|Date||October 16, 2012|
|Speaker||Tracy-Gene G. DURKIN (Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.)|
|Moderator||SEINO Takao(Deputy Director, Legislative Affairs Office, Japan Patent Office, METI)|
Tracy-Gene G. DURKIN
Many of you have heard of the recent patent litigation in the United States involving the companies Apple Inc. and Samsung. One of the three design patents that were involved in that case was actually for a graphical user interface (GUI). It is the first time that a U.S. court has ever considered infringement of a GUI design patent. Today, the topics of how GUI designs became protectable in the United States, how the law developed, current practice and procedures at the United States Patent and Trademark Office (USPTO) regarding the examination and searching of GUI designs, and finally the Apple-Samsung litigation will be covered. I was personally involved in that case, and the three design patents that were found to be infringed upon were ones which I obtained for Apple, therefore there are limits to how much I can discuss.
The legal basis for design patents derives from the Patent Statute 35, Section 171. This statute states that whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent for it. Therefore, it is important to understand how a GUI is considered an article of manufacture in U.S. law. To do that, we need to look at the Manual of Patent Examining Procedure (MPEP). In Section 1502 of the MPEP, it defines a design by stating that the subject matter which is claimed in a design patent application is the design embodied in or applied to an article of manufacture. We can see that it is not simply the article itself, but the design which has been applied to an article which is eligible for design patent protection. Section 171 also refers not only to the design of an article, but also to the design for an article including ornamental designs of all kinds, such as surface ornamentation. Thus, the design for an article consists of the visual characteristics that are embodied in or applied to an article.
The MPEP also discusses what constitutes the ornamental appearance of a design, which includes the shape and configuration, indicia, contrasting color or materials, and graphic representations. Finally, any other ornamentation applied to the 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 becomes protectable through a design patent.
The Ex parte Strijland case in the United States in 1992 provided for the protection of GUI designs using a design patent. This case was taken up at the Board of Appeals and Interferences (BPAI) at the USPTO over a graphic design. The examiner rejected the design as being patentable on the basis that it was not an ornamental design to be applied to an article of manufacture, but rather was a mere surface ornamentation. When the BPAI was asked to review the examiner's rejection, it concluded that the design was for a computer display, although no computer display was shown or described in the application. The applicant then tried to add information after the application was filed to include and describe the computer display. However, the USPTO decided that this was new information provided too late and, on this basis, the BPAI maintained its rejection of the applicant's claim. However, the BPAI stated that had information that was added to the application after it was filed been provided at the original time of filing, it would have been patentable. As a result of this case, the BPAI created a road map on how to apply for a patentable GUI.
In 1996, the USPTO created guidelines for the protection of GUIs. GUIs are now statutory subject matter, provided that the design is shown with some portion of a display. It is now unquestionable in the United States that GUI can be protected, that the article of manufacture is the display, and that the GUI is considered to be the surface ornamentation. Design law has developed at a slow rate since 1996. There have been no reported USPTO BPAI decisions involving the patentability of GUI designs since the Strijland case of 1992. There have been GUI cases which have been appealed to the BPAI, but decisions have not been published. There have also been no infringement cases related to GUIs, with the exception of the recent Apple-Samsung case. However, we know from information provided by the USPTO that the number of GUI design applications is currently growing at the fastest rate of any application. At one point, there was one patent examiner dealing with all GUI applications for the entire USPTO. Now, there are five or six such patent examiners.
In order to patent a GUI design in the United States, requirements are the same as for any other kind of patent application. The design has to be novel, not obvious, and not functional. Functionality is rarely an issue unless it involves three-dimensional designs. The title of the design must also be included in the article of manufacture. Finally, the design drawing must include at least a portion of a display or article of manufacture. The design drawing may be presented as a line drawing or a digital image. Color and greyscale 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, although they must show a minimum of two views. In the Japanese patent system, a relationship between images is necessary. However, in the U.S. system, it is only necessary to show the first and last images of an animated GUI patent application. More images may lead to a greater chance of patentability, although on the downside, it may also lead to a narrower scope for the patent.
With regard to patent examination at the USPTO, any attempt to add language about the article of manufacture in the title or the image of the article in the drawings after an application has been filed will be rejected. Examiners search prior patented GUI design as well as utility patents. This results in a very complex and comprehensive search which is very time consuming. It is often the case that GUI designs are rejected as a result of an earlier filed utility patent or application rather than an earlier design patent. Commercial texts, emoticons, and clip art are also considered by examiners when assessing GUI patent applications.
The number of patent lawsuits involving GUI designs is increasing rapidly in the United States. According to the New York Times, in the last two decades, the number of patent lawsuits filed yearly in U.S. district courts has tripled to 3,260 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. Last year, Apple and Google spent more money on patent lawsuits than on research and development of new products. It is clear to see that patent litigation is a serious issue in the United States.
Patent infringement is determined by using several criteria. In terms of utility patents, two tests are used. Literal infringement takes place when every feature of the patent claim is present in the accused product. An equivalent infringement can exist when each feature of the patent is not literally the same, but the feature's function is equivalent. An example of an equivalent infringement could be that the patent calls for a screw which connects two parts of an item together. Equivalent infringement would occur if the accused infringer uses a bolt in place of a screw to perform the same function. Since the function is the same yet the product is different, this could be considered an equivalent infringement, rather than a literal infringement.
Design patent infringement tests came about from the Gorham v. White case which was decided in 1871. In this particular case, the patented design was for a silverware handle. Mr. Gorham accused his competitor, Mr. White, of infringing his patent. In the end, the U.S. Supreme Court deemed that an accused design is an infringement if it is substantially similar in overall ornamental appearance as the patented design in the eyes of the ordinary observer. The U.S. Supreme Court rejected any input from experts. Therefore, in a design patent infringement case, literal and equivalent infringements are merged into a single test. One good example of where design patent infringement was found was in the Avia Group International v. L.A. Gear California case of 1988. Both companies produced footwear. Avia accused L.A. Gear of infringing on the design patent of the sole of one of their sneakers. The court concluded that the accused sneaker sole has a general appearance on the whole which is almost a direct copy of the patented sole. This highlights that a design infringement in the United States can occur without needing to have a design which is an exact copy of the patent.
The Apple-Samsung litigation has so far involved the United States, Australia, Japan, Korea, France, the UK, Italy, Germany, and the Netherlands. The outcome of the Apple-Samsung litigation cases have varied depending on the country. Part of the reason for this is that the intellectual property rights which are being asserted in each country are different. Intellectual property rights in the United States can be broader than the rights which can be acquired in some other countries. The standards also vary in each country. The U.S. case has also involved a jury to reach a verdict, as opposed to a judge. When the U.S. cases were originally filed, Apple initially had several utility and design patents along with trade dress registrations, applications, and trademarks. Trade dress refers to a subset of trademark law which involves product configuration, or product packaging. In the end, only four design patents were contested in the California litigation. Several of Apple's design patents were found by the jury to have been infringed upon by Samsung, including one GUI design patent. Damage calculation in that particular case was over $1 billion, with a significant part of that being due to design patent infringement.
In terms of the future of design rights overall, it is reasonable to predict several pros and cons. Positive changes will probably include more emphasis from companies on unique design creation in order to avoid claims of patent infringement. A sharper focus on design protection from companies which don't traditionally file for design patents in order to prevent possible infringement from other companies could also be expected. Countries will also probably expand their design rights protection in order to include more products in their design patent portfolio. Taiwan and Korea are currently making amendments, and the USPTO is also investigating whether improvements can be made in its own design system. Finally, although there will surely be an increase in litigation, this will result in more design patent decisions which will help us to better assess how design patent infringement is determined.
Negative changes will possibly include more designs being patented, even if they don't actually deserve to be so under the design patent system, for example, more functional designs may be patented. Companies will possibly try to register articles which are purely functional as a way to secure quick patent protection. There will be more emphasis on clearing new designs before bringing them to market, which will result in an increase in the cost of bringing products to market. Another change will be an increase in the number of inexperienced patent practitioners who are unfamiliar with how to file good design patent applications. This could result in a large number of patent application rejections or poor quality issued patents. Finally, an increase in design patent filings may result in the tendency for the speed of application processing to slow down.
Questions and Answers
Q1: Can design patent claims be used for all surface ornamentation, or would it be restricted to more specific functions?
Tracy-Gene G. DURKIN
In the United States, GUI design patents are not limited to any specific application. So, a GUI design patent application is not limited only to a cell phone or a mobile computing device, for example.
Q2: We are now working on developing a stronger GUI patent protection system in Japan. Fierce debates are occurring in relation to this. Is this the same in the United States?
Tracy-Gene G. DURKIN
There hasn't really been any negative commentary on GUI protection in the United States. In general, it has a pro-GUI protection stance, and the value that patents bring to protecting research and development costs is recognized. No change to legislation has been made. Guidelines introduced in 1996 form the basis of current GUI patent protection policy. There are still ways that the system could be improved in the United States, such as improving the efficiency of searching for GUI designs for examination purposes through categorization, for example. In this regard, the Japanese system is perhaps more advanced than that of the United States.
Q3: I'm very interested in the international strategy of the U.S. government in relation to patents. It appears that the United States is recommending a patent protection system similar to that of its own to China. Is a specific sector or company pushing strongly for the USPTO to discuss this issue with China? Second, past U.S. free trade agreements (FTAs) did not include issues related to patent protection. Why was patent protection not included in the previous U.S. FTAs?
Tracy-Gene G. DURKIN
I cannot speak on behalf of the USPTO. At present, China does not allow for GUI protection. I am not aware of any U.S. companies expressing interest directly to the State Intellectual Property Office (SIPO). I am aware of interaction between the USPTO and China about GUI protection, but I don't know any details. With regard to a lack of patent protection content in FTAs, until very recently, design patents were not considered as a high priority issue. However, recent events have led to increased interest in design patent protection. In the past, several changes have been made to U.S. patent legislation which has not included design patents, so it is no surprise that design patents haven't been included in the FTAs. I am not sure if this has been intentional.
Q4: Modern GUI designs are often very interactive and dynamic. It seems that it is very difficult to represent such GUIs with only one picture. How will GUIs be represented in patent applications in the future?
Tracy-Gene G. DURKIN
You are right. It is important to develop a careful strategy to protect GUI designs as they are so user-dependent. In the United States, we are fortunate that we can claim partial designs in patent applications. This allows for the possibility of eliminating content that is variable or third-party. It will be interesting to see how China will handle GUI protection policies if they are created there in the future.
Q5: It seems unclear as to what could be classed as patentable in terms of GUIs. For example, there may end up being companies who attempt to patent Chinese characters. What are your comments on this?
Tracy-Gene G. DURKIN
In the United States, there is an examination system in which a design being processed for patent application is compared to what has previously existed. Therefore, it wouldn't be possible to patent a Chinese character on the basis that it is not novel.
Q6: You explained the pros and cons of GUI design rights from the perspective of intellectual property rights. From an economist's viewpoint, the protection of patent rights is related to market competition. In that sense, a patent right which is too strong is not good for the economy as a whole. Do you think the current GUI patent protection in the United States is at an appropriate level?
Tracy-Gene G. DURKIN
The pros and cons explained are for the design patent system in general. There are limitations on the system. Once a design application is filed, it is not possible to amend the drawings, which represents an inflexible aspect of the system. However, the U.S. system for protection of GUI design is well balanced. The fact that utility patents are also searched makes the system stronger than if only previous GUI designs were searched.
Q7: If a customer downloads software which includes a patented GUI onto their cell phone, who would be held responsible for a potential infringement?
Tracy-Gene G. DURKIN
I am not aware of any case law in the U.S. concerning this, so I can't say for certain how this would be treated.
Q8: With regard to the Gorham v. White design patent infringement case of 1871, the criteria for whether there was an infringement or not was based on perceptions of ordinary members of the public on how similar the spoons were. Did the jury give reasons for its decision on whether the spoons were too similar?
Tracy-Gene G. DURKIN
The effect of prior art on determining infringement was important in this case. Up until 2008, design patent infringement tests in the United States consisted of two parts. The Gorham test was used to determine if the accused design had an overall ornamental design which was substantially similar to the patented design. The second test involved assessing whether the novelty of a design had been misappropriated. As of 2008, it is no longer a requirement that patent holders articulate what is novel about their design, however, prior art still must be considered. In determining the infringement of a design patent in the United States, it must be decided whether the accused product is more similar to the patented design than to the prior art. In the 1871 case, the accused patterns were deemed to be more similar to the patented design than to those which came before it.
Is it possible to invalidate GUI design applications simply by finding another similar yet unrelated design elsewhere?
Tracy-Gene G. DURKIN
The test for validity is the same as that for infringement. The question is whether the design is substantially similar. All prior art would be available for comparison, whether or not is it a GUI design. There is currently no case law on invalidation of GUI designs. Most rejections from the USPTO in GUI designs are based on figures from utility patent applications for software.
*This summary was compiled by RIETI Editorial staff.