AIPPI 2017 - Study Question - Protection of graphical user interfaces
Study Question
Submission date: May 8, 2017
Sarah MATHESON, Reporter General
Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General
Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General
Protection of graphical user interfaces
Responsible Reporter: Yusuke INUI
National/Regional Group / United States of AmericaContributors name(s) / Kelly Hyndman and Justin Cassell Co-Chairs, John Bird, Kelly Burris, Chris Carani, William Nixon, David Postolski, Ryan Pool, John Wright
e-Mail contact /
I. Current law and practice
Patents
1. Can GUIs generally be protected by patents?
If no, please answer questions 1.1, if yes, please go to question 2
Yes
Please Explain
GUIs can be protected by utility patents just as any other software-related inventions may be patented as long as the claimed subject matter meets the current standards for patent eligibility, as well as the conditions for patentability set forth in 35 U.S.C. § 102, 103, and 112.
To be patent eligible, a claim to a GUI must meet the requirements of 35 U.S.C. § 101, while avoiding the judicial exceptions to §101. See, e.g., Alice Corporation Pty, Ltd. v. CLS Bank International, et al., 573 U.S. ___, 134 S.Ct. 2347(2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), Bilski v. Kappos, 561 U.S. 593 (2010).
Avoiding the abstract idea exception to §101, for example, can present a hurdle in the U.S., owing at least in part to the nature of many GUIs as an abstraction of underlying software functionality. However, where the GUI claim is directed to a specific improvement to the way computers operate, the claim may avoid the abstract idea exception. See, e.g., Trading Technologies Int’l v. CQG, ___ Fed.Appx. ___, 2017 WL 192716 (Fed. Cir. Jan. 18, 2017)( non-precedential)
Even if the GUI claim is found to be directed to an abstract idea, it can still qualify for utility patent protection when the particular elements of the claim, considered individually or as an ordered combination, add enough to transform the nature of the claim from an abstract idea into patent-eligible subject matter. SeeMayo, 566 U.S. at 72; Diamond v. Diehr, 450 U.S. 175, 191-192 (1981). According to the Supreme Court’s decision in Alice, 134 S.Ct. at 2353, the balance of the claim should amount to “significantly more” than the abstract idea.
Whether a GUI is protectable as a utility patent will therefore depend on what a specific GUI does and how the GUI claim is written. See, e.g., example 23 in the USPTO’s Appendix to the July 2015 Update: Subject Matter Eligibility which acknowledged a GUI as patent eligible because it permitted textual information to be dynamically relocated based upon an overlap condition. This feature improved a computer’s ability to display information and interact with a user.
U.S. design patent protection is discussed under "Design Rights," below.
1.1. If GUIs cannot be protected by patents per se, are any types or aspects of GUIs protectable by patents?
2. If any type or aspect of GUIs are protectable by patents, under what conditions and to what extent are those types or aspects of GUIs considered to be within the scope of patentable subject matter?
See Answer to Question 1 above.
3. If yes, do the statutory provisions, case law or judicial or administrative practice require specific claim formats for any patent protection? If yes, what claim formats are available for protecting GUIs?
No
Please Explain
No specific claim format is required by statute. In practice, claim formats useful in seeking the protection of a software-related invention are useful in seeking utility patent protection for GUIs.
4. Is any physical feature required in a claim as a pre-requisite for patentability of a GUI?
No
Please Explain
Whether a physical feature is required depends on the form of the claim. For example, United States law does not necessarily require that a method claim include a physical feature. Other claim forms, such as the apparatus claim form, do require a physical feature. In general, GUI claims for utility patents typically include at least some aspects of the physical features of the user interface environment in which the GUI is presented.
5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI?
There is no special treatment for GUIs in this respect. Claims containing limitations directed to the user’s mental activities may be rejected for lack of statutory subject matter (under 35 U.S.C. §101) and/or lack of definiteness (under 35 U.S.C. § 112).
If the claimed GUI is directed to an abstract idea without significantly more, as might be the case where the claimed GUI involves a task that is done by user's mental activities, the claimed GUI may be rejected for lack of statutory subject matter. SeeDietGoal Innovations LLC v. Bravo Media LLC, 599 Fed. Appx. 956 (Fed. Cir. Apr. 8, 2015).
When the recitation of the user’s mental activity for the claimed GUI does not identify the scope of the invention with reasonable certainty, the claimed GUI may be rejected for lack of definiteness. Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
Design rights
6. Can GUIs generally be protected by design rights?
If no, please answer questions 6.1, if yes, please go to question 7
Yes
Please Explain
In 1996, the USPTO created guidelines for the protection of GUIs based on the decision in Ex Parte Strijland, 26 USPQ2d 1259 (BPAI 1992). GUIs are eligible statutory subject matter, provided that the GUI design or surface ornamentation is shown with some portion of a display or other article of manufacture. To satisfy the “article of manufacture” requirement of 35 U.S.C. § 171, the claim of the design right typically is directed to a “display screen.” For example, a proper claim for the design right might read “Display Screen With Graphical User Interface,” or “Display Screen With Icon.” A design patent claim that simply states “Graphical User Interface” will be rejected for failing to claim an article of manufacture.
U.S. law requires that design patents include a claim in a particular format: such as "I/we claim the ornamental design for the article (specifying name) as shown, or as shown and described." Only one claim is permitted per design patent. 37 C.F.R §1.153.
6.1. If not, are any types or aspects of GUIs protectable by design rights?
7. If any type or aspect of GUIs are protectable by design rights, under what conditions and to what extent are those types or aspects of GUIs protectable?
See responses to Questions 7.a through 7.e below.
7.a. In particular is a GUI that temporarily appears on a screen of an electronic device considered a "design" that is protectable by design rights?
Yes
Please Explain
Yes, see "Changeable Computer Generated Icons " in response to Question 7d.
7.b. In particular is a GUI protectable by design rights independently from the design of the electronic device itself?
Yes
Please Explain
While a claim for a GUI must include a display screen, or article of manufacture, it is permissible to disclaim portions of the design of the electronic device itself through the use of broken lines. See supra at Question 6; see alsoEx Parte Strijland, 26 USPQ2d 1259 (BPAI 1992).
7.c. In particular are smaller elements included in a GUI (e.g. icons, slide buttons) protectable by design rights independently from the GUI as a whole?
Yes
Please Explain
Partial designs are permitted. Portions of the GUI design to be claimed can be indicated, in the drawings, using solid lines; the other elements of the GUI design to be disclaimed can be indicated through the use of broken lines.
7.d. In particular are movements or screen transitions in a GUI protectable by design rights?
Yes
Please Explain
See, e.g., U.S. Design Patent D613,300 "Animated Graphical User Interface for a Display Screen or Portion Thereof." The USPTO (in the U.S. Manual of Patent Examination and Proceture (MPEP) §1504.01(A), IV, "Changeable Computer Generated Icons") requires the specification to state that "the process or period in which one image transitions to another forms no part of the claimed design."
7.e. In particular are there any other types or aspects of GUIs protectable by design rights? If so, under what conditions and to what extent?
Yes
Please Explain
Other aspects of GUIs protectable by design rights include color, static and dynamic appearances of graphical content including icons, fonts, and transitions (e.g., rearrangement in the event of change from portrait to landscape modes), status indicators (e.g., icon displayed in the event of system wait), etc. This is under the condition that the applicant direct the claim to an article of manufacture. (e.g. a display screen); seealso MPEP 1504.01(a).
Copyright
8. Can GUIs generally be protected by copyright?
If no, please answer questions 8.1, if yes, please go to question 9
Yes
Please Explain
Copyright law can be used to protect GUIs. Protection is available for individual elements of a GUI or icon, and for compilations of individual elements as a whole in the GUI or icon, provided the elements and/or compilations are sufficiently original expressions. Current US copyright law might not provide strong protection for a GUI, since many elements in the GUI may be considered unprotectable as lacking sufficient original expression and therefore the scope of copyright protection afforded a GUI may be narrow. Protection of ‘non-literal elements’ of a software program, like graphical user interfaces, has been complicated and controversial. Courts have held that the literal elements of a computer program may be copyrighted, as can the non-literal elements, but that a copyright in the non-literal elements may only be obtained if they contain original expression.
8.1. If not, are any types or aspects of GUIs protectable by copyright?
9. Does the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection?
No
Please Explain
Copyright law protects original works contained in tangible forms of expression, and a GUI, though computer-generated, is considered a tangible form of expression. However the scope of protection of a GUI may depend on its composition. Courts have often dissected GUIs into individual elements. Courts have then considered the scope of protection for the remaining elements in determining whether the work at issue was entitled to “thin” or “broad” protection. The addition of certain elements, such as a computer-generated icon or a GUI containing computer programming or software is usually not an expression protected by copyright. Courts have considered the individual elements to be ideas, and in the aggregate, methods of operation. Any expressions of ideas utilized in developing the software that were found to have been embodied in the operation of the program may be unprotectable under copyright laws.
10. If any type or aspect of GUIs can be protected by copyright, under what conditions and to what extent are those types or aspects of GUIs protectable?
A protectable GUI has been found in an audiovisual work that contains a screen display with sufficient expression in its selection and arrangement, as well as in the individual elements. Also, an audiovisual work such as a GUI may be protected as a compilation if there is a sufficient amount of originality in the selection and arrangement of the individual elements contained in the work.
11. Can the overall "look and feel" of GUIs be protected by copyright?
If no, please answer questions 11.1, if yes, please go to question 12
No
Please Explain
No, as to “look and feel.” Yes, as to individual elements. Copyright protection does not extend to ideas, but, rather, only to the original expressions. For GUIs, copyright can be used to prohibit others from reproducing individual elements of a GUI (e.g., icons, text, dialogue boxes) but only to the extent that the individual elements are original expressions. Additionally, copyright can keep others from reproducing exact or near exact copies of a compilation of those individual elements (e.g., the GUI as a whole). Individual elements of a GUI design are typically protected as pictorial and graphic works, while a GUI as a whole is often protected as an audiovisual work. While copyright protection once could have extended to the non-literal elements of a GUI, i.e., its “look and feel,” case law over the years has abandoned protecting the “look and feel” of software graphics as copyrightable separate from the original expressions or elements or combinations. Thin protection is all that remains. Thus, copyright protection of GUIs is limited.
11.1. If not, can individual elements included in a GUI be protected?
Yes
Please Explain
Yes, as to individual elements. No, as to “look and feel.” Copyright protection does not extend to ideas, but, rather, only to the original expressions. For GUIs, copyright can be used to prohibit others from reproducing individual elements of a GUI (e.g., icons, text, dialogue boxes) but only to the extent that the individual elements are original expressions. Additionally, copyright can keep others from reproducing exact or near exact copies of a compilation of those individual elements (e.g., the GUI as a whole). Individual elements of a GUI design are typically protected as pictorial and graphic works, while a GUI as a whole is often protected as an audiovisual work. While copyright protection once could have extended to the non-literal elements of a GUI, i.e., its “look and feel,” case law over the years has abandoned protecting the “look and feel” of software graphics as copyrightable separate from the original expressions or elements or combinations. Thin protection is all that remains. Thus, copyright protection of GUIs is limited.
Trademarks
12. Can GUIs generally be protected as trademarks?
If no, please answer questions 12.1, if yes, please go to question 13
Yes
Please Explain
If the GUI is branded as a good or service then traditional trademark protection is appropriate protection for GUIs, conditioned on the distinctiveness of the name of the GUI and there is no likelihood of confusion with another trademark. Another form of trademark protection is trade dress, discussed below in the answer to Question 16.
12.1. If not, are any types or aspects of GUIs protectable by trademarks?
13. If any type or aspect of GUIs are protectable as trademarks, under what conditions and to what extent can those types or aspects of GUIs protectable?
As to trademark protection for a GUI, see the answer to Question 12. As to trade dress, see the answer to Question 16.
13.1. For example, is a screen movement or transition in a GUI protectable as a trademark?
Yes
Please Explain
As to trademark protection for a GUI, see the answer to Question 12. As to trade dress, see the answer to Question 16.
14. Does a GUI need to acquire secondary meaning through use in order to be protected as a trademark?
Yes
Please Explain
As to trademark protection for a GUI, see the answer to Question 12. As to trade dress, see the answer to Question 16.
Other forms of protection
15. Does your Group's current law provide any other means for protecting GUIs that are similar in nature to traditional IP rights?
Yes
Please Explain
Trade dress protection, please see the answer to Question 16.
16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available?
The appearance of a graphical user interface (GUI) may be protected by trade dress if the appearance of the GUI is non-functional and has acquired secondary meaning in the minds of the public. Trade dress is the "total image and overall appearance" of a product and "may include features such as size, shape, color or color combinations, texture, graphics." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992); U.S. Trademark Manual of Examining Procedure (TMEP) § 1202.02. Trade dress protection is available only when: (1) the trade dress is primarily non-functional; (2) the alleged infringement creates a likelihood of confusion; and (3) the trade dress has acquired secondary meaning. Two Pesos, 505 U.S. at ___. Secondary meaning is found when “in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself." Inwood Labs., Inc. et al. v. Ives Labs., Inc. 456 U.S. 844, 850, n. 11 (1982). Trade dress is functional if the trade dress is "essential to the use or purpose of the article or if it affects the cost or quality of the article." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n. 10, (1982)); TMEP § 1202.02(a).
II. Policy considerations and proposals for improvements of your Group's current law
17. Does your law provide sufficient IP rights protection for GUIs? If yes, is that by means of any one or more types of IP rights protection (and if so, which), or by means of combination of those types of IP rights protection?
If no, please answer questions 18, if yes, please go to question 19
Yes
Please Explain
In general, yes. U.S. law provides sufficient IP rights protection for GUIs through the availability of protection under utility patents, design patents, trademark, trade dress, and copyright. The protection is limited; nevertheless, the limitations on achieving IP rights protection for GUIs may be appropriate given the use and value of GUIs to individuals, businesses, and society as a whole.
18. If no, how is your law deficient?
19. Is your law sufficiently clear on whether and to what extent GUIs are protected by various IP rights?
If no, please answer questions 20, if yes, please go to question 21
No
Please Explain
Yes and no. See answers to Questions 1, 8, 9, 11 and 16. The requirements to obtain trade dress protection and design rights are sufficiently clear.
20. If no, how is your law deficient in this regard?
Copyrights are less certain because of the merger and compilation doctrines, which do not permit protection of ideas or certain individual “building blocks” of GUIs. The decision in Altai, mentioned above made copyright infringement more difficult to demonstrate. Courts are less likely to find infringement or to extend protections where customers benefit from compatibility. Moreover, the broadness of the fair use defense further pares down copyright protections. All of these realities have led many to focus on design patents rather than copyrights for protecting GUIs.
21. Are there any aspects of your law that could be improved (for example, by strengthening or reducing the extent to which GUIs may be protected)?
Yes
Please Explain
Some improvement in protection of GUIs in the United States could be achieved by means of a change in application procedures before the USPTO. In particular, because the USPTO currently accepts only two-dimensional drawings for GUI patents, patent holders and the public would benefit by adoption of measures to accept animations for dynamic GUIs and models for three-dimensional GUIs.
III. Proposals for harmonisation
22. Does your Group consider that harmonisation in this area is desirable?