Patent law Essay

The situation makes it obvious that Ursula is having problems getting a patent registered for the method she developed to create superlight pastry dough. It is crucial to first determine the ownership rights of the registrable interest before discussing patent rights. Therefore, the first topic to be addressed is who is the rightful owner of the process’ patent—Ursula or her employer Lottie’s? The question of whether she actually has a patentable idea is another. Moreover, it is imperative that she is advised on the process of registering a patent.

Whether Ursula or her employer owns any potential patent of the process

Section 39 of the Patents Act 1977 stipulates instances where an employer has rights over the inventions of the employee. S. 39(1) provides that the worker relinquishes their right over a patent if they made it during the course of their normal duties within the place of employment or if they had a special obligation to further the employer’s interest in a certain undertaking. In Ursula’s case, she worked on the invention during her holidays in the previous year. Her mother can testify to the fact that she was informed at the time when Ursula was working on the invention. Moreover, it is arguable that her mother also added some input for the process when Ursula contacted her. Although she is a former employee of Lottie’s herself, at the time of the creation of the process, neither of them were operating under their normal scope of duties at work. As such, s. 39(2), protects the invention as Ursula’s because it falls out of the scope of inventions which the employer can take credit for.

Ursula’s case differs from LIFFE Administration and Management v Pavel Pinkava where the courts held that an employee’s duty does not have to be contractual if it has evolved over time. The judges decided that in some instances, such obligation may be implied by law. The reference was of employees such as directors who have a fiduciary duty to their organizations albeit Ursula does not work in such a capacity. Furthermore, Ultraframe UK Ltd v Fielding, provides further justification for Ursula’s ownership of the invented process because she was not working at Lottie’s when she invented the process. In the case, the court held that the employer had no right to the invention, despite the fact that the employee was a director because at the time of creating the invention, the employee was not working at the organization. Ursula should apply to the Comptroller in order to claim ownership over the process she invented.

However, it is also important to assert that in the instance that Lottie’s would be deemed the rightful owners of the patent; Ursula still has recourse under s. 40. The Comptroller or Court can be petitioned under S. 8, to grant compensation because her employer will benefit financially from her process. Each case on patents is decided based on its own merit as opposed to strict adherence of past decisions as was postulated in Research in Motion UK Ltd. V. Inpro Licensing SARL and Lantana v Comptroller-General of Patents. The remuneration she can acquire would be based on the outstanding benefits which the employer would gain, and whether the comptroller deems it necessary to award her additional compensation.

Whether the process by Ursula is a patentable invention

For an invention to be deemed patentable, it must pass the test of novelty, entail an inventive step, not be part of the scope of S.2, 3, and 4, which prescribe inventions which are precluded from being termed inventions and have the ability to be industrially applied. The prescribed conditions connote what an invention is as the Courts declined to further clarify on its meaning in Biogen Inc. V Medeva plc.

Exclusionary list on non-patentable inventions

The process invented by Ursula does not fall under the exclusionary list consisting of copyrightable works and inventions against public policy or morality amongst others. It also fails to meet the scope under Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd of a method of controlling traffic which is the only addition to the non-exhaustive list of non-patentable inventions.

Novelty

In SmithKline Beecham Plc’s Paroxetine Methanesulfonate) Patent, the Court held that an invention can only be deemed as a novel idea if its features are unanticipated by previous disclosure. For anticipation to be established, two determinants: enablement and prior disclosure have to be analyzed. In General Tire & Rubber Company Limited, the Court of Appeal held that a creation which if carried out would infringe on another patentee’s patent is anticipated and as such, not a new creation. Actavis UK Ltd & Ors v Eli Lilly & Company also contributed to the discourse by establishing that a feature may infringe even if it is different from another patent; as long as it is equivalent to another claim. Prior use was contemplated in Milliken Denmark AS v Walk Off Mats Ltd and Anr, and Loadhog Ltd. V Polymer Logistics whereby it was established that inventions which have already been availed to the public for use cannot be considered as new. In Ursula’s case, there is no reason to think that her process is already in use in the public domain. Moreover, there is no evidence that she has derived it from any other similar process.

Inventive step

The third determinant which should be analyzed is whether Ursula’s invention satisfies the inventive step. In Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, the court established that the test for obviousness, and not whether an invention is commercially exploitable, should form the basis of determining whether the inventive step is fulfilled. The view was delineation from previous decisions which placed an emphasis on the test of commercial exploitability. The position has been accepted in later cases including Molnlycke AB v Proctor & Gamble Ltd and Hallen Co. V Brabantia (UK) Ltd where the courts held that S. 3 of the Act does not exclusively apply to ‘commercial obviousness’. The test, as later refined in Pozzoli SPA v BDMO SA, should focus on whether: the invented claim can be identified, if an unimaginative but normally skilled addressee in the particular art can state what was the common knowledge in the art as per that time, whether there are differences between the current claim and the known state and whether such knowledge can be determined to have a degree of intervention.

In Ursula’s case, the process relates to a specific way of kneading dough which increases elasticity of gluten fibres thereby allowing for super light dough that can be used to create a variety of pastry. The procedure is not one that is currently known within the field as Ursula spent time working on it, having to consult with her mother who was a retired chef. Moreover, it constitutes an inventive step because it solves a problem that no other person had been able to improve until she did. Moreover, cases such as Hickman v Andrews and Optical Coating Laboratory Inc. v Pilkington P.E. Ltd may assist Ursula in her claim because since her invention’s commercial usefulness may be considered in establishing that it is not obvious as it fulfils a ‘long-felt want’..

Industrial application

The last step that Ursula has to fulfil is that of industrial application established in cases such as Chiron Corp v Murex Diagnostics Ltd and Other and Eastman Kodak Co. V American Photo Booths Inc.. The courts assert that an invention should be capable of being used in any type of industry. In Human Genome Sciences v El Lilly, Lord Neuberger established a four-pronged test, for establishing industrial application as: disclosing practical application and profitable use; having a concrete benefit whereby the industrial practicable nature must be derived from the direct description in addition to common knowledge; not merely speculative; and enable other skilled persons to exploit or reproduce the invention without having to carry out an elaborate research. Ursula’ process fits the test as it is beneficial to other pastry chefs as well as people who can bake; is not speculative as she has described it thoroughly thereby enabling other users to be able to do so without undue burden.

Process of registering the patent

S. 7(2) contains provisions on the registration of patents by an inventor. In Henry Brothers (Magherafelt) Ltd v Ministry of Defence and the Nothern Ireland Office, the Court of Appeal decided that for inventorship to be determined, two factors: inventive concept and the person who devised the concept must both be established. Ursula, as person who came up with the process, can apply for a patent and not her mother despite having given information that assisted in the invention. The position was stated in Stanelco Fibre Optics Ltd Applications’s case whereby Christopher Floyd QC posited that a mere disclosure of an idea can not in itself make one an inventor. In Minnesota Mining & Manufacturing Company v Birtles, Lovatt and Evode Ltd, and Statoil ASA v University of Southampton the courts held that an inventor is the person who substantially contributes to the combination, in case more than one person was involved in the creation, rather than the person who made some partial contribution to it. Consequently, Ursula is the inventor in this case and should therefore apply for a patent. In University of Southampton Applications, the Patents court propounded that it is difficult for persons who bring a claim against an inventor to succeed because they first have to prove on a balance of probabilities that their contribution was relevant and substantial.

Ursula should prepare a patent application as per s. 14(1), and file it through the Intellectual Property Office (IPO), European Patent Office or the World Intellectual Property Organization. A search should thereafter be requested from the IPO and received within six months. The application is published after eighteen months after which the inventor should seek a substantive examination. IPO can conduct an examination after several years and decide whether to grant or deny the application. The assessment is based on whether the disclosed specification is complete and clear enough to be put into practice by a skilled person in the particular art, in this case being a pastry chef. Such was the decision in Wobben v Vestas-Celtic Wind Technology Ltd and Zipher Ltd v Markem Systems Ltd. To determine sufficiency of information provided Medimmune Ltd v Novartis Pharmaceuticals UK Ltd, Medical Research Council should be considered. In the case, the court propounded that insufficiency can be of three types: classical, ambiguous and of an excessive claim nature.

Ursula passes the test of both classical and ambiguous insufficiency as per the cases of Kirin-Amgen Inc v Hoechst Marion Roussel and Zipher Ltd v Markem Systems Ltd. In both instances, the process, as described by Ursula, should be easily understood and carried out by a skilled person in the field she is in, which is working in a bakery. However, as relates to insufficiency due to the excessive claim breadth, Ursula’s invention may fail the test. In Nokia GmbH v IPCom GmbH & Co KG, the courts held that disclosure of the invention must be thorough enough for the entire scope of the invention to be undertaken. The case was backed by s. 72 (1) and s. 14(3) of the Patents Act. Since the entire scope of operation of the process invented by Ursula cannot be determined, as it can be used to create many types of pastries, there is a possibility that her claim will fail.

Conclusion

In case Ursula’s application for a patent is granted, she would enjoy monopoly of ownership of the process for twenty years. In that period, she can grant a licence to any potential users, including Lottie’s, for a fee. Any infringement of her patent would result in her getting damages upon instituting legal proceedings in a court of law.

Bibliography

Books

Bently, Lionel, and Brad Sherman, Intellectual Property Law (Oxford University 2014)

Cornish, W.R., David Llewelyn, and T. Aplin, Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights (4th edn, Sweet and Maxwell 1999) 314.

Philips, Jeremy, and Alison Firth, Introduction to Intellectual Property Law (2001) 79

Journal Articles

Patterson, Mark R. “Contractual Expansion of the Scope of Patent Infringement through Field-of-Use Licensing.” [2007] Wm. & Mary L. Rev. 49, 157.

Heller, Michael and Rebecca Eisenberg, “Can Patents Deter Innovation? The Anticommons in Biomedical Research” [1998] 280 Science 5364, 698-701

Websites

Intellectual Property Office, ‘Manual of Patent Practice’ (Government.Uk, 19 February 2016) accessed 6 January 2018.

QUESTION 3: TRADE MARKS

A trade mark can be defined as a sign which has the ability to differentiate one organization’s services or products from those of others. In the outlined scenario, it is evident that the issues faced by Iqbal relate to trade mark law. The first issue is whether he can register the colours green and brown for his gardening tools. The second relates to whether the sound of applause can be a registered trade mark while the last concerns the expression ”whiter than white”. All three marks are part of the non-conventional trademarks. Moreover, it is imperative to assess whether Iqbal can be protected under any other law for the three signs even if he has not registered them as trademarks.

Whether Iqbal can register the colours green and brown for his gardening tools

According to Section 3 of the Trade mark Act, for a sign to be registered as a trade mark, it must be capable of graphic representation, have a distinctive character and be devoid of exclusive descriptive indications. Moreover, it should not be generic, contrary to public policy, morality, or be applied for in bad faith and be unique from the natural shape based on the nature of the goods to be registered. Colours can be considered trade marks because they can be graphically depicted as was held in Sieckmann v Deutsches Patent- und Markenamt. In Libertel Group BV v Benelux- Merkenbureau, the ratio decidendi was that colours, of themselves, can be used as a badge of origin thus being capable of being a trade mark as long as the requirements of distinctiveness and durable, precise and accurate description are met. There is difficulty in establishing colours as being distinctive mainly because the viewpoint of a consumer is considered in making a decision. Since it is difficult for a person to make a connection between the colours, green and brown, and any brand developed by Iqbal, it would be difficult for him to prove that the colours are distinctive.

In Societe des Produits Nestle SA v Cadbury UK Limited, the Court of Appeal further held that for a colour to be considered a trademark, precision had to be established. Unlike the case wherein Cadbury could argue that its clients could distinguish between the colour purple used on its products because of a long period of usage, Iqbal cannot. The colours green and brown are common colours used in farming products because they are generic in nature to plants and the earth. However, Iqbal can improve his legal position, in order to make the colours registrable as a trade mark, by using the colours in collaboration with another registered or registrable trade mark in order to make it capable of registration, as was held in the same case.

In Shield Mark B. V v Joost Kist the courts further posited that a sign has to be able to convey some information. The colours by Iqbal, per se, do not communicate any information about the gardening tools he wishes to sell using the brand. In fact, the colours are considered quite common in the farming sector since they are reflective of green plants and soul. A registrable interest in such colours would therefore give Iqbal an undue advantage since he would be in a position to exclude other persons in the farming sector from using colours which are common in their field. However, coupled with other information, for example, a sign made of sound; it is possible to create a distinct sign which would be easily credited to Iqbal’s gardening tools, thereby making the colours registrable.

Whether Iqbal can register the sound of applause for event management services

S. 32 (2) (d) and S. 1 posit that a sign must be capable of being graphically represented for it to be considered a trade mark. The position was reiterated in Shield Mark B.V. v. Joost Kist whereby the court upheld the trademark of 14 trademark sounds only because they could also be construed through the written notes. Iqbal’s clapping sounds fails the test of graphic representation, as the sounds have not been graphically noted. Moreover, the applause sound does not meet the test in the aforementioned case of being objective, durable, intelligible, accessible, self-contained, precise, and clear. However, it is also possible that the type of applause which Iqbal has come up with is quite distinctive based on a new creation or sequence. In such a case, as long as he can graphically depict it, for example through capturing it in a recording, he can have a registrable interest of it.

Whether Iqbal can register the phrase ‘whiter than white’ as a trade mark

In Vin v Kigongi Ltd, the courts asserted that the provisions of the Trade Marks Act had to be used as guidance in determining whether a phrase is a trade mark. The test for distinction is particularly important in assessing whether the phrase is a trademark. In Eurohypo AG v OHIM, the court, basing its decision on the Community Trade Mark Regulation’ Article 7 (1)(c), posited that the word ‘Eurohypo’ lacked distinctive character because public interest would be avoided if the public was misled by the words as to the true identity of the brand. The phrase ‘whiter than white’ in respect of a stain removal product may be misleading to consumers because it would connote the superiority of the brand over any others. Moreover, granting a trade mark to Iqbal would preclude other manufacturers in the cleaning industry whose products can accomplish the same goal. The phrase Similarly, the phrase ‘whiter than white’ can be used in a variety of areas including dental hygiene as well as in detergent products. The words are quite common in usage and as such, are not a unique invention capable of being registered. The fact that Iqbal currently lacks distinct detergents in the market makes it difficult for him to be protected under trade mark law.

Moreover, based on OHIM Doublemint v Wim Wrigley Junior Co, the courts followed the stipulation of s. 3 and the case of Chiemsee to determine that any descriptive mark is not legally protected by the law on trade marks. Since the phrase ‘whiter than white’ is descriptive, it is as such not under the scope of the registrable trademarks under the Act.

Protection based on S. 2 of the Trade Marks Act

S. 2 (2) provides protection for unregistered trade marks based on the common law of passing off. Iqbal is therefore protected in case he uses the signs he has come up with at his meeting with the venture capital firm. The protection is based on the idea that a person who uses a mark, whether having registered it or not; acquires ‘goodwill in relation to it. Other requirements that have to be fulfilled in the ‘trinity test’ are reputation and customers as per Reckitt & Colman Products Ltd v Borden Inc. As such, although it would be difficult for Iqbal to acquire trade marks for the signs he has come up with, he can gain some protection through the law of tort which would prevent other users from using his ideas as long as he meets the requirements outlined.

In Maxwell v Hog, the court established that reputation without customers is insufficient. However, Iqbal can be said to have both reputation and customers through his business with the venture capital firm as in the aforementioned case, mere advertisement was held as sufficient for proof of customers and reputation. Showcasing ideas can be argued to be similar to advertising. However based on the cases of Alain Bernadin et Cie v Pavilion Properties Ltd and Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd, where the courts held that the requirement of reputation is only fulfilled where a person has customers and a reputation within the United Kingdom, one client may be insufficient for Iqbal to seek the passing off remedy. It is pertinent that he proves that he has more customers within the nation. As at the moment, it is unclear whether Iqbal already sells the products which he has developed signs for.

Goodwill was first propounded by Lord MacNaghten in IRC v Muller & Co’s Margarine as the reputation or advantage in connection to one’s business. According to the UK Supreme Court in Starbucks (HK) Limited and another v British Sky Broadcasting Group plc and Others, goodwill only comes about as a result of commercial use and not the reputation from the use of the mark. Cases such as ConAgra Incorporated v McCain Foods (Aust) Pty Ltd and Grupo Gigante S.A. de C.V. vs. Dallo & Co., from Australia and the United States, respectively, also upheld the decision. Consequently, it is imperative that Iqbal begins using his marks for commercial gain, albeit he can also state that showing them to the Venture capital enterprise was in a commercial context where he hoped to receive some profit.

In the event that all three requirements are established, Iqbal would have to prove misrepresentation and damages for him to get a remedy through the courts. Iqbal would be awarded compensation for any harm or loss incurred by the infringement of his marks, despite not having registered them, as long as he institutes legal proceedings on the same.

Conclusion

Although Iqbal may be unable to get a registrable interest under the Trade Mark Act; he has the common law protection under the law on ‘passing off. The doctrine would enable him to get damages in case his ideas were taken by someone else, for example, venture capitals. In case the goodwill test is fulfilled, it would be easy to get compensation if any other person misrepresented themselves and caused and infringed on his ideas.

Bibliography

Books

Bently, Lionel, and Brad Sherman, Intellectual Property Law (Oxford University 2014)

Cornish, W.R., David Llewelyn, and T. Aplin, Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights (4th edn, Sweet and Maxwell 1999) 314.

Philips, Jeremy, and Alison Firth, Introduction to Intellectual Property Law (2001) 79

Journal Articles

Bartkowski, Megan. ”New Technologies, New Trademarks: A Review Essay.“ [2010] J. Contemp. Legal Issues 19, 431.

Basma, Dima, ‘The Nature, Scope, and Limits of Modern Trademark Protection: A Luxury Fashion Industry Perspective’ (DPhil dissertation University of Manchester 2016)

Websites

Parrish, David, and Ashley Roughton, ‘United Kingdom Trademark Law’ (World Trademark Review, 2017) accessed 6 January 2018

PLC IPIT & Communications, ‘ECJ Clarifies Criteria for Refusal of Mark for Lack of Distinctive Character in EUROHYPO case’ (Thomson Reuters, 2008) accessed 6 January 2018.