Design patent protection is a potentially powerful tool that inventors such as graphics designers and software developers may be able to apply to animated computer icons, including images that change in appearance during viewing.
Design patent applications may be written to claim not only the static design of an article of manufacture, but also the design of a dynamic article with its moveable parts in multiple positions. Designs for static computer-generated icons displayed on a computer screen have been recognized as patent eligible subject matter for a long time. However, the USPTO has recognized animated icons as patent eligible only since 2005. For patent prosecution guidelines related to computer-generated icons in general, see section 1504.01(a) of the Manual of Patent Examination Procedure (MPEP). For nuances specific to changeable computer-generated icons, see Part (IV) of that section. Here are a few highlights:
Article of Manufacture
Simply put, surface ornamentation cannot exist without a surface. An icon design for which protection is sought may satisfy the “article of manufacture” requirement of 35 U.S.C 171 by the design being tied to the computer that generates it. For computer-generated icons, the computer hardware may serve as the surface, or environment, of the claimed design.
Using solid lines to illustrate portions of an article that are considered part of a claimed design is a common design patent application practice. Remaining portions of an article that the inventor does not include in the claimed design may be illustrated as broken lines. For computer-generated icons, broken lines may be used to disclaim a computer screen as illustrating merely the unclaimed environment of the design.
Animation may be considered part of the ornamental appearance of a single embodiment of an article. The patent drafter’s challenge is to describe the dynamic design of the article as it varies over time using depictions of selected, interrelated (not independent) states of the animation. These states may be illustrated as images showing two or more views representing claimed state changes of the article at different points in time. Importantly, the established rule that the design for an article of manufacture may be embodied in less than all of an article is applicable to changeable computer-generated icons.
A design patent application need not show all states of a moveable computer icon design at every moment in time. However, the implications of omitting a state may be significant. The USPTO requires drafters of a design patent application for changeable computer-generated icons to include an additional special description after the figure description that reads, for example, “the subject matter in this patent includes a process or period in which an image changes into another image. This process or period in which one image transitions to another forms no part of the claimed design.” Similar to the effect of broken line rendering of physical objects, such special description language disclaims the undepicted portions (that is, omitted states) of an article of manufacture.