Date: 16 May 2017
By James Cross and Oliver Poskett
In Epoch Co Ltd v Character Options Ltd,  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  EWCA Civ 1371 and subsequently developed in Symbian Ltd v Comptroller- General of Patents  EWCA Civ 1066 and HTC Europe Co Ltd v Apple Inc  EWCA Civ 451, but there is little case law specific to aesthetic creations. Epoch relied on EPO decision T686/90 HETTLINGDENKER/Translucent building materials  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.
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