At the end of December 2017, Beijing IP Court decided the first GUI (graphical user interface) patent infringement case in China. This case is a battle between two anti-virus software giants: the plaintiff Qihoo 360 currently is the largest cyber security company in China; and the defendant Jiangmin is a pioneer anti-virus software provider in the PC era. Beijing IP Court rendered a decision in favour of Jiangmin.
Qihoo 360 holds a design patent entitled "computer with GUI". The product incorporating the GUI is indicated as running a program, and the GUI for the product is described as a software GUI for computer security optimization.
Qihoo 360 claimed that the software "Jiangmin Optimization Expert" exhibits the same design as its patent and thus constitutes direct infringement. Even if the GUI patent scope is restricted to computer products, contributory infringement is constituted.
With respect to direct infringement, the court held that the title "computer with GUI" makes clear that the patent scope is limited to computer products. Although the accused infringing software is provided to users by the defendant, it is not a product in a same or similar category as computer. Therefore, the accused infringing software doesn't fall within the patent scope.
With respect to contributory infringement, the court held that contributory infringement is premised on that a user committed an act of directly implementing the patent in suit. But in this case, users only downloaded the accused infringing software to their own computers, and committed no act of making, selling, or offering for sale computers with the accused infringing software preinstalled. Therefore, no contributory infringement can be found merely on basis of the fact that the accused infringing software is provided by the defendant.
The dilemma faced by GUI patentees
This case created a big stir in China's IT and IP sectors. Many GUI patentees feel deeply disappointed, and they are worried that their GUI patent assets turn out to be useless following the court decision.
In China, a design patent cannot be independent of a product, which is clear from the patent laws, rules and regulations as well as the judicial practice. Before May 2014, GUI had long been unpatentable because the Patent Examination Guidelines announced by SIPO provided that any picture of a design patent is not allowed to contain an interface which is displayed when power on. On May 1 2014, the Patent Examination Guidelines were amended to accommodate products incorporating GUI, which is recognized as a landmark event for GUI patent protection.
Since then, lots of GUI design patent applications have been filed and issued. But examiners commonly believe that goods incorporating design patents can only be physical products, instead of software. Because of this, applicants had to associate their designs with hardware, for example, a computer with GUI, a mobile device with GUI, etc. Otherwise, examiners would issue notifications asking for correction or even rejections. Therefore, applicants were placed in a dilemma: to get allowance, they had to specify the product carrying the GUI as hardware; once the product is specified as hardware, they will face the risks of limiting the patent scope such that a software developer may escape from infringement because it makes no hardware.
This case reflects the awkwardness of GUI design patent protection in China: although SIPO gave a green light to GUI, there are too many restrictions in patent examination and enforcement.
What is the way out for GUI protection?
Some are counting on the partial design system as proposed in the draft amendment of the Patent Law. But the problem is still there if the product carrying GUI cannot be interpreted to cover software.
Some may come up with the big idea of detaching GUI from any product. But this seems too crazy for the time being because product indication is required in both the Patent Law and its interpretations made by the Supreme Court. It still has a long way to go before being widely accepted by the IP authorities in China.
A practical approach is to interpret the products incorporating GUI in a broad sense. In fact, a computer with GUI is essentially directed to the software embodying the GUI, and the hardware can be in various forms. Nowadays, a computer is nothing without software, and any computer is a combination of hardware and software. It seems not difficult to transform from software to hardware, and vice versa. Thus, it seems rigid to say the accused infringing software is not in a same or similar category as the computer. This is supported by Class 14-04 (screen displays and icons) in the newest version of Locarno Classification (designs). Furthermore, the title of a design patent is not necessarily limiting the GUI protection scope just as a preamble is not necessarily limiting the patent scope of a utility patent.
The contributory infringement issue in this case is very intriguing. In the patent law, a utility patent adopts the all elements rule which is closely related to the single entity rule, and most contributory infringements aim at overcoming the rigid application of the all elements rule by a single entity. Although the design patent system is provided in Chinese patent law, it applies overall observation and comprehensive judgement, not the all elements rule. This puts design patent infringement closer to the confusion theory in trademark law, which is also evidenced by the limitation of product class to the protection scope as reflected in this case. In all, this case will help the contributory infringement theory and framework for design patents in China to become more mature and solid.
To provide full protection for GUI, SIPO needs adjustments to the current patent examination policy and examination criteria, during the process of which corporate counsels and outside attorneys should be the driving force. The courts can also do more work to enhance GUI patent protection and avoid frustrating the GUI innovators.
|Steve Song||Eleanor Zou|
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