China’s first lawsuit for infringement of graphical user interface (GUI) design has been recently concluded by the Beijing IP Court. This case has attracted much public attention, as GUI designs have become protectable in China by so-called design patents only as of 1 May 2014, and despite a large number of GUI design patents being granted since then, their enforceability remained untested until the present case. The judgment issued on 25 December 2017 now results in heated discussion and leaves, in particular, software developers counting on strong GUI design protection very disappointed.
A GUI in its nature is software and a single GUI can usually be implemented across various hardware devices. However, under the existing legal framework in China, which provides that a design patent protects design on a physical product only, the State Intellectual Property Office of China (SIPO) accepts an application for GUI design only in combination with a physical product. Thus, an applicant has to illustrate in an application a physical product, such as a PC, a smartphone or a tablet computer etc., displaying a GUI, which is actually intended to be protected, and to entitle the application as e.g. “computer with a GUI”.
Software companies Beijing Qihu Technology Co., Ltd. (“Qihu”) and Qizhi Software Co., Ltd. held such a design patent entitled as “computer with a GUI” for a GUI of its anti-virus software application. In April 2016, Qihu filed a lawsuit before the Beijing IP Court against its competitor Beijing Jiangmin New Technology Co., Ltd. (“Jiangmin”), claiming that Jiangmin has infringed Qihu’s design patent by offering online download of its own anti-virus software application which contained similar GUI design as protected by the design patent.
The main disputed issues in the case were (i) whether Jiangmin’s online offering of the software constitutes a direct infringement of Qihu’s design patent for a “computer with a GUI” and, if not, (ii) whether Jiangmin’s offering of the software constitutes a contributory infringement of the design patent for contributing to those who downloaded, installed and ran the software on a computer infringing the design patent.
First, the court held that there was no direct infringement. In its decision, the court emphasized two basic elements for defining protection scope of a design patent according to an existing rule – only (i) the identical or similar design as that of the design patent adopted on (ii) the identical or similar type of product as that of the design patent falls into the protection scope of the design patent. The court stated that as, previously, no special rule has been provided for GUI designs, the existing rule shall apply to GUI designs as well. Since the subject-matter of Qihu’s design patent is a computer, and since Jiangmin’s software cannot be considered to be the identical or similar type of product as a computer, one of the afore-mentioned basic elements is missing, and the court thus ruled that Jiangmin’s software does not fall into the protection scope of Qihu’s design patent.
As to the question of contributory infringement, the court again dismissed Qihu’s claim. The court opined that one of the preconditions for contributory infringement is existence of direct infringement by users. However, the court argued that the users only downloaded the software to their computers, but did not manufacture, offer to sell or sell computers, and thus did not commit any infringing act. (It is noted that, unlike patents granted for technical inventions, a design patent in China does not forbid others from using the patented product.) Without a direct infringement by users, the court found no contributory infringement by Jiangmin either.
This very first judgment on GUI design infringement in China may have a significant impact on the software industry. The two-basic-elements rule emphasized by the Beijing IP Court may render many existing GUI design patents virtually unenforceable, since competitors could easily avoid infringing the GUI design patents by offering software separate from a physical product. As is common practice in the IT industry, only a small amount of software applications are actually pre-installed in a computer or a smartphone, and most applications are offered to users individually. Apparently, China’s present GUI design protection regime has flaws, and, in order to ensure an adequate protection for GUI design in the future, legislative adjustment is required.