Technological development makes the differences among similar electronic products smaller. Graphical user interfaces (GUIs), as the main tools for man-machine interactions, have gradually turned into a new highlight in market competition.
The Qihoo 360 v Beijing Jiangmin case, as the first GUI industrial design patent infringement case in China, drew wide attention from the legal profession. On 25 December 2017, the court acquitted the defendant of infringement, which reflected the dilemma of juridical protection of GUIs in China. To date, the author has found no case in which the rights protection of GUI industrial design patent was supported.
GUIs rely on physical products as a consideration
In early GUI patent licensing cases, a physical product was required as a consideration, which led to the greater difficulty in protection against software plagiarism. This is because at the present stage, in China, determination of whether a GUI industrial design patent infringement occurs is still made strictly in accordance with the judging principles for general industrial design patent infringements. In other words, whether the alleged infringing product and the industrial design product fall into the same or similar category of products is reviewed first.
In the Qihoo 360 v Jiangmin case, Beijing Intellectual Property Court believed that the alleged infringement was the provision by the defendant of the allegedly infringing software to users, and it was impossible to classify the allegedly infringing software and the patented computer product involved in the case into the same or similar category of products. Therefore, even though the GUI of the allegedly infringing software was identical or similar to the patented GUI involved in the case, the alleged infringing software did not fall within the scope of protection of the patent involved in the case.
There have been disputes over such issues. It is believed that in today’s prosperous software industry, it is very common that software manufacturers are not necessarily the hardware manufacturers and/or sellers, and excessively rigorous infringement determination criteria would cause difficulty in protecting the rights and interests of GUI industrial design patent owners. However, up to the present, there have been no explicit legal provisions and judicial precedents that support the inclusion of software that is named after the hardware in the scope of protection of industrial design patent products.
Changes to authorized names
Article 28 of the Detailed Rules for Implementing the Patent Law, and the guidelines for patent examination, both specify that an applicant shall clearly indicate the name of the industrial design product. However, in recent years, “a mobile phone/computer with GUI” has been gradually changed to “a GUI used in a mobile phone/computer” in grant cases in patent examination practices.
Clearly, the patent examination authority has loosened the requirement that a physical product shall be used as a consideration, by recognizing the industrial design product name with GUI as the subject, in grant practices. Obviously, the generalization trend of GUI patent product name is conducive to weakening the impact of the separation between software and hardware on the scope of GUI patent protection, as well as the influence of hardware products.
Those who hold another view supporting the treatment of GUI as a product believe that in the International Classification For Industrial Designs (Locarno Classification), the product class frequently used for a GUI is Class 14-04 “Screen displays and icons” with two subclasses, namely Graphical User Interfaces (computer screen layout) and Icons (for computers). Therefore, a patentee has reasons to claim that a GUI design itself is the subject of GUI industrial design patent protection, which means that GUI itself can be deemed a class of product that should not be limited to traditional physical hardware.
Using a GUI as the subject for an industrial design product name in patent application creates room for protecting GUI industrial design patents. If a GUI patent and an alleged infringing design are used for hardware equipment, and there are reasons to claim that the GUI realizes the identical/similar man-machine interaction function in accordance with provisions on classification by use in article 9 of the Interpretations of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes, then they shall be deemed products in the same or similar category, and thus the preconditions for such comparison are satisfied.
However, those who hold a different view believe that a computer consists of two parts, namely hardware and software. In other words, even if generalization of a GUI patent name is permitted in a grant case, further demonstration is required as to how to identify a product carrier in patent infringement determination.
People who hold the above view mainly consider that although software is an industrial product, which can be duplicated through industrial processes and independently sold in markets, and cannot run or show its contents independent of hardware; and in essence, software is a computer program developed for using chips to operate or control the operation of a physically existing product. Since at the current stage software does not fully comply with the Patent Law of China, and based on the mainstream opinions of judicial departments on determination of the concept of a “product”, GUIs will continue to be deemed a type of software after the name generalization, and it is generally recognized that software does not fall into the category of industrial design products. Therefore, there are still obstacles to claim relevant rights under design patent protection.
As to how to effectively protect a GUI as a special industrial design patent, the author believes that, firstly, in applying for GUI industrial design protection, a patentee should use GUI as the subject for the product name, such as “a GUI used for a mobile phone/computer”. Secondly, judicial departments should keep up with the times, publishing corresponding judicial interpretations or judicial precedents as soon as possible to provide patentees with guidelines to rights protection, thus giving full play to the role of the GUI industrial design patent system.
Xiang Li and Guo Jincheng are partners at Yuanhe Partners.
58F, Fortune Financial Center (FFC)
5 Dongsanhuan Zhonglu, Chaoyang District
Beijing 100020, China
Tel: +86 10 5733 2388
Fax: +86 10 5733 2399