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B>Patents are all the rage
Never say never. I certainly never thought I would be writing an article about patents for The Mac Observer, but here we are. My last article on the subject drew a little bit of attention, and I think it may have caused some confusion over the different kinds of patents that exist. Most likely it was caused by my poor delivery of irony:
"In a stunning technological development, Apple Computer, Inc. has been awarded a patent on the trash icon. You read that correctly… The design patent was filed …and …Apple can now rest safely that others will not duplicate the ‘revolutionaryi ornamental design."
I was trying to be sarcastic. Of course, not much is "stunning" about Apple receiving a design patent on the trashcan. So is Apple some nasty company abusing the system and United States Patent and Trademark Office (USPTO)? No, at least not for merely filing a design patent on an icon (although your opinion may differ depending on your stance on its Digital Rights Management utility patent). Design patents are filed on all kinds of mundane things in every day life: shoes, hats, furniture, silverware, lamps, fonts, etc. It helps prevent people knocking off one anotheris designs.
DISCLAIMER
Before I go any further, I want to emphasize this is a relatively short and general description of some basic patent concepts -- in other words, be prepared to be bored out of your mind -- and as a consequence it may not apply to all circumstances. My aim is not to provide the reader with an exacting treatise or discussion of the incredible intricacies of patent and intellectual property law (the boredom could induce coma), but rather to provide general background information on the topic. IN OTHER WORDS THIS IS NOT LEGAL ADVICE. IiM NOT YOUR LAWYER. IF YOU NEED ONE, YOU SHOULD HIRE AN ATTORNEY TO GET THE REAL SKINNY AS IT APPLIES TO YOU. Or read more about it for yourself.
OK, enough butt covering.
Types of Patents
There are several types of patents, i.e., design, plant, and utility patents. Utility patents, like their name implies, protect things that are useful or functional. Similarly, design patents protect how something looks. Design patents protect the ornamental design, the esthetic elements of a product, but not any underlying functional nature. Utility patents last 20 years while design patents last 14 years. Plant patents are an interesting historical oddity best left to patent lawyers, so weill ignore them.
So if you invented the automobile, you might go about securing a utility patent on a chassis with four wheels, a combustion engine, an axel and how they all work together. Fortunately, even the USPTO recognizes that the automobile has already been invented and is unlikely to issue a patent on the underlying core technology; but, adventurous and skilled patent attorneys could still secure a design patent on your new car design. For example, the sculpture of the sheet metal that comprise the hood, side panels, tail fins or a cool radiator grill are all potentially protected by design patents. With a design patent on your newly designed Ferrari®, others could still make cars that look different, like the Ford Mustang®, but they couldnit make ones that look too similar to your Ferrari design. If you got a utility patent on the functionality of the car (e.g., the chassis, wheels, engine, etc.), then no one could legally make, use, or sell a car using the technology that you disclosed and claimed in your patent application without your permission.
While they are not as broad as utility patents, design patents are becoming more important with regard to User Interfaces (UIs). Although design patents are concerned with ornamental issues in their coverage -- in fact if you seek a design patent devoid of ornamentation you should fail to secure it -- they sometimes intertwine functionality. This is a somewhat grayer area, but it can often happen when functionality follows form, rather than vice versa.
Letis use a concrete example. Apple has obtained a design patent on the transparent cascading dialogue sheets in OS X, as pictured here:
This could mean that Apple has a strong claim against anyone that tries implementing a transparent sheet dropping from a window title bar. In this case, it doesnit matter how you try to implement/program the functionality, the "look" of a sheet from the title bar is the "functionality." Others might be able to design around Appleis patent by making sheets appear out from the bottom, sides or, perhaps even the, middle of the window (unless Apple has already filed or received patents for such variants themselves). (NOTE: Of course, if you really want to design around this or any patent in particular, then you should consult a patent attorney for their opinion as to permissibility; Iim just conjuring an example that may not apply in the real world). Still, to a certain degree, Apple may have blocked others from using such cascading dialogue sheets from the title bar with that patent.
What About Other Options?
So what about copyrights or trademarks? Without getting into too much copyright and trademark law, they cannot protect functional aspects of a "thing." For example, the distinctive sound of a Harley Davidson® motorcycle was not trademarkable because it was a functional by-product of the Harley engine. Apple lost its famous look-n-feel suit against Microsoft partly because they relied on copyrights (although itis not quite that simple). Looking at the cascading dialogue sheet example, a design patent could protect the UI in ways that trademark or copyright couldnit.
Of course you could also get a utility patent on the cascading dialogue by describing how such a window-tethered dialogue box works, and probably have far broader coverage. Hypothetically, if Apple secured a utility patent on window-tethered dialogue boxes, then it might not matter where in the windows the dialogue boxes pop-up from, or how they look (even if windows are opaque or round). With such a hypothetical utility patent, Apple could stop anyone from implementing such dialogue boxes regardless of look.
Which gets us back to the design patent of the trashcan. Of course others can use trashcans in their operating systems. The concept of a trashcan on a computer display is not new. Appleis design patent protects the look of their particular mesh-like wastebasket, which is rather ornate.
It could stop others only if they use a design thatis too similar.
So why use a design patent when a utility patent gives you more coverage? Well there are a bunch of reasons. Utility patents are more complex and costly to obtain. Many times a design patent is enough protection if all you are concerned with is the "look" of a thing. This can be useful for protecting things like your Web siteis look when its content and makeup change daily, but its general ornamental elements stay relatively consistent. A Web site is a good example where you might be able to obtain a design patent and not a utility patent (assuming there is no new functionality in your Web site).
The One That Got Away
One might wonder why Xerox or Apple didnit pursue design patents long ago and protect their user interface look-and-feel. Iill give you the short story (for the full story on this and more about patents, check this book out). Xerox tried and was actually awarded a slew of design patents on computer icons in the late 80is. Not surprisingly one was even for a wastebasket. Ultimately, they were killed off. The gist of why? Xerox didnit claim the icons in any tangible context; they didnit put the icons in a computer display. That meant that any representation of a wastebasket might infringe, even a real world wastebasket. This is a no-no in patent law.
Basically, Xerox didnit know or use the right "magic claim words." In fairness to Xerox, the law was unsettled at the time and no one was sure if software was patentable subject matter and if so, what incantation the patent lawyer should invoke to obtain a valid patent. At the time, most patent attorneys would just say: "we claim the following design" and show a picture of the design without anything else -- it was the norm in the design patent world.
Today if you look at Appleis design patents, you will see it doesnit simply claim a design, but it claims a "view of a user interface for a computer display" and then shows the new design inside the computer display (which is in little broken lines). This linguistic "magic" basically puts the design in a more tangible setting and became accepted practice around 1996. So that could be why Apple didnit try it sooner; the law wasnit clear back then.
Had Xerox gotten it right back then, Apple and Microsoft might not exist--at least not in their current forms. Now Apple knows better. This seems to signal a new trend with software companies protecting look-and-feel and/or UI elements more and more with design patents.
John Kheit is an attorney. Please donit hold that against him. This work does not necessarily reflect the views and/or opinions of The Mac Observer or even John for that matter. No assertions of fact are being made, but rather the reader is simply asked to consider the possibilities.