Thursday, November 1, 2012

Apple's New Icon Design Patent - An Article of Manufacture?

In the midst of Apple’s ongoing patent war with Samsung, we noticed an interesting design patent that was issued last month on Apple’s familiar ITunes logo.   The patent is U.S. Design Patent No. 668,263, entitled “Display Screen or Portion Thereof with Icon”:

Others have questioned the novelty of Apples ITunes logo.  Nevertheless, Apple’s ‘263 Patent serves as a reminder of the broad subject matter for design patents.  Under the Patent Act, design patents may be awarded to “[w]hoever invents any new, original and ornamental design for an article of manufacture.”  35 U.S.C. § 171.  Historically, a “manufacture” was understood to mean “‘by the hands of man’ from raw materials, whether literally by hand or by machinery or by art.”  Application of Hruby, 373 F.2d 997, 1000 (C.C.P.A 1967) (holding that the arrangement of jets in a water fountain was patentable subject matter under § 171).  Therefore, until the mid ‘90’s, the PTO rejected design patent applications drawn to computer-generated icons (“CGIs”) as failing to meet the requirements of §171.  Specifically, the PTO consistently rejected CGI applications as failing to meet the “article of manufacture” requirement.  See, e.g. Ex Parte Donaghue, 26 U.S.P.Q.2d 1266 (Bd. Pat. App. & Int. 1992):

We find that appellant's claimed design, as disclosed in the application before us, is merely a picture. Appellant's specification does not show or describe the claimed design embodied or applied in any article of manufacture. Only pictures of the icon are shown or described. The claimed subject matter, therefore, does not meet the requirements of 35 U.S.C. § 171.
Then, in 1995, the PTO reversed itself without explanation, declaring that “[a] design for a computer-generated icon which is embodied in an article of manufacture is statutory subject matter for a design patent under Section 171.” See 60 Fed. Reg. 52,170 (Oct. 5, 1995) (promulgating interim guidelines for the review of design patent applications for computer-generated icons). 

Today, the PTO will allow a CGI design patent “if the disclosure as a whole suggests or describes the claimed subject matter as a computer generated icon embodied in a computer screen, monitor, other display panel, or portion thereof.”  M.P.E.P. §1504.01 (a).  The M.P.E.P also requires that the drawings for a CGI design must include a depiction of the icon “embodied in a computer screen, monitor, other display panel, or a portion thereof.”  M.P.E.P. §1504.01 (a)(I)(B).  Notably, the ‘263 Patent does not depict the iTunes icon embodied in a computer screen or portion thereof.

Apple has had success with CGI design patents in the past.  Apple’s Design Patent No. 604,305 (pictured below) was one of the patents that the jury found Samsung had willfully infringed back in August.  In fact there have been few, if any, other cases in which a CGI design patent was asserted. 

Samsung did not argue that CGI design patents were unpatentable subject matter under 35 U.S.C. § 171.  Presumably, this was to avoid invalidating its own CGI design patents.  Thus, this author is unaware of any court that has addressed whether the PTO’s current interpretation of 35 U.S.C § 171 is correct.  But for now at least, CGI design patents remain an important part of any software developer’sintellectual property portfolio.  As we have previously noted, software developers, should consider applying for design patent protection in addition to standard trademark protection for the novel graphics used in their programs.

1 comment :

  1. Check out this music note icon on the istock photo's website that is listed as uploaded on 10-30-07.