The SIPO issued a draft of the Guidelines for Patent Examination open for the public comments on October 22, 2013. The draft aims at bringing the GUI embodied in products eligible for design patents into protection. Below please find detailed descriptions by the SIPO, followed by the comments of WHD attorneys.

  1. Modification of the Chapter 3, Part I

1.1Modification of the Provisions concerning Non-patentable Situations for Design Patent

In the current guidelines, “the patterns as shown when the product is electrified, such as the patterns on the electronic watch dial, the patterns on the screen of mobile phone, software interface, and so on” are indicated as the situations ineligible for patent. Actually, the products and designs related to graphical user interface (hereinafter referred to as “GUI”) are also excluded from protection for designs in China. The modification includes two aspects, one is to delete the existing provision, that removes the obstacle for protecting the GUI embodied in a product as a design patent; the second is to adjust the definition of non-patentable situation to “pattern embodied in display devices, which have no association with human-computer interaction or carrying out the functions of the products“. This is because not all the images embodied in the display devices can be protected as patents. By taking two examples, wallpapers shown in electronic screen and pictures displayed in the process of turn-on or turn-off, which have no association with human-computer interaction or carrying out the functions of products; the layout design of web pages and game interfaces, which have no association with carrying out the functions of products. (Section 7.4)

WHD Comments:

As to the above proposed amendments, we think the definition of “human-computer interaction” should be further specified. By referring to practices in Japan, the designs for articles include those in a graphic image on a screen that is provided for use in the operation of the article (limited to the operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner. Therefore, we think, the GUI embodied in an article that is eligible for design patent protection can be limited to those directly correlate to the functions of the article. In such a way, the GUI which is merely surface ornamentation would be excluded from patent protection.  

1.2 Modification of the Provision Concerning Patterns

The current guidelines provide following provisions about patterns of products for designs: “The patterns of a product shall be fixed and visible, and not flickering or visible only under specific conditions”.

However, with the development of technology, industrial products depicting images that change in appearance during viewing are ever increasing. People are more familiar with those products as well. Therefore, the existing provision is no longer appropriate to the development of technology. On the contrary, it actually prevents innovative designs from patenting. Consequently, it needs to be changed. (Section 7.2)

WHD Comments:

In the draft, the above provision was deleted. We fully agree with that. The above provision actually makes a barrier to bring graphic images into patent protection. It is an important amendment in the draft.  

1.3 Addition of New Provisions about Drawings or Photographs of Designs

The protection scope of the patent right for design shall be determined by the design of the product as shown in the drawings or photographs.

Following is the new provision to be added:

“As to the designs for products having GUIs, the applicant should submit drawings or photographs that can clearly depict the design for which patent protection is sought. Therefore, the drawings or photographs submitted should contain the view(s) of overall product indicating the location of GUI. If the GUIs are moving images, the applicant should submit the above-mentioned overall product view showing the product at least one certain state. For the rest of the states, the applicant can only submit the views representing key frames. The overall product view(s) together with the views of different states should be able to uniquely determine the variation trend of the moving patterns/images (Section 4.2).”

WHD Comments:

The above proposed amendments refer to two points:

  1. General principle of the GUI eligible for patent protection:

It has been made clear in the proposed amendment that only the GUI embodied in products/items could be patented, not the GUI alone. But, the definition of “GUI” does need to be specified as well. For example, whether icons and/or combination of individual icons could be considered as a GUI for design patent protection? Normally, an individual icon will be regarded as ornamental image and is excluded from patent protection. However, whether a combination of individual icons which link closely to perform functions of the product is eligible for patent or not? We suggest involving the combination of icons as the GUI eligible for patent as long as it links closely to perform functions of the product.

  1. Requirements for drawings of the design for GUI

By referring to the practices in the US, “computer generated icons including images that change in appearance during viewing may be the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially, no ornamental aspects are attributed to the process or period in which one image changes into another”. By referring to the practices in Korea, if the shape, pattern, or color of a design is subject to change due to its special function or structure, and the design is not likely to be determined only based the still shot before and after its motion, without a description of its movement, then the design can be registered as a “moving design”. As to the moving design, the drawings should include six views and one perspective view of the still shot of the design and the moving design (standard position of the movement, trace of movement). Further, the description of the design should explain the movement. As to the draft, we think the requirements of drawings should be further detailed in the final version. For example, as to the “overall product view(s)”, how many views should be submitted? All of six sides should be submitted, or only the side view(s) showing the GUI is enough. More detail samples are preferable at this stage. In general, China may use for reference of the provisions in Korea, take the “moving design” as a special kind of design and make specific provisions to the drawings or photographs for such design.  

1.4 Addition of New Provisions about “Brief Description”.

According to the Patent Law, “Brief Description” may be used to interpret the design of the product as shown in the drawings or photographs. Following is the new provision to be added: “As to the design applications for products having a GUI, a description of the GUI should be included in the brief description to explain its use. If necessary, when the views cannot fully express the design sought for protection, the positions, interactive modes and altered states of the GUI should be further explained. (Section 4.3)”

WHD Comments:

The above provision is too general and therefore difficult to implement in practice. We do need more directions on how to prepare the description for the use of GUI. For moving images, whether the operations, functions, changing processes thereof also should be explained. The US has similar provisions and relative examples for reference. “A descriptive statement must be included in the specification describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown. Examples of such a descriptive statement are as follows: “The subject matter of this patent includes a process or period in which an image changes into another image. This process or period forms no part of the claimed design;” or “The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. The process or period in which one image transitions to another image forms no part of the claimed design;” or “The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. No ornamental aspects are associated with the process or period in which one image transitions to another image.”  

2. Modification of Chapter 5, Part IV

2.1 Addition of New Provisions about Judgment on whether Significant Differences between a Patented Design and Prior art can be found

Following is the new provision to be added: “As far as the product design having GUI, if the rest of the parts of the design concerned are regarded as common designs, the GUI shall be considered as having notable influence to the overall visual effect of the product.” There will be many design elements may get involved in the design of industrial products. Taking a mobile phone as an example, various kinds of adjustments and changes can be made in the shapes, the colors and the patterns thereof. Alternatively, it’s also possible to only make changes to the GUI embodied in the screen of the phone. It was found that many developers of GUI products would prefer to take common designs for the parts in addition to the GUI. Under this situation, when judging whether significant differences between a design patent for GUI with prior arts can be found, and if the rest of parts of the patent concerned are common designs, the changes and improvements to GUI would have more notable influences on the overall visual effect. (Section 6.1)

WHD Comments:

In the above proposed draft, the term “the rest of the parts” should be clarified. Does it refer to the display device in addition to the GUI or some parts of the GUI? According to the context, we suppose the term means the device (displayer) for showing the GUI. Obviously, this newly added provision takes the GUI part much more important than other parts of the whole product. We believe it would be quite practical in practice in the judgement of similarity between two designs. According to the current design patent system, a design for a part of a product, which could not be separated from the whole product, is still not applicable in China. Under this situation, when judging significant differences between a GUI design patent with prior arts, improving the importance of the changes in the GUI part is definitely a good choice for offering an appropriate protection to GUI designs.