Last week I attended the United States Patent & Trademark Office's 7th Design Day. Design Day 2013 focused on "Designs in the New Digital Age" - design patent issues related to user interfaces. While UI patents had been touched on in previous years, this was the first time that the day-long meeting placed emphasis on this rapidly growing area, and was clearly motivated by last year's Apple-Samsung case.
The attendees and presenters were predominately lawyers and USPTO examiners, along with a handful of design experts like myself. As in previous years, the majority of designers attending were drawn from Industrial Designers Society of America (IDSA), but with the growth of user interface patents I would expect to see a larger involvement with interface/interaction designers and organizations in the future.
The opening presentations by the USPTO staff included an update on the written description requirement for design patents by Joel Sincavage, Design Practice Specialist. Without getting into the details, suffice it to say that the majority of lawyers in the audience were not happy to hear what was being presented and the Q&A turned into what I can only imagine a contentious school board or city council zoning meeting must be like.
This was followed by a much more subdued update regarding the United State's implementation of the Hague Agreement, which will streamline the process of filing design patents across multiple countries.
The subsequent presentations predominately focused on user interface design and comprise my summary. While the presentations were not structured in a chronological order, there was a clear pattern of discussing the history of UI design patents, current data and future needs:
Past
For context, the patentability of user interfaces has been a topic of discussion for decades, but has only been formalized in recent years and is still evolving. Cathron Brooks, Supervisory Patent Examiner at the USPTO, described "how it all started" with Xerox applying for design patents on its user interfaces in the 1980s, which catalyzed discussion and debate over what characteristics of user interfaces could be patentable.
Charles Mauro of MauroNewMedia contextualized the Xerox patents within a timeline, mapping key events in user interface development with important patent events from the 1960s to the present:
In addition, Masashi Omine, a Deputy Director of the Japan Patent Office (JPO) described the history of interface design patents in his home country, starting from the patenting of liquid crystal display designs (e.g. digital watches) starting in 1986, subsequently extending to graphic images (2006), and more recently, dynamic graphics (2011). On a related note, China does not currently provide any patent protection for user interface designs, although this may change long-term.
Present
Rob Katz of Banner & Witcoff provided summary statistics on the current state of user interface design patents, which make-up about 2% of all design patent applications. This translates to roughly 500 UI design patent filings per year with the USPTO, but has been rapidly accelerating. Brooks of the USPTO indicated that "Generated Images" (referring to user interfaces and icons) are the fatest growing segment of design patents.
It's important to keep in mind that design patents are only one form of intellectual property of protection for user interfaces, which can also be covered by utility patents, trademarks and copyrights. Mauro suggests that all of these forms of IP protection are needed to cover the entire user experience (UX), but that current processes are not integrated, requiring a strategic approach. Apple demonstrated such a strategy in their case against Samsung, which included multiple design patents, utility patents and trade dress IP. Katz mentioned that it is rare for a design patent to include both aspects of the physical product design and the user interface design, as it is typically more effective to patent each separately.
While user interface patents are growing in prominence and value, there are constraints in the design patent application process. For example Brooks discussed some of the basic requirements for user interface design patents, which include referencing a physical object or system such as a computer or display screen. Dynamic interactions such as animations or transitions can be submitted as a series of static images like a "flip book" or storyboard, but only those images presented are covered by the patent.
Future
The takeaways from Design Day 2013 were clear - user interface design patents are more important now than ever, and there is a need to evolve the processes around protecting them. In the short-term this includes increasing staffing at the USPTO to support the growing number of UI design patent applications, and to continue the dialogue between stakeholders at events like Design Day. I also strongly recommend that user interface designers improve their education and processes around patents.
Looking further ahead I would expect the USPTO processes to catch-up (or at least narrow the gap) with the design and technology it is intended to protect. This may mean more suitable forms for documenting and describing interactive designs as well as a more cohesive approach to combining related forms of IP such as design and utility patents as appropriate.
Finally, consider what David Kappos, former director of the USPTO, wrote last week in the National Law Journal in a piece entitled Design: The New Frontier of Intellectual Property. Kappos, perhaps anticipating the discussions that would take place at Design Day 2013, admonished:
"But for the breakthrough innovators of the 21st century, design has moved onto a much larger stage. It is where high function meets high style. And the traditional disciplines of IP — patents, trademarks and copyrights — are no longer ends unto themselves but are now viewed as component parts of a larger whole."
