Posts by: Sofia Åberg | (2) posts

Early certainty and PCT direct – a visit by the EPO

Have you ever dreamt of having a fast grant of a European patent?

This question was in focus at a well-attended breakfast seminar held by Awapatent in cooperation with a group of Examiners from the European Patent Office (EPO).

Under the project “Early Certainty”, the EPO is currently trying to reduce their backlog when it comes to search, examination, and oppositions. The EPO has set a goal stating that searches should be performed within 6 months of filing, examination should be concluded within 12 months from the start of the examination procedure, and oppositions should be concluded within 15 months.

By recruiting new examiners and focusing on their core business, the EPO has already managed to reach the goal when it comes to searches, but for examination and oppositions the goal is still further down the road.

Another interesting project launched by the EPO is PCT direct, which is available for PCT applications claiming priority from a previous application searched by the EPO. In brief, the applicant may, when filing the PCT application, also file informal comments regarding the written opinion of the previous application. These informal comments are then taken into account by the Examiner when preparing the written opinion of the PCT application. This improves the chances of having a positive first written opinion issued for the PCT application which, together with PPH requests, may lead to faster grants outside Europe.

I welcome the EPO’s attempts to speed up the procedure. However, I can also see that the ambitious goals set up for examination puts a pressure on the Examiners to quickly come to a decision, and we may expect that the average number of office actions per case will go down. I have already seen a tendency that the EPO summons to oral proceedings early in the proceedings, such as immediately after the first office action.

Sofia Åberg, European Patent Attorney and member of Awapatent’s EPC specialist team

How do you protect an interactive GUI?

Have you ever considered protecting a GUI? If yes, did you have problems finding the right form of IP protection? I have.

A GUI may be the swishing windows, the dazzling backgrounds, the bouncing menus and the smart finger moves that convinced you to buy your latest smartphone. More generally, it may be described as an interface between you and your computer which allows the two of you to interact. Most of today’s GUIs are not only animated but also interactive – the appearance changes over time depending on what you do, what happens inside the machine and what data it receives from the Internet.

Some countries/regions allow design protection for GUIs. Static parts of the GUI – those you can’t change with your inputs – are usually accepted, and some authorities, including the OHIM, now allow animated icons. In other words, you’re basically limited to registering isolated screenshots of the action. A screenshot captures the “look” but hardly the “feel” of a GUI, and in my opinion, design protection fails to protect the interactive nature of the GUI.

An alternative, or a complement to design registration, is to try to patent the new aspects of a GUI. A patent serves to protect the functionality of the GUI and may hence be used to protect the dynamical behaviour of the GUI. However, this form of protection requires the functionality of the GUI to be novel (which it usually is) and to involve an inventive step (which, to be honest, it usually doesn’t). While a few pioneering GUI functionalities have been successfully patented in the latest years, the need for inventiveness bars the vast majority of them.

So what should you do with your GUI designer’s latest opus – eye-pleasing, user-friendly, intuitive, even fun, but clearly not an invention? If you’d asked me that question a few weeks ago, I am not sure I would have given you a good answer.

I was pleased to hear, recently, that the State Intellectual Property Office of China (SIPO) is taking a step in the right direction. The SIPO is lifting out its prohibition on design protection for GUIs (even static ones) and introduces, as of May 1st, 2014, protection for dynamic GUIs – animated and interactive alike.

GUI views likely to be registerable under the new guidelines; examples from one of our Chinese agents.

GUI views likely to be registerable under the new guidelines; examples from one of our Chinese agents.

In order to apply for a design protection for a dynamic GUI, the revised Chinese guidelines states that “As far as the design of the product containing a graphic user interface [GUI] is concerned, the view of the design of the whole product shall be submitted. Where the GUI is a dynamic image, an Applicant shall submit at least the aforesaid view of the design of the whole product in one state and may submit only the view of the key frame in other states, provided that the views submitted shall be able to unambiguously determine the changing trend of the animation in the dynamic image” (our translation). In other words, the applicant should submit different views of the dynamic parts of the GUI allowing the changes of the GUI to be followed.

In my view, the revised design protection rules in China may fill at least part of the gap between classical design protection and patent protection for GUIs. This opens new opportunities for stakeholders on the Chinese market. It will be interesting to follow the initial development for this new form of protection, and I sincerely hope other markets will follow China’s example in the near future.

Sofia Åberg, European Patent Attorney