The Beijing Intellectual Property Court recently issued its judgment in the first-in-China infringement suit involving a design patent on GUI, Qihu v. Jiangmin. The court ruled against the patent owner Qihu on the grounds that its design patent as granted is actually directed to a "computer" which thus cannot be effectively enforce against the software product distributed by Jiangmin.

The judgment, if upheld in appeal, would greatly diminish the practical value of Chinese design patents granted on GUI, especially those granted immediately after China first allowed the registration of such patents in May 2014.

The key findings of the judgment is that both the title of the subject patent No. 201430329167.3 and the subject product as shown in the drawings are directed to a computer, and thus the protection scope of this patent is limited to a computer. When the defendant's product in dispute is software, the court finds no infringement on the grounds that a software product is not identical or similar to a computer.

Direct implication

Since SIPO first allowed design patents on GUI in May 2014, it still required that the title be toward a hardware product like a computer or a mobile phone and the drawings show such a hardware product in solid lines. At the first stage, SIPO strictly enforced such requirement toward the first patents filed. This judgment immediately calls into question the enforceability of these early patents.

After a while, in response to intense lobbying from various stakeholders, SIPO slightly relaxed its rules to allow such titles as "Graphic User Interface for a Mobile Phone/Computer" or "Screen Displays for a Mobile Phone/Computer", which arguably are focused on the GUI per se instead of the hardware product. But meanwhile SIPO still insists on the other requirement that the drawings show the hardware product in solid lines. Logic of this judgment may not squarely apply to such newer patents, but their enforceability is still questionable given the style of their drawings.

Toward the future

The judgment, as can be imagined, has triggered intense discussions. It casts severe doubt on the actual value of GUI design patents that have been granted. At most, they can be enforced against only mobile phone/computer manufacturers and software pre-installed on the phones/computers.

A possible solution as commonly discussed is to allow partial designs, as China is considering in the current draft amendments to the Patent Law. But this solution is still incomplete when the requirement of a hardware product is still there.

A more complete solution is to broaden the definition of "product" to include software. A poignant criticism has been directed toward SIPO that its focus on hardware products shows that its mentality still dwells in the age of mechanical industries, whereas the larger society has moved into the digital age. Many cite Locarno subclass 14-04 for "Screen Displays and Icons" as an comparative example that the international community has completed this transition. If more local software companies join the lobbying effort, SIPO may be willing to accept this policy.