Protecting Your Look and Feel When Your Store Is Made of Bytes, Not Bricks: Using Design Patents for Graphical User Interfaces

Authored by Elizabeth D. Ferrill

Imagine that you were magically dropped into your favorite store with your eyes closed. When you open your eyes, you see the color of the walls and the design of the carpet, the material of the countertops, the soft lighting, and the racks of merchandise arranged just so. Even without reading a single sign, you would surely know where you are. This is because even without the store's name, you identify the store by its "look and feel."

Traditionally, smart retailers also mimic this "look and feel" in their catalogs, advertising, and even the hold music on their toll-free number. Today's retailers transform those physical characteristics into their websites and mobile apps, trying to maintain the consistency for all of their customer touch points. And for those retailers with no brick-and-mortar stores, the appearance of the websites and mobile apps is even more important, not only for a consistent consumer experience, but also to differentiate their online presence from their competitors'. While companies have long protected the physical elements of their stores with design patents, copyrights, and trade dress, now more than ever they are turning to design patents to protect the online elements as well. In this context, "online elements," broadly refers to GUIs ("graphical user interfaces"), the human-computer interface that allows users to interact with electronic devices through graphical elements and visual indicators.

U.S. patent law allows the protection of the visual appearance of the GUIs as a "surface ornamentation" on the screen of a monitor or smartphone. It is possible to protect both static images (e.g., not-moving, usually a single figure) and animated series of images (e.g., at least two figures with elements that appear to "move" when viewed like a cartoon flip-book). Notably, the PTO guidelines specifically state that the "process" by which one figures transforms into the other and the "period" between the transitions are not part of the claimed design. Thus, whether the images transition in seconds or hours, the resulting design patent would look the same.

The history of design patents and GUIs is relative short. In 1992, in Ex Parte Strijland, 26 USPQ 2d 1259 (BPAI 1992), the U.S. Patent and Trademark Office's Board of Appeals and Interferences first announced that GUIs could be protected with design patents.

Although the Board actually rejected the pending application in Strijland, shown above, for issues that the applicant could not rectify, the case outlined for the first time how an applicant could protect a GUI with a design patent. In 1996, the PTO formalized these requirements in its guidelines. Then, in 2005, the PTO added guidelines for protecting animated designs. Below are some more recent examples of design patents claiming icons and GUIs:

Companies turn to design patents to protect their GUIs primarily for two reasons. First, they want to keep direct competitors from outright copying of their characteristic icons and familiar interactive elements. But also, companies look to these patents to help with differentiation of source identification. In this sense, these design patents can co-exist with certain trademark rights to reduce consumer confusion. When every customer is coming to your "store" (as well as your competitor's) through the same smartphone screen, the last thing you want is having a customer "feel" like they are using your site when they are at your competitor's. But even a single mobile app may have dozens, if not hundreds of a screen layouts and icons. And while a company could try to protect every one, few have the budget to do so. So the most important thing is to select those icons and user interfaces that are used repeatedly throughout your site or application. By distilling down the consumer experience to a handful of "iconic" icons and interactions, you can best protect your online presence, even with a limited budget.

So how easy is it to get a design patent on a GUI? To be blunt, the PTO guidelines for GUI applications are picky. They require specific phrasing for the title and the figure descriptions. While these types of problems can often be fixed, the PTO examiners take a dim view of amending the figures in GUI applications. Typically, amending the figures of a three-dimensional object is often based on reference to other views. But, with GUI applications, there is only a single perspective (e.g., the "front" view), so there are no other views to rely on. In addition, while converting claimed portions of the design (in solid lines) to unclaimed (in dashed lines) and vice versa is permitted under some circumstances for designs for three-dimensional objects, the PTO has generally held that making such changes in GUI applications is not permitted. In the PTO's view, any such changes could not be supported in the original disclosure of the GUI, and invariably must be the introduction of new matter that was not supported by the originally-filed application. Unfortunately, all of this adds up that a GUI application is often a one-shot attempt, fraught with traps for the unwary. And given the relatively short lifespan of most GUIs, and the nearly four-year waiting period for review of appeals to the Board, it seems unlikely that any of these traps will be resolved soon.

Despite these issues, the number of design patents claiming GUIs has exploded with the growing popularity of smartphones and tablets. The PTO reported in March 2014 that the applications claiming GUIs are the most rapidly growing area of design patent filings within the USPTO as well as worldwide.

Going forward, the future continues to look bright for these applications as well. The use of GUIs promises to rise as home appliances, office equipment, and cars become increasingly interactive devices. Smart companies will consider protecting these online assets the same way they do their real world ones.

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