Design Patents on Images Shown on a Computer

By Dennis Crouch

In a recent post, Tracy-Gene Durkin outlined some issues associated with GUI-based design patents. These design patents essentially cover computer images that are shown on a screen, such as a computer display or smartphone. I have written before that this type of patent is somewhat problematic because of its likelihood to impinge on free speech protections. I created the chart below of the number of these type of patents issued each year since 2005. In the PTO’s design patent classification system, these all fall within classes D14 / 485 – 495. The forecast for 2013 is also included.

Who is getting these icon design patents?: Microsoft. The software company has obtained 44% of the GUI-based design patents issued since 2005. Samsung & Apple are both big players in this market with around 5% each. Only 1% of the icon design patents are unassigned at issuance. This contrasts with the 22% of all design patents that are unassigned at issuance.

Pepsi holds over 40 icon design patents that appear to simply be advertisement drawings such as the “DEW” design patent shown below. U.S. Patent No. D.618,251.

 

54 thoughts on “Design Patents on Images Shown on a Computer

  1. Night Wiper,

    “Is the test for a pair of pliers–unless the gripping can be achieved in no other way then the functional aspects of the pliers can be part of the protected design?”

    NO, NO, NO, NO. Not “the functional aspects of the pliers”, but “the original and non-obvious ornamental aspects of the functional elements”.

    And no, it’s not at all odd that your completely confused mis-statement of the test reached the province of utility patent scope, because your understanding of the test is entirely incorrect, and says absolutely nothing about design patent claim scope–which was the topic under discussion.

    Do you see what you have done?

    And, I find “Night Wiper” to be wonderfully derisive. Surely you have sufficient strength of character to handle some gentle derision, right?

  2. Inviting Body Punches:

    “[I]nformational function cannot be achieved using any other ornamental design.”

    That test is wrong. Is the test for a pair of pliers–unless the gripping can be achieved in no other way then the functional aspects of the pliers can be part of the protected design?

    This is just another case of willful ignorance on the part of the court. We need to appoint judges that have practiced patent law.

    And, consider how interesting this is: that to hold as I am proposing does what? It brings the informational aspect into the utility patent scope. Odd isn’t it? How Prometheus affects icons.

    As to my name: Get over it. I’m not changing my name. I’ve had this name now for about six years on this board. I am not changing based on having excrement thrown at me by a simian in a cage.

  3. “NWPA–

    I just had a long response to you that didn’t post properly, and I hadn’t saved it.

    I h@te to just put out an unsupported criticism again, but you’re not getting it.

    The quote from OddzOn was not a holding, it was a re-statement of a proposition from Lee, BTW.

    The interesting quote from OddzOn is this:

    “According to familiar law, a design patent only protects the ornamental aspects of the design. Because the presence of a tailshaft and fins has been shown to be necessary to have a ball with similar aerodynamic stability to OddzOn’s commercial embodiment, such general features are functional and thus not protectable as such. Invalidating prior art must show or render obvious the ornamental features of a patented design.”

    GENERAL features. Note that claim construction is the same for an obviousness analysis as it is for an infringement analysis.

    Ornamental aspects of otherwise-identified “functional elements” of the underlying article of manufacture are included in a design claim. The fact that there is an informational function associated with the design for a screen or portion thereof does not mean that the appearance of that screen or portion thereof is not protectable in a design claim, unless said informational function cannot be achieved using any other ornamental design.

    As I understand it, anyway.

    Also, I wasn’t insulting you, I merely suggested that you change your moniker.

  4. So, plurality, you insult me and call me ignorant with nothing to back it up. Nice.

    I think this pretty much is saying what I said about icons. The function of an icon is what information it conveys in an UI sense.

    Richard v. Stanley

    The Court found that the district court did not err in its claim construction by separating the functional and ornamental aspects of the ’167 patent design. The Court explained that the issue here was no different than the issue in OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), where the Court held that “[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”

  5. Oh, and NWPA, you absolutely MUST change your moniker.

    I can’t get “Night Wiper” out of my mind, thanks MM.

  6. NWPA–

    It seems like you especially should brush up on functionality in design patents.

  7. Ah, in line with my comment of 8:50.

    Yes, multiple avenues of protection are available, and should at a minimum be evaluated.

    But the avenues afford different (for the most part) types of protection, and as the Traffix case (rightfully) presents, some of that protection naturally ceases when the patent right ceases.

    As had been commented previously (yes, it is archived), avenues of pursuing design patents, copyrights and trademarks – that are not mutually exclusive – need to be made with an understanding of the trade-offs involved.

    This also exemplifies that utter ridiculousness of Malcolm’s posts and his continued vacuousness. There is no option of not surrendering to the public of that for which a patent is granted.

    ps – by “obtaining” copyright, I will assume you mean registering their copyright, as copyright is obtained by fixing the expression in tangible media.

  8. De jure and de facto went out a long time ago.

    Let’s take Microsoft’s icons for documents. A set symbol then a symbol on the top left that indicates which application such as Word or Excel the file is associated with.

    Now, clearly there is a functional meaning to a two part icon that has a first part that means office document and second part for which type of document.

    So, I’d say that others should be able to duplicate this functional use of icons and not infringe a design patent.

    Just one example. I think all of this goes to what affordances does the icon give to the user. Everyone of those is then a functional part of the icon.

  9. It was a traffic cone, as I recall. Can’t remember what happened, and I don’t seem to have kept a copy of it, but it was a design and a utility patent, not a design and a trademark or copyright.

  10. Well; if they’re smart, they’ll also obtain TM’s & copyrights on them as well; won’t they?

  11. I checked the image file wrapper carefully

    The source of your legal analysis is the problem – see my post above about your overinflated view of your legal “prowess.”

    your usual insults

    LOL – from the number one purveyor of insults, I am touched. No really. From you, that must be a compliment.

  12. Uh, most definitely yes.

    Um, definitely no.

    Your attempted spin is pathetic (as usual).

    What you are attempting (either purposfully or otherwise) is to portray all design patents as “design” patents with one huge broad stroke.

    That’s like saying all utility patents are “utility” patents with an equally huge broad stroke.

    Well, it’s plainly evident that that is just not the case, now is it?

    and I don’t see any analysis in any of those cases

    It is clear that you know next to nothing about design patents Malcolm (the archives are replete with your f00lish crosshatch strawman – and the fact that you are not even aware of why that was such a pathetic strawman).

    The fact that you don’t see something is simply not that compelling. You are WAY too full of yourself. Your ego is much like a ballon, overfull and extremely (even hyper) sensitive. You squeek constantly, but if a point is actually to be presented, you go to pieces.

  13. “On the earlier thread, you and Les argued the opposite.”

    Um, no.

    Uh, most definitely yes. You went on and on about how both were so similar, how they are both affixed, how neither are transient, etc. You need links to your comments? Your memory is that bad? That was just a few days ago.

    you have not yet read the case I have repeatedly cited

    There you go again with your mysterious inability to write plainly. Which case are you referring to, anon?

    I’ve read quite a few design patent cases and I don’t see any analysis in any of those cases that backs up your assertion that “designs on a screen and designs on a package are ‘vastly different’”. Tell everyone the name of the case and copy the analysis from that case here for us. Or provide the analysis yourself. In English, please. Give it a shot, anon. Phone a friend if you need help.

  14. I wrote:

    if there is such as “obviousness” in designs, it would surely seem to apply here where “an ordinary observer” would not discern a difference between the words “Dew” as presented here and the way it was presented on a million other Mountain Dew related products (and probably many unrelated products and ads) prior to the filing of this application.

    You wrote: The image file wrapper actually does address this.

    I checked the image file wrapper carefully and there is nothing there that addresses my point.

    Now you are refusing to explain your comment and substituting instead your usual insults.

    At least you’re sociopathology is consistent from day to day. Remarkably so. In that limited sense, your prescription seems to be working for you.

  15. Malcolm,

    I will not hold your hand for evey little item.

    I thought you said that you had grown up a long time ago?

  16. On the earlier thread, you and Les argued the opposite.

    Um, no. Try to contain your “spin” efforts Malcolm.

    You want me to cite a case and you have not yet read the case I have repeatedly cited (if you had read the case, you wouldn’t be asking for another case cite).

    Try – just a little, please.

  17. The image file wrapper actually does address this.

    Surely you aren’t referring to the terminal disclaimers. If not, then what are you referring to?

  18. computer icons and packaging are vastly different

    Now designs on a screen and designs on a package are “vastly different”? On the earlier thread, you and Les argued the opposite.

    Please list, in your own words (or cite from a case if you are aware of an approprite cite), as many of the “vast differences” between these two design types that you are aware of. Please also recognize when drawing your distinction that ornamental designs on packages may be associated with all manner of different functions, just like an ornamental “icon” design displayed on a screen.

  19. it would surely seem to apply here where “an ordinary observer” would not discern a difference between the words “Dew” as presented here and the way it was presented on a million other Mountain Dew related products

    The image file wrapper actually does address this.

  20. Another question: if there is such as “obviousness” in designs, it would surely seem to apply here where “an ordinary observer” would not discern a difference between the words “Dew” as presented here and the way it was presented on a million other Mountain Dew related products (and probably many unrelated products and ads) prior to the filing of this application.

    It just seems that the scope of that particular design patent, at least, must be incredibly narrow. It’s basically an un-italicized version of the current Dew logo, and virtually identical to the old Dew logo except that the W is smaller. If those differences are enough to get a patent over the prior art, then surely I can just make different tweaks to the prior art (say a slightly bigger d” or an uppercase E) and get my own non-infringing design patent which I can then use to sue them. And then of course: PROFIT. The company can either settle up or the patent sham can be exposed for what it is in an amusing and public way.

    Hmm.

  21. …that appear to simply be advertisement drawings

    Way to misrepresent, Malcolm.

    Please [shrug] and stand by as usual.

  22. Is there an indefiniteness issue with the use of an “or” in a claim? As might be picked up in the discussions here (by those at least willing not to be obtuse), computer icons and packaging are vastly different items, with infringement of one being substantively different infringement of the other (i.e. see Strijland).

  23. Please read the Strijland case for the roadmap offered for claiming a design patent for computer-related icons.

  24. Your strawman of non-dedication is downright pathetic, and only made moreso by being busted with such a pathetic strawman, and then trying to feign ignorance as an escape mechanism instead of having the nuts to admit that your post of 10:07 was mind-numbingly vacuous.

    That comes pretty close to self-parody. Have you checked in with your probation officer lately?

  25. I don’t think I understand the issue here. The patent does claim “the ornamental design for a display screen with icon or packaging with surface ornamentation, as shown and described.” For the icon side of the claim, you presumably need a display screen to infringe the claim, but how is that any substantial limitation.

  26. .this is how you admit to a mistake and move forward.

    LOL!!!!!!!! You finally figured it out.

    I was wondering if someone had kidnapped you and taken over your identify. The “real” anon would have shifted at least some of the blame elsewhere. Oh wait …

    I went off of what the good professor wrote

    “Pepsi holds over 40 icon design patents…”

    Oh well.

  27. I am not the one who is confused, Malcolm – stop projecting.

    Your strawman of non-dedication is downright pathetic, and only made moreso by being busted with such a pathetic strawman, and then trying to feign ignorance as an escape mechanism instead of having the nuts to admit that your post of 10:07 was mind-numbingly vacuous.

    Put. The. Shovel. Down.

  28. LOL – Obtuse.

    Nothing obtuse about it. Maybe show it to a friend with proficiency in English and he/she can help you out.

  29. whether one believes that an agreement to dedicate the disclosed subject matter upon expiration is a necessary condition for the granting of a claim, i.e., is eventual dedication part of the quid pro quo?

    LOL – Obtuse. Is it deliberate? (said in the best Andy Dufresne tones).

  30. No, Apotu, the mea culpa belongs to me.

    The mistake is mine as I went off of what the good professor wrote instead of checking out the actual patent.

    This is not a typical mere “advertising drawing,” as the claim is dual in nature. We have a possible indefinite situation (I am not certain on this), as well as failure to adhere to the controlling Strijland case.

  31. Icons may be functional, but it seems to me that unless they are part of a standard (e.g., ISO), then they are not solely functional and very likely have ornamental aspects.

  32. What function-to-be-performed does that “DEW” icon convey?

    When you click on it, a disgusting chartreuse drink will be put into your virtual shopping cart.

  33. Has anyone EVER thought otherwise?

    Has anyone ever “thought otherwise” about exactly what?

    Is anyone (besides builders of strawmen) actually arguing this point?

    You seem to be arguing about something, although as usual, it’s anybody’s guess as to what that might be. Try writing a non-insulting comment with actual content for a change.

    If you have a point to make about whether trademark protection is available under existing law, or whether it should or should not be available, for a design that is the subject of an expired design patent, then please make your point. Take a deep breath and type it out, like a grown-up. Give it a try. Eventually you’ll get the hang of it, anon. Well, maybe. Okay, probably not, but still worth a try, I think.

  34. Sorry. I guess I figured that when the spec says, “The FIGURE is a front view of a DISPLAY SCREEN WITH ICON” that it actually means that it’s an icon. Mea culpa.

  35. does that “DEW” icon convey

    (sigh)

    That “DEW” is not an icon. You have to keep in mind the particualr art field involved Apotu.

  36. ????

    Has anyone EVER thought otherwise?

    Is anyone (besides builders of strawmen) actually arguing this point?

  37. Seems to me that having to strip away the functional aspects of an icon to get to merely design is a tricky business. This isn’t like a lamp design that sits there for ornamental reasons. Nor even like a switch on the lamp as the switch’s function is probably obvious.

    Icons convey a vast amount of functional meaning. Some icons are quite amazing really. Look at some icons and ask yourself what information has this icon conveyed to me? You will see it is a lot.

  38. Well, I think the reality is that all icons are functional.

    That is the point of the icon to convey information regarding the function that will be performed when the icon is selected.

  39. DN: Will a court allow the patentee to assert trademark rights in the subject matter of a design patent after the patent expires — given that the subject matter of the patent is dedicated to the public upon expiration of the patent? This issue was teed up over a decade ago in Traffix v. Marketing Displays, but SCOTUS dodged it.

    Great question. One’s answer would depend, to some extent, on whether one believes that an agreement to dedicate the disclosed subject matter upon expiration is a necessary condition for the granting of a claim, i.e., is eventual dedication part of the quid pro quo?

  40. This issue was teed up over a decade ago in Traffix v. Marketing Displays, but SCOTUS dodged it.

    Different issue (utility).

  41. Hmmmmmm. This looks like Rob K’s handiwork.

    Design patents for designs that also function as trademarks raises an interesting policy conflict. Will a court allow the patentee to assert trademark rights in the subject matter of a design patent after the patent expires — given that the subject matter of the patent is dedicated to the public upon expiration of the patent? This issue was teed up over a decade ago in Traffix v. Marketing Displays, but SCOTUS dodged it.

    Despite this risk, obtaining design patents for logos that are used on a wide variety of goods is an interesting strategy because (a) obtaining and maintaining the design patent will likely cost less than trademark registration(s) for multiple classes, and (b) “substantial similarity” is a lot cheaper & easier to prove than “likelihood of confusion.”

  42. …there is a First Amendment right to use a computer?

    Not only that, but the primary use of the internet is for the pursuit of happiness.

  43. appear to simply be advertisement drawings

    The start of a possible interesting conversation.

    What happens to these mere advertisement drawings in 14 (or now 15) years?

  44. Well if money is speech, I’d say posting something on a computer network web page, or in an email, or the like has got to be speech.

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