If you are pursuing a patent, you may be wondering what an “article of manufacture” is. The United States Patent and Trademark Office has the authority to define the categories of patentable inventions, and it created an article of manufacture as a category. Federal law states that an inventor of a “new, original and ornamental design for an article of manufacture may obtain a patent therefore.” Put simply, an article of manufacture is one of four different categories for patentable inventions.
Defining an Article of Manufacture
There are four categories of objects that can be patented under federal patent law. An inventor can patent a process, also called a method, a machine, a composition of matter, and an article of manufacture. The phrase ‘article of manufacture’ has been used since Congress passed the first patent act in 1790.
As it relates to patent law, an article of manufacture is any new or non-obvious physical product. Most inventions categorized as articles of manufacture are related to a machine. However, articles of manufacture are distinct because they typically involve simpler inventions with few or no moving parts. Most patentable inventions fall into the category of an article of manufacture.
The Supreme Court has defined manufacture as producing “articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).Courts have interpreted the language of a “new, original and ornamental design for an article of manufacture” to include at least three types of designs:
- A design for the shape or configuration of an article of manufacture,
- A design for end ornament, impression, print, or picture apply to or embodied in an article of manufacture (surface indicia), or
- A combination of the first two categories
According to court rulings, to be patentable, the design must give “a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.” Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016).
Examples of Articles of Manufacture
As mentioned above, many inventions fall into the articles of manufacture category. Some examples of Articles of manufacture include hammers, crowbars, gloves, shoes, mouse pads, chairs, shovels, Ceramics, and cast metal articles. In most cases, the articles of manufacture have several different parts, but the parts do not interact and typically remain static.
It is not possible to patent a natural article. Even if the inventor subjects a natural object to a chemical process, such as impregnating the rind of an orange with Borax to stop it from decaying, the invention does not qualify as an article of manufacture. Additionally, transitory, incorporeal, and intangible objects cannot be considered articles and manufacture. As a result, a signal cannot be patented as an article of manufacture.
Can Digital Designs be Considered Articles of Manufacture?
The U.S. Patent and Trademark Office recently submitted notice that they would accept public comment on how to interpret the phrase ‘article of manufacture.’ Specifically, they would like input on whether they should expand the definition of an article of manufacture to protect “digital designs that encompass new and emerging technologies.” Currently, digital designs cannot be patented as articles of manufacture. However, the U.S. Patent and Trademark Office is reviewing this requirement and may change it based on the feedback they receive.
Digital Designs are Not Currently Considered Articles of Manufacture
As of now, applicants must show that their design applies to or is embodied in an article of manufacture. Currently, the USPTO does not consider computer-generated icons or designs to be embodied in an article of manufacture. As such, digital designs are not eligible for design patents under federal patent law. However, when a computer-generated design is necessary and integral to the computer’s operation and is shown on a computer monitor, screen, or another display panel, the inventor may obtain a patent.
New technology is pushing the boundaries of patent law. Emerging technologies such as holographic images, augmented reality, and projections do not require a physical display on a computer screen or other tangible articles for people to view the design. Under the current patent laws, such images cannot be patented because they are not embodied or applied to a physical article, such as a computer screen. The USPTO may revise its regulations to allow these digital designs to qualify as articles of manufacture.
Samsung v. Apple
In 2016, the Supreme Court issued a ruling in Samsung v. Apple. The ruling decided an issue regarding the definition of an article of manufacture. The issue at hand involved whether a patent infringer is liable to the design patent owner for the total profit for sales of any article of manufacture he or she used for profit.
The Supreme Court ruled that the phrase ‘article of manufacture’ means any end product the infringer sold or a component of the end product. However, the Supreme Court did not specifically state how to determine the relevant article of manufacture. Suppose your design patent has been infringed upon, and you are wondering how to calculate the damages to which you may be entitled. In that case, we recommend discussing your case with an experienced patent lawyer.
A Picture Alone is Not Eligible for Design Patent Protection
A picture standing alone is typically not eligible for a design patent. Instead, the design subject matter must be the embodiment of the design in an article of manufacture. The USPTO has required that the design be shown as applied to or embodied in an article of manufacture.
Words Matter in Design Patents
Generally, successful design patent claims are focused on the application’s drawings. The drawings must show the ornamental design that the patent will protect. However, the federal circuit court recently identified a situation in which the drawings may not be enough to define the scope of the design patent claims clearly. In the case of Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), the patent claim’s scope wasn’t only defined by its drawing but also by its drawing also by the patent’s title.
Curver sued Home Expression, claiming that baskets incorporating a patented pattern infringed on their patent. Home Expression countered that the scope of the patent was not broad enough to cover any physical article made from the patented pattern. They argued that the patent was limited to chairs based on the specific language of the title and patent claim. Curver contended that the patent should be interpreted based solely on the drawings in the design patent application. Specifically, Curver included a three-dimensional material pattern. Curver lost their claim at the district court level, then at the Federal Circuit.
The Curver case is significant because courts have generally focused monthly on the drawings included in the design patent, not on the language of the patent. The holding refocuses the importance of the particular article of manufacture in the patterning process. The appellate court reaffirmed that a design patent needs to be tied directly to an article of manufacture, not simply an abstract design. In other words, design patents are not granted merely to a design but must be explicitly applied to an article of manufacture. The court refused to enforce the claimant’s patent for a disembodied design.
Articles of Manufacture for Emerging Technologies
The USPTO recently requested public comment on whether its interpretation of an article of manufacture requirement needs to be revised to protect digital designs for emerging technologies. Currently, the USPTO considers designs for computer-generated icons embodied in articles of manufacture to be eligible for a design patent. However, since certain emerging technologies do not require a physical display screen or another tangible article to be viewed, the USPTO is considering whether to revise its regulations to protect these types of digital designs more explicitly.
The USPTO published a document outlining its comments. Legal associations, companies, academics, and individuals supported various views. Those who supported the predictability of emerging technology through design patents encouraged the USPTO to take a more flexible approach. They pointed out that designs for Holograms, protections, and augmented virtual reality are technologically important. The creator should be encouraged to continue developing these Technologies with the assurance that they can obtain a patent.
Specifically, some commenters suggested that the requirement that the application drawing depicts a computer-generated icon embodied on a screen, monitor, or another display panel, or portion thereof, should be lifted. In this scenario, applicants would need to meet the article of manufacture element through a graphical user interface design.
In other words, the USPTO should extend the article of manufacture protection to computer-generated images in a way that the image is a component of the overall product. Other commenters suggested that the ephemeral nature of a design should not bar it from patent protection. Others rejected the idea that new technology should be more easily patentable.
Current Case Law Related to Articles of Manufacture and Emerging Technologies
Case law regarding projections, holographic imagery, and virtual reality does not explicitly address this issue. As a result, whether a digital design not applied to or embodied in a physical article of manufacture is eligible for a design patent is still debatable.
Disembodied designs such as projections, holograms, screen icons that are only temporarily shown when electricity is applied, and augmented reality have become more prevalent. The USPTO has implemented standards when deciding on design patent applications for these emerging technologies. Based on case precedent, we know that the USPTO is more likely to grant a patent when the emerging technology design meets the following criteria:
- The design is more than a mere picture on a computer screen
- The design is embodied in a monitor, computer screen, another display panel, or a portion thereof
- The design is integral to the operation of the computer. Displaying the design
Articles of Manufacture for Virtual or Augmented Reality
As mentioned above, many patent applications rely heavily on including the design itself to prove the article of manufacture. When it comes to holographic imagery, projection, and augmented reality, the article of manufacture may not be able to be displayed on a computer screen, monitor, or another display panel. However, it may be integral to the operation of the device.
For example, a virtual keyboard can provide input to a physical computer. When applying for a design patent, you will need to explain how the article a manufacturer requirement has been satisfied and precisely how this design differs from an abstract design or a picture.
Similarly, suppose the holographic imagery, projection, or image appearing through virtual reality is not displayed on a computer screen but is projected onto another surface or the air. In that case, you’ll need to show that the article of manufacture is satisfying. One of the most compelling arguments is to demonstrate that the design is an integral part of the operation of the computer displaying the design.
Meeting the Article of Manufacture Requirement with Emerging Technology
The USPTO will likely issue guidance on new technologies and how they meet the article of manufacture requirement. If you would like to seek a patent for a design related to emerging technology, the attorneys atAU LLC are here to help. We stay informed of all significant developments in design patent law.
Discuss Your Case With an Experienced Lawyer
If you were seeking a design patent in the United States, you need to demonstrate that your design meets the definition outlined in federal patent law. Your design must consist of a visual ornamental characteristic embodied in, or applied to, an article of manufacture. Your patent application will need to show a definite pattern of surface ornamentation applied to an article of manufacture.
AtAU LLC, our team of e experienced patent lawyers can help you submit an accurate and thorough design patent application, demonstrating that your invention meets the requirements of an article of manufacture. Contact our intellectual property firm today to schedule your initial consultation and learn more about your case.