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Get Out On The Highway – What exactly is the PPH programme, and is it worthwhile?

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PACE vs. PPH

 

The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.

 

In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.

 

What exactly is the PPH programme, and is it worthwhile?

 

Earlier Work Products

 

The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.

 

This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.

 

Requirements

 

There are specific requirements for participation in the PPH programme.

 

  1. The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.

 

  1. The earlier application must have at least one claim therein indicated as allowable.

 

  1. The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.

 

  1. PPH must be requested before the EPO begins examination of the European application.

 

Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.

 

Should I Use PPH Acceleration?

 

The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.

 

This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.

 

What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions

 

PACE vs. PPH

 

Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.

 

  • I want to bring my European application into alignment with an already-granted patent in another jurisdiction.

 

  • In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.

 

  • I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.

 

  • In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.

 

  • I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.

 

  • A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.

 

  • I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.

 

  • The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.

 

Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.

 

The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Cost-effective biotechnology searches in the UK

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If you have an invention in the field of biotechnology, you should consider filing a UK patent application first. It could save you money on search fees, and give you an idea of patentability in Europe without even filing a European patent application.

 

UK co-operation with Europe

 

Biotechnology-related applications have been accumulating at the UK Intellectual Property Office (UK IPO) for some time, partly due to a lack of suitably qualified examiners.

 

The UK IPO has invested in recruiting and training new examiners, according to their press release, but it will take time for those examiners to become fully proficient at what they do. This is expected to remain the case until sometime in 2019, based on a letter in March 2018 from the UK IPO to the EPO (see Annex 1).

 

In the meantime, the UK IPO has established an agreement with the European Patent Office (EPO), which came into force on 1st July 2018. The agreement will see some biotechnology applications sent over to the EPO for an official search. The first batch of applications to be searched was sent to the EPO in November 2018.

 

How could this benefit you?

 

The official search fee for a UK patent application is normally £150 (GBP). The official search fee for a patent application filed at the EPO is normally €1300 (EUR). The UK IPO will decide which applications get sent to the EPO for a search, and this is expected to be around 200 to 300 applications per year. If you’re lucky, your UK patent application might be one of the ones searched by the EPO, seemingly without the need to pay the much higher European search fee.

 

In addition, if you later file an equivalent application at the EPO which claims priority to a UK application searched by the EPO, the EPO search fee will be partly or fully refunded. Details of the exact level of the refund vary – see the EPO Official Journal of January 2019 for further information.

 

Is it worth patenting in the UK first?

 

It may be a bit of a lottery as to whether your application will be searched by the EPO. However, if it is sent to the EPO for searching, then you may get a direct indication of patentability in Europe before incurring costs for filing a European patent application. Similarly, for a PCT application which has not been searched by the EPO, entering the UK national phase early could be a good strategic move, since you may get an EPO search before you decide whether to incur significant costs for European regional phase entry.

 

Even if you are certain to file in Europe, filing a UK patent application first might still be a good idea, if the EPO-sourced search report includes the usual written opinion. This could be very valuable indeed, particularly if there are objections to sufficiency or plausibility which can be difficult to resolve after filing. Instead, you may get advance knowledge of potential problems and be able to pre-emptively update the patent specification before you file in Europe.

 

If you’d like further advice on patents or any other aspect of intellectual property protection or enforcement, please contact us to speak with one of our qualified attorneys.

 

New Report on Design Infringement in the UK

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The UK IPO has recently published a report based on four-years of research into the attitudes and actions of ‘design-right owners’ when encountering infringement of their IP (intellectual property).

 

The purpose of this research is to provide an insight into two aspects:

  1. What are the reactions of ‘design-right owners’ when they discover an infringement of their IP.
  2. What legal rights designers value.

 

This research was deemed valuable, as there has been a lack of data on the consequences and outcomes of IP infringement.

 

The key findings of the report are as follows:

  • 98% of ‘design-right owners’ have experienced infringement of their IP.
  • When an infringement(s) is discovered, the most common course of action is to correspond with the other party.
  • 43% of the respondents are not prepared to pursue legal action, as they consider it to be too expensive. This is despite the fact that many had lost considerable sums in revenue due to infringement and staff hours in defending their IP.
  • ‘Design-right owners’ consider the effectiveness of the various IP rights in the following, descending order:
  • Patents
  • Trade Marks
  • Registered design rights
  • Copyright
  • Unregistered design rights (also known as ‘UDR’)

 

Interestingly, analysis of court cases from 2013 to 2017 reveals that unregistered design rights (UDR) are more frequently at issue than registered design rights.

 

In fact, whilst 50% of registered design rights are successfully defended, unregistered design rights enjoy a significantly higher percentage of successful litigation at 70%.

 

The level of infringement experienced should hopefully bring home to design right owners that design registrations can be a useful, powerful, and a relatively inexpensive strategy to adopt, to protect their IP and to ward off infringement.

 

IP rights are about creating value in your business by putting up hurdles and roadblocks to competitors. Despite the general reluctance by ‘design-right owners’ to get embroiled in disputes, having two angles of attack by using both registered and unregistered design rights will certainly increase a design owner’s likelihood of success against a copyist, along with increasing attractiveness to an investor.

 

Another particular advantage with registered design rights, as opposed to UDR, is that it allows e-commerce platforms, such as Amazon and eBay, to take down infringing listings extremely quickly.

 

As a word of caution, applicants of registered design rights can often make critical mistakes which destroy their rights.

 

Be aware that an opponent, when faced with your assertion of infringement, will try and knock your intellectual property rights out. If you have taken the ‘do it yourself’ approach to save money, do not be surprised that, when push comes to shove, your rights easily fall over and the copyist escapes.

 

Even if the application process appears ‘easy’, there are decades of legal cases which define and hone the current law. If you are serious about your legal protection, ask for professional assistance.

 

Furthermore, the report suggests that UDR is often overlooked by design right owners as a right to rely on to pursue infringement.

 

Design right owners are strongly advised to seek professional legal guidance, when they encounter infringement, to best understand the available course of action to defend their IP.

 

It is also hugely beneficial to seek legal advice early, thereby ensuring that appropriate IP protection is in place before you launch your new design publicly.

 

As a final parting thought, also be aware of IP Insurance which will cover you for pursuit and defence of all your IP rights. IP Insurance is a ‘before the event’ policy, and so does need to be in place before infringement has occurred. It can be utilised as useful extra leverage to encourage settlement.

For further information relating to design protection, or pursuing or defending design right infringement, please do not hesitate to contact one of our attorneys, who will be very happy to assist.

Albright IP and Duku get to root of the issue for dental client

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Albright IP and sister product design company Duku have helped Harley Street Dentist Phillip Davies and Hygienist Laraine Wright to solve an everyday issue, with the launch of a new patent pending product line called Techsurg.

 

The product, which hit the markets in early 2018, is designed to give dentists and their patients better access to dental accessories, Phillip Davies explains:

 

“The development of the Techsurg product range originally led from finding a smart and hygienic solution to place much needed tissue boxes within easy reach for the customer.  We developed a number of design solutions and prototypes before finalising on a multi-use product, which holds a variety of items attached by a universal strap to the dentist chair.”

 

With a global market worth $7bn leading dentists invest heavily in the latest equipment presenting their customers with a modern, clean and high-tech surgery to attract and retain customers.

 

With Albright IP and Duku’s help we now have a unique product with multiple applications

While there is a large product range for high tech chairs, instruments, x-ray machines and lighting, there was a clear gap in the market for Techsurg, added Laraine Wright: “We knew that there had to be a better solution to using rubber bands to mount tissue boxes, and while it seems a simple problem to have, the adopted solution of rubber bands was undesirable and a poor reflection of the high-tech standards of modern dentistry. With Albright IP and Duku’s help we now have a unique product with multiple applications from tissue boxes to entertainment, delivered in a clean, sleek, more professional way.”

 

Driven by an ageing population and an increase in cosmetic dentistry the UK dentistry market is very competitive. Last year, consumer spending on dentistry reached around £3.8bn, a growth of 12%. With over 12,000 practices in the UK and a lot of consumer choice, dentist practices not only need to deliver the very best customer experience but ensure that they set themselves apart from the competition.

 

Alex Lee, Director at Duku commented “Consumers want their dentistry to be delivered in sleek, stylish and hygienic dentist practices. Surgeries need to be practical and enable dentists to offer the best service and customer experience for their clients.”

 

The solution includes a silicon rubber grip designed to fasten around the different diameter poles common to dentist chairs. This was complemented by a patented twist-release bracket to allow easy attachment of different items.

 

Alex added “Of course, hygiene was a number one priority and our design solution was focused around developing a wipe clean product, using materials that were suitable for washer disinfection.”

 

Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.

 

Robert Games, Managing Director at Albright IP, responsible for securing the IP commented: “Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.  This not only protects it from being copied but instantly builds value in your company which you can leverage for investment.”

 

“While there are thousands of different straps out there, the Techsurg product has unique protectable features. Not only is it protected in numerous countries across the world, but our client Techsurg will be able to benefit from the Patent Box tax incentive with up to a 50% reduction on corporation tax from sales of the patented product.”

 

With patent protection, manufacturing and packaging design in place, the product was put into production through Duku’s manufacturing partners. Today the product range is being sold across the leading Dentist equipment suppliers.

 

For more information on Techsurg go to www.techsurg.co.uk

“Poor Man’s Patent” – Fact or Fiction?

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Poor man's patent

 

Poor Man’s Patent – Fact or Fiction?

 

From time to time the phrase ‘Poor Man’s Patent’ gets thrown around, seeming to imply there is a free or low-cost way of obtaining protection for your invention or idea. Below, we discuss what a ‘poor man’s patent’ actually is, and why it may destroy the chances of you ever commercialising your idea.

 

Postmarked Sealed Envelope

 

A quick internet search reveals that the phrase ‘Poor Man’s Patent’ is most well known in the US.

 

writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date

 

This involves writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date. This was considered third-party verified proof of the date of your invention.

 

If someone else then came up with the same idea subsequently, the postmarked envelope could then be opened with witnesses present, proving that you originated the idea on at least the date of the postmark.

 

This information is still available but is dangerously out of date. If you follow the advice for a ‘poor man’s patent’ these days, you will potentially irrevocably destroy your chance of obtaining a valid patent later on, and therefore destroy your chances of monetising your invention. It is that critical.

 

In the US before 2013 the above strategy could, in theory, give you the right to a patent to the idea, even if someone had already filed their own patent application to the idea first.

 

At that time, the US was a ‘First to Invent” patenting system’ Therefore, proving when you had the idea first was as important if not more so than filing the patent application to lay claim to the concept.

 

The US has since changed to a ‘First Inventor to File’ patenting system in line with the majority of the rest of the world, Sealed envelopes containing your ideas on paper as explained above now count for little or nothing in all the major patenting systems worldwide. And, in fact, using the ‘poor man’s patent’ approach will these days do more to harm you protecting your idea then it will help you.

 

Copyright

 

Having said that, the ‘sealed envelope technique’ is still relevant for Copyright purposes. For example, it can help to prove when you came up with a drawing or a work of literature before a certain date, if someone has copied you.

 

Registered Design

 

A registered design (also called a ‘design patent’ in some territories, such as the US) protects the appearance of a product.

 

Therefore, if someone copies the ‘look’ of your product and you have a registered design or design patent, you can enforce your rights against them.

A registered design is nearly always cheaper to obtain than a patent

 

A registered design is nearly always cheaper to obtain than a patent (unless you have multiple products that all look slightly different but work in the same way), so it may be considered a “Poor Man’s Patent”.

 

Having said that designs do not protect the way a product works. Designs rights do not protect the ‘technical concept’ of an idea – that is for a patent. Therefore, if someone makes a product which does exactly the same thing as your product, but has a different exterior ‘look’ to it, your registered design will not protect it.

 

Registered designs are more useful in addition to a patent, or if it looks new but the concept is well known.

 

DIY “Provisional” Patent Application

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent.

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent

This is effectively where you write down the details of your invention and file it at the patent office but don’t file claims, and potentially some other required parts with it.

 

Before the first anniversary of the filing date, you can have a professional write claims for it and complete the application, hopefully once the business has taken off and you now have more funds.

 

There are many dangers to this approach. Some are outlined in our earlier article here. But, in essence, you can only use the original date of filing for the matter you originally filed. If the new claims that you add downstream need additional matter to word them effectively, then this new or added matter would potentially be invalid if you had sold the product or disclosed details of it before filing the new claims (such as marketing the idea to investors, setting up a website to promote the idea, or putting a Kickstarter funding proposal together to raise funds).

 

Conclusion

 

Professionally patenting your invention may, on first appearance, appear to be an expensive business. But, if you are serious about protecting your idea, a professionally drafted patent application is the only way to go.

Cutting corners in the early stages of an idea or business can seem attractive, but it will likely cost more in the long run to fix the mess you might end up in.

We often see clients that have deals on the table, but have jeopardised themselves by not investing in their patent and trade mark rights at the beginning, leading to significant issues completing the deal they have worked so hard to arrange.

In short, do not use the ‘poor man’s patent’ approach. These days, it is worse than useless. Do it properly or do not do it at all. Treat patenting and trade marking as an investment; ask questions of your professional legal advisor, and make an informed decision before you disclose your ideas.

 

Albright IP Brexit update: May 2018

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The United Kingdom is scheduled to leave the European Union on the 29 March 2019. Whilst the precise terms of exit are yet to be agreed, in March 2018, the European Commission and the UK published the first draft of a Withdrawal Agreement. This is the most comprehensive document to date, although each of the proposals are open to further revision.

 

The Withdrawal Agreement touches on the post-Brexit administration and scope of EU intellectual property rights, including EU Trade Marks (EUTMs) and Registered Community Designs (RCDs).

 

The proposed Transition Period:

 

The Withdrawal Agreement provides that the transition period will end on 31 December 2020. It is envisaged that during the transition period i.e. from 29 March 2019 to 31 December 2020, the applicable European Union law will still be effective in the United Kingdom. Consequently, EUTM and RCD rights will continue to be valid and enforceable in the United Kingdom until at least 31 December 2020.

 

In addition, UK IP practitioners will retain their rights of representation before the European Intellectual Property Office (EUIPO) until at least 31 December 2020.

 

Points of agreement:

 

In terms of existing EU intellectual property rights, both sides have voiced the intention to create equivalent “cloned” UK rights, with the same filing, and priority dates and with no examination required. The proviso is that the rights in question are granted or registered before the end of the prescribed transition period.

 

“The holder of any of the following intellectual property rights [EUTMs/RCDs/Plant Variety rights] which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom.”

 

Points of uncertainty:



What currently remains unclear, is the administrative procedures that will be put in place to transform and/or extend EU IP rights by the end of the transition period.

 

For trade mark rights that are pending at the end of the transition period, the owners will be allowed nine months to request a transfer and re-examination to the UK IPO, in order to retain the original filing and/or priority dates. This is very likely to incur an additional fee, and an inevitable delay in protection being granted.

 

A separate issue also to be addressed is the entitlement to representation at the EUIPO for UK practitioners, in a manner that will give reassurance to UK based rights-holders that they can continue to trust in the professional relationships that have been established.

 

The draft agreement remains silent in respect of unregistered designs. At present, the UKUDR is not a comparable replacement for the European UCD.

 

Summary:



For IP rights holders, as the months towards Brexit and the end of transition pass, seeking to secure separate UK and EU trade mark and design protection from the outset, is recommended. Whilst there are some reassurances that granted rights will be ‘cloned’, there is currently no parallel comfort being offered for pending applications.

 

Whatever the outcome of the Brexit negotiations, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

 

Unjustified Threats: What you need to know

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In the UK, a person who is threatened with an action for infringement of intellectual property rights (either Patent, Design right or Trademark) can sue the ‘threat maker’ where the threat is unjustified, or groundless. A threat would be considered unjustified if it is made in a situation where there is no valid right, or where there has been no infringement.

This provision can be problematic for IP rights holders seeking to enforce their rights. However, there is about to be a change to the law in the United Kingdom regulating unjustified threats within the IP sector. These changes will be delivered in The Intellectual Property (Unjustified Threats) Act 2017, which received Royal Assent on 27 April 2017, and is expected to pass into law in October, this year.

This article aims to reiterate what you need to know about unjustified threats and summarise the important changes created by this new Act.

1, A new test for establishing whether a communication constitutes a threat:

The Act provides a new test for establishing whether a communication constitutes a threat. The test is as follows:

  • Through the perspective of a reasonable person in receipt of a communication.
  • The reasonable person must construe that an IP right exists
  • The reasonable person must construe that someone intends to bring infringement proceedings.
  • The communication must be in respect to a potentially infringing act done in the UK, or if done, would be done in the UK.

If these criteria are met then a threat has been made, if this threat is unjustified then an action may be taken against the threat maker.

2, Changes to whom may bring an action

Under the new provision an action cannot be brought if the threat relates to “primary infringement”. What constitutes “primary infringement” varies between the different IP rights, but often includes the manufacture or importation of goods. If a threat of infringement proceedings is made against someone who is a ‘primary infringer’ then no action can be brought against the threat maker. Under the new regime it is also possible where an act of primary infringement has occurred, to threaten proceedings in respect of related “secondary infringing” acts (such as the sale of goods).

3, Introduction of the concept of permitted communications:

The new legislation introduces a list of permitted communications, these are forms of communication which may not be construed as an unjustified threat, providing they are made for a permitted purpose. Permitted purposes include; giving notice that a right exists, and necessary correspondence to establish if the right is being infringed.

4, Professional advisors’ exemption

An additional provision being introduced under the new legislation, makes it is no longer possible to bring an unjustified threat action against professional advisors, barristers, solicitors and IP Attorneys, acting on behalf of a client.

In Summary

The new legislation does not wholly dispense with the potential issues arising for IP right holders seeking to enforce their rights; they remain at risk of actions alleging threatening behaviour. However, the bias extant in the previous law, has been partially redressed. Doubtless, the incoming Act highlights the importance of seeking specialist advice when confronted with need enforce IP rights against a potential infringer. Here at Albright IP we are fully equipped to help your business navigate this complex area of law.

Catching that elusive Travel Fox

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Travel Fox International Incorporation (TFII), a footwear retailer, from Taiwan is on the hunt. The prey in this incidence is the elusive Mark “TRAVEL FOX”, but there is a problem. SDI (Wigan) IP Limited, the now dormant Intellectual Property subsidiary of sportswear giant Sports Direct, has got there first.

SDI (Wigan) IP Limited originally filed for the trademark, in respect of a line of shoes, on the 25th September 1989. Seeking to get the existing Mark revoked TFII made an application to the UKIPO on the 6th February 2016. The decision and outcome of this application has caught our attention. The evidence provided to demonstrate that the pre-existing “TRAVEL FOX” Mark was still in genuine use and not redundant included design drawings, photographs of a trainer as sold, and screenshots from online retail outlets selling the footwear within the disputed period.

This evidence showed, although the brand was being used within the relevant period, the Mark itself was not being used as originally registered. The original version of the trademark can be seen below:

The “TRAVEL FOX” Mark itself incorporates the logo on the left-hand side and the words Travel FOX immediately to the rightTravel Fox.

What did Travel FOX Change?

The images provided of the trainers as sold, showed that the trademark had evolved. The words ‘Travel FOX’ were used on the inside of the tongue of the shoe in plain non-styled capitalised lettering alongside an unregistered variant of the logo, and with the original logo displayed prominently on the exterior of the trainer. The evolution of the Mark in this case creates two interesting questions to consider, Firstly, does the change of font and capitalisation in the Travel FOX lettering affect the distinctive character of the Mark; and secondly, does the variation in the spatial positioning of the components of the Mark alter the distinctive character.

When considering the questions the Appointed Person reasoned that neither the adoption of plain capital script with a variant logo, or the placement of the two elements of the Mark on different locations of the same product, would significantly alter the distinctive character.

This decision (if followed), ultimately means brand owners will be afforded some flexibility in how they develop and use their trademarks without having to register all elements of a composite Mark separately. However, the reasoning in the particular decision is not arbitrary, and turned largely on the specific facts of this case.

Albright IP recommend that trademark owners still take active steps to register new evolutions to their trademarks, and that they seek to register the individual components in as far as possible. By so doing, they will avoid uncertainty, and be in a position to defend or enforce their rights, as befits any future situation.

 

Brushbaby fails to brush off design invalidation

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design toothbrushThe UK Intellectual Property Office (IPO) is generally known for granting patent, design and trade mark rights based on suitable applications. It is perhaps less well-known for invalidating or revoking those same rights, which can be more cost-effective than achieving the same thing through the court system. A recent design hearing decision (O/086/17), issued near the end of February 2017, serves to show why you should consider filing for both patent and design protection before your product is made available to the public.

What happened?

A US patent application for a baby toothbrush was filed in April 1996. The application was granted a year later in April 1997 under the patent number US5,615,443. The patent has changed hands a few times, but will expire on 1st April 2017 – it probably is time to change that toothbrush, after all.

A grand total of nearly 13 years after grant of the US patent, in March 2010, Brushbaby* filed a UK design application to protect the external appearance of the toothbrush, presumably having reached a commercial agreement with the proprietor of the US patent. The UK design application subsequently became registered, before more recently becoming the subject of an invalidation action, which succeeded.

Why was the design found to be invalid?

A design needs to be “new” (i.e. non-public) at the time of filing. The decision runs through some of the nuances of UK exceptions to public disclosure. The relevant test here is whether a design ‘could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned’.

The UK design application included the same images of the toothbrush as originally presented in the US patent. There were also a couple of supplementary drawings not found in the US patent, but the Hearing Officer found that those ones were “unclear and they do not clearly show any material difference in the way in which the product has been made”. In other words, the additional drawings did not serve to establish a different scope of protection for the design.design

The decision reached was that there was prior disclosure, due to the US patent publication, seemingly on the basis that the USA was ‘too large to ignore’ (see point 25 of the decision). Therefore, since the drawings were identical, the design was not new, and so the Hearing Officer ordered that it be struck from the register, subject to appeal (it is still listed as registered as of 16th March 2017).

Not so much toothpaste as ‘copy and paste’

The lesson to learn here is that design protection needs to be taken as seriously as patent protection. The same basic rules apply – file for protection before you disclose your product publicly. Otherwise, you may not be able to register your design, and if you do it is likely to be invalid, i.e. unenforceable.

It is worth bearing in mind that you may still be able to protect a design if it differs in some way from an already-disclosed design. The test in the UK and Europe is whether the design confers a “different overall impression on the informed user”. Also, it is possible to seek US design protection from a pending US patent application. Therefore, all may not be lost if you need to obtain design protection after your design has become public, but you should seek advice quickly.

If you need advice on getting design protection for your product or packaging, please contact us today to speak with one of our qualified attorneys.

*Note that the decision (O/086/17) wrongly refers to Bushbaby Ltd – The proprietor of the UK design is listed on the UK Design Register as Brushbaby Ltd.

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