leveraging design patents to protect graphical user...

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Leveraging Design Patents toProtect Graphical User InterfacesProtecting the "Look and Feel" of GUIs, UnderstandingCurrent U.S. and Global Prosecution Practices

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THURSDAY, APRIL 7, 2016

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Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

Tracy-Gene Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.

Robert S. Katz, Esq., Banner & Witcoff, Washington, D.C.

John Richards, Of Counsel, Ladas & Parry, New York

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Using DesignRights to Protect

Graphical User InterfaceTracy-Gene G. Durkin, Esq.

S K G F. C O M © 2016 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.

April 7, 2016

Agenda• Overview of Design Patents• Historical context for GUI protection in the U.S.• Comparison to other forms of design protection in the U.S.• Current trends

S K G F. C O M © 2016 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.6

• Overview of Design Patents• Historical context for GUI protection in the U.S.• Comparison to other forms of design protection in the U.S.• Current trends

Overview of Design Patents• Utility Patents protect the way an article “works” (for 20 years

from filing)• Design Patents protect the way an article “looks” (for 15 years

from issue)• Both have to be novel and not obvious• Utility patents cannot protect inventions which are not useful• Design patents cannot protect designs which are not ornamental

(i.e., are primarily functional)


• Utility Patents protect the way an article “works” (for 20 yearsfrom filing)

• Design Patents protect the way an article “looks” (for 15 yearsfrom issue)

• Both have to be novel and not obvious• Utility patents cannot protect inventions which are not useful• Design patents cannot protect designs which are not ornamental

(i.e., are primarily functional)

The Two Are Not Mutually Exclusive

Apple’s US 7,657,849Slide-to-UnlockUtility Patent

Apple’s US D675,639Slide-to-UnlockDesign Patent


Historical Context For GUIDesign Patent Protection

35 U.S.C. §171 Patents for designs• Whoever invents any new, original and ornamental design for an

article of manufacture may obtain a patent therefor, subject tothe conditions and requirements of this title.

• Section 171 refers, not to the design of an article, but to thedesign for an article, and is inclusive of ornamental designs of allkinds including surface ornamentation as well as configurationof goods.”

In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980)


35 U.S.C. §171 Patents for designs• Whoever invents any new, original and ornamental design for an

article of manufacture may obtain a patent therefor, subject tothe conditions and requirements of this title.

• Section 171 refers, not to the design of an article, but to thedesign for an article, and is inclusive of ornamental designs of allkinds including surface ornamentation as well as configurationof goods.”

In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980)

How Did GUI BecomePatentable?

• Appeal from Examiner’s final rejection of an icon designunder 35 U.S.C. §171

• Basis for the rejection:− Icon is not an ornamental design

for an article of manufacturebecause it is mere surfaceornamentation rather than a designapplied to an article of manufacture


• Basis for the rejection:− Icon is not an ornamental design

for an article of manufacturebecause it is mere surfaceornamentation rather than a designapplied to an article of manufacture

Ex Parte Strijland, 26 U.S.P.Q.2d 1259 (USPTO 1992)

How Did GUI BecomePatentable?

• The Examiner and Appeal Boardagreed that the design was for acomputer display, however, no displaywas shown or described in theapplication as filed.

• During prosecution Applicant amendedthe drawings to add a broken linecomputer

• Board held that had the originalapplication described a display orshown a display, the design disclosedwould be patentable subject matter


• The Examiner and Appeal Boardagreed that the design was for acomputer display, however, no displaywas shown or described in theapplication as filed.

• During prosecution Applicant amendedthe drawings to add a broken linecomputer

• Board held that had the originalapplication described a display orshown a display, the design disclosedwould be patentable subject matter

USPTO GUI Guidelines

• To be directed to statutory subject matter, design applications forcomputer-generated icons must comply with the “article ofmanufacture” requirement of 35 U.S.C. §171

• Because a patentable design is inseparable from the object towhich it is applied and cannot exist alone as mere surfaceornamentation, an icon must be embodied on a computerscreen, monitor or other display panel or portion thereof

• The article of manufacture on which the design is displayed maybe shown in broken lines

MPEP §1504.01(a) Computer-Generated Icons (1996 Guidelines)


• To be directed to statutory subject matter, design applications forcomputer-generated icons must comply with the “article ofmanufacture” requirement of 35 U.S.C. §171

• Because a patentable design is inseparable from the object towhich it is applied and cannot exist alone as mere surfaceornamentation, an icon must be embodied on a computerscreen, monitor or other display panel or portion thereof

• The article of manufacture on which the design is displayed maybe shown in broken lines

MPEP §1504.01(a) Computer-Generated Icons (1996 Guidelines)

Examples


How the Design Law HasDeveloped Since 1996

• The law has developed very slowly• Although there have been some decisions by the USPTO PTAB,

involving the patentability of GUI designs since 1992, none havebeen reported

• The only way to know about them is if the Examiner is reversedand the patent issued – needle in a haystack


• The law has developed very slowly• Although there have been some decisions by the USPTO PTAB,

involving the patentability of GUI designs since 1992, none havebeen reported

• The only way to know about them is if the Examiner is reversedand the patent issued – needle in a haystack

How the Design Law HasDeveloped Since 1996

• 2014 gave us the first reported court decision on validity andinfringement of a GUI design patent


D604,305 Galaxy S

Comparison to Other Formsof IP - Trademarks


Animation

Comparison to Other Formsof IP - Copyright


Advantages of Design PatentsOver Other IP Rights

• Available for icons and screen designs (which may notfunction as a trademark)

• No creativity requirement (as for copyright)• Presumption of validity• Limited term, but seldom outlived• May be easier to enforce• No consumer surveys needed• Infringer’s profit is common measure of damages• Use design rights while establishing secondary meaning


• Available for icons and screen designs (which may notfunction as a trademark)

• No creativity requirement (as for copyright)• Presumption of validity• Limited term, but seldom outlived• May be easier to enforce• No consumer surveys needed• Infringer’s profit is common measure of damages• Use design rights while establishing secondary meaning

Current Trends

• User Interface is Booming• As recently as June 15, 2015, there were 1.5M mobile

applications available for download from the Apple AppStore

• 58,502 new apps were submitted to the App Store inDecember 2015

• Average price of an app from the App store $1.16• How can software developers protect the intellectual

property in these lucrative and growing products in light ofAlice Corp. v. CLS Bank International?


• User Interface is Booming• As recently as June 15, 2015, there were 1.5M mobile

applications available for download from the Apple AppStore

• 58,502 new apps were submitted to the App Store inDecember 2015

• Average price of an app from the App store $1.16• How can software developers protect the intellectual

property in these lucrative and growing products in light ofAlice Corp. v. CLS Bank International?

GUI Design Rights Also Booming

• Design patents fastest growing IP asset to protect Iconsand GUI

• Make up 2% of the more than 750,000 design patentsissued to date (more than 9,000,000 utility patents grantedin total)

• Fastest growing area in designs at USPTO (from 1 – 20+patent examiners in less than 10 years)


• Design patents fastest growing IP asset to protect Iconsand GUI

• Make up 2% of the more than 750,000 design patentsissued to date (more than 9,000,000 utility patents grantedin total)

• Fastest growing area in designs at USPTO (from 1 – 20+patent examiners in less than 10 years)

U.S.: Top GUI design patent filer

1200

1400

1600

1800


0

200

400

600

800

1000

Microsoft Samsung Apple Google Sony LG Electronics

GUI Design Rights Also Booming (II)

• Diverse companies are obtaining GUI design rights


What‘s Next?


D554,140 CorelCalculate

Microsoft v. Corelfiled N.D. California 2015

What‘s Next?


D550,237 Corel Show

Microsoft v. Corelfiled N.D. California 2015

Thank You

Tracy-Gene G. Durkin, Esq.Sterne Kessler Goldstein & Fox

Washington, [email protected]


Tracy-Gene G. Durkin, Esq.Sterne Kessler Goldstein & Fox

Washington, [email protected]

Leveraging Design Patents toProtect Graphical UserInterfaces

APRIL 7, 2016

Robert S. KatzBanner & Witcoff, Ltd.

(202) [email protected]

www.bannerwitcoff.com/rkatz

Design Patents for Designs

• Why• How

– Mechanics– Strategy

• When (for emerging technologies)

BANNER & WITCOFF | LEVERAGING DESIGN PATENTS | APRIL 7, 201627

• Why• How

– Mechanics– Strategy

• When (for emerging technologies)

WHY: Display-Based Design Patents

• Rapidly growing in real life– Predicted: by 2017, 50% of all designs will be screen designs– Common sense observations More products have displays

• Companies are picking up on this reflected by design patent grantsdirected to GUIs


• Rapidly growing in real life– Predicted: by 2017, 50% of all designs will be screen designs– Common sense observations More products have displays

• Companies are picking up on this reflected by design patent grantsdirected to GUIs

Timeframe DPs/year % all DPs1990-1995 1 ‹ 0.1%

1997-2005 70 0.5%

2007-2012 440 1.8%

2013-2014 1000 4.3%

2015 1484 5.7%

WHY: Display-Based Design Patents

• More Why:– Connection with Source/Branding– Connection to platform based training– Virtual Migration – Movement to under the glass– Virtual Migration – Shift from specific devices to multi-

purpose devices– Internet of Things (more things interconnected)


• More Why:– Connection with Source/Branding– Connection to platform based training– Virtual Migration – Movement to under the glass– Virtual Migration – Shift from specific devices to multi-

purpose devices– Internet of Things (more things interconnected)

Virtual Migration

Part 1Virtual Migration



Part 1

30

Virtual Migration


Part 2


Example of Evolving Design ExperiencesPhilips Hue Lighting System


Example of Evolving Design ExperiencesNest Thermostat


More Categories of Home Controls


Why: Final

• Companies spend hundreds of thousands/millions of dollars to developGUIs for appearance and functionality.

• To be successful:– They should look cool– They should be intuitive– They should be easy to use

• Design patents may be the only way to stop third parties fromskimming your design– Other forms of IP may be difficult– Design patents are likely the more reliable way to prevent skinning and

substantial skimming– If you want to prevent this being proactive on the portions you want to

protect is a must


• Companies spend hundreds of thousands/millions of dollars to developGUIs for appearance and functionality.

• To be successful:– They should look cool– They should be intuitive– They should be easy to use

• Design patents may be the only way to stop third parties fromskimming your design– Other forms of IP may be difficult– Design patents are likely the more reliable way to prevent skinning and

substantial skimming– If you want to prevent this being proactive on the portions you want to

protect is a must

Before we get to How…..What is a GUI?

• Broad definition: Any and all aspects of a screen-based userexperience

• Capable of being sensed: Visual, Audible, Haptic, etc.– But design protection will be limited to visual

• Can be static or dynamic

• Can vary greatly in type and presentation and experience provided


• Broad definition: Any and all aspects of a screen-based userexperience

• Capable of being sensed: Visual, Audible, Haptic, etc.– But design protection will be limited to visual

• Can be static or dynamic

• Can vary greatly in type and presentation and experience provided

How: The Mechanics

• Drawings:– Must show on a display screen

• Can show display screen boundary in broken lines

– Disclaimed portions in broken lines– Image can be screenshot (color/grayscale) or line drawings

• Title:– Display Screen with….– USPTO reluctant– If title not “commonly approved” may need to tie to computer

• Special Statement:– Use to “explain” drawings as needed


• Drawings:– Must show on a display screen

• Can show display screen boundary in broken lines

– Disclaimed portions in broken lines– Image can be screenshot (color/grayscale) or line drawings

• Title:– Display Screen with….– USPTO reluctant– If title not “commonly approved” may need to tie to computer

• Special Statement:– Use to “explain” drawings as needed

How: The Strategies

• Typically the best approach to protect the look and feel of the visualexperience– Strategy is a mix of science and art– Appreciate the uniqueness in the user experiences provided– Attempt to predict branding and usability effects– Other factors

• GUI – visual part of the user experience– Traditional GUIs– Icons– Wait routines/cursors– Fonts– Anything visual that contributes to the user experience


• Typically the best approach to protect the look and feel of the visualexperience– Strategy is a mix of science and art– Appreciate the uniqueness in the user experiences provided– Attempt to predict branding and usability effects– Other factors

• GUI – visual part of the user experience– Traditional GUIs– Icons– Wait routines/cursors– Fonts– Anything visual that contributes to the user experience

How: The Strategies

• Use design patent principles for focusing on desired portions, colors,tonal contrasts, etc.

• Don’t be afraid to be creative• Static or animated• Know USPTO practice rules and pitfalls

– Some unique practices associated with screen designs


• Use design patent principles for focusing on desired portions, colors,tonal contrasts, etc.

• Don’t be afraid to be creative• Static or animated• Know USPTO practice rules and pitfalls

– Some unique practices associated with screen designs

User InterfaceExample – D704,212(Apple)


User InterfaceExample – D699,259(Sony)


User InterfaceExample – D725,662(Samsung)


User InterfaceExample – D723,054(Nissan)


User InterfaceExample – D686,222 (Microsoft)


Example GUI –D457,164 (Apple)


ExampleGUI D619,614(Google)


ExampleGUI D619,614(Google)

Apple v. Samsung – Apple iPhone GUI (D604,305)and Samsung‘s Accused GUI


IconExamples


IconExamples

49

Animated Screen Designs

• Different scopes/impressions from single static image designs

• Animations– An important part of portfolio if experience includes movement.– Moving screen designs have made up about 20% of total number of screen

designs over the last 3 years– Scope can cover minor differences in static impression if dynamic

impressions are more similar


• Different scopes/impressions from single static image designs

• Animations– An important part of portfolio if experience includes movement.– Moving screen designs have made up about 20% of total number of screen

designs over the last 3 years– Scope can cover minor differences in static impression if dynamic

impressions are more similar

Icons – Static and AnimatedPat. No. D662,945 and D663,317 (NIKE)


ExampleAnimatedGUID643,850(Microsoft)


ExampleAnimatedGUID643,850(Microsoft)

Example Animated GUID687,047 (Nest Labs)


Example Animated GUID624,557 (Microsoft)


Wait Cursors/Loading RoutinesD656954 and D644,661 (Microsoft)


Font Examples - Reading, Fanciful, and Symbols


When How to Protect Future Designs

• The US has a design for an “article of manufacture” requirement inSection 171– Europe does not

• What kinds of designs are we starting to see and what will we see inthe future?– Display surfaces are changing– More virtual reality models are arising– In some cases, there may not even be display surfaces

• Make new law tips


• The US has a design for an “article of manufacture” requirement inSection 171– Europe does not

• What kinds of designs are we starting to see and what will we see inthe future?– Display surfaces are changing– More virtual reality models are arising– In some cases, there may not even be display surfaces

• Make new law tips

Robert S. KatzBanner & Witcoff, Ltd.(202) [email protected]/rkatz

Thank you!

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Graphical User Interfaces(GUI) Design Patents

John Richards

Abroad is different but slowlymoving closer together

• Laws on protection of designs still probably lessharmonized than other areas of IP law, but onecommon feature – 6 month priority term. Differencesinclude:

• Whether any substantive examination• Terms of protection• Grace period• Protection partial designs; use of broken lines• Use of color

• Laws on protection of designs still probably lessharmonized than other areas of IP law, but onecommon feature – 6 month priority term. Differencesinclude:

• Whether any substantive examination• Terms of protection• Grace period• Protection partial designs; use of broken lines• Use of color

60

Hague Agreement• May encourage more international filing

which could lead to pressure forharmonization

• Procedure more similar to Madrid Protocol fortrademarks than PCT for patents

• Normally gives rise to early publication –although delayed publication may berequested US cannot be requested if this isdone.

• May encourage more international filingwhich could lead to pressure forharmonization

• Procedure more similar to Madrid Protocol fortrademarks than PCT for patents

• Normally gives rise to early publication –although delayed publication may berequested US cannot be requested if this isdone.

61

• This presentation will look at the situation in• European Union• China• Korea• Australia• Canada• Japan

• This presentation will look at the situation in• European Union• China• Korea• Australia• Canada• Japan

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European Union• Design right protection possible through filing

in individual countries or for whole EUthrough central filing with EUIPO (formerlyOHIM) but substantive issues are the samebecause national design laws have beensubject to EU directive harmonizing them withthe regulation setting up the EU design system

• Presentations of information excluded frompatent protection by Article 52 EPC

• Design right protection possible through filingin individual countries or for whole EUthrough central filing with EUIPO (formerlyOHIM) but substantive issues are the samebecause national design laws have beensubject to EU directive harmonizing them withthe regulation setting up the EU design system

• Presentations of information excluded frompatent protection by Article 52 EPC

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• In addition to registered design right, EU hasunregistered right for designs first disclosed inEU which runs for three years from firstmarketing but is infringed only by directcopying.

• In addition to registered design right, EU hasunregistered right for designs first disclosed inEU which runs for three years from firstmarketing but is infringed only by directcopying.

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European UnionRegistered Design Right

• Substantive examination? No• Terms of protection?

– Max 25 years renewal every five years.

• Grace period?– One year for own disclosures

• Protection partial designs; use of broken lines?– Allowed in practice legal basis not quite clear

• Substantive examination? No• Terms of protection?

– Max 25 years renewal every five years.

• Grace period?– One year for own disclosures

• Protection partial designs; use of broken lines?– Allowed in practice legal basis not quite clear

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• Use of color?– Permitted, black and white drawings cover design

irrespective of color of alleged infringement

• Multiple designs are permitted but only amaximum of seven figures per design

• Problems in including any explanation of whatis being shown– article 4(1)(c) of the Implementing Regulation:“no explanatory text, wording or symbols, otherthan the indication ‘top’ … may be displayed”.

• Use of color?– Permitted, black and white drawings cover design

irrespective of color of alleged infringement

• Multiple designs are permitted but only amaximum of seven figures per design

• Problems in including any explanation of whatis being shown– article 4(1)(c) of the Implementing Regulation:“no explanatory text, wording or symbols, otherthan the indication ‘top’ … may be displayed”.

66

B. Design Protection• Registered Community Design (RCD)

-Council Regulation (EC) No. 6/20021) Individual character2) Constitutes the design of an industrial item

(incorporating product)

B. Design Protection• Registered Community Design (RCD)

-Council Regulation (EC) No. 6/20021) Individual character2) Constitutes the design of an industrial item

(incorporating product)

67

As noted recently by the UKSupreme Court in PMS v. Magmatic• Where an applicant wishes to exclude features

which are shown in the representation forexplanatory purposes only, but do not formpart of the claimed design, he may disclaimthose auxiliary features by depicting them inbroken lines (for drawings) or by means ofcolouring them (for black and white drawingsor photos) or encircling them (for any drawingor photo).”

• 32.

• Where an applicant wishes to exclude featureswhich are shown in the representation forexplanatory purposes only, but do not formpart of the claimed design, he may disclaimthose auxiliary features by depicting them inbroken lines (for drawings) or by means ofcolouring them (for black and white drawingsor photos) or encircling them (for any drawingor photo).”

• 32. 68

C. Application - RCD• Must be incorporated in a product• Allows the use of broken lines• Animated icons protected

<RCD 001158471-0001, for Animated Graphic User Interfaces>

C. Application - RCD• Must be incorporated in a product• Allows the use of broken lines• Animated icons protected

<RCD 001158471-0001, for Animated Graphic User Interfaces>

69

<RCD 000505532-0001, for Portable Telephone Having IndicatedImage Design Displayed Thereon>

70

D. Enforcement• Council Regulation (EC) No. 6/2002 Article 19

“A registered Community design shall confer on its holderthe exclusive right to use it and to prevent any third partynot having his consent from using it.”

• The test for infringementWhether the design objected to produces the same“overall impression” on the informed user

D. Enforcement• Council Regulation (EC) No. 6/2002 Article 19

“A registered Community design shall confer on its holderthe exclusive right to use it and to prevent any third partynot having his consent from using it.”

• The test for infringementWhether the design objected to produces the same“overall impression” on the informed user

71

E. Limitations – RCD• Becomes unavailable within one year of product

launch Loses novelty

• Only covers the appearance• Cannot capture the interactivity between user and

machine

E. Limitations – RCD• Becomes unavailable within one year of product

launch Loses novelty

• Only covers the appearance• Cannot capture the interactivity between user and

machine

72

China• Substantive examination? Yes• Terms of protection? 20 years from filing date• Grace period? No• Protection partial designs; use of broken lines?

– Not allowed at present could be permitted ifproposed Fourth Amendment to Chinese patenLaw is enacted.

• Use of color? Yes

• Substantive examination? Yes• Terms of protection? 20 years from filing date• Grace period? No• Protection partial designs; use of broken lines?

– Not allowed at present could be permitted ifproposed Fourth Amendment to Chinese patenLaw is enacted.


73

China

A. IP Protection• Eligible for design patent

- SIPO Revised Examination Guide (1 May 2014)1) Incorporated into a product2) Associated with “human machine interaction”3) Closely related to carrying out product functions

A. IP Protection• Eligible for design patent

- SIPO Revised Examination Guide (1 May 2014)1) Incorporated into a product2) Associated with “human machine interaction”3) Closely related to carrying out product functions

74

B. Scope• Items excluded by SIPO

o Game interfaceo The pattern (shown on a display device) having no

association with human computer interaction orcarrying out the device functions

- Wallpapers on electronic screens- Images in the process of turn-on or turn-off- Layout of webpage

B. Scope• Items excluded by SIPO

o Game interfaceo The pattern (shown on a display device) having no

association with human computer interaction orcarrying out the device functions

- Wallpapers on electronic screens- Images in the process of turn-on or turn-off- Layout of webpage

75

C. Application• Submit the view(s) of the overall product

indicating the location of the GUI• Allows moving images• Use of Broken line not permitted

C. Application• Submit the view(s) of the overall product

indicating the location of the GUI• Allows moving images• Use of Broken line not permitted

76

D. Limitations• Is partial protection possible in China?Yes, if GUI is the essential feature of the application,

the design of GUI shown in the views shall apply.Prevents infringers from getting around the protection

scope by making some changes in the device

• Narrow scope

D. Limitations• Is partial protection possible in China?Yes, if GUI is the essential feature of the application,

the design of GUI shown in the views shall apply.Prevents infringers from getting around the protection

scope by making some changes in the device

• Narrow scope

77

Republic of Korea

• Substantive examination?– No, subject to 3rd party petition later.

• Terms of protection?– Application filed before 1 July 2014: 15 years from

registration date; application filed on 1 July 2014and after: 20 years from filing date

• Grace period?– Yes, 6 months preceding filing date

• Substantive examination?– No, subject to 3rd party petition later.

• Terms of protection?– Application filed before 1 July 2014: 15 years from

registration date; application filed on 1 July 2014and after: 20 years from filing date

• Grace period?– Yes, 6 months preceding filing date

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• Protection partial designs; use of broken lines?– Yes




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A. IP Protection-Design Protection Act (2003) created “computer-generated graphic design”

1) Related to the function of an article2) Embedded on the article, either on the whole or

on a display screen The recent revision allows a design to be projected on

a surface, e.g. automobile windshield.

A. IP Protection-Design Protection Act (2003) created “computer-generated graphic design”

1) Related to the function of an article2) Embedded on the article, either on the whole or

on a display screen The recent revision allows a design to be projected on

a surface, e.g. automobile windshield.

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B. Scope1) GUI for website, computer software, mobile device, and

general appliances2) Icon for software application, a graphic component of

GUI, either individually or as a set of tools3) Various graphic imagery including screensaver, device

usage monitor (eg. battery), graphic character, emoji, and3D animation

B. Scope1) GUI for website, computer software, mobile device, and

general appliances2) Icon for software application, a graphic component of

GUI, either individually or as a set of tools3) Various graphic imagery including screensaver, device

usage monitor (eg. battery), graphic character, emoji, and3D animation

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< Registered Design 30-20140002233 for Website>

< Registered Design 30-20030027216 for Emoji>

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C. Application• allows the use of dotted linesPartial protectionOne partial design component at a time, unless two or

more components are structurally coherentUse dash-dot (-·-·-) lines for undetermined boundary of

registered and unregistered portion

• Moving images and designs are protected

C. Application• allows the use of dotted linesPartial protectionOne partial design component at a time, unless two or

more components are structurally coherentUse dash-dot (-·-·-) lines for undetermined boundary of

registered and unregistered portion

• Moving images and designs are protected

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D. Advantage• KIPO’s expedited registration process

- Takes around three months, subject to ex parte reviewlater.- Only examined based on elements such as industrialapplicability and enablement.

D. Advantage• KIPO’s expedited registration process

- Takes around three months, subject to ex parte reviewlater.- Only examined based on elements such as industrialapplicability and enablement.

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Australia

• Substantive examination?– Yes, only when specifically requested

• Terms of protection? 10 years from filing date• Grace period? No• Protection partial designs; use of broken lines?

– Yes


• Substantive examination?– Yes, only when specifically requested

• Terms of protection? 10 years from filing date• Grace period? No• Protection partial designs; use of broken lines?

– Yes


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AustraliaA. IP Protection

-The Australian Designs Act 2003

• A registered design for a “display screen” or“electronic device” or the like, which isrepresented as displaying GUI features.

• Must be incorporated in a product.• The Designs Office officially views that GUIs

should not be afforded design protection.

A. IP Protection-The Australian Designs Act 2003

• A registered design for a “display screen” or“electronic device” or the like, which isrepresented as displaying GUI features.

• Must be incorporated in a product.• The Designs Office officially views that GUIs

should not be afforded design protection.

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B. Application1) Formalities check2) Registration3) Substantive examination Only performed if specifically requested Becomes enforceable against third parties Very few GUI related design registrations have been

examined and certified.

B. Application1) Formalities check2) Registration3) Substantive examination Only performed if specifically requested Becomes enforceable against third parties Very few GUI related design registrations have been

examined and certified.

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1) Formalities Check• Whether or not an application is for a design “in

relation to a product”Common objection by the Designs Office: the design is

not “thing that is manufactured or hand made”.Solution: File GUI designs in respect of “display

screens”, “electronic devices” or like devices which areconsidered “products”.

1) Formalities Check• Whether or not an application is for a design “in

relation to a product”Common objection by the Designs Office: the design is

not “thing that is manufactured or hand made”.Solution: File GUI designs in respect of “display

screens”, “electronic devices” or like devices which areconsidered “products”.

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2) Substantive Examination• Whether the design is new and distinctive when

compared against the prior art base• The product in question must be imagined in an

“at rest” state. What if an infringing product is imported without

being switched “on” until done so by an end user forprivate use?

Registered proprietors can argue that the offendingproduct has built into it all components required togenerate the GUI and accordingly infringes theregistered design.

2) Substantive Examination• Whether the design is new and distinctive when

compared against the prior art base• The product in question must be imagined in an

“at rest” state. What if an infringing product is imported without

being switched “on” until done so by an end user forprivate use?

Registered proprietors can argue that the offendingproduct has built into it all components required togenerate the GUI and accordingly infringes theregistered design.

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C. Infringement• The Designs Act Infringement test

• If certain activities are undertaken in relation to aproduct “which embodies a design which is identical to,or substantially similar in overall impression to, theregistered design”.

C. Infringement• The Designs Act Infringement test

• If certain activities are undertaken in relation to aproduct “which embodies a design which is identical to,or substantially similar in overall impression to, theregistered design”.

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Canada• Substantive examination? Yes

– classify the application according to the CanadianIndustrial Design Classification Standard

– review the application for conformity with theIndustrial Design Act and Regulations

– conduct a search of registered designs andpublished art to ensure the design is original

• Terms of protection?– 10 years from registration date

• Substantive examination? Yes– classify the application according to the Canadian

Industrial Design Classification Standard– review the application for conformity with the

Industrial Design Act and Regulations– conduct a search of registered designs and

published art to ensure the design is original

• Terms of protection?– 10 years from registration date

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• Grace period?– Yes, 1 year preceding filing date


• Use of color?– No

• Grace period?– Yes, 1 year preceding filing date


• Use of color?– No

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Canada

A. IP Protection- Industrial Design Act

• Protected under the category of a “pattern” or“ornament”

• The Manual of Patent Office Practice (MOPOP):GUI has to be mounted on a product that fallsunder the utility patent subject matter.

A. IP Protection- Industrial Design Act

• Protected under the category of a “pattern” or“ornament”

• The Manual of Patent Office Practice (MOPOP):GUI has to be mounted on a product that fallsunder the utility patent subject matter.

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B. Scope• “Type of interface for enabling a user to interact

with a computer or a computer-based device”- Icons, buttons, menus, toolbars and other graphical

screen elements

• Viewed by CIPO as not constituting a patentablecontribution to provide a technological solution toa practical problem:

- The specific arrangement of graphical elements on ascreen, or the visual design that defines a graphicaluser interface

B. Scope• “Type of interface for enabling a user to interact

with a computer or a computer-based device”- Icons, buttons, menus, toolbars and other graphical

screen elements

• Viewed by CIPO as not constituting a patentablecontribution to provide a technological solution toa practical problem:

- The specific arrangement of graphical elements on ascreen, or the visual design that defines a graphicaluser interface

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C. Application• The title of the application must identify the

finished article to which the electronic icon isapplied.

• CIPO allows the use of broken line for drawing theincorporated product.

C. Application• The title of the application must identify the

finished article to which the electronic icon isapplied.

• CIPO allows the use of broken line for drawing theincorporated product.

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Japan

• Substantive examination?– Yes, applicants may appeal.

• Terms of protection?– 20 years from registration

• Grace period?– Yes, 6 months preceding the filing/priority date

• Substantive examination?– Yes, applicants may appeal.

• Terms of protection?– 20 years from registration

• Grace period?– Yes, 6 months preceding the filing/priority date

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• Use of color?– Yes, although the applicant may apply either black

or white to them.


• Use of color?– Yes, although the applicant may apply either black

or white to them.

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JapanA. IP Protection

- Design Law Amendment (2006)

1) GUI must be Incorporated in a product thatcomplies with the definition of “product”according to Japan’s Design Law. Must be indispensable for the product functions.

2) Must be reserved in advance of themanufacturing of the product. No external memory or post-manufacture copy into

the product allowed.

A. IP Protection- Design Law Amendment (2006)

1) GUI must be Incorporated in a product thatcomplies with the definition of “product”according to Japan’s Design Law. Must be indispensable for the product functions.

2) Must be reserved in advance of themanufacturing of the product. No external memory or post-manufacture copy into

the product allowed.

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3) Must operate concurrently with the product. The display function of the product itself and being

displayed through a display device at the same time.

3) Must operate concurrently with the product. The display function of the product itself and being

displayed through a display device at the same time.

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B. Application• Allows partial protection drawn by broken lines• Scope: Extended to include products which rely on

external display devices, such as DVD players bythe 2006 amendmentHowever, the subject matter is still limited to

components that are able to assist the function of theproduct.

• Pending revision of Japanese Examiner'sExamination Manual, which will be in effect fromApril 1, 2016.

B. Application• Allows partial protection drawn by broken lines• Scope: Extended to include products which rely on

external display devices, such as DVD players bythe 2006 amendmentHowever, the subject matter is still limited to

components that are able to assist the function of theproduct.

• Pending revision of Japanese Examiner'sExamination Manual, which will be in effect fromApril 1, 2016.

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Thank You!

Feel Free to direct any questions you may have to:

Presenter: John Richards [email protected] +1.212.708.1800

www.ladas.com

Feel Free to direct any questions you may have to:

Presenter: John Richards [email protected] +1.212.708.1800

www.ladas.com

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