Exploring issues around intellectual property in user experience…Are we burying our heads in the sand?

In September 2014, fellow UX-in-Science aficionado Paula de Matos and I presented a ‘think tank’ session on intellectual property at the UX Cambridge conference. This post recaps what we learned and includes feedback from a representative of the European Patent Office, and a local lawyer who contacted us after the event.  We feel this is a really important – and under-represented –  topic for UX so I hope you find this post helpful.  Please tweet us with comments (@JenniferCham, @Paula_deMatos). Enjoy!

Why should user experience designers be bothered about intellectual property law?

The threat of patent infringement to businesses is well known in the pharmaceutical, engineering and manufacturing sectors. However, there are potential issues around intellectual property rights that should part of best practice for user-experience (UX) designers.

 

A potential scenario

To illustrate the kind of IP issue that impacts UX designers, I’ve adapted this scenario from the “UX Matters” website.

Imagine you are working as a UX-er for a small startup. The company wants to build a web application to help product marketers manage and maintain digital assets for their products, with a view to distributing them to retailers and e-commerce sites. The company asks you to create a user interface for this web application and you struggle to come up with an elegant way for users to upload, manage, and publish a variety of digital content (e.g. spec sheets, warranties, coupons) easily. You carry out out UX research and some participatory design, then create interaction models, workflows and wireframes. You test ‘lo-fi’ prototypes and, happily, your design does really well. Just a couple of optimizations to the workflows and some terminology tweaks are needed, and you’ll be ready to apply a visual design. You hand off your detailed plans and functional specifications to the visual designers and software development group, feeling satisfied that you’ve done a great job of meeting users’ needs and satisfying your stakeholders. Great!

Fast-forward a year and a half. You receive a letter from a law firm. As it turns out, the now-successful start-up company is being sued because certain aspects of the application’s user interface—which was of 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.

Erm, not so great.

 

[See link to the original article at UX Matters at the end of this post]

If we close our eyes, will it go away?

This is just one scenario, but there are many others (see articles listed at the end of this post). I am not an intellectual property legal expert, but the story above demonstrates that there is a potential legal threat on designers and a huge lack of knowledge amongst in the UX community as to how we can protect ourselves, our clients and employers.

To help understand the issues in preparation for UX Cambridge, Paula and I looked at diverse information from secondary research sources to flesh out our understanding of the issues and sought advice directly from experts to answer some burning questions.

To start with, we asked people we knew about their own experiences of IP in their own UX projects.  One quote summed up the general vibe we picked up on the subject:

 

“We don’t worry about design elements in our products unless someone raises it as an issue.  It hasn’t happened yet!”

– Product Manager at a well-known international analytics software company

 

This suggested a culture of denial about the matter. We dug a bit deeper, using the internet and our contacts to find out more….

 

Head in the sand? Flickr: Michael Broad

Is your head in the sand? Flickr: Michael Broad

 

What issues regarding intellectual property in user experience did we discover?

We identified four key issues, or threats (though there are, no doubt, many more):

  1. UX practitioners/ freelancers could unknowingly infringe a patent and be subject to litigation, putting their own interests and those of their clients/companies at risk.
  2. It is difficult to identify what has been protected (for example by a patent), because tools don’t exist to search databases easily and systematically for “design elements”.  (How do you search for visual things or gestures, anyway?)
  3. The size of the problem is currently unknown. Only anecdotal cases exist, for example in blogs and articles (see list).
  4. There is a potential danger from so-called “patent trolls” in UX, who are notorious in other fields, such as biotech. These are companies or individuals who buy legal rights to a design/product with a view to preventing others from operating. They make money by requesting license fees to allow other companies to use the invention, or by suing other companies/agencies for compensation. This behaviour is totally at odds with the spirit of the legal instruments put in place to protect IP. They aim to stop exploitation of an invention, rather than enable its commercial success. Trolls slow innovation down.

 

What do we actually mean by “intellectual property protection”?

Well, we basically mean “how can you protect an idea?”.  Such protection can take multiple forms.  For example, in Europe there are:

  • Patents protect technical inventions in all fields of technology
  • Designs specify how products look (ie. industrial design)
  • Trade marks signal the origin of products to consumers
  • Copyright relates to artistic creations, such as books, music, paintings, sculptures and films

Patents provide the most important, commercially-relevant, protection.  To have a patent granted the applicant’s invention must:

  • Be new (absolutely novel)
  • Demonstrate an inventive step
  • Have industrial application
  • Provide sufficient disclosure (to person skilled in the art)

If granted, this means you have rights to exclusivity in specific geographical regions (this takes a lot of explaining, but you have to have protection by country), normally for a maximum of up to 20 years

 

What are the differences between USA and European law on IP rights relevant for UX?

As pointed out in the discussion at UX Cambridge, in most cases outputs of UX work tend to be accessible globally via the Internet, so another layer of detail comes into play for us because legal rights vary by country/region. Europe is similar to the rest of the world when it comes to patenting stuff (a reliable source tells me), but the US seems to be a special case (we could have guessed!). The difference seems quite stark when it comes to legal protection of “designs/methods”, so the US needs to be considered separately.  I’ve summarised this briefly in a table:

usa_vs_euro_patent

One of my contacts at the European Patent Office provides an interesting perspective:

 

“User interface design has [effectively] non-existent legislation in Europe and a *doubtful* base of legislation in USA. If Apple Inc. struggles to win in an IP battle then it means it’s hard to get water-tight protection for an ‘experience’ or ‘feel’.”

– Director Information Services Processing, EPO, The Hague

 

This refers to the landmark Apple vs. Samsung case (see this article for more). Essentially, the “biggest boys” in the arena (with teams of lawyers) struggled to protect their user experience adequately. Frankly, it is unlikely that protection we may (inadvertently) infringe by our design would itself successfully ‘stand up in court’, if it ever came to that (which is unlikely).

It may be over-simplifying things, but this image illustrates an example of a UX design issue:

(Did that help?)

 

To further back this up, we went back to the conversation with the EPO.  Our contact said:

“Under the European Patent Convention, GUI designs or UX techniques are NOT patentable. This also applies to most business methods. This is the reason that the famous “1-click” patent that Amazon filed in the US cannot obtain patent protection in Europe….

…Designs can be protected through obtaining a registered community design and/or trademark, if they fulfil the conditions. In Europe these are granted by the Office for Harmonization in the Internal Market (OHIM)”

 

 

So we thought, great, this sounds like things are starting to make sense. That is, until we were contacted via Twitter by a neighbourly patent & trade mark attorney, called Dan.

“I [saw] the slides and did not hear the talk …They say software not patentable at EPO but software is only excluded “as such” in EPC.  In particular regarding UX see EPO guidelines for examination http://bit.ly/1EkinE2 (esp last para) and EPO case law T115/85 onwards re displays protection.  Maybe some UX aspects [are indeed] patentable…?

…For UX to be patentable, I don’t think there necessarily needs to be novel hardware.  My impression is that a functional feature (not merely a feature of the graphical presentation but something that assists the user in a functional way) implemented in software is potentially patentable at the EPO…

As to finding out what is patented, [check out] Espacenet website as a good, free search tool.  Searches can be defined and narrowed using keywords and/or according to field using the patent classification (http://www.wipo.int/classifications/ipc/en/). If a case of concern is found, it is then necessary to check if and where a patent has been granted and what its claims cover.  This is often available via Espacenet family and legal status information.”

– Dan Sharrock | Partner at Nash Matthews LLP

 

Thanks, Dan! (who, if you’re interested, tweets @DanSharrockIP)

 

In our quest to get things straight, the water became somewhat muddier. But folks, that’s the reality right now it seems!  We’re not the only ones despairing (watch this video about ‘patent absurdity’!)

 

But really, why is this so complicated for “designs”? (A little history lesson)

There are probably hundreds of reasons why this field is such a mess. I’m pretty sure a major one is that the intellectual property protection tools that are currently available were devised scores of decades before software and computers were invented. The legal instruments haven’t kept pace with the needs of the market.

US design patents are not fit-for-purpose for UX because they originally came from botany. When horticulturalists in the 1900s were developing new varieties of plants, they could apply to protect a description of the way they produced a flower with a specific look by plant breeding, mixing, and cultivation. This was considered to be an innovative “method”, thus deserving of industrial protection at the time. This eventually evolved into “trademark” law, but design patents continued.

Flickr: Martin LaBar

Do you have a design patent for that? (Source Flickr, Martin LaBar)

 

How can we protect ourselves, what needs to happen?

We asked our contact for advise for the way forward. Can we/ should we seek to protect our/ our clients’ UX designs?  How should we proceed?

One view is:

“If you are planning to have market share in USA, try patenting to protect interfaces as a “design patent” with USPTO, but this protection applies only in USA not in Japan, Korean or anywhere else. And even if you get a design patent it is doubtful to stand up even in USA.”

– Director Information Services Processing, EPO

Personally, I recommend finding out a bit more yourself, for example:

 

Reflections on the mess, and possible next steps

OK, I realise this sounds pretty complicated, but I can still see some useful take home messages for the UX community:

1. There is a lack of information for UX practitioners regarding how to protect their design work, and how to reduce the risk of infringing others’ protected designs.

There is no single place to refer to for guidance and best practice.  We could do something about this as a community.  What we need is a book like this (The American Bar Association’s Legal Guide to Fashion Design), only for user interface design, not fashion design!

 

2. There are helpful legal people like Dan who are happy to engage with us and offer tips *for free*

(Thank you for providing a ray of hope!) We need to acknowledge and thank these guys/girls and invite them to our UX conferences.

 

3. Most UX or digital design conferences do not include anything about intellectual property at all

OK, I admit, there weren’t hoards of people queuing to attend our session on IP at UX Cambridge (it’s hard to compete with comics, pipe-cleaners and plasticine). However, this stuff is important, albeit ‘meta’ to our usual UX work. To get insightful speakers on this stuff to attend UX events they will need to be properly incentivised. A big issue here is that speakers at UX conferences aren’t always paid, and yes, lawyers charge A LOT.  However, it’s possible to ask conference organisers to try to engage with these sorts of professionals to see what can be done. Another issue is that it’s uncertain how many multidisciplinary experts there actually are in UX and law. Either way, if we don’t ask/lobby/bribe, we don’t get!

 

4. Without good information, is there a viable alternative to the “ignorance is bliss” culture?

There is a concern that if we make a fuss about all this, there may be more “legal things” we will have to do in addition to our already busy schedule. On this point, I feel that the burden should be taken by patent offices and policy makers. They need to lead thy way in providing more appropriate mechanisms to allow commercially-important UX design ideas to be properly protected, then make it clear to the community how to proceed.  They are patently (sorry, couldn’t resist!) aware of the problem! You may disagree, and think that UX designs should be completely ‘open source’ like software code, and not subject to protection at all. For me, having the potential to protect and exploit your outputs give an incentive to strive for the best.

 

But what do you think? Join the conversation

If this post has piqued your interest please tweet us! @JenniferCham , @Paula_deMatos

I, for one, would like to see more said about IP at UX and design conferences about this stuff, so if we can get it trending, let’s hope conference organisers catch on!

 

Finally, a momento of our UX Cambridge session

Thanks to @ChrisSpalton for his visual recording of the think tank session.

UX and IP

UX and IP, sketchnote by Chris Spalton (from UX Cambridge 2014)

Related links

UX Cambridge 2014 slides for our session [slideshare]

Are we burying our heads in the sand? Exploring issues around intellectual property in user experience

Scenario adapted from UX Matters article

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

Articles and blog posts on Intellectual Property and UX

Patent trolls sitting under the UX Bridge

How To Protect UI with Design Patents

Patent skills for user experience design

Forum thread on the JS rollover patent

Apple vs Samsung: impact and implications for product design, UX, Software dev and future of high tech consumer products

Examples of USPTO Design Patents for UX-relevant inventions

Method and system for placing a purchase order via a communications network

Graphical user interface for a display screen or portion thereof

Display screen portion with animated graphical user interface

API for scrolling operations (pinch to zoom API)

USA IP rights infos

Video about the ‘absurdity’ of USPTO patenting software

Patentlyo (Nice blog on all things “patent”)

USPTO design day 2013

Foss patents (blog about patent news and issues with a particular focus on wireless, mobile devices (smartphones, tablet computers)

European IP rights infos

OHIM website (non-patent intellectual property)

OHIM learning portal (to learn about intellectual property excl. patents)

What are trademarks? (in Europe, info and video)

What are registered community designs? (in Europe, info and video)

European Patent Office interactive tour

UX Cambridge conferences

UX Cambridge 2014

UX Cambridge 2015 (upcoming, on Lanyrd)

 

 

*Disclaimer:  The post above includes my views and perspective.  I am not a legal expert.  I have checked that I can use the direct quotes.*

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