Time to file a user interface patent in Australia?
Beata Khaidurova and James Coburn of FB Rice delve into a chronology of Australian Patent Office decisions and find a pattern of reasoning which shows that some UIs may be protectable under Australian patent law
User interfaces (UIs) are with us at almost every part of our day – in the morning when we check our phone for the latest news; at work as we sit to write an email; and even as we exercise and check our heart rate on our smart watch.
Often, the functionality and aesthetics of a UI can make or break the success of a product, app or website. For UI designers and developers, it would seem sensible that the work they put into designing such UIs be protectable. However, many designers seem unaware of the registered IP protection rights available for UIs.
One form of registered IP protection available is the registered design, which protects the overall appearance of a product resulting from one or more visual features. Much UI design does indeed relate to visual aesthetics. Therefore, designers seeking to protect user UIs may consider registered design protection at first instance, rather than claiming that the UI is an invention for seeking patent protection.
However, as already described in our article GUI designs in Australia, despite being registrable, examination of designs filed for graphical UIs has posed problems to applicants under current law, such that these designs are unable to be certified or enforced. If registered designs have efficacy issues protecting UI, are there other avenues for protection?
Patent protection for the UI may be considered another avenue. However, computer-implemented inventions, and thus many UI inventions, are not categorically considered patentable subject matter (manner of manufacture) by the Australian Patent Office (APO). Such inventions, if considered not a manner of manufacture, will be denied patent protection.
When less is more
In Aristocrat Technologies Australia Pty Limited, UI elements of a gaming machine were found to be a manner of manufacture. Paragraph  of the decision sets out the claimed invention, which relates to a gaming machine having image elements that allow a particular game and a bet denomination for the game to be selected.
As noted by the delegate in the decision, in the objection originally raised during examination the examiner had alleged that the substance of the claimed invention was to “games characterised by rules for the progress of game play” and therefore that the invention’s contribution was not technical. This caused the examiner to conclude that the alleged invention was not to a manner of manufacture.
Contrastingly, in the APO decision it was determined that the substance of the invention was for a new and improved UI for selecting both a game and bet denomination with a single selection.
The delegate found that a technical advantage lay in an efficiency gain, which was due to a technical effect of a reduction in the number of selections the user had to make to choose a game and bet denomination. Therefore, the invention achieved a “practical and useful result” by “simplifying the use of the gaming machine” and consequently was considered a manner of manufacture.
In line with the Aristocrat  decision, an improvement to a UI was also found to be patentable in Apple Inc. . The Apple, Inc.  decision relates to an application claiming particular UI features that displayed UI objects and caused animation of those objects in a particular sequence.
In this case, the delegate considered that the contribution made by the claimed invention was to do with the manner in which the animation sequences were stored and redisplayed to a user. The claimed invention allowed for a variety of animation sequences to be displayed to a user without needing to store each particular sequence individually. Instead, the individual animations were stored and then displayed in various combinations to produce a large number of different animation sequences.
The delegate held that the method of reusing animation sequences enabled a technical advantage to be achieved. The technical advantage arose because the stored individual animations used less memory than the storing of whole animation sequences, which duplicated the storing of individual animations.
A stitch in time saves nine
A more recent (APO) decision was Apple Inc. . This case related to a UI for editing a clock display on an electronic device, which was also determined by the delegate to be a manner of manufacture.
The delegate in Apple  noted that the specification described existing interfaces having similar functionality as “cumbersome and inefficient”, as they required “multiple key presses or keystrokes” to allow editing of the UI. This meant that these techniques “require more time than necessary, wasting user time and device energy”, which was highlighted to be particularly important for battery operated devices.
Claim 1 of the application related to a method for allowing a user to enter a clock face edit mode from a clock face selection mode on an electronic device. The method included detecting a first contact on a touch screen display to cause the device to enter a clock face selection mode, and detecting a second contact on a touch screen display to cause the device to enter a clock face edit mode.
The delegate mentions that the specification noted this allowed “for a single user interface for selecting and modifying images to generate an image-based context-specific user interface”, which results in a reduction of user inputs, “thereby reducing battery consumption and processor power”.
Opportunities for UI patent filings
As discussed above, there are a number of cases in which UIs may be patent eligible in Australia. Therefore, it appears to be worthwhile to consider seeking patent protection for new and improved UIs.
In particular, improvements in UIs that may be patentable include cases where the functionality provided by the UI results in an improvement to the usability of the UI, or where the manner in which the UI is displayed is an improvement in the way that the computing device operates.
Key takeaways for UI patentability
UIs may be patent eligible where:
The UI is simpler or more efficient to use than previously known interfaces;
The UI reduces the number of user inputs required, resulting in a saving of battery and/or processing power; and
The UI elements are displayed in a way that reduces computing power or memory required to store them.
Senior associate, FB Rice
Trainee patent attorney, FB Rice