Many questions have been raised about the patentability of software in the wake of the Alice Corp. decision by the Supreme Court. While the precise scope of the new approach on abstract ideas is being developed and remains in flux, opportunities still exist to protect design elements of programs, user interfaces (UIs), and mobile applications. Notably, design patent protection has no “abstract idea” exception. Thus, design patents can be a powerful vehicle for providing protection at a fraction of the cost of more mainstream utility patents, which cover functionality rather than ornamentation.
Other options do exist to protect UIs, including copyright and trademark, and each has a place in a balanced portfolio. However, given the relatively low cost and quick prosecution cycle of design patent applications, sophisticated protection strategies should incorporate design patents into a complete intellectual property portfolio.
MPEP §1504.01(a) provides guidance as to some of the requirements for protecting computer-generated icons. In particular, the design must be claimed as an icon shown on at least a portion of a computer screen. The computer screen is needed to qualify under the article of manufacture requirement. Sequences or animation of icons shown on a display can also be protected.
Industry players are developing significant positions by filing on and patenting designs for computer iconography, display designs, and animations. Considering that a design patent on an icon could lead to litigation damages based on the entire profit of the manufactured article (as we recently saw happen with the iPhone), even design patents covering a recycle bin icon (D536,002) could yield significant damages.
In another example, Apple has obtained protection on its music icon displayed on the opening screen of the iPhone (D668,263). Any infringer risks the entire profit made on a mobile device incorporating such an icon. Keep in mind that the Supreme Court is currently reviewing the standards for damages in design patent cases.
Another interesting area for design protection is new fonts on websites. In cases where your design team has generated new fonts as part of your site design, the new fonts are protectable with design patents.
Some may argue that the protection enjoyed by a design patent is weaker than that afforded to a utility patent. But for those seeking to protect the user experience or the particular look or distinctive visual elements of a user interface, design patents are a viable, cost-effective option and can complement utility patent filings.