Graphical User Interface Design Protection at a Crossroads in China
Melvin Mei
Qualifi ed Chinese Lawyer, Patent Attorney, Trade Mark Attorney
Lusheng Law Firm
Electronic devices , led by mobile phones, tablets and computers, have become an essential part of our lives. Most present-day electronic devices feature user-friendly human machine interaction experience made possible by the introduction of graphical user interface (GUI), which uses graphical elements like windows, icons and menus to carry out commands and thus allows for a simple and natural interaction between users and electronic devices. Things were very different in the age of command-line interface (CLI ) , the text-based user interface that required users to memorize and type in individual commands. GUI resulted in the phasing-out of CLI and eventually became, and remains, the mainstream.
The proliferation of GUI - based electronic devices has resulted in an increase in the business value of GUIs. This has spurred many tech companies (especially software developers) to seek protection for their GUI designs in China using the patent system (as designs are protected as design patents in China), the copyright system, or both. This article primarily examines t h e design patent approach in China following a landmark case recently decided by the Beijing IP Court.
1.Patent legal framework for the protection of GUI designs
The 2010 Patent Examination Guidelines issued by the China National Intellectual Property Administration (CNIPA) states that patterns shown when the product is powered on (such as patterns on an electronic watch dial, patterns on the screen of a mobile phone, software interface) are ineligible for design patent protection.
There is no question that such patterns per se are not patentable. Nevertheless , some debate arose over the issue of whether products that incorporate such patterns (i.e. GUIs) are patentable in their entirety. Design patent applications for such products had usually been rejected until a 2014 decision of the Beijing Higher Court, Patent Reexamination Board of CNIPA v Apple Inc. [Case No.(2014) High Court Administrative (IP) Final No. 2815] changed that approach. In this case, the Court overturned a decision of the Patent Reexamination Board and decided that, even though a product incorporates GUIs, the product in its entirety should be patentable because the GUIs are only part of that product.
Later in 2014 the CNIPA then made a few small, but significant, changes to the Patent Examination Guidelines through Ordinance No.68 in response to the growing need for GUI protection. Under Ordinance No. 68, a product incorporating GUIs is patentable, i f the GUIs ( i ) are relevant to human-machine interaction and (ii) ensure product functionality. Ordinance No. 68 further gives some examples of what will not meet the requirements of human machine interaction or product functionality: game interfaces, electronic screen wallpaper, boot screen and shutdown screen patterns, and website/webpage layout.
With the implementation of Ordinance No. 68, the CNIPA started accepting design patent applications for products incorporating either static or dynamic (animated) GUIs.
2. GUI design patent filing statistics
The Patent Information Service Platform of CNIPR (http://search.cnipr.com) reveals that the CNIPA received 1,027 design patent applications with a title containing the Chinese characters equivalent to “graphical user interfaces” on 1 May 2014 alone.
The chart below shows that the number of design patent applications incorporating GUIs grew rapidly during 2014-2017 representing a rising demand for GUI protection. [Note: The data set for 2018 was incomplete at the time of writing.]
More than half of the design patents incorporating GUIs have been issued with a title containing the Chinese characters equivalent to “graphical user interfaces” in combination with the Chinese characters equivalent to “mobile phone”, “computer”, “tablet”, or “mobile device”. Moreover, a large proportion of the applicants are software companies or online service providers who do not actually manufacture any hardware products like phones or computers.
3. China’s first GUI design patent infringement case
The plaintiffs Qihoo 3 6 0 Technology Co., Ltd. and Qizhi Software (Beijing) Co., Ltd. sued the defendant Beijing Jiangmin New Technology Co., Ltd. for infringing their design patent ZL201430329167. 3 entitled “Computer incorporating GUIs”, and requested (i) an injunction, (ii) an elimination of ill effects, and (iii) damages of 5 million Yuan.
The Beijing IP Court docketed the case on 3 May 2016, heard it on 21 September 2016, and issued a long-anticipated decision [Case No: (2016) Jing 73 Civil Preliminary No. 276] on 25 December 2017 dismissing the plaintiffs’ case.
On a related note, in retaliation for this patent infringement lawsuit, the defendant filed a patent invalidation petition against the design patent at issue with the Patent Reexamination Board (PRB) of CNIPA. On 8 March 2018, the PRB issued the Invalidation Examination Decision No. 35179 in which the design patent was held to be invalid.
1) Direct infringement
In its decision[Case No: (2016) Jing 73 Civil Preliminary No. 276], the Beijing IP Court used a two factor test to determine the scope of protection of a design patent:
Determination of the scope of protection of a design patent depends on two factors: (i) product; and (ii) design. Both factors should be identified by what is shown in the drawings or photographs of an issued patent. In this case, the product shown in the drawings is a computer, and the title of the design patent at issue is “computer incorporating GUIs”. As such, the design patent at issue should be limited to the design of computer products, and the word “computer” should be able to define the scope of protection of the design patent at issue.
Because of this two-factor test, direct design patent infringement was not found in this case for the simple reason that computer and software are different categories of products. Software to create GUI interface cannot meet the design patent requirement for the presence of a computer. Perhaps regrettably, this case was over almost before it had begun, and the Court did not need to decide how similarity of designs incorporating GUIs should be determined.
2) Contributory infringement
The Court also held that contributory infringement of the design patent has not been established.
In 2016, a patent infringement judicial interpretation from the China Supreme Court provided that one should be liable as a contributory infringer if that person knowingly provides a component especially made or adapted for use in the exploitation of a patent for someone who directly infringes the patent. [Note: It is inferred here that such component is not a staple article of commerce suitable for substantial non-infringing use.]
The Court took the view that a defendant cannot be liable for contributory infringement without an underlying direct infringement by users who directly exploit the design patent at issue, i.e. make, offer for sale, sell or import products incorporating the patented design for production or business purposes. In this case, users merely download the defendant’s software to their computers rather than making, offering for sale or selling computers. While the plaintiffs claimed that there was a possibility that users offer for sale or sell computers pre-installed with the accused software, they failed to produce evidence in support of their claims.
4. What this first case implies?
This decision has created a difficult situation for owners of GUI design patents in China and will probably discourage future applications being filed. The result will be disappointing for those from the software industry who have a strong incentive to protect their software products from being copied or imitated.
1) Figuring out who your ideal defendant is
Wining a patent infringement case is always difficult but, as a first step, you do need to figure out who your ideal defendant is.
According to the Court, if there is no direct infringement established, a defendant cannot have contributed to the infringement of a patent.
Consequently , successful enforcement of a GUI design patent needs to depend on two factors: (i) whether software can be considered a special-purpose “component”; (ii) whether there is an underlying making, offer for sale, sale or import of the hardware ( i.e. computers, phones) incorporating GUIs.
While the Beijing IP Court did not comment on the first factor in its decision, it is reasonable to assume that software to create a GUI interface could be seen to be a special-purpose “component” for use in the exploitation of a design patent directed to a computer that includes a GUI interface.
The second factor is the key to who the ideal defendant is: anyone who makes, offers for sale, sells or imports the hardware incorporating GUIs. This points to the following parties:
a) Manufacturers: If a computer manufacturer pre-installs the software on its products, then the computer manufacturer can be a direct infringer and the software developer be a contributory infringer.
b) Resellers/distributors: If a reseller/distributor sells computers pre-installed with the software, then the reseller/distributor can be a direct infringer and the software developer be a contributory infringer.
c) Importers: If an importer brings computers pre-installed with the software into China, then the importer can be a direct infringer and the software developer be a contributory infringer.
By establishing that one or more of such parties directly infringed the design patent, the software developer may then be held to be a contributory infringer or possibly a party to the direct infringement. If the target is actually the software developer, it will be necessary to go through a direct infringer to hit that target.
