Google’s Patent on its GOOGLE.COM Home Page

Earlier this week, the USPTO issued a design patent to Google that covers the “ornamental design for a graphical user interface [GUI] … as shown and described.” Pat. No. D. 599,372. Design patent coverage is essentially defined by the images include in the issued patent. Here, the image looks roughly the same as the company’s ubiquitous Google.com homepage. (See image below.)

To be clear, many patent professionals would argue that it is misleading to ever simply call this “a patent.” Rather, it is a design patent. Design patents have limited scope in that they only cover ornamental designs rather than technological advances. The USPTO has been granting design patent protection for screen shots and icons for many years. However, to my (limited) knowledge, none of those design patents have ever been enforced in court. As with most design patents, it appears that during prosecution, the PTO never issued a substantive rejection based on novelty or obviousness. [UPDATE – I updated this paragraph based on messages from two of the leading design patent experts Saidman and Carani who rightly indicated that in the past several years, few design patents have been found invalid]

Dashed or “ghost” lines in the drawing indicate features that are not claimed. Thus, patent would be infringed by someone using an identical layout even if they replaced the “Google” mark with their own mark. You can note at the bottom that the design patent drawing is marked with a circle-c ©. That indicates that Google is also claiming copyright protection for this layout. In addition, in the design patent, Google indicates that it is also claiming trademark protection for portions of the layout and – perhaps – for the layout as a whole.

Although there is some conflict in the precedent, modern courts have generally allowed companies to overlap design patent, copyright, and trademark protection in the same way that a prosecutor may charge someone with multiple crimes that all stem from the same bad act. This only becomes a problem when applicants also attempt to include utility patent protection in the mix. The problem arises because inventions protected by utility patents are required to be “functional” while design patent, copyright, and trademark laws only protect “non-functional” elements. [The non-functionality doctrine varies considerably between the regimes.]

I like to think of the three regimes (design patent, copyright, and trademark) as essentially creating different rules of evidence to prove the same thing. All of the regimes have some sort of distinctiveness doctrine. For design patents, the design must be a novel and nonobvious advance; for trademark, the mark must help distinguish goods or services in the minds of consumers; for copyright, the work must be original. Likewise the elements of infringement are similar, but different enough to provide added value to someone concerned with protecting an underlying valuable asset.

Allowing overlapping protection has problems. Most notably, the ‘piling on’ effect may make it too expensive to challenge Google’s rights even if their claim to rights appears overreaching. In the criminal justice system, this has the same effect of pushing folks to plea bargain.

Google operates in part on its reliance on the fair use doctrines of copyright and trademark laws and has been a strong advocate of open access of copyrighted works (think Google books and Google’s indexing) and limited trademark rights (so that others can bid for Google ads on a competitors trade name). By relying on design patents, Google positions itself in a way that it can protect its rights based on patent doctrines while still arguing for weaker rights in those other areas.

Design patents remain in force for 14-years from the date of issue. Thus, Google’s design patent is set to expire on Sept 1, 2023.

I have taken a screen shot of the Google.com website from Sept 3, 2009. It pretty clearly would not infringe because of the differences between layout in the patent and the layout on the site.

Notes:

  • Read the computer programmer response on Slashdot.
  • File Attachment: patd599372.pdf (72 KB). Also, see Google’s patent on Google Patents.
  • It is pretty amazing that the patent lists ten inventors for that simple thing. Did each of those individuals contribute inventive material?
  • Inequitable Conduct?: According to the face of the patent, Google did not submit any prior art. The examiner found 13 largely irrelevant pieces of prior art. Google should have at least submitted a copy of its home-page from 1 year before its March 2004 application date. The screen-shot below is the Google page from one-year before its patent priority date. (via Internet Archive). The Screen Shot serves as 102(b) prior art and also serves as a non-infringing alternative for competitors.

PatentLawPic778

  • Gawker’s ValleyWag has more background in a post titled “Google Patents World’s Simplest Home Page.”
  • Continuations: This patent is part of a family of at least seven design patents. Six of them are still pending, but one issued as a patent in 2006 (D533,561) covering the layout of search results. The recently issued ‘372 patent was filed in 2006, but claims priority to the 2004 filing date of the ‘561 patent.

82 thoughts on “Google’s Patent on its GOOGLE.COM Home Page

  1. “Did Google really think through patenting their home page image? In 14 years, everyone can use the image. Had Google uesd their wealth and might to focus on the trade dress of the home page, they could have protected it forever.”

    The copyright is likely to be unenforceable against anyone who isn’t copying the layout verbatim, just like the design patent, due to the extreme lack of content.

    The trade dress and trademark will be very strongly enforceable and will last forever. That Google logo — and all its variants — is their strongest asset outside their actual software. The “I’m Feeling Lucky” phrase in the search context is probably also trademarkable.

    Furthermore, free software people are strongly in favor of trademark law largely in its current form, which (unlike copyright and patent law) has not gone nuts and is closely tied to its original purpose. (However, “trademark dilution” and “trademark tarnishment” should die.)

  2. “I like to think of the three regimes (design patent, copyright, and trademark) as essentially creating different rules of evidence to prove the same thing”

    Shows you don’t work in copyright or trademark. They’re wildly different from each other and based on completely different principles.

    Trademark is based on “likelihood of confusion” — it’s essentially a specialized variant of the law of *fraud*. Independent invention is a defense only against damages, not against continued infringment, because it is all judged from the point of view of the purchaser. Use of others’ trademarks is almost always permitted provided it is clear that they are referring to the others’ products. It’s *all* about likelihood of confusion. If I copied Google’s entire page layout but changed the name, the likelihood of confusion is zero and there’s no chance of trademark infringement.

    Copyright is based on the supposed value of giving an author the right to earn money from sales of his writings, via the “Promote Science” clause of the Constitution, Independent invention is a complete defense. The use of others copyrights is generally forbidden unless you’re using them for what is considered “fair use”, a wildly different set of rules than for trademark. If I copied Google’s page layout and changed the names — assuming it was deemed creative, since it might well be entirely uncopyrightable — I would be subject to copyright infringement lawsuits.

    Design patents seem to protect something subtly different from both of the above.

  3. PS: “A final comment, to you and previous posters on this topic: I am of the school that believes that when a design patent expires, the subject matter is dedicated to the public and cannot be resurrected by, e.g., trade dress (distinguishing guise or product configuration) protection, no matter how much distinctivess exists (such distinctiveness usually having been obtained through the monopoly of the design patent rights). Although few modern courts have actually had the guts to take this stance, if the Supreme Court were ever directly faced with this question, I believe its extensive precedent on the “right to copy” would command that result.”

    Hear, hear!!!!!

  4. quick comment on the line in the article to the effect that, “The Screen Shot [of Google’s year-prior welcome screen] … serves as a non-infringing alternative for competitors.”

    To be more explicit, it serves as a non-[design patent]-infringing alternative for competitors.

    Might want to check copyright, TM and/or tradedress laws before copying the “non-infringing alternative”.

  5. Hallo Perry, your comments on the P&G case are interesting. I can see both sides of the argument. In the English IPR courts, reversals on appeal only happen with hard 50:50 cases. These days, you need to factor into the calculation an urge on the part of most judges not to disagree with their brothers in other European jurisdictions with the same European statutory provisions who have already opined on the same set of facts. Here it was an Austrian judge distinguishing between a spray head looking like a lizard and one that looked like a snake’s head (different overall impresssions).

    To your questions:

    1. My hunch (I have no data) is that your surmise is very probably right.

    2. Why no design trolls in Europe? No idea, but here are three ideas:

    i) This business opportunity hasn’t been identified by the trolls, yet.

    ii) Quantum of damages is not high enough to tempt the trolls. Settlement correspondingly more likely.

    iii) Threat to manufacturers of being enjoined is perceived as low level because the court (no jury) will always be able to find a (subjective) reason why injunctive relief is not justified. In a 2 x 2 validity and infringement matrix, with a preponderance standard on both questions, and arguments split 50:50, a rights owner wins just one time in four.

    The European troll case that comes to my mind is the case of Document Security v European Central Bank. That’s a utility patent case, but nevertheless the travails of DSS are interesting. They haven’t yet got what they are asking for, namely an injunction covering every Euro banknote in circulation in Europe. The English court found all the asserted claims to be invalid, in that the inventor had added subject matter during prosecution at the EPO.

    I suppose those who fear trolls in the US jurisdiction must be right. But it’s the American way of litigation that is the basis for those fears, I would say, not anything inherent in a system of unexamined IP rights. Having full pre-issue examination only makes for even more trolling, doesn’t it?

  6. Max,

    Yes, I had read the Procter case when it came out, and it was, in my view, a sad day – the teeth were pulled from the mouth of “great potentcy” of the Community Design. I can assure you that P&G was not happy either.

    Two more questions for you, and a final comment:

    1. What has the effect of the Community Design system been on national registration schemes? I’m betting that they’ve been used a lot less – have any gone out of business? ;-) And I’ll also bet that the vast majority of RCD users outside Europe don’t file much of anything in individual countries anymore, and if anyone still uses national protection in Europe, it’s the Europeans.

    2. The other question I have is whether the rise of the RCD system has led to design “trolls”, i.e., those who obtain design registrations (i.e., those things with great potency and trivial cost) and wield them against large companies to extract a payment. Trolls are usually non-producing entities.

    These are major fears expressed in the U.S. if we were to adopt a design registration system. That is: (a) the design patent system (that we all know and love very well [but for MM and his ilk]) would fall into disrepair and disuse and a whole new set of rules would have to be learned, and there would be no case law to help interpret the new rules; and (b) design trolls would threaten large corporations with easily obtained and cheap registrations, extracting unjustified payments and greatly increasing the cost of legal defense.

    A final comment, to you and previous posters on this topic: I am of the school that believes that when a design patent expires, the subject matter is dedicated to the public and cannot be resurrected by, e.g., trade dress (distinguishing guise or product configuration) protection, no matter how much distinctivess exists (such distinctiveness usually having been obtained through the monopoly of the design patent rights). Although few modern courts have actually had the guts to take this stance, if the Supreme Court were ever directly faced with this question, I believe its extensive precedent on the “right to copy” would command that result. Actually , SCOTUS had an opportunity in TrafFix to address the issue in the context of an expired utility patent, which is also a Constitutional issue, but they dodged it, relying instead on the doctrine of functionality to declare the trade dress invalid. Let me make it clear that my school of thought is not the law today (clients: listen up!).

  7. PS “My initial comment was made in the context of the Google patent and the prior art identified by Prof. Crouch, which I presumed was the closest prior art.”

    Not sure if that’s true, but regardless the prior art is closer to the current Google page than the design patent and no “reasonable” argument to the contrary has been presented or will be.

    But who am I? Just an “anonymous commenter” in no position to question the authority of a great professor who so bravely posts his opinions here, even when those opinions aren’t justified or are just plain wrong.

  8. Actually, Mr Saidman, when you read the Appeal Court judgment 2007 EWCA Civ 936 et seq. in Procter v Benckiser, the scope of protection on the correct test “same overall impression” is relatively narrow. The comparison of the Procter and Airwick spray head designs is quite instructive. There are plenty of photos of the respective products in the 21 page judgment, which includes the statutory provisions as an Annex.

    Flipper would need conceptual drawings. Nokia would still escape unless their phone product was creating the “same overall impression”. Flipper should take out that utility patent as well, I would say.

  9. Ha! A man after my own heart. But in Europe we are still waiting for the caselaw.

    Germany traditionally thinks that scope of protection of a design registration ought to be narrow. And what Germany thinks is (traditionally) what mainland Europe thinks. But in your scenario I personally don’t see why Nokia isn’t an infringer.

    Of course, Flipper would have a utility patent too, wouldn’t they? But that would run out after 20 years whereas its pan-European Design Registration could endure for 25 years.

    Europe’s politicians created an IPR of great potency and trivial cost, thinking it would be used overwhelmingly by domestic innovators. After all, it’s traditional for the only filers for design registration rights to be domestic, isn’t it. But I think Europe is going to get a nasty surprise, because the main filers at the European designs Registry are from outside Europe.

    Which might mean that the courts around Europe find themselves tending towards a narrow scope of protection.

    Maybe it will depend on Flipper’s nationality. But I hope not. There’s an English case, Procter & Gamble vs Reckitt Benckiser (if memory serves) which will give you more. You should be able to download it from http://www.bailii.com ( a site you probably know already).

  10. Max III,

    You said:

    >>2. Decisive to infringement is whether the accused embodiment is one that shares that same distinct identity (same legal test for validity and infringement),

    3. Further(and I suspect Mr Saidman will like this one), to give fair reward for the contribution of a particularly creative and revolutionary act of design, scope of protection ought to be proportional to the amount of “design freedom” the creator had available, when coming up with the new design.<<

    You’re right, I love #3, but I have a question: how do you square #3 with #2? For example, suppose Flipper Cell Co. is the very first one to design a flip phone. The prior art is 100% brick or candy bar style. Flipper gets a RCD on its flip phone. The creativity is huge, unprecedented. Along comes Nokia 6 months later with its own flip phone. The details are not substantially the same as Flipper’s; in fact, the main thing they share is the flip feature. The push buttons and screen are shaped distinctively different. Given what I’ve said, is there a finding of infringement under #3?

  11. Swine quoted me and then said:

    “Look at the designs [with your ordinary observer eye] and notice what they have in common, and notice what is different. Which are overall closer to each other: the patented and accused designs, or either one of those to the prior art? If you decide the former, you should conclude infringement. If the latter, you may conclude non-infringement.”

    >>That doesn’t seem very persuasive. All you would have to do is pick a prior art reference that looks nothing like either the claimed design or the infringing design.<<

    To qualify my quoted statement, the comparison needs to be with the CLOSEST prior art, not with something that “looks nothing like either the claimed design or the infringing design”. My initial comment was made in the context of the Google patent and the prior art identified by Prof. Crouch, which I presumed was the closest prior art.

  12. Dear All, when I wrote “design freedom” it was in response to the earlier stated proposition, that an accused embodiment is “closer” to the subject matter of the design registration than the prior art designs, and whether it has merit. The “amount of design freedom” has something to do with the pattern of prior art designs around the bulls eye of the design registration drawings.

  13. Your response ALSO proves your thesis.

    It’s too bad your thesis doesn’t prove anything.

    Now let’s hurry to the next wreck.

  14. “When was your last comment of anything of substance”

    The comment immediately above yours.

    “simply embrace the trainwreck”

    ???

    “authority and knowledge mean nothing”

    How old are you?

  15. Malcolm,

    And what thesis would that be? That others can be as egregious as you? That you can give but cannot take? That authority and knowledge mean nothing and that MM’s word means everything? All of the above?

    When was your last comment of anything of substance, rather than what Malcom ordains? Come with substance or don’t come. Live by the rules you would have others live to, including honesty and gratuitousness or learn how to deal with it.

    Or simply embrace the trainwreck and all that it entails.

  16. “to give fair reward for the contribution of a particularly creative and revolutionary act of design, scope of protection ought to be proportional to the amount of “design freedom” the creator had available, when coming up with the new design.”

    That sounds very “nice” Max. Of course, concerning the website at issue, a rather moot point in light of the prior art that Dennis found (presumably in less than a minute) and in light of the tens of thousands of pre-existing simple, uncluttered “simple” web pages as of March 2004.

  17. “Perry, at least here in the states, is a recognized expert in Design Patents and has presented at several legal gatherings.”

    Ah, the ever-popular “argument from authority,” followed up with a bit of playground name-calling. Well done, NAL. You proved my thesis, again.

  18. MaxDrei,

    I wasn’t sure if you were making a subtle jab at MM. I think your writing continues to improve.

    However, I do think asinine quite fits, at least in the following definitions:

    devoid of intelligence – wordnetweb.princeton.edu/perl/webwn

    Failing to exercise intelligence or judgment; ridiculously below average rationality;
    en.wiktionary.org/wiki/asinine

    and my favorite:

    stupidity combined with stubbornness
    wordnetweb.princeton.edu/perl/webwn

  19. Well Noise, I’m glad that that’s the only thing that’s naive. I included a nod in Perry’s direction, and I had thought that I was addressing Malcolm more by way of challenge than in seeking his imprimatur. I disagree with you and Perry in characterizing MM’s anonymous contributions as assinine. Provocative? Yes. Opinionated? No doubt. Intemperate? Frquently. Fun? Often. But assinine, surely not (unless assinine is different in your Definitions Section from what it is in mine). Mr Saidman?

  20. MaxDrei,

    The only thing “hopelessly naive” in your last post is that you look to Malcolm rather than to Perry for evaluation of your position.

    Perry, at least here in the states, is a recognized expert in Design Patents and has presented at several legal gatherings. To paraphrase Perry, Malcolm is merely an anonymous poster of assinine barbs.

  21. Much huffing and puffing, but maybe we can agree with those who wrote the new pan-European design registration regime, as follows:

    1. Novelty and obviousness has some relationship with the overall and distinct identity a registered design exhibits to the designated notional viewer/appraiser,

    2. Decisive to infringement is whether the accused embodiment is one that shares that same distinct identity (same legal test for validity and infringement),

    3. Further(and I suspect Mr Saidman will like this one), to give fair reward for the contribution of a particularly creative and revolutionary act of design, scope of protection ought to be proportional to the amount of “design freedom” the creator had available, when coming up with the new design.

    I like to think they are intuitive, and universal, to regimes that use a patent-form regime of protection to reward design creativity. Would that be hopelessly naive of me, Malcolm?

  22. “Look at the designs [with your ordinary observer eye] and notice what they have in common, and notice what is different. Which are overall closer to each other: the patented and accused designs, or either one of those to the prior art? If you decide the former, you should conclude infringement. If the latter, you may conclude non-infringement.”

    That doesn’t seem very persuasive. All you would have to do is pick a prior art reference that looks nothing like either the claimed design or the infringing design.

  23. PS “The reasonable argument to the jury is this: “Look at the designs [with your ordinary observer eye] and notice what they have in common, and notice what is different. Which are overall closer to each other: the patented and accused designs, or either one of those to the prior art? If you decide the former, you should conclude infringement. If the latter, you may conclude non-infringement.””

    That’s not an argument, Perry. Maybe just admit that you were wrong?

    “There’s nothing wrong, legally or factually, with all team members contributing “inventively” to the design, whether simple or complex.”

    I never said otherwise. I was responding to the false statement implicit in your earlier comment, that “simple” websites are harder to design than complex ones. That’s just not true. There’s nothing “legally or factually” wrong with Google employing 10, 100 or even 500 people to “invent” the simple and (dare I say it?) obvious layout of text on its home page. It’s just very silly when one person can do the job in less time. In the time I took to type this comment, some high school kid just designed his own simple web page.

  24. MM said:

    >>”it is often harder to design a “simple thing””

    Not really. The fact that corporations such as Google tend to hire large design teams does not mean that such teams are required or necessary to design a simple thing.<<

    No one said that large design teams “are required or necessary to design a simple thing”. But such teams are a fact of life for leading, design-conscious companies. And there’s nothing wrong, legally or factually, with all team members contributing “inventively” to the design, whether simple or complex.

  25. As reluctant as I am to “converse” with MM, he said:

    >>PS “One can reasonably argue to a jury that the patented and accused designs are closer to each other than either is to the prior art, which could result in a finding of infringement.”

    If so, then the design patent laws and our legal system are more broken than I previously thought. Could you outline such a “reasonable” argument?<<

    The reasonable argument to the jury is this: “Look at the designs [with your ordinary observer eye] and notice what they have in common, and notice what is different. Which are overall closer to each other: the patented and accused designs, or either one of those to the prior art? If you decide the former, you should conclude infringement. If the latter, you may conclude non-infringement.”

    MM is making this more difficult that it really is, which is typical, really, of those coming to design patents from a utility patent background. The scorn. The pomposity. The “we’re better than you” attitude. Enough. Really.

  26. PS “One can reasonably argue to a jury that the patented and accused designs are closer to each other than either is to the prior art, which could result in a finding of infringement.”

    If so, then the design patent laws and our legal system are more broken than I previously thought. Could you outline such a “reasonable” argument?

    “it is often harder to design a “simple thing””

    Not really. The fact that corporations such as Google tend to hire large design teams does not mean that such teams are required or necessary to design a simple thing. Individuals by the thousands design their own simple uncluttered websites every day. I’ve done it myself. It was easy. If you want to see an interesting website design, check out Michael R. Thomas’s. I’m guessing he designed the site himself.

    It is true that it is more difficult to design a design-patentable “simple website” than it is to design a design-patentable “complicated website.” Or it should be if such designs were actually Examined by the PTO, which they aren’t.

  27. NAL: “Malcolm, do you consider Perry a troll as well?”

    No, Perry isn’t nearly as obsessed by particular commenters as you are. Nice try, though.

  28. Thank you Prof. Saidman for the much needed clarifications to the posts regarding substantive design patent law. The merits of the Google design patent aside, I want to make two points regarding the statement that “Design patents have severely limited scope, only cover ornamental designs rather than technological advances, and are very frequently found invalid when challenged in court.” Yikes, is that misleading….

    1) “Design patents are …severely limited scope” – This statement is way off the mark, particularly in light of the en banc Federal Circuit’s most recent proclamation on design patent claim construction and infringement in Egyptian Goddess. In short, in EG the Fed. Cir. eliminated the point of novelty test and laid down the general rule that district courts should not verbalize design patent drawings. Thus, the scope of the claim is “as shown and descibed in the drawings.” Significantly, the test for design patent infringment is now simply whether the accused product is “substantially similar” to the design patent claim in view of the prior art. Bottom line, “substantially similar” is a far cry from “severely limited.” Indeed, the Fed. Cir. has held that the doctrine of EQUIVALENTS is built into the substantial simiilarity test. (a/k/a “ordinary observer test”, “Gorham test”).

    Perhaps what Prof. Crouch is getting at is that design patents are limited to what is shown in the drawings. In other words, if you claim a telephone in the shape of a car, the scope of the design patent would be limited to the SPECIFIC overall appearance of the depicted car (including the shape of its fenders, grill, tires, etc.), rather than the GENERAL concept of a telephone in the shape of a car. (This legal concept is similar to the idea/expression dichotomy found in copyright law.)

    In any event, and in the end, the test for design patent infringement is “substantial similarity,” not exactitude. The notion that design patents are “severely limited scope” simply does not jive with this test, one recently blessed by the en banc Federal Circuit in EG.

    2) “design patents…are very frequently found invalid when challenged in court.” Here again, this statement misses the mark. A review of all published/”unpublished” design patent cases, shows that RARE is the case that a design patent is invalidated (functionality, 102, 103, etc). To be sure, the results are nowhere near “very frequently.” (While I don’t have stats, I base my conclusion on having read all published and “unpublished” design patent cases.) Incidentally for functionality (the oft-cited boogie man for design patents), there is only one (yes one) Fed. Cir. case upholding a finding of invalidty (Best Lock).

    Perhaps what Prof. Crouch meant to say was that “design patents…are very frequently found NOT INFRINGED.” With this, I am more inclined to agree. However, it should be noted that in the majority of such cases, the design patents at issue were drafted poorly/narrowly and thus provided easy arguments for non-infringement.

    -Christopher V. Carani

  29. MaxDrei:
    It is the banking elite that I detest. It is unAmerican to have the United States monetary system controlled by anyone other than United States citizens. I am in the majority on this. However, the United States government has been controlled by the banking elite since the inception of the Federal Reserve-therefore this issue is seldom raised. It is for this reason alone that I detest the banking elite of Europe. Had the Federal Reserve never have been created I would have no ill feelings toward the banking elite of Europe. However, I recommend that you read the writings of President Jackson and President Wilson. These ideas are not mine. I merely subscribe their tenets on matters of the U.S. monetary system. This is not to say that I am happy with the U.S. banking elite. Fortunately most of them have been put out of business, excepting Goldman Sachs, one can only hope that Goldman Sachs’ day of reckoning comes soon. Congressman Ron Paul is working hard on that.

  30. I meant to post, I don’t know what their intellectual property coverage of their home page might be, but I don’t see how it can extend to cover the ornamentality covered by its design patent once that design patent expires.

  31. Uh, subject matter covered by design patents goes into the public domain once the design patent expires after 14 years. Trade dress, copyright, etc. cannot be used to extent the 14 years of an expired, constitutionally granted, design patent. There is case law on this, professors.

    “Dashed or “ghost” lines in the drawing indicate features that are not claimed” and Google’s trademark may continue because it is in dashed/ghost lines in the design patent.

    Think about it. Google’s trademarked name is about as ornamental as the other items on that patent and would add to the ornamentality just as the other “ornamental” items on the patent do. Why put it in dashed lines if there was no concerned that the trademark would expire once the design patent expired? Well, there is case law that says trademarks used in a design patent expire with that design patent. Google probably put the trademark in dashed lines for that very reason, they do not want their “Google” trademark to expire with the design patent after 14 years.

    While Google may continue with trade dress, copyright, etc. for its page, I don’t see how that intellectual property protection can extend to cover the ornamentality protected by its design patents once those design patents expire after 14 years. That ornamental design property goes into the public domain, which would seem to put Google on equal footing for that public domain property with all others. Think about it.

    I don’t know what their intellectual property coverage of their home page might be, but I don’t see how it can extend to cover the ornamentality covered by its design patent.

  32. I see. Well I’m glad you like the country called “Europe” and its culture. If you visit again, you will find that ordinary people here currently dislike “bankers” almost as much as you. But they don’t discriminate that much, on nationality. They dislike bankers based here on the mainland as they do those on the Anglo-Saxon islands. They blame them more, in fact, because they expect more from them.

    A lot of financial things are “set” in London, that’s true. It’s for time zone reasons (Asia in the morning, the US in the afternoon). But these things are “set” by international financial firms and institutions that are just as much American as European. In fact, most ordinary people in the UK have great difficulty imagining themselves to be part of “Europe” at all.

    Now, about this “elite” in “Europe” that bothers you so much. It’s just bankers is it? Or do you dislike all elites, even those that created all that nice “culture”?

    I have to say though, watching the ineffective efforts of Mr Geithner, that the American bankers could give the Europeans a lesson, in how to govern the elected Government. Are they European too?

  33. best line of the morning: see MM

    Thanks Perry.

    …or Malcolm, do you consider Perry a troll as well? Honestly?

  34. Dear Patently-O,

    I think the Google CEO will take a crap today, I am looking forward to a post that tells the world when he takes a crap. Please let us know how many times he wipes.

    Best regards,
    People who give a flying crap about design patents

  35. MxDrei:
    I have two continents left to visit to have travelled on every continent on the earth. Europe is not one of them. I very much enjoy Europe, its people and its culture. However, your secretive governoring banking elite I can do without-as can many of you. This is evidenced by one, who in my opinion is one of the greatest humans ever to have lived: Napoleon Bonaparte. He to had his belly full of the European banking elite. For it is this elite that has destroyed the value of many retirement accounts in the U.S. It is they who created the Great Depression. The manipulation of the LIBOR rates, which precipitated the current economic situation, is set in London by private parties.

  36. As a expert (not an attorney) in graphic user interface design (GUI) I can say that this patent is compelling because it likely brings visual/graphic design attributes of an interface onto the same field (or near field) with functional human performance claims. The most interesting aspect of this patent will be its litigation history should Google decide to enforce its claims.

  37. To Rodrigo: May I ask, are you following the debate about EPO-PSA between me, Lionel Hutz and Eurodisnae, over on the “manner in which the invention was made” thread? I thought it was quite useful. You?

  38. Until now I was not aware that it was possible to obtain a design patent for “lack of ornamentation.” You live and learn, I guess. I will be writing to my clients and letting them know it is now confirmed that they can patent their “non-design.”

    Also, did anyone notice the bizarre prosecution history of this patent? It was filed in March 2006 and was essentially allowed in the first office action (as most design cases are.) The odd thing is that the first office action did not come until more than 2 years after the filing date. In my experience with design patents, first office actions are issued within 6-9 months. So, what was going on all that time in the PTO? What prompted the PTO, all of a sudden, to allow this patent in the summer of 2008? Something doesn’t seem right here … [cue the Twilight Zone music]

  39. Axel, Europe just wrote itself a pan-European regime for protection of creative designs. It is by now routine, to register the design of a new trademark, as a design, to protect it against copyists until the mark, through use, has become a badge of origin (and a valid trademark registration). All the protections against abuse that the public needs are built in to the new European system.

    Let the two of us debate on the basis Rodrigo helpfully offers, that “design patent” is a misnomer, and that “design registration” is what it is.

    As to copyright, you need to distinguish between copyright and an exclusive monopoly (patents and other registrations of “exclusive” rights: where you don’t need to prove actual copying). Have you ever run a copyright infringement action, and wished that you had registered your design? If you had, you would soon agree on the benefit to the public of having a functioning system of design registrations.

  40. Axel

    Copyright is enforceable only against people who actually copy. Patents are enforceable against anyone who infringes the claims, regardless of copying.

    Trade Mark registration similarly gives exclusive rights to use of the mark as compared with common law rights against “passing off” which require deliberate “copying”.

  41. Conceptually I never really got how copyright, trademark and design patents can overlap.

    Isn’t the essence of a patent that the inventor is granted exclusivity on the invention in return for making it public? So instead of keeping their homepage secret and only deriving joy from looking at it in a windowless room at their headquarter Google shares their homepage design with everyone in the patent – and in return is granted a 14 year monopoly on that design. If, however, Google after 14 years will argue that still nobody should copy their design because of copyright it’s sort of a double-protection – which if both avenues were patents would be rejected as double-patenting.

    To be consistent with patent law Google should have to file a terminal disclaimer to not enforce trademark or copyright once the design patent expires…

  42. Well said Mr Saidman:

    “..it is often harder to design a “simple thing”..”

    That holds true in many other fields of human activity. Maybe it’s even a universal truth. Certainly in the field of utility patents, it’s true. Also in mathematics, science, engineering, sport and the arts. And also (brace yourselves, readers) in the field of figuring out a simple way to “do” obviousness.

    As we see, there is prejudice to fight against. Nothing that simple, they cry, could possibly do it better than our complicated way. But, in simplicity lies beauty. Google will confirm.

  43. Finally, just to be clear:

    Finally, you posit:
    >> It is pretty amazing that the patent lists ten inventors for that simple thing. Did each of those individuals contribute inventive material?<<

    Designers frequently work in teams, large teams. It is very conceivable that the Google ID team worked together, in a way sanctioned by the current case law, to contribute “inventive material”. And, it is harder to design a “simple thing” than, for example, the mess appearing on Yahoo’s home page.

  44. Second comment:

    Then you said:

    >>I have taken a screen shot of the Google.com website from Sept 3, 2009. It pretty clearly would not infringe because of the differences between layout in the patent and the layout on the site.<<

    Not so fast. Egyptian Goddess requires a comparison of the patented design, the accused design (your 9/3/09 screen shot), and the prior art (your third screen shot). One can reasonably argue to a jury that the patented and accused designs are closer to each other than either is to the prior art, which could result in a finding of infringement.

  45. Dennis,

    Your website bastardized my pean.

    Let me try one comment at a time.

    You said:

    >>Design patents have severely limited scope, only cover ornamental designs rather than technological advances, and are very frequently found invalid when challenged in court.<<

    I don’t think that your latter statement is accurate. Do a study. Very few design patents are found invalid in court. Also, although the scope of a design patent is very limited compared to the potential scope of a corresponding utility patent, the Federal Circuit has greatly expanded design patents’ scope with its Egyptian Goddess decision, compared to what it was before that. Theoretically, we are returning to the scope of the 1871 Gorham v. White – “substantially the same” is, as you know, the sole test for design patent infringement – take a gander at the designs at issue in that case (reproduced in the case) if you want to see substantial scope.

  46. Dear Prof. Dennis,

    You said:

    >>Design patents have severely limited scope, only cover ornamental designs rather than technological advances, and are very frequently found invalid when challenged in court.>I have taken a screen shot of the Google.com website from Sept 3, 2009. It pretty clearly would not infringe because of the differences between layout in the patent and the layout on the site.> It is pretty amazing that the patent lists ten inventors for that simple thing. Did each of those individuals contribute inventive material?<<

    Designers frequently work in teams, even large teams. It is very conceivable that the Google ID team worked together, in a way sanctioned by the current case law, to contribute “inventive material”. And, it is often harder to design a “simple thing” than, for example, the mess appearing on Yahoo’s home page.

  47. Seconding MaxDrei. Besides, the cries about “loss of sovereignity” will be at least as loud in Europe as in the US. After all, the “free software” crowd (quite vocal on this side of the pond) always push forward the US patent system as a negative example. With respect to them, a Microsoft (or, as they call it, “M$”) call for a global patent is as close to waving a red rag to a bull as it comes. So, not going to happen. Certainly not if emerging countries like India, Brazil or China were also to be involved.

    Coming back to Dennis’ original post about design patents in general and Google’s in particular, I must emphasize that it would be far better if you guys didn’t call this kind of right a design “patent”. The general public is already confused enough by the different IP rights without such a misnomer. A design patent (or, as we rather call them here in Europe, a registered design or registered model) is a very different animal from a utility or invention patent.

    Of course, we Europeans also contribute to the general confusion by giving the name “utility model” to a kind of short-term utility patent granted without examination. Oh well, I guess that something has to justify the attorney fees…

  48. E pluribus unum

    One World, coming to a planet (very) near you…

    It’s what the founding fathers always wanted, n’est-ce pas? (be careful what you wish for)

  49. Malcolm, we now live in an Orwellian world, where “war” means “peace” and “good” means “bad” and “sleazy” means something more offensive than “treason”. Me, I assume that MS has shareholders, and that MS acts in the interests of its shareholders. The US Government, of course, acts in the interests of its shareholders, all US citizens. Opinions differ, about which acts bring the most shareholder benefit.

    I must declare an interest: I hold shares in MS. And I use a pseudonym. So I suppose I must be one of those rich and secretive people in Europe that our Ken dislikes so much. But I use Windows a lot, so I suppose all the other MS shareholders like me. Does your pension fund hold MS shares, Ken?

    Come to think of it Ken, have you ever travelled, outside North America? I’m assuming not.

    Think on this, Ken. If ever the world does get to a harmonised patent law, the USA will dominate it (I guess that’s why Bill wants it so desperately). This is because Americans are more litigation-savvy than the rest of the world, so have an edge, whenever it comes to a patent dispute. Where they have always gone wrong, up to now, is to assume that “US Rules Apply” wherever in the world they happen to be in dispute. They don’t. Yet.

  50. “Design patents have severely limited scope, *only cover ornamental designs* rather than technological advances, and are very frequently found invalid when challenged in court.”

    Am I the only one who wishes there was some kind of standard for “ornamentation” at the PTO? Maybe so, since I’m probably the only one staring at D597,809 and wondering if the inventor is going to try and enforce it. Ornamental design my ass.

  51. Welcome to the world where accusing people of treason can be done in a glib, offhand way and discussed without a troll’s head exploding. But god help you if you suggest that someone is sleazy.

  52. I have my concerns about that as well Brooks. It seems ironic, but does one have to commit treason to stop the government from destroying itself should it take up the call to destroy America’s sovereignty? Or do you have to wait until the sovereignty has been destroyed and then fight for it once again, thereby not ever having commited treason against one’s nation, but against the newly formed nation?

  53. Did you see where Microsoft calls for a global patent system for both procurement. I don’t know about you guys, but this is where I cash in my chips. I am a United States citizen. I cherish this county and care not to see the abrogation of its borders in my time. It is bad enough that we, as taxpayers of the United States, pay for the rich and and secretive of Europe to live in unparalleled luxury by virtue of their control of our monetary system. I think when I see such folly bandered about by an international corporation, such as Microsoft, I can only think that the term “globalization” is a code word for “destroy the national sovreignty of the United States of America, i.e., “treason”.

  54. Mr. Morgan,

    Thank you for the citation. Unfortunately, I do not have a copy of the BPAI’s decision so I am unable to consider it in its entirety.

    From what little I could glean in various references to the decision, including MPEP guidance, am I to assume a photograph serving as a static screensaver can likewise be the subject of a design patent so long as it is associated with a “machine”?

  55. Michael L. Slonecker – for an answer to your questions, see the In re Strijland Board decision I cited above.

  56. Just an observation as to which I have done no underlying research:

    Designs being subject, in a general sense, to the requirements imposed upon “bread and butter” inventions, I am having a difficult time getting my arms around just what is the article of manufacture to which this design is applied?

    For example, is it the underlying display appearing on a monitor, the monitor itself, other? Ignoring the applicability of copyright, trademark and unfair competition laws, is it an infringement to place the design on a coffee cup, a book cover, etc., items that certainly are articles of manufacture?

    Curiously, Section 100 does not define what is a “manufacture”, though certainly 230 years of case law has applied some “meat” to this admittedly somehwat amorphous term “manufacture”.

    In a somewhat related vein, is such a design in whole or in part related in some manner to the limitations for 101 subject matter?

  57. That was the Case case (Goodyear v Case). The defendant was selling a vehicle that had tires with the claimed design. He argued invalidity under 103, not non-infringement because he wasn’t using the ornamental design.

    Did that establish that ornamental designs were allowed to serve a function as long as they don’t represent the only way or the best way to achieve that function?

  58. But Malcolm, “No Ads” was clever, and would have been patentable, no? We know it’s clear (HaHa), and enabled. Novelty would be a shoo-in and, as to non-obviousness, well everybody else was including ads. and nowhere in the prior art is there a suggestion that, if you want to succeed, keep it clear of ads.

  59. “People use Google because of its simple home page – no one wants to start on the Internet with a bunch of text and ads plastering them.”

    Blasphemy! Why, soon you will be suggesting that marketing strategies are more important for search providers than “innovative” software that provides “personalized” recommendations for the tastiest dog foods.

  60. Yes. What Dennis siad. Plus, Disney will still have trademark protection on Mickey Mouse after the copyright expires. It’s will remain a famous mark too, that is used in connection with all kinds of goods. Please also recall that Fair Use is not a defense to Trademark protection.

  61. Phillis:

    You are incorrect. The only thing that will happen in 14 years is the design patent will expire. Trade dress, copyright, etc., are independent issues.

  62. Did Google really think through patenting their home page image? In 14 years, everyone can use the image. Had Google uesd their wealth and might to focus on the trade dress of the home page, they could have protected it forever.

    People use Google because of its simple home page – no one wants to start on the Internet with a bunch of text and ads plastering them.

    Disney eventually will lose its copyright on Mickey Mouse and in 14 years Google will lose the one thing mostly identified with it – the look and feel of its home page.

    Dum-da-dum-dum.

  63. *****zzg said, “by definition the subject matter of a design patent has no utility.”**********

    I don’t think that’s exactly right. As we disussed a few weeks back here on Patently O, design patents are issued on tire tread patterns all the time, and those certainly have utility. The law seems to be that the design can have utility, but that the design cannot be the only possible design for that function or be the optimal design for that function.

  64. U.S. patenting of screen icons [albiet this one seems more of a screen display of text than unusual graphics?] has an interesting history. It includes a 1996 PTO Guideline for design patent applications on screen icons. That followed from an interesting and unusual Board decision, In re Strijland, decided by a Board panel including the PTO Commissioner and Assistant Commissioner in person, won by my then client. That was after a complaint by IBM had resulted in the PTO holding up pending design patent applications on screen icons for several years.

  65. 6

    Not to mention, you can’t really “use” their patented design because by definition the subject matter of a design patent has no utility.

  66. 6 – you wouldn’t be infringing Google’s design patent by going to google.com. Infringement by use would require you to be using an INFRINGING PRODUCT. Because you would be using the genuine webpage from Google, their would be no actionable infringement.

    However, if you loaded a webpage that looked like google.com, but wasn’t owned by Google, you may be infringing.

  67. This is appropriate protection for software.

    I have to wonder though, was I infringing every time I used to go to their webpage? Or not, since it hadn’t been granted yet, but if they changed their page back to that layout today, would I be infringing if I went there now?

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