Sub-Question 1:

The definition of a GUI in present Section 2 is: “A GUI is an interface which allows users to interact with electronic devices through graphical elements (e.g. icons, menus, scroll bars, windows, transitional animations, dialogue boxes) instead of typing characters.” In this context, GUIs cannot generally be protected by patents since the definition of the GUI includes, if not aims, the representation of graphical elements in a GUI and possibly their arrangement or layout. However, graphical elements are considered as aesthetic creations which, according to the Swiss Federal Institute of Intellectual Property (IPI) Guidelines effective April 1, 2017, Chapter 2.1, are excluded from patent protection. In Switzerland, patent protection can also be obtained via the European Patent Convention (EPC). Article 52(2)(b) EPC in a similar way excludes aesthetic creations as such from protection by a European Patent.

Sub-Question 2:

According to the IPI Guidelines, an ­invention requires to technically contribute to the art, and hence, requires technical character which is positively affirmed for a technical solution provided for a technical problem by technical means. In principle, at least one of these is considered as sufficient for proving technical character. For GUIs at the same time representing a computer implemented invention, technical considerations are admitted as additional criterion for proving technical character, again including the clarification in the IPI Guidelines that not necessarily all categories need to be fulfilled at the same time. Accordingly, types or aspects of a GUI may be protected by a patent as long as at least one of a problem, solution, means, or considerations ­involved is considered technical. Although, finally an overall view on the claimed subject matter is relevant, ­according to the IPI Guidelines.

Sub-Question 3:

By excluding pure graphic represen­tations of a GUI from patent protection, aspects of a GUI potentially patentable rather need to refer to one or more of the interface aspect or the interaction aspect in the above definition of GUIs, or technical information concerned. Interface related aspects may in particular include hard- and/or software for operating the interface on a physical layer, such as touchscreen sensing technology, for example. Interaction related aspects rather include input and/or output behavior, in particular interrelated, as long as technical effects are achieved or technical considerations are acknowledged. However, the more such interaction is related to the technical system behind the GUI rather than to the bare GUI, the better chances are for fulfilling the technical character requirement.

While the Swiss Patent Act does not ­explicitly ask for a technical character of the invention, the IPO Guidelines in this context refer to the consultation of March 24, 1976, wherein the Federal Council submitted draft legislation to the Parliament regarding patent law, wherein it was stated that the Supreme Court shares the view of the IPO in regards to subject matter to be excluded from patentability although not explicitly excluded by the Federal Patent Act (PatA). Excluded subject matter not only refers to aesthetic creations – ­although it is admitted in the IPI Guidelines that in borderline cases, a design or form may (also) have a technical function such as a cover of a tyre and thus be patentable – but also includes mathematical methods and computer programs as such as well as rules and methods for mental acts. While the exclusion for mental acts is not further elaborated in the IPI Guidelines and case law is very scarce, the exclusion of computer programs as such is specified in a dedicated chapter 2.1.1. For more information, it is referred to the co-pending question on CIIs. The EPC provides the same exclusions from patentability in Article 52(2)(c) EPC, and an additional exclusion in Article 52(2)(d) EPC for the presentation of information. Article 52(3) EPC limits all above exclusions only to subject matter or activities as such. However, although not being bound to EPC case law of the EPO BoA, Swiss courts generally are inclined to follow for harmonization reasons, such that the exclusion of presentation of information as such can also be ­assumed to be acknowledged in Switzerland. Accordingly, a GUI type or aspect that is not considered as, in combination, an aesthetic creation, a computer program, a method for mental activity, and a presentation of information, each as such, is patentable in Switzerland.

No.

The introduction of a physical feature such as a display or screen in a device claim, or the illustration of content on a display in a method claim, is strongly recommended although not a statutory requirement. In case the term “GUI” is used in a claim it is recommended to define the term in the patent application as an interface of an apparatus including at least display means.

Mere instructions to a human mind, in order to instruct the human to behave in a particular manner, are considered not technical and therefore not patentable (BGE 95 I 579).

Yes. Swiss design law allows the protection of visible forms of a two-dimensional or three-dimensional product characterized through the use of lines, contours, colors, surfaces or materials. Accordingly, Swiss legal doctrine and case law acknowledges the principal protectability of GUIs as sampling of a screen (i.e. not as graphical representation of a computer program) under the Federal Act on the Protection of Designs (DesA)​¹. To be protected by Swiss design law, GUIs must fulfil the requirements for protection as set forth in Article 2 DesA, i.e. it must be “new” and have an “individual character”, i.e. be inherently distinctive from existing designs in significant points. Furthermore, the design of the GUI must be more than just that which would be functionally necessary for the GUI and may be contrary to public morality or law.

In determining the individual character of a GUI, aspects predefined by other software (such as a computer’s operating system) must be taken into consideration. Regularly, the elements of a GUI that provide the required functionality (menus, scroll bars, buttons etc.) are largely predetermined by the underlying operating system (and therefore lack novelty) and/or technically necessary​². Moreover, the design of the GUI may not be the result of the functionality of the respective GUI, i.e. constitute the only and/or most natural way of displaying content.

Finally, GUIs are regularly animated (e.g. contain moving images, transformation, transition, change of colors or other animations). Moving images do not qualify as protectable creations under Swiss design laws​³. ­Accordingly, only screenshots of these animations can be submitted for protection (see also Q7 below).

The purpose of such a GUI is to create a certain – even though only temporary – optical effect on a reproductive device. In order to be protectable, the design of such “temporary” GUI must be visibly perceptible to the user, i.e. it must remain on the screen for sufficient time to allow the user to perceive it​⁴.

Yes. Most GUIs can be displayed on multiple devices and are as such indivi­dually marketable. Accordingly, a GUI is protectable by design rights independently from the design of the electronic design itself. Nevertheless, as Swiss design law allows the protection of only parts of a creation, a design of a GUI could also be registered independently from the electronic device even if inseparably associated with the latter. Finally, a GUI may also be registered in combination with the electronic design.

Yes. Swiss design law may grant protection for both entire GUI or individual graphical elements of GUIs, such as icons, slide buttons. If these fulfil the necessary requirements for protection under the DesA, they can qualify for individual protection. In particular, ­because the appearance of a GUI often constantly changes as a result of user interaction, the protection of specific design elements, which ideally remain on the screen, may provide better design protection compared to registering entire screen-shots.

According to Swiss design law, dynamic designs such as movements or screen transitions do not qualify as protectable creations under the DesA​⁵. Accordingly, only screenshots of these elements can be submitted for protection. In order to qualify for protection, the respective design elements must furthermore remain on screen for a sufficient time to be visibly perceptible to the user.

No.

Yes. On one hand, GUIs are protectable as literary and artistic intellectual creations with an individual character ­(Article 2 paragraph 1 Federal Copyright Act (CopA))​⁶. In particular, such creations could be protected as graphical​⁷ (such as images, icons etc.; Article 2 paragraph 2 letter c CopA), visual or audio-visual​⁸ (Article 2 paragraph 2 letter g CopA) works. On the other hand, the copyright protection regime for computer programs is also applicable to GUIs​⁹ (Article 2 paragraph 3 CopA).

Yes. According to Article 2 paragraph 1 CopA, common works are intellectual creations with an individual character. From this point of view, a merely computer-generated GUI does not fulfil the requirements of a copyright protected work due to the lack of an intellectual creation procedure of a human being​¹⁰. In comparison, computer-generated GUIs may obtain protection if the commands for the generation of GUIs are provided in the source code which is protected as part of a computer program according to Article 2 paragraph 3 CopA​¹¹.

As already indicated in Q8, there are basically two lines of argumentation how GUIs may be protected under Swiss copyright law. (1) A GUI may be considered as a copyrighted work according to Article 2 paragraph 1 CopA if it is a literary and artistic intellectual creation with an individual character. However, this would require that each GUI is subject to a design of an author which does not seem to be the usual modus operandi for most GUIs. (2) Accordingly, from a technical point of view, most GUIs seem to be generated with a source code of a computer program and change their appearance depending on the interaction of the user (see also answer to Q6 regarding design). Consequently, these GUIs are integrated in computer programs which are protected according to Article 2 paragraph 3 CopA​¹².

According to our understanding, the rather vague term “look and feel” ­defines the overall handling of a program including the GUIs and pointing devices such as a mouse cursor​¹³. As long as these elements in question are part of a computer program or subject to own individual copyright protection, there are no reasons to reject copyright protection. However, “look and feel” does not include the general user experience with GUIs if it is not subject of an individual intellectual creation or part of a protected computer program.

GUIs cannot generally be protected as Swiss trademarks. While the Federal Trademark Protection Act (TmPA, CC 232.11) does not limit the categories of signs that can be protected, a sign must be capable of distinguishing the goods or services of one corporation from those of other corporations in order to be protectable (Article 1 TmPA). Signs are also excluded from protection if they are in the public domain or consist of shapes that are technically necessary (Article 2 lit. a & b TmPA). Signs can only be trademarked if they can be represented graphically (Article 10 Ordinance on the TmPA​¹⁴).

GUIs serve the purpose of facilitating the interaction between a user and a machine. As such, wide parts of a GUI are driven by functionality (inputting data, displaying data, selection options etc.). An ideal GUI is as simple and self-explanatory as possible. This means it will likely contain many elements that are descriptive and/or in the public domain. Furthermore, the elements which provide functionality (menus, scroll bars, buttons etc.) are often largely predetermined by the operating system running the machine and/or technically necessary. The appearance of a GUI is also constantly changing as a result of user interaction.

As a result of this functional and ever-changing nature, GUIs as a whole are unsuitable for trademark protection under the TmPA as they will rarely be noticed by customers as a mean to distinguish one software from another. Also, as all the public domain elements (letters, numerals, words or symbols) must be disclaimed, what remains will not qualify as a protectable sign under the TmPA. That being said, certain aspects of a GUI may be protectable as a trademark, such as app(lication) icons and certain animations (see next question).

App(lication) icons: The icon is in general the first sign a user notices when interacting with software. Therefore, an icon is inherently suitable for distinguishing the goods or services of one corporation from those of other corporations as required by law. While the shape of the icon itself often is predetermined by the operating system (e.g. the square with round edges in Apple’s iOS), the content within that frame can be chosen freely. To be protectable, an icon has to follow the same rules as any figurative mark (Article 1 and 2 TmPA), e.g. be distinguishable and not be descriptive or in public domain (e.g. an envelope for an Email-Application, see also IPI Trademark Guidelines of January 1 2017, Part 5, Sect. 4.8, 136 with respect to pictograms).

Animations: Certain special animations may be protectable as a motion trademark. Besides the standard requirements for any trademark, the ­application must contain a graphical representation of all animation phases (see for example CH Nr.  574 633 – Animated Swisscom AG Logo). In practice, very few animations may be protectable, however. An animation is only protectable if the movement differs substantially from any trivial movement typically used in the concerned segment of goods / services (see IPI Trademark Guidelines of January 1 2017, Part 5, Sect. 4.14, 149). As most animations are determined by the functionality that triggered them (e.g. a loading bar which displays values from 0–100 %, moving a GUI element from A to B etc.), only very distinguished animations can be protected.

Other visual elements: Other visual elements (such as specially shaped or decorated buttons etc.) might be protectable as well. But as mentioned above, such visual elements will have to differ substantially from what is typically used for other software to be protectable. Often, this requirement runs essentially against the simplicity/usability demands of a GUI.

No, acquired secondary meaning will not allow whole GUIs to be protected. However, it may help to obtain a certain level of protection under the Federal Unfair Competition Act (UCA​¹⁵). But certain parts of a GUI that might not be eligible for trademark protection by themselves (either because they are descriptive or too trivial / in the public domain) may become protectable through acquired secondary meaning (e.g. a colour mark). However, the hurdles to prove acquired secondary meaning in Switzerland are considerable.

Under certain circumstances, GUIs may qualify for protection under unfair competition laws, in particular the Unfair Competition Act (UCA) and, in the event the specific GUI is qualified as a commercial or manufacturing secret, even by criminal law (Article 162 of the Federal Criminal Act​¹⁶).

Article 3 para 1 lit d UCA allows for remedies in the event a third party takes actions which could lead to confusion in the market regarding the goods, works, services or the business of the owner of a GUI, particularly if these actions are viewed as copy-cat activities or passing-off. The primary goal is to protect consumers from a misjudgement regarding the source of the goods, works or services. Protection is broader than the specific protection under a trade-mark, patent or design right and may also apply to unregistered IPR such as secret know-how contained within the programming or source code of a GUI. However, the original GUI must have obtained a certain level of individuality and distinctiveness as well as renown in the market which will be determined on a case by case basis by the courts for protection under the UCA. Simple forms, signs and basic colours will not be granted protection.

Article 5 para 1 lit c UCA sanctions the outright copying and use of a finished work product by means of technical reproductions in the event the copier does not add any additional work efforts. This could also apply to the copying of both the design and the coding of a GUI. The idea behind the norm is to generally allow copying of IPRs that are not specifically protected, but preventing a distortion in the market by granting an undue advantage.

Article 6 of the UCA prevents the use of business secrets (commercial or manufacturing secrets) which have been obtained by illegal means.

Any breach or threatened breach of the above norms may result in an interim injunction, a cease and desist action and potentially a claim for damages (Articles 9 and 10 UCA).

In addition, criminal sanctions (imprisonment for up to five years or a fine) may be imposed for an intentional breach of Article 3 and 6 of the UCA upon request of the injured party.

As a further means of protection, business secrets (commercial and manufacturing secrets) which must be kept confidential based on a legal requirement or contractual obligation are protected by Article 162 of the Swiss Penal Code. However, this protection only applies if the secret is used on behalf of the perpetrator or a third party and only if the injured party requests prosecution. The sanction is imprisonment of up to three years or a fine.

Yes. Swiss law provides for a broad combination of IP right protection related to GUIs, including design, trademark, copy­right, unfair competition, penal sanctions and – partially – patent law. The Group’s position is that the current set of regulations are sufficient to provide sufficient IP rights protection for GUIs.

See answer to question 17) above.

Yes. See answer to question 17 above.

See answer to question 17 above.

The Group does not see any need to amend the current regulatory situation to provide better IP protections for GUIs.

If yes, please respond to the following questions without regard to your Group’s current law.

Even if no, please address the following questions to the extent your Group considers your Group’s laws could be improved.

Sub-Question 1:

Assuming that the general protection for GUIs is meant to also include patent protection for the pure graphical representation and layout of icons and other graphical elements, the answer is no in order to properly distinguish from other IP rights.

Sub-Question 2 and 3:

Yes. GUIs should be protectable by a patent as long as the aspect to be protected is of technical character.

Sub-Question 1:

In view of technical character being required for patent protection, we believe that the present statutory framework is sufficient to adequately protect relevant aspects or portions of GUIs by patent, insofar as protection is sought for a technical concept rather than for pure graphical representations or for the mere presentation of information.

However, it seems that there is no consistent approach even in the case law of the Boards of Appeal of the European Patent Office (BoA) as to when to admit technical character to a GUI aspect claimed in a patent application. While some BoA decisions appreciate technical effects such as “looking for a more intuitive GUI to facilitate […] dairy farm system control whilst reducing mistakes during the user’s communication with the machine” (T 1715/11, 3.6), other decisions take a more rigid approach and shift a technical effect claimed by the Applicant to the users comprehension: “[…] this reduction in use of resources would be caused by the way the brain of the user perceives and processes the visual information given by a particular way of presenting information.” (T1741/08, 2.1.6). And the 2013 edition of the EPO Guidelines stated that “the technical effect [of a graphical user interface] achieved might be a more efficient man-machine interface”, while the more recent 2016 edition of the EPO Guidelines do no longer include this statement, but instead claim in G.II.3.7.1 that “features concerning the graphic design of user interfaces do not have a technical effect, because their design is not based on technical considerations, but on general intellectual considerations as to which design is particularly appealing to a user”, while at the same time admit that the technical effect may be found in technical information concerned by these features.

The group voted for a more liberal approach, in combination with clear and consistent guidelines.

Sub-Question 2 and 3:

As indicated above, mere instructions to a human mind, in order to instruct the human to behave in a particular manner, are considered not technical and therefore not patentable (BGE 95 I 579).

However, insofar as mental activities are addressed as technical considerations in the reasoning pro technical character, such activities should be acknowledged.

No, as long as the technical character can otherwise be met, for example, by means of sufficient technical considerations.

All existing claim formats, i.e. device, method, use, computer program product claims.

Yes. GUIs form an essential part of the interaction of the human user with electronic devices and their design has become an important commercial factor both with regard to marketing and user experience. Accordingly, substantial efforts are being made to create GUIs which requires sufficient protection of the created design elements.

The design of GUIs with respect to design laws, the current legal framework in Switzerland seems to be sufficient for the protection of GUIs. Screen movements or transitions may be registerable as individual screen-shots to the extent the individual screen designs are visu­ally perceptible to a user (i.e. remain on screen for a sufficient duration of time).

Yes. The GUI regularly does not form part of the screen (and thus the device).

Yes, there are no reasons to the contrary.

Yes, as far as common works are affected which require that these are literary and artistic intellectual creations with individual character (see Q9). These kinds of creations require an intellectual creation procedure provided by a human being. Accordingly, computer-generated GUIs should only enjoy protection if the creation procedure is part of the source code of a computer program which is subject to own copyright protection.

With respect to copyrights, the current legal framework in Switzerland seems to be sufficient for the protection of GUIs. The overall “look and feel” should not be protectable, if this rather vague term includes more than the protection of GUIs and pointing devices (see Q11).

In general: No. Other IP rights (copyrights, patents) already offer protection for various elements and aspects of GUIs. In addition, the Unfair Competition Act provides software creators with specific legal tools against systematic imitation of design and features by competitors. It is not the purpose of Swiss trademark law to provide protection for functional and changing elements such as GUIs.

Where an element of a GUI (icon, certain animations) has the power to distinguish one software programme from another, a protection is already possible under current law.

Yes, but only in limited cases, where a specialised animation differs significantly from any trivial movement typically used in software. Trademark protection should not allow software creators to monopolize aspects of GUIs (and software in general) which are necessary to provide simple and self-explanatory GUIs.

Yes, but only in limited cases. Where it has been proven that certain aspects of a GUI which were not protectable have become distinctive for a certain software or a certain software creator, limited trademark protection should be granted. In order to avoid undesirable monopolization of generic elements of software design, the requirements should be set high.

The Swiss group does not consider it necessary or adequate to introduce additional forms of protection. However, the existing intellectual property rights may need to be adapted where they do not enable and provide adequate protection for GUIs.

The Swiss group is against introducing a sui generis right for protection of GUIs. The existing intellectual property rights should provide adequate protection, and where this is not the case, it is preferable to amend the existing rights instead of introducing yet another IP right.

There should not be a sui generis right.

The Swiss group does not have comments on any additional issues concerning protection of GUIs.