Design Patents for User Interfaces

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Welcome!

Design Patents for User Interfaces

Protecting an Innovative UI with a Design Patent

presented by

Joseph J. Wang

image from D601,582

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Design Patents for User Interfaces Agenda

Design Patents in Brief

Example Patents for User Interfaces Ordinary Observer Test

Features: Ornamental or Functional?

Ideas for Software Companies

Ideas for Patent Attorneys

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Design Patents for User Interfaces

Design Patents in Brief

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“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor . . . .”

35 U.S.C. § 171

new design

ornamental design

for an article of manufacture

“[T]he subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.”

MPEP § 1502

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A design patent protects the ornamentation of an entire article,

of a portion of the article, or that is applied to the article

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Design Patents for User Interfaces Design Patents in Brief

Differences from Utility Patents

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Design Patent

• 14 year term from grant date

• No maintenance fees

• Not published until issued

• Foreign priority of available for only 6 months after filing

• Scope limited by drawings

Utility Patent

• 20 year term from filing date*

• Maintenance fees

• Published at 18 months*

• Foreign priority available for 12 months after filing

• Scope limited by claim language

*exceptions exist

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Design Patents for User Interfaces Design Patent

• Remedies

– 35 USC § 284

reasonable royalties

enhanced damages avail.

or – 35 USC § 289

total profits

no enhancements avail.

Utility Patent

• Remedies

– 35 USC § 284

reasonable royalties

enhanced damages avail.

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“[A] design is better represented by an illustration ‘than it could be by any description

and a description will probably not be intelligible without the illustration.’”

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) citing Dobson v. Dornan, 118 U.S. 10, 14 (1886) image from D376,826

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Comparison to Copyrights & Trademarks

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A design patent is a patent.

“whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States

a patented invention during the term of the patent therefor, infringes the patent.”

35 U.S.C. § 271

Importation and offering for sale claims

Damages may be based on value of product

Treble damages available for willful infringement Induced and contributory infringement claims

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A design patent is a special patent.

“Whoever . . . (1) applies the patented design, or any colorable

imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied

shall be liable to the owner to the extent of his total profit, . . . .”

35 U.S.C. § 289

Simpler discovery for profits vs. reasonable royalty Pre-tax profits

No double recovery or enhanced damages

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Design Patents for User Interfaces Copyright protection

Infringer must copy, distribute, perform, or publicly display a work, or make a derivative work

Offer for sale does not infringe Importation does not infringe Fair use is a defense

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On the other hand,

copyrights have very long terms

70 years after author’s death

shorter of 95 years from publication or 120 years from creation, for work for hire

image from D595,732

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Design Patents for User Interfaces Trademark protection

Protection limited to mark itself

(or product presentation for trade dress claims) Distinctiveness is a factor in determining infringement Fair use is a defense

Then again . . .

Short words and phrases are protectable Dilution of mark is actionable

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Overlapping Protection is Available

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“[A]n ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent.”

MPEP § 1512

“A design patent and a trademark may be obtained on the same subject matter.”

MPEP § 1512

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Example Patents on User Interfaces

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Design Patents for User Interfaces Example Patents for User Interfaces

“Computer-Generated Icons”

Window Layouts Individual Icons

Transitional (Animated) Icons Type Fonts

User Selection Interfaces

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“Computer-generated icons”

“Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation.”

MPEP § 1504.01 (a)(I)(A)

“a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof . . . .”

MPEP § 1504.01 (a)(I)(A)

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images from D608,366

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Design Patents for User Interfaces Transitional (Animated) Icons

“Computer generated icons including images that change in

appearance during viewing maybe the subject of a design claim.

Such a claim may be shown in two or more views. The images are understood as viewed sequentially . . . .”

MPEP § 1504.01 (a)(IV)

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image from D596,191

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image from D596,191

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image from D596,191

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image from D596,191

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Design Patents for User Interfaces Type Fonts

“Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced.

Consequently, the USPTO has historically granted design patents drawn to type fonts . . . [even if] more modern methods of

typesetting, including computer-generation, do not require solid printing blocks.”

MPEP § 1504.01 (a)(III)

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image from D518,510

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image from D545,889

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Selection Interfaces

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Design Patents for User Interfaces Who is getting these patents?

from Google, April 26, 2010

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Simple Standard: Ordinary Observer Test

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Design Patents for User Interfaces Ordinary Observer Test

For Infringement For Anticipation For Obviousness

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Design Patents for User Interfaces Infringement

“[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same,

if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Gorham Co. v. White, 81 U.S. 511, 528 (1871)

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“[T]he ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.”

Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008)

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Design Patents for User Interfaces Recent New Twist

“[T]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.”

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Design Patents for User Interfaces Recent New Twist

“[T]he attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art.

And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer. ”

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“The mandated overall comparison is

a comparison taking into account significant differences between the two designs,

not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. ”

Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009)

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Design Patents for User Interfaces Example 1

Patented Design Accused Design

Prior Art

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Design Patents for User Interfaces Example 1

Prior Art

big leap over prior art

infringement more likely

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Example 2

Prior Art

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Example 2

Prior Art

small step over prior art infringement less likely

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Ordinary Observer Test (as modified by Egyptian Goddess)

Would an ordinary observer, looking at the prior art,

comparing the overall designs, confuse the two designs?

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Design Patents for User Interfaces Anticipation

“[T]he ordinary observer test must logically be the sole test for anticipation.”

Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) citing Peters v. Active Mfg. Co., 129 U.S. 530-537 (1889)

(“that which infringes, if later, would anticipate, if earlier.”)

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Design Patents for User Interfaces Obviousness

“[T]he role of one skilled in the art in the obviousness context lies only in determining whether

to combine earlier references to arrive at a single piece of art for comparison with the potential design or

to modify a single prior art reference.

Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.

Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009)

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Design Patents for User Interfaces Ordinary Observer Test

Simple, right?

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Design Patents for User Interfaces A Complication

Features: Ornamental or Functional?

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Design Patents for User Interfaces Ornamental or Functional?

“If the patented design is primarily functional rather than ornamental, the patent is invalid.”

Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)

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Design Patents for User Interfaces Claim Construction in Design Patents

“Where a design contains both functional and non-functional elements,

the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)

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Design Patents for User Interfaces Claim Construction in Design Patents

“ Apart from attempting to provide a verbal description of the design,

a trial court can usefully guide the finder of fact by addressing . . . such matters as . . .

distinguishing between those features of the claimed design that are ornamental and those that are purely functional.”

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“Richardson’s multi-function tool comprises several elements that are driven purely by utility.

As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose.”

Richardson v. Stanley Works, Inc., No. 2009-1354 (Fed. Cir., March 9, 2010)

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D507,167 D562,101

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“The jaw . . . has to be located on the opposite side of the hammer head such that the tool can be used as a step.”

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“The crowbar . . . needs to be on the end of the longer handle such that it can reach into narrow spaces.”

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“The handle has to be the longest arm of the tool to allow for maximum leverage.”

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“The hammer-head has to be flat on its end to effectively deliver force to the object being struck.”

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claimed design – functional elements = ornamental design?

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claimed design – functional elements = ornamental design?

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See the forest ... no, the trees ... no, the forest minus some trees?

Sec. 171: “design”

Gorham: “designs”

Egyptian Goddess: “aspects” of a design

“differences” between designs

“small,” “minor,” “trivial”

“significant”

Int’l Seaway: “overall comparison”

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See the forest ... no, the trees ... no, the forest minus some trees?

OddzOn: “functional . . . elements”

“non-functional elements”

“non-functional” “aspects”

Egyptian Goddess: distinguishing “features”

Richardson: “elements” of a “tool”

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Ordinary Observer Test (Reprise)

“[The district court] recited the significant differences between the ornamental features of the two designs

but, in determining infringement,

it mainly focused on whether an ordinary observer would be deceived

into thinking that any of the [accused] designs were the same as Richardson’s patented design.”

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Design Patents for User Interfaces In a nutshell . . .

Claim Construction

Judge may note ornamental features and functional features, as a matter of law

Infringement/Anticipation/Obviousness

Finder of fact applies modified Ordinary Observer Test to ornamental design as a whole

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In a nutshell . . .

? Claim Construction

Judge may note ornamental features and functional features, as a matter of law

?

“design”

Infringement/Anticipation/Obviousness

Finder of fact applies modified Ordinary Observer Test to ornamental design as a whole

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Ideas for Software Companies

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Ideas for Software Companies Benefits

Lower cost than utility patent applications Faster prosecution than utility applications

Protects trendy new product from replicas, lookalikes, knockoffs – importation and offer for sale

– 14 year term likely suffices Caveats

not a utility patent – no protection for functional features not a copyright – little protection from derivative works not a trademark – unavailable for short words & phrases

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Design Patents for User Interfaces Ideas for Software Companies

Mobile Apps

User-friendly interfaces

Window layouts – touch screens

Icons – buttons, sliders, dials Web Widgets

Consumer-friendly interfaces

Window layouts – overlays, pop-ups Animated icons – notifications

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Big Screen Apps

Entertainment interfaces

Window layouts – menus, selection tools Icons – ratings, preferences Animated icons – notifications

Productivity interfaces

Window layouts – multi-screen graphics – menus, etc.

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Games

Virtual items – vehicles, weapons,

armor Artwork in user interfaces

Window layouts – tactical displays

Window borders – fantasy, sci-fi motifs

Fonts – alien glyphs, runes

Animated Icons – avatars

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Enhancement to Copyright

What artwork should receive protection beyond mere copyright?

A Narrow Patent May Be Better Than None

Where a utility patent is unlikely, a design patent can protect your UI against exact or close replicas.

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Ideas for Patent Attorneys

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Design Patents for User Interfaces Ideas for Patent Attorneys

Prior Art

Expanded role after Egyptian Goddess

Consider a prior art search to guide which details to claim

Solid lines = claimed design

Broken lines = context only, not claimed

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Ideas for Patent Attorneys Consider . . .

Claiming a design for only part of an article (functional features may be avoided)

Illustrating multiple embodiments of same design (fonts) Filing multiple applications on group of similar designs

After grant, these may affect state-of-the-art and the scope of subsequent design patents

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Design Patents for User Interfaces Claiming a Design for Part of an Article

images from D608, 368 and D 601,582

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Illustrating Multiple Embodiments of Same Design

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Design Patents for User Interfaces Filing Multiple Applications on Similar Designs

images from D545032, D545033, and D529263

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Questions?

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Thank you.

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