New USPTO Guidance on Design Patents for Computer-Generated Images Sparks Debate

The U.S. Patent and Trademark Office issued new supplemental guidance that expands how examiners evaluate design patent claims for computer generated interfaces, icons, projections, holograms, and other emerging digital designs. Effective March 13, 2026, the guidance removes the longstanding requirement that applicants depict a physical “article of manufacture” in design drawings, giving applicants greater flexibility when seeking protection for digital and projected imagery. The update responds to years of stakeholder feedback and has already generated significant debate among design law scholars and practitioners. 

Some academics argue the USPTO is stretching the statutory limits of 35 U.S.C. § 171, while others view the guidance as a logical modernization of design patent practice. Finnegan partner Beth Ferrill offered a detailed perspective on the significance of the changes and why they matter for innovators working in virtual, augmented, and projected environments. 

Beth noted that the USPTO’s position is now explicit: “While the USPTO had occasionally recognized virtual and augmented reality user interface designs in the past, this new guidance makes it clear that it is the USPTO’s position that these types of design, as well as projected and holographic designs, should be eligible for design patent protection.” 

Responding to criticism that the guidance enables “disembodied designs,” Beth emphasized that the statutory framework still imposes meaningful limits. She said, “The guidance makes clear that the article of manufacture that the design is applied to must be specified, so that design is not ‘disembodied.’ And, applications will still need to be considered for all the other requirements of the patent statutes, including ornamentality, novelty, obviousness, inventorship, and written description/enablement.” Beth also highlighted how courts are likely to approach enforcement. “Recent case law on design patents enforcement makes clear that the court will consider the underlying specified article of manufacture as a limiting factor on the questions of infringement and damages.” 

Beth also noted that she believes  the guidance does not  expand the statutory meaning of “article of manufacture,” pointing to existing Supreme Court precedent. “In 2016, the Supreme Court [in Samsung Electronics Co., Ltd. v. Apple Inc., 580 U.S. 53] found that the phrase ‘article of manufacture’ in 35 U.S.C. 289 has a broad meaning—a thing made by hand or machine. The underlying article of manufacture for projected, hologram, virtual and augmented reality designs set forth in the USPTO’s guidance seems to fit within this existing definition.” 

She also explained why some creators may prefer design patents over copyright protection, despite the availability of copyright for certain projected or digital works. “While copyright can be easier to register at a lower expense, copyright enforcement requires proving the element of copying and includes many defenses that are not relevant to design patent protection, including fair use and independent creation.” She added that design patents offer meaningful enforcement advantages.: “While design patents require a longer and more expensive process of USPTO examination, they enjoy a presumption of validity and the enforcement process can be more straightforward with fewer defenses. Upon a finding of infringement, design patent owners are also entitled to the infringer’s total profits on the relevant article of manufacture.” 

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