1. What Makes GUIs Patentable?
2. Requirements for Patenting GUIs
3. Advantages of a Design Patent
4. Trade Dress Protection

A design patent graphical user interface might be beneficial for companies that sell services and products over the internet, through their website, or via mobile applications for devices such as phones and computers. Most large companies, including Microsoft, Apple, and Samsung, use graphical user interfaces (GUIs), which are eligible for patents in the United States.

A company's uniquely designed icon is a graphical user interface design component that might be protectable under a design patent. In some cases, two-dimensional images on a client's website or mobile application are also protectable.

Under 35 U.S.C. 171, the U.S. Patent and Trademark Office considers GUIs embodied in manufactured articles to be eligible for design patent protection as statutory subject matter. If an application makes a claim for a computer-generated icon that appears on a monitor, computer screen, or other display panel, it's considered compliant with the “articles of manufacturer” requirement. It must be inseparable from the object to which it is applied and cannot exist independently as a scheme of surface ornamentation. In other words, it must be embodied in the monitor, computer screen, or display panel to satisfy 35 U.S.C. 171's statutory requirements.

What Makes GUIs Patentable?

Icons associated with GUIs can be protected by design patents. They are visual representations of a brand and represent the subject matter associated with the application. Examples include a camera lens that represents a camera, an envelope that represents email, or a musical note for a music program. Designers who make third-party applications create icons that convey a brand's application, so it's very important to protect that.

When you click on this icon, the program will open, displaying the GUI. There is a novelty aspect that centers around the GUI layout, which includes the specific location of each element that is also protectable. An example is when you open your camera app and see settings and control buttons in a specific layout. Each of these is protectable, as long as it's novel and nonobvious.

You can also protect animations within the GUI. Using the same camera app example, imagine clicking on its settings and the screen sliding left or right from the settings page. A design patent can protect that type of movement. A recognizable example is the Apple “Cover Flow” patent that protects flipping through iTunes and its music player interface.

Requirements for Patenting GUIs

GUIs can be some of the most valuable pieces of intellectual property. To protect a GUI, it must meet five criteria:

  • It must be an article of manufacture.
  • The GUI must be original.
  • It must be novel.
  • It cannot be obvious.
  • It must be ornamental.

Advantages of a Design Patent

Protecting a GUI via a design patent has advantages over protecting it with a trademark or copyright:

  • A design patent can protect screen designs and icons that do not function as trademarks.
  • A design patent has validity. Although a patent's duration is limited to 15 years, they rarely outlive their validity because of the driving nature of design, especially in the user interface arena.
  • Unlike copyrights, design patents have no creativity requirement.
  • It's not subject to design patent infringement like a copyright used under the fair-use defense.
  • Design patents might be easier to enforce than trademarks and copyrights, as there is no need to show copying or to perform a consumer survey to show infringement.
  • Design patents can enlarge the company's intellectual property portfolio, which can increase the future asset value.

Another advantage of design patents is the measure of damages. 35 U.S.C. §289 states that someone who infringes on a design patent is liable to the patent owner to the extent of his total profit. With a copyright, damages are limited to the defendant's profit from the infringement itself.

Trade Dress Protection

Some businesses have sought protection of their GUIs by Trade Dress law. Trade dress law involves the GUI's appearance — its “look and feel.” To be protected under trade dress, it must be nonfunctional and either be distinctive or have acquired secondary meaning. Therefore, trade dress law might not be available for all GUIs. Ornamental and visually unique features can be protected under trade dress, but they could also be protected under copyright law. If copyright protection is denied because of a lack of originality, trade dress protection is still an option.

If you need help with GUI design patents, you can post your legal need on UpCounsel's marketplace. UpCounsel only accepts the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.