Product-centric Patenting: An Approach to Protecting the “Look and Feel” of Software Products

When asked why they wish to secure intellectual property rights, inventors often provide a succinct response: they wish to protect the “look and feel” of their product. The advantages of such protection are particularly pronounced in the realm of software implemented inventions, where interface design can make or break a product. Inexperienced attorneys often find fashioning protection for the look and feel of software products to be a vexing problem. Contributing to this difficulty is the fact that attorneys are trained to draft applications directed toward a single (or set of closely related) concepts. When presented with the bundle of ideas embodied in a single software product, it can be difficult to determine where to begin.

Fortunately, a combination of utility and design patents can often be employed to efficiently weave a web of protection for the look and feel of a product. Design patents lend themselves well to protecting the “look” of software implemented inventions. As discussed in a previous Ordinary Observer post (by Matthew Grady), design patents are increasingly being utilized to protect a variety of user interface elements. More specifically, design patents can be used to protect icons and other static graphical elements. In addition, the United States Patent and Trademark Office is presently issuing design patents that cover the movement and animation of these graphical elements. With these tools in hand, user interface innovations can be cost effectively protected using design patents.

Further, under a product-centric patenting methodology, utility patents can be used to augment and complement these design patents. Utility patents are well-suited to protect the “feel” of a software product by protecting both the innovative functions performed by the software product and, in some cases, the manner in which the functions are implemented. Utility patents can be used to cover a number of processes that, for example, lower the latency within the user interface, interoperate with other software products or efficiently store data to decrease the physical footprint of the hardware executing the software product. Thus, utility patents can be used to protect commercially valuable “under the cover” aspects of software products.

While protecting the complexity and innovation present within some software products can be a daunting challenge, careful use of design and utility patents can be used to create a web of protection for the look and feel of a software product in a cost effective manner.

Update: Fashion Design Protection

As discussed here a while back, Congress has been mulling over the idea of amending Section 1301 of the copyright statute - which currently only protects vessel hull and deck designs - to include fashion designs.

Well, things are starting to look up for the fashion industry. Yesterday, Senate Bill S.3728 (also known as the Innovative Design Protection and Piracy Prevention Act), which was introduced by Sen. Schumer of New York on August 5, was passed by the Senate Judiciary Committee. The bill, with minor modifications, now moves on for consideration by the full Senate.

Here are some highlights:

• Protects appearance as a whole of an article of apparel, including its ornamentation


• Covers clothing, undergarmets, outerwear, handbags, suitcases, belts and eyeglass frames, among others


• Must be original and unique


• Employs a "substantially identical" infringement standard, similar to trademark


• 3-year term of protection (10 years for vessel hulls)


• 3 year public disclosure bar (no registration required)


• Home Sewing Exception: a person may make a single copy of a protected design for home use only


• As with all things copyright, there is an independent creation defense (using a totality of the circumstances analysis)


• Does not protect illustrations or pictures of the design, such as in advertising (or, dare I say, virtual design representations)

I know many people have been pushing for this (and some not so much), so let's hope for the best balanced outcome.

Interesting Designs

Probably inspired by too much late night advertising.



Who can't appreciate a good cup of joe?



As a parent of three anything that makes meals
more interesting ...



And last, I'm really not looking forward to winter.

Expanding Scope of Design Patent Protection

As noted on a recent Ordinary Observer post (here – by Michael Mathaisel), Apple recently made headlines over a patent infringement loss and the near simultaneous grant of a design patent covering, arguably, the same technology.

The design patent that just issued to Apple, D624,932 was an eye opener from my perspective. I had some experience with design patents being issued on icons within a user interface. My colleague wrote an article on this very topic (here – by Thomas McGinnis) referencing for example D608,366 directed to the appearance of a display screen.

The use of design patents for static computer icons appears to lead directly to the applicability of design patents to animated icons. (See M.P.E.P. §1504.01(a) Computer-Generated Icons, Sec. IV). The ability to protect the display of animated icons on a computer display screen suggests that any display or animation within a computer screen is also protectable. Apple appears to be an early adopter of such an approach, filing design patents at a brisk pace. (Some recently issued Apple Design Patents may be found here).

I recently filed a number of design patents on virtualizations of physical designs for display on a smart phone (in conjunction with design applications on the objects themselves). The iPhone, Android, and other smart phone devices have given rise to a plethora of virtualized objects that could be covered by design patent. An interesting article (here), touches upon the use of design patents to protect the virtualization of physical objects, for example in the electronic gaming space. The virtualization of designs in that setting amount to what the authors dub as “design theft” by incorporating known designs – a virtual Ford Mustang into Grand Theft Auto, for example. The authors touch upon filing separate design patent applications to cover both the physical object and the virtualized object as is would be displayed on a computer screen. The approach is described as a “non-traditional” method of hedging bets. The “virtual” design patent helps to deflect an argument that a design patent covering a physical object does not necessarily protect a virtualization of the same object.

Of course every situation is fact specific, but it would appear from a litigation perspective that eliminating a potential argument with the relatively inexpensive filing of a design application directed to the virtual design would have significant value. In addition, I expect there to be increasing numbers of design application filed on “changeable computer generated icons,” as smart phones adoption and adoption of similar devices increases. Further, with industry participants like Apple leading the way, I expect to see the boundaries defined by the “changeable computer icon” to be expanded into the virtualization and animation of almost any display shown on any computer system.

New Designs of the Week

Now on the National Register of Historic Places, the ubiquitous Welcome to Fabulous Las Vegas sign was never copyrighted by its creator, Betty Willis, and has been reproduced on everything from keychains to Nevada license plates to...slot machines (or whatever this is supposed to be)!

Hay, hay, get out of the way!

Time to make a connection.

I'm thinking this would be perfect for camping.

Who stole my cupcake!

Strange, but still cool.

Fun for all ages.

Mirror Worlds, LLC v. Apple, Inc. and Apple’s New Cover Flow Design Patent

What happens when a utility patent holder wins an infringement suit against a defendant who has been awarded a design patent covering the same technology? This interesting scenario has recently arisen in the case of Mirror Worlds v. Apple.
In March 2008, Apple was hit with the patent infringement suit by Mirror Worlds alleging that Apple’s Cover Flow, Time Machine and Spotlight technologies infringed several utility patents held by Mirror Worlds. The patents in suit are directed to a document stream operating system and document organizing and display facility. The earliest filing date in the patent family is June 28, 1996. According to the patents, documents are stored by an operating system in a chronological sequence with respect to other documents, based on the time that the document was presented to the operating system. The patents also disclose representing the document stream as a receding stack of overlapping document icons. A representative figure from the patents is shown below:

This brings to mind Apple’s old HyperCard application, originally released in 1987, which this author used extensively in the early 1990’s on his trusty Mac IIsi to develop lighting and video control applications for a nightclub at Walt Disney World’s Pleasure Island as well as a media event database for WDW’s 20th anniversary in 1991. HyperCard followed a Rolodex card model for designing applications on the Mac, with each card within a “virtual stack” of cards containing a set of data and some functional code. Apparently, Apple also saw the similarities, and brought these up during trial.

Nevertheless, on October 1 a federal jury in the Eastern District of Texas awarded Mirror Worlds damages of $208.5 million (per patent) for infringing three of Mirror Worlds’ patents.
Entirely by coincidence, on October 5, the United States Patent and Trademark Office granted to Apple design patent D624,932 for an “Animated graphical user interface for a display screen or portion thereof.” Many readers familiar with iTunes and iOS devices (iPhone, iPod Touch) will recognize this as Apple’s Cover Flow feature, where icons representing music albums or other recordings rotate and scroll across the screen as the user browses through them.



Apple is appealing the jury verdict. It remains to be seen what, if any, practical effect this new design patent will have on the outcome of this interesting case, and the implications to Apple’s patent rights in the face of this verdict, if it stands.

Designs of the Week

From the Official Gazette for the week of October 5, 2010: