Your Design Is Infringing On My Patent: The Case Against User Interface and Interaction Model Patents and Intellectual Property

By Paul J. Sherman

Published: July 10, 2007

“The current US patent system—in combination with the litigious nature of many high-tech companies—make it likely that, somewhere down the road, something you design might incur the wrath of a patent troll.”

Imagine, if you will, that you’re working for a small Web-application startup. For the sake of argument, let’s say the company wants to build a Web-based application to help product marketers and brand managers—the primary user group—manage and maintain the digital assets for their company’s products and services.

Further assume the application would also allow users to publish updated digital collateral to the distribution channel—that is, resellers such as retail stores and ecommerce sites who sell a company’s products.

The startup has asked you to create a user interface for this Web application, and you’ve struggled for weeks to come up with an elegant, efficient way for users to quickly and efficiently upload, manage, and publish a wide variety of digital collateral, including product box shots, spec sheets, warranties, coupons, rebates, and so on.

Once you’ve carried out your contextual inquiries, identified the customers’ terminology, and done some participatory design sessions, you design the interaction models and create workflows and some medium-fidelity wireframes. Of course, you do some formative testing with a lo-fi prototype and find that your design does well. Really well, in fact.

You’re elated. Just a couple of optimizations to the workflows and some terminology tweaks, and you’re ready to apply a visual design. You hand off your detailed wireframes and functional specification to the visual designers and development group, feeling satisfied that you’ve done a great job of meeting users’ needs and satisfying your stakeholders.

Fast-forward a year and a half. You receive a notice from a law firm. You’re being subpoenaed. It turns out the now-successful startup is being sued, because certain aspects of the application’s user interface—your design—have “infringed” on several patents that purport to have “invented” the process of managing large groups of files and publishing them to various locations via the Internet.

Why Should You Care About the Chaos in the US Patent System?

“Companies often file for and the US government actually grants patents for user interface and interaction design “innovations” that are either strikingly obvious or have appeared before in other systems.”

Could this happen to you? Absolutely. How likely is it to happen to you? Probably less likely than the chance you’ll hear your favorite song on the radio within the next year, but much more likely than the chance you’ll win the lottery.

The current US patent system—in combination with the litigious nature of many high-tech companies—make it likely that, somewhere down the road, something you design might incur the wrath of a patent troll.

The sad fact is that companies often file for and the US government actually grants patents for user interface and interaction design “innovations” that are either strikingly obvious or have appeared before in other systems—that is, when prior art exists, as someone in the field of intellectual property would say. This means, as user experience practitioners, we are at risk of litigation every time we design an application. Each time we fire up Visio or Photoshop, create a new design, then put it out into the world, there’s a good chance we’re infringing on someone’s patent.

In a perfect or just world, the government wouldn’t grant patents for the obvious or overly broad patents in the first place. But we’re not living in an ideal world, and the government often grants dubious patents. When they do, the patent holder then has the legal right to sue companies they feel are infringing on their patents.

Unfortunately, in this situation, it is incumbent on the infringing company to establish that they are, in fact, not infringing on the patent or the court should invalidate the patent because it is vague, based on prior art, or overly broad. This is generally much harder to prove than it is to defend a patent. Because the US patent system so strongly favors the patent holder, once the government grants a patent, the patent holder generally need not continually prove the validity of the patent.

How have things devolved to this sorry state?

A Quick History of the US Patent System

Since the beginning of the industrial revolution, nations have afforded some measure of protection for inventors’ technology, methods, and processes. English kings granted patents to inventors as early as the 1500s. In the United States, the law establishing a patent system appears in Article 8 of the United States Constitution. The actual text reads:

Congress shall have power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

The U.S. government established the United States Patent and Trademark Office (USPTO) in 1790. It issued the first patent, incidentally, to an inventor named Samuel Hopkins, for an invention that improved “the making of Pot ash and Pearl ash by a new Apparatus and Process.” The USPTO has issued over seven million patents since its inception.

In its first two centuries, the USPTO generally functioned as intended—that is, it provided inventors with legal protection and recourse, so they could capitalize on their inventions without fear of others copying or appropriating their work.

“The patent system in the United States was generally effective until the pace of technological innovation began to accelerate in the late 1970s and 80s.”

The patent system in the United States was generally effective until the pace of technological innovation began to accelerate in the late 1970s and 80s. As software development companies created and marketed more and more commercial software, they naturally began submitting their creations to the USPTO.

Whether software should be patentable at all has been hotly debated. A number of individuals and organizations have made the case that, because software is simply a set of commands in a computer language, it should not be patentable, and that allowing software patents stifles innovation. Others have argued that software functionality shouldn’t be patentable, but the actual algorithms developers employ to implement the functionality an application provides should be. In point of fact, the USPTO makes such arguments academic, because it has issued thousands of software patents, including patents for algorithms, functionality, and user interface designs.

The controversy surrounding the issuance of software patents had already led many to begin questioning the US patent system in the early 1990s. Then the US patent system seriously went off the rails in the late 1990s when Congress reduced funding for the USPTO and required the USPTO to submit 10% of all revenues from patent filing and issuance fees to the US Treasury—effectively taxing the USPTO—while at the same time, the pace of filings increased. A perfect storm for the patent system. So like any good self-perpetuating bureaucracy, the leaders at the patent office decided to make up for the funding gap by increasing their reliance on fees from patent applications and issuances.

Not surprisingly, this created a strong incentive within the USPTO to accept more patent applications. This has increased the workload on individual patent examiners. In past decades, a patent examiner would carry out a fairly comprehensive, independent search for prior art when evaluating a patent application—not simply rely on the applicant to describe and report any prior art in the application. Searching for prior art obviously takes time. Today, it is less and less likely that a patent examiner will conduct anything more than a cursory search for prior art.

By the beginning of this decade, the USPTO was essentially granting patents to anyone who asked nicely. The decline of the US patent system and the USPTO is almost laughable. Some ridiculous and controversial patents include the following examples:

  • Some clueless patent examiner awarded US Patent 5,443,036, “Method of exercising a cat,” to an “inventor” who claimed that having a cat chase the beam from a laser pointer was a patentable process.
  • In 2005, the USPTO issued US Patent 6,960,975 for a “Space vehicle propelled by the pressure of inflationary vacuum state.” Inspection of this patent by physicists outside the USPTO called attention to the fact that the patent essentially described an antigravity machine, a physical impossibility.
  • In 2002, the father of a five-year-old boy, acting as the boy’s patent attorney, filed for and was awarded US Patent 6,368,227 for a method of swinging on a swing sideways. Presumably, all other kindergartners now owe this child royalty payments.

Imagine if the patent office had acted like this in the early 1900s. What if an automobile manufacturer had successfully patented the user interface elements of a car? The consequence would have been that no other manufacturers could create a car with the familiar configuration of steering wheel, gas pedal, clutch, and shifter. How Rube Goldbergesque would our cars be today?

While these outlandish examples are entertaining, they call attention to serious issues. When the government issues patents that are overly broad or for that which is obvious, they can stifle innovation—because either the patents have chilling effects or, when other inventors create things of value, holders of patents for the obvious or overly broad patents have the legal right to tie up the inventors in civil court.

How Bad Is It Really?

Just to show how out of hand the patent system is in the US, here are some ridiculous patents on user interface and interaction designs.

  • In 2005, Creative Laboratories went after Apple Computer—now Apple Inc. —alleging that Apple infringed on a patent it held for user interface elements of the Creative Zen MP3 player. Because of the patent Creative Labs held for “Automatic hierarchical categorization of music by metadata” (US Patent 6,928,433), they claimed they owned the patent on “a user interface that enables users of portable media players to efficiently and intuitively navigate and select tracks on a portable media player.” That’s right. They claimed they owned the patent to a hierarchical menu system.
  • In 1999, Amazon.com received US Patent 5,960,411 for “A Method and System for Placing a Purchase Order Via a Communications Network.” What had Amazon patented? Their one-click purchase button. In their filing, Amazon claimed that their one-click purchase process was truly innovative, because other online retailers used the shopping cart process funnel model of completing an online purchase. Many people, including a programmer who was an Amazon founder, feel that the one-click purchase is the pinnacle of obviousness. (For a good overview of the Amazon one-click patent issue, see “Amazon One-Click Shopping.”

Just think about this last example for a second. Amazon holds the patent for making a purchase on an ecommerce site via a single click. This is like GM patenting, say, the method that allows drivers to turn a key and start a car. What would life be like if patents had prevented all other car manufacturers from using an ignition-key system and instead intentionally had to design the interaction so it was more time consuming and onerous to avoid litigation?

What Does This Mean for UX Professionals?

“Trends suggest we will have to be increasingly vigilant when we design user interfaces.”

Unless the US patent system undergoes comprehensive reform, these trends suggest we will have to be increasingly vigilant when we design user interfaces.

In their groundbreaking 1993 shareware e-book “Task-Centered User Interface Design,” Lewis and Rieman provided some guidelines for designers to consider when deciding how to meet users’ needs by providing user interface and interaction elements. They grouped their recommendations into four categories labeled “things you certainly can copy (unless the rights have been sold),” “things you probably can copy,” “things you probably can’t copy,” and “things you certainly cannot copy (unless you get permission).” What’s interesting are the things they cited as probably safe to copy:

  • Sequences or arrangements of menu items, commands, screens, and so on—You can copy their order if, in the original application, the designer clearly ordered them to improve their usability. For example, if the order were alphabetical or most-commonly-used-item first, or if there were only one way or a very few other ways items could be arranged.
  • Obvious icons, ideas, commands, menu items, or words—You can copy words or graphic images when they are such obvious choices for the functions they represent that usability would be reduced if you used other words or images. For example, using the word print for printing or an icon depicting a mouse device that lets users select mouse options..

While these guidelines have been extremely useful to practitioners over the past dozen or so years, I fear that those items I’ve cited above likely now belong in the “things you probably can’t copy” category. The USPTO has issued too many overly broad and obvious patents on user interface designs for me to feel confident following Lewis and Rieman’s guidance anymore.

The US patent system is broken, and because of this, we’re all vulnerable.

So what can we as a community do about it?

A Call-To-Action

The first thing you can do is educate yourself on this issue. I’ve given you only an overview in this article. You can learn more about the patent system and the controversy surrounding it from these online resources:

  • The Electronic Frontier Foundation (EFF)—The EFF is a nonprofit organization that advocates for free speech and individual rights in the digital domain. Its Patent Busting Project is an initiative “to protect innovation and free expression” by fighting against vague, obvious, or overly broad patents.
  • Foundation for a Free Information Infrastructure (FFII)—Based in Europe, this organization currently runs the NoSoftwarePatents.com campaign, which has as its aim stopping enaction of a US-like patent system in the European Union.
  • The Free Software Foundation (FSF)—Founded by Richard Stallman, the FSF promotes and supports the free software movement. The FSF supports a less restrictive approach to patenting intellectual property. Founded as a US-based organization, FSF branches have opened in Europe, Asia, and Latin America.
  • Another advocacy group is the Software Freedom Law Center, which Eben Moglen founded in 2005.
“Become an advocate for open standards and patent system reform.”

Next, you can become an advocate for open standards and patent system reform. This means supporting the propositions that neither software nor its user interface representations should be patentable. One can make a case for software code being copyrightable as a publication, with “all rights reserved” or a Creative Commons license that reserves some rights, so others can’t copy source code character for character unless the author grants permission. Ultimately, the goal is to get to a less restrictive patent system, in the US and worldwide.

For those of you who are learning about this issue for the first time, you might feel that railing against patents is somehow anti-free market or anti-capitalism. Nothing could be further from the truth. Despite what the intellectual property lawyers and patent-squatter holding companies claim, many studies across many industries and domains have established that patents inhibit competition and stifle innovation. A 2004 report by the European Union’s Organisation for Economic Cooperation and Development cites and describes these studies.

In short, a restrictive patent system is antithetical to a free market. Open standards and narrowly scoped patents that cover unique solutions to limited problems encourage healthy competition and help build vibrant, free markets. And they would also lead to greater opportunities for all of us who work in user experience.

Reference

Lewis, Clayton, and John Reiman. Task-Centered User Interface Design. Clayton Lewis and John Rieman: Boulder, CO, 1993. Retrieved July 6, 2007.

9 Comments

As a UX designer, I hold 17 granted US patents and a bunch more worldwide. I agree with you that the USPTO is flawed, but they have recently changed their guidelines as to what represents unobviousness. These changes are detailed on the USPTO Web site.

I actually encourage my UX students and staff to be active in the invention process. The steps required to file a patent are very useful—whether you end up filing or not. For example, you must clearly define what the innovation is, what real-world problem it solves, what existing solutions are there, why are the existing solutions not adequate, why is your solution better, and given typical knowledge of software, how would you go about building this invention. These are all questions that designers should ask themselves to prioritize designs and objectively assess their value propositions.

You highlight patent horror stories, but that’s a small percentage. Patent and trademark protection for the UX designer is a good thing!

Does anyone know of any similar issues outside the US that might affect non-US citizens who design for non-US companies?

Hi Mitch, I appreciate your taking the time to comment on the article.

Addressing your comments: I have read the new guidelines on obviousness. To me, they just don’t go far enough to address the root cause of the problem, which is that the USPTO is granting patents for things that should not be patentable.

Regarding your comment about the educational value of the USPTO filing process. It seems to me that the benefits to your students don’t outweigh the costs to the rest of us who must deal with broad/vague patents. I mean, I’m glad your students get to learn something, but isn’t there an alternative way to accomplish this?

Interesting that the Amazon one-click purchase is on there. According to some studies—notably from HFI—the one-click purchase should actually be avoided for most of the users, only because they’d want to review the purchase thoroughly before actually sending their personal information. That’s why the purchasing steps are actually important. People do not like surprises! So really, Amazon can keep their useless patent.

Hi again Paul, I enjoyed your article. It’s a useful discussion.

I agree the problem is created at the intersection of legal and vague. Once you sign up for the game of patents, you have no choice of fighting fire with fire. Smaller companies don’t have the resources—nor should they have to spend those resources defending frivolous claims. An example: AT&T owns the patent for softkeys …What the heck do you do with that one?? If you’re an ATM or phone designer, apparently nothing. The “hoping AT&T won’t sue us” strategy is not very comforting.

The point about my students wasn’t encouraging them to file patents, but to use the process to better document the value-creation process. Maybe part of the solution for designers revolves around disclosure—documenting the inspirations and idea flow might offer you enough protection—or at least some peace of mind!

Cheers

Mitch, thanks for your clarifying comments. I understand better now where you’re coming from about documenting the value-creation process.

The patent issue—and the entire conceptual framework for intellectual property, really—is just so fraught with unknown, unknowable, and/or unintended consequences. It’s really frustrating. Yes, certain types of inventors might benefit from some small amount of protection. But the system is so clearly broken.

Case in point: Just this morning I read about yet another appalling patent troll tactic. Check out the TechDirt article about patent lawyers trying to persuade surgeons to patent surgical techniques as a business process.

Good read.

The one word that repeated in my head as I read this article: patterns. There are certain patterns we UX folks might be advocating for product teams to follow as they lend themselves to the UI being developed in an easy to understand way.

But what if that pattern is infringing on a patent?

Dan, that’s a good point!

Patterns are our best hope for moving the UX field from a craft to a more engineering-like discipline. Yet, now there’s the very real risk that patterns will infringe on existing or future dubious patents.

I’m feeling kind of discouraged about the future of high-tech today…

Good post, thanks for sharing.

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