Can a design patent protect the process or functionality of a computer-generated icon?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

No, a design patent cannot protect the process or functionality of a computer-generated icon. According to MPEP 1504.01(a), design patents for computer-generated icons are limited to the ornamental appearance of the icon:

“The following types of computer-generated icons are not considered to be embodied in an article of manufacture: … icons generated by computer programs which are not associated with a computer-generated image, such as ‘pull-down’ menus.“

This means that the functional aspects of an icon, such as how it operates or the processes it triggers, are not protectable by a design patent. Instead, these aspects may be more appropriately protected by utility patents or copyrights, depending on their nature.

Design patents for computer-generated icons focus solely on the visual appearance of the icon as it is displayed on a screen or monitor. Any claims to functionality or the underlying processes would be rejected under 35 U.S.C. 171, which requires that design patents be for ornamental designs.