Why consider design patents for software?
Utility patents for software, though potentially powerful, are notoriously expensive and difficult to obtain. If you are thinking of applying for a software utility patent, plan a big budget in the tens of thousands and expect the patent process to take years of time with no guarantee of success. Considering design patents as an alternative or in addition to utility patents for protecting your software. A software design patent will typically be more affordable with potentially a greater chance of allowance in a shorter amount of time.
Need to file a software design patent? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
What would a software design patent protect?
Design patents do not protect functionality. Instead, they cover the visual appearance of an invention. When it comes to software design patents, the protection extends to the graphical user interface shown on the screen of a device.
Not everything shown on a screen has to be included in the design patent drawings. This is where it helps to work with an experienced patent attorney. Careful thought should be given not only to what is shown in the design patent drawings, but also to what should be omitted or drawn in broken lines in the illustrations.
Can you patent animated or moving images?
Yes, it is possible to show animation or a series of moving images in a single design patent application. To cover an animated graphical user interface, you will want to pay special attention to the:
- design patent drawings showing the motion or movement of certain design elements;
- title; and
- specification.
Obvious or nonobvious design patent?
In May 2024, the Federal Circuit completely changed the standard for determining whether a claimed design would be obvious over prior art. The old Rosen-Durling test was replaced with a new design patent obviousness standard in LKQ v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024).
Under the old test, the primary prior art reference had to be “basically the same” as the challenged design claim. Any secondary prior art references had to be “so related” to the primary reference that features in one would suggest application of those features to the other.
Under the new LKQ test, design patent obviousness is a more flexible analysis that takes into consideration the following factors:
- scope and content of prior art – namely, must be analogous prior art covering a device screen;
- determining differences between the prior art designs and the design claim;
- level of ordinary skill in the pertinent art; and
- motivation to combine secondary prior art references with a primary reference.
Does the USPTO use AI to search prior art visual images?
In the past, USPTO design patent examiners could not use common visual search engines such as Google Images or Google Lens to search the prior art. Design patent applications must be kept confidential. Therefore, USPTO design examiners were precluded from using public search tools.
That has changed. USPTO design examiners now use an AI tool specifically designed to search visual prior art while maintaining the confidentiality of applied-for designs. The examination of design patent applications may become more challenging for applicants as examiners will be able to find prior art more easily.
Is it easy to get a software design patent?
Current trends would suggest that design patents may become more difficult to obtain for at least the following reasons:
- A flexible obviousness test will enable examiners to issue more rejections based on prior art. These rejections will be more difficult to argue and prevail against under the LKQ test.
- The new AI search tool will assist USPTO examiners in finding more potential prior art.
How can you improve your chances of getting a software design patent?
Despite the current challenges, software design patents are not beyond reach. Software designers need to collaborate with their patent attorneys to formulate a game plan before applying.
If your graphical user interface is relatively simple, consider how it might be rejected. Should you add certain visual elements? Would doing so drastically reduce the scope of coverage against potential competitors?
Does your GUI have too much detail? Should certain visual elements be removed or drawn in broken lines?
Feel free to contact US patent attorney Vic Lin at vlin@icaplaw.com to see how we can help you patent your software.
