Japan: An analysis of GUI protection in Japan

In Japan, it has now become possible to protect GUIs (graphical user interfaces) under the Japanese Design Law, after repeated amendments to both the Design Law and the examination guidelines. Japanese Patent Law can also provide protection for GUIs. In this article, we describe in detail the protection of GUIs under the Design Law and Patent Law, since there has been a growing need for GUI protection in recent years.

First we explain the scope of GUI protection under the Design Law and the effects of design registration, to provide a deeper understanding of the purposes and limitations of GUI design applications. Second, we illustrate the protection of GUIs made possible by changes under the Design Law. Finally, we describe GUI protection from a technical standpoint under the Patent Law.

Under the Design Law, GUIs are protected as part of goods. Therefore, GUIs themselves cannot be protected individually. For example, if you wish to register a GUI to be used for a digital camera, the title of the design application must be 'digital camera', the GUI should be drawn in solid lines, and the digital camera should be drawn in dotted lines.

To ensure protection under the Design Law, a GUI must be either an image necessary for the goods to serve their function (such as maps for navigation systems), or an image which is operated to enable the goods to fulfill their function (such as search buttons in navigation systems).

At the present time, computers including smartphones and tablets on which operating systems and applications are installed are generally used. However, GUIs of operating systems and applications installed on computers are not currently protected under the Design Law (August 2015), since the provisions on GUI designs intend to mainly protect GUIs of embedded software for special-purpose machines. In view of the increasing importance of such GUIs in the market, the Japanese Patent Office (JPO) is considering revising the design guidelines to expand the scope of protection to GUIs of operating systems and applications installed on computers. According to the revision draft, such GUIs will be protected as a part of the computer on which the operating systems or application of the GUIs is installed. For example, the title of an application for a GUI of pedometer software installed on a computer should be 'computer with a pedometer function'.

GUIs can be protected under laws other than the Design Law. However, many companies use design applications in order to protect their GUIs because the Design Law has several advantages.

The holder of a design right has a monopoly on the registered design for 20 years after the registration date. In addition, a design right can prevent third parties from using not only the registered design, but also designs similar to the registered design.

The Patent Law is quite effective in protecting the technical aspects of GUIs. However, if a third party's embodiment which is similar in appearance does not infringe a patent right, a patent holder will not be able to deal with infringement by the third party's embodiment without owning a design right, since the Patent Law does not protect appearance.

Although GUIs can be protected under the Copyright Law, there is a risk of receiving a judgment stating that the Copyright Law does not apply. In fact, there are cases in which it was judged that GUIs do not apply to copyrights, and infringement of the copyright was denied (Case numbers H13 (wa)-16440 and H24 (ne)-10027).

The Trademark Law protects only GUIs such as icons, which fulfill a function as a trade mark, and operational GUIs are often not protected.

The Unfair Competition Prevention Law, article 2, paragraph 1, numbers 1 and 2 protect only GUIs which show the product's source and business. In many cases, operational GUIs are not protected. To address a third party's use of your GUI based on number 1, it is necessary to prove that your GUI is famous at least locally, and that the opponent's business will be confused with yours. Under number 2, it is necessary to prove that your GUI is widely famous. Number 3 in article 2 applies only to a 'dead copy' imitation including the form of the entire product in which a GUI is used. Protection against dead-copy infringement is in effect for only three years after the product release date.

When a number of GUIs containing a specific design style are registered, other parties are unable to use or register that design style. Therefore, companies are able to protect their design style via design registrations.

Under design application procedures in Japan, an examination is conducted to determine whether the design is novel and whether it could be easily created by those skilled in the art. In other words, to register a design means to show that the design is novel and could not be easily created. Therefore, the registration of a GUI design produces an advertising effect which shows that the GUI design is superior.

The design registration rate in Japan is extremely high: more than 80%. Since it is unlikely that expenses for registration will go to waste, companies can aggressively file applications.

The design registration of a static GUI is not enough to sufficiently protect the so-called user experience. It is necessary to protect a GUI's moving form, including any screen transitions. Registration of a moving GUI design is permitted under Japanese design practice. However, since the Design Law employs the principle of one design per application, applications should meet the following two requirements in order for a moving GUI consisting of a number of screen images to be recognised as a single design: (i) both screen images before and after a change relate to the same function of the goods; and (ii) the screen image before the change is morphologically-related to that of the screen image after the change.

The following examples illustrate the above requirements.

Both of the above two images relate to an audio volume function and meet requirement (i). Since the images are different only in the part depicting the volume level and are the same with regard to everything else, requirement (ii) is also satisfied. Therefore, this GUI can be included in one application.

For GUIs consisting of three or more screen images, the second requirement will be examined for each pair of images. For example, in the case of the above GUI, image 1 and image 2 are examined first regarding the second requirement, and then image 2 and image 3 are examined regarding the second requirement. All three images are used for the same function of setting up a game machine and they meet requirement (i). The appearances of the four icons on the left side of images 1 and 2 are identical, and the four icons and pop-up window of images 2 and 3 are similar. Therefore, they meet requirement (ii).

Under design application procedures in Japan, the judgment of whether a moving design applied for is similar to a publicly-known design is conducted by comprehensively observing the moving design, including embodiments before and after the change. In addition, even if the appearance of a GUI can be created easily, the GUI design can be registered if embodiments showing the change are not based on a method common to those skilled in the art. Therefore, even a GUI focused on a change rather than a static appearance can be registered as a design.

In this section, we will explain the range of protection for GUIs under the Patent Law, differences from Design Law protection, and the effects of patent registration.

The Patent Law protects the 'advanced creations of technical ideas utilising natural laws'. On the other hand, the subjects of protection under the Design Law are 'shapes, patterns, or colours of goods, or their combination which visually causes a sense of beauty'.

In order to protect GUIs under the Patent Law, a sense of beauty is not relevant but technical features, such as internal processing to generate images, are essential. GUIs may be protected under the Patent Law if its technical features are closely related to images of the processing results. Particularly, in the field of image processing, analytical and statistical processing, and games, we occasionally come across cases in which GUIs are protected via technical expressions. Examples of technical expressions include: 'to display comparably'; 'to display a list'; 'to display separately'; 'to display side by side'; 'to display A more clearly than B'; 'to display by flashing'; and 'to show in a bar graph'.

Technical effects are required in order to obtain a patent right. For example, possible technical effects are being easily viewable and easily comprehensible, or to improve operability for a GUI with an operation input part.

For design applications, applicants must indicate the shape or the like accompanied by drawings, and the design right covers a similar scope. In contrast, for patent applications, it is common practice to attach drawings for reference, but the scope of the patent right covers only what is literally recited in words in the claims. The scope of a claim recitation is usually broader than that of a similar design. Therefore, in some cases, it may be said that a patent right is stronger than a design right only from the point of view of protecting a GUI design.

One of the points which patent holders highly value is the ease of discovering an act of infringement. For example, if a patented invention in the field of software is described by internal processing, the patent holder would need to analyse the source code of an alleged infringing product's program in order to discover or prove infringement, for example by reverse engineering. Many patent holders would avoid reverse engineering since it costs time and money. For an invention which includes a GUI, it is clear whether the goods infringe that patented invention by observing the operation of the device. Therefore, an efficient strategy for easily discovering infringement would be to include an interface as part of an invention's constituent elements.

The following are some examples in which GUIs are protected by technical expressions in the field of image processing, analytical and statistical processing, and games.

Example using the expression 'to display comparably' from Japanese Patent 5443747. (no description of effects regarding a GUI):

Example using the expressions 'to display a list' and 'to display separately' from Japanese Patent 5644847:

The applicant claims the following effects:

It is possible to improve operability when a user selects candidates as a result of reducing inequalities in distance occurring between the candidate first displayed separately as a choice and a plurality of other candidates, and by moving among choices of candidates using fewer operations.

Example using the expression 'to display side by side' from Japanese Patent 5648405:

The applicant claims the following effects:

It is possible to protect GUIs under the existing Japanese law. In addition, revisions of the Design Law and design examination guidelines are now under discussion. Specifically, there is a focus on whether to protect software GUIs for computers, to protect software GUIs which users themselves can install into goods, and so on. Therefore, we will continue to provide further information regarding GUIs based on future revisions of the Design Law or examination guidelines.

Taichi Sakai
		Taichi Sakai is a patent attorney at Shiga International Patent Office. He specialises in computer systems, networks, video games, cameras, and projectors. He also has experience with statistical computations for the pricing of derivative products. Taichi Sakai has a degree in applied mathematics and physics from the School of Informatics and Mathematical Science, Faculty of Engineering, Kyoto University.

Tomohiro Gyoda
		Tomohiro Gyoda is a patent attorney at Shiga International Patent Office, specialising in trade marks, designs, and licensing. He handles trade mark and design cases for foreign clients, particularly related to trade mark and design prosecution, searches, oppositions, and trials. He also has experience preparing patent specifications and translating patent-related documents such as office actions, expert opinions, and litigation documents from English or German into Japanese, or from Japanese into English or German. Tomohiro Gyoda has a BA in foreign studies from the department of German, European and American Studies, Tokyo University of Foreign Studies.