On April 20th 2015 in Chong Qing at a National Judicial Courts IPR Protection Event, China’s Supreme People’s Court announced the top 10 innovative intellectual rights litigation cases. One of the cases involved Apple against the State Intellectual Property Office (SIPO) Reexamination Board, where Apple brought the case to administrative litigation to counter SIPO Reexamination Board’s decision of rejecting Apple from registering design patent for icons. 

The main focus of the case is to decide whether icons or graphical user interface can be registered for design patent in China.

Apple filed a design patent application on July 26th 2010 for a portable display device with graphical user interface. However, pursuant to the Patent Examination Guidelines, patterns that are displayed only when the device is powered on, such as icons, are not patentable. Thus, SIPO denied Apple’s application. Apple filed an appeal with the Reexamination Board, but the Board sustained the rejection decision. Apple then filed for the administrative litigation.

In the first instance, the Beijing First Intermediate People’s Court believed that icons, although being able to display only when the portable electronic device is turned on, are still a design for the overall appearance of the portable device, which meets both requirements of industrial applicability and aesthetic appeal as a design patent. The First Intermediate Court then granted Apple the design patent protection for icons . The Reexamination Board appealed, but was overruled in the second instance at Beijing High Court.

The Courts deemed that whether a graphic user interface is patentable or not depends on the Patent Law, not the Examination Guidelines. The Subparagraph 4 of Article 2 of the Patent Law declares, “Designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.” Icons and graphical user interface satisfies such definition of designs. It is not only a dominant element and an integral component of the entire display device’s exterior design, but it also sufficiently sustains both industrial application and aesthetic appeal. Therefore, icons are deemed patentable.

Granting icons and GUI designs with design patent protection is an international trend. SIPO has amended the Patent Examination Guidelines and put into effect on May 1st 2014, making graphical user interface patentable. 

[Source: Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting website]