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Seven registered design disasters, and how to avoid them

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Registered Designs are probably the least well-known of the Intellectual Property rights, but they can be a powerful and cost-effective tool, if used properly.  A Registered Design protects the appearance of a product, and can be used to prevent competitors from marketing products which produce the same overall impression on an informed user.

Of course, that’s not the whole story.  The devil is in the detail, and there are various factors which need to be taken into account to get the best protection for your designs.  Make sure you don’t fall into any of the traps below!

(This article was first published in 2013, and has now been updated March 2021)

1. You don’t register because “it’s a functional product, so registered designs don’t apply”

It is true that registered designs cannot protect “the way things work” – that is the domain of patents.  Features of the appearance of a product which are “solely dictated by technical function” are excluded from design protection.  However, this is rarely a significant limitation in practice.  A product which does a technical job will look the way it does partly because of that technical job, but there will almost certainly be a “product design” element as well.  If the product could do the same job and look different, even just a bit different, then there is potentially a design to be protected.

It is very rare that the design of a whole product is really “solely dictated by technical function”.  With that in mind, registered designs should be considered for almost any product which somebody is potentially going to look at.

Here are a few examples of registered designs for useful products which have actually been successfully enforced.

 

Coat hangerElectric skin brushBlind headrail
UK Registered design 2080944

Mainetti v Hangerlogic [2012] EWPCC 42

EU Registered design 000407747-0001

L’Oréal v RN Ventures [2018] EWHC 173 (Pat)

EU Registered design 000361118-0001

Louver-Lite v Harris Parts [2012] EWPCC 53

 

2. You disclose the design before registering

In the UK and Europe, a twelve month grace period is available for validly registering a design following disclosure.  However, you should not take advantage of this grace period without fully understanding the risks of doing so.

Most other countries around the world do not have a grace period for disclosure.  Unregistered design rights are also rare outside Europe.  By disclosing your design before filing your UK or European Design registration, you potentially destroy any possibility of validly registering your design overseas.

Furthermore, if you launch a product before filing a registered design, and a competitor subsequently launches a similar product (again, before your registration), then no action can be taken unless you can prove that the competitor copied your design.

Where the grace period is relied on, there is a burden on the design owner to establish that they are the creators of their design or a successor in title[1]. This ought not to be particularly onerous if good records have been kept, but nonetheless design owners have sometimes come unstuck on that point.

We don’t say that the grace period should never be used.  For small businesses in particular, deferring the cost of registration until the commercial success of a product has been established can be a valuable option. Reviewing your registrations within the grace period and potentially registering more designs might also be a good idea. However, at the very least you should discuss your plan with an attorney before your product is disclosed.  That way, the best strategy can be developed bearing in mind your requirements for protection at home and overseas and the need to manage your cashflow.

[1] See T-68/10 Sphere Time v OHIM

3. You update the product, but fail to register the newer version

Whether a particular competing product infringes or does not infringe a registered design depends only on whether the allegedly infringing product is or is not too close to the design which has been registered.

It is of course very common for designs of products to go through multiple versions, and almost all products which reach the marketplace will look somewhat different from the picture on the drawing board at the beginning of the design process.

For the best protection, it is vital that registrations are secured for updated versions.  Failing to do this can allow a competitor to release something which is very similar to your product, but different from your registered design.

This pitfall is extremely well illustrated by the high-profile Samsung v Apple[1] case in the Court of Appeal.  Apple relied on a European Registered Design filed back in 2004 – the iPad was not released until 2010.  The problem this caused for Apple was neatly summarised by the Judge in the case, Sir Robin Jacob.

“…this case is all about, and only about, Apple’s registered design and the Samsung products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides… Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.”

[1] [2012] EWCA Civ 1339 

 

iPad

(Image credit: Yutaka Tsutano / Flickr)

Apple’s registered designSamsung Tablet 10.1

 

The lesson is clear – if you want to protect your place in the market, keep your registrations up-to-date!

4. You don’t really consider the scope of protection provided by the registration

In contrast to a patent application, it is not necessary to describe in words what is new about your design, and what protection you are seeking.  But just because you don’t have to write it down, that doesn’t mean you don’t have to think about it!

It’s useful to keep in mind the legal definition of a design that can be protected:

“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

This definition gives a non-exhaustive list of features which might be considered to be part of a design.  It’s worth taking the time to think about each one, and which are the most important in your particular case.

For example, if your product has a new shape and a new surface pattern in a particular colour, then you need to think about what you want to protect.  If you file colour photographs showing the whole product, then potentially a product with the same shape and pattern but in a different colour might not infringe, depending on the importance of the colour to the overall impression.  Almost certainly, a completely different product with the same surface pattern would not infringe – so if you want to protect the pattern, you should consider a registration which does not include the shape of the product at all.  Likewise, a registration covering the shape without the surface pattern is probably advisable.

In the UK you can submit a short written “disclaimer” listing anything shown in the drawings you don’t want to be included. In Europe you can’t, so it is particularly critical to make sure there is nothing in the drawings which you don’t want to limit the scope of protection.

The Magmatic “Trunki” suitcase is a well-known example of a registered design which turned out to be narrower than the owner had hoped. Greyscale CAD renders were registered. The Court of Appeal found it relevant that “each of the representations shows a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other”. This was “a fairly striking feature of the CRD and it is simply not present in the accused designs”.

 

Trunki image
Suitcase

EU Registered design 000043427-0001

 

To be fair to Magmatic, the ”Trunki” design was registered in the early days of the EU design regulation and it is easy to be wise in hindsight.

5. You file inadequate representations

If you file a representation which for some reason is inadmissible, then in most cases your only choices will be either to delete the representation or to lose your filing date.

So before you file, check carefully that all your representations do in fact show views of exactly the same design (i.e. features match in different views).

Also, be mindful of the overall quality of the images you are filing – if they are so poor that the design is not clearly shown, then what you are registering is not a design, just a blur!

6. You forget to renew your UK registration

Since the UK left the European Union EU designs no longer provide coverage in the UK.

However, every owner of an EU design which was in force on 31st December 2020 was given, automatically and for free, an equivalent UK registration.

The UK design has to be renewed separately though – so don’t forget that when the renewal date for your EU design comes round, you need to renew in the UK as well.

7. You file a design without consulting an attorney

Yes, it’s easy to register a design and get a certificate.  But getting good legal protection is more complicated than that.

At Albright IP, we regularly represent clients on both sides of disputes where design infringement is alleged.  We’ve seen the problems which can arise when the registration is filed at the wrong time, showing the wrong product, or showing unimportant features.  We can advise you on exactly what to file to get the best possible protection within your budget.

If you have any questions about registered designs, design patents or IP in general, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

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Registered design infringement – what gets compared and how similar does it have to be?

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infringement

 

Quite a few years ago now, we thought it would be fun to look at some decisions on registered design validity and infringement and put together a quiz. The quiz is still available on our website. For each of thirteen pairs of designs the question is apparently simple: do the two designs shown produce a similar overall impression on the informed user? As we said at the time, the quiz isn’t really fair because by showing only the pictures of the designs, many of the background facts and considerations taken into account by the court in each case are simply ignored.

 

Similar or the same?

 

But recently someone pointed out a more fundamental issue – is it right to say that the legal test is about “similar overall impression”, or is the test that the overall impression has to be the same?

 

The EU Directive and Regulation[1] actually say neither. Rather, the test for infringement, in terms of the scope of protection, is expressed in the negative:

 

“The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.”

 

Likewise when assessing validity the test is expressed in terms of whether the design differs from what has gone before:

 

“A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing…”

 

On the face of it, that might settle the question. If something is “not different” then it is “the same”. If something is “not very different” then perhaps it is “similar” but the articles of the Regulation say “different”, not “very different”. Except that if you look to the recitals of the Regulation[2], you get more or less exactly that (emphasis added):

 

“Whereas the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus…”

 

If something doesn’t “clearly differ” then that sounds a lot like it might be “similar” even if not “the same”.

 

The “clearly differs” wording has not been carried through from the recitals into the body of the Regulation, and neither has the idea of the “design corpus”. Although the discrepancy, if it is that, has been noted at times by the courts, I am not aware that there has been any particularly definitive answer to it, in terms of the test for validity[3].

 

There is more clarity though when it comes to infringement. Indeed, the problem was tackled in the first ever EU Registered Design case to reach the Court of Appeal, back in 2007. In Procter & Gamble v Reckitt Benckiser[4] Lord Justice Jacob declined to import the “clearly differs” wording into the test for infringement, saying that “different policies are involved [for validity and infringement]”. For infringement:

 

“It is sufficient to avoid infringement if the accused product is of a design which produces a “different overall impression.” There is no policy requirement that the difference be “clear.” If a design differs, that is enough – an informed user can discriminate.”

…

“…the test is “different” not “clearly different.”

…

 

“… the court should ask whether the overall impression of each is different. This is almost the equivalent to asking whether they are the same – the difference is nuanced, probably, involving a question of onus and no more.”

 

More recently in Pulseon v Garmin[5] the Court of Appeal rejected an argument that the High Court Judge had erred by “asking himself whether the accused devices would produce an identical impression on the informed user”:

 

“In my judgment, despite the language which he chose… the judge did not apply an incorrect test. By saying that the designs did not create an identical impression, the judge was deciding that the impressions were different”.

 

The importance of overall impression

 

So, for infringement of a registered design the test is “not different”, which is almost equivalent to “the same” or “identical”. But what is it that has to be the same? It is the overall impression on the informed user. In a contested allegation of registered design infringement, the nature of the overall impression is likely to be a key battleground. After all, once the overall impression of a registered design and the overall impression of an accused infringement have been defined, asking whether or not they are the same ought to be fairly straightforward.

 

The overall impression will depend on a range of factors. It is an inherently subjective test but in an effort to try to impose some consistency, the legislators have told us that we must look at overall impression through the eyes of the notional “informed user”. Constraints on the designer must be taken into account, as well as the informed user’s knowledge of the design corpus. My previous article which went with the quiz deals with some of these factors in more detail.

 

It is clear that formulating the overall impression is a critical part of correctly assessing infringement. From Procter & Gamble again:

 

“The court must identify the “overall impression” of the registered design with care. True it is that it is difficult to put into language, and it is helpful to use pictures as part of the identification, but the exercise must be done.”

 

The importance of correctly formulating the overall impression, which could perhaps be characterized as “what the informed user thinks about the design when he sees it” is illustrated in the well known “Trunki” decision[6]. The Court of Appeal, overturning the High Court, said that the trial judge had fallen into error by failing to appreciate that the overall impression was a suitcase which looked like a horned animal. Whether that is a correct statement of the overall impression or not may be a matter of opinion. The trial judge’s assessment is not in my opinion clearly faulty but his judgement does not clearly state what the overall impression actually is, rather focusing on lists of similarities and differences and the relative importance of the similar or different features. On that basis the Court of Appeal found themselves able to come to their own view.

 

In summary then, to determine whether an accused design infringes you have to ask:

 

  1. What is the overall impression of the registered design?
  2. What is the overall impression of the accused design?
  3. Are they the same?

 

At step 1, the prior art needs to be taken into account, firstly because the overall impression will need to be formulated in such a way as to ensure that the design is valid over any particular piece of prior art, but also because the corpus of prior designs has an effect on the impact the design will have against that background. Jacob LJ again in Procter & Gamble:

 

“…if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is “surrounded by kindred prior art.” (HHJ Fysh’s pithy phrase in Woodhouse at [58]). It follows that the “overall impression” created by such a design will be more significant…”

 

For a strikingly new design, it will be possible to formulate the “overall impression” at a higher level of generality while still ensuring that it is different from any particular known design. At the same time, that higher level of generality will truly reflect the impression the informed user gets when they see a design the likes of which they have not seen before. Once the overall impression has been formulated at a higher level of generality, a wider range of different designs can be seen to have the “same overall impression” and therefore infringe the registered design.

 

Still, it is not easy to say that one lawyer’s formulation of the “overall impression” will certainly be the same as another’s, try as they both might to be objective and apply the test through the goggles of the informed user. Design infringement is always going to be an inherently uncertain question, but by carefully following the correct tests, hopefully at least some clarity can be found.

 

[1] The Directive being the source of law for EU harmonized, but national, registered designs, and the Regulation being the source of law for EU-wide “Community Registered Designs”. As far as is relevant to this article, both say the same thing.

[2] And again, the Directive is exactly the same.

[3] Though in Karen Millen Fashions v Dunnes Stores C-345/13 the European Court of Justice gave some indication that the articles simply trump the recitals, in rejecting a view that individual character had to be assessed against the design corpus as a whole as opposed to each prior design individually.

[4] [2007] EWCA Civ 936

[5] [2019] EWCA Civ 138

[6] Magmatic v PMS [2014] EWCA Civ 181 on appeal from [2013] EWHC 1925 (Pat).  The Court of Appeal’s intervention was subsequently upheld by the Supreme Court.

World First Pop-Up EV Charging Unit Trial Paves Way for Wider Roll-Out

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EV Bollard

 

A successful six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford has paved the way for a wider roll-out, say its designers.

 

The UEOne pop-up charge-point, has been developed and manufactured by product design company Duku for Urban Electric Networks Ltd at their Cheltenham design studio and protected by sister intellectual property company Albright IP.

 

The project involved designing, prototyping, testing and manufacturing 6 retractable charge points that can rise automatically when required and disappear out of sight when not in use, maintaining space on paths and avoiding visual clutter. The project was conducted in association with Oxford City Council.

 

The retractable nature of the charge-points means that they reduce the amount of street furniture permanently on view. They are straightforward and speedy to install and don’t require the use of heavy machinery – a real bonus for councils, road-users and residents alike.

 

The consortium consisting were successful in received funding by Innovate UK to realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

“This has been a fantastic project to work on,” said Duku director Alex Lee. “It addresses a real obstacle in the adoption of Electric cars – how to bring EV charging to drivers who have no-off street parking and no access to charge points near their homes.”

 

More than 40% of drivers don’t have off-street parking, with this figure rising to 85% in some parts of London which is a prime market for the short distance commuting to which electric vehicles are so well suited.

 

“There aren’t currently any viable, sustainable solutions, so we were asked to look at developing a pop-up charge-point that would allow EV owners to utilise practical and cost effective steady overnight charging at home” said Alex.

 

Using state of the art CAD technology and 3D printing, Alex and his team developed and manufactured the UEOne, a reliable and robust charge-point which users can command to pop up and connect their vehicle for charging. When the charge is complete, the charge-point is retracted out of sight. Discreet LED halo lighting indicates the location and status of the charge-point ready for the next user.

 

“Coming up with a solution that would be reliable and suitable for the installation environment was a challenge, especially when you consider existing infrastructure such as electrics and telecoms cables.”

 

To ensure accessible connection to a user’s EV, the charge point rises 800mm above the pavement surface when fully extended, so Duku had to minimise that bulk beneath the ground when retracted using an innovative telescopic design. In addition, they needed to ensure the charge-points were able to operate in all conditions that the British weather can throw at it, which during the trial period consisted of 30 degree heat, ice and torrential rain and flooding!

 

The project allowed Duku to demonstrate their flexible in-house manufacturing capabilities, with many of the components for the charge points being manufactured using recycled materials and modern production techniques such as 3D printing.

 

“This allowed us to be agile in our design development work, giving us the ability to act quickly to make design improvements that could be retrofitted to the charge points in a matter of days”

 

After trialling six units in Oxford over a 6-month period working in partnership with the city council, Duku says the results have been extremely promising, and that they are now underway on a further project to enable a roll out of the technology on a commercial, UK-wide scale.

 

“The feedback from the residents who trialled the charge points was very encouraging and emphasised the need for such technology to be reliable, accessible and avoid being a permanent eyesore,” added Alex.

 

“We also learned a good deal about user interaction with the charge-points and how to minimise the cost and disruption of installation and maintenance. We are now working on a second phase design which will incorporate additional features to make the charge points as easy to use and reliable as possible as well as further engineering that will ensure a cost-effective manufacturing process as the volumes scale up.”

 

“It has been hugely exciting to work on a project which is a genuine innovation in this sector and of real value in the move towards the widespread adoption of Electric cars.”

World IP Day – 26th April – Celebrating Innovation In a Crisis

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World IP Day

 

The arrival of the Coronavirus onto the world’s stage has brought into sharp focus the need for businesses to combine thinking on their feet with innovation and creativity. As we celebrated World Intellectual Property Day on the 26th April, it is a chance to focus on the role intellectual property (IP) rights play in encouraging innovation and creativity, Albright IP’s managing director Robert Games takes a look at how things might play out for the companies which are willing to ‘think smart’…

 

With the NHS crying out for ventilators, and personal protective equipment such as masks, scrubs and face shields, it’s those companies that can demonstrate agility and manufacturing flexibility that are proving best placed to respond. We’ve seen some great examples of businesses which have recognised the need and taken a creative approach to their design, manufacturing processes and product lines.

 

At one end of the scale, you’ve got companies like Ineos and Dyson switching design and production to hand sanitiser and ventilators respectively. Ineos have committed to building a whole new manufacturing facility in just 10 days with a planned one million bottles of much-needed hand sanitiser due to come off its production lines each day – something that will be replicated in Germany.

 

Leading from the front

 

Dyson is working in partnership with The Technology Partnership (TTP) on a brand-new ventilator design called the CoVent which can be made quickly and at high volumes. Using Dyson’s existing Digital Motor design, as well as the company’s air purification products, the new product will deliver safe and consistent ventilation for COVID-19 patients.

 

Another UK company, Gtech, more familiar with the world of household appliances and vacuum cleaners, has made two ventilator designs available free of charge (www.gtech.co.uk/ventilator) after the government decided it no longer required the company’s assistance.

 

There’s the fantastic partnership between University College London, NHS clinicians and Mercedes Formula 1 which has developed a new breathing aid which can deliver oxygen to the lungs without the need for a ventilator.

 

And there’s the VentilatorChallengeUK consortium which has brought together some big names in the industrial, technology and engineering sectors, including Airbus, BAE Systems, Ford, Rolls Royce and Siemens. They are pooling their creative resources to develop new ventilator technology at speed.

 

At the same time, Innovate UK has been leading from the front and set up a competition to encourage business-led innovation in response to COVID-19. It’s offering a total of up to £20m and the winners are due to be announced on May 1st.

 

It’s encouraging to see so many organisations putting competitiveness to one side and coming together during this unprecedented time. Keeping their innovation and creativity muscles flexed in this way will stand them in good stead once we emerge from the other side of this pandemic.

 

This continued approach to innovation will keep them better placed for whatever the next chapter looks like, as will their employees who will very likely have learned new skills and expertise. But it’s not only the world-renowned brands that are demonstrating their flexibility when it comes to addressing the current challenges being faced in the health service and wider carer sectors

 

Celebrating our local innovation

 

In the South West we have our own business heroes that should be celebrated such as Emma Willis the Gloucestershire fashion house that has turned its hand to producing scrubs for NHS frontline staff; the Charlton Kings school, Balcarras, that’s used its 3D printer to make face shields;

 

And Staverton-based company Safran has joined forces with Decathlon and Segula Technologies to produce face protection masks. The masks are adapted from Decathlon’s Easybreath Subsea snorkelling mask. They’ve also made the adaptation design available via open access to anyone who wants to make the masks using their own 3D printer.

 

Further afield is the Canadian boy scout who deserves an honorary mention! He designed and printed facemask ear guards using ingenuity and his own 3D printer. He’s now shared his creation so anyone with a 3D printer can download and print his design.

 

Keep the innovation going

 

This approach to innovation and creativity perfectly sums up what World IP day stands for and showcases the potential within all businesses to innovate when they put their mind to it. There’s a humbling generosity of focus at the moment on sharing ideas, designs, equipment and know-how, and this is absolutely how it should be if we’re going to ensure the health service, the care sector and more besides have the right tools and equipment to enable them to do their jobs as safely as possible.

 

While it’s quite right for companies to be putting collaboration first in the current climate, it’s also important for companies who want to stay ahead of the competition and grow their businesses to look after their intellectual property.

 

When we final emerge from this unprecedented chapter in our shared lives, I would encourage businesses to look back at what they’ve learned, capture any innovative ideas or processes that will help them in the future, and continue to encourage creativity among their workforces.

 

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.

 

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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.”

 [perfectpullquote align=”left” bordertop=”false” cite=”Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.” link=”” color=”#8a3594″ class=”” size=””][/perfectpullquote]

 

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.

 

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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.

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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.

 

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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.

 

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