As with the evolution of all things in our world, design patents are no exception and are undergoing a transformational rebirth as technology now enters the age of the metaverse. This article explores what the metaverse means for design patents and IP stakeholders.

Design patents are a unique form of intellectual property (IP) protection and, in the United States, protect “any new, original and ornamental design for an article of manufacture …”[1] But what exactly is an “article of manufacture”?

Under current U.S. design patent laws, three general types of designs can be protected:

1) the configuration or shape of an article;

2) surface ornamentation applied to the article; and

3) a combination of both the configuration/shape and surface ornamentation.[2]

Similarly, with the increasing use of projections, holograms, and virtual and augmented reality (PHVAR) in the commercial space, the scope of the “article of manufacture” requirement is getting a fresh look. The United States Patent and Trademark Office (USPTO) recently published a report in response to a request for public input on the topic. The USPTO asked the public to comment “on whether [the USPTO’s] interpretation of the article of manufacture requirement in the United States Code should be revised to protect digital designs that encompass new and emerging technologies.”[3]

Arguments abound on both sides of the question of whether or not design patent protection should be extended to PHVAR. For example, if GUIs are protectable under our design patent laws, why shouldn’t PHVAR, as computer-generated designs, be protected as well? Others argue that PHVAR should be protectable under design patent laws to support innovation and the advancement of technology. But PHVAR designs can already be protected under copyright or trademark law, so why extend protection to design patents?

One unique difference between patents and copyrights is that patents protect against independent development, while copyrights do not. This means if a third party develops the same PHVAR design without copying, there is no remedy under copyright law. However, if the PHVAR design were protected with a design patent, there would be liability for infringement, even if the PHVAR design was independently developed.

Some legal scholars argue that, “A design for a ‘projection, holographic imagery, or virtual/augmented reality’ display is not a design for the configuration (i.e., shape) of an article.”[4] But the language of the design patent law statute does not include a “physical” article or a “tangible” article. And what about the designer who works exclusively in the digital world? Are their designs and inventions any less valuable or not entitled to protection just because of the medium they are working in? Not providing protection to PHVAR designs is reminiscent of failed efforts to limit the term of design patent protection for automotive repair parts, which minimizes the creative contributions of an entire sector of industrial designers. As our economy moves more and more into the digital space with NFTs (Non-Fungible Tokens), cryptocurrency, and a metaverse where users engage with “virtual” articles, it seems inevitable and logical that PHVAR designs should be entitled to protection in this new dimension.

Around the world, Korea enacted an amendment to its Design Protection Act in October 2021 that provides protection for PHVAR designs (referred to as “image” designs), even if the designs are not displayed on a computer screen like GUIs are. However, the image design must have some functionality or be used in operating a device such as a computer. Other countries that have some form of protection for PHVAR designs include Japan, Korea, and the European Union.

The new USPTO Director Kathi Vidal recently commented, “I do think it’s time to rethink everything.” Given that, it seems that it is only a matter of time before PHVAR designs will be entitled to protection under our design patent laws.

Hold on to your butts …

If you have any questions related to this topic, please contact Kelly Burris at kelly@burrisiplaw.com.

[1] 35 U.S.C. §171

[2] Gorham Mfg. Co. v. White, 81 U.S. 511, 525 (1871)

[3] The Article of Manufacture Requirement, 85 Fed. Reg. 83063 (December 21, 2020)

[4] Comments from Design Law Professors, Docket No. PTO-C-2020-0068