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James J. Aquilina Authors Comments to USPTO on “Article of Manufacture” Requirement for Design Patent Eligibility of Projected and Virtual Designs

Washington, D.C. — The national law firm of Quarles & Brady LLP today announced that James J. Aquilina, a member of the firm's Intellectual Property Practice Group, served as primary author of the International Trademark Association’s (INTA) comments to the United States Patent and Trademark Office (USPTO) on the “Article of Manufacture” requirement in the United States Code relating to the eligibility of projected, holographic, and VR/AR designs for design patent protection.

On December 21, 2020, the USPTO posted a notice seeking public input on whether its 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. Aquilina, an INTA Designs Committee member, authored comments in response to the notice, taking the position that the USPTO can and should fit eligibility for projected/holographic/VR/AR designs into the existing protection framework that was developed for software more than 20 years ago in the context of two-dimensional “graphical user interfaces” appearing on physical display screens.

“Advancements in technology almost always outpace updates to the law, and design patent law has been no different,” said Aquilina. “The ‘Article of Manufacture’ eligibility language used in industrial design law was first developed in the 19th century in relation to machines, textiles, and other categories of permanent design, but designing in the 21st century is increasingly performed in the context of software and other settings in which a design is only transiently perceptible. In providing these comments to the USPTO on what constitutes a design as embodied in an ‘Article of Manufacture,’ INTA aims to ensure that applicants will be able to adequately protect their projected, holographic, or otherwise temporarily-appearing software-based designs, without the need for a legislative solution.”

Aquilina counsels clients on utility and design patent; trademark, copyright, and trade secret law, with emphases on rights procurement; portfolio development and management; licensing; and rights enforcement. He is widely-recognized in the field of U.S. design law, which regards the intersection of design patents, trade dress, and copyrights in useful articles. He is the immediate past chair of the Industrial Designs Committee of the American Intellectual Property Law Association (AIPLA), the editor-in-chief of Quarles & Brady’s Protecting the Product design rights blog, and a frequent speaker, instructor, and academic contributor on design rights topics.