Amendments to CN Exam Guidelines for Graphical User Interface2014-02-10

On 12 March 2014, the Chinese SIPO announced amendments to the Chinese Patent Examination Guidelines (the "Guidelines") allowing graphical user interface (GUI) to obtain design protection. These changes will come into effect on 1 May 2014.

In the current Chinese Patent Examination Guidelines, GUI on, for example, electronic products like electronic watches, mobile phones and computers is excluded from design protection in China. However, due to the change of commercial environment, and increasing local Chinese companies specialized in software, the local and foreign industries made various requests to the Chinese SIPO to allow design protection for GUI. On 22 March 2013, the Chinese SIPO solicited public opinions on amendments of the Chinese Patent Examination Guidelines to include GUI for design protection while observed and studied GUI protection practice in the US, Europe and Japan. Such amendments are now finalized, and GUI can finally enjoy design protection in China.

The specific changes to the Guidelines that will be effective on May 1, 2014 are as follows:

1.    Deletion of exclusion of GUI from design protection, and recitation of related design exclusions

Apparently, the current Chinese Patent Examination Guidelines have been revised to remove the exclusion of GUI from design protection (specifically, Section 7.2, Chapter 3, Part 1).

On the other hand, the Guidelines now recite that game main interface and graphics that are irrelevant to human-machine interaction, or realization of the function of the product still excluded from design protection (specifically, at Section 7.4, Chapter 3, Part 1 of the Guidelines). Example of such includes electronic wallpaper, on/off screens, and website typesetting. Such screens are decorative in nature, and are more relevant to be protected by copyright, and this may be the reason why they are excluded from design protection.

2.    Requirements on submission of GUI design applications

Other than the requirements on typical designs, the following are required on a design application for GUI (specifically, at Section 4.2, Chapter 3, Part 1 of the revised Guidelines):

  • For products including the GUI, figure showing the product with the GUI should be provided as the prospective view.
  • For GUI with motion and/or transition, one prospective view with the product including one frame of such interface should be provided. Remaining interfaces can be presented as figures showing key frames, while the figures of such key frames should be able to ascertain the trend of the change of the interfaces.
  • If applicable and/or necessary, the use of the GUI, the area where the interfaces locate in the product, the human-machine interaction involved, and various changes in the interface should be recited in the brief description of the design.

3.    Significance of the GUI at invalidation

Similar in determination of other design products, the revised Guidelines stipulate that products with conventional designs other than the GUI, i.e. the new design features lies in the GUI, the GUI would have more significant influence to the overall visual effect of the product (specifically, at Section 6.1, Chapter 5, part 4 of the Guidelines). Although this section is only relevant to invalidation of designs at the SIPO, traditionally this section also has effect on determination of design infringement. As such, for designs involving mainly new features in GUI, it is advisable to include such design on a dummy product with as little design features as possible to extend the design protection scope.

What we should expect

New design applications involving GUI are advised to delay filing until 1 May 2014 when the revised Guidelines come into effect. After attending a seminar held at the SIPO, we were informed that the SIPO would accept Chinese design application filed on or after 1 May 2014 claiming proper priority. That is, it is possible to file a Chinese design application directed to GUI claiming priority as early as 1 November 2013.

However, European applicants may experience in claiming priority of GUI in China. This is because, according to the writer's understanding, it is possible to file figures directed to the GUI only in design applications in Europe without including a figure showing the GUI on a product, which is required in China. This is not a problem for Japanese applicant (Japan has same requirement as China) and the US (US requires submission of figure showing the GUI on a product with the product in dotted lines, which could be converted to solid lines to fulfill the Chinese requirement). The European patent community may wish to liaise with the SIPO to resolve this issue. At present, European applicants are advised to incorporate a figure showing a product with GUI in future EU first priority applications to ensure that priority claim could be claimed in China.

It is great news for software companies involving a large amount of GUI design work. The first Chinese design patent directed to GUI may be granted in July 2014, and we will follow up on this.

The real challenge is when these Chinese GUI design patents are enforced. In particular, for GUI designs involving transition, would it be infringement to adopt only one or some of the screens of the transition? Would the prospective view showing the GUI with the product be limiting, and if yes, would a statement like "the GUI of this design is applicable to any electronic products, and the product shown in the prospective view is only exemplary" help (in additional to a dummy product)?

Further, it can be expected that at the beginning of the application process, the Chinese Examiners would adopt a more stringent view due to lack of experience. In particular, an Examiner may object to an application if it is not clear to the Examiner whether the interface involves human-machine interaction, or is a mere electronic wallpaper. Although the test of whether human-machine interaction is unclear at this stage, it may be helpful to include more information, for example how the interface changes upon input from the user, in the brief description of the design application.

Author: Toby Mak, Hongxia Gu

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