US Design Patents for Graphical User Interfaces in the US Margaret Polson Polson Intellectual Property Law, PC mpolson@polsoniplaw.com 303-485-7640
Facts about US design patents The filings of design patent applications as the USPTO has risen about 25% since 2009 The majority of this increase has been in Graphical user interfaces (GUI) and designs for computers and mobile devices Most US design applications issue within 18 months from filing 2
Facts about US design patents US law provides that a design patent infringer owes its entire profit on the article to the patent owner (35 U.S.C 289) The majority of the damages in the Apple v. Samsung case was based on the design patents The original amount of damages awarded by the jury was $1.05 billion dollars, of which approximately $700 million dollars was awarded on the designs, or about 70 percent 3
The basics US design patent applications are examined for novelty and inventive step (obviousness). The term for a US design patent is 14 years from the issue date (not the filing date) currently The term will change to 15 years for applications with a US filing date on or after May 13, 2015, when the US joins Hague This is true regardless of how long the application is pending 4
The basics There are no annuities on US design patents, once the issue fee is paid, there are no more fees Continuations and divisionals can be filed claiming priority to the original application You cannot file a CIP in a design case The term of a divisional is still 14 (15) years from the issue date of the divisional patent 5
The basics The US laws for naming inventors apply to design patents. Anyone who contributed to the ornamental appearance of the article is one of the inventors. The inventor list for the design may be different than for a related utility patent 6
What can be protected with design patents in the US Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. 35 USC 171 7
What is considered an article of manufacture in the US We do not see that the dependence of the existence of a design on something outside itself is a reason for holding it is not a design for an article of manufacture. In re Hruby, 373 F.2d 997 (design of water fountain patentable design for an article of manufacture). Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements. See Blisscraft of Hollywood v. United Plastics Co. 8
9
What is considered an article of manufacture in the US (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories. MPEP 1504.01 10
How to claim a GUI A claim to a graphical user interface (GUI) is valid subject matter so long as a least a portion of the display screen is shown It is not necessary to show the whole article or even the whole screen It is not necessary to claim the screen, but it must be shown 11
US D607,467 12
13
US Design 599,372 14
It is possible to claim an animated GUI -US D654,926 15
US D654,926 16
US D670,713 17
US D670,713 18
US D670,713 19
US D670,713 20
Color GUI drawings are also possible 21
22
It is possible to claim transparent GUIs US D629,412 owned by Apple 23
24
25
Differences in GUI design practice The usual rule in the US is you can change a solid line to a broken line in a later continuation application This is not true in GUI applications, all things that you want to disclaim must be in broken lines at the time of your US filing with very few exceptions If you want to be able to make a valid priority claim, it has to be in the original priority case The US does not examine the priority claim in most cases 26
Priority 35 U.S.C. 172 Right of priority. The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs. A US design application cannot claim priority to a US provisional application A US design application cannot be a CIP of a prior application 27
Munchkin, Inc. v Luv N Care, Ltd D617,465, IPR2013-0072 Application 29/292,909 filed 10/31/2007 The 465 patent claims the benefit of application 10/536,106 which is the national stage of PCT/US03/24400 filed 8/5/2003 published as US2007/0221604 (Hakim 604) 28
Munchkin, Inc. v Luv N Care, Ltd Entitled to claim benefit? For example, the 106 Application, which shows a racetrack-shaped spout tip, does not disclose the claimed oval-shaped spout tip of the 465 Patent. Also, the 106 Application, which shows slits in the openings of the spout tip and vent, does not disclose the broader design of the 465 Patent, which lacks any such slits. 29
Requirement for claiming priority It is a best practice to put both the drawings for the original countries rules and a full set of US compliant drawings (or any other countries) in your original priority filing and then cancel the US drawings out of the priority case to ensure the maximum benefit of your priority claim 30
Other US filing requirements Information disclosure statements are required in US design patents You must send US counsel all material relevant to patentability including: patents, papers, catalogs, web pages, information about prior sales, information about competitor's similar products 31
Prosecution of the application Multiple embodiments are only allowed in an issued design patent if they are not patentably distinct. Many embodiments can be included in the application as filed. You may receive a restriction requirement requiring you to elect an single embodiment. Divisional applications can be filed on the other embodiments 32
Pacific Coast v. Malibu Boats 33
Pacific Coast v. Malibu Boats 34
Pacific Coast v. Malibu Boats Does an amendment in response to a restriction requirement count as an amendment under Festo? Yes, for designs We express no opinion as to whether the same rule should apply with respect to utility patents, an issue not resolved by our prior cases 35
Infringement Gorham Co. v. White, 81 U.S. 511 (1871). [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. 81 U.S. at 528. 36 Copyright 2014 OPLF
Claiming part of an article Broken lines showing a border of the claim do not have to be placed on an existing line on the item, this is called an unclaimed border. Any broken line drawing putting in an unclaimed border must be done at the US filing date at the latest. It is not possible to add an unclaimed boarder in a continuation application without giving up the original filing date of the parent application 37
Drafting The title and description can be used to narrow the claim but sometimes you want to. 38
39
40
41
Infringement Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670-71 (Fed. Cir. 2008) (en banc). 42 Copyright 2014 OPLF
Reasons to consider not using Hague for US cases US design applications are not published and remain secret until the patent issues US applications that are Hague designations will be publicly available If you have a number of different embodiments in your design case, your competitors will be able to see all of them in a Hague case 43
Reasons to consider not using Hague for US cases The US rules for full disclosure of the design, and amending drawings in US continuation applications are complicated Hague applications are published by WIPO and only then set to the designated countries for examination If there are things that will be errors only in the US, you may not be able to fix them at the time the case is examined in the US and at that point your design will have been published, creating prior art 44
If you are going to use Hague for the US Involve competent US counsel in the preparation of the drawings for your Hague case to ensure the full scope of protection is available Have a plan for any possible divisional and/or continuation applications in place at the time of filing 45
More examples of broken lines-apple 46
Continuation of prior case-apple 47
Different patents have different scope 48
Using broken lines to emphasize the part you are interested in protecting 49
If only part of the design is important, put everything else in broken lines 50
Thank you! 51