As more and more computer-based products and services become available to global markets, intellectual property (IP) protection of user interfaces (UIs) appears likely to become more challenging. IP protection for UIs was once a hot topic in the CHI community and a CHI 1989 plenary panel debated the topic. Professor Pamela Samuelson, chair of that panel and now a teacher of IP protection at the University of California at Berkeley, tutored and lectured at CHI conferences. Lately, however, the topic appears to have dropped from the attention of designers just as the Internet has made it easier to copy others' IP and as the legal and business development departments of corporations have taken over most of the activities of IP protection, maintenance, litigation, and bartering of patents via cross-licensing. I reviewed approximately 5,500 pages of conference proceedings from ACM SIGCHI's CHI 2001 and 2003, Human-Computer Interaction International's HCII-2001, ACM Special Interest Group on Graphics and Interaction's SIGGRAPH-2001, and Interact 2001. Almost no papers, tutorials, or panels on the subject of IP protection appeared in any these proceedings. Nevertheless, attention to IP protection remains crucial to businesses and designers wishing to protect their efforts. Just look at the music industry.
Intellectual property protection of UIs in the United States consists primarily of patent and copyright protection. Patent protection consists of function patents and design patents. Function patents concern the protection of utilitarian ideas only, and design patents protect not only a functional invention but certain appearance characteristics (primarily visual) that are inherent to the artifact's novel invention. Copyright refers to protection of the actual textual, graphical and visual, and sonic attributes or expression of the words, images, and music of artifacts. Although registered design patents exist and are available on the Web from the U.S. Patent and Trademarks Office (USPTO), examples of rights being exercised and legal actions or court precedents under those design patents are more difficult to find.
As a part of improving its own patent examination and award processes, the Japan Patent Office (JPO), Tokyo, Japan, through the Institute of Intellectual Property (IIP), Washington, DC, contracted with my firm to survey current UI designers, mostly in the United States, about UI design patent protection. The survey sought to include a variety of orientations to vertical markets, user communities, platforms, technologies, and sizes of design groups. Questionnaires were sent to approximately 55 recipients. Below are summaries of the nine replies.
In the following questions, "image designs indicated on a display screen" include user-interface components such as status displays and controls. Others might refer to these items as composite examples of metaphors, mental models, navigation, interaction, and appearance. Excluded are specific typefaces (font design protection was not being considered) or particular pieces of content such as a game or a movie.
Selected questions follow, along with summary comments. The full replies appear as a white paper online at www.AMandA.com under Resources.
The respondents varied in backgrounds and current employment, from academia to industry, from small firms to large firms.
- Michael Arent, Manager, Web Customer Experience, Adobe Systems, Inc.
- Nuray Aykin, Senior Consultant, User Interface Design Center, Siemens Corporate Research, Inc.
- Prof. Ron Baecker, Professor of Computer Science and Director of the Knowledge Media Design Institute, University of Toronto (at the time of the survey, also President, Expresto Software, Inc.)
- Tony Brown, Ph.D., Founder and Director of Usability Engineering, SoftPlex, Inc.
- Hugh Dubberly, Principal, Dubberly Design Office
- Jim Faris, Principal Designer, Design Hat
- Austin Henderson, Director, Systems Laboratory, Pitney Bowes, Inc. (at the time of the survey: President, Rivendel Consulting and Design, Inc.)
- Paolo Malabuyo, User-Interface Lead, Xbox Group, Microsoft Corporation
- Anonymous Respondent, Usability Research or U.S. Corporation
Question 1: Screen Examples
Please state concrete, current, or recent examples of image designs indicated on the display screen on which you have worked or about which you know significant details of development.
The respondents provided a wide range of examples. Some respondents felt that emphasizing images alone seemed a limited, or "weak," approach to capturing the creative input of designers. This factor seems to be an inherent weakness of design-patent philosophy: Visual form and associated behavior is understandably emphasized, but the nature of the behavior, as well as other perceptual and conceptual attributes, are sometimes not well captured in individual images, text descriptions, and even patent documentation. Specifically, the user-interface components that may be used as essential conceptual constructs to describe user interfaces (metaphors, mental models, navigation, interaction, and appearance) seem to be underserved by the current orientation of design-patent terminology.
Question 2: Who Creates the Designs?
Who creates image designs indicated on the display design: designers exclusively belonging to your company and/or your engineers, or do you outsource the design process?
The respondents who replied were split almost evenly between in-house staff and outsiders. Naturally, in-house staff as well as outsiders must be covered by appropriate employment contracts, which usually stipulate that designs become the property of the employer. In many cases, corporations give some acknowledgment or even grant outsiders co-inventor status in patent applications (as noted by Arent), but they are often excluded from any specific financial remuneration.
Question 3: Planning for Protecting Images
Do you plan for protection of image designs indicated on the display screen?
Most respondents who are members of small design or consultancy service firms remain outside the intellectual property protection task or phase, which is usually handled by their corporate clients. One respondent (Faris) refers to assisting the client in the application process. In fact, some corporate clients attempt to bind small design or consultancy firms to obligations to provide necessary documents for or spend time preparing intellectual property protection applications (notably for utility patents or design patents), although no respondent specifically refers to this matter. Respondents who are members of corporate firms stated that their corporate firms took appropriate action, presumably business and legal departments, although this was not specifically stated.
No respondent referred to being asked to participate in patent searches as part of the design process. Although it cannot be strictly logically inferred, it seems likely (as is the case for my own firm) that designers are not asked to do such searches and are not paid to do such searches or to cause them to be done. It may be the case that the outside designers may have been subjected to liability clauses in their contracts even though the client does not support the budget to determine if some infringement might be likely. Instead, designers are often assumed to be developing new, innovative material not infringing on others. In my experience, some corporate contracts try to include outside contractors in legal liability as "partners" should something go wrong, but deny them the financial benefits should the product or service be successful (that is, no royalties, reuse benefits, or other success-based remuneration is established).
Also, no outside firm mentions being included in a royalty payment agreement related to ownership of the designs, and hence increased liability and likelihood of desire for intellectual property protection by the outside design firm.
Question 4: Have Your Images Been Imitated?
Are there any cases that you are aware of in which your image designs indicated on the display screen were imitated?
Almost half the respondents have experienced some form of copying. Only one of these cases seems to have reached legal or financial settlement (in Faris's example, out of court). It appears likely that some in-house designers, most external designers, or designers who have moved on from their earlier positions, might not be aware of the actual legal history of their designs, unless they become unusually newsworthy.
Question 5: Designs Protected Under Design Patent?
Do you think that image designs indicated on the display screen are properly protected under design patent?
Many respondents seem to have little or no detailed understanding of design patent protection or the process of applying for and maintaining protection. Some designers feel that such protection may be difficult or counterproductive to industry development or to the benefit of users. A few appear to favor some protection but are not sure how best to accomplish this protection.
Dubberly's comments are noteworthy: "I'm not familiar enough with design patents to speak about the extent or appropriateness of their protection. I will say that I'm not entirely comfortable with allowing patents for [user] interface design. I'm not convinced that within the framework of a limited system such as a windowing environment or a Web page that much real innovation takes place. Even if it did, limiting use seems to hurt the society as a whole. For example, the notion that Amazon 'owns' one-button checkout is absurd. Society is harmed by restricting that system to Amazon. Conversely, Amazon has no claim to right by virtue of special development effort. Clearly, Amazon did not expend large amounts of time or money to come up with the idea. Not patenting it would not reduce the efforts of others. What's more, granting patents has not resulted in a flurry of research. The result has simply been richer lawyers."
If any extrapolation could be made to the design community, most designers have become ignorant or uncaring of the process because it seems to be in others' hands, over which they have little control. Alternatively, it seems that some education of designers might be desirable from the perspective of a patent office and that some vigorous debate about the merits of protection, some view of the historical record in the industry, and some attempt to describe likely short-term future implications of the current status of protection might be desirable, useful, and valuable. However, promoting this awareness would require specific actions by a patent office or interested parties (such as legal organizations or SIGCHI).
Question 6: Evaluating Your Protection
How do you evaluate the present legal protection for the image designs indicated on the display screen, especially the protection under design patent?
Most respondents expressed insufficient knowledge of the topic to be able to respond usefully. Some refer or would refer the matter to legal associates or in-house legal departments. Some expressed concern, cynicism, or doubt about the merits of the current process.
If one can extrapolate to the design profession, there seems to be a feeling of inadequate access to facts; insufficient understanding of the process and issues, from a designer's perspective; and suspicion or cynicism about the quality of patent awards in the past, about the use of their design contributions, and possibly about their ability to affect the current process. Considering actions that can lead to improvements in the laws is at least as important as evangelism for the involvement of more designers and probably should precede such calls to action.
Question 7: What Aspect Should Be Protected?
In your opinion, what is the subject to be protected for ensuring protection of an image design indicated on the display screen: the image design itself, the image design as a "pattern" of an object or artifact, the software representing the means displaying the image design, that is, the software that implements the UI, etc.?
The respondents are divided in their opinions. Some feel that the image is the protectable artifact; others believe that software, processes, and even terminology need to or should be protected. Because many firms now trademark parts of their products or services and even processes, all IP techniques should be considered. Extrapolating from this limited survey, probably there is a need for some kind of a glossary of terminology, with visual, dynamic, interactive, and acoustic or haptic examples to assist designers (and most certainly lawyers, judges, and patent examiners) in order to make further discussion possible. It seems likely that many designers have widely varying or only roughly determined interpretations of primary concepts and attributes. If such debates occur among patent examiners and legal teams and in the courtroom (I know about the last two from having served as an expert witness on several occasions), it seems even more likely that the design community needs some clear definitions, paradigms, and examples to point to in order to manage debate among themselves and with legal/governmental representatives about what, from the designer's perspective, should be protected and how.
Question 8: Future of Image Designs
How will image designs indicated on the display screen change in the future? That is, what is the trend or direction of change?
Understandably, all of the respondents are unusually informed, articulate, and forceful in their predictions about the future of user-interface designs. These predictions differ radically in how designs will, for instance, change according to appropriate context; exhibit animated, multimedia, three-dimensional, and acoustic attributes; or show few or no traditional screen attributes but instead rely on voice or physical device manipulation.
Most of these suggestions point to the increasing limitations of current design patent applications documents; the artwork accompanying them; textual descriptions; search criteria available to examiners, lawyers, designers, and the general public; and subjects of protection. I believe that many of the drawings are inadequate and inconsistent across patent documents; the titles, classifications, and terminology are inconsistent, confusing, and in some cases inappropriate, bordering on chaotic and dysfunctional; and the concepts of the design patent are rooted, understandably, in a previous age that knew nothing about software, electronics, ubiquitous computing, or distribution and publishing systems that are two-way webs, not tree structures that emanate from controlled centers of one-way communication.
The responses to this question alone seem to merit further attention to the future state of design-patent protection. The essential issue is what could be protected (as opposed to what should be protected).
Question 9: Will Protection Be Necessary?
Do you think it will be necessary to protect image designs indicated on the display screen in the future?
Some respondents seem, almost nostalgically, to feel the importance of protecting something, although many admit the difficulty in determining a fair and efficient process that is not made ludicrous by the pace of technology change. A few (such as Dubberly and Henderson) take the opposite viewpoint, that protection does not assist the end user and is impractical, as already demonstrable in the commercial marketplace, except for powerful corporate or monopoly-like interests.
Question 10: How Should They Be Protected?
Assuming you think it will be necessary to protect them, how should image designs indicated on the display screen should be protected in the future?
Again, the respondents who feel comfortable responding are articulate and forceful. Either some version of current protection, including design patents, seem appropriate, or the entire process seems inadequate or inappropriate, from either the designer's or the end-user's perspective. Clearly, the respondents have strongly divergent views. This seems likely to reflect the differing opinions to be found in the design community.
The survey attempts to explore the opinions of the design community about the value of one IP protection technique, user-interface design patents, by examining the opinions of several representative professionals. The results of this survey, geared specifically at designers in the United States, point to the need for informing the design community further about IP protection in general and debating again carefully some key issues that were discussed a decade ago, when desktop WIMP (windows, icons, mouse, pointer) UIs ruled, and Web and mobile devices were in their respective infancies. The survey, in its limited time and scope, uncovered useful grounds for further study, discussion, and action. In particular, based on the survey, the UI-design community needs to accomplish the following in the short term:
- Arrange for a seminar, tutorial, or panel about intellectual property protection again, especially about design-patent protection, at an appropriate designers-oriented venue. Speakers should represent the patent office, attorneys, and several realms of the design community.
- Convene a one-day conference workshop or focus group that would explore these survey questions in greater detail. The workshop could be similar to the workshops held every year in conjunction with the CHI conferences. One goal would be to encourage greater preparation by participants and to provide a much longer time to discuss each item.
- Prepare for the design community an updated white paper about intellectual property protection, especially design patents. The white paper should include a glossary, visual examples, discussion about current issues, bibliography, and URL resources. The document should be visually attractive so that it appeals to and successfully communicates to visually oriented designers. This aspect is not a trivial matter; appearance counts to serious visual designers.
- Research and publish a document about the future of user-interface design and its potential impact on intellectual property protection, especially design-patent protection. This document would benefit from the detailed knowledge of the design community and expose issues that the patent office community ought to consider in planning for the short- and long-term changes in the intellectual property protection process, especially for design patents.
I hope this survey stimulates further discussion about who, or what, should own the UI and who should benefit from successful solutions for complex UI design challenges.
Aaron Marcus and Associates, Inc.
Thanks to Mr. Hirokazu Kobayashi, deputy director of the JPO, for allowing me to publish information from the survey on current UI designers. Also, my appreciation to the respondents who granted me permission to use their names and statements in this article.
©2003 ACM 1072-5220/03/0700 $5.00
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