CASE LAW
- Clarification as to the patentability of surgical methods
- Designs rejected for being solely dictated by technical function
- Extent of use required for a Community trade mark to establish a reputation
- Patent attorneys become part of the skilled team
- Is use of a trade mark in one country sufficient to establish genuine use?
- Contributory infringement of patent rights
- Invalidity of registered design for a hidden part of a complex product
Clarification as to the patentability of surgical methods
The much anticipated decision G1/07 of the Enlarged Board of Appeal (EBA) of the European Patent Office has issued, which provides guidance as to how the exclusion from patentability of treatment by surgery should be interpreted under European law. Regrettably, the EBA has chosen to provide answers to the referred questions that are fairly specific to the case under consideration, rather than a set of definitive rules for all cases. However, in the reasoning behind the decision some useful pointers have still been provided.
The EBA noted that the exclusion was not just for surgery that had a therapeutic purpose; this would not reflect the purpose of the exclusion, which was to free the medical profession from being hampered by patents. Non-therapeutic surgery such as cosmetic surgery and sterilisation still required considerable medical expertise due to the serious nature of the physical intervention and practitioners should be free to carry out such work.
However, a definition of surgery as any non-insignificant physical intervention was broader than required to achieve the purpose of the exclusion. Procedures such as hair removal by optical radiation and microdermabrasion were routinely carried out in cosmetic salons. Equally, safe and routine procedures for obtaining diagnostic data, potentially by an invasive step such as injection, did not require exclusion from patentability, when considering the public health interest.
The EBA therefore indicated that the exclusion should cover interventions that are the core of the medical profession’s activities, for which its members are specifically trained. Interventions of the kind that involve a health risk, even when carried out with professional care and expertise, should be excluded, whereas those that are “uncritical”, involving minor intervention and not normally presenting any significant health risk, should be open to patentability. When the intervention involves administration of a potentially risky substance, there would be an exclusion from patentability only where a health risk is associated with the actual method of administration.
It was stressed that the technical reality of the method must be assessed on a case by case basis to decide whether the exclusion applies. The specific case in question involved the injection of a contrast agent into the heart, and the EBA found that “A claimed imaging method in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability…”.
It was indicated that a claimed method does not escape the exclusion by the inclusion of additional, non-surgical, steps. However, the use of a disclaimer to the excluded subject matter is possible, provided the established rules on disclaimers are met. Equally, an amendment could be made to remove the excluded matter, subject to the relevant requirements being met, such as basis for the amendment and the claim not becoming so broad that its scope is not supported or lacks clarity due to not setting out the essential features of the invention.
Designs rejected for being solely dictated by technical function
Two Board of Appeal decisions at the Community Registered Design Office (OHIM) have clarified European Union law relating to designs with a technical function. Article 8(1) of the Community Designs Regulation requires that a registered Community design (RCD) cannot subsist in features of appearance of a product that are solely dictated by its technical function.
RCD No. 253778-0001 was the first ever RCD to be declared invalid due to being solely dictated by the technical function of the product in which it was incorporated; subsequently the Board found RCD No. 273644-0001 invalid for the same reason. The designs related to a chaff cutter and a bag for packaging foodstuffs respectively, as shown below.
The Board of Appeal considered the previous legal views on the exclusion and decided that the multiplicity-of-forms approach, which suggests the exclusion applies only if the technical function could not be achieved by any other configuration, was flawed. This approach would mean that if a purely technical solution could be achieved by two alternative methods then theoretically both solutions could be the subject of a design registration. This would have the consequence that no-one else would be able to manufacture a competing product capable of performing the same technical function. This would be akin to patent protection.
The Board therefore decided that the wording of the law and a purposive approach to its interpretation favoured the conclusion reached in the 1971 UK case Amp v Utilux. Under this approach, the exclusion denies protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance.
It was clarified that it is not necessary to determine what actually went on in the designer's mind, but rather an objective assessment by a reasonable observer should be used to ask whether anything other than purely functional considerations could have been relevant when a given feature was designed. Further, the fact that a feature is denied protection under the exclusion does not mean that the design must be declared invalid. The design as a whole will be invalid only if all the essential features of the appearance of the product in question were solely dictated by its technical function.
However, for the chaff cutter it was ultimately decided that “every essential feature of the design has been chosen with a view to achieving the best possible technical performance” whilst for the bag “the essential features…have been chosen with a view to designing a product that performs its function. None of those features has been chosen for the purpose of enhancing the product's visual appearance.”
Ironically, the UK courts have now adopted the multiplicity-of-forms approach. On the other hand, the French courts have abandoned it in favour of the Amp v Utilux concept.
Extent of use required for a Community trade mark to establish a reputation
The case of PAGO International GmbH v Tirolmilch Registrierte GmbH discussed what constitutes “reputation” within the European Union (EU) in respect of a Community trade mark (CTM). Owners of CTMs with a reputation in the EU can stop third parties taking unfair advantage of that reputation, or causing detriment to it.
PAGO owned a CTM for a green glass bottle device, which was used in relation to a fruit juice widely known in Austria. Tirolmilch started packaging its own drink in glass bottles which resembled the PAGO registration. PAGO brought an infringement action against Tirolmilch in Austria and sought an injunction throughout the EU, on the basis of its CTM registration and the reputation enjoyed by its mark in Austria.
The Austrian Supreme Court decided that for correct application of the EU law in this case it required guidance from the European Court of Justice (ECJ). It therefore asked the ECJ to clarify whether, if a mark has a reputation in only one country of the EU, this is sufficient to be deemed a reputation throughout the EU.
The ECJ concluded that if a CTM has a reputation in a substantial part of the EU, then it must be deemed as having a reputation in the whole EU. The ECJ ruled that in this case Austria did constitute a substantial part of the EU. Therefore, as PAGO’s CTM was well known within Austria, this was enough for the CTM to be deemed to have the required reputation in the EU.
The determination of reputation in a substantial part of the EU did not require at least a certain percentage of the EU public being aware of the reputation. The extent of the reputation could be assessed by taking into account any relevant factors, but in particular “the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it”. However, it is unclear from the decision on exactly what basis Austria was regarded to be a substantial part of the EU.
This decision is good news for owners of CTMs who only have a reputation in their trade mark in one EU country. However, depending upon the criteria applied and the circumstances, smaller EU countries might not be deemed to be a substantial part of the EU.
Julia House and Rosanne Jenkins
Patent attorneys become part of the skilled team
In a recent UK Court of Appeal decision, the subject of the litigation between Virgin Atlantic Airways Ltd and Premium Aircraft Interiors Ltd was Virgin’s Upper Class airline seat. These seats are able to flip over so that the back of the seat forms a flat bed. In the UK High Court, Virgin’s patent had been found to be valid but not infringed by Premium’s seat, which did not flip over. However, this decision was partly overturned by the Court of Appeal, which found that the patent was valid and infringed.
Virgin argued that the invention protected by its patent was not specifically related to the flip over nature of the seat, but instead to the feature that the seat extended into a particular space created by a herringbone pattern in the plane. This feature was found to be present in Premium’s seat.
This case brought up several points on how the patent scope should be interpreted by the notional “skilled man” or “skilled team”. In particular, the decision strongly indicated that the skilled team would not just be interpreting the technical content of the patent as a published document but would also be aware of the nuances of both patent drafting conventions and patent prosecution.
The UK Court of Appeal decided that a skilled team would obtain advice from a patent attorney when reviewing a patent. Therefore the skilled team would be aware of the practice of filing divisional patent applications and the resultant split in coverage of the subject matter. This meant that the interpretation of the patent could be influenced by the awareness that certain aspects of the subject matter mentioned in the patent were specifically protected in different patents within the chain of parent and divisional applications.
The question of how a skilled team would be influenced by the use of a two-part claim
form was also discussed. A two-part claim has all the features that are part of the prior
art defined first, followed by the new feature or combination of features in the second,
characterising, portion of the claim. It was decided that the skilled team would be aware
of this convention and would be strongly influenced by this when it interpreted the
patent. Equally, the inclusion of reference numerals would not influence the skilled team
when determining the breadth of protection; such numerals are not intended under
European practice to be limiting.
Is use of a trade mark in one country sufficient to establish genuine use?
The Benelux Office for Intellectual Property (BOIP) has recently ruled that use of a Community trade mark (CTM) in a single country of the European Union (EU) is insufficient to constitute “genuine use” of a trade mark within the EU. Under EU law, a CTM can be revoked on the basis of non use if within a five year period the proprietor has not put the CTM to genuine use.
Hagelkruis Beheer B.V. applied to register a CTM for the trade mark OMEL. Leno Merken B.V., the proprietor of an earlier CTM for the trade mark ONEL, filed an opposition to the OMEL application and in support of its opposition was requested to file evidence of genuine use of the mark in the EU. Leno had only used its trade mark in the Netherlands.
The BOIP held that as the EU covers 27 countries, and is likely to expand even further, use in one country did not justify retaining the broad protection provided by a CTM. Therefore the opposition was rejected and the OMEL mark was allowed on the register.
This ruling has been widely criticised as being contrary to the founding principles of the CTM and the aims of developing business in a single market. The Community Trade Mark Office (OHIM) has also issued a press release reaffirming its view that use of a trade mark in a single EU country can be sufficient to constitute genuine use throughout the EU.
The decision of the BOIP has been appealed and therefore it remains to be seen whether the higher level authorities choose to follow this controversial decision.
In the meantime, in light of this decision, trade mark owners will need to carefully consider where their CTM is being used and, wherever possible, should ensure it is used as widely as possible within the EU. Otherwise, they might not be able to rely on it in order to take action against conflicting marks.
Julia House and Rosanne Jenkins
Contributory infringement of patent rights
The UK High Court judgement in the case of Boegli-Gravures SA v Darsail-ASP Ltd has given further guidance as to what constitutes contributory infringement. Under the UK Patents Act a patent is infringed if a person “supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the fairly specific to the case under consideration, rather than a set of definitive rules for all cases. However, in the reasoning behind the decision some useful pointers have still circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK”.
In this case, the claimed product was a device for sanitizing and simultaneously embossing packaging foils “…comprising at least two embossing rolls that are connected to a driving system”. The defendants supplied rolls into the UK, but no other part of the claimed device. As such, they did not infringe the claim on a primary basis but had provided an essential element of the claim.
However, the defendants had only been shown to have supplied rolls into the UK after an order had been placed by an undercover agent acting for the patentee. The patentee was not able to prove that the rollers had been supplied to anyone who was a person“other than a licensee or other person entitled to work the invention”; therefore this supply could not infringe.
The patentee’s fall back was to argue that the supply was evidence of a threat and intention to infringe. In this regard, it was noted that the defendants made no enquiries as to whether the person whom they were supplying was authorised to work the patent. Therefore the defendants would, apparently, have supplied the rollers regardless of whether the agent was acting on behalf of the patentee or an unauthorised party. This was sufficient for the court to find evidence of a threat to carry out contributory infringement.
The issue of whether Darsail’s web site could be held to be an offer to sell within the UK was also considered. It was decided that the website was an offer to supply the disputed rollers, despite the fact that the website did not provide an option to click and purchase. However, the website was directed to the world at large and it was found that the average customer within the UK of the relevant goods would not regard the site as being aimed and directed at him. At most it was an offer to supply customers who included customers in the UK and thus it did not constitute an offer to supply in the UK.
Invalidity of registered design for a hidden part of a complex product
A registered Community design (RCD) has been found invalid for being invisible during normal use of the product. The RCD 000831995-0002 protected a design for a vaporiser for an aromatic odour neutralizer, as shown below. Instructions provided with the product as sold indicated that it was a refill product, for use within an air-freshener housing.
The Community Registered Design Office (OHIM) was asked to consider whether the
design was invalid for failing to fulfil the requirement that a design applied to, or
incorporated in, a product that constitutes a component part of a complex product may
only be considered to be new and to have individual character if the component part,
when incorporated into the complex product, remains visible during normal use of the
latter. “Normal use” is defined as use by the end user, excluding maintenance, servicing
or repair work. It was suggested that the vaporiser was hidden within the air-freshener
housing during normal use and therefore a design for the vaporiser could not validly be
the subject of a RCD.
In defending the invalidity case, the proprietor argued that that the vaporiser was an independent product in itself and could be used without a housing. A print out from a website indicating this possibility was produced as evidence.
However, the Invalidity Division of OHIM found the proprietor’s evidence unpersuasive because it related only to a theoretical possibility. The only “real” use of the vaporiser was held to be use together with a housing, as indicated in the instructions provided with the commercial product. In such a use, the vaporiser was hidden within the housing. The RCD was therefore declared invalid because it lacked any visible feature that fulfilled the requirements of novelty and individual character.
Meanwhile, in an appeal decision on RCD No. 253778-0001, the OHIM Board of Appeal clarified the meaning of the requirement that a component part of a complex product be visible in normal use. The RCD related to chaff cutters, which are the rotating cutting parts of shredding machines. In normal use, the cutting parts are typically obscured by waste material placed in a hopper above the parts, and even when not so obscured, rotation prevents the features of the parts from being seen.
However, when waste material is delivered to the shredder by truck, the driver views the cutting parts using a mirror for safety reasons, whilst if delivered by conveyor belt, a safety camera is used to monitor the shredding process. The Board held that this was enough to consider the cutting parts as visible; the component part need not be visible in its entirety at every moment of use but rather it was sufficient that the whole of the component could be seen some of the time, in such a way that all its essential features could be taken in.
The Board suggested that component parts which are not visible in normal use are excluded in principle from RCD protection because “no-one cares what they look like”. It therefore appears that if something is in the least part visible in normal use, the law considers that there is at least a possibility that someone might care what it looks like, and so it may qualify, in principle, for protection.
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