After 11 Years Apple Gets Design Patent on Drop Down Menu

By Gene Quinn
December 21, 2010

Have you ever heard of a design patent application that remained pending for nearly 11 years? Well, if you haven’t prior to now you have now. The design patent application was originally filed on January 4, 2000, and the design patent was issued earlier today as U.S. Design Patent No. D629,412. The long and tortured path to obtain the design patent on a drop down menu took 10 years and 50 weeks! Almost unbelievable.  Getting this one patent application off the books should meaningfully help the averages, which is a sad commentary in and of itself.

In reviewing Public PAIR it becomes apparent that nothing was substantively done on this design patent application for a full 2 years. The first substantive event occurred on January 4, 2002, when the patent examiner issued a Non-Final Rejection. Prosecution proceeded forward at an excruciatingly slow pace for a design patent application, ultimately necessitating an Appeal Brief to be filed on January 5, 2004. Then the application seems to have done one of the truly great Rip Van Winkle impersonations of all time, again laying dormant for nearly 4 years. The next substantive entry is an Ex Parte Quayle Action dated December 11, 2007, some 3 years and 48 weeks after the Appeal Brief was filed, and now nearly 7 years after the application was initially filed.

In the Ex Parte Quayle Action dated December 11, 2007, the examiner explains that the obviousness rejection is being withdrawn “based on a reconstruing of the claim that emerged during the appeal conference.” I guess you could call that a successful appeal conference, but how could you characterize an appeal conference 7 years into a case a success, particularly when it took another 4 years to get a patent issued?

It seems that when the application wasn’t MIA and was actually being considered, the primary stumbling blocks revolved around the characterization of the drop down menu as conveying the impression of a translucent/transparent surface. The examiner at one point explained that translucent implies three-dimensional, and a screen is only two-dimensional. In any event, the second stumbling block dealt with the drawings and dotted lines or dashes or some nonsense. For crying out loud, couldn’t this have been done in a far more expeditious manner?

Take a look at the drawings as originally filed:

Now take a look at the drawings in the patent that issued earlier today:

OMG! To think this took 11 years!

Oh yeah, by the way, Apple managed to get a design patent on a drop down menu! The design patent explains:

The claimed design is a user interface for a computer display with a large, lower rectangle that conveys the impression of a translucent/transparent surface and a small, upper rectangle that does not convey the impression of a translucent/transparent surface.

In other words, it appears that they have acquired a design patent on a drop down menu where that which appears in the drop down part is translucent/transparent, which apparently doesn’t mean three-dimensional.

It is nonsense like this that is flat out disheartening. Of course this could have been handled better, but it wasn’t. Now we have a design patent that looks about as obvious as putting peanut butter on one slice of bread and jelly on another and combining the two and calling it a peanut butter and jelly sandwich.

Seriously, we all know what will happen with this patent. It will be picked up by the anti-patent folks and waved about and ridiculed because the Patent Office issued a patent on a transparent drop down menu. Never mind the fact that obviousness needs to be determined as of more than 11 years ago! The facts won’t be allowed to get in the way of a good narrative, and those of us who defend the patent system will be forced to deal with something that is indefensible. Who can remember whether something like this was non-obvious 11 years ago? For crying out loud, this application was filed when Bill Clinton was still President!

There is no defending this lack of process and ridiculous delay, so I won’t. Now, however, as the design patent should be close to coming off patent, we will have to deal with this pending design patent for 14 more years. You see, the design patent term starts with the issue date and there are no maintenance fees. So those of you who might be inclined to make a drop down menu where the top part is not transparent and the bottom part is transparent you will have to wait until December 22, 2024, that is if you don’t want to run the risk of being a patent infringer!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments.

  1. anon December 21, 2010 5:09 pm

    If only there was some way to search and see what documents existed 11 years ago. And then compare those search results to the claimed design to determine if the design is obvious.

  2. Robert K S December 21, 2010 6:22 pm

    Good for Apple. Provided that there actually is not any prior art that would obviate the invention–and there is no reason at this time to believe that there is–the company is well deserving of the effective “extension” of their monopoly rights for having to put up with the PTO’s bull for over a decade.

  3. Gene Quinn December 21, 2010 6:58 pm

    Anon-

    Be my guest and go and do the search if you like. I look forward to you reporting back and letting us know what you find.

    Thanks so much!

    -Gene

  4. New Here December 21, 2010 8:17 pm

    This says much that can be backed up wiith real research:
    http://en.wikipedia.org/wiki/History_of_the_graphical_user_interface#Xerox_PARC

    Also:
    http://articles.sitepoint.com/article/real-history-gui/5

    Patents must not be allowed to supersede the ideas and work of others. Without intent it is what happens and must be changed so such patents don’t happen in the first place.

  5. Robert K S December 21, 2010 9:33 pm

    Those links say nothing about transparent or translucent drop-down menus as operating system design features.

  6. Gene Quinn December 21, 2010 9:39 pm

    How about it New Here? Want to take another try with references that might be useful to invalidate the claim?

    This is the exact problem with these patents that remain pending forever. People see them when they come out and say “for crying out loud, you have to be kidding me” and they use knowledge they have, or think they have, as of the moment of issue. They never try and go back in time. Regardless of the reality of what the law requires, this type of nonsense allows those anti-patent folks to rally the troops and they ALWAYS win the PR battle. With the Patent Office inexplicably allowing a design patent to linger for 11 years they only make matters worse and make it easier for the nay-sayers to win the PR battle. That, in my opinion, is why there is a continued whiddling away of patent rights. Pathetic!

    -Gene

  7. New Here December 21, 2010 10:43 pm

    @Robert K S

    “Those links say nothing about transparent or translucent drop-down menus as operating system design features.”

    That is true, and with all respect, I never said they did. The information provided isn’t mine, however I believe it does provide some of the history of gui development. Without some history and knowing the development of such ideas, and not focus on just those transparent or translucent drop-down menus as operating system design features, will give a better idea how to follow the history to that point you mention above.

    Mr. KS,
    Pleas note, the icons on the early gui by xerox corp, do in fact have a transparent or maybe a translucent background, that is why the desktop background can be seen around the shape of the icons …as is done today. Point is transparent or translucent is nothing new though I will not argue that the tech has advanced over the years.

    @Gene

    I have done a great deal of reading and research, not to mention I go back with all this computer biz before Apple or Microsoft were even names anyone knew …thats 36+ years ago.
    I am if you are taking about me ? Anti-Bad patent ! No one is jumping up in their underware over a false patent alarm here Gene !
    And as for “continued whiddling away of patent rights”, I know nothing about that Gene, right ?

  8. New Here December 22, 2010 3:34 am

    Add to #7:
    It was never my intent, to invalidate this or any patent here on a forum, oh come on really !

    “they use knowledge they have, or think they have”

    That is a thought Gene, because everyone’s knowledge is different and that is from both users and developers points of view. I as many have both from the past 36+ years, and know what I used over those years — so what other knowledge should I use when I see something, I see is wrong having invalidate power or not ?

    Enough, best wishes and Happy Holliday everyone. I will spend time with my family this weekend and through the first of the new year. Enjoy life and family — as both are always more important.

  9. Michael Feigin, NJ NY PA Patent Attorney December 22, 2010 12:34 pm

    Umm… didn’t Xerox have a drop down menu in the late 70s? This is a total waste of money for Apple. What does it get them? If I have a drop down menu positioned in a different way, my guess is that it wouldn’t even be infringing.

  10. New Here December 22, 2010 1:33 pm

    @Michael Feigin

    May I add some background please.

    In a graphic as a menu box in a gui, it’s dimensions are defined, and with only the dimensions defined there is no color or fill of any kind unless defined as well — so the default state is transparent ! Nothing is placed inside because dimensions alone are just a map of space. Note, this can be done in simple HTML with style that dimensions are defined for example a . The result is a default transparent map of space.

    The menu box however is a container, meaning it can “hold” other things within it. Making it translucent ( one way to do it ) is a map of only a number of fill elements spaced apart in some per-defined pattern within some mapped space ( menu box ) defined by dimensions. So, to the Human eye, that sees it as a whole, it seems to be translucent being able to see through to some extent.

    The pull down comes in from a graphic of defined dimensions ( a menu box say ) with the “pull down” being a starting point at some defined fixed point within a larger graphic ( desktop ), and is rendered is some direction ( down ) from that fixed point. A menu box will carry with it, all it contains when “called”.

    To my knowledge, early Xerox had much of this worked out, though not real eye candy then, but was real different for its time.

  11. Roland December 22, 2010 4:52 pm

    I think this is actually quite an interesting article (particularly once I dug around a bit), and discussion point around what can/cannot be covered by a patented, albeit a design patent.

    I wonder if a key discussion point was around ‘Fill’, as this is a normal property/attribute of a graphic object such as a rectangle and hence a debating point as to whether changing this from ‘solid’ to some other specific value is non-obvious.

    For those who are looking for prior art, I recommend a quick google. I googled ‘transparent menu’ and got this as my sixth result: “AN EXPERIMENTAL EVALUATION OF TRANSPARENT MENU USAGE”
    , a paper from 1996, with reference going much further back. So we can conclude that translucent/transparent user interfaces are not new, what is potentially new is their implementation within the Apple Mac style of user interface. Hence this is probably more about protecting the specific look and feel of the (updated) classic Mac user interface than preventing others from implementing translucent/transparent user interfaces.

    What I’m not sure about is whether the delays todate have been in Apple’s interest.

  12. pacelegal December 23, 2010 4:25 am

    I am from Oz but I was under the impression it has to be an improvement on the prior art, something distinct and non-obvious. It doesn’t protect look and feel, and changing it slightly doesn’t make it non-infringing. Having one thing transparent over another thing doesn’t give the appearance of transparency as pointed out by Michael . Rather it gives the appearance of the two things being merged into one.

    I don’t know what their interface actually looks like, but from the drawings it appears they are trying an artistic rendition of a transparent object to give the appearance there is actually an object there.

    The transparency distorts or alters the image of what is down below, even in the part where it bleeds through, whereas normal transparency on computers I’ve seen, the transparency normally just means you can see what is underneath the overlaying imaging. It just allows the layers down below to bleed through. It sounds fundamentally different to have the appearance of transparency by showing the glimmering glass above, and any kind of distortion you do down below. So if you look at a goldfish in a tank of water, you have the glass and water distorting it, whereas if you look at a goldfish in the air that appears quite different.

    Is that what the argument is? If they are to be successful I assumed it had to have a functional aspect to it, although I am not a Patent Attorney and I am from Oz. A user interface is a functional thing, and lots of aspects of the design can incorporate functional elements, and if you have innovation, fair enough, but if it doesn’t provide even the slightest functional improvement, I can’t see how it is an improvement on the prior art if it looks nicer. I guess in the look and feel cases I guess that is that what Lotus was trying to do in getting copyright over their interface.

    I am getting a tad confused.

    It seems to me that any kind of transparent overlays are obvious.

    I don’t see how you could patent that!

    All kinds of user interfaces and webpages have transparent coloured objects so that you can see the thing underneath it, particularly at the time it was applied for.

    I would be interested to know what the prior art was back then.

    @NewHere re: “they use knowledge they have, or think they have. That is a thought Gene, because everyone’s knowledge is different and that is from both users and developers points of view. I as many have both from the past 36+ years, and know what I used over those years — so what other knowledge should I use when I see something, I see is wrong having invalidate power or not ?”

    I thought the standard was the knowledge of a not so inventive professional working at the field at the time….havn’t got the precise formulation but maybe it is different in Oz.

  13. IANAE December 23, 2010 10:29 am

    I don’t see how you could patent that!

    This is a design “patent”. They’re not real patents. That’s why you Aussies wisely call them simply “designs”.

  14. IANAE December 23, 2010 1:22 pm

    What are these please:

    They’re designs.

    Sure, we call them patents, but:

    – The rest of the world doesn’t,
    – They’re not really examined for novelty or inventiveness,
    – Their subject matter has no utility (on purpose!),
    – They don’t really have written descriptions,
    – They don’t really have claims,
    – The courts have decided that claim construction isn’t really appropriate for them,
    – The infringement analysis comes down to looking at pictures, and behaves suspiciously like trademark infringement…

    What part of them looks like patents to you? Is it because they’re mentioned in Title 35?

  15. New Here December 23, 2010 1:53 pm

    @IANAE

    “What part of them looks like patents to you? Is it because they’re mentioned in Title 35?”

    IANAE this has nothing to do with you …but why call them patents at all ?
    If I’m wrong about them, well so be it, and I am willing to learn to get it right. But having more then one meaning for “patent” isn’t a good idea imho seeing what “real patents” are and mean to their owners. I ask please, why is “patent” used for them ?

    Thanks in advance.

  16. Gene Quinn December 23, 2010 2:40 pm

    New Here-

    Having one name for one thing would make all the sense in the world, but is really a foreign concept for patent law. One example is this… there is something called the “experimental use exception.” That very same terminology refers to two completely different things, one under 102(b) and the other relating to infringement and whether what a university might be doing (for example) is an experimental use and therefore not infringing.

    One thing that causes even more problems for the public, and which I think leads to the unjustified animosity toward patents, is the fact that we use the word “patentable” to mean two entirely different things as well. When we say something is “patentable subject matter” we mean it has crossed the exceptionally low threshold of 101. We also say something is “patentable” after it has satisfied all of the so-called patentability requirements, of which patentable subject matter under 101 is but a single requirement.

    Utter nonsense! In any event, design patents are really patents in name only. They do not cover the way a thing operates or functions, just the way it appears. They are more akin to copyright protection than anything else.

    Cheers.

    -Gene

  17. pacelegal December 24, 2010 5:56 pm

    “I don’t see how you could patent that! This is a design “patent”. They’re not real patents. That’s why you Aussies wisely call them simply “designs”.

    Yes we do call them design patents. I know the US nomenclature is different. BTW sorry for hijacking the conversation.

    @ Gene I agree in one sense it makes sense to call something one name globally, but in another sense it doesn’t as IP is a global phenomenon. Even though I understand this intellectually, it still seems counter-intuitive because I am from Oz land so I wonder what the average member of the public in Oz thinks about the differences in Oz and US.

  18. TINLA IANYL December 27, 2010 4:25 pm

    “I was under the impression it has to be an improvement on the prior art, something distinct and non-obvious”

    U.S. law specifically does not require “improvement” or “advantage.” In fact, the subject matter can be distinctly disadvantageous compared to the prior art and still be patentable under U.S. law. That is one of the major differences between U.S. law and the laws of other countries. It is true that it has to be new and non-obvious, but that just means it has to look like a new design as opposed to a variation of a previous design (i.e., not substantially similar to point that there is a liklihood of confusion), and it can’t look like a mere combination of two previous designs. Given that, do you think that a traslucent/transparent drop down menu is not novel and non-obvious over opaque drop down menus, translucent/transparent icons, and combinations thereof? It’s not enough to say it would be obvious to make this menu transparent. The prior art in a design case needs to be an image or combinable images that would be confusable with the image in the application.

    “changing it slightly doesn’t make it non-infringing”

    The requirement for “substantial similarity” should really be viewed as a requirement for “significant similarity.” It is a liklihood of confusion standard, and that’s not just a “possibility” of confusion, but a very strong liklihood. Think of it as the difference between an obvious copycat of a design, and an actual knockoff. The knockoff infringes, while the obvious copycat does not.

  19. patent litigation December 28, 2010 2:44 pm

    I like your point about how the USPTO’s delay in issuing this patent has created ample ammunition for the the anti-IP crowd. Sometimes it’s tempting to dismiss such folks as extremist or poorly uninformed; but, in truth, the USPTO sometimes creates its own PR nightmares.
    http://smallbusiness.aol.com/2010/05/10/how-to-file-a-patent/

  20. Blind Dogma December 28, 2010 7:03 pm

    U.S. law specifically does not require “improvement” or “advantage.

    Careful TINLA with that talk based in actual legal understanding. You are bound to fluster those that demand that something is “broken” in order to support the notion of having patents.

    There are some who will have none of that actual leal basis creep into discussions based purely on “good ideas.”

    Can I offer you a glass of Kool Aid?

  21. Prof. Lulz December 29, 2010 10:23 am

    This case is exhibit A in the trial of the PTO’s docketing policies, procedures and systems. PTO docketing is stuck in the late 1970’s, maybe early 1980’s (if you’re feeling generous) and needs to be brought into the 21st century. No firm or institutional filer would allow a case to languish like this. The fact that the PTO can allow an application to sit around for months, even years, with no change in its status and a docketing call up or reminder to force some action is simply aggregious. Mr. Kappos needs to bring in somebody from the outside, not necessarily a practitioner, but somebody who has experience in modern day docketing procedures and software and get them to completely overhaul the PTO’s docketing. It can’t wait, Mr. Kappos. You’ve got to act now.

  22. Patent Buster December 29, 2010 10:33 am

    http://www.google.com/patents?id=GngIAAAAEBAJ&zoom=4&pg=PA1#v=onepage&q&f=false

    Look at figures 4-5b and 11. And claim 15.