Dilemma and solution – enforcement of GUI patents
Wanhuida Peksung IP Group
Intellectual Property China 12 August 2019
China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.
Graphical user interfaces (GUIs), also known as 'screen displays', are a type of interface that allow users to interact with electronic devices through icons or other visual indicators rather than through a command line. GUIs facilitate friendly interaction between software and users and are becoming increasingly indispensable to the software industry.
The United States, the European Union, Japan and Korea are pioneers in protecting GUIs as IP rights. In 2014 China aligned its practice with this new global trend by acknowledging GUIs as patentable designs in its amended Patent Examination Guidelines. Under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products in China's design patent jurisprudence, GUIs can be patented only in conjunction with the associated hardware product. This practice puts GUI patentees in an awkward position if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.
Qihoo Tech obtained a design patent for a GUI entitled "A desktop with GUI" in China. Qihoo Tech sued Jiangmin Tech, a competitor, for providing antivirus software via the Internet which incorporated a GUI design similar to its patented design. The problem was that Jiangmin Tech had not sold any hardware (ie, a desktop) with the software.
In December 2017 the Beijing IP Court dismissed Qihoo Tech's claim at first instance. The court held that:
when making a finding of design patent infringement, a comparison must be conducted to determine whether the accused infringing product is similar to the patented product; and
since the antivirus software developed by the defendant in the present case was not a product, infringement could not be established.
This case perfectly illustrates the dilemma of GUI patent enforcement in China: GUIs can be patented and protected only in conjunction with hardware. Therefore, a patented GUI cannot be enforced against an infringer that sells only software.
The most feasible solution to this dilemma would arguably be to redefine what constitutes infringing behaviour. It could be claimed that when an internet user downloads and installs the software provided by Jiangmin Tech, Jiangmin Tech – by providing such software – plays a contributory role in the manufacture of the infringing product (ie, the desktop equipped with the software). When the user runs the software on their desktop, the manufacture of 'A desktop with GUI' is completed.
According to Article 21 of Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes Over Infringement of Patent Rights 2016 and Article 119 of the Guidelines of the Beijing High Court for the Establishment of Patent Infringement 2017, the provision of products which were made specifically to exploit a patent constitutes contributory infringing behaviour even though the patent is exploited by others for no commercial purpose. Jiangmin Tech's software was made specifically to exploit Qihoo Tech's patent.
The real difficulty in this case is the determination of the manufacturing behaviour – namely, whether internet users manufacture the desktop installed with the patented GUI. This seems like a question without a clear-cut answer. However, there must be a desktop somewhere which incorporates the patented GUI – either before or after the user downloads the software. Therefore, as long as a desktop incorporating such GUI exists, the manufacture is completed. If the manufacture is not performed by Jiangmin Tech, it must be performed by users. However, due to the lack of commercial purpose, users which manufacture and use a desktop which incorporates the patented GUI are not considered to have performed an infringing act. As Jiangmin Tech provides the software for a commercial purpose, it infringes the patent and will bear liability for contributory infringement.
In addition, it is rational for software suppliers to program, run and test a software product on a hardware display device before its official release. If Jiangmin Tech runs and tests its software, it also manufactures 'A desktop with a GUI'. As to the burden of proof, since Qihoo Tech has no access to the defendant's software development process, according to relevant precedents, the court may shift the burden of proof to the defendant. If Jiangmin Tech fails to explain how it runs the test without using any display device, the court should find that it manufactured the infringing products.
Another approach would require overhauling GUI-related legislation to acknowledge that software is a product in the sense of a design patent or to scrap the rigid prerequisite that infringement can be established only when a product incorporating the patented design falls under the same or a similar category to the patented product.