Property Law and Patents Act - Essay Example

MEMORANDUM Mr. Bloggs IP Solicitor matter: Patents/Confidentiality The facts of the matter are that DD has applied for its patent in July 2002, while MCJ did so only in August 2002. However, MCJ bases its claim on a filing date a year earlier, thus it is the earlier applicant, since its priority date is earlier1. Therefore, in regard to A-UK, it will be MCJ’s patent that will have precedence and MCJ will be considered the owner of the patent on the cylinder coating process. However, everything would depend upon the contents of the patent and how it is drafted, including the extent of the monopoly that has been sought by MCJ and if the claims are not clearly spelt out in the original patent application that was filed in 2001, otherwise there may be a cause of action arising to DD in negligence.2 Any questionable aspects to MCJ’s patent could be used by DD to approach the Comptroller3 to ascertain whether DD is entitled to the patent in view of the fact that it had applied as early as July 2002 and the questionable nature of MCJ’s purported earlier application. If the Comptroller determines that MCJ is not entitled to ownership of the patent, then he will “reach a solution which will provide a reasonable opportunity for the patent to be exploited should there be a demand for it.”4 The Comptroller can also amend the application and also has the power to license DD’s A-UK patent.5 However, since MCJ’s license has already been published, remedies in this area appear limited. Since MCJ’s is the earlier patent based on priority date, this means that DD may be liable for infringing the patent of MCJ. However, since DD was not aware of the development of a similar product but developed its cylinder coating product independently, and is also trying to acquire a license from MCJ to use the product, it is possible that no charges may be brought by MCJ. In respect to the rights in patents, it may be noted that the cylinder coating process may still be protected since DD “did not know of the earlier transaction, instrument or event” and was unaware of the published application of MJC Ltd.6 An “innocent infringer” will be exempt from any liability for damages.7 In regard to B-UK, the priority date of filing of the invention will be as per the earlier date of filing8, therefore the earlier patent application filed for A-UK in July 2002 can be taken as the date for filing B-UK, since material regarding the spray application was included in the application for A-UK to a degree that would be comprehensive enough in the earlier application. The important issue that arises in this case is whether B-UK will be considered a novelty which does not form part of the state of the art, since MCJ has already published its patent?9 It may be noted that MCJ’s cylinder coating process does not contain the spray feature, therefore the preliminary specifications as laid out in A-UK will belong to DD, since the quantitative test for novelty will be satisfied. From the criterion of “objective novelty” the Patents Office may conclude that the material has been made available to the public, especially since it was displayed at the international exhibition10 and has also been orally transmitted to the market representative/agent at the same exhibition11. Moreover the courts will not take into account factors such as duration, location, language, etc as long as the information has been publicly available12. However, in view of the fact that the information that was available was sourced in DD and not a competitor, will mean that it would be deemed to be the original owner of the spray process outlined in its earlier A-UK application, therefore it would also be entitled to ownership rights on subsequent improvements to the process that are included in B-UK13. MCJ’s original application does not contain the alternative spray process but is confined to the cylinder application, therefore DD will be the patent owner. DD will have full rights to the patent, since the “essential inventive concept”14 in this case has been developed by DD and it was also included within the substance of its first patent application filed in July 2002. The exposure of the product at the International Exhibition need not be a cause for worry to DD, since its patent application A-UK contained the details of the process (to a sufficient degree where a person with the requisite degree of skill could have developed the product), therefore this early date of application will also be considered the priority date of registration of the patent.15 In the event that the agent who represented the product at the fair or any other party makes use of the process patented in B-UK, DD will have legitimate grounds to file a suit for infringement. If Mr. Coyle faithfully pays the renewal fee that is due each year, then this will mean that the patent that MCJ has on the product will not expire, and will be valid for a period of 20 years from the date of filing, i.e, the and therefore it will continue to subsist. Therefore, as the registered owner of the patent on the cylinder coating process, DD would be obliged to obtain a license to use MCJ’s product through an appropriate licensing. However, in the event that Mr. Coyle fails to pay the fee, then it may be noted that the three year period since registration of the patent has elapsed, because August 2002 will be accepted as the date of filing the application and therefore the date of the patent16 and since this has lapsed, it will open up rights for DD to press for the ownership of the patent by approaching the Comptroller. The best approach for DD to employ in this situation appears to be an offer of outright purchase of the patent from MCJ, since Mr. Coyle is uncertain about whether or not he wishes to continue to maintain his ownership of the patent. However, this may prove to be a somewhat expensive option and Mr. Coyle may jack up his price if he senses DD’s interest. Alternatively, in the short term, DD can seek a license from Mr. Coyle for the cylinder coating process. It can also independently patent the B-UK process, and can claim a priority date based upon the earlier application that had been submitted for A-UK in July 2002, since it also contains the outline of the spray process. This will also mean that if Mr. Coyle lets his patent lapse, then DD can also claim ownership of the cylinder coating process on the basis of the earlier A-UK application. In reference to patent protection for Z-UK, it is best for DD and Audit Ltd to consider applying for a composite patent that will cover several areas. For example, the European Patent Convention that came into force on June 1, 1978 is a harmonized system that extends patent protection in several states. DD and Audit can approach the EPO office in Munich to file one application which will protect the products throughout Europe for a period of 20 years. Thus, while the patent is granted at a national level, renewals and litigation can be contested in the domestic courts. However, the Community Patent visualized as a part of this initiative has not yet come forth, so the patent application can also be filed under the UK Patent Act of 1977, which has stressed that English law must give effect to the European Patent Convention.17 Moreover, in order to further protect its product, the two companies can also complete the filing and initial search process under the PCT through an international application, which will ensure that preliminary examinations are completed with a single application. The advantages that will accrue to both companies from filing a single international application is the fact that the fee payable is reduced, the time taken for processing an application is reduced and an additional time period of 18 months will be allowed to the companies to assess the results of the search and decide whether or not patenting the products would be worthwhile. Therefore, filing for a single international patent would be the most cost effective and quick process to use because it would also be issued by the National patent office. Claims in such a patent application will be directed to the national courts of the locations where the infringements, if any occur. While filing the patents to cover the different applications that DD and Audit want to include in their respective patents, it would be simpler to file the patent as a combined patent by both companies, since patents can be applied for either singly or jointly18 and since both Audit and DD are the inventors, they can apply jointly, so that only one application will be necessary. Since such an application will be taken up under the EPO, it will be prosecuted at UK courts which will reduce expenses for the two companies and may involve expenses up to 500,000 pounds to contest a suit in the patent court. The problem with the British Company: A patent would be said to be infringed even when only a part of the final process is copied or changed. The patent on C-UK clearly spells out the process for producing flat cardboard sheets and is a bona fide, independent patent that exists on behalf of DD. Therefore under the Patent Act, Yankee Ltd will be deemed to have infringed DD’s patent on the flat cardboard sheets, since “the invention in this case is a process…..any product obtained directly by means of that process…..keeps any such product for disposal or otherwise19. It may be noted that the sheets produced by Yankee Ltd are initially subjected to the every same process that DD sheets are subjected to, although later on the fibre is added to strengthen the cardboard. Therefore, since the initial process used is DD’s there will be an infringement because DD’s patent on C-UK “is in force” and Yankee Ltd is using it “without the consent of the proprietor” by supplying the product within the UK without giving thought to the fact that to a reasonable person that in effect, DD’s patent is being utilized within the jurisdiction of the United Kingdom where the patent is in force.20 The burden of proof will rest upon DD to prove that Yankee Ltd is making use of its patent, but since the cardboard is being manufactured through the use of a similar process, it means that Yankee Ltd is making use of the knowledge and “invention” of DD and therefore a court is likely to award costs for infringing the creative knowledge of DD without its prior authorization or license, since the right to dispose of or offer the patented process for sale rests with DD. Yankee Ltd’s cardboard product is not identical to DD’s it is stronger. The issue of modifications to an existing patent were addressed in the case of United Wire v Screen repair Services21 and modifications and amendments to a process will not avoid infringement. The protection offered by a patent for a process sis also likely to extend to other processes arising out of the basic process. Yankee Ltd has not sought DD’s permission nor acquired a license from DD nor purchased DD’s product and has thereby deprived DD of the opportunity to profit from its product and instead used the patented process without authorization for its own gain. Yankee’s product will not qualify on the basis of novelty of the process of strengthening of the product using fibre, since it does not qualify as an inventive step22 – the process upon which it is based is already state of the art through DD’s patent and the additional process developed by Yankee Ltd would be obvious to a person skilled in the art (as it was to the research engineer of DD). British Yankee Company is infringing the patent C-UK that exists on the preparation of the flat cardboard process. They have added to the product and have used the original process that is a vital part of the cardboard preparation process. Although they have incorporated fibre into the cardboard to make it stronger than the original C-UK product, this will not avoid infringement of the patent on the process, because it is irrelevant that the new product is improved by the process. Moreover this cannot be construed to be a staple commercial product, since the process of waterproofing is unique enough to secure a patent. The material and essential elements of the product have been taken. Sir George had recognized early on, in the case of Printing and registering Numerical Company v Sampson that people who are working with a particular invention are likely to continue to keep improving it,22a and this is the right that would be recognized in DD’s case as well. Future rights to improvements were negatively held as a restraint of trade in the case of Buchanan v Alba Diagnostics23.Since DD is the original patent owner on C-UK, therefore any processes flowing out of it, such as the addition of fibre will also be the property of DD. Thus, in this matter, the British Company can be sued for infringement of patent and an injunction sought on the sales of the company’s cardboard in the UK, since the patent is valid in UK. Damage scan also be claimed for stealing of knowledge and for the lost revenues that have resulted to DD as a result of Yankee’s Limiter’s unauthorized sales of the product. Bibliography * Patents Act of 1977 Cases: * Buchanan v Alba Diagnostics Limited [2004] UKHL 5 * Electric and Musical industries v Lissen (1939) , 56 RPC * Gales Application (1991) RPC 305 * Goddin and Rennie’s application 1996 * Henry Brothers v Ministry of defense (1977) RPC 693 * Printing and Numerical Registering Company v Sampson (1875) 19 Eq. 462 at 464 * Telemechanique (1993) EPOR * Hooper Trading (1993) EPOR 259 * United Wire v Screen repair Services [1997] TLR 467; * Windsurfing International v Tabor Marine (1985) RPC 59 Read More