1 MauroNewMedia New York Software Partnership Forum The Increasingly Important Role of GUI Design in Software Patents Charles L Mauro CHFP President / Founder ext. 101 V.2 Draft New York, USA Certified Human Factors Engineering Professionals

Copyright MauroNewMedia, Inc All rights reserved Confidential information 2 MauroNewMedia The Software Business Problem The Changing Asset Value of Software ► The asset value of infrastructure software is decreasing. ► The action in terms of business asset value is no longer in the code but in the interactive customer experience (GUI) which the code generates. ► The most valuable software assets are combinations of utility, design and copyright protection that define an innovative and easy to learn overall user experience for a given product or system. (the ultimate technical/business problem)

Copyright MauroNewMedia, Inc All rights reserved Confidential information 3 MauroNewMedia Example: Apple’s Asserted Patents = The Apple UX ► Apple initially accused Samsung of infringing: ► ‘381 patent: touchscreen interactions ► ‘915 patent: using an API to scroll through documents ► ‘163 patent: tap-to-zoom ► ‘677 patent: general outline and ornamental design ► ‘087 patent: general outline and ornamental design ► ‘889 patent: ornamental design ► ‘305 patent: GUI for a display screen ► Samsung countersued, accusing Apple of infringing: ► ‘914 patent: mobile phone 3G capabilities ► ‘516 patent: mobile phone 3G capabilities ► ‘711 patent: MP3 playback on a mobile device ► ‘460 patent: device that functions as a phone and a camera ► ‘893 patent: method for remembering user’s place in a gallery Apple UX Long-form post PulseUX: Apple v. Samsung: Impact on user experience design and software development for-product-design-user-interface-ux-design-software-development-and-the-future-of-high- technology-consumer-products/

Copyright MauroNewMedia, Inc All rights reserved Confidential information 4 MauroNewMedia Recommendations for Improving Software Patent Prosecution ► Create a scaled set of responses with compulsory levels of hurdles that a given type of software application must pass in order to gain protection under USPTO examination. ► 3 levels of rigor possible (Straw man): 1.The most rigorous prosecution level: code only, and no expressed GUI layer that solves an expressed technical problem. The examiner would require complete and explicit detail related to the engineering benefits and innovations of the claimed invention with proof that invention solves an actual technical problem. Examples from across main programming languages presented to the examiner in same format as legal test (educate examiners on litigation tests for software: Abstraction, filtration,…etc.) 2.Less rigorous prosecution level: code with expressed GUI layer defined in functional terms (usability-based claims) but not with detailed screen design or interaction attributes claimed in detailed manner. (Expression of GUI narrows application dramatically) 3.Least rigorous prosecution level: software patent application expressed entirely as a GUI solution presented in visual and interactive design configurations which can be claimed under utility, design patent and copyright frameworks. These are detailed screens with exact interactions presented in line drawings, animations, patent claim language and copyright documentation. The examiners would coordinate patent applications from the practice groups of GUI and Software to arrive at a suitable allowance profile.

Copyright MauroNewMedia, Inc All rights reserved Confidential information 5 MauroNewMedia Additional Recommendations to USPTO Outreach ► Conduct similar partnership forum on GUI protection ► Coordinate communications between PA of software and GUI ► Short-term: expand the copyright protection scheme to cover GUI more completely based on issues of functionality.

6 MauroNewMedia Thank you Charles L Mauro CHFP President / Founder ext. 101 New York, USA Certified Human Factors Engineering Professionals