Patently demonstrated?

Pally demonstration to Duke of York

There must be a stong temptation for a business hosting a visit from a VIP or a local MP to show off the business’s new thing.  Nothing beats a good demonstration of new technology.  However, if this new technology has not completed any patent application process, there is a danger.

In order to obtain a patent, an invention has to meet certain conditions, which appear deceptively simple :

• the invention must be new;
• it must involve an inventive step;
• it must be capable of industrial application;
• it must not be an invention that consists of :

–  a discovery, scientific theory or mathematical method;
–  a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
–  a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer [Note: this is where EU/UK patent law differs materially from, for example, US patent law]; or
–  the presentation of information; or

• the commercial exploitation must not be contrary to public policy or morality.

(From section 1 of the Patents Act 1977, as amended.)

Two recent cases have addressed the question of novelty, which we will come onto shortly.

Traditionally, patent lawyers advise inventors to be secretive about possibly patentable inventions, with any demonstrations or disclosures limited as much as reasonably practicable.  Where demonstrations or disclosures have to be made, the advice is generally to make sure that there is a confidentiality or non-disclosure agreement in place.  The reason for this approach is that if any details of the invention make it into the public domain, there is a risk that the details may be deemed to be part of the “prior art”, essentially general knowledge to anyone skilled in the relevant area.  If something becomes part of the prior art, then it cannot be considered to be new.

The most well-known example of the novelty principle being applied, certainly in my home area of Portsmouth and Hayling Island, is the case Windsurfing International Inc v Tabur Marine (GB) Ltd. 1985 RPC 59.  This involved a dispute between the owners of the US windsurfing patent filed by the American inventors of windsurfers Drake and Hoyle in 1968 and granted in 1970, and the UK company, which was a licensee.  Extremely fortuitously for Tabur Marine’s patent lawyers, the found evidence in a local newspaper that a Hayling Island schoolboy, Peter Chilvers, had invented a board and sail combination, with the key element of a universal joint at the foot of the mast, in 1958. So this was prior art, which, if you can bear the pun, shot the American’s patent out of the water.  With the US patent then declared invalid, Tabur Marine could stop paying Windsurfing International royalties.  The original tests for novelty set out in Windsurfing International are still applied, albeit slightly amended by the later Court of Appeal case Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588.

So, why the picture of the Duke of York standing by a set of boxes on a pallet?  This pallet was no ordinary pallet, but a combination dolly and pallet (no, I didn’t know what a dolly was either – a wheeled platform).  It was the subject of a patent application when the Duke was shown round the new Sheffield factory of Loadhog Limited, who then went on to challenge the application made by Polymer Logistics BV on novelty as well as other grounds.  The hearing officer at the Intellectual Property Office decided, not unreasonably, that the demonstration to the Duke did not destroy its novelty:

But unless he had got down on his hand and knees, or turned the Pally prototype upside down to see how the mechanism operated, the most that he could have taken away from the demonstration is the idea of a single device that can function as a dolly and a pallet, and which can be converted between the two states by means of a foot pedal.  …. There was no suggestion that the Duke did get down on his hand and knees to inspect the prototype more closely, … (Paragraph 48)

The hearing officer was merely applying the High Court ruling in a similar case, Folding Attic Stairs Ltd v The Loft Stairs Company and another [2009] EWHC 1221.  As the case name implies, this was all about folding attic ladders.  A prototype ladder had been seen by a press photographer for the Irish Times and the visiting Irish Minister for Trade and Tourism.  It was not demonstrated to the visitors, but was caught in the background of published photographs of the visit.  Fortunately only the lower part of the prototype was shown in the published photographs, and the High Court found that there was no evidence that the photographer or Minister had inspected the prototype, nor that either of them were persons skilled in the art.  It was therefore ruled the prototype was not in the public domain or made accessible to the public to become part of the prior art.

So the lesson?  If you have to demonstrate a prototype to a visiting VIP, you should be okay. Just make sure that by some bad luck the VIP isn’t knowledgeable in the relevant area and that you have some control over any photographers accompanying the VIP.

Stop, in the name of the (trade mark) law

We recently learned through Twitter of the “cease and desist” letter received by ThinkGeek from the lawyers for the National Pork Board, Faegre & Benson.  This type of letter, more accurately described under English civil procedures as a “letter before action”, usually sets out how the sender of the letter believes that the recipient is infringing the sender’s intellectual property rights.  A typical letter demands that the infringing stop and requires the alleged infringer to enter into undertakings about its future behaviour, under a threat of legal action if the matter is not resolved (hence, “cease & desist”).  In the ThinkGeek and National Pork Board case, the intellectual property rights at issue were various trade marks, including “The Other White Meat”.  ThinkGeek had marketed their canned unicorn meat under the slogan “Unicorn – the new white meat”.

As ThinkGeek point out in their blog, the letter they received from Faegre & Benson was “officially our best-ever cease and desist letter”.  It should be pointed out that the product was put on sale on 1 April.  There was, is and never will be, of course, an actual unicorn meat product.  So is this just an example of another trigger-happy American law firm (or client, to be fair to Faegre & Benson) wasting ridiculous amounts of law fees, or could this happen in the UK, too?

Firstly, the National Pork Board’s registered mark is “The Other White Meat”.  The mark used by ThinkGeek was “the new white meat”.  So we are considering non-identical, similar marks for similar goods (if you are willing to believe that there is such a thing as unicorn meat).  The forms of infringement for which a registered trade mark holder can bring an action under English law are set out at section 10 of the Trade Marks Act 1994 (TMA 1994), which we summarise in the table below:

Type of Mark	Type of Goods	Other Conditions	TMA 1994 Ref
Identical mark	Identical goods		s.10(1)
Identical mark	Similar goods	Likelihood of confusion	s.10(2(a)
Similar mark	Identical or similar goods	Likelihood of confusion	s.10(2)(b)
Identical or similar mark	Any goods	Registered mark with a reputation. Infringing mark used without cause, taking unfair advantage or is detrimental to distinctive character or reputation of the registered mark	s.10(3)

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So the ThinkGeek case would have to involve there being a likelihood of confusion, which would in most cases have to be proved by the claimant (National Pork Board). However, the courts have said that they can make their own judgement on the likelihood of confusion, so that evidence of actual confusion is not always necessary (Mont Blanc Simplo GmbH v Sepia Products Inc (2000) Times, 2 February).  A court would consider whether confusion was likely at the time when the relevant goods were offered for sale (remember, 1 April) as well as all the surrounding circumstances. Given the facts of an April Fool’s Day sale of unicorn meat, you’d hope an English court would throw this out as not likely to confuse anyone. That leaves the similar mark, unfair advantage or detrimental use infringement.  Again, you would hope an English court would not entertain that a fictitious product not intended for actual sale takes unfair advantage of anyone, or is in any way detrimental.  Given this analysis, we would expect an English intellectual property lawyer to advise against any cease and desist letter or letter before action.

This does raise another issue, if this ThinkGeek case were considered under English law.  ThinkGeek have only published the first page of the 12-page letter they got from the National Pork Board’s lawyers. We therefore don’t know what the tone of the rest of the letter was, or what type of undertakings were demanded in the letter.  Cease and desist letters must be prepared carefully in England, as otherwise a sender of a letter risks being found to have threatened infringement proceedings, which itself is actionable (see  s.21 TMA 1994). This includes the solicitors (as senders) of a cease and desist letter.  We’ll never know if the National Pork Board or its lawyers crossed the line in this respect.

Perhaps, all things considered, the National Pork Board should have let this one go by.  After all, pigs will fly before real unicorn meat can be sold, whether as other white meat or not.