By Tracy-Gene G. Durkin
The recent Apple v. Samsung litigation has consumed the media since August when a California Jury awarded Apple more than $1 billion for infringement. Of the three design patents involved in that judgment, one was for a graphical user interface (GUI). This landmark case is the first time that a U.S. court has considered infringement of a GUI design patent and may be just the tip of the iceberg beginning to emerge within the design patent landscape.
How the Law Developed
Design law relating to GUI protection has developed at a slow rate since 1996, when the USPTO first created guidelines for the examination of GUI designs. The legal basis for design patents derives from the Patent Statute, 35 U.S.C. Section 171 which provides that whoever invents any new, original, and ornamental design for an "article of manufacture" may obtain a patent for it. Section 171 also refers to the design for an article as including ornamental designs of all kinds, such as surface ornamentation. The question then is how is GUI considered to be an article of manufacture under U.S. law?
The Manual of Patent Examination Procedure Section 1502 discusses what constitutes the ornamental appearance of a design, which includes the shape and configuration, indicia, contrasting color or materials, and graphic representations on an article of manufacture. Any ornamentation applied to an article is considered to be surface treatment. Surface treatment itself is not protectable with a design patent, but rather through copyright. However, when that surface treatment is applied to an article of manufacture it is protectable through a design patent.
The case of Ex parte Strijland 26 USPQ2d 1259 (BPAI 1992) established the protection of GUI using a design patent. This case was taken up at the USPTO Board of Appeals and Interferences (BPAI) over an icon. The examiner rejected the design as being unpatentable on the basis that it was not an ornamental design to be applied to an article of manufacture, but rather was mere surface ornamentation. The applicant then tried to add information to the application to include and describe the computer display on which the claimed icon could be displayed. The Examiner rejected the additional information as new matter. The BPAI affirmed the Examiner, but in doing so, created a road map of how to apply for a patentable GUI by suggesting that had the information that was added to the application after it was filed been provided at the time of filing the application, it would have made the design patentable because it provided an article of manufacture (the display) on which the GUI was presented as surface ornamentation.
In 1996, the USPTO created guidelines for the protection of GUIs based on the decision in Ex Parte Strijland. GUIs are now statutory subject matter, provided that the GUI design or surface ornamentation is shown with some portion of a display or other article of manufacture. Although there have been no reported USPTO BPAI decisions involving the patentability of GUI designs since the Strijland case of 1992, nor any reported infringement cases related to GUI's (excluding Apple v. Samsung), there have apparently been GUI cases appealed to the BPAI. Those decisions have unfortunately not been published.
Requirements to patent a GUI design
The requirements to patent a GUI design in the United States are the same as for any other kind of design patent application. The design must be novel, not obvious, and not functional. The claimed design may be presented as a line drawing or a digital image. Color and grayscale are allowed to be presented in the same GUI application, but line drawings and digital images are not. Animated designs are also patentable in the United States, and must show a minimum of two views of the animation. More images may lead to a greater chance of patentability, although it may also lead to patent with a narrower scope.
Any attempt to add language about the article of manufacture in the title or the drawing figures after an application has been filed will be met with a new matter rejection during patent examination at the USPTO. Examiners search prior patented GUI designs as well as GUI utility patents in making their patentability analysis, resulting in a very complex and comprehensive search. While design patent applications are rarely rejected, the most common references used in a GUI design rejection are utility patents. Non-patent literature is also commonly used.
What's Next for GUI Design Patents
The number of patent lawsuits involving GUI is increasing rapidly in the United States. According to the?New York Times, over the last two decades the number of patent lawsuits filed yearly in U.S. district courts has tripled (3,260 were filed in 2010). According to a study done by Stanford University, $20 billion was spent on patent litigation and purchasing patents in the smartphone industry in the last two years. We also know from information provided recently by David Gerk from the USPTO's Office of Policy and External Affairs at an Inn of Court meeting that the number of GUI design patent applications is currently growing at the fastest rate of any other area. As digital displays become common place on more and more consumer products, there is little doubt that the subject matter of the increased patent filings is extending well beyond the smart phone.
About the Author:
Tracy-Gene G. Durkin is a director and leader of the Mechanical Patent and Trademark Practice Group at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. Tracy is a recognized design patent expert and represents some of the most forward thinking companies in the area of product design and product packaging design. Contact Tracy via email at tdurkin@skgf.com.
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