Dilemma and solution

By Yu Yajun, Wanhuida Intellectual Property
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Graphical user interfaces (GUI), also known as screen displays, allow users to interact with electronic devices through icons or other visual indicators rather than through command lines. They facilitate friendly interaction between software and users, and have been increasingly indispensable in the software industry.

The United States, EU, Japan and South Korean are pioneers in protecting GUIs as IP rights. In 2014, China aligned its practice with this new global trend by acknowledging GUIs as patentable designs in its amended Patent Examination Guidelines. According to the Patent Examination Guidelines, designs are patentable only when filed together with the product embodying the design. Since GUIs or the software per se are not recognized as a product in the sense of the Chinese design patent jurisprudence, GUIs can only be patented together with the hardware product. This practice puts the GUI patentees in an awkward position if they attempt to challenge those software developers merely offering software exploiting their patented GUI design.

Yu Yajun Associate Wanhuida Intellectual Property
Yu Yajun
Associate
Wanhuida Intellectual Property

Qihoo Tech obtained a design patent for a GUI titled “A desktop computer with GUI” in China. Qihoo Tech sued Jiangmin Tech, a competitor, for providing online antivirus software incorporating a GUI design similar to Qihoo Tech’s patented design. The problem was that Jiangmin Tech was not engaged in selling any hardware (computer) installed with the software. In December 2017, the Beijing IP Court rendered the first instance judgment dismissing Qihoo Tech’s claim. The court held that when finding design patent infringement, comparison needs to be conducted to determine whether the accused infringing products are similar to the patented products, and since the antivirus software made by the defendant is not even a product, infringement could not be established.

This case perfectly illustrates the dilemma of GUI patent enforcement in China: GUI can and can only be patented and protected with hardware. Therefore, a patented GUI is to no avail when being enforced against an infringer that only sells software. A few possible solutions are proposed below to address this matter.

It seems that the most feasible approach would be to redefine the infringing behaviours. It could be claimed that when the internet user downloads and installs on his computer the software provided by Jiangmin Tech, then Jiangmin Tech, by providing such software, plays a contributory role in the manufacture of the infringing product, i.e., the desktop computer equipped with the software. When the user runs the software on his computer, the manufacture of “A desktop computer with GUI” is completed.

According to Article 21 of the Interpretation (II) of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights (2016), and Article 119 of the Guidelines of the Beijing High Court for the Establishment of Patent Infringement (2017), providing products specifically made for exploiting a patent constitutes contributory infringing behaviour even though the patent is exploited by others without commercial purpose.

The software provided by Jiangmin Tech is especially made for exploiting Qihoo Tech’s patent. The real difficulty here is the determination of the manufacture behaviour, namely whether internet users manufacture the desktop computer installed with the patented GUI. It seems like a question without a clear-cut answer. However, it goes without saying that there must be a desktop computer somewhere incorporating the patented GUI now or before. Therefore, as long as a desktop computer incorporating such GUI exists, the manufacture is completed.

If the manufacture is not performed by Jiangmin Tech, then it must be performed by the users. However, due to lack of commercial purpose, users manufacturing and using the desktop computer that incorporated the patented GUI do not constitute infringement. Nonetheless, Jiangmin Tech providing the software with commercial purpose infringes the patent and shall bear contributory infringement liability.

In addition, based on daily life experience, it would be rational for a software supplier to program, run and test a software product on a hardware display device before its official release. If Jiangmin Tech runs and tests its software, it then performs the manufacture of “A desktop computer with GUI”. As to the burden of proof, since the plaintiff, Qihoo Tech, has no access to the defendant’s software development process, according to relevant precedents, the court may shift the burden of proof to the defendant.

If Jiangmin Tech fails to explain how they run the test without using any display device, the court should find it manufactured the infringing products.

Another approach would require the overhaul of the GUI related legislation, to acknowledge that software is a product in the sense of design patent or to scrap the rigid prerequisite that infringement can only be established when a product incorporating the patented design falls under the same or similar category with the patented product.

Yu Yajun is an associate at Wanhuida Intellectual Property. He can be contacted on +86 10 6892 1000 ext. 337 or by email at [email protected]

Wanhuida Peksung IP Group

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No. 1 Zhongguancun Street South

Haidian District, Beijing 100873, China

Tel: +86 10 6892 1000

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www.wanhuida.com