A different approach to GUIs 3 min read
Reform for Graphical User Interfaces (GUIs) has been excluded from the most recent package of Australian design amendments. Many applicants fail to account for Australia's approach to GUIs when filing designs, particularly that Australia's approach is more limited compared to other jurisdictions.
There are, however, important steps you can take to increase your chances of protecting GUIs.
- Australia's approach to GUIs is different to other jurisdictions.
- Carefully crafting your design application can increase the odds of the design surviving examination.
- Uncertainty regarding design protection for GUIs is best addressed through legislative reform.
Designers and those responsible for filing design applications.
Australia has a two-step design registration process, consisting of registration and then optional examination/certification – the latter is only required to enforce the design. This means GUIs can typically be registered with only the need to pass a limited formalities check, however passing examination to enforce the design may be difficult.
Some GUIs have been certified, for example Apple Inc's registration for its Garage Band display screen and Shenzhen Royole Technologies Co. Ltd's wearable display screens with GUIs. However, IP Australia has potentially shifted its stance in light of Apple Inc  ADO 6 (the Apple Decision), in which Apple failed to have an adverse examination decision for its 'display screen' overturned. This decision grappled with (amongst other things) whether:
- designs are examined in their 'at rest' state; and
- the images that appeared on the display screen were features of the display screen or manifestations of software in combination with hardware.
With GUIs becoming increasingly prominent and essential features of businesses, other jurisdictions such as the United States and the European Union already provide registered design protection for GUIs, and this issue has been on Australia's radar for some time. In 2015, the Advisory Council on Intellectual Property recommended GUIs be examined in their 'active state', citing widespread support for such change.
Despite more recent calls for GUI reform from interested parties, including the Australian Federation of Intellectual Property Attorneys, the Design Institute of Australia and the American Intellectual Property Association (see here), such reform has been left out of the package of designs amendments currently before Parliament.
Non-physical design protection remains on IP Australia's policy register and interested parties can give feedback at any time.
Whilst legislative reform would be welcome for GUI design registrations in Australia, the following practices are encouraged in view of the Apple Decision:
- specify the product as an electronic device including a GUI/display screen or similar. Do not identify it as a GUI alone (and IP Australia's newly updated Examiner's manual states that 'GUI' product names will be queried); and
- the statement of newness and distinctiveness should state that features of the device's GUI are new and distinctive.