2) Lack of partial design protection
The problem this decision highlights is the lack of partial design protection under the China Patent Law, which remains unchanged since its third amendment in 2008. Section 7.4, Chapter 3, Part 1 of the Patent Examination Guide lines rules out partial design protection by providing that any component part of products which cannot be separated or sold and used independently (such as the heel of socks, the peak of a hat, the handle of a cup) is ineligible for design patent protection.
Partial design protection is available in the U.S., Japan, South Korea and the European Union. The Manual of Patent Examining Procedure (MPEP) issued by the USPTO, for instance, establishes partial design protection system in the U.S. The USPTO states in Section 1502, Chapter 1500 of the MPEP that in a design patent application, the 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.
In the final analysis, a GUI is something like a virtual control panel that enables users to operate a product. Since a GUI is inseparable from the product to which it is applied and cannot exist alone merely as surface ornamentation, a GUI per se is not patentable in China and it must be embodied in the screen of a product. When filing design patent applications, an applicant needs to illustrate in an application a physical product incorporating GUIs, and to name the design patent application “[device] incorporating GUIs”.
In jurisdictions (e.g. the U.S.) where partial design protection is available, structure that is not part of the claimed design, but is considered necessary to illustrate the environment in which the design is associated or the article embodying the design is used, may be represented in drawings by broken lines. For GUI design patents, this means that the physical product is no longer a consideration when determining the scope of protection. In contrast, in China products must be shown in solid lines and broken lines are not allowed.
There are encouraging signs, however, that the attitude to partial design protection in China is changing. Partial design protection is now among the most discussed topics on the proposed fourth amendment to the China Patent Law, as it is becoming increasingly essential for industrial sectors that are technically mature and thus the degree of freedom of designers in creating something original and/or different is not wide.
3) Enforcement difficulty
In line with the Court decision, the design of the physical product that in corporates GUIs is a consideration in assessing the scope of protection of a design patent. More importantly, the Court made it very clear that even though the GUI designs of the alleged infringing software are identical or similar to the GUI designs covered by the design patent at issue, the alleged infringing software does not fall within the scope of protection of the design patent at issue.
Unfortunately, China’s current patent system seems to be unable to provide protection for GUI designs sufficiently wide for enforcement purposes, since others can easily circumvent an issued design patent by using the same GUI designs but on a different product.
4) Current rules remain applicable
As noted by the Court, there are no specific rules of determining GUI design patent infringement in China. As such, the current generally applied rules as outlined below still apply.
Design patent infringement occurs when the accused design of a product does not produce a different overall visual effect on the informed user from that produced by the patented design of the product of the same or similar category.
Courts in China normally carry out the two-factor test to determine the scope of protection of a design patent. While the first factor (i.e. whether the products of both parties belong to the same or similar category) is something objective and straight forward, the second one (i.e. whether the designs of both parties are similar) is more subjective but can be determined by the following procedure:
Breaking down the patented design and the alleged infringing design into features, and excluding features dictated solely by function;
Creating a list of similarities and differences after one-by-one comparison of all the features of the visible parts of the patented design and the alleged infringing design;
Considering each similarity and difference from the design freedom point of view and against the design corpus in order to give it appropriate weight or significance;
Deciding whether the alleged infringing design produces on the informed user a different overall visual effect, taking into consideration all the similarities and differences appropriately weighted.
It is worth noting that in April 2017 the Beijing Higher Court issued the Guidelines for Patent Infringement Determination (2017). These Guidelines require that courts primarily consider the GUI part of a product while taking into account the positional , proportional , dimensional and distribution relationships of the GUI part and the rest part of the product. It further provides that when the non-GUI part (e.g. a physical product that incorporates the GUIs) embodies a usual design, the GUI part has more significant influence on the overall visual effect.
5) Copyright approach, an effective alternative or dead-end?
As a GUI is part of computer software, GUI design owners may naturally resort to copyright system for protection. Regrettably, the copyright system has proved ineffective in providing effective protection in China.
Copyright protection of GUIs was first dealt with in China in a 2005 decision of the Shanghai Higher Court, Beijing Jiuqi Software Co., Ltd. v. Shanghai Tianchen Computer Software Co., Ltd.[Case No. (2005) SH Higher Civil Third (IP) Final No. 38]. Since then, copyright protection of GUIs has been denied by courts for the following reasons:
It is a generally accepted principle that copyright protection extends only to original expressions and not to ideas, procedures, methods of operation or mathematical concepts;
The individual elements of a GUI (e.g. icons, menu) are either generic designs in the public domain which are insufficiently original and/or creative to qualify for copyright protection, or merely illustrate functions, and in the aggregate, are methods of operation;
3)The whole of a GUI is often a simple combination of these individual elements and is less likely to be original or creative as well.
6) Patent approach still the best solution
Due to the inherent limitation of copyright system, the patent system may provide the best solution for GUI protection even though at present it is not perfect. Legislative change will be needed for this.
For now, it is advisable to make full use of the current design patent system to achieve the widest possible scope of protection. Here are some practical tips:
1 )When illustrating in an application a physical product to which the GUI is applied, you may use the usual design of that product to ensure that the GUI part stands out from the non-GUI part (i.e. the physical product) and is given greater weight in determining its influence on the overall visual effect. Further, you may state in the brief explanation of the design that the essential features of the design lie in the GUI part and the non-GUI part incorporates usual design.
2)If you have one GUI design that can potentially be applied to different products (e.g. a desktop computer, a tablet and a mobile phone), you may file separate applications for these products embodying the same GUI design.
3)If you have several GUI designs that can be applied to a product, be careful about your decision to file them as dynamic GUIs where each of these GUI designs is treated as a key frame or transitional image.
The downside of pursuing a design patent for dynamic GUIs is that you will be left with a relatively narrow scope of protection that is defined by a combination of animated transitions illustrated by all the key frames. Suggestions are:
If you wish to protect each of these GUI designs but not the animated transitions, you can file them as static GUIs either in one multiple design application (if these GUI designs are similar and the number of them is no more than ten) or in separate applications (if these GUI designs are dissimilar);
If you wish to protect each of these GUI designs as well as the animated transitions, then you may consider filing them as dynamic GUIs.
4)When considering taking action for infringement of a GUI design patent, make sure that at least one defendant is a direct infringer of the patent.
