Design patent protection of graphical user interface

By Frank Liu and Ding Xiaodi, Shanghai Pacific Legal
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How to thoroughly protect the intellectual property rights of new products is a common head-scratcher among businesses. Many such new products involve the use of a graphical user interface (GUI). Generally, a GUI is a way of displaying an interface that is used for human-computer interaction and/or information display.

Before 2014, however, the Patent Examination Guidelines explicitly excluded graphic patterns displayed only when powered on from the scope of patent protection. Thus, the protection accorded to the IP rights of GUIs mainly extended to copyright at that time.

Frank Liu, Shanghai Pacific Legal
Frank Liu
Partner
Shanghai Pacific Legal

With computer technologies, especially the development of smart device apps, popularised and evolving, GUIs now play an increasingly important role, which has led to demands for greater protection of computer GUIs. China’s Patent Examination Guidelines were amended in 2014 to incorporate the GUI of electronic products into the protection scope of design patents. Nevertheless, there are notable differences between GUIs and ordinary designs.

This article discusses GUI protection from a practical standpoint, providing businesses with a clear and actionable reference for the protection of IP rights.

Patent or copyright?

Copyright enjoys a longer period of protection, while design patents provide a stronger proof of rights in defence and greater enforceability in practice. Copyright establishment, in contrast, lacks the compulsory administrative examination and publicity procedures, while exacting a higher burden of proof as to the right basis when enforcing copyrights.

Considering that GUIs tend to enter and exit the market rather rapidly, the 15-year protection period for design patents may offer sufficient protection. The applicant may consider applying for design patent protection prior to the GUI’s publication while retaining copyright-related evidence or seeking copyright registration. During the 15-year protection of design patents, defence of GUI IP rights can be more smoothly conducted by applying for design patents, but after the protection period provided by the design patent expires, the copyright route is still available when necessary.

Establishment of design patent

Ding Xiaodi
Ding Xiaodi
Senior Associate
Shanghai Pacific Legal

When GUIs were initially included in the scope of design patent protection, they were often filed with a carrier product (such as a computer display or a mobile phone). Later, with the China National Intellectual Property Administration’s view on the protection of GUI design evolving with the times, the concept of “partial design” was introduced by the revised Patent Law, thus providing more possibilities for the protection of GUI-related intellectual property through design patents.

Currently, applicants may apply for patents for a GUI as an overall design or a partial design. If both the GUI and the physical product to which it is applied have design innovations, application may be made for a combination of the GUI and the product.

If the design innovation is solely relevant to the GUI itself, but the applicant seeks protection as an overall design patent, at least a front projection view of the product to which the GUI is applied should be provided. If the innovation lies only in the GUI design, the authors suggest applying for a partial design patent.

Patent infringement rules

In the early days when GUIs were protected by design patents, the courts still adopted general rules for design infringement due to a lack of referable rules. As mentioned, the GUI design patent initially included both the GUI and the product to which it applied. Therefore, the court would also take into account the characteristics of the physical product at that time.

For example, in the very first GUI design patent infringement case in China, filed by Qihu Technology and Qizhi Software (Beijing) against Jiangmin New Science Technology, the Beijing Intellectual Property Court held, in late 2017, that the computer with the GUI in the suit limited the scope of patent rights protection, and rejected the plaintiff’s claim. This court decision significantly narrowed the scope of GUI design patents and weakened their protection.

With the rules for GUI design protection increasingly improved, the courts have gradually taken a more flexible approach and developed a set of rules appropriate for the features of GUI design patents.

In Kingsoft v Mengjia regarding a GUI design infringement in an input method editor, the Shanghai High People’s Court upheld the first-instance judgment of the Shanghai Intellectual Property Court in 2022.

In this case, the court focused on the comparison between the allegedly infringing GUI and the patented GUI in the suit in terms of the overall design and dynamic change process, as well as whether there was any material difference in the overall visual effect between the two. However, the comparison excluded the mobile phone’s appearance, which as customary design has no material effect on the overall design.

This seems to suggest that, in current judicial practice, if the design elements concern the GUI itself, the scope of patentability lies principally in the graphically expressed GUI design, with protection extending to fields identical or similar to the physical product, or other products for which the GUI interaction design and functions are realised in the same way.

GUIs are a window for interaction between businesses and consumers, and a distinguishable GUI design is therefore one of the key aspects that sets a firm apart from its competitors. In addition to conventional copyright protection, given the novelty requirement for GUI design, businesses should apply for the protection of design patents before launching the relevant interactive interface, thus achieving comprehensive protection of IP rights for the GUI.

Frank Liu is a partner and Ding Xiaodi is a senior associate at Shanghai Pacific Legal

Room 2709, 27/F, Plaza 66 II
1266 Nanjing Road West
Shanghai 200040, China
Tel: +86 21 6086 0199
Fax: +86 21 6086 0111
E-mail: frank.liu@shanghaipacificlegal.com
xiaodi.ding@shanghaipacificlegal.com
www.shanghaipacificlegal.com

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