In the rapidly advancing world of technology, the United States Patent and Trademark Office (USPTO) has updated its guidelines to clarify the landscape of design patent applications and patentability, particularly affecting digital creations. Let’s explore what these updates mean for the industry.

Understanding the Scope

The updated guidance focuses on the examination of design patents involving digital innovations such as computer-generated icons and graphical user interfaces (GUIs). This update addresses the need for clear directives in a domain where technology merges uniquely with creativity.

Key Aspects of the Guidance

Article of Manufacture Requisite: A critical point in the updated guidance emphasizes that the design must be applied to or embodied in an article of manufacture, like a device screen, to qualify for a patent.

Statutory Subject Matter Compliance: The document instructs examiners on ensuring that digital design patents meet the statutory requirements set forth under 35 U.S.C. 171.

Non-Substantive Rulemaking: This guidance does not introduce new rules but aims to align the examination process with existing USPTO policies.

Specifics for Icons and GUIs: Detailed instructions are provided for evaluating the patentability of computer icons and GUIs. A significant point is that these designs qualify for patenting if they are integral to the functionality of a computer program. Click here for more information about the specifics for Icons and GUIs.

Dealing with Rejections and Amendments: An essential part of the guidance is the procedure for managing rejections and suggesting amendments. USPTO personnel are directed to closely review claims and propose necessary adjustments to ensure compliance with statutory requirements. For example, a design claim for a “computer display screen with an animated icon” would be considered acceptable if it clearly demonstrates integral functionality within a computer program.

I am Michael Jones, the managing member at Jones Intellectual Property, specializing in all aspects of intellectual property, including patent, trademark, and copyright law. If you need guidance on how to navigate these new USPTO guidelines or any other IP-related matters, feel free to reach out to me at
Michael Jones Michael Jones is the founder and managing member of Jones Intellectual Property, whose mission is to provide his clients with personalized, effective legal solutions. Michael has focused on creating, protecting, and advocating for his clients’ intellectual property rights throughout his career. View Bio