1. NECESSITY AND MAIN PROCEDURE FOR THE REVISION ON GUIDELINES FOR PATENT EXAMINATION

With the rapid development of electronic information technology, electronic information products such as computers, mobile phones and digital cameras, etc. are widely used. Consequently the design of GUI also develops very quickly, and user experience becomes a very critical factor for the success of a product. As the design of GUI plays more and more important role in the design for mobile terminals and intelligent home appliances, the investments on financial and human resources for the design of GUI are continuously increased by the enterprises in the country in recent year. And the constant improvement on the innovation ability is also observed. Therefore there is a strong demand for enhancing the intellectual property protection for the design of GUI.

However, it is clearly prescribed in the current GUIDELINES FOR PATENT EXAMINATION that “the pattern shown when the product is electrified” is ineligible for patent protection for design, and it is further required that “the pattern of a product shall be permanent and visible, and not flickering or visible only under specific conditions”, thus the design of GUI is excluded from patent protection under the current system, which is unfavorable for encouraging designers to make the innovations.

For the purpose of adapting to the trend of innovation development, encouraging effectively the creativity in the field of GUI design, promoting innovation of electronic information products and improving the competition ability of the enterprises, it is necessary to revise GUIDELINES FOR PATENT EXAMINATION to give patent protection for the product design comprising GUI.

Thus, in March 2013, SIPO started the procedure for the revision on GUIDELINES FOR PATENT EXAMINATION. After investigation and research, the DRAFT AMENDMENT OF GUIDELINES FOR PATENT EXAMINATION (first version) was drafted and circulated for comments within SIPO and from some enterprises. Afterwards, through analysis and study on the feedback comments, the draft has been further improved by SIPO and the present DRAFT AMENDMENT OF GUIDELINES FOR PATENT EXAMINATION (For Public Opinion) and its explanation are therefore come out.

II. Main points of the revisions

I. Revisions to Chapter 3, Part II of Guidelines for Patent Examination

1. Revisions to the provisions about unpatentable design subject matter

According to current Guidelines for Patent Examination, “the pattern shown when the product is electrified, such as the pattern on an electronic watch dial, the pattern on the screen of a mobile phone, software interface, and so on”, is not patent eligible, which excludes the design of a product incorporating GUI from being patentable design subject matter practically.

Revisions to the above-mentioned provisions of current Guidelines for Patent Examination include two aspects, wherein one aspect relates to canceling the previous provisions so as to remove the hurdle that otherwise prohibits the design of a product incorporating a GUI from being protected by a patent right; and the other aspect relates to revising the provisions about unpatentable design subject matter in such a way to stipulate that a pattern shown on a displaying device of a product, which does not involve any human-machine interacting operation or the function of the product, is not patent eligible. Such revisions are made in consideration of the fact that not all patterns shown on a displaying device of a product shall be protected by a patent right for design. For example, such a pattern as an electronic screen wallpaper or a desktop picture which is shown during startup and shutdown of a product but does not involve any human-machine interacting operation or function of the product, and a graphics and text layout or a game interface on a web site which does not involve function of a product, are excluded from being patentable design subject matter. (Section 7.4)

2. Revisions to the requirement of pattern of a product

According to current Guidelines for Patent Examination, it is prescribed that “the pattern of a product shall be permanently fixed and visible, and not flickering or visible only under specific conditions.”

However, technology development has fed more and more industrial popular products which have dynamically transforming patterns on the surfaces thereof. Therefore, the previous provisions do not meet the requirement of the current state of the technology and design and hinders new designs from being protected by patent right; and thus shall be cancelled. (Section 7.2)

3. Incorporation of more provisions concerning the drawings and photographs for a design

The extent of protection of the patent right for design shall be determined by the design of the product as shown in the drawings or photographs.

Drawings or photographs shall be submitted by the applicant for a design application involving GUI, which shall clearly show the design of the product to be claimed. Accordingly, the figures submitted by the applicant shall include a view(s) which show the overall design of the product and the position of the GUI therein. If the involved GUI relates to dynamic patterns, the applicant shall submit at least a view(s) showing the overall design of the product in one state, and a view(s) of key frames in the other state(s). The view(s) showing the overall design of the product in one state together with the view(s) of key frames in the other state(s) shall determine exclusively and uniquely the transforming trend of the dynamic patterns. (Section 4.2)

4. Incorporation of more provisions concerning the brief description of design

According to the provisions of Chinese Patent Law, the brief description of design may be used to interpret the design of the product as shown in the drawings or photographs.

For a design of a product involving GUI, the applicant shall state in the brief description the use of GUI. If necessary, in the case where the view(s) cannot sufficiently show the design to be claimed for example, the applicant shall state in the brief description the position of the GUI in the product, the interaction and different states of the GUI, and the like.

II. Revisions to Chapter 5, Part IV of Guidelines for Patent Examination

1. Incorporation of more provisions concerning the considerations for determining whether a design significantly differs from prior design

A design of an industrial product involves a plurality of aspects. As an example, the design of a mobile phone may involve a variety of modifications and alterations in shape, color and pattern; and the design of a mobile phone may also solely involve the design of GUI. It is observed that a lot of GUI designers usually use conventional designs for many features of a product except the GUI, instead of proposing any new design for these features. In view of this, when determining whether a design involving GUI significantly differs from prior design, the design of GUI has more notable influence on the overall visual effect than the design of other features which merely involves conventional design. (Section 6.1)