Graphical user interface (GUI) designs were previously unpatentable subject matter in China, as they are visible only after the electronic devices on which they are stored are powered. However, with the publication of the revised Guidelines for Patent Examination (effective as of May 1 2014), the State Intellectual Property Office (SIPO) changed its practice and began to accept GUI design applications. Since then, both domestic and international applicants have been very active in seeking protection for their GUI designs. This article highlights how to effectively prosecute a GUI design application in China and bridge the gap between Chinese practice and that of other countries.

By May 1 2014 the SIPO received more than 1,400 applications for GUI designs. Recently, Qihu – the owner of the first Chinese GUI design patent – filed a patent infringement suit against Jiangmin before the Beijing IP Court, claiming that Jiangmin had used its design patent without authorisation and seeking Rmb15 million (approximately $2.5 million) in compensation.

However, since GUI design practice in China is relatively young and still developing, many points of uncertainty must be considered in both patent prosecution and enforcement. In addition, the Guidelines for Patent Examination are limited in scope and may thus be insufficient to foster understanding of GUI design protection. This situation is more challenging for foreign applicants, due to the differing practices in other countries. These differences could create serious problems in future prosecution and enforcement.

Patentable subject matter

According to Article 2 of the Patent Law, ‘design’ refers to any new design consisting of a shape, pattern or combination thereof, or the combination of a colour with the shape or pattern of a product, which creates an aesthetic impression and is fit for industrial application. Article 2 also provides that China’s design patent protects only designs on physical products. Therefore, pure GUI designs with no hardware are not patentable.

Applicants must show the hardware in the drawings or photographs when seeking protection for GUI designs. In practice, a single GUI can be applied to various devices. For example, a navigation software GUI may be applied to an iPhone, iPad or Android device. For applicants seeking to obtain as wide a scope of protection as possible, one strategy is to incorporate the different devices with identical or similar GUI designs into one application. In the application, the applicant must stipulate that the devices are similar because they include the same or similar GUI designs, which are the major novel design element. If the examiner allows this combination, the applicant will benefit from significant cost savings and a broad scope of protection for the GUI design. Another possible approach is that the applicant can file divisional applications later.

Chinese practice in context

The SIPO will accept a GUI design application with physical hardware only. This practice differs from that in many other jurisdictions. For example, the US Patent and Trademark Office generally allows a GUI design application to show merely the GUI design, without including specific devices. Under this system, a dotted rectangular outline may be used to illustrate the border of the GUI and to indicate the border of an electronic device.

This creates problems. Assuming that a Chinese design application claims priority to a US design application, where the applicant files a design application in China based on the US application, the drawings from the US application will be unacceptable, since pure GUI designs are not patentable and the SIPO requires a GUI design to be applied to hardware.

In this situation, the applicant would need to illustrate the hardware (eg, an iPhone, iPad, Android phone or smartwatch) on which the US drawing is based in order to meet the SIPO’s standards. This may also be problematic if the SIPO rejects the priority claim based on the drawings in the Chinese application being different from those in the US application. If the Chinese application cannot claim priority to the US application, the patentability of the granted Chinese design patent may be challenged easily, because the granted US patent and any public disclosure (including use) of the design between the US filing date and the Chinese filing date will become a prior design against the Chinese design patent.

To address this dilemma, applicants filing in the United States or other countries should incorporate drawings showing the hardware on which the GUI can be applied. These drawings may simply be for reference purposes, but will be helpful when filing a Chinese application with a priority claim.

For example, in a US application, in addition to the drawings of the GUI itself, the applicant may include drawings showing an iPhone, iPad, smartphone, GPS or any other electronic device with the GUI applied. When filing a design application in China, the applicant may select which hardware it intends to protect or simply combine several devices with identical or similar GUI designs in one application and file divisional applications later.

Another consideration is that dotted lines are allowed in a US design application, but are unacceptable according to Chinese practice. In general, these lines may be changed to solid lines to meet the SIPO’s standards. However, this may not be the case for certain GUI designs. For example, when using navigation software, the real-time ambient map is shown on the display. In a US design application, the real-time ambient map is shown in dotted lines, since it changes in real time. If these dotted lines are changed to solid lines, the design’s scope of protection will be significantly narrowed, making the patent right essentially meaningless. In this case, it is advisable to delete the dotted lines representing the real-time ambient map and use the design with the real-time ambient map in dotted lines as a reference.

Brief explanation in application

A brief explanation must be provided in a Chinese patent design application. According to Article 59.2 of the Patent Law, the extent of protection for a design patent is determined by the drawings or photographs provided and a brief explanation may be used to interpret the design of the product as shown. However, many practitioners pay insufficient attention to the brief explanation and treat it as routine. A GUI design application derives its uniqueness from the creativity of the GUI design itself, not from the specific device that is part of the application. As such, if an applicant can make full use of the brief explanation, this can be very helpful in obtaining more extensive protection of the patent.

In 2014, in an administrative litigation between Apple and the Patent Re-examination Board, the Beijing High Court pointed out that Apple’s GUI application was defective because it did not stipulate which part of the drawings was the GUI. Both Apple and the Patent Re-examination Board agreed that the average consumer could easily distinguish which part was the GUI design based on common sense. However, the court did not accept this opinion, despite the agreement of both parties. This demonstrates the importance of the brief explanation in clarifying the drawings and clearly indicating which part of the design is the actual GUI – otherwise, the granted design patent may be vulnerable later on.

In addition to indicating where the GUI is located on a product, it is advisable to identify:

  • the function of the GUI;
  • how the user interacts with the GUI; and
  • the changing status of the GUI (if any).

Failure to disclose this information may create problems in understanding the GUI design.

The standard for determining infringement of a design patent is to ascertain whether the same or similar designs are applied to the same or similar products. For example, if the allegedly infringing designs are identical or similar, but do not apply to the same or similar products in the assigned design patent, infringement cannot be established. As stated above, one GUI design patent may be limited to one specific device. If competitors copy the GUI design and apply it to another device, it may be difficult to establish infringement.

To overcome this problem, in the brief explanation the applicant should stipulate that the GUI in the design can be used on other types of common device. The novel design elements of a GUI are key in determining whether a design patent has been infringed with respect to its overall visual effects, in contrast to the device. The goal is to emphasise that the GUI is the essence of the design and that the device is merely a common carrier display platform.

Including a clear and comprehensive brief explanation may help the judge to understand the essence of the design and focus on the similarities of this essence during the infringement litigation.

Changing status of GUIs

According to the Guidelines for Patent Examination, the applicant must submit drawings showing the integral device with the GUI. If the GUI includes different dynamics and changing patterns, the applicant must submit drawings showing at least one status of the GUI and key frame drawings for other statuses. The submitted drawings must unambiguously show the progression of the dynamic pattern.

However, some foreign applications, serving as the priority basis, may use different statuses as different embodiments of one application. The Chinese examiner may reject the application citing lack of unity, because different statuses with different interfaces may look dissimilar and cannot be combined into one application as similar designs.

In order to overcome this defect, it is necessary to modify the foreign filing according to Chinese practice by indicating that the GUI has several changing statuses in addition to the starting status. In this case, it will be necessary to illustrate in the brief explanation how user interaction changes the status. This modification should preferably be made at the time of filing in China, rather than during prosecution. The examiner may regard the modification as exceeding the initial disclosure, in which case the different statuses shown in the different interfaces will have to be deleted from the application.

With respect to a design patent for a product with variable states, the Supreme Court’s latest judicial interpretation provides as follows:

  • Where the allegedly infringing design is identical or similar to the designs in every usage state shown in the figures of variable states, the courts shall find that the allegedly infringing design falls within the scope of protection of the patent right; and
  • Where the allegedly infringing design lacks the design in one of the usage states, or is neither identical nor similar thereto, the courts shall find that the allegedly infringing design does not fall within the scope of protection of the patent right.

Therefore, it is important to incorporate only key usage states into the design application, rather than every usage state or every frame. Otherwise, competitors may easily circumvent design patent protection by eliminating certain trivial usage states. If the applicant feels that one or more usage states or frames are very important and novel to the related software GUI, one or more independent applications may be filed on this basis. In this case, an allegedly infringing design will still fall within the scope of protection of the patent right, as long as it includes a claimed usage state or frame.

Comment

Patent protection for GUI designs is relatively new in China. It is crucial for applicants to understand how to successfully protect their designs. Two key elements of a successful application are understanding the differences between requirements in China and those in other jurisdictions and making full use of the available tools. Applicants should plan ahead and consider how each decision will affect the outcome of the application, so that priority claims are not rejected and do not cause subsequent delays. It is also important to make use of the brief explanation in the application to guide the examiner’s interpretation of the GUI design. Last but not least, it is vital to remember that the essence lies in the GUI design, not the devices on which the GUI was designed to be displayed.

Howard Hao

This article first appeared in IAM. For further information please visit www.iam-media.com.