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Design Rights - Protect the outward appearance of all or part of a product. Two types, registered and
unregistered.
Differences:
Registered Design Rights: Unregistered design rights
governed by the Registered Designs Act were created in the Copyright, Designs and Patents Act
1949 and Registered Designs 1988
Regulations 2001
lasts for 25 years from creation generally lasts 10 years if starts to sell
give the owner a monopoly right give the owner a right to prevent copying
RDR UDR
Statute RDA 1949 as amended by Registered Designs Regulations 2001 CDPA 1988
Definition Appearance of whole or part of a product resulting from features Any aspect of:
of, in particular: (a) shape,or
(b) configuration of the whole or part of an article
(a) lines
(b) contours NB no right subsists unless the design is recorded in a
(c) colours document or an article has been made to the design
(d) shape
(e) texture or materials
(f) ornamentation
‘Product’ includes packaging, get up, graphic symbols, typographic
typefaces and visible parts
Originality New: no identical design/design differing in only immaterial details Must be original, ie must be:
has previously been made available to public, and Individual (a) the result of independent effort ie not copied, and
character: overall impression to informed user differs from that of (b) not commonplace in design field in question
any other design that has been made available to public, and The
design has not been made available to public: ie not published,
exhibited or used in the trade
Exclusions (a) features solely dictated by technical function (a) methods of construction
(b) interface (mechanical fittings only) (but modular designs are (b) must fit
registrable) (c) must match
(d) surface decoration
Ownership Commissioner; the employer; the designer, in that order Commissioner; the employer; the designer, in that order
Infringement Making, offering, putting on market, importing or exporting any Primary: making articles to the design/ making document for
product incorporating the design or any design which does not purposes of making articles. Need to prove copying:
produce a different overall impression. substantial similarity is enough.
No need to prove copying Secondary: import, sell, hire, offer, possess with
knowledge/reason to believe is an infringing article.
NB private non-commercial acts are excluded
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REGISTERED DESIGN RIGHTS (RDR) 16.1.1
New – S.1B(2)
Individual Character – S.1B(3)
OR ----- IF ALRIEADY REGISTERED AND CLIENT COMES TO SEE YOU ABOUT INFRINGE:
5. Registered? – S.7(1)
They can be used to protect a ‘design’ under section 1(1) RDA 1949. Analyse the item and fit
into either
1. Section 1(2)
A ‘design’ means ‘the appearance of the whole or part of a product resulting from the
features of, in particular, the lines, contours, colours, shape, texture or materials of the
product or its ornamentation.’
2. Section 1(3)
“product” means any industrial or handicraft item other than a computer program; and,
in particular, includes packaging, get-up, graphic symbols, typographic typefaces and
parts intended to be assembled into a complex product.
2. Is design The requirements for protection are found in S.1(B), the design must be:
registrable? S.1 RDA
1. Section 1B(1) requires that the design be ‘new.’
1B(2) says a design is new if ‘no identical design or no design whose features differ only in
immaterial details has been made available to the public before the relevant date.’
1B(3) says a design has individual character if ‘the overall impression it produces on the
informed user differs from the overall produced on such a user by any design which has
been made available to the public before the relevant date.’
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Does not add much to requirement of novelty.
3. The design must not be made available to the public per above sections.
Is design made available to the public? if, per section 1B(5)(a), ‘it has been published,
exhibited, used in trade or otherwise disclosed before.’
Yet; a design shall not be deemed to be made available to the public if the design is
disclosed in the period of 12 months immediately preceding the ‘relevant date’ by the
designer or any successor in title per section 1B(6)(c).
Means the date on which the application for registration is made or is treated by the Act as
being made per section 1B(7).
section 1B(8)
a) once incorporated into the complex product it remains visible during normal use,
and
b) to the extent that it is visible, the visible features have new and individual character.
• Design registration cannot be used against someone supplying a spare part for repair
of a complex product
• Can be used to stop another manufacturer from using the design
2. Designs dictated solely by their technical function, e.g a nail. section 1C(1)
3. Interfaces: 1C(2) prohibits RDR from subsisting in a product, which must be, that shape so
as to be ‘mechanically connected to, or placed in, around or against, another product so
that either product may perform its function.’ Ie –must fit – prevents monopoly in
replacement goods.
AT this point the design can be registered or not…. That is the end of the SUBSISTENCE QUESTION..
5. What rights does Section 7(1) says that the proprietor has the ‘exclusive right to use the design and any design
registration give? which does not produce on the informed user a different overall impression.’
Section 1(3) says that the ‘author’ is the person creating it.
Commissioning
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Employment
If so and there is no human author, ‘the person by whom the arrangements necessary for the
creation of the design are made’ is the author per section 2(4).
DURATION:
8(1) says that the right lasts for an initial term of 5 years.
8(2) allows renewal on a 5 yearly term up to 25 years.
If one’s right lapses by a failure to extend, one can apply for restoration of the right in the
‘prescribed period.’ ????
N.B. Designs which are registered are automatically protected from copying within the EU for 3
years from first publication – Unregistered Community Design Right.
7. INFRINGEMENT Section 7(1) registration gives the registered proprietor the exclusive right to use the design and
16.2.10 ‘and any design which does not produce on the informed user a different overall impression’.
Section 7(2) using is defined and includes ‘ the making, offering, putting on the market,
importing, exporting or using of a product in which the design is incorporated or to which it is
applied’
Section 7A says that RDR is infringed by any person who, without consent, does anything
which is the exclusive right of the proprietor by virtue of section 7.
d. An act of reproduction for teaching purposes – section 7A(2)(c) which complies with
section 7A(3), which requires the act of reproduction ‘is compatible with fair trade practice
and does not unduly prejudice the normal exploitation of the design,’ and ‘mention is made of
the source.’
Section 7(A)(5) says RDR is not infringed by someone repairing a complex product
NB – if any of the exclusions apply the infringer goes to the registrar to get the
register rectified s.20.
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N.B. Section 26 provides a remedy for groundless threats of infringement because the threat of
infringement proceedings is a serious threat to business [16.2.8]
5. An Infringing Act?
a. Presumption
b. Primary
c. Secondary
6. Remedies
1. UDR/Design Right is used to protect an ‘original design’ under section 213(1) CDPA 1988.
Is there a registrable
design? ‘Design’ means ‘the design of any aspect of the shape or configuration (whether internal or
external) of the whole or part of an article.’ section 213(2).
Can protect parts of a machine which are never in public view. Ie INSIDE MACHINE
LOOK out for wording like “new” and “striking” and “unique”
not to be ‘commonplace in the design field in question at the time of its creation.’
Ocular Sciences v Aspect Vision. Yes, if ‘trite, common or hackneyed’. Many features of
contact lens are commonplace.
Farmers Build Ltd [1999] Putting a number of commonplace features together in a new
way can lead to a design that is not commonplace.
(a) Outline shape of Claimants track top was itself not original as it had been copied
(b) Lambretta logos were surface decorations so excluded from UDR
(c) Mere juxtaposition of patches of colour on the garment did not fall within the meaning
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of ‘configuration’ in s213(2) so no UDR
(d) 2 dimensional colour applied to the garment did not generate an original 3
dimensional design
2. The design must be recorded in a design document or an article has been made to the
design as required in section 213(6). IE you must do a drawing of the design or actually
make article
3. Any exclusions? Specifically in existence to allow other people to make spare parts
1. Objects which ‘must-fit’ another article (windscreen) – HOW ITEMS FIT TOGETHER
Prohibited by 213(3)(b)(i).
“features of shape or configuration of an article which enable the article to be connected to,
or placed in, around or against another article so that either article may perform its function”
Only the must fit bit that is excluded, rest can survive.
EG – prongs on an electric plug are especially made to fit into the socket. Prongs cannot be
protected by an UDR.
2. Objects which ‘must-match’ another article (car door). HOW ITEMS LOOK TOGETHER
Prohibited by 213(3)(b)(ii).
“features of shape or configuration of an article which are dependent upon the appearance
of another article of which the article is intended by the designer to form an integral part”
THINK – Is shape dependent on ‘whole’ look of bigger item which smaller part is part
of.
EG – designers cannot prevent other people making replacement parts that match the
original products.
Prohibited in 213(3)(c).
Designer means the person who created in s.214(1) or in the case of a computer-generated
design, the ‘person by whom the arrangements necessary for the creation of the design are
undertaken ( s.214(2)).’
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PTO
Commissioning:
Employment:
s.215(3) says that if the design is created by an employee in the course of his employment
the employer is the first owner.
The same applies regarding directors = Ultraframe Case and Fulton v Barnett.
Duration:
• s.216 says that UDR expires either 15 years from end of year in which design was first
recorded or,
• if articles are made to the design for sale/hire within 5 years of that calendar year, then 10
years from the end of calendar year in which design was first recorded.
The presumption is rebutted with evidence that the product has not been copied and is original.
Simple comparison of two products is required.
s.226(1) says that the owner of design right has the exclusive right to reproduce the design
for commercial purposes –
s.226(3) says that UDR is infringed by anyone who, without licence, does or authorises
another to do an act which is the exclusive right of the owner of the UDR.
an article which is, and which he knows/has reason to believe is an infringing article
6. Remedies Damages s.229(2) additional damages available under s.229(3) depending on (a) flagrancy of
the infringement, and (b) any benefit accruing to the defendant
Injunctions s.229(2)
Account of profits s.229(2)
Delivery up of infringing articles per section 230
Disposal of infringing articles per section 231
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N.B. Damages are not available against an innocent infringer per section 233.
If an article is copyright and has UDR then it is not an infringement of UDR to do anything, which
infringes copyright.
S236 – UDR that subsists in an object that is protected by copyright will be ignored and copyright
prevails.
Licences of Right Section 237 in last 5 years of UDR protection, anyone can apply for a licence to use the
unregistered design. If the parties cannot agree the terms, then Designs Registry settles the terms
Patents Chapter 17
Introduction Patents are monopoly rights granted by the Government to protect new inventions. The relevant
act is the Patents Act 1977.
a. New S.2
Subsistence
b. Inventive step S.3
OR ----- IF ALRIEADY REGISTERED AND CLIENT COMES TO SEE YOU ABOUT INFRINGE:
2. Registered?
4. Has there been infringing act (s.60) If this in exam start at step 2
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6. if None – Remedies
a. New S.2
1. Section 2(1) says an invention will be new if ‘it does not form part of the state of the art.’
2. ‘State of the art’ = s.2(2), is ‘all matter which has at any time before the priority date of
that invention been made available to the public by written or oral description, use or in
any other way.’ This reflects the position under article 54(2) European Patent Convention
3. If there has been an ‘enabling disclosure’ the invention is part of the state of the art and
not new…. Has there been an enabling disclosure:
1. This is a disclosure that would enable someone else to make the product or work the
process.
2. The Patent Office asks whether, at the priority date, ‘a skilled worker could by
observation or analysis reproduce the applicant’s invention from the disclosure in
question.’
3. ‘Priority date’ = date of filing patent application.
4. When is there such a disclosure: exhibition, article in paper, product is already on
market, photograph? Demonstration only is not likely to be enough.
5. If end product does not disclose the process, then unlikely to be an enabling
disclosure.
Section 3(2) says there is such a step if the invention ‘is not obvious to a person skilled in the
art, having regard to any matter which forms part of the state of the art.’
Biogen v Medeva says that the inventive step need not be significant.
Section 4(1) says this is met if the invention ‘can be made or used in any kind of industry,
including agriculture.’
N.B. 4(2) says that methods of surgery are not capable of industrial application.
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d. Not excluded under PA77 s1(2) + (3)
The exclusions are listed in s 1(2) and (3) of the 1977 Act:
(a) for an invention the publication or exploitation of which would be generally expected to
encourage offensive, immoral or anti-social behaviour;
(b) for any variety of animal or plant or any essentially biological process for the
production of animals or plants, not being a micro-biological process or the product of
such a process.
N.B. Computer programs are in theory excluded yet can be patented if it has a ‘technical
effect.’ See 17.3.4
AT this point the design can be registered or not…. That is the end of the SUBSISTENCE QUESTION..
5. What rights Once the patent is registered the owner has a monopoly right over the invention. (AUTHORITY)
does registration
give?
Multiple inventors
From Henry Bros Ltd v MoD it seems that the court will regard the person who had
contributed to the main concept of the invention as the person entitled.
Employees
Section 39 provides that if the employee makes an invention then right to the patent will
belong to the employer if
• the invention is made in the course of the employee’s normal duties and,
• those duties might reasonably be expected to lead to inventions.
Section 42 says that one cannot contract out of section 39. An attempt to do so is void.
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Compensation
Is the benefit of the patent: Garrison’s Patent involved a patent which provided 2-3% of a
small company’s turnover and this was not an outstanding benefit. See section 41 factors re
amount of compensation [17.5.2]
Position will be easier for employee under Patents Act 2004 [17.10].
DURATION:
If above are met can apply for a patent. Lasts 20 years from application
Section 60(1)(a) if third party ‘makes, disposes of, offers to dispose of, uses or imports the
product or keeps it whether for disposal or otherwise’ without the consent of the proprietor of
the patent.
If patent is a process:
Section 60(1) says it is infringed if the third party, without consent, either;
(b) ‘uses the process or he offers it for use in the UK when he knows, or it is obvious to a
reasonable person in the circumstances, that its use there without the consent of the
proprietor would be an infringement,’ or
(c) ‘disposes of , offers to dispose of, uses or imports any product obtained directly by
means of that process or keeps any such product whether for disposal or otherwise.’
Section 60(2) says you also infringe the patent if you, without consent, supply or offer to
supply ‘any means...for putting the invention into effect,’ to someone unentitled.
For infringement the offending product or process must come within one of the ‘claims’ in the
patent specification. Infringement occurs even if only one patent claim is infringed.
a) Does the variant have a material effect upon the way the invention works? If yes, the
invention is outside the claim.
b) Would fact that variant had no material effect been obvious at the date of publication of
the patent to a reader skilled in the art? If no, variant is outside the claim.
c) If obvious, would a reader skilled in the art have understood from the language of the
claim that patentee intended strict compliance with the primary meaning was an essential
requirement of the invention? If yes, the variant is outside the claim.
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Patent infringement hinges upon the precise wording of the claims
3. The patent is not valid and should not have been awarded patent in first place, or some of the
claims are not and should be struck out.
4. Section 60(5)(a) infringing act is done privately and not for commercial purposes.
6. Section 64; if defendant was using the relevant technology before the priority date.
Potential consequences:
Section 61 remedies
Section 72 revocation of patent
Section 70 remedies for unjustified claims of infringement
Confidentiality - Confidence upholds a person’s obligation to keep a secret, and it is governed by case law.
2. Implied : Did the information have the necessary quality of confidence about it?
Test from Thomas Marshall v Guinle: in identifying confidential information or trade secrets
which the court will protect in an industrial or trade setting;
1. must be information the release of which the owner believes would be injurious to him or
of advantage to his rivals or others.
3. the owner's belief under the two previous heads must be reasonable.
4. the information must be judged in the light of the usage and practices of the particular
industry or trade concerned.
Think about it reasonably and from confider’s point of view, i.e. is it reasonable for the
confider to want it kept quiet?
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3. Was the information imparted in circumstances importing an obligation of confidence?
Relate to the facts… would it be detrimental to Owner if information used by third party??
If one can point to use in the future which would be unauthorised, then that is sufficient. No
permission for future use to detriment of the claimant.
The idea imparted and the subsequent use must be related, i.e. a degree of overlap (De
Maudsley).
N.B. Have an express confidentiality agreement, do not rely on the common law for
protection.
5. Remedies:
Before info released – advice client to get a confidentiality agreement with person
threatening to release information. Have an express confidentiality agreement, do not rely
on the common law for protection.
ALSO.. link into other forms of copyright… eg if formula is written down then copyright
may apply s.3(a)(1)
(a) there are two rival businesses and not to grant would give the wrong-doer an
advantage (eg, Speed Seal Products Ltd v Paddington);
or
(b) the ‘springboard’ doctrine applies, ie where one business would gain an unfair
advantage over its rivals because of unauthorised disclosure to it of commercial
information
• Compensatory damages are available for breach of confidence (Seager v Copydex Ltd)
• An order for delivery up, or destruction under oath, of the offending document or articles.
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