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The patent has expired – so I am free to make the product, right? - Hold on - it's not that simple

Date: 15 December 2020

The “Brompton” folding bike is a commuter icon. Brompton protected its folding mechanism for two decades with a 1979 patent, and after expiry Korean company Get2Get clearly thought they were free to make a similar bicycle. Isn’t that, after all, how the patent bargain is supposed to work? Brompton’s response was to sue in Belgium for infringement of copyright in the design drawings of the bike. The European Court of Justice has now ruled on the case, in a decision with significant implications for owners of patents in the mechanical arts.

 

The Get2Get "Chedech” bicycle uses the same three-fold design as the Brompton bicycle, to ensure that the bicycle can fold into three different positions. Get2Get argued that the appearance and design were dictated by this technical solution. Relying on earlier Court of Justice case law, Get2Get argued that such an appearance therefore cannot be protectable under under copyright law.

The questions before the Court of Justice were whether copyright protection, governed by Directive 2001/29/EC of 22 May 2001, can extend to works whose shape is necessary to achieve a technical result, and what criteria was the court to take into account: The existence of other possible shapes which allow the same technical result to be achieved? The effectiveness of the shape in achieving that result? The intention of the alleged infringer to achieve the same result? The existence and expiry of a patent? These questions have troubled the Courts in the UK since the controversial 1978 Catnic v Hill & Smith judgment (never followed in England, but never overruled either), holding that a patentee in electing for patent protection abandons copyright in their drawings.

 

Following our website report of the case, we look at the Court of Justice conclusion and what it means for those who are considering creating a design that has gone off-patent.

 

Brompton’s Patent


Let us first look at the expired European patent in this case - EP0026800 filed on 3 October 1979, granted on 30 May 1984 and expiring on 2 October 1999. Claim 1 related to two pivots that allowed the rear wheel to be folded under the main frame and the front wheel to be folded alongside it into the very compact folded configuration familiar to Brompton bicycle owners.

 

folded_bike_188 bikes_3_289_01

 

There were also of course more detailed dependent claims.  These, and indeed any claim that could have been drawn up to read onto any aspect of the design described in the patent application, have now expired.  In fact, the patent description more-or-less limited itself to the technical features of the folding mechanism.  It did not describe every feature of the drawings, such as the shape of the tube of the frame (which has no curvature in the patent drawings), or the number, thickness and pattern of the spokes of a wheel, or the colours of the various parts.  Patent drawings are not considered to be to-scale (though these drawings may have been) and so this patent did not (and could not) claim every detail of the design of the bicycle depicted in the drawings.  Where does the expiry leave these unclaimed, undescribed features?

 

Get2Get’s bicycle


There were certainly similarities between Brompton's bike (sold in its current form since 1987) and that of Get2Get.

 

 

bikes_738

 

But many of the similarities are at least partly due to the general functionality of a bicycle, or the specific patented folding functionality of Brompton’s bicycle.  

 

Functionality in EU Copyright Law


There are specific exclusions in trade mark and design law for shapes dictated by technical function, and in its case law (for example, C-48/09 Lego and C-205/13 Hauck) the Court of Justice has referred to the need to avoid extending or circumventing the patent system by granting equivalent protection via other means. There has therefore been a temptation (to which the European Intellectual Property Office has often succumbed) to see the existence of a parallel patent as an absolute bar to getting trade mark or design protection. By way of contrast, EU copyright law does not contain any explicit functionality exclusion, though in relation to software the Court of Justice has in the past held that the functionality itself cannot be protected by copyright (C-406/10 SAS), and that no copyright can exist in features “dictated by technical considerations, rules or constraints which leave no room for creative freedom” (C-604/10, Football Dataco). The Brompton case was the first time the Court of Justice had to answer directly the question of copyright in relation to functional features of product shapes, and the effect of parallel patent protection.

 

The Answer


The CJEU judgment starts from the position that, where features reflect free and creative choices that are made by the creator, rather than choices dictated by the technical requirements, these can have copyright protection. However, the tone is more positive than in previous case law: “subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.” So, functional features may qualify. On the other hand, the mere “possibility of choice as to the shape of a subject matter” is not sufficient per se to conclude that there is a protectable copyright work. As for designs, the question is what the designer’s intentions were and whether the result reflects his personality; “the existence of an earlier, now expired, patent … should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

 

See here our article illustrating this point: Doceram – clarity or confusion on functional designs?


Dual protection by patent and copyright is therefore undoubtedly possible, and the expiry of the patent has no effect on the existence of the copyright.


This stance reflects another Court of Justice decision just two months earlier, in Case 237/19 Gömböc concerning a trade mark which had previously been protected by a design registration. They commented there that:

 

"the objective of the [substantial value] ground for refusal of registration [], like that of the [functionality] ground, is, indeed, to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other rights in respect of which the EU legislature has sought to impose time limits. ... However, such an objective does not mean that EU intellectual property law prevents the coexistence of several forms of legal protection." "… the fact that the appearance of a product is protected as a design does not prevent a sign consisting of the shape of that product from benefiting from protection under trade mark law" ... and thus, "the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the product where that sign enjoys protection under the law relating to designs"

 

The Consequences


The Court of Justice has kicked away the possibility of a knee-jerk denial of copyright protection for patented designs, leaving patentees free to attempt to enforce their copyright in the EU for the designer’s life plus seventy years (following the Court’s decision in C-168/09 Flos). All a competitor can safely conclude is that the functionality itself is not protectable by copyright, and a designer of a putative off-patent product must take great care not to copy features where there is creative choice in their shape. This can be a low bar. In C 683/17 Cofemel (concerning leisurewear) the Court of Justice held that, contrary to the approach in many countries, aesthetic value does not part of the determination of whether a work attracts copyright protection.


Although this outcome is favourable to Brompton, a UK company, it is not so helpful for UK copyright law as the UK transitions to complete departure from the EU. At present, Section 51 of the Copyright, Designs and Patents Act says that "It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design." So, in the UK, it is safe to copy a design after design rights have expired, provided the design is not elevated to the status of being an “artistic work” (a sculpture or work of artistic craftsmanship). It remains to be seen whether the UK Courts will attempt to interpret Section 51 to follow these most recent Court of Justice cases, or whether they will stick with the original intent of the UK legislation.

 

 

 See Edward Rainsford's earlier article on this ruling hereBrompton wins ruling before CJEU over iconic bicycle design

 

If you require any legal advice on the issues raised in this article, please do not hesitate to get in touch with our team: Our People

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