Guest Post: What is Next in Design Patents for On-Screen Icons?

By Tracy-Gene G. Durkin

The recent Apple v. Samsung litigation has consumed the media since August when a California Jury awarded Apple more than $1 billion for infringement. Of the three design patents involved in that judgment, one was for a graphical user interface (GUI). This landmark case is the first time that a U.S. court has considered infringement of a GUI design patent and may be just the tip of the iceberg beginning to emerge within the design patent landscape.

How the Law Developed

Design law relating to GUI protection has developed at a slow rate since 1996, when the USPTO first created guidelines for the examination of GUI designs. The legal basis for design patents derives from the Patent Statute, 35 U.S.C. Section 171 which provides that whoever invents any new, original, and ornamental design for an “article of manufacture” may obtain a patent for it. Section 171 also refers to the design for an article as including ornamental designs of all kinds, such as surface ornamentation. The question then is how is GUI considered to be an article of manufacture under U.S. law?

The Manual of Patent Examination Procedure Section 1502 discusses what constitutes the ornamental appearance of a design, which includes the shape and configuration, indicia, contrasting color or materials, and graphic representations on an article of manufacture. Any ornamentation applied to an article is considered to be surface treatment. Surface treatment itself is not protectable with a design patent, but rather through copyright. However, when that surface treatment is applied to an article of manufacture it is protectable through a design patent.

The case of Ex parte Strijland 26 USPQ2d 1259 (BPAI 1992) established the protection of GUI using a design patent. This case was taken up at the USPTO Board of Appeals and Interferences (BPAI) over an icon. The examiner rejected the design as being unpatentable on the basis that it was not an ornamental design to be applied to an article of manufacture, but rather was mere surface ornamentation. The applicant then tried to add information to the application to include and describe the computer display on which the claimed icon could be displayed. The Examiner rejected the additional information as new matter. The BPAI affirmed the Examiner, but in doing so, created a road map of how to apply for a patentable GUI by suggesting that had the information that was added to the application after it was filed been provided at the time of filing the application, it would have made the design patentable because it provided an article of manufacture (the display) on which the GUI was presented as surface ornamentation.

In 1996, the USPTO created guidelines for the protection of GUIs based on the decision in Ex Parte Strijland. GUIs are now statutory subject matter, provided that the GUI design or surface ornamentation is shown with some portion of a display or other article of manufacture. Although there have been no reported USPTO BPAI decisions involving the patentability of GUI designs since the Strijland case of 1992, nor any reported infringement cases related to GUI’s (excluding Apple v. Samsung), there have apparently been GUI cases appealed to the BPAI. Those decisions have unfortunately not been published.

Requirements to patent a GUI design

The requirements to patent a GUI design in the United States are the same as for any other kind of design patent application. The design must be novel, not obvious, and not functional. The claimed design may be presented as a line drawing or a digital image. Color and grayscale are allowed to be presented in the same GUI application, but line drawings and digital images are not. Animated designs are also patentable in the United States, and must show a minimum of two views of the animation. More images may lead to a greater chance of patentability, although it may also lead to patent with a narrower scope.

Any attempt to add language about the article of manufacture in the title or the drawing figures after an application has been filed will be met with a new matter rejection during patent examination at the USPTO. Examiners search prior patented GUI designs as well as GUI utility patents in making their patentability analysis, resulting in a very complex and comprehensive search. While design patent applications are rarely rejected, the most common references used in a GUI design rejection are utility patents. Non-patent literature is also commonly used.

What’s Next for GUI Design Patents

The number of patent lawsuits involving GUI is increasing rapidly in the United States. According to the New York Times, over the last two decades the number of patent lawsuits filed yearly in U.S. district courts has tripled (3,260 were filed in 2010). According to a study done by Stanford University, $20 billion was spent on patent litigation and purchasing patents in the smartphone industry in the last two years. We also know from information provided recently by David Gerk from the USPTO’s Office of Policy and External Affairs at an Inn of Court meeting that the number of GUI design patent applications is currently growing at the fastest rate of any other area. As digital displays become common place on more and more consumer products, there is little doubt that the subject matter of the increased patent filings is extending well beyond the smart phone.

About the Author:
Tracy-Gene G. Durkin
is a director and leader of the Mechanical Patent and Trademark Practice Group at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. Tracy is a recognized design patent expert and represents some of the most forward thinking companies in the area of product design and product packaging design. Contact Tracy via email at tdurkin@skgf.com.

 

 

101 thoughts on “Guest Post: What is Next in Design Patents for On-Screen Icons?

  1. Does anyone have an MPEP, case law or USPTO notice describing how to do amendments in design patent applications?

  2. Not having had any response, I re-iterate my opinion that this article was created and published for purposes that were not primarily informational.

  3. Yes, but a design patent for a particular thing.

    You can get a design patent for a cork screw that looks like a rabbit, even though rabbits exist, because cork screws that look like rabbits were as some point new and not obvious. The patent does not cover all things that look like rabbits. It just covers cork screws.

    Likewise, a design patent for a GUI just covers GUI’s.

    It depresses me that I have to explain things like this to yet another examiner.

  4. Why is that Lester jester? Because it doesn’t “function” as one? Remember we’re talking about design patentslol.

  5. As usual, and not surprising, wrong message received.

    The ball is still in your court Malcolm.

    Try not to (continue to) flub it.

  6. Spit it out? I have all but done so.

    Uh, yeah. You haven’t done so yet.

    small mental achievement

    Right. You are incapable of the small mental achievement of writing a comment that answers a question directly so instead you write half a dozen comments of insulting inuendo.

    Message received, loud and clear.

  7. I was just pointing out that you knew not of what you spoke.

    It’s amazing how evident it is that IANAE knows not of what he speaks.

    Les, you are being trolled.

  8. Let the record show that the witness did not actually cite or present an authority.

    Also, let the record show that the witness attempted to change the subject to patents generally from design patents specifically.

  9. Do you have an authority that says the words in a design patent claim are not limiting?

    If we’re still pretending they’re patents, I do.

    Ask IBP. This issue is near and dear to his heart. He desperately wishes that claim preambles were always limiting. He’s also intimately aware that they’re not.

  10. My 2 cents:

    By now, you are aware of my lobbying for the preamble to be ALWAYS considered LIMITING.

    Design patents are a good example. Remember, the S-M is the ornamental design for an article of manufacture. Recitation of the article in the claim is required to satisfy 112.

    To the extent that the article is depicted in the drawings, parts that are not claimed in solid lines are often described as “environmental” information.

    The recitation of the article of manufacture in the preamble is absolutely necessary to satisfy 112 and is therefore limiting for that purpose–the question then seems to become whether or not it can be considered limiting for one purpose, but not for another.

    I would prefer it to be considered limiting for any and all purposes, otherwise–because it is the claim–the metes and bounds couldn’t be consistently determined.

    Having said that, I’m unclear as to why some believe that the preamble in this situation would inform the functionality test.

  11. “However, you did not make a graphical user interface using that design.

    I did not make it? Even though I caused it to appear on my screen? Great, so that means I didn’t infringe. As long as there aren’t any other kinds of infringement besides making.”

    I said you didn’t make a GUI.

  12. “By your logic, printing a copy of the patent would be just as infringing.

    By Prometheus’ logic, parents receiving and thinking about their children’s blood test results were infringing. They didn’t win, but it didn’t stop them from threatening and suing a whole lot of people on that theory.

    These aren’t 3D designs with multiple views that can only be infringed by actual articles of manufacture. These are single images that the “patentee” intends to assert against video displays of those images.”

    If you get sued for printing a copy of a patent, just ignore it. Don’t even answer it.

  13. “Of course the words in the claim are limiting. Why else would they be there?

    Good question. I suppose you have an authority for your position that the claim preamble is always limiting, or that unclaimed limitations can be imported from the specification?”

    Do you have an authority that says the words in a design patent claim are not limiting?

  14. “Moreover you would know that it is not a computer screen, but rather a phone screen.

    Another magical unclaimed limitation pulled out of nowhere? I’m sure that’s very relevant for all the people whose phones have GUIs but no computers in them.”

    I didn’t say it was a limitation. The claim is to a GUI for a display screen. I was just pointing out that you knew not of what you spoke.

  15. By your logic, printing a copy of the patent would be just as infringing.

    By Prometheus’ logic, parents receiving and thinking about their children’s blood test results were infringing. They didn’t win, but it didn’t stop them from threatening and suing a whole lot of people on that theory.

    These aren’t 3D designs with multiple views that can only be infringed by actual articles of manufacture. These are single images that the “patentee” intends to assert against video displays of those images.

    Of course the words in the claim are limiting. Why else would they be there?

    Good question. I suppose you have an authority for your position that the claim preamble is always limiting, or that unclaimed limitations can be imported from the specification?

    Moreover you would know that it is not a computer screen, but rather a phone screen.

    Another magical unclaimed limitation pulled out of nowhere? I’m sure that’s very relevant for all the people whose phones have GUIs but no computers in them.

    However, you did not make a graphical user interface using that design.

    I did not make it? Even though I caused it to appear on my screen? Great, so that means I didn’t infringe. As long as there aren’t any other kinds of infringement besides making.

  16. “Only if you consider the title and the claim preamble to be limiting as to functional aspects of the accused ornamentation.

    Otherwise, it’s a claim to an ornamentation, displayed on a computer screen.”

    Where do you get the limitation to a computer screen?

    By your logic, printing a copy of the patent would be just as infringing.

    Of course the words in the claim are limiting. Why else would they be there? Why not just say

    We claim:

    Followed by the figures?

    ” With the computer screen not even shown in the drawings. The claim body is the drawings themselves, which I have just viewed on my computer screen. I (the user) even dragged the graphics around with my cursor a little, thereby interfacing with them.”

    Clearly, you have not, or you would know that the screen is shown. Moreover you would know that it is not a computer screen, but rather a phone screen.

    You may think you interfaced with the figures. However, you did not make a graphical user interface using that design.

  17. what is claimed is a design for a graphical user interface.

    Only if you consider the title and the claim preamble to be limiting as to functional aspects of the accused ornamentation.

    Otherwise, it’s a claim to an ornamentation, displayed on a computer screen. With the computer screen not even shown in the drawings. The claim body is the drawings themselves, which I have just viewed on my computer screen. I (the user) even dragged the graphics around with my cursor a little, thereby interfacing with them.

  18. My entire argument about what?

    I am basing may attempt to allay APTU’s fears that he will be sued for patent infringement for looking at a patent on a computer screen by pointing out that what is claimed is a design for a graphical user interface.

    Clearly, the patent doesn’t cover that. Any judge would see that. I dare say it wouldn’t cover a T-shirt or lunch box either.

  19. the patent claims:

    The ornamental design for a graphical user interface for a display screen or portion thereof, as shown and described.

    You’re basing your entire argument on the title and claim preamble being limiting?

  20. To be more precise, the patent claims:

    The ornamental design for a graphical user interface for a display screen or portion thereof, as shown and described.

  21. Actually, the patent is to :

    Graphical user interface for a display screen or portion thereof.

    link to google.com

    When one displays a pdf of the figures of the patent document on a computer screen, one has not made a graphical user interface.

    Capisca?

  22. Accidentally I’ve found this blog and I’m so thrilled with this topic. This is great knowledge sharing blog and I like it a lot. Thumbs up for the great work !

  23. How about it Malcolm, care to provide any legal reasoning to support your contention that this is a “ poorly reasoned decision begging to be overturned“?

    Let’s see that adult engage in an intellectually honest conversation…

  24. retract or redefine your own words

    More accusations of that which you do (just [shrug] and stand by all the spinning and mischaracterizations and blatant 1ies that you post).

    Spend less time accusing and more time thinking.

    Spit it out? I have all but done so. Leaving the last step for you will make you feel better about yourself. You will have accomplished some small mental achievement and have somethign to build upon.

  25. I tried to give you a few clues,

    Why not just spit it out like a normal person with a working understanding of English would?

    you can figure this out on your own.

    No, I can’t figure out what’s in your warped li’l mind, Humpty. Even when you appear to be crystal clear, half the time you turn around and retract or redefine your own words when you are asked to confirm that you meant what you actually wrote.

  26. Vacuous drag in of me here Malcolm.

    Nice to see that I am so much on your mind.

    Care to expand with some legal reasoning as to why the case was so poorly decided? You know, actually try to engage in an intellectually honest conversation (and try not to burn your agendas to the ground in the process)?

  27. Still need to work on your reading comprehension there Malcolm.

    The ball is in your court – I tried to give you a few clues, but you seem to be playing your usual what the Sam Hill mindless f001 game.

    I know you can figure this out on your own. Try just a little.

  28. Here it is again:

    Question: what is the “big difference” between Dennis infringing a design patent without worrying about it, and my telling Dennis not to worry about infringing the same patent.

    Answer: One is a professor running a blog, the other Supposedly is an attorney…

    That’s the “big difference”? Our jobs? Gosh. Here’s another “big difference”: Dennis has red hair. I don’t.

    Or are you struggling to explain something “bigger” and you just can’t figure out how to word it in English? It sure seems that way. Maybe phone a friend and ask for some help.

  29. In this context the word “Icon” has a meaning which is not applicable to the related drawing in the patent.

    Huh? The design patent claim describes an image on a screen. Are you suggesting that the design patent claim is infringed by some displays and not others? Is there a “fair use” exception for design patents that you’d like to tell us about?

    Or maybe your li’l bro anon can help out. You two make a great team.

  30. Anyway, I think you are probably mistaken. In this context the word “Icon” has a meaning which is not applicable to the related drawing in the patent.

  31. Is your issue then one of mode of distribution?

    Do you recognize that even “plain” paper has conditions for the item that you seem to have difficulty with based on (seemingly) electronic access?

  32. Ultimately, the electronic paper scenario doesn’t avoid the problem that I mentioned above with GUI/icon design patents. I can still technically infringe the patent simply by viewing the issued patent document on my old Kindle.

  33. Asked and answered – is it too difficult for you to notice?

    One is a professor runninga blog, the other Supposedly is an attorney…

    Obtuse. Is it on purpose? (said in the best Andy Dufresne tones)

    As to running, try to improve your reading comprehension just a little and reread my post at 12:17 pm. You were the one to supply the answer, yet you seem to have a perpetual problem with actually supplying answers…

  34. ‘m not the one running Malcolm

    Yes you are. Answer the question about the “big difference” I asked you. Here it is again:

    what is the “big difference” between Dennis infringing a design patent without worrying about it, and my telling Dennis not to worry about infringing the same patent.

    Go ahead. Answer the question. If there is a “big difference” between two other things that you had in mind, then tell us exactly what those two other things are and tell us what the “big difference” between those two other things is.

    a single person possibly infringing

    Possibly infringing? We’re not talking about “possibly” infringing. We’re talking about a patented icon design displayed on a screen. Do you have some non-infringement theory in mind? Please tell us what theory is and provide some case law.

    Or keep running away, with your trail of insults and inuendo.

  35. The argument is that design patents already cover too much already and the fact that the grifters at the Great Patent Casino demand more games to play is not a compelling reason to expand the scope of coverage even further

    LOL – it even says so on the inside label of Malcolm’s nice shiny tinfoil hat.

  36. I’m not the one running Malcolm. Figure out yet hwo a lawyer’s open-ended advice on a legal matter is different than a single person possibly infringing?

    But nice of you to double down with an accusation of that which you do and a *click*.

    I’m just gushing.

  37. link to en.wikipedia.org

    I’m talking about an icon displayed with and electronic or electric paper display, which as indicated in my original post and in the wiki, would display the icon indefinitely, i.e., not transiently.

  38. What if the icon is displayed on electric paper, which requires power to change state, but maintains its display state forever if not acted upon by an erasing force.

    Absent any other facts, your “electric” paper seems indistinguishable from regular paper. So, if you accept the proposition that any artwork on paper can be protected by a design patent, then an icon printed on your so-called “electric” paper would also be protectable by a patent. On the other hand, it seems likely that in the real world your “electric paper” does not involve a design that is affixed to the surface of an article of manufacture. Only you know the answer to that question, Les. It’s your hypo. Upon what surface is the design affixed?

    And remind me: we were talking about displays on screens, weren’t we? Displays that are designed to be necessarily transient and require continuous power for image presentation? I’m happy to change the discussion to “electric paper” but it would be nice if you could be more specific about what you’re referring to. I’m aware of various things referred to as “electric paper” but I’ll let you tell us specifically what you mean.

    something isn’t an article of manufacture if it is transient.

    That’s not the argument. The argument is that design patents already cover too much already and the fact that the grifters at the Great Patent Casino demand more games to play is not a compelling reason to expand the scope of coverage even further.

    Just as a reminder to everyone, Les: you are on the record saying that purely mental processes should be eligible as utility patents. Because they are “processes”, correct? Or have you since dialed back the n-ttiness since Prometheus drove you to the cr-ck pipe?

  39. Was your reply strictly to Prof. Crouch?

    Careful, your response is archived (Your 11:11 post is not in response to anyone, and does not address anyone in particular – just in case you wanted to attempt to spin some facts).

  40. It’s a cross-thread type of thing.

    Takes a little wit – no surprise that it goes over your head, Malcolm. Have Ned explain it to you.

  41. Nice hand waiving Malcolm.

    Squint as I may, I see nothing of substance in your post worth replying to.

    But for kicking up dust to my post on your real disdain, well, it’s a pretty cloud.

  42. Let the record show that the question was not answered and an attempt was made by the witness to change the subject.

  43. Nice non-answer Malcolm

    I honestly don’t understand what you’re referring to.

    I’m not the one who doesn’t seem to think there is any appreciable difference.

    Right. You’re the one who seems to think that there is a “big difference” but you lack the English skills to describe for us what the “big difference” is between Dennis infringing without worrying about and my telling Dennis not to worry about it infringing.

    Please tell us all, anon: what’s the “big difference”?

  44. LOL – the recipe and robot chef C_RRP.

    Pretty d_@mm funny coming from the guy who has openly admitted he knows what the controlling law is in relation to the exceptions to the printed matter doctrine.

  45. I wonder if conspiracy is even the same in his little world…

    Nice strawman, anon. Here’s how I define conspiracy and I’m sure that Plurality uses the same definition:

    1. Conspiracy is an agreement to perform together an illegal, wrongful, or subversive act. 2

    2. A group of conspirators.

    Nobody is asserting any “conspiracy”, anon. Rather odd that you would bring it up.

  46. Nice non-answer Malcolm.

    Except I’m not the one who doesn’t seem to think there is any appreciable difference.

    Do you think the Prof.’s insurance cares about reckless advice?

    My English proficiency

    really reaching there Malcom, poor boy, plumbed the depths of your (shallow) wit so quickly?

  47. Big difference between a patent blog infringing and your post of 11:11 PM advising people not to worry about infringing.

    Take a guess as to what that difference is.

    Translation: “My English proficiency isn’t up to the task of explaining to everyone what the difference is and why it is so big so I will just sit here and w-nk away with inuendo like I usually do.”

  48. the number of GUI design patent applications is currently growing at the fastest rate of any other area.

    It’s that division by zero trickery thing.

  49. electric paper

    Pretty funny coming from the same w-nkers who go apesh-t when its pointed out that a recipe printed on a piece of paper is “functional” when it’s handed to a robot chef.

  50. Welcome to real world, anon.

    LOL – at least the “real” super-conspiracy one that Malcolm is protected from with his nice shiny tinfoil hat.

    I wonder if conspiracy is even the same in his little world…

  51. Big difference between a patent blog infringing and your post of 11:11 PM advising people not to worry about infringing.

    Take a guess as to what that difference is.

  52. “then there is no displayed image that is unpatentable as a “design”.”

    Um, yes. You don’t seem to grasp the law in this area.

    Really? Please describe a displayed image that is unpatentable as a design, then explain why it is unpatentable as a design and cite the case law supporting your explanation. And please don’t waste time by proposing an image that is unpatentable because it’s obvious.

    Thanks. I had no idea you were an expert in this area of law, anon. Is your expertise as profound as your expertise in utility patent law, where you seem to be putting your foot into every time an important case comes up? Gob, I hope so. LOL!

  53. It’s a poorly reasoned decision begging to be overturned

    LOL – from the person who never shows any legal reasoning…

    Well, almost never – when you do venture into substantive ground, you end up burning yourself.

    I’ve already got your comment archived

    LOL – did it take long for you to do that? Did you have someone hold your hand?

  54. it’s the “don’t upset the apple cart” argument.

    Welcome to real world, anon.

    By the way, have you found a law firm that uses staff to screen registered mail to patent attorneys and throws away certain letters without the attorney seeing them so the attorney can claim in court that he never saw the prior art?

    Still waiting for just one single firm, anon. The firms I consulted on the issue laughed at the prospect. Were you just ly-ing to everyone when you claimed that your law firm employed this strategy to shield its patent attorneys from learning about prior art relevant to the clients of the attorney? I think you were ly-ing. More accurately, I know that you were.

    But you’ll never admit it. Unfortunately for you, I’ll never ever let you forget it.

  55. we could just go to the Strijland decision, but I figured you haven’t yet read it yet.

    I have read it. It’s a poorly reasoned decision begging to be overturned, just like the product-by-process decisions Newman embraced and the Federal Circuit’s original decision upholding the Prometheus claims.

    And what can I say about the SC and the “transient” argument? They have been known to blow things

    LOL. Yes, but they didn’t blow the Nutjen decision. Like Prometheus, that decision will never be overturned. But Strickland will be. Care to bet against me? Go ahead. Make my day. I’ve already got your comment archived so we can keep track of your never-ending failures.

  56. “The number of patent lawsuits involving GUI is increasing rapidly in the United States.” What is the evidence for this, and what are the figures?

    “the number of GUI design patent applications is currently growing at the fastest rate of any other area.” This statement needs re-wording to make any real sense.

    “As digital displays become common place on more and more consumer products” No. “Commonplace” or just “common”

    “However, when that surface treatment is applied to an article of manufacture it is protectable through a design patent.” No. It is the ornamental design for the article of manufacture that is protectable, not either the surface treatment or the article of manufacture itself.

    “While design patent applications are rarely rejected, the most common references used in a GUI design rejection are utility patents. Non-patent literature is also commonly used.” What is the evidence for this, and what are the figures?

    etc.

  57. Shockers, it’s the “don’t upset the apple cart” argument.

    I think Malcolm is almost done shining your tinfoil hat for you.

  58. nobody else in the world

    LOL – well we could just go to the Strijland decision, but I figured you haven’t yet read it yet.

    And what can I say about the SC and the “transient” argument? They have been known to blow things many times in the past (besides, I think you are thinking of the CAFC and Nuitjen).

    Let me know if you need any more hand-holding.

  59. At the very least, we need some judicial review on the design-patentability of GUIs and screen icons, and the PTO is the entity that needs to force the issue. A lot of potential infringers probably have GUI design patents of their own and are unwilling to engage in a “scorched earth” defense that would hurt themselves as well as the plaintiff.

  60. What if the icon is displayed on electric paper, which requires power to change state, but maintains its display state forever if not acted upon by an erasing force. Would you agree that the icon design is patentable under those conditions?

    Accordingly, what we have here is another alarm bell tolling at the absurdity of the assertion that something isn’t an article of manufacture if it is transient.

  61. .Remember to make a copy for your insurance carrier.

    Tell it to Dennis. His blog is infringing several design patents already.

    [shrugs]

  62. Tracy: As digital displays become common place on more and more consumer products

    Its 2013. Digital displays are really, really old and have been a feature on just about every “controllable” consumer product out there for several decades, at least, and that includes displays with “icons”.

    What’s driving the design patent bubble is simply the recognition that (1) design patents are incredibly easy to obtain and (2) the “law” in this area is clear as mud which makes design patents easy to “enforce” and therefore very useful “weapons” for corporations to apply and for trolls to exploit.

    design patent applications are rarely rejected

    There, you said it yourself. The question is: why should that the case?

    the most common references used in a GUI design rejection are utility patents

    Problem number 1.

    Non-patent literature is also commonly used.

    What does “common” mean? What percent of design patent cases cite non-patent literature? 30%? I’d be surprised if it was as high as 10%.

    Design patent “examination” is virtually non-existent, except as to formalities.

  63. rasterization is the means of affixing the ornamentation to a particular spot on the screen

    Funny that during all the discussion of rasterization and producing images on a screen, nobody else in the world has ever uttered such a strange statement until you, just now, when you’re backed into a corner trying to make patent law work for you.

    that ornamentation is most assuredly secured.

    Because you say so, Humpty?

    secured: “Fix or attach (something) firmly so that it cannot be moved or lost.”

    Nope. You’re wrong.

    If you hold your laptop upside down, the GUIs don’t all flutter to the ground, do they?

    No, but if turn my laptop off, the GUIs disappear.

    “Transient” – LOL. Come outside tonight and look to the sky for some transient items that have been around longer than the earth.

    So GUI’s are more like objects than signals because stars are old? Great argument, anon. I wonder what the Supreme Court will think of it.

  64. They are transient waves of light emitted by a screen in response to excitation by a raster.

    Haven’t you heard? They’re equivalent to hardware.

  65. Thanks Tracey for your post. Most readers of this blog who post comments do not appreciate design patents.

  66. I mean: bring it on. The law is joke. Let a couple of intelligent judges have a sniff of this and see what they think.

    Yes, that’s what we need – judges rewriting the actual law because they (or Malcolm), thinks it’s a joke.

    You might want to add some legal reasoning to your arguments as last I checked, the win rate for “But your honor, the law is a joke” was really low (but still higher than your win rate on these boards).

  67. My recommendation would be to simply not worry about infringing these pieces of cr-p.

    LOL. Let me have that in writing. Remember to make a copy for your insurance carrier.

  68. These patents will die a quick death

    LOL. Just like the Diehrbots in Bilski, right?

    That was a peaceful two months after that decision when you refused to show up on these threads. Do you remember that? It’s archived, you know.

  69. then there is no displayed image that is unpatentable as a “design”.

    Um, yes. You don’t seem to grasp the law in this area.

    At all.

    I suspect that a part of that comes from your false sense of elitism and flash-of-genius/but-for fallacies.

  70. Also, to secure to something. Sure rasterization is the means of affixing the ornamentation to a particular spot on the screen, but that ornamentation is most assuredly secured. If you hold your laptop upside down, the GUIs don’t all flutter to the ground, do they?

    “Transient” – LOL. Come outside tonight and look to the sky for some transient items that have been around longer than the earth.

    Do you have any real legal arguments to make, or do you just want to whine?

  71. affixed: Stick, attach, or fasten (something) to something else.

    Displayed interfaces and icons are not ornamentation affixed to an article. They are transient waves of light emitted by a screen in response to excitation by a raster. If you can patent GUIs and icons under the “Strickland theory”, then there is no displayed image that is unpatentable as a “design”.

    These patents will die a quick death. Let’s savor yet another low point in the history of patents.

  72. My recommendation would be to simply not worry about infringing these pieces of cr-p.

    I mean: bring it on. The law is joke. Let a couple of intelligent judges have a sniff of this and see what they think.

    Plurality of TU: The key problem with GUI/icon design patents becomes apparent when you can infringe the patent by viewing the patent document itself on a monitor.

    Yup.

    Specifically, the issue is that a GUI or icon is not actually ornamentation – surface or otherwise – because it is not applied to the article in any fashion (i.e., it’s not manufactured as part of the article, and it’s not affixed to the article).

    Indeed. What’s next? “Ornamental sound designs”?

  73. of which I had some personal familiarity at the time.

    OK Paul, I am curious – what’s the scoop?

  74. I am down with the 100 separate design international apps and I bow before the power of the Apple rounded rectangle.

    It is this particular poster child that confuses me. This Apple Design patent (US D604305) is noted but not named in the intro to the article. Is this only GUI or icon Design Patent that has ever been part of a winning case? How much of that victory is due to this patent rather than the other four patents in the pool that Apple asserted?

    And I am curious, would a phone on the Verizon 3G network at 2:00 PM infringe this patent? I’m truly baffled by Design infringement sometimes…

  75. Thanks especially for noting Ex Parte Strijland in this nice historical summary of screen display icon design patenting, of which I had some personal familiarity at the time.
    The PTO had in fact issued several screen icon design patents before then, which apparently upset IBM, and they complained to the PTO, which then stopped allowing them. That lead to Ex Parte Strijland, which is no ordinary Board decision, it was an expanded Board including the Commissioner.
    BTW, the words “Screen display” in the title, or elsewhere, as filed, can sometimes provide support for a drawing amendment to show an unclaimed underlying screen segment underlying the subject screen icon, and that was some Ex Parte Strijland sequels. But of course it is far better to do so to begin with.

  76. The key problem with GUI/icon design patents becomes apparent when you can infringe the patent by viewing the patent document itself on a monitor. Specifically, the issue is that a GUI or icon is not actually ornamentation – surface or otherwise – because it is not applied to the article in any fashion (i.e., it’s not manufactured as part of the article, and it’s not affixed to the article).

    I’m hoping the USPTO decides to reverse course on these kinds of design patents and forces the issue into the courts to have this issue settled once and for all.

  77. With the recent passage into law of the changes to design patents, the ‘thinness’ will be able to be overcome with massive numbers of drawings per patent.

  78. Ms. Durkin,

    How hard is it to change the shape of a specific icon if and when a software app designer receives a notice, especially given the auto-updating systems of most smartphone ecosystems. Also, in reviewing US D604305 (the Apple GUI), I am having trouble understanding the power of this particular Design Patent especially when compared to the other two Design Patents from the the Apple v Samsung case.

    US D604305 has 16 icons split into two groupings, each with specific text below them corresponding to the icon. It has a two tone background, the majority of which is black. It has AT&T in the upper left corner along with five bars for signal strength while on the EDGE network and a clock like indicia which reads 4:00 PM in the top center. Since none of those features are functional, that seems to be a very narrow amount of protection.

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