The fast development of technology worldwide including the evolution of digital systems has caused a global revolution in daily life. This development has resulted in new challenges for the protection of IP rights, particularly for digital inventions, since developers of this kind of technology seek appropriate ways to protect their ideas and competitors copying them.
Today, it is common to hear about IP battles between leaders in the development of digital technology such as Apple Inc v Samsung Electronics Co, which resulted in several lawsuits in different countries related to their IP rights in the digital field. Thus, when a company develops a new product, it must consider appropriate protection including the brand and the functional characteristics of the invention but also the aesthetic appearance, which has become an indispensable element.
As to electronic devices such as mobile phones, PC, laptops, videogames, tablets and other mobile devices, developers are aware of the importance of the aesthetic appearance to reach the final consumers, so that they focus part of their efforts on creating devices that have a distinctive physical appearance but they also worry about creating digital environments to be displayed by such devices to allow friendly and direct interactions with users.
"In Mexico, the Industrial Property Law states that industrial designs can be divided into industrial drawings and industrial models"
These digital environments displayed on the screens of electronic devices, which allow easy and controlled access to different kinds of information such as that contained into the devices as well as the information over the internet or the cloud, are better known as graphical user interfaces (GUIs).
GUIs include the different icons or item screen content as well as their specific arrangement. Furthermore, in some cases, such GUIs could also include the screen layout or the motion of those elements which, when activated, involve animated sequences shown to the user. Indeed, some GUIs are clearly associated by users with a specific company so that IP protection of these features has become an important issue for companies.
Although it is clear that physical aesthetic features can be protected by industrial design patents or registrations depending on the jurisdiction where the protection is sought, the question arises as to what happens with the digital features displayed by these devices: how to protect them? In this regard, law offices worldwide have been developing criteria for this protection, since initially there was no certainty as to the type of protection under which the applicants must file the GUIs.
In the United States, initially there was controversy between whether to seek protection for the interface by a copyright or by a design patent. The courts concluded that the best option to protect a GUI is through a design patent since GUIs are more than a mere expression of an author.
In Europe, the protection varies with respect to the aesthetic or functional features of the GUIs. If protection is only sought for each icon, or for the order in which they are displayed on the screen, then that GUI is protected by an industrial design since it only protects the aesthetic aspects. However, if the GUI influences the means of operation and perhaps improves accuracy in the selection of the elements of the interface, then it may be eligible for protection by a patent.
In China, the guidelines to carry out the substantive examination of design patent applications were modified with the aim of protecting GUIs, which were not considered to be eligible for protection.
Thus, the global trend is to protect these digital features by means including the legal tool of industrial designs.
In Mexico, the Industrial Property Law states that industrial designs can be divided into industrial drawings and industrial models. On the one hand, industrial drawings are any combination of shapes, lines or colours that are incorporated into an industrial product for ornamentation purposes, which provide a unique appearance of its own. On the other hand, industrial models are constituted by any three-dimensional shape that serves as a model or pattern for the manufacture of an industrial product that gives it special appearance that does not involve any technical effects.
Availability of information technologies in Mexico (2001-2013)
Taking the above definitions into account, and in view of the growth of applications seeking protection for digital features, the Mexican Patent Office has finally decided that GUIs comply with the industrial drawing definition, that is to say, that GUIs are combinations of shapes, lines and colours which are incorporated into a product to provide a peculiar appearance. Thus, in recent years, protection of digital features has been accepted by the Mexican authorities through the industrial drawing registration which provides 15 years of protection.
This criterion is particularly relevant in Mexico, since the Mexican market is a priority for mobile technology companies, due to the fact that the use of mobile phones represents the major growth in availability of information technologies in recent years4, as can be observed in the chart.
For an industrial drawing to be registered, the design must be novel and have industrial application. The definition of novelty related to industrial designs is different from that for patents. In order to consider a design as novel, it has to be different in significant degree from well-known designs or combinations of known designs.
Furthermore, in practice, it is also important to consider the following tips for drafting an application in order to obtain an adequate protection for digital designs in Mexico.
First, according to Article 25 of the Regulations of the Law, the title of the design must correspond to the nature of the claimed design. Therefore, it is important that the title corresponds to the digital features to be pursued, for instance to a specific icon, to the general GUI or to an animated sequence with a specific purpose.
"The Mexican Patent Office has finally decided that GUIs comply with the industrial drawing definition, that is to say, that GUIs are combinations of shapes, lines and colours which are incorporated into a product to provide a peculiar appearance"
Another important issue is related to the specification of the application, which must include a clear explanation of the claimed features. This issue is particularly relevant for designs pursuing protection for animated digital sequences so that the way in which those sequences are displayed is understood. In this particular case of animated sequences, it is also recommended to specify whether the claimed element is in its active or inactive state in the different views displayed.
As for the figures of a design application pursuing digital elements, it is important to clearly and fully show the elements claimed either as icons or as a set of elements with a specific configuration into icons. Moreover, it is suggested to include how such elements are applied to the physical device but including physical features such as the screen, buttons, casing, etc in broken lines in order to clearly establish that they do not form part of the claimed design, which in this specific case is a drawing. These physical features can be protected in a separate design application that pursues specifically an industrial model application according to the above-mentioned definitions provided by the Mexican IP law.
Additionally, in animated interfaces or when in motion, the graphic representations should clearly follow the exact sequence in which they are displayed.
By considering the above suggestions when seeking protection in Mexico for an industrial design, the applicant can avoid certain objections during the substantive examination of the application, which could speed up allowance and registration. However, it is important to bear in mind that the criteria for analysing this kind of design are evolving continuously.
Jorge Juarez is a mechatronics engineer specialised in computerized manufacture. He graduated from the ITESM in 2006. Jorge joined Becerril, Coca & Becerril, SC that year, and became an associate of the firm in July 2013. He is a specialist in mechanical and optical systems, data transfer and computer technology, electronic control networks, automation systems and data security systems. As manager of the technical patent department, he coordinates the team of engineers in charge of the technical analysis of inventions and provides specialised advice for inventions related to applications in computing and related fields, such as software applications, telecommunications engineering, electronics, image and signal processing and mobile communications.
Claudia Campos is a bachelor in mechatronics engineering and graduated from the Universidad Anahuac Mexico Sur in 2005, where she also obtained a master's degree in business administration with a specialization in marketing in 2007. Claudia joined Becerril, Coca & Becerril, SC in 2007. As patents coordinator, Claudia heads the group of department engineers in the mechanical, electrical, industrial designs and utility models area. She focuses her practice on prior art searches, patentability analysis and drafting of new patent applications and in providing her clients with specialised advice in the technical and legal fields to find the best way to obtain a patent.
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