent protection. This Article reexamines the USPTO’s 1996 determination to permit design patents claiming CGI, considers the relative benefits and costs attending the pre- and post-1996 policies, compares the treatment of CGI under the design protection laws of other countries, and analyzes whether or not design patent law allows protection for electronic (and other evanescent) designs, such as CGI. It explores the policy rationales behind the “design for an article of manufacture” requirement in § 171, and undertakes a comprehensive review of historical cases interpreting the metes and bounds of the requirement. Then, it analyzes problems raised by CGI design patents in contemporary cases, with a particular focus on Apple v. Samsung. The Article concludes by considering whether design patent protection is a socially beneficial mechanism for incentivizing and regulating innovation in electronic designs, especially CGI.

Keywords: Design patent, design, patent, article of manufacture, computer generated image, intellectual property, patent law, design patent law

JEL Classification: K10, K11, K20, K21, K23, K40, K41, K42, L12, L41, L43, L51, O30, O31, O32, O33, O34, O38, O39