Patent laws: A guide through the jungle - February 09
This article appeared in SME Web on 18 February 09
In the highly profitable world of business class air travel, providing long haul passengers with a comfortable night’s sleep can give airlines a competitive advantage. When Virgin introduced the Upper Class Suite (“UCS”) in November 2003 they saw their market share increase significantly by 12%. In an industry that is subject to the turbulences of increasing oil prices and economic downturn, airlines are likely to continue to invest heavily in R&D in an effort to improve their positioning tactics. However, protecting that position to retain a lead over competition isn’t all plain sailing.
Virgin had first hand experience of this in January 2009 when Mr Justice Lewison, declared Virgin’s patent for a convertible flat bed seat had not been infringed by the design company, Premium Aircraft Interiors UK Ltd (aka “Contour”). This article seeks to summarise the decision and identify some of the key lessons businesses can take away from the judgement.
What is a Patent?
A patent is a document granted by the State that records and thereby protects an invention. The invention must be novel, in that it must not already exist. It must also not be obvious in terms of the steps between it and any existing technology. Once granted the owner of a patent has a monopoly over that invention and is the only one who can control its exploitation.
The scope of a patent is largely determined in the “Claims”. These are set out in the patent application and detail how the invention is supposed to work. When determining if a third party’s product has infringed the patent, the Court assess if that product fits within the Claims. They put themselves in the position of someone who is familiar with the industry (referred to as “a person skilled in the art”) and consider what the Claim would be understood to have meant in the context of that particular industry. If the offending product falls within the Claims it will be considered to have infringed the patent.
What are Unregistered Design Rights?
Design rights can be both registered and unregistered. They protect the shape, configuration or appearance of an article or part of an article resulting from particular features such as shape, texture, colour, lines and contours. If the design is novel and has individual character then you can apply to the Intellectual Property Office to register it and thereafter benefit from 25 years protection. However, you would automatically gain unregistered rights in the 3D aspects of an original object simply by its creation and what unregistered design right does is afford some protection for the time, skill and effort put into creating the object by preventing the copying of that design without your consent.
When considering if a design right has been infringed it is necessary to establish that the design has been copied so as to reproduce “articles exactly or substantially to that design”, mere similarity is not enough. Unlike a patent, unregistered design rights do not create a true monopoly, it is possible to independently create something substantially the same and not infringe. However, if you can show copying has taken place, design right will have been infringed.
The Case
The case concerned the alleged infringement of Virgin’s UCS. The UCS was novel in that it incorporated a seat that would flip over to create a flat sleeping surface. Virgin requested Contour to manufacture this patented flat bed seating system so as to create, what Virgin hoped would be, a passenger unit with the perfect balance between privacy and the avoidance of the feeling of claustrophobia.
In order to recoup the costs of the developing the flat bed system, Virgin, with the help of Contour, went in search of potential licensees. This gave Contour greater access to Virgin’s competitors. Unfortunately, the fee Virgin required for competitors to use their inventions and designs was too expensive for most airlines who felt they could do something similar themselves. Unfortunately for Virgin, Contour then began work directly for other airlines, including Cathay Pacific and Air Canada, producing for them a Virginesque unit called the “Solar Eclipse”.
How did Contour avoid infringement?
It was undisputed that Contour’s design team had the opportunity to see the detailed drawings of the UCS but that did not mean they had copied them into the Solar Eclipse. When the court considered the design of the UCS they determined that the Solar Eclipse and its component parts was not exactly or substantially the same. They looked closely at the design documents and how the Contour team had developed the look and feel of the UCS for Virgin and compared it with how the other Contour team had come to the final design of the Solar Eclipse. Lewison J concluded that the Solar Eclipse team had created their design independently and although there were similarities between the two, those similarities resulted from necessity, such as the space available in the plane, rather than wholesale copying.
The Court agreed with Contour’s interpretation of Virgin’s patent; that it sought only to protect the flip-over aspect of the seat that converted into a true flat bed. Accordingly, Contour designed the Solar Eclipse so as not to include a flip over aspect and it was therefore did not infringe the patent. It should not be forgotten that the Court is keen to encourage invention and competition by providing third parties with certainty when it comes to interpreting patents.
What Virgin tried and failed to do in the case was expand the meaning of the Claims to include seat units that did not require the seat to flip. Had Virgin succeeded on this point they would have invalidated their own patent because it would have failed to add anything novel to the existing technology.
Flying Lessons
Set out below are some key lessons which should be cleaned from the case and may help you avoid losing any sleep:-
1. To avoid the risk of copying keep your design documentation confidential and require any external companies who need to see them sign a Non-disclosure agreement.
2. Make sure the description of your invention in the Claims accurately reflects what it is you want to protect.
3. Be careful not to describe your patent too widely (as it may be invalid as a result) but also not too narrowly.
4. Finding a balanced way of being specific whilst giving you the maximum protection is a skill that most businesses don’t have so use the services of a reputable patent attorney to assist you in drafting the claims.
5. Litigation, especially patent infringement, is expensive so seek to resolve the dispute early through mediation or other alternatives to court litigation.
Steven Murray, Litigation Solicitor
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