Graphical User Interface Protection puts Indian Patent Office in a fix!
The following note examines the Indian Patent office position on grant of Industrial Design protection to Graphical User Interfaces and analyses a recent decision by the office which indicates that, though, a separate class exists which recognizes protection of such designs, the office is reluctant to register them, taking the view the graphical user interface cannot be held as an article of manufacture and thus, does not qualify as Design.
India joined the WTO as a member State in 1995 paving the way for enactment of a new Designs Act, 2000 to make the Designs Law in India TRIPS compliant. While the earlier classification system of 1911 Act was based on material characteristics of the article, the Design Rules 2001 and subsequent amendment in 2008 provided an elaborate classification based on Locarno Classification system. The new Classification of Goods introduced the class- 14-04, in the prevailing Design Rules, 2001 which was dedicated to articles belonging to: “Screen Displays and Icons”. The new classification recognized visual images, graphical user interfaces (GUI) or icons shown on an image display of a tablet computer and a Smartphone to be registrable under Design Law.
However, it seems, the Patent office is yet to register a single design under class 14-04. A few instances where icons and screen displays have been registered were accepted under Class 14-99, titled “Miscellaneous”.
Amazon refused GUI registration: Amazon Technologies, Inc. (Amazon) filed the design application no. 240305 in India, entitled, “Graphic user interface for providing supplemental information of a digital work to a display screen” under class 14-02.
In its objections, the office noted that the proposed design was not a design as defined under section 2(a) and 2(d) of the Designs Act, 2000. Section 2 (a) and 2 (d) define an ‘article’ and a ‘design’ respectively.
As per Section 2 (a) “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;
Section 2(d) of the Act provides at least the following conditions, amongst other things, which should be satisfied for the design to be registrable:
- Design means only the features of shape, configuration, pattern, ornament or composition of lines or colors; and
- Design has to be applied to an article
In response to objections, Amazon submitted that the test for registration of a design is to determine whether the subject matter of the design application is a design under the provision of Section 2(d), which is applied to an article, as defined under section 2(a). Amazon noted that the above provisions, more specifically the definition of an article as provided under section 2(a) of the Act, do not prescribe a separate determination as to whether what is sought to be registered is an article or not and the subject matter of the present design application i.e. a screen display having graphic user interface for providing supplemental information of a digital work, is registrable under section 2(a) and 2(d) of the Act.
Amazon further submitted that the subject matter of the application was a graphical user interface applied onto a screen display of a hand-held computing device and met the requirement of design provided under clause (a) as the graphic user interface applied onto a screen display is characterized by one or more features of shape, configuration, pattern, ornament, or composition of lines or colors. Furthermore, the design i.e., the graphical user interface is applied onto the screen display for a hand-held computing device, wherein the article onto which the design is being applied is a display screen of a hand-held computing device.
Finally, it was submitted that the Act provides, in the Third Schedule, for classification of such designs and articles, i.e. screen displays and icons (under class 14-04)- implying that the Act does not intend to exclude such subject matter from design registration.
- Class 14: Recording, communication or information retrieval equipment
- 14-04 Screen Display and Icons
Decision: The controller while refusing the application held that:
- the graphic user interface i.e. display screen for hand-held computing device is a function of computer screen which is an application based on computer program used for operation of the hand held computing devices which will show on the display screen only when the computing device is in switched on condition.
- the application for registration of design cannot be considered as a finished article judged solely by eye obtained through industrial process as per the definition of 2(d) and it does not contain the features of shape or configuration and other design parameters stated therein and are dictated solely by the function of the article (here hand held computing device) to be performed.
- the design failed to satisfy the requirements of section 2(a) and section 2(d) which require the design applied on the article in the finished form to be judged solely by eye.
- the design is not an integral part of the article but is purely functional/ application based and is beyond the scope of section 2(a) and 2(d) of the Act.
- the graphical user interface cannot be held as an article of manufacture. Manufacturing is the production of merchandise for use or sale using labour and machines, tools, chemical and biological processing, or formulation. Therefore, the term may refer to a range of human activity, from handicraft to those involving high technology, but is most commonly applied to industrial production, in which raw materials are transformed into finished goods. Graphical user interface does not fit into this category and also does not qualify as an article of manufacture.
- as the graphical user interface cannot be sold separately as commodity item in the market it fails to meet the provision of section 2(d) of the Act. That means one cannot purchase a graphical user interface as such. Usually an article is physically accessible which can induce a tactile perception. The graphical user interface cannot induce a sense of touch in itself.
A review of the published journals of the Patent office reveals that certain screen displays have been registered in the past under Class 14-99, titled “Miscellaneous”. For example, the following screen displays and icons are registered:
Pursuant to decision in Amazon’s case, the Patent office has now taken a strict interpretation of the definition of the word „article‟ in the Act and it can be concluded that no screen display could be registered. Thus, it seems that while new classification system has acknowledged the eligibility of screen displays and icons to be registered under the Design law, the old definitions of article and design in the Act continue to bar such designs from getting registered. Such dichotomy is unique to India as other countries which grant protection to GUIs under their respective design laws, have amended the laws or their examination processes to specifically allow GUIs get Industrial design registration. For example, China recently amended its Examination Guidelines to allow electrified screen designs or user interfaces to get design patent protection. Accordingly, SIPO now allows design patents to be granted on Graphical User Interfaces (GUIs), including GUIs that are animated (dynamic).
To sum up, until Government amends the definitions of article and design in the Act to make way for new age communication devices and their embedded applications-design eligible, the fate of pending applications with the Indian Design office in relation to GUIs seems uncertain.