Intellectual Property and GUIs: The Story So Far


 

Introduction

In the current world, it is probably not an exaggeration to say that technology is everywhere. With the rise in the usage of technology comes an increase in the level of innovation. In such times where innovation is at its peak, the role of intellectual property becomes more significant than ever to do justice to the rights of an innovator. One such aspect that is yet to make progress is the application of Industrial Design protection to Graphical User Interfaces (GUI). This article explains the status of protection granted to GUIs in the world with special emphasis to the Indian scenario under the Designs Act, 2000.


What is a GUI?

A GUI is an interface that allows users to interact with electronic devices through icons, windows, menus and other visual and audio indicators or representations. All software giants like Microsoft or Adobe Photoshop use their own GUIs in their applications. Even internet browsers and search engines like Chrome and Firefox also use their GUIs to allow the user to navigate through a website. These websites further may also have their own GUIs as is the case with Facebook and Instagram. It is believed that the introduction and popularization of GUIs is one of the most important factors that made computer and digital technologies more accessible to average, less tech-savvy users. Therefore, it is evident that GUIs have gained significance as it decides the user efficiency of a product.


International Protection of GUI

With the rise in the popularity of GUIs it becomes imperative for rewarding, protecting and incentivizing the efforts of those who indulge in out-of-the-box thinking through the means of Intellectual Property. In such a scenario, many countries have deemed it fit to grant protection to GUI as an Industrial Design.


USA

In the United States, the jurisprudence to register GUI is being developed since 1992.[1] The first case that dealt with granting of design patent protection to a GUI in the U.S. was the Ex-Parte Strijland [2] case wherein the USPTO Board of Patent Appeals and Interferences had refused to grant protection to a GUI under design patents. The case declared that an icon, by itself, is not patentable rather, the icon needs to be embodied in an article of manufacture, and the design must be shown applied to the asserted article.

This decision led to the introduction of the Manual of Patent Examining Procedure (MPEP) which allows for the registration of computer-generated icons as design patents under MPEP §1504.01(a).[3] The institution of the guidelines lead to the gradual developments in this area. One of the most high-profile patent litigation case of Apple versus Samsung in 2014 related to the validity and infringement of a GUI design patent. Here, the jury held Samsung to be infringing Apple’s GUI design patent which was affirmed by the decision of the Court of Appeals.[4]


Singapore

GUIs are capable of being registered as designs under the Singapore Registered Designs Act. On 10th December, 2014, the Intellectual Property Office of Singapore issued a Practice Direction that amended the definition of design in the Singapore Registered Designs Act to include GUIs. This definition requires that a GUI has to be applied to an article by an industrial process in order to fall under the ambit of “design”.[5]


GUI Protection in European Union

The EU territory has paved the manner for permitting graphical interfaces and icons to be considered as a registration of design. There is a popular consensus in Europe’s Community Design system, at the approaches in which graphical interfaces need to be blanketed through designs.[6] Europe allows for using single application for applying for protection in respect of several items. This implies that which means that a single application can include a multitude of display view variations. Article 3 of the Design Regulation defines a design and enables all elements of GUIs to be protected by a Community design. [7]


Status quo of GUI Protection in India

The first time when a design registration was granted to a GUI in India was in 2006 when Microsoft was granted protection for its Windows Operating System which set a precedent in the matters of GUI protection in India. In 2008, the Design Rules were amended and India adopted the Locarno Classification which added the class ‘14-04’ titled ‘Screen Displays and Icons’ that introduced the registration of GUIs in India.[8] Despite the amendment, Amazon was unsuccessful in its attempt to obtain registration of its design for a GUI for “providing supplemental information of a digital work to a display screen” under Class 14-02 (Data Processing Equipment, Peripheral Apparatus & Devices).[9] The application was refused by the Indian Patent Office on the grounds that the GUI does not fall under the definition of ‘article’ and ‘design’ under the Designs Act, 2000 as it was only a functional aspect of the article. The rationale behind this decision was that for a GUI to be eligible for protection as a design, it has to ‘consistently’ appeal to the eye and be capable of being judged solely by the eye. However, in the case of GUIs, the design ceases to exist as soon as the electronic device is switched off which restricts a GUI to fall under the definition of a design.[10]


A groundbreaking development occurred in March 2023 when the Hon’ble Kolkata High Court passed judgment in UST GLOBAL (SINGAPORE) PTE LTD VS THE CONTROLLER OF PATENTS [11] where the High Court set aside the refusal order issued by the Design Office. The further observed “GUI is a software, an intellectual property, an article of value and hence capable of registration”. The Court further clarified that amendment to Design Rules 2021 and adoption of Locarno Classification paves the way and allows for GUI design registration. 

The court observed that, “the GUI in the present case is in-built. In-built ICONS are displayed in shops as well as in advertisements. Designs registered may be applied to any external or internal feature and are capable of registration if they appeal to the eye and enhance the aesthetic value of the product”.

 

The most important observation of the Hon’ble Court, however, is regarding the lack of industrial process in manufacturing which was the main ground for the refusal of all GUI design applications by the Design Office. The court has struck down this reasoning stating that, “the design submitted by the appellant is a 2D design i.e., a design which possesses the dimensions of length and width but does not possess depth. The novelty of the same can be judged by the eye as soon as the device is turned on. There is no requirement to touch the device in respect of the design” 

 

The Kolkata High Courts’ observations, one hopes, will go some way in curtailing the capriciousness in granting protection to a GUI by the Design Office. There is a need to note that GUIs are not merely functional in nature. They are designed to be novel and carry with them an aesthetic appeal that captures users attention, thereby seen and judged by the eye. As a result, the software developers design GUIs to be aesthetically appealing with the aim to provide an efficient and distinct user experience.

 

Moreover, in respect of electronic devices, an article is considered finished when that article can perform its intended function and can be sold. This means that a GUI which is visible upon the switching on of the article is capable of being sold if it is applied to a finished article. Hence, the requirement of the design to be applied to a finished article is also achieved here.

 

Conclusion

It is time to re-examine the reasoning given time and again, that a design has to be visible consistently and not only when the gadget is switched off to be eligible for design protection. As an alternative, one may seek the protection of their GUI as a Copyright as is mentioned by the Ministry of Electronics & Information Technology.[12] Despite the access to another avenue of protection of GUIs under Copyright, there remain numerous ambiguities concerning the extent of copyright protection owing to a lack of precedent on this issue. Therefore, a robust set of guidelines is the need of the hour to safeguard the future of GUIs in India while conforming to international standards at the same time.


 

By- Ali Areeb Zaidi (Associate Partner, Lall & Sethi) & Bhavya Sangri (Ex-Intern).




References:

[1] Another Way to Look at Software Protection, United States Design Patents available at: https://www.sternekessler.com/sites/default/files/2017-11/Another_way_to_look_at_software_protection_managing_intellectual_property_durkin_2016.pdf (last accessed on 15.05.2022 at 10:10 AM).

[2] Ex-parte Strijland, 26 USPQ 2d 1259.

[3]§1504.01(a), Manual of Patent Examining Procedure available at: https://www.uspto.gov/web/offices/pac/mpep/s1504.html#d0e152415 (last accessed on 15.05.2022 at 10:28 AM).

[4] Supra Note 1.

[5] Design Protection of Graphical User Interfaces (GUIs) in Singapore, available at: https://www.spruson.com/ict-electronics-and-software/design-protection-graphical-user-interfaces-guis-singapore/ (last accessed on 15.05.2022 at 10:40 AM).

[6] Pavel Koukal, “Graphical User Interface and their Protection in the European Union” available at: https://www.researchgate.net/publication/330452786_GRAPHICAL_USER_INTERFACES_AND_THEIR_PROTECTION_IN_THE_EUROPEAN_UNION (last accessed on 15.05.2022 at 10:45 AM).

[7] Article 3 of the Design Regulation available at: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/designs/design_definition/62002_cv_en.pdf (last accessed on 15.05.2022 at 10:50 AM).

[8] Design Amendment Rules, 2003, available at: https://ipindia.gov.in/writereaddata/images/pdf/designs-amendment-rules-2008.pdf (last accessed on 15.05.2022 at 11:00 AM).

[9] Application No. 240305 (2014).

[10]  Vatsala Prajapati, “Intellectual Property Protection of Graphical User Interface” available at: https://www.ijlmh.com/wp-content/uploads/Intellectual-Property-Protection-of-Graphical-User-Interface.pdf (last accessed on 15.05.2022 at 11:05 AM).

[11] AID NO. 2 of 2019

[12] Information on Copyright, Ministry of Electronics and Information Technology, available at: https://www.meity.gov.in/content/copyright (last accessed on 15.05.2022 at 11:17 AM).