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UK court rules on patentability of aesthetic creations

Date: 16 May 2017

In Epoch Co Ltd v Character Options Ltd, [2017] EWHC 556 (IPEC), the UK Intellectual Property Enterprise Court (IPEC) recently decided on the patentability of aesthetic creations in a case involving toy plastic beads that stuck together when sprayed with water and left to dry.


The patented version  had  polyhedral beads, while the prior art beads were spherical. The effect of making  the beads polyhedral was enhanced 'brilliance', involving reflected and  refracted light. The Defendant argued that this difference was purely aesthetic and  therefore not patentable.


UK case law on excluded subject matter  follows the general principles set out in Aerotel Ltd v Telco Holdings Ltd and Macrossan's Patent Application [2006] EWCA Civ 1371 and  subsequently developed in Symbian Ltd v Comptroller- General of Patents [2008] EWCA Civ 1066 and  HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451, but there  is little case law specific to aesthetic creations. Epoch relied on EPO decision T686/90 HETTLINGDENKER/Translucent building  materials [2004] E.P.O.R. 5, in which a translucent building  block  that could  be used to create a stained glass effect was held  to be technical. Character Options relied on a UK Patent Office decision Gram Engineering Pty Ltd BL O/275/08, 9 October 2008 in which a cladding panel with panel formations was held  to be purely an aesthetic creation.


In this case, it was held  that the polyhedral beads were like the building  blocks of Hettling-Denker, in that they could  be used to make  a design that would be an aesthetic creation, but were not themselves aesthetic creations. The Judge made a distinction between inventions that involved an aesthetic effect and  are patentable, and  inventions that are no more than  an aesthetic creation, and  are not patentable.


Epoch, the Claimant, was represented by Maucher Jenkins.


News from Germany on progress towards the Unitary Patent


The German government passed bills on 10 March2017 to enact legislation implementing participation in the Unitary patent and  corresponding modification of German national  patent law. One notable provision  is the possibility  of parallel German  national  and European patents. This affords  to applicants the possibilities offered  by the new Unitary Patent and  at the same time the tried and  tested structures of the German court system for patent disputes.


The new law only contemplates parallel  German national  patents and  European patents (with or without unitary effect).  It does not allow applicants to validate a European patent in Germany and, in parallel,  obtain Unitary protection across Europe for the same patent.


The corresponding UK legislation has  not relaxed the existing double-protection ban in the UK, and  is also clear  that Applicants cannot validate in the UK in addition to electing for unitary effect (see footnote  to the article  by Handong Ran overleaf).​​​​​​​


Expectations were high that the Unitary Patent Court would open in December 2017.  This may yet happen, but the UK election is likely to delay ratification by the UK, which may have  a knock on effect on the timetable.


There is a critical period between elections in UK and  Germany when both states must ratify if the project is to get off the ground in its present form.


Tuesday, May 16, 2017