Navigating the surge in GUI design patent applications

US design patent lawyers have experienced a significant surge in applications filed for patents related to graphical user interfaces (GUI) in recent years, as attorneys tell WIPR.

As Finnegan partner Beth Ferril explains: “User interfaces have grown considerably over the past decade. Today, they are not only on computers and mobile devices—but also embedded into watches, automobiles, and even home appliances.”

She points out that according to the US Patent and Trademark Office ( USPTO), the “art units that include user interfaces designs continue to grow”.

James Rieke, a partner at Merchant & Gould says: “If you look under the US patent classification codes of where the filings are being made, I think you'd see a pretty straight line of steady increases every year.”

This growth, he adds, can be attributed to the 1992 USPTO Board of Appeals and Interferences decision in Ex Parte Paulien Strijland and David Schroit (1992), and the USPTO’s subsequent adoption of guidelines which permitted GUI design patent protection in the US.

Rieke further notes that: “In Strijland, the USPTO Board of Appeals and Interferences first indicated that GUIs could be protected with design patents.

“While the pending application was rejected by the Board in Strijland—for items that the applicant could not rectify, the case outlined how an applicant could protect a GUI with a design patent.

“In 1996, as a result of that case and the issues regarding GUIs that were raised, the USPTO issued guidelines and formalised these requirements for GUI protection in MPEP §1504.01(a),” says Rieke.

A broad range

Now, he explains, GUIs cover a “broad” range of visual elements.

“They can include all the aspects of a screen incorporating a user interface. These could be static elements—like just a display screen for a mobile application—or it could be dynamically changing elements like animation, or transition.”

As Ferill points out: “In the US, the term ‘user interface’ is typically understood to include static (single-frame) designs as well as animated (multi-frame) designs. User interfaces may include icons, wait symbols, animated elements, screen layouts, etc.”

Rachael Lamkin, partner at Baker Botts points out that: “GUI design patents are either static (unmoving) or animated (moving). [They] protect the ornamental appearance—and not the function of the graphical user interface.”

A need for more protection

And these patents are gaining greater attention in the wake of technological advances.

For example, Rieke observes that clients are looking for greater protection for their mobile apps, as they “tend to view these tools and their appearances as being of high value to their business operations”.

But despite this interest, IP protection tools available to US attorneys can be limited when it comes to mobile apps, he adds.

“For example, the GUI display in an app might not meet the legal requirements involved in trademark/trade dress if the app is not source-identifying.

“Likewise, the visual appearance of a GUI display in an app may find copyright registration difficult without a compelling reason that it demonstrates sufficient creativity in its authorship,” explains Rieke.

As a result, brand owners are turning to design patents as the most effective tool of the available IP options to protect their apps and GUIs.

Noticeable trends: GUIs in a screen-centric era

Another trend noted by Rieke was the increase in the use of screens in everyday lives, which has made design patents for GUIs increasingly common.

“So much value is tied up in the proliferation and expansion of screens throughout our lives,” he tells WIPR.

Rieke highlights that it’s no longer just high-tech companies that are filing design patent applications.

“Companies that make primarily non-digital products not closely associated with software or electronics are actively engaged in protecting icons and interfaces. This includes companies as diverse as apparel companies, retailers, financial institutions, and automakers.”

Such brand owners have invested substantially in these designs and creative works so perhaps it’s unsurprising that they are needing to protect them more, reflects Rieke.

Lamkin supports this view, adding that: “We are seeing a lot more sophistication in the applications for design patents, including GUI patents.

“With increasing innovation in digital spaces, including technologies that are deeply digital, eg, home appliances, design patent strategies are having to keep up,” she says.

Ferrill pinpoints the crucial link between user interfaces and a brand’s identity, explaining that: “A company’s user interface is the primary way in which customers interact with the company’s product [and] there is a certain ‘brand feel’ to particular interfaces.

“Companies have found that protecting this brand feel is an important way of differentiating from competitors. Consider the myriad of differences between using the Microsoft Windows operating system and the Apple Mac operating system.”

Creative enforcement

But as Rieke notes: “There are some creative attempts to protect coverage that's maybe not quite as traditional.”

Ferrill agrees, pointing out that a US design patent covers a display screen along with its user interface—as opposed to solely protecting the user interface itself.

This, however, contrasts with Europe, where the display screen is not a required part of the registration for protection.

“This means that for a user interface to be protected in an augmented or virtual reality environment in the US, the applicant must consider this possibility and change their claiming strategy accordingly,” explains Ferrill.

Additionally, challenges posed by manufacturer requirements in the US compared with other jurisdictions require careful consideration when seeking protection.

“ 35 USC 171 governs the fundamental requirements of all design patent protection in the US,” says Rieke.

“It sets forth that ‘whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent...'.”

Accordingly—to comply with the manufacturer's portion of the statute—applicants are required to show a design applied to or embodied in an article of manufacture.

The article stipulates that anyone who creates a new and original design for an article of manufacture can secure a patent for it.

Consequently, in line with this portion of the statute, individuals seeking a patent must demonstrate a design that is incorporated into or represented by a physical object.

“In the case of GUIs, the USPTO considers GUI designs embodied on a manufactured article like a monitor, computer screen, or display panel to satisfy 35 USC 171,” explains Rieke.

“There are, however, newer forms of designs, like holograms and certain light projections, where [no] monitor, computer screen, or display panel is present. Despite the lack of hardware, these designs seem to be the type of ornamental subject matter worthy of protection and to which design protection should apply.”

The question of whether design patents will be interpreted with enough flexibility to allow protection for these types of designs in the US remains uncertain, with Rieke commenting that it “will be an interesting topic to see develop further”.

“In the UK and in many parts of the world, for example, there is no ‘article manufacturer requirement’, so it will be interesting to see if the US will move closer to global harmonisation on this issue in the coming years,” he says.

More complex filings

Looking ahead, Rieke predicts a continued increase in design patent filings related to user interfaces, but also “more complicated filings”—especially in the US.

Lamkin echoes this view. “We will continue to see increasingly sophisticated use of design patents," she says. This trend is due to the fact they are “generally less expensive and faster to obtain so legal departments are, and should, turn to this valuable tool."

Ferrill similarly forecasts that: “Applicants may try more complicated claiming schemes in order to protect their augmented reality and virtual reality user interface designs in addition to the traditional user interfaces displayed on screens.”

This, she adds, may lead to “more creative filings or it may lead to multiple applications covering the same user interface, but with different underlying articles of manufacture”.

Rieke concludes: “Design patents allow for a lot of creativity in terms of what can be incorporated into your filing in the US, where you can package a lot in the description and other materials through filing. So I think you'll see filings that are increasingly more complex.”