Design of product incorporating Graphic User Interface (GUI) becomes protectable by design patent in China as of May 1, 2014.  In May, more than 2500 GUI design applications filed, and over 1400 of them were filed on the day of May 1.

In view of the structure of the applicants of the applications filed in May, the vast majority are domestic applicants, of which more than 70% are enterprises. In view of the fields of the products where the GUI is applied, most applications are for a smart phone or a computer incorporating GUI, which accounts for more than 80% of the applications.

For some questions in filing GUI design applications, the director of the Design Patent Examination Department of the State Intellectual Property Office, Lin, Xiaoyue gave his answers.

Q1: What problem is most common in the already filed GUI applications?

(Answer) On the whole, the most common problem is that the GUI design is not indicated clearly and completely. "Unclear indication" usually refers to lack of necessary views and explanations, for example, lack of necessary view or explanation of usage state makes it difficult to judge the content indicated by the drawings or the photographs or whether the indicated content is patentable subject matter. To meet the "clearly indication" requirement, both the applicant and attorney shall carefully examine whether the submitted views and brief explanation indicate enough design information before submitting the application.

Q2: Not all of the GUI designs are protectable by the design patents, how to judge this during the examination?

(Answer) In the already filed applications, there are indeed some GUI designs that cannot be protected by design patent. Although the Guidelines for Patent Examination has clear provisions, there are still difficulties in judging the subject matter protectable or not, for example, e.g., in the judgment of graphic and literal layout of web page and application of webpage, in the judgment of game image and software interface. Therefore, in order to have a granted design patent and get an effective protection, the applicants shall make most efforts to clearly indicate information such as design, use and interaction manner of the GUI through drawings or photographs and brief explanation, to facilitate the examiner to judge and to avoid uncertainty in the judgment of protectable subject matter.

Some applicants may consider that it is hard to differentiate game image and software interface. In the practical examination, the examiner will determine this according to name of the product incorporating the GUI, the drawings or the photographs and the brief explanation, and in combination with common knowledge in the GUI design field.

Q3: Whether the design of a single icon can be protected by a design patent?

(Answer) The design of icon is protected as an element in a product incorporating a design. The icon is merely an element constituting an interface and the interface is protected with a product as a whole. Therefore, under the principle of overall observation and comprehensive judgment, the protection is limited if the applicant desires to protect the pattern of the icon alone. This problem is due to the fact that there is no component protection for design patent in China. Similar problem also exists in other design products. For example, an applicant has a new design for a handle of a cup. But currently, it is impossible to protect the handle alone by a design patent, so the applicant has to combine the handle with the cup and seeks for protection of the whole cup design. Of course, such protection is not sufficient for the innovation of the component design.

At present, there is another way for protecting the pattern of an icon alone, for example, through the trademark application.

Q4: whether a GUI layout is protectable by a design patent?

(Answer) In the already filed applications, some attorneys and applicants submitted only the design of a GUI layout to obtain a larger protection scope. The GUI layout merely shows layout of interface elements but does not show detailed design of each element. For example, in an interface containing multiple icons, the patterns of the icons are all deleted and merely a frame denoting the position of each icon is reserved. Based on general understanding, the protection scope of the GUI layout is relatively broad, i.e., without considering the specific design of each element, as long as the layout of another design is the same as that of the present patent, this design will fall into the protection scope of the present patent. But from an objective point, the layout is only part of the overall design of the interface, the applications for which are similar to request of component protection to some extent, which does not conform to the principle of overall protection in China and also does not clearly indicate the design of the interface. Therefore, in practical examination, a product incorporating the design of merely a layout is not protectable by a design patent.

Q5: How to judge similar designs in GUI applications?

(Answer) Under the principle of overall protection of the design patent, the principle for judging similar GUI designs is also overall observation and comprehensive judgment, i.e., both the products and the GUI designs shall be similar. In practice, some applicants file an application involving similar designs by combining the same GUI design with different designs of a product to have a larger protection scope. For this kind of application, if the designs of the product are similar, they may be combined into one application as similar designs. If the designs of the product have a relatively large difference, the examiner will request the applicant to divide the application.