IP Metaverse Series – Part III: Industrial Design Protection in the Metaverse
This is the third article of a four-part IP Metaverse series exploring IP protections for Metaverse-related technology and consumer-facing brands (see our second published article “IP Metaverse Series – Part II: Patent Considerations”).
A major developing area of technology is the so-called metaverse. The exact form that the “metaverse” will take is currently unclear, since development is at an early stage. One of the unknowns is whether there will be a single, “unified metaverse”, or whether several metaverses will emerge as walled gardens implemented on competing technology platforms.
It is more clear that the metaverse will likely incorporate Virtual Reality (VR) and/or Augmented Reality (AR) to create virtual spaces for users to interact. Users in these spaces may adorn an avatar with virtual assets such as clothes or accessories, and may interact in many different ways such as purchasing virtual assets or trading these virtual assets with other users.
While widespread adoption of the metaverse is still some time away, intellectual property (IP) owners are already concerned about protecting their IP rights from unauthorized use by third parties in the metaverse. As our trademark colleagues have written previously here, a number of brand owners are already expanding their trademark portfolios to cover goods and services associated with the metaverse. IP owners are also considering whether other IP rights can provide protection for virtual versions of their goods. One of these IP rights may be industrial design rights.
An industrial design (referred to as a design patent in the US) is a type of IP that provides an exclusive right in novel aspects of the appearance of an article. The statutory regime that creates this IP right recognizes the public policy benefit of providing protection for ornamental aspects of articles, including their shape, configuration, colour, or pattern. The public policy objective of the industrial design rights regime recognizes that articles may have aesthetic value that is expensive to create, but easy to copy.
Under the US statutory regime, valid design patents require compliance with the article of manufacture requirement. There are similar requirements in Canada and other major jurisdictions. To comply with this requirement, applicants must show the design as applied to, or embodied in, an article of manufacture. Industrial design laws have long recognized that software-based objects, including graphical user interfaces (GUIs) can be protected by these rights.
A notable example of design patents being used to enforce rights in software-generated graphical objects is the lawsuit by Apple against Samsung for infringement of Apple’s design patents for its iOS home screen design. In the decision of Apple v Samsung, the Federal Circuit upheld a jury award which included a significant damages award against Samsung for design infringement. Other examples of protectable ornamental designs in software products include fonts, and icons.
In jurisdictions with an article of manufacture requirement, design protection must be limited to the protection of the GUIs, fonts, icons and other virtual objects as displayed on a screen of a computing device. This requirement limits design protection and its usefulness for protection of virtual objects.
The metaverse, and the virtual objects that will populate it, thus present a challenge for the current industrial design laws and practices because effective protection requires recognition of virtual objects as articles to which industrial design protection can apply (i.e. without limiting protection to these objects displayed on a two dimensional screen). To address this challenge, the IP offices of several jurisdictions have been looking at amending their practices to better protect virtual goods and other virtual objects.
Article of Manufacture Requirement – United States
In the United States, 35 USC § 171 provides protection for designs and requires that “[w]hoever invents any new, original and ornamental design or an article of manufacture may obtain a patent therefor.” To comply with the article of manufacture requirement, the USPTO has required design patent applicants to show the design applied to or embodied in an article of manufacture.
As part of its consideration of providing design protection for virtual assets, the USPTO has conducted public consultations on this requirement. In this review, the USPTO considered positions from the public on the protection of “designs for projections, holograms, and virtual and augmented reality” (PHVAR). Such PHVAR designs are clearly relevant to effective industrial design protection for virtual assets in the metaverse.
The supporters of PHVAR design protections recognize that these virtual assets are new forms of ornamental software-generated objects analogous to GUIs, fonts, and logos, which have been protected for decades. The requirement that the article be “tangible” is not an explicit requirement found in 35 USC § 171. Proponents argue that removing the requirement for a computer-generated icon to be illustrated on a screen in the design patent application would be an important step to protecting new and emerging technologies (and would support a design protection scheme that is technologically neutral).
Opponents to PHVAR design protections argue that virtual assets are not fundamentally new types of designs, and in many cases are simply the virtual representation of a physical asset. Furthermore, maintaining a connection to the article of manufacture (i.e. screen) serves as notice and helps distinguish ornamental aspects from those that are functional. They argue that this provides an efficient distinction between what is protected and what is prior art. On the subject of prior at, opponents have raised concerns about a lack of prior art related to PHVAR in the US. The implication is that allowing design patent applications for PHVAR may lead to issuance of a large number of design patents of questionable validity, which in turn could stifle innovation in the metaverse.
It is unclear if the USPTO consultations will lead to legislative changes related to the article of manufacture requirement. What is clear is that many US companies are making significant investments in developing metaverse technologies. In the long run, there will be pressure for IP laws to support these investments in order to prevent unauthorized copying and encourage innovation.
Article of Manufacture Requirement – Worldwide
Around the world, several key design jurisdictions have modified their design patent/industrial design legislation to allow more protection for virtual assets, which could include protection of these assets in the metaverse.
In April of 2020, Japan revised their Design Act to protect graphic images which are not stored on a physical device. These changes allow for protection of images without the requirement of their depiction on a display screen. The changes also provide design protection to images projected on non-display devices such as walls or floors, opening the possibility for improved PHVAR protection for devices that provide VR/AR functionality in a particular room or space. The graphical images however must be used in the operation of a device or displayed as a result of a device performing its function.
Similarly, Korea added graphic images to the definition of design under their Design Patent Act in October 2021. These images can be protected without including a display screen in the drawings. Much like Japan, the images must be used in the operation of a device or exhibit some sort of function.
European Union Registered Community Designs (RCD’s) recognize graphic symbols and two-dimensional designs as products. This means that hardware such as screens and physical devices do not need to be illustrated in application drawings for digital designs. Though RCD’s must name the category of products to which they are applied, this is purely for classification purposes and should not limit the scope of protection.
China enacted design patent legislation to bring it in line with other major jurisdictions. This includes providing protection to partial products, such as a computer-generated images and GUI’s when shown on a display screen. In addition to requiring a display screen in the drawings, the category of physical devices with which the images are to be used must still be exhaustively listed in the application. One sign that Chinese courts are moving away from the connection to a physical device is a recent GUI design case by the Beijing Intellectual Property Court which was decided based on the overall visual effect of software and not specifically the physical device which the software is used in.
Article of Manufacture Requirement – Canada
The Canadian Industrial Designs Act requires that a registrable design must be applied to a “finished article”. This has posed problems for protecting digital designs which may not relate to or be displayed on any one physical object. It is not clear whether a PHVAR design (such as a hologram or a digital avatar) would be considered a “finished article” under the Act. The Canadian Industrial Design Manual issued by the Canadian Intellectual Property Office (CIPO) adds further uncertainty by requiring any design application relating to an electronic icon or other virtual object to include the words “Display Screen” in the name the article which is the subject of the application.
Currently, there is no indication that CIPO has made any significant progress toward clarifying whether industrial design protection for PHVAR designs can be obtained in Canada. Changing CIPO practices to explicitly permit industrial design applications for PHVAR designs would be very helpful in supporting Canadian innovators working on making the metaverse a reality (pun ironically intended).