Patent protection for software in China is fairly strong, and as this blog has chronicled over the last few years it has gotten stronger still. But when it comes to the design and look of software, and how users interact with it, a recent Beijing IP Court ruling suggests creators may face an uphill battle in asserting their rights against copycats.

Graphical user interfaces (GUIs) are a relatively new category under China’s design patent regime. But they have been a fast-growing field, as many of the country’s leading lights in tech are software-first companies. In the increasingly competitive smartphone field, operating system and app design are key battlegrounds between domestic players.

But in the first-ever infringement case involving a GUI patent, the plaintiff has come up short. Not only that, the Beijing IP Court’s decision suggests a few takeaways that may put significant downward pressure on existing GUI patent values. The GUI design patent been held to protect only the GUI in combination with hardware (rather than software alone). And stopping an infringer is going to require going after someone who actually sells a hardware product (not, for example a seller who distributes software through an app store).

With more on the case, as well as how existing GUI patent owners and future GUI patent applicants should adjust their strategies, here are Ran Wang and Xiaoyan Feng of Liu Shen & Associates in Beijing:

The “product with a graphical user interface (GUI) was brought under the scope of design patent protection in China from May 1st, 2014. However, what is protected by these GUI design patents is still uncertain. That is why Qizhi Software vs. Jiangmin New Tech Ltd, the first decision on GUI infringement, has been widely discussed.

In this first case, the court’s answer to this question emphasised the significance of the “product” in a product with GUI design patent, clearly delineated the protection scope of the GUI design patent as the product plus the GUI (but not the GUI alone), and gave guidance on the enforcement of GUI design patents, ruling that without direct infringement, making software including the protected GUI would not constitute contributory infringement.

The plaintiff, Qizhi Software Co., a GUI design patent owner, filed a lawsuit against Jiangmin New Tech Ltd. before the Beijing IP Court, accusing the defendant of making and distributing a computer optimising software with a GUI identical to the plaintiff’s protected GUI design on the web for end users’ download.

On December 25, 2017, the Beijing IP Court issued its decision in this case. The court held that since there is no specific infringement determination rule for GUI design patent, a general rule shall be applied. Therefore, in this case, like in other design patent cases, the court took the position that the subject to be protected by a GUI design patent is still a product on which the GUI is applied, rather than the GUI itself. Therefore, in this case, the plaintiff has right to prohibit others to use a same or similar GUI design only on a computer or computer-like product—software itself, even software with a GUI identical or similar to the protected GUI, would not fall within the protection scope of the design patent, because the software does not belong to the same product catalog as the subject of the patent – a computer. By this rule, the defendant, Jiangmin New Tech Ltd, who made and distributed the accused software, would not directly infringe the GUI design patent.

In addition, the court held that only when direct infringement exists can contributory infringement be established. In this case, since the end user was only conducted to download the accused software on his computer, and this did not involve making, selling or offering to sell the computer, the court held there was no direct infringement. Therefore, although the defendant distributed software which may create the protected GUI on a computer screen, it would not be liable for contributory infringement, due to lack of direct infringement. Based on the above reasoning, the court rejected all the plaintiff’s claims.

In this decision, the court clearly announced that obtaining a GUI design patent right of “product with a graphical user interface” in China does not mean that the graphical user interface itself is independently protected. The GUI must be protected in combination with the product on which the GUI is applied—no product, no protection.

The decision will definitely increase the burden on patentees seeking to enforce GUI design patents. On one hand, as the software creating the protected GUI would not fall within the protection scope of the GUI design patent, the patentee cannot sue the software copiers by direct infringement. On the other hand, the distribution manner of software is currently changing from business to business to business to consumer—software makers interface with end users directly by putting their software in online app stores, from which it is downloaded directly to a computer. In this situation, even if copied software includes the protected GUI, the copier would not be liable for patent infringement as there is no direct infringement.

In view of this decision, our suggestions for applicants and patentees would be as follows:

Applicants: For a single GUI design, file separate design applications for various products, if suitable. For example, the applicant may file a design patent for a mobile phone with the GUI design, a tablet computer with the GUI design, a desktop computer with the GUI design, and so on, so that all the products which will potentially use the protected GUI will be covered. All these designs may be filed in one application as similar designs, and may be divided as requested by the examiner in the future.

Patentees: As end use would not constitute patent infringement and using a design patent would not constitute patent infringement either, the patentee has to collect infringing evidence from a person or entity who makes, sells, offers to sell, or imports the protected product (in this case, for example, a computer) which, at the time of being made, sold or imported, must have been installed the accused software to create the protected GUI. Considering the product and the software are often made by two different entities, i.e. a software maker and a hardware maker, a potential infringer would be a product seller who sells products pre-installed with the accused software, and the patentee may file a lawsuit against the seller and the software maker for joint infringement.