International report - Protecting your software mojo in the smartphone screen era 06 Sep 17
Bereskin & Parr LLP - Canada
Smartphone screens are a marketplace for countless merchants and service providers. Through mobile apps, these merchants and service providers get their customers from place to place, monitor their health and assist them in countless other ways every day. As app developers can appreciate the hard work and effort that goes into producing a unique and usable interface, they must protect their designs against knock-offs and imitators with IP protection.
One common form of IP protection sought for mobile apps and software is the utility patent. A utility patent is sometimes referred to as the ‘Cadillac’ of intellectual property ‒ it can confer unparalleled status on the owner when compared to other forms of intellectual property. However, like its automotive counterpart, a utility patent can be expensive to obtain. The eligibility of software-based inventions for utility patents has been widely debated in recent years. Courts in the United States and elsewhere have attempted to establish rules (eg, Mayo and Alice) for software-based inventions that are eligible for patent protection. These rules can be difficult to parse and often require the assistance of a professional to decide whether it will be possible to obtain a utility patent. Further, a utility patent requires owners to publicly disclose the inner workings of their invention and eventually make it freely available for use when the patent expires.
If the prospect or cost of a utility patent seems daunting, software innovators should consider alternative forms of IP protection ‒ in particular, industrial design (commonly known as ‘design patent’) protection. For many mobile app and software developers, industrial designs may be an ideal form of intellectual property. Moreover, industrial designs:
- are typically less expensive than utility patents;
- do not require the detailed disclosure of utility patents; and
- do not involve the same eligibility considerations as utility patents.
In Canada, the Industrial Design Act defines an ‘industrial design’ as a shape, configuration, pattern or ornamentation and any combination of those features that, in a finished article, appeals to and is judged solely by the eye (RSC 1985, Chapter 1-9 Section 2). In the United States, design patents are similarly available for any new, original and ornamental design for an article of manufacture (Patent Act, 35 USC Section 171).
Traditionally, design protection has been used for finished articles, such as glassware, athletic shoes or audio speakers. However, design protection is also available for electronic ornamentation, which includes the graphical user interfaces (GUIs) found in software and the elements used to form them. Technically, such designs are granted for a display screen itself, which is the finished article to which the electronic ornamentation – generated by software – is applied. For example, a design for an icon within a mobile app may depict the icon within the confines of a smartphone screen. However, although the drawings must show the relationship between the claimed design and the finished article, the screen itself need not be claimed as part of the design. Typically, dashed or stippled lines are used to indicate that the screen is not claimed as part of the design.
Animated and colour designs
While design protection has traditionally been limited by the requirement for static, black and white line drawings to accompany the application, the Industrial Design Office has recently indicated that it will accept applications for animated and colour designs. This acceptance follows similar practices in the US Patent and Trademark Office and elsewhere.
This development opens up a range of possibilities for protecting software GUIs used in mobile apps, which often feature unique animated or colour elements that enhance their appeal. Protecting such seemingly ornamental features could serve as a useful product differentiator on smartphone screens and a barrier to competitors, which could be forced to use alternative design elements that may not be as recognisable or appealing to consumers.
For example, Apple has famously used design patents to protect aspects of its iPhone and Mac user interfaces. In 2009, Apple obtained a US design patent for a display screen that included colour elements and the default arrangement of icons on an iPhone home screen. This design patent was later successfully asserted by Apple against Samsung. Although there were differences between the Apple design patent and Samsung’s GUI, a jury found the general colour schemes to be similar and ruled in favour of Apple. Apple is also the owner of a design patent for another widely recognised animated user interface element: the so-called ‘genie effect’ that appears when minimising a GUI window.
These seemingly simple examples demonstrate that design protection can be an inexpensive yet powerful tool to block competitors from copying unique and innovative design elements that distinguish one mobile app from another in the smartphone screen marketplace. When a software-based invention appears to be on the edge of what is eligible subject matter for a utility patent, or when the cost of pursuing a utility patent may be a deterrent, software developers should consult an IP professional to review their software user interfaces and consider what unique design elements – whether black and white, colour or animated – could serve as the basis for valuable IP protection.
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