Why design patents for software?
Should you even bother patenting software? Perhaps you heard that software utility patents are difficult to obtain. The prospect of spending thousands of dollars and years of time with a highly uncertain outcome can be a non-starter for small businesses. Software design patents might be a more attainable and affordable option.
Software design patents do not encounter the rejections commonly issued in utility patent applications. No more Section 101 ineligible subject matter rejections. Forget about dealing with Alice issues. If your graphical user interface (GUI) is sufficiently unique, you have a good shot at getting a design patent.
Need software design patents? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you patent your graphical user interfaces.
How do you get stronger software design patents?
Design patents protect visual appearances and not the functionality of products. So how can you broaden the scope of your design patent to gain greater protection? There are strategies to broaden the scope of a design patent claim so that you can stop others who do not use an identical interface.
Suppose a competitor copies key design features of your interface without making theirs identical. It pays to think ahead as to how the competition might avoid the less important visual features of your design. You will then want to discuss this thoroughly with your patent attorney to have the design patent drawings carefully prepared with the strategic use of broken lines.
Display Panel: What is an article of manufacture?
At the outset, recognize that you cannot obtain a design patent on an image, per se. Design patents must cover articles of manufacture as required by 35 USC 171.
To protect a graphical user interface (GUI) with a design patent, the drawings must show a display panel. You can use dashed lines to indicate that the visual appearance of the display panel itself is not covered in the claim. The title and specification must refer to the display panel or some type of article of manufacuture.
Why does the article of manufacture matter?
USPTO design patent examiners will search the prior art to see if they can find something visually similar to your claimed design. The article of manufacture defines the scope of analogous prior art that can be used to reject your design patent application.
For example, in the Surgisil case, the examiner attempted to use a prior art reference of an art tool to reject the claimed design for a lip implant. The examiner’s rejection was reversed by the Federal Circuit because the article of manufacture, a lip implant, defines the scope of analogous prior art that can be used to reject the design patent application.
Similarly, the scope of a design patent for infringement purposes will also be defined by the article of manufacture. You cannot have it both ways. If the scope of prior art is limited, then generally the scope of infringement is similarly limited.
How do you protect an animated GUI or moving images?
A still image is typically straightforward to patent. The design patent drawing would show the graphical user interface on a display panel.
What if you wanted to protect motion or a series of images that form a single continuous interface? It is possible to file a design patent application for an animated or transitional graphical user interface. The design patent drawings should be carefully drawn under the supervision of an experienced design patent attorney. The specification should also be carefully drafted.
Otherwise, the design examiner might regard your design patent application as containing multiple embodiments and issue a Restriction Requirement.
What is a design patent on a transitional GUI?
Certain interfaces may not necessarily be animated. For example, instead of an object moving across a screen, you might see an icon that transforms into something else as a result of an action by the user. These types of transforming images might more aptly be termed as transitional graphical user interfaces.
It is possible to obtain a design patent on a transitional GUI. The key is to prepare both the drawings and written specification in such a way so as to capture the transitional nature of the interface. You want to avoid an interpretation of your drawings as constituting multiple embodiments of still images.
How long do software design patents last?
Unlike the term of a utility patent which is counted from a particular filing date, the term of a US design patent is 15 years from the grant date. This means that the time during which the design patent application is undergoing examination with the USPTO does not count towards the term.
Can you file a design patent application based on a utility patent application?
Suppose you have a pending utility patent application. Can you file a design patent application based on this utility application? Yes, it is possible to file a child design patent application based on a parent utility application. However, such a design application must meet several requirements.
The pending utility application cannot be a provisional patent application.
Need to get software design patents?
Software design patents require careful planning and execution. Explore working with US patent attorney Vic Lin and his team by contacting vlin@icaplaw.com.
