Design Patents for User Interfaces

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2 Welcome! Design Patents for User Interfaces Protecting an Innovative UI with a Design Patent presented by Joseph J. Wang image from D601,582

3 Agenda Design Patents in Brief Example Patents for User Interfaces Ordinary Observer Test Features: Ornamental or Functional? Ideas for Software Companies Ideas for Patent Attorneys

4 Design Patents in Brief

5 Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor.... new design ornamental design 35 U.S.C. 171 for an article of manufacture [T]he 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. MPEP 1502

6 A design patent protects the ornamentation of an entire article, of a portion of the article, or that is applied to the article

7 Design Patents in Brief Differences from Utility Patents

8 Design Patent Utility Patent 14 year term from grant date No maintenance fees 20 year term from filing date* Maintenance fees Not published until issued Foreign priority of available for only 6 months after filing Published at 18 months* Foreign priority available for 12 months after filing Scope limited by drawings Scope limited by claim language *exceptions exist

9 Design Patent Utility Patent Remedies 35 USC 284 reasonable royalties enhanced damages avail. or 35 USC 289 total profits no enhancements avail. Remedies 35 USC 284 reasonable royalties enhanced damages avail.

10 [A] design is better represented by an illustration than it could be by any description and a description will probably not be intelligible without the illustration. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) citing Dobson v. Dornan, 118 U.S. 10, 14 (1886) image from D376,826

11 Design Patents in Brief Comparison to Copyrights & Trademarks

12 A design patent is a patent. whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States a patented invention during the term of the patent therefor, infringes the patent. 35 U.S.C. 271 Importation and offering for sale claims Damages may be based on value of product Treble damages available for willful infringement Induced and contributory infringement claims

13 A design patent is a special patent. Whoever... (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, U.S.C. 289 Simpler discovery for profits vs. reasonable royalty Pre-tax profits No double recovery or enhanced damages

14 Copyright protection Infringer must copy, distribute, perform, or publicly display a work, or make a derivative work Offer for sale does not infringe Importation does not infringe Fair use is a defense

15 On the other hand, copyrights have very long terms 70 years after author s death shorter of 95 years from publication or 120 years from creation, for work for hire image from D595,732

16 Trademark protection Protection limited to mark itself (or product presentation for trade dress claims) Distinctiveness is a factor in determining infringement Fair use is a defense Then again... Short words and phrases are protectable Dilution of mark is actionable

17 Design Patents in Brief Overlapping Protection is Available

18 [A]n ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent. MPEP 1512 A design patent and a trademark may be obtained on the same subject matter. MPEP 1512

19 Example Patents on User Interfaces

20 Example Patents for User Interfaces Computer-Generated Icons Window Layouts Individual Icons Transitional (Animated) Icons Type Fonts User Selection Interfaces

21 Computer-generated icons Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation. MPEP (a)(i)(a) a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof.... MPEP (a)(i)(a)

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25 images from D608,366

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30 Transitional (Animated) Icons Computer generated icons including images that change in appearance during viewing maybe the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially.... MPEP (a)(iv)

32 image from D596,191

36 Type Fonts Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts... [even if] more modern methods of typesetting, including computer-generation, do not require solid printing blocks. MPEP (a)(iii)

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41 Selection Interfaces images from D591,765

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48 Who is getting these patents? from Google, April 26, 2010

49 Simple Standard: Ordinary Observer Test

50 Ordinary Observer Test For Infringement For Anticipation For Obviousness

51 Infringement [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. Gorham Co. v. White, 81 U.S. 511, 528 (1871)

52 Infringement [T]he ordinary observer test should be the sole test for determining whether a design patent has been infringed. Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008)

53 Recent New Twist [T]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008)

54 Recent New Twist [T]he attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer. Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008)

55 Infringement The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Int l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009)

56 Example 1 Patented Design Accused Design Prior Art

57 Example 1 Patented Design Accused Design big leap over prior art infringement more likely Prior Art

58 Example 2 Patented Design Accused Design Prior Art

59 Example 2 Patented Design Accused Design small step over prior art infringement less likely Prior Art

60 Ordinary Observer Test (as modified by Egyptian Goddess) Would an ordinary observer, looking at the prior art, comparing the overall designs, confuse the two designs?

61 Anticipation [T]he ordinary observer test must logically be the sole test for anticipation. Int l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) citing Peters v. Active Mfg. Co., 129 U.S (1889) ( that which infringes, if later, would anticipate, if earlier. )

62 Obviousness [T]he role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference. Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art. Int l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009)

63 Ordinary Observer Test Simple, right?

64 A Complication Features: Ornamental or Functional?

65 Ornamental or Functional? If the patented design is primarily functional rather than ornamental, the patent is invalid. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)

66 Claim Construction in Design Patents Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)

67 Claim Construction in Design Patents Apart from attempting to provide a verbal description of the design, a trial court can usefully guide the finder of fact by addressing... such matters as... distinguishing between those features of the claimed design that are ornamental and those that are purely functional. Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008)

68 Ornamental or Functional? Richardson s multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

69 Ornamental or Functional? D507,167 D562,101

70 Ornamental or Functional? The jaw... has to be located on the opposite side of the hammer head such that the tool can be used as a step. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

71 Ornamental or Functional? The crowbar... needs to be on the end of the longer handle such that it can reach into narrow spaces. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

72 Ornamental or Functional? The handle has to be the longest arm of the tool to allow for maximum leverage. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

73 Ornamental or Functional? The hammer-head has to be flat on its end to effectively deliver force to the object being struck. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

74 ? claimed design functional elements = ornamental design

75 ? claimed design functional elements = ornamental design

76 See the forest... no, the trees... no, the forest minus some trees? Sec. 171: design Gorham: designs Egyptian Goddess: aspects of a design differences between designs small, minor, trivial significant Int l Seaway: overall comparison

77 See the forest... no, the trees... no, the forest minus some trees? OddzOn: Egyptian Goddess: Richardson: functional... elements non-functional elements non-functional aspects distinguishing features elements of a tool

78 Ordinary Observer Test (Reprise) [The district court] recited the significant differences between the ornamental features of the two designs but, in determining infringement, it mainly focused on whether an ordinary observer would be deceived into thinking that any of the [accused] designs were the same as Richardson s patented design. Richardson v. Stanley Works, Inc., No (Fed. Cir., March 9, 2010)

79 In a nutshell... Claim Construction Judge may note ornamental features and functional features, as a matter of law Infringement/Anticipation/Obviousness Finder of fact applies modified Ordinary Observer Test to ornamental design as a whole

80 In a nutshell... Claim Construction Judge may note ornamental features and functional features, as a matter of law? design? Infringement/Anticipation/Obviousness Finder of fact applies modified Ordinary Observer Test to ornamental design as a whole

81 Ideas for Software Companies

82 Ideas for Software Companies Benefits Lower cost than utility patent applications Faster prosecution than utility applications Protects trendy new product from replicas, lookalikes, knockoffs importation and offer for sale 14 year term likely suffices Caveats not a utility patent no protection for functional features not a copyright little protection from derivative works not a trademark unavailable for short words & phrases

83 Ideas for Software Companies Mobile Apps User-friendly interfaces Window layouts Icons touch screens buttons, sliders, dials Web Widgets Consumer-friendly interfaces Window layouts Animated icons overlays, pop-ups notifications

84 Ideas for Software Companies Big Screen Apps Entertainment interfaces Window layouts Icons Animated icons Productivity interfaces Window layouts menus, selection tools ratings, preferences notifications multi-screen graphics menus, etc.

85 Ideas for Software Companies Games Virtual items Artwork in user interfaces Window layouts Window borders Fonts Animated Icons vehicles, weapons, armor tactical displays fantasy, sci-fi motifs alien glyphs, runes avatars

86 Ideas for Software Companies Enhancement to Copyright What artwork should receive protection beyond mere copyright? A Narrow Patent May Be Better Than None Where a utility patent is unlikely, a design patent can protect your UI against exact or close replicas.

87 Ideas for Patent Attorneys

88 Ideas for Patent Attorneys Prior Art Expanded role after Egyptian Goddess Consider a prior art search to guide which details to claim Solid lines = claimed design Broken lines = context only, not claimed

89 Ideas for Patent Attorneys Consider... Claiming a design for only part of an article (functional features may be avoided) Illustrating multiple embodiments of same design (fonts) Filing multiple applications on group of similar designs After grant, these may affect state-of-the-art and the scope of subsequent design patents

90 Claiming a Design for Part of an Article images from D608, 368 and D 601,582

91 Illustrating Multiple Embodiments of Same Design images from D553,182

92 Filing Multiple Applications on Similar Designs images from D545032, D545033, and D529263

93 Questions?

94 Thank you. For more information please visit :