An MD&DI September 1998 Column
Supporters of patenting software user interfaces claim that the practice sparks creativity and contributes to the overall progress of the technology.
Patents are a testament to a company's technical prowess and artfulness, and the inventors named in a patent are typically proud of their achievements. In fact, many device manufacturers showcase their patents in a hallway or lobby display as one would an Academy Award. Patents also have a practical purpose, of course, placing proprietary technology and design solutions out of the competition's reach for many years or allowing for their use while generating substantial licensing fees for the patent holders.
Even those individuals who don't like the idea behind patents understand that they make perfect business sense. "I'm not a supporter of the ownership of ideas and the design solutions that emanate from them," says Christopher Goodrich, senior industrial designer at Datex-Ohmeda (Madison, WI), who nonetheless has experience with three software user interface patent applications for his company. "From the beginning of humankind, there's been an accumulation of knowledge, and to lay ownership of knowledge and its by-products doesn't seem right. However, companies gain a market advantage by owning the design solutions of their employees. It's an economic benefit for them."
This database arranges images according to the reading radiologist's preferences. Photo courtesy of DR Systems (San Diego).
Because patents are symbolically and financially quite valuable, many companies try to patent everything they can. Patent opportunities include various aspects of the software user interface, ranging from the software's general interaction style (often called its look and feel) to specific graphic elements such as icons.
Consumer software and product developers such as Microsoft Corp., Apple Computer, and Motorola have led the movement to patent the user interfaces, having been granted numerous patents with predictably jargon-filled titles, such as "task bar with start menu," "intuitive gesture-based graphical user interface," and "graphical user interface with icons having expandable descriptors." By comparison, medical companies that are accustomed to filing patents on hardware components (e.g., a new kind of pump or valve) have not taken full advantage of patent opportunities in the software domain. But the pattern appears to be changing. Joseph Rolla, a director at the U.S. Patent and Trademark Office (PTO), notes that "although the PTO has issued software-related patents for three decades, medical companies have become quite aggressive about pursuing patent protection for software user interfaces in only the past few years, particularly in the area of imaging."
Goodrich agrees that there has been a recent surge in medical-related software user interface patent applications. Having dealt with user interfaces for approximately 12 years, he's only recently been involved in their patenting. "It's a function of the medical product software as it matures in the marketplace," he explains, "and the usability of the user interface. As the number of companies entering the software arena increases, the products become quite similar. If there's one important aspect that distinguishes a product from another, and it's possible to protect that aspect, a patent can keep competitors from using it."
FORM VERSUS FUNCTION
Two types of patents pertain to software user interfaces. In essence, one type covers the form or appearance of a design and the other covers its functional features. Product developers may elect to apply for one or both types of patents to fully protect a particular user interface solution.
A design patent covers novel and non-obvious aspects of the user interface that can be considered graphical and ornamental in nature. Although the government uses the term ornamental to characterize visual design elements, there is actually no requirement that the design be attractive. However, there is a tacit assumption that design elements reflect a measure of artistic skill. Design patents typically cover user interface elements such as icons, type fonts, or the overall appearance of a particular screen. The patent protects the holder against other persons or companies creating a design that bears such close resemblance to the patented one that a user may think that he or she is acquiring the original. Protection lasts 14 years from the date the patent is issued.
A utility patent covers the functional or useful aspects of the user interface, such as the overall organization and selection of menu options that comprise a process. This type of patent includes one or more claims that form the basis of protection against infringements. The patent holder's application is strengthened by claims that are as broad in scope as possible, as long as the claims are valid and do not infringe on those in other patents. A patent application can include up to 20 claims, although there are mechanisms to submit an even greater number.
As with a design patent, the utility aspects of the user interface must be original and nonobvious. Additionally, they must serve a useful and constructive purpose. Utility patents provide 20 years of protection, starting from the full patent application filing date. Because the PTO can take up to three years to grant a patent, the actual period of protection can be reduced to as little as 17 years.
According to Rolla, it is not difficult to establish the novelty of a particular user interface because most designs represent a unique combination of elements. However, one has to be alert to the existence of "prior art." For example, a company may develop a new medical device that employs a special pointing device, such as an isokinetic joystick, and seek patent protection because it is not found on any other medical device. However, if such a joystick was already in use in laptop computers, its existence would rule out a patent because the invention was not novel. A thorough review of related patents, Internet literature, existing software, textbooks, and published style guides for software user interfaces is the best means to ensure that a user interface is truly novel.
Nonobviousness is a more ambiguous matter that may present a greater hurdle to those seeking patent protection. To illustrate the concept of nonobviousness, Rolla gives a hypothetical example of a pivoting handle on a suitcase serving as inspiration for a pivoting handle on a briefcase. A patent application for such a briefcase handle would likely be rejected because it represents an obvious extension of the suitcase handle concept, albeit different in some respects.
Copyright protection automatically extends to written aspects of the user interface design, such as the text contained in an on-line help application or tutorial. Copyrights also cover the software code underlying a user interface, as it too is textual. The exception is software code that isn't part of the originality one is hoping to protect but that is crucial to the basic functioning of the program. Copyrights on the text portions of a user interface design remain in effect for the extent of the author's lifetime plus 50 yearsor 75 years if the work is owned by the author's employer.
A patent search helps establish a patent's scope (i.e., the extent to which one can make valid claims). Patent search specialists or members of a company's legal department can help identify and obtain copies of closely related patents. The related patents must be scrutinized to ensure that the new patent application will not infringe upon existing patents and to sort out which aspects of the new user interface are truly novel. This task should be relegated to the user interface developers most familiar with the design in question, as they are most qualified to evaluate the impact of claims made in related patents. Patent search consultants and attorneys can also facilitate the process.
"Sometimes the decision is clear-cut," says Goodrich. "For example, if your design is clearly in conflict with an existing patent, you stop. Other times, it may be fairly obvious that a slight change to your user interface will eliminate a conflict. But it's not always black-and-white." Applicants should be aware that if even one claim presents a problem, the entire product will infringe on the existing patent.
Can it be rewarding for an individual to create a potentially patentable idea for his or her company? Goodrich believes that most companies offer some type of incentive program to their employeessome giving incremental cash awards for a patent filing and issuance, or a lump sum, or a percentage of the product's sales.
THE PATENT APPLICATION
The application process can take between one and three years. Inventors or companies can get a head start on utility patents by filing a provisional application before the necessary work is completed for a full application. The major components of a provisional application are:
- A written description of the invention.
- Any applicable drawings and associated descriptions.
- The name(s) of the inventor(s).
A provisional application expires after 12 months and does not itself lead to a patent review. Rather, it is a place holder for the full application, getting the application into the PTO's substantial queue before it is completed, thus cutting the overall waiting period. Currently, it takes an average of 14 months for a patent application to receive its initial action. Thus, submission of a provisional application could potentially reduce the waiting time for a full application review to as little as two months.
The delay in action is understandable when one considers that the PTO's staff of approximately 2600 receives upwards of 240,000 patent applications a year, and it takes an experienced examiner an average of three full working days to properly assess and render judgment on a single application. This means that if no one got sick, took a vacation, or observed traditional government and seasonal holidays and everyone was able to crank out an application every three days, there would still be a backlog of applications.
A provisional application for a utility patent allows the term "patent pending" to be used in conjunction with a given invention. This status can give the patent holder a competitive advantage by discouraging competitors from producing similar designs. The exclusion of design patents from this benefit makes sense, considering that final appearanceas opposed to a fundamental process that may be subject to refinementis the foundation of design patent applications.
Selected documents relating to U.S. Pat. 5,452,416, filed by Dominator Radiology (San Diego).
A full or nonprovisional application includes a list of claimsthe heart of the patent that may be the basis for infringement litigation. Goodrich defines a claim as a specific declaration regarding what is special about the item in question"the meat of the product." Details of the unique features must be given in writing, which can be supplemented with line drawings or other illustrations. Since the claims tend to be the most difficult part of the application to prepare, Goodrich advises that any potentially patentable design be documented from the beginning of the product development process.
For example, in U.S. Pat. 5,452,416 filed by Dominator Radiology (DR Systems; San Diego) in December 1992 and granted in September 1995, the company compiled 16 claims associated with the "organization, presentation, and manipulation of images" for the interface design of an MRI system. To illustrate the scope and tone of a claim, the text for claim 13 is presented below:
The computer display system of claim 1, wherein the respective fields of each diagnosing physician identifier specify:
a mode of image series presentation;
a rectangular array format; and
rectangular array dimensions; and
the application means includes respective means for:
presenting an image series in a mode specified by a diagnosing physician identifer;
presenting rectangular arrays in the first and second display containers in a format specified by the diagnosing physician identifier; and
presenting the rectangular arrays in dimensions specified by the diagnosing physician identifier.
A number of patents can be viewed on a variety of Web sites.
Some patent application fees differ based on whether the patent entitythe inventor or the company that owns the inventionis classified as small or large (less than or more than 500 employees, respectively). Applicants must complete the appropriate form for small investor status, or the application will be treated as being from a large entity.
The basic filing fee for a full application is $790, but additional PTO charges for services such as late filing or deadline extension fees can raise the application costs to more than $2000. A seven-page document of such fees can be accessed on the Internet. However, the true cost of acquiring patent protection, including the patent search and attorney fees, can be $10,000 or more. If the PTO rejects an initial application and the inventor or company chooses to resubmit the application with modified claims or with arguments against the cause of the initial rejection, the costs again escalate. It is rare for applications to go through more than two review cycles before a final acceptance or rejection is issued. However, if a patent receives a final rejection, one can appeal the PTO's decision in civil court and all the way to the Supreme Court, if necessary. According to Rolla, approximately 70% of all patent applications are eventually allowed. Maintenance fees for granted patents are due in the 3rd, 7th, and 11th years after the original grant. Failure to pay these fees can result in late fees or the expiration of the patent, with an attendant loss of protection. The maintenance fees, subject to change, are $1050, $2100, and $3160 for large entities; small entities owe half these amounts.
AVOID COMMON MISTAKES
The most damaging mistake for a company seeking a patent is to start the application process too late. Patent applications must be filed within one year of the date on which an invention was disclosed to the public, or the opportunity is lost. This initial disclosure date may be much earlier than the first day of commercial availability if, for example, the product was used in trade show presentations or clinical trials.
Another potential problem is claims that are too broad. Claim writing is an art form, with the goal being to write the broadest possible claimin order to gain the greatest level of protection by making duplication difficultwithout overstepping the bounds of what can be considered novel and nonobvious. Accordingly, inventors or companies with sufficient time and resources can follow the tactic of submitting an initial, complete application with extremely broad claims, hoping that it will be approved. If the application is rejected because the claims are too broad, they can be modified or eliminated from the particular areas in question and the application resubmitted at a later time.
As stated previously, the PTO's Web site provides useful information about the patent process and associated costs. It also offers individualized assistance via its Patent Assistance Center, which is set up to help inventors and companies prepare effective patent applications and can provide contacts to patent examiners with relevant experience and responsibilities. However, the PTO is not in the position to provide legal advice.
PHILOSOPHICAL AND STRATEGIC ISSUES
Certainly, patenting a software user interface requires considerable work, time, and money. The decision to file for a patent may largely be a matter of personal or corporate philosophy or strategy. Proponents of patents view them as just rewards for the work and creativity that go into creating a new product. The bottom line is also important: securing a patent can translate into money. Supporters also believe that software patents fuel progress, forcing the competition to be more creative by coming up with yet another original idea rather than just copying prior work.
Opponents of patent protection for software user interfaces argue that patents have the potential to hinder product usability because they force others to use less efficient or effective software design solutions, to the detriment of end-users. Specifically, end-users would benefit more from software user interface consistency than from variety, which can make learning more difficult. Opponents also champion a view of the software community as mutually supportive, sharing the common goal of pushing the science of user interface design forward. In their view, patents represent an impediment to progress.
Medical device developers may find themselves agreeing with one side or the other on the desirability of software user interface patents, based on their position in the marketplace and the type of product they produce. But, regardless of a company's philosophy, it should consider a patent's relative value in relation to several mitigating factors, including:
- The likelihood that competitors would copy the design. Many companies value designing a product with a unique look and feel, akin to having their own corporate logo.
- The possible advantage of having a design mimicked, which might actually enhance a company's reputation as a design leader and increase market acceptance for a specific kind of user interface interaction scheme. If the original had no value, who would adopt it?
- The knowledge that the next generation of user interfaces was already being developed, which would leave mimics with an old-generation user interface in the near future.
Years ago, medical devices were a collection of hardware components that were stamped with a patent number. Now hospitals, clinics, doctors' offices, and even homes are inundated with medical devices that have a software user interface. The number of patent applications from device manufacturers for software user interfaces is likely to continue to increase because of the unique needs of the medical industry.
As Goodrich states, the clean environment of an operating room is not a practical place for a keyboard. "Our user interfaces must be created for items that are durable, portable, and that can be sterilized." The specific requirements of the health-care setting provide an advantage for medical-related user interface software designers relative to the big computer companies that tend to cater more to the general public. However, one can't be too cautious.
Accordingly, medical device companies need to take stock of their patent opportunities, if only to maintain their right to introduce new designs while lowering their risk of infringing on recent claims by other parties.
Michael E. Wiklund is a usability engineering consultant with the American Institutes for Research (Concord, MA).