Interaction with GUI is a part of our everyday life through phones, computers, gaming devices and other electronic devices. GUIs are simple icons, screen layout, and visual signals that we utilize to control these devices.
GUI design is an emerging field in the technology industry, more so in the world of patents. In fact, the fastest growing segment of design patent filings is in the GUI space. For companies that sell goods and services through their website over the internet, or mobile applications; design patents for graphical user interfaces (GUI’s) would be beneficial.
While GUI designs may also be protectable under Copyright and Trademark law, but Design patents offer distinct advantages over other forms of IP protection like;
- Design patents can be used to protect icons and screen designs which do not function as a trade mark.
- There is no creativity requirement, as with copyright.
- Design patents have validity. Though, the term of a design patent is limited to 15 years, they rarely outlive due to the driving nature of design, particularly in the user interface area.
- Unlike Copyright, where a fair use defense exists; this is not available for design patent infringement.
- Design patent rights may also be easier to enforce than trade mark and copyright because no consumer surveys or copying are required to prove infringement.
- The measure of damages is a significant advantage. As 35 USC §289 states that an infringer “shall be liable to the [patent] owner to the extent of his total profit”; whereas,Copyright damages, on the other hand, limit the damages to the defendant’s profits that are attributable to the infringing component.
- A design patent can expand the intellectual property portfolio of the company and can also potentially increase the future asset value of the company.
Moreover, some companies have obtained protection of GUIs by Trade dress law. Protection under Trade dress involves the appearance of the GUI, like the “look and feel”. Since the requirement for protection under Trade dress involves being nonfunctional and must either be distinctive or have acquired secondary meaning, trade dress protection may not be available for GUIs. Visually unique and ornamental features may be protected under Trade Dress, but such features could also be protected under copyright law; but, if copyright protection is denied due to lack of originality, trade dress protection may still be available. However, trade dress may be considered if the GUI is inherently distinctive and nonfunctional.
What are the aspects about GUI that are patentable? Well, let us discuss about several aspects about GUI that are protected as Design Patents.
- Firstly, the novel icons associated with GUI are protected as Design Patents. These icons are, actually, the visual representations of the brand which display the subject matter associated with the application namely an envelope representing e-mail; a music note representing a music player; camera lens representing the camera. In case of third party applications (app), the app icon will be the most important way for that particular company to convey its brand, hence the importance of protecting it.
- Secondly, when the icon is clicked, the program opens and GUI gets displayed. Here, the novelty aspect is all about the layout of the GUI that includes the specific location of each element which is also protectable. For example, when a camera app is opened, the user can see the control buttons and settings buttons which are displayed in a specific layout and all these are protectable as long as these are novel and nonobvious.
- Finally, animation via GUI is also protectable. Taking the same example of camera app, when the user opens the camera app and clicks on the settings; the screen slides to either left/right off the settings page. This kind of “movement” in the app in GUI is protectable as Design Patent. One of the most famous examples of protection of movement in a GUI is the Apple “Cover Flow” design patent, which protects flipping through albums in the iTunes and music player interface.
GUI is a booming technology and as of 2016 GUI Patents had made up to nearly 6% of all U.S. design patents and it has been rapidly accelerating. To put this into historical context,
- Englebart’s On-Line System (NLS) was the first GUI Design Patent to be filed in December 1968.
Some of the famous GUI Design Patents include
- Xerox Alto and Xerox Star filed in 1973 and 1981 respectively.
- Apple Lisa in 1983;
- Macintosh 128K in 1984;
- MS Window in 1985;
- Apple Newton 1993;
- iPhone Gen1 2007;
- Google Glass 2013.
The number of GUI Design patents issued by the USPTO has more than doubled over the past two years. However, the top Design Patent application filers for GUI are not surprising; they include Microsoft, Samsung, Apple, Google, Sony and LG Electronics. As companies face increased challenges in prosecuting software applications, there has been a shift towards IP protection of GUI as design patents. Courts have also seen increasing Design Patent infringement cases with regards to GUI. One among the most famous infringement cases is Apple Vs Samsung. The case revolved around the Patents of Apple; among those were-
- The famous slide-to-unlock patent,
- Quick links patent, a much less famous patent where it includes software that automatically turns information like a phone number into a tappable link,
- The D618,677 patent, covering a black rectangular front face with rounded corners,
- The D593,087 patent, covering a rectangular front face with rounded corners and a raised rim,
- The D604,305 patent, covering a grid of 16 colorful icons on a black screen.
Samsung was found to have infringed several Design patents of Apple including the above mentioned.
It started in 2010 when Apple warned Samsung for infringing on the former’s patents. Apple Inc. did not immediately sue as Samsung was a trusted partner- Samsung supplied the semiconductors and OLED screens for the iPhone.
Apple had already sued HTC, wherein both settled with a cross-licensing patent deal in 2012.
Meanwhile, in October 2010, since Samsung had infringed on design patents for iPhone and iPad, Apple had suggested Samsung to pay $30 per phone and $40 per tablet. Samsung had ultimately declined as Apple’s suggestion was too high. However, Apple sued Samsung for copying the iPhone Design. Over the following years, Apple attempted to ban Samsung devices in several countries, failed with the settlement talks. Also, in the UK, Apple had to even post a public apology that stated Samsung did not copy its designs.
However, in 2012, a trial court verdict had announced its opinion wherein the jury sided with Apple, awarding it $1billion for damages. But, in 2013, the jury that presided over the first case found that the damages applied on Samsung were calculated incorrectly- $450million of the $1billion was invalidated and a retrial was initiated. As a result of the retrial, Apple had earned an additional $290 million in damages, bringing Samsung to pay a total of $929 million. Samsung immediately appealed the decision and in 2015, Samsung agreed to pay $548million to Apple, out of which, $399million was in dispute. Hence, $149million was the amount which Samsung would have to pay. The payable amount declared was based on total profits made by Samsung; hence, Samsung is, now, arguing that $399million is immoderate.
With GUI Design Patents trending in recent years and, also, companies facing increasing design patent litigations, countries and regions whose IT industries are relatively advanced, such as the United States, the European Union, Japan and South Korea, have all set up GUI design protection systems successively either through separate legislations, or by re-elaborating the original patent laws.
In United States, the USPTO admitted that an icon embedded in computer screen display was patentable as an inseparable part of the computer hardware as long as it was accurately described. Therefore, it could be protected as design patent.
In EU, a way has been paved for protecting GUI through Design Patents. A single application can be used for applying for protection- which means that one application can include a group of ever-changing display view variations.
In Japan, GUI can be protected as Design Application if it satisfies the following:
- GUI product must comply with the definition of “product” according to Japan’s Design Law which means the GUI displayed on a product must be indispensable for the product to achieve its functions.
- The graphic must be reserved in advance of the manufacturing of the product- Any graphic which is reserved in external memory medium or copied into the product after it has been manufactured is excluded from protection.
- The graphic must operate concurrently with the product, which includes being viewed by the display function of the product itself and being displayed through a display device which is under unified use with the product.
Japan is rather strict on protecting GUIs and not all GUIs fall under the protection scope of the Design Law.
In China, the GUI images must be presented as a part of the product. The designs are eligible for protection only when they are with the carrier object like computer or mobile phone with which they are displayed.
In South Korea, the GUI protection scope is much wider than compared to other countries. Design patents for screen layouts and icons are generally permitted in South Korea.
In India, a Design Patent can be obtained for new or original features of shape, configuration, pattern, ornamentation as applied to an article, whether in 2 or 3 dimensions or both. But, regarding GUI there was one incident wherein Amazon filed for GUI Design Patent in India, but was refused by the Indian Patent Office.
Amazon filed a Design application (240305) in India entitled “Graphic user interface for providing supplemental information of a digital work to a display screen” under class 14-02; but the Indian Patent Office objected that the proposed design was not a design under section 2(a) and 2(d) of Designs Act 2000. According to Section 2(a) and 2(d), an “article” and a “design” are defined respectively- “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately; Section 2(d) of the Act provides at least the following conditions, amongst other things, which should be satisfied for the design to be registrable: a) Design includes only the features of shape, configuration, pattern, ornament or composition of lines or colors; and b) Design has to be applied to an article.
In response to these objections, Amazon had submitted that the GUI is applied onto the screen display of the computing device; wherein the article onto which the design is being applied is a display screen. Further, the controller refused the application on the following basis:
- The graphic user interface (display screen of computing device) is a function of computer screen which is an application based on computer program used for operation of the hand held computing devices which will show on the display screen only when the computing device is in switched on condition.
- The design cannot be considered as a finished article which is judged solely by eye obtained through industrial process and it does not include features of shape or configuration and other design parameters stated therein and are dictated solely by the function of the article (computing device) to be performed.
- The design failed to satisfy the requirements of section 2(a) and section 2(d) which require the design applied on the article in the finished form.
- The design is not an integral part of the article but is purely functional/ application based.
- The GUI cannot be held as an article of manufacture and also does not qualify as an article of manufacture.
- As the GUI cannot be sold separately as commodity item in the market, hence, it fails to meet the requirement of section 2(d) of the Act.
It means that GUI cannot induce sense of touch and one cannot purchase GUI as such. Therefore, after the verdict of Amazon’s case, the Indian Patent Office has started considering the definition of the word “article” in the Act and, hence, concluded that no screen display could be registered as per Indian Patent Office.
The protection of GUI is the most important type of Intellectual Property obtained by the developer to protect the company brand. GUI protection should not be limited only to the software world; instead all industries should consider the protection of GUI strongly as future will see GUI protection being essential for any industry that uses it to interact with its audience.