Thursday, May 26, 2011

Road Trip!!! An International Survey of Design Protection of Computer Screen Displays

Previous posts of the Ordinary Observer (such as this) describe how design patents can be utilized to protect computer icons and screen displays under U.S. law. During a recent conversation with a client, I was asked to compare and contrast how U.S. law differs from the law of other jurisdictions in this regard. After a bit of research, I pulled together the following sampling of international design patent law.


We start our world tour just north of the border in Canada, where industrial designs are registered, not examined. Perhaps unsurprisingly given Canada’s close ties to the U.S., computer-generated icons are eligible for industrial design protection in Canada, provided that they are embodied in a finished article and meet the following requirements:
The icon must be visible when the article is used for its intended purpose;
The features of the icon must not be dictated solely by a utilitarian function of the article;
The title must identify the finished article in which the icon is embodied (e.g., computer monitor, washing machine); and
The drawings or photographs must show the entirety of the finished article in which the icon is embodied.
Successfully registered computer-generated icons are protected for a 5 year term, with an additional 5 year extension available in exchange for payment of a maintenance fee.


Our next stop is Europe, where registered community designs (RCDs) can be used to protect screen displays and other “graphic symbols.” This broad definition of design embraces the screen displays without reference to the display hardware. Successfully registered graphic symbols are protected for a 5 year term, with 4 additional 5 year extensions available for a total of 25 years of potential protection. Given the Ordinary Observer’s coverage of RCDs to date (including this post from my colleague Keith Noe and this post from my colleague Mathew Grady), our stop here will be a brief one. One point worth noting, however, before we continue is that some large players in this space are actively acquiring the rights provided by RCDs.


Next up is China, where (according to this presentation authored by the Industrial Design Examination Department, SIPO of P.R.C) industrial design protection does not embrace screen displays or any pattern that is displayed when the product is electrified. However, as discussed by Yuying Guan here, Chinese industrial designs are not substantively examined. Thus, as a practical matter, including screen display elements in Chinese industrial design applications may not result in refusal and may provide additional, easy-identifiable characteristics of the registered product vis-à-vis potential infringers. Apple, Inc. appears to agree, as evidenced by this post. In China, successfully registered industrial designs are protected for a 10 year term.


The final stop on our whirlwind tour is Japan. Japanese design law appears to be quite particular in regards to screen displays. According to Design Examination Standards published by the Japanese Patent Office, “a graphic image itself is not to be regarded as a protectable subject matter but to be protected as a part of an article under the Japanese Design Act.” Japanese law further restricts protection to graphic images to those displayed when the article rendering the display is in “a state in which the article is enabled to perform its functions.” This has lead at least one commentator to the conclusion that the only screen displays covered by Japanese design law are those displayed after initial boot of the device. Designs successfully registered under Japanese law have a 15 year term.

As described above, the scope of protection afforded to computer screen displays under design patent law varies remarkably between jurisdictions. These variations underscore the need for careful consideration and planning when fashioning a strategy to protect products with innovative and commercially valuable screen designs.

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