Protecting GUIs in an outmoded system

A graphical user interface (GUI) is a virtual environment where humans and computers most often meet, a place we visit daily for work and pleasure. Depending on their degree of interactivity, GUIs may include: all static layouts for showing data entries on a screen; sophisticated navigation tools helping the user scroll and focus on interesting data; and, dedicated input tools through which the computer accepts new data from the user.

Consumers' awareness of subtle GUI details has not gone unnoticed, as the emotional response they provoke often translates into a firm 'buy' or 'won't buy' decision. To the existing principle that GUIs should be seamless and transparent, insightful stakeholders are now adding a requirement for them to be recognisable and distinctive too. A key driver of product value, cool GUIs are a likely target for imitators.

The EU holds the prime position in global trade, and shares the number one ranking for consumer goods. While IP rights are well respected and efficiently enforced in EU member states, innovation relating to GUIs is not particularly favoured by the European patent system. As an example, the share of European patent applications from which at least one patent has granted in class G06F3/048, GUI-based interaction techniques, is about 20%, far below the normal 50% in conventional electric technology.

"Innovation relating to GUIs is not particularly favoured by the European patent system"

The reticence in granting GUI-related patents, in the European Patent Office (EPO) as well as national offices aligning themselves with EPO practice, can be tracked historically. This is a young field, and we may excuse the original European Patent Convention (EPC) drafters for not realising its potential. At the time, they unwittingly placed GUI inventions at the outer reaches of technology and close to the excluded domains known as presentations of information, programs for computers and even aesthetic creations (article 52(2)). In an established, venerable field like class G01D7/00, Indicating measured values, for example, in vehicles, the grant statistics are normal; objections to lacking technical character are rare despite the high value many of the ideas would have if implemented in a computer GUI. In contrast, the EPO puts GUI-related inventions under strict scrutiny, to make sure features lacking technical character do not contribute to inventive step. The following language from the Guidelines for Examination, section G-II, 3.7.1, on user interfaces, is representative: Features concerning the graphic design of user interfaces do not have a technical effect, because their design is not based on technical considerations, but on general intellectual considerations as to which design is particularly appealing to a user.

For example, the colour, shape, size, layout or arrangement of items on the screen is usually not a technical aspect of a graphical user interface. Also, the information contained in a message displayed on a device is not technical even if it prompts the user to perform some specific action on the device.

Lessons learned from case law on GUIs

Always implement your ideas with originality (T1575/05) Invent ground-breaking scroll tools that make the limits of the screen dissolve (T928/03) Display completely new types of information (T115/85 and T579/11) Work with images and sound, not imaginary concepts (T643/00) Focus on input rather than output (T333/95 and T125/04) Don't trust the user to act on the displayed information, however well you present it (T1143/06, T1741/08)

However, when these features are combined with interaction steps or means or when they concern technical information (eg internal machine states), the examiner must check whether they are necessary for achieving a particular technical effect, for example by enhancing the precision of an input device. The technical effect achieved might be a more efficient man-machine interface. Existing examination practice for GUIs can be described as a special case of the Comvik approach (or mixed approach, or non-technical hindsight) that grew out of the above patentability exclusions and finally crystallised in the early 2000s. It has since been embraced so broadly by examiners that candidate European patent attorneys may expect it in a future examination paper. Comvik is stable and reasonably simple – it essentially says that examiners must ignore non-technical contributions when they examine an invention for inventive step – yet produces fine distinctions.

The EPO boards of appeal have considered the patentability of a number of specific GUI inventions, and their decisions can be read as fragments of a map showing what you can and cannot get a European patent for. The conclusions in the decisions carve out the limits of user interface patentability, but are of limited guidance, and even potentially misleading, when you isolate them. For instance, if I explain to a client that, generally speaking, a GUI may be patentable "if the manner of presentation can be shown to have a credible technical effect" (T1143/06), I have then misled the client who asks "where can I buy a technical effect?" (IPKat). The above list of "Lessons" tries to illustrate the bizarre result of condensation driven too far and of trying to turn reasons for refusal into constructive advice. Only a very disciplined inventor, employed in a very patient research and development department, could use these lines as his roadmap for inventing.

In my daily work as a patent attorney, rather than presenting inventors with the Law summarised into one enigmatic sentence, I prefer to discover the potential inventions in a new product by adopting an innocently prying approach, where I allow my questions to wander off until they ring the first patent bell in my mind. Or rather, till the bells stop striking 'non-technical', 'refused in decision X', or 'probably trivial'. The aspects of the product that don't fail these tests are often worth putting down in writing. I do feel sorry for IPKat, but even more I pity the technical effects that never get unveiled, due to poor drafting methodology or lack of curiosity.

Perhaps the reason you have read thus far is for insight into Apple, and some of their so-called revolutionary products and lawsuits over exclusive rights to certain GUI features. Let's see how some of Apple's applications are doing in Europe.

US Patent 6 396 520 (see figure 1), for a method of transition between window states, protects an animation illustrating the process of minimising a window by deforming it and sending it off to the taskbar. EP 1 249 014, one of the European counterparts, was the subject of appeal decision T50/07, which held that the claimed invention was a purely aesthetic achievement relative to the prior art.

"This is a young field, and we may excuse the original European Patent Convention (EPC) drafters for not realising its potential"

The European counterpart of the famous 915 patent, or "pinch-to-zoom", is still in examination and is being objected to for lack of a technical effect. The examiner judges that the differences over the prior art achieve "a visually more intuitive GUI", which however cannot, or must not, contribute to inventiveness. To follow the fate of the file, keep an eye on EP 2 102 738. In 2012, Apple were successful in having their application of the so-called overscroll bounce or rubber-banding invention granted as EP 2 126 678. This patent was opposed by all of Samsung, HTC and Motorola Mobility. While the patent remains formally valid at least to the end of the opposition, and uncertainty is gradually being cleared as the proceedings move on, the attacks seem to hold so much weight that national courts are unwilling to order injunctions in the meantime. HTC also filed for revocation of the UK part of EP 2 126 678 in the British Patents Court, but have now withdrawn this action and their opposition as well.

These three examples are anecdotal, but not unfair from a statistical point of view. I have estimated the overall EP grant percentage for Apple's GUI cases to be about 27%. Although this is significantly above the average 20% in this technical field, quick and easy grants are clearly rare. What other ways could Apple – and other organisations – rely on to secure exclusivity to the key features of a new GUI when patenting fails?

EU Community Design offers protection for animated icons (see RCD 001158471-0001 for an example), and it was recently reported that the State IP Office in China has made a move in the same direction. Registered Community Design (RCD) has its limitations from a legal point of view: the unregistered protection expires just three years from the product launch, whereas registered protection becomes unavailable due to lack of novelty if the design application is filed more than a year after the launch. Very rarely will an applicant know in just a year that an application is bound to fail, so the option of filing an RCD is no fix-all solution to fall back on. Even more serious is the fact that neither European nor Chinese design rights can capture interactivity between man and machine.

"Patents stand out as the ideal legal instrument for protecting any GUI that involves at least basic interactivity"

Several European countries issue utility models and enforce them in the courts. While methods cannot be protected as utility models, devices with functional features typically can. An unstable right in itself, an unexamined utility model does not exactly benefit from the related patent application on the same invention, which is in turn connected to an examination file stuffed with relevant prior art. As a second choice after patenting has failed, utility models are not of very much use. As is widely known, computer programs enjoy copyright protection as literary works. This includes the set of programming instructions, or code, that implements a GUI. The copyright may be effective in stopping direct copying but not more sophisticated imitation, or the practice of so-called clean room design. The judgment of the CJEU (the EU Court of Justice) in case SAS Institute v World Programming (C-406/10), which was reported in the AWA Review (issue 2/2012), confirmed that the scope of protection is very narrow. According to the judgment:

neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program and, as such, are not protected by copyright.

Even before the judgment in C-406/10, copyright experts would tend to consider the visual aspects of the GUI merely as an emanation of the code. Even taking into account the odd case where a GUI surpasses the legal threshold of originality (and it probably takes more than it having been refused by the EPO as an aesthetic creation), transactions and agreements relating to the copyright of the GUI would involve a great deal of uncertainty for both parties.

In summary, patents stand out as the ideal legal instrument for protecting any GUI that involves at least basic interactivity. For research and development stakeholders wishing to be successful in their patenting, capable patent attorneys should be involved from the drafting phase, to record all features of the GUI that could contribute to a technical effect. It is well known that some enterprises with high yearly filing numbers get their priority applications drafted very cost-efficiently, with a calculated risk that prosecution will be tough in some of the cases, which will then be more costly and require more IP counsel hours. I am not in a position to criticise this strategy as such, but cannot help but think that GUI inventions might be one of the riskiest fields in which to rely on it. Invention harvesting and claim drafting are here best left to attentive ears and skillful hands, ensuring that the application offers a basis for reformulation and argument. This makes the salvaging of a difficult case all the more easy.

One must not forget that the relatively low grant rate in this field favours the bold and persistent: each patent that is granted will be of considerable strategic value.

Anders Hansson
		Anders Hansson is a European patent attorney in Awapatent's Stockholm office. With a background in applied physics and a PhD in mathematics, he assists clients in various branches of information technology, including mobile communications, digital audio coding, access control, data integrity, information forensics and online trade solutions. Anders has extensive experience as a professional representative in EPO proceedings, and is currently increasing his focus on dispute resolution and litigation.