1. ^ Sec. 2.2, Chapter IV Patentability, IPO Manual of Substantive Examination Practice ( MSEP ). 2 If any type or aspect of GUIs are protectable by p

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1 Study Question Submission date: May 12, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Protection of graphical user interfaces Responsible Reporter: Yusuke INUI National/Regional Group Contributors name(s) contact Philippines BIENVENIDO I. SOMERA, JR. I. Current law and practice Patents 1 Can GUIs generally be protected by patents? If no, please answer questions 1.1, if yes, please go to question 2. Computer programs, which essentially run GUIs, are non-patentable inventions under the Intellectual Property Code of the Philippines ( IP Code ).[1] 1. ^ Sec. 22.2, IP Code. 1.1 If GUIs cannot be protected by patents per se, are any types or aspects of GUIs protectable by patents? If so, which? If the functional aspect of a GUI makes a technical contribution to a known art, the combination may be patentable. [1] Page 1 of 14

2 1. ^ Sec. 2.2, Chapter IV Patentability, IPO Manual of Substantive Examination Practice ( MSEP ). 2 If any type or aspect of GUIs are protectable by patents, under what conditions and to what extent are those types or aspects of GUIs considered to be within the scope of patentable subject matter? A computer program claimed by itself or as a record on a carrier is not patentable if it does not provide an extraordinary technical contribution to prior art. However, if the subject-matter, as claimed, makes a technical contribution to the known art more than just an ordinary computer program, patentability should not be denied solely on the ground that a computer program is involved in its implementation. Thus, a computer program may be patentable insofar as it is part of an otherwise patentable subject-matter such as program-controlled machines and program-controlled manufacturing and control processes, and provided that it produces an extraordinary technical effect.[1] 1. ^ Sec. 2.2, Chapter IV Patentability, MSEP. 3 If yes, do the statutory provisions, case law or judicial or administrative practice require specific claim formats for any patent protection? If yes, what claim formats are available for protecting GUIs? To be patentable, the GUI must pertain to a product with a technical structure. Thus, product claims may be made. GUIs are usually registered with respect to a manufactured product, such as for control of wireless handheld devices. Process claims for preparation of GUIs may be possible if said process satisfies requirements of patentability, such as methods for provision of GUI interface control information. [e.g., See Philippine Patent ] 4 Is any physical feature required in a claim as a pre-requisite for patentability of a GUI?. Since the GUI,per se, is a non-patentable subject-matter, to claim patentability, there must be a technical structure involved. 5 To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? Methods of performing mental acts is a non-patentable subject-matter. [1] Depending on the extent to which the user s mental activity is necessary to the GUI process, it is likely that such factor will be considered against the patentability of the GUI. Page 2 of 14

3 1. ^ Sec. 22.2, IP Code. Design rights 6 Can GUIs generally be protected by design rights? If no, please answer questions 6.1, if yes, please go to question 7 An industrial design is defined as any composition of shape, lines, colors or a combination thereof, or any three-dimensional form, whether or not associated with lines or colors, which produce an aesthetic and ornamental effect when taken as a whole. [1] As defined, industrial designs may cover GUIs. To be protected, the GUI must give a special appearance to, and can serve as a pattern for, an industrial product. 1. ^ Sec. 112, IP Code; Rule 1500, The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs ( Patent Rules ). 6.1 If not, are any types or aspects of GUIs protectable by design rights? 7 If any type or aspect of GUIs are protectable by design rights, under what conditions and to what extent are those types or aspects of GUIs protectable? Insofar as the GUI is able to give a special appearance to, and can serve as a pattern for, an industrial product such GUI is protected as an industrial design. te however, that designs that are dictated essentially by technical or functional considerations to obtain a technical result are non-registrable as industrial designs. Hence, to be registrable, the design of the GUI should not be dictated by technical or functional considerations. Further, mere schemes of surface ornamentation existing separately from the product are not registrable as industrial designs. As such, inseparability of the GUI from the product is essential for protection as an industrial design. A further limitation to industrial design registration is that the GUI should not be contrary to public order, health and morals. 7.a In particular is a GUI that temporarily appears on a screen of an electronic device considered a "design" that is protectable by design rights? Page 3 of 14

4 . The IP Code does not distinguish between the visual features of a design at rest as opposed to in use and the GUI is protected as long as it is represented in the drawing as it appears/is displayed. The only limitations are that: (1) the design is not dictated by technical or functional considerations to obtain a technical result; (2) the design is not a mere scheme of surface ornamentation existing separately from the industrial product; and (3) the design is not contrary to public order, health or morals. [1] 1. ^ Rule 1501, Patent Rules. 7.b In particular is a GUI protectable by design rights independently from the design of the electronic device itself?. [e.g., See Philippine Industrial Design Reg ] 7.c In particular are smaller elements included in a GUI (e.g. icons, slide buttons) protectable by design rights independently from the GUI as a whole?. [e.g., See Philippine Industrial Design Reg ] 7.d In particular are movements or screen transitions in a GUI protectable by design rights?, provided that they meet the definition of an industrial design under the IP Code. 7.e In particular are there any other types or aspects of GUIs protectable by design rights? If so, under what conditions and to what extent? Copyright 8 Can GUIs generally be protected by copyright? If no, please answer questions 8.1, if yes, please go to question 9 Page 4 of 14

5 , they may be protected as drawings, illustrations or ornamental designs under Philippine copyright law. [1] The computer programs defining the GUIs may also be protected under Philippine copyright law. [2] 1. ^ Sec (g), (h) and (i), IP Code. 2. ^ Sec (m), IP Code. 8.1 If not, are any types or aspects of GUIs protectable by copyright? 9 Does the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection?. Drawings, illustrations or ornamental designs that form GUIs are entitled to copyright protection, irrespective of their mode or form of expression, as well as their content, quality and purpose, as long as they contain individual, expressive or artistic elements. [1] Although computer-generated, the GUIs are dependent on the algorithms in the underlying software and pre-defined designs, which are human-made or authored. In any case, computer programs are copyrightable. 1. ^ Sec , IP Code. 10 If any type or aspect of GUIs can be protected by copyright, under what conditions and to what extent are those types or aspects of GUIs protectable? The drawings, illustrations or ornamental designs that form GUIs are granted limited protection. Such protection is limited to the specific presentation of the individual images, icons and graphics composing the GUI. Any variation therefrom may be considered derivative work, which is independent from the original work and shall be protected as new work. 11 Can the overall "look and feel" of GUIs be protected by copyright? If no, please answer questions 11.1, if yes, please go to question 12, insofar as the look and feel of the GUI is original, such aspects can be protected by copyright. In addition, individual elements included in a GUI may also be protected by copyright. Page 5 of 14

6 11.1 If not, can individual elements included in a GUI be protected? Trademarks 12 Can GUIs generally be protected as trademarks? If no, please answer questions 12.1, if yes, please go to question 13. Insofar as the visible signs that compose the GUI (distinctive words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels or combinations thereof) are capable of distinguishing the goods or services of an enterprise, the GUI may be protected under Philippine trademark law If not, are any types or aspects of GUIs protectable by trademarks? 13 If any type or aspect of GUIs are protectable as trademarks, under what conditions and to what extent can those types or aspects of GUIs protectable? For as long as the GUI consists of visible signs capable of distinguishing the goods or services of an enterprise, they may enjoy trademark protection under Philippine law For example, is a screen movement or transition in a GUI protectable as a trademark? A movement or transition is not expressly deemed unregistrable under the IP Code. [1] However, it must be capable of being represented graphically since trademark protection is limited by the manner of presentation stated in the Certificate of Registration, which could pose a challenge when seeking protection for a movement or transition. 1. ^ Sec , IP Code. 14 Does a GUI need to acquire secondary meaning through use in order to be protected as a trademark? Page 6 of 14

7 Provided that the GUI is not deemed descriptive for the goods and services covered, it may be protected without need of acquiring a secondary meaning. Other forms of protection 15 Does your Group's current law provide any other means for protecting GUIs that are similar in nature to traditional IP rights? 16 If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available? Currently, there is no jurisprudence applying unfair competition principles to unregistered GUIs. However, considering that the visual aspects of GUIs are generally protected under trademarks law, it stands to reason that unfair competition may apply to GUIs. Under Sec. 168 of the IP Code, unfair competition covers the fraudulent act of passing off one s goods, business or services for that of another s and such other acts contrary to good faith of a nature calculated to discredit the goods, business or services of another. Therefore, a GUI which sufficiently functions as a trademark should be protected against unfair competition in the same manner that a traditional trademark is protected. II. Policy considerations and proposals for improvements of your Group's current law 17 Does your law provide sufficient IP rights protection for GUIs? If yes, is that by means of any one or more types of IP rights protection (and if so, which), or by means of combination of those types of IP rights protection? If no, please answer questions 18, if yes, please go to question 19. Different aspects of a GUI are protected by different traditional intellectual property rights. The visual aspect of the GUI is protected under industrial design, copyright and trademark law while its technical or functional aspect is protected by copyright, which covers the underlying computer program of a GUI and by patent registration, to a limited extent. 18 If no, how is your law deficient? 19 Is your law sufficiently clear on whether and to what extent GUIs are protected by various IP rights? If no, please answer questions 20, if yes, please go to question 21 Page 7 of 14

8 20 If no, how is your law deficient in this regard? 21 Are there any aspects of your law that could be improved (for example, by strengthening or reducing the extent to which GUIs may be protected)?. It would be beneficial to clarify the administrative procedure for the protection of GUIs. In particular, specific regulations should be issued to accommodate the special nature and functions of GUIs in relation to the existing traditional forms of intellectual property protection, such as trademarks, copyright and industrial design. For example, how should an application for trademark registration of an animated GUI be made? III. Proposals for harmonisation 22 Does your Group consider that harmonisation in this area is desirable? 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., harmonization of protection over GUIs is desirable since GUIs, by its nature, are easily distributed to and readily accessible in different jurisdictions. The varying rights in these jurisdictions become problematic because these allow for a situation to arise whereby an owner enjoys diverse degrees of protection from one jurisdiction to another introducing a measure of uncertainty to the scope of protection enjoyed by it. Patents 23 Should GUIs generally be capable of protection by patents? If no, please answer questions 23.1, if yes, please go to question 23.2, a GUI, which, in general, does not cover a patentable subject matter, should not be protected by patents. Currently, the laws already provide various protection applicable to the aesthetic elements of the GUI. Hence, there is no need for GUIs per se to be further protected as patents If not, should at least some types or aspects of GUIs be protectable by patents? If so, which? Page 8 of 14

9 The functional aspect of a GUI which makes a technical contribution to the known art, should be patentable. [1] 1. ^ Section 2.3, Chapter IV - Patentability, MSEP Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? As stated above, if the functional aspect of a GUI makes a technical contribution to the known art, patentability should not be denied For example, should involvement of user's mental activities in a GUI process affect the patentability of the GUI? If so, to what extent? 24.2 Since methods of performing mental acts are non-patentable subject matter, [1] involvement of user's mental activities in a GUI process should necessarily remove the GUI from patentability. 1. ^ Section 22.2, IP Code 25 Should a physical feature be required in a claim as a pre-requisite for patentability of GUIs? Please explain your reasons, since a GUIper se is a non-patentable subject matter, to claim patentability, there must be a technical structure involved. 26 What claim formats should be available for protecting GUIs? Page 9 of 14

10 Both product and process claims should be available to product GUIs for as long as it provides an extraordinary contribution to the known art. Design rights 27 Should GUIs generally be capable of protection by design rights? If no, please answer questions 27.1, if yes, please go to question 27.2 GUIs should be protectable as designs If not, should at least some types or aspects of GUIs be protectable by design rights? 27.2 The lines or colors or forms, as long as such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft, should be capable of protection by design rights. 28 Under what conditions, and to what extent, should GUIs be protectable by design rights? Design protection should cover both static and animated GUIs For example, should screen movements or transitions in a GUI be protectable by design rights? Generally, GUIs are meant to move, transform, transition or change color. As such, and to afford the owner the necessary protection, movements and transitions of the GUIs should also be included. 29 Should a GUI be protectable by design rights independently from the design of the electronic device itself? Page 10 of 14

11 GUIs should be protectableper se, independent of the device where they are used. Since most applications that utilize the GUIs may be available in different devices, e.g. desktop computers, laptops, smartphones, tablet computers, the design protection should not be made dependent on the device. Copyright 30 Should GUIs generally be capable of protection by copyright? If no, please answer questions 30.1, if yes, please go to question If not, should at least some types or aspects of GUIs be protectable by copyright? 30.2 As long as GUIs qualify as original ornamental designs, they should be capable of protection by copyright. Said protection, however, is limited to the individual images of icons and other graphics, since a variation of which may already be considered derivative work, which are considered independent from the original thereof. 31 Should the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection?, the fact that these images are computer-generated should have no effect on the eligibility of GUIs for copyright protection. The sole fact of their creation, irrespective of their mode or form of expression, entitle them to copyright protection. While computer-generated, GUIs are dependent on the algorithms in the underlying software and pre-defined designs, which are made by humans; hence, the resulting GUIs are still considered human creation. 32 Under what conditions, and to what extent, should GUIs protectable by copyright? 32.1 For example, should the overall "look and feel" of a GUI be protectable by copyright? Page 11 of 14

12 As stated above, as long as the overall "look and feel" of a GUI qualifies as original ornamental designs, copyright protection already extends to such aspect. Trademarks 33 Should GUIs generally be capable of protection as trademarks? If no, please answer questions 33.1, if yes, please go to question If not, should at least some types or aspects of GUIs be protectable as trademarks? 33.2 Please explain your reasons, GUIs should also be afforded protection as trademarks since they are capable of distinguishing the goods or services of an enterprise. The individual images of the GUI, including the elements thereof such as the icons and other graphics, may function as trademarks identifying the source of the goods or services. 34 Under what conditions, and to what extent, should GUIs be protectable as trademarks? As long as the GUI is capable of functioning as a trademark, that is, it is capable of distinguishing the goods or services of an enterprise, then it is protectable as a trademark. 34.a For example should screen movements or transitions in a GUI be protectable as trademarks? a. Trademark protection should cover both static and animated GUIs. S creen movements or transitions in a GUI are themselves distinguishing features that may function as trademarks identifying the source of the goods or services. 34.b For example should a GUI be required to acquire secondary meaning through use, in order to be protected as a trademark? Page 12 of 14

13 a. Provided that the GUIs are not descriptive of their goods or services, GUIs should be protected as trademarks without the need of acquiring secondary meaning. Other forms of protection 35 Should there by other forms of protection for GUIs? If so, what forms of protection should there be? Please explain your reasons. As discussed above, different aspects of GUIs are already protected under traditional intellectual property rights, including unfair competition principles. 36 Should there be a sui generis right for protection of GUIs? If so, what aspects of GUIs should be protected by such a right, to what extent, and under what conditions? If yes, please answer questions 37, if no, please go to question 38. General protection under traditional intellectual property rights is sufficient. 37 Should there be any exceptions or limitations to a sui generis right in order to ensure an innovative and competitive market? If so, what exceptions and limitations should there be and why? 38 Please comment on any additional issues concerning protection of GUIs that your Group considers relevant to this Study Question As discussed above, GUIs are currently sufficiently protected under traditional intellectual property rights. However, because GUIs are fairly new, we can expect that these protections will encounter practical difficulties such as procedural and administrative issues in applying for and enforcing such rights. Further, while jurisprudence will be essential in refining GUI protection, the current breadth of Philippine jurisprudence on this matter is still lacking. Thus, there may be certain issues which are not apparent now but which may require judicial determination or even legislative action in the future. Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form: Please enter the name of your nominee for Study Committee representative for this Question (see Rule 12.8, Regulations of AIPPI). Study Committee leadership is chosen from amongst the nominated Study Committee representatives. Thus, persons not nominated as a Study Committee representative cannot be in the Study Committee leadership. Page 13 of 14

14 Bienvenido I. SOMERA, Jr. Page 14 of 14