While the patentability of computer algorithm is a subject of great debate, many entrepreneurs plow on and get utility patent protection for their software inventions. However, many are not aware of another great tool to defend their innovations: design patents.

Many apps that are used every day have iconic user interface (UI) features that customers and users associate with the host app or software.  For example, the Google search bar interface has now defined how users interact with search engines, and it is crucial for SaaS founders to invest time in designing the UI and also protect the graphics elements that make their app unique. 

UI and brand associations can often become an integral part of a company’s image to consumers.  This guide will show you how to protect your user interface with design patents. By filing deign patents, you can claim a patent pending status and attract investors’ attention. This status demonstrates the novelty of the technology and depth of resources of your company. If you are developing an innovative software product, securing a software design patent may be the key to making your SaaS product a success.

Patentability of User Interface Designs

The computer industry has transitioned from its boxy industrialized looks into products with streamlined attractive designs.

Design patents can be used to protect new designs in computer peripherals and equipment. It is possible to protect new, original designs for products relatively cheaply. This prevents a competitor making a product that looks similar to an existing one. 

A patent covering the design of a computer monitor (such the Acer monitors), a smart phone (such as the iphone curved shape), a computer enclosure (such the original Macintosh computer enclosures), or peripherals (such the look and feel of certain scanners and printers) would be an example of a design patent in the computer industry.

The design of the user interface is crucial in the tech industry. It doesn’t matter if you have an amazing idea or a business model. If your product has a poor user interface, users will have trouble using it and may lose interest. This is especially true when you are building SaaS companies.

Clients use the UI to interact with the software and make purchases or sign up for services.

For example, Design Patent D599,372 issued to Google covers its omnipresent homepage design.  The dots in the Google logo indicates that Google disclaims the name from the patent (since Google has a trademark on its name already, and since a competitor would display its own logo rather than the Google logo in the prime spot.

As another example, Apple Inc. makes extensive use of design patents in order to protect its unique industrial designs. Numerous design patents, for example, protect Apple’s iPhone’s look and the iOS user interface.

For example, design patent D604,305 covers the iphone UI with the app icons.  The application includes two front views of two GUIs for a display screen, and the broken line in both views forms no part of the claimed design. The patent application consists of nine drawings described as follows:

FIG. 1 is a first view of a first embodiment of a display panel of a programmed computer system with a graphical user interface;

FIG. 2 is a second view thereof;

FIG. 3 is a third view thereof;

FIG. 4 is a fourth view thereof;

FIG. 5 is a first view of a second embodiment of a display panel of a programmed computer system with a graphical user interface;

FIG. 6 is a second view thereof; and,

FIG. 7 is a third view thereof.

The broken lines in the drawings are included for the purpose of illustrating environmental structure and form no part of the claimed design.

The appearance of the transitional image sequentially transitions between the images shown in FIG. 1-4 and FIG. 5-7. The process or period in which one image transitions to another image forms no part of the claimed design.

Apple was awarded a verdict in excess of one billion dollars by Samsung for violating its design patents. n another example, Nest patented a display screen with an animated graphical user interface.  This is illustrated through nine front views in the sequence for a display screen with an animated graphical user interface:

The patent application consists of nine drawings described as follows:

FIG. 1 is a front view of a first image in the sequence for a display screen with an animated graphical user interface, showing our new design;

FIG. 2 is a front view of a second image thereof;

FIG. 3 is a front view of a third image thereof;

FIG. 4 is a front view of a fourth image thereof;

FIG. 5 is a front view of a fifth image thereof;

FIG. 6 is a front view of a sixth image thereof;

FIG. 7 is a front view of a seventh image thereof;

FIG. 8 is a front view of a eighth image thereof; and,

FIG. 9 is a front view of a ninth image thereof.

The broken line showings of the control unit, display screen, and various features of the graphical user interface are included for the purpose of illustrating environmental structure and portions of the article. The broken lines form no part of the claimed design.

The appearance of the transitional image sequentially transitions between images shown in FIGS. 1 through 9. The process or period in which one image transitions to another image forms no part of the claimed design.

What does a Design Patent protect?

Patents on design protect ornamental features of inventions and can be used to protect Graphical User Interfaces (or GUIs for short). GUIs can contain graphical icons, animations and visual indicators that help users navigate and understand the many features of the SaaS software. 

Design patents protect only the ornamental appearance and not its structural or utilitarian characteristics. A design patent won’t protect a design that is both ornamental and utilitarian (e.g. an ergonomic mouse design that makes it more comfortable to use). Combination inventions, both ornamental and utilitarian, can only be protected with a utility patent.

Design patents are useful protection for a product’s product design if the design was created to create an ornamental appearance to the product. A design patent won’t protect a product’s design if the design was chosen for it because it is more efficient or costs less to make.

The term of a design patent is 15 years after the date of issue.

The 2008 Federal Circuit decision in Egyptian Goddess, Inc., v. Swisa, Inc. changed the criteria for determining if a design patent has been infringed. The new standard requires that one only determine if the accused product will appear “substantially identical” to the patented design, from the perspective of an ordinary observer.

Also, the old test required that the prior art be examined to find the “point of novelty” within the design. Then the judge had to decide if the accused design included this point of novelty. The Egyptian Goddess decision removed the point-of-novelty part of the test. However, the alleged infringer can still introduce prior art to show that an ordinary observer would not consider the accused product substantially the same as the patent design.

What is needed to Apply For A Design Patent?

It is crucial for companies to be able differentiate their products from other competitors in today’s tech market. UX/UI design can help you do this. Next we discuss patentability requirements that you should look at before identifying which designs you consider to be particularly innovative in your software. 

To obtain patent protection for a software design, it must be new, ornamental, and not a copy of an existing design. The design must not be obvious to the public. The patent also cannot be tied to the functionality of the software. If your software design falls under this category, you can file a patent application.

Five requirements are required to make a software design such as a GUI eligible for design patent protection:

  1. Article of manufacture. The design must be affixed on an article such as a screen or a box, among others. Any article that contains a picture, design or other tangible material qualifies. For example, the GUI that is displayed on a mobile device or computer can be protected by a design patent if it is attached to a man-made tangible item (e.g. the mobile device display or computer).
  2. Originality. The GUI should be original and not copied from another person’s work. This applies regardless of the inventor’s knowledge of the facts.
  3. Novelty / Newness. The design application should be new and not known to others before the filing date. The design would not be new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application.
  4. Non-Obviousness. Technology is almost always built upon an earlier innovation. Therefore, other designers with ordinary skills in the art must not see the new GUI as a way to make it stand out from the rest of the world. It is important that the new GUI does not duplicate any existing designs, but instead focuses on something entirely new and original.
  5. Ornamental. As discussed above, ornamentality is key for design patents. A design patent covers only the GUI’s ornamental aspects. It does not protect the GUI’s functionalities. A utility patent would provide protection for its functionality. Any ornamental aspects of the GUI should not be solely linked to its functionality. If a particular design is needed for functionality, it will not satisfy the ornamentality requirement as there would be dependence between them. 

A design patent application is easier to get than a utility patent. The specification is brief and must follow a predefined format. One claim is allowed in a predefined form, for example, “The ornamental design for a display panel of a programmed computer system with a graphical user interface, as shown and described.”

Drawings in a design patent look similar to utility patent drawings, but they are drawn to illustrate the ornamental aspects of the invention and not its utilitarian aspects.

Multiple embodiments can be included in design patent applications. This option allows designers to present different versions of an invention without needing to file separate applications for each. 

There is a risk that the Patent Examiner may find that multiple embodiments constitute multiple inventions and the Examiner could issue a Restriction Requirement Office Action if this happens. This requires the Applicant (or to argue why the restriction was inappropriate) and to choose one of the inventions. The other embodiment is deleted from the application after it has been selected for examination. You can claim the non-elected embodiment by filing a divisional patent application during the pendency for the parent patent application.

The patent process for a GUI patent takes approximately 14 months once it has been submitted at the USPTO. The timeline could be extended if your application is granted an office action. The patent process for GUI design patents takes approximately 14 months from the time it is submitted to USPTO. The timeline could be extended if your application is granted an office action.

The US has a high rate of about 84% for design patent applications. Allowed design applications refer to applications that have been approved by the USPTO and are eligible for a design-patent. The allowance rate (or percent allowed) is calculated by multiplying the number allowed design applications by the number disposed of in the current fiscal.

If the application is approved, the Patent and Trademark Office will send a notice to the applicant’s attorney. An issue fee for a utility patent will also be required in order to issue the patent. The issue fee for a design patent is about one-third the amount of the fee for a utility license. A design patent can be kept in force without paying maintenance fees.

Software utility and design patents

We previously detailed the relationships between utility patents and design patents. Utility software patent applications need to go through a more complex analysis to see if the invention claimed is not “abstract” and solves a problem that is “necessarily rooted in computer technology. However, it must solve the problem in an unconventional way, and the claims must not preempt every possible application of the idea. Design patent applications do not face such scrutiny and thus more likely to be granted.

The first step in obtaining a software utility patent is to prepare and file a patent application. As shown above, software design patents require high quality illustrations of the design, but the application itself is quite high-quality.

In contrast, software utility patents are similar to regular patents in form and require the same information and criteria. Software patent applications must include good flowcharts showing each step in the process. In addition to the flowchart, the application must provide a detailed description of the code itself, as well as the software’s interaction with machine hardware if applicable.

To receive a software patent, an abstract idea must have certain characteristics. For example, if the software solves a problem that is “necessarily rooted in computer technology,” it may qualify for patent protection.

However, it must solve that problem in a novel manner or contain claims that do not preempt every application of the idea. We recommend providing detailed description on how the claimed invention is practical, such as making the computer faster, or providing superior results over conventional solutions.

The USPTO will assign a Patent Examiner to review and analyze the application to determine whether the claimed invention is patentable. Once the examiner has reviewed the application, he will issue a report on its patentability. He may issue rejections or legal objections as well. These rejections are called an “Office Action.” This document will inform the applicant of any modifications that need to be made to the patent application.

Before pursuing the patent process, it’s important to conduct a patent search of similar programs. Patent searches can help determine whether the software you want to protect is unique, and whether the process will be worthwhile. Obviously, if software is already in use and there are numerous patents on the same topic, you are unlikely to receive a broad level of protection.

Furthermore, the patent process can be costly and time-consuming. For this reason, it is critical to seek the advice of a registered patent practitioner when developing software. Next we talk about the interplay between copyrights, trademarks and design patents.  Please note that it is not an either/or relationship, but you can use a belt-and-suspender approach to give you the best protection.

Copyrights and design patents

Both copyrights and design patents cover the aesthetic aspects of articles. Non-utilitarian articles are those articles that exist solely for their appearance and not their utility. Copyright is used for these articles. Paintings, books, and sculptures are examples of non-utilitarian items that copyright covers.

 Copyright is available for utilitarian articles but only in the limited sense that the article’s aesthetic elements can exist independently of the article. This could be an example: a sculpture used as a base for a lamp or a painting that is applied to the sides of an automobile.

Design patents can be used to protect novel ornamental features in utilitarian objects. A design patent is able to protect ornamental features that cannot be separated from the utilitarian item. Copyright protection is not possible. A design patent could, for example, protect the appearance of a computer CPU box, which is not protected under copyright law. 

However, a utility patent is only valid if the “aesthetic” nature a feature has is actually dictated by utilitarian motives. For example, the sleekness of parts for automobiles that reduce wind resistance, then such features can be protected. Even though the feature may serve a utilitarian purpose it cannot be dictated by utilitarian concerns.

Designs patents and trademarks

A product’s shape or container may be used as a source indicator and can therefore be protected as a trademark. A design patent may protect the same product shape. Dual protection may be possible under both trademark and design laws. The “protection” granted under each law is different. 

Design patents prevent third parties from selling, making, or using products of protected designs. Infringement of a design patent requires that the infringing container must be identical to the one shown in the design patent. It doesn’t matter what’s inside the container. The trademark law requires that the container infringing must cause confusion, mistake or deception among the public. This will require that the container actually sold be taken into consideration. Courts analyzing trademark infringement actions would also consider the buying habits and sales methods of each manufacturer.