The Available Defences Applicable to a Defective Product Claim: Marketing Law - Essay Example

a) Patent Protection The UK’s Intellectual Property Office defines a patent as a means by which inventors may protect specific “features and processes” that facilitate their inventions.1 The Patent Act 1977, as amended provides a clearer understanding of patents and patentable property. Section 1(1) of the 1977 Act provides that in order for a product to be patentable and thereby capable of protection it is required to be original, innovative and must have industrial possibilities.2 Section 1(2) goes further to limit the application of the term innovative by exempting certain creations from designation as inventions for the purposes of patent protection. These exemptions include discoveries, “scientific theory or mathematical method,”3 literary, dramatic, musical or artistic creations, mental acts, games, business methods, computer programmes and information presentations.4 On the facts of the case, the Exit Poll appears to be an original and innovative creation that does not fall within the exemptions provided for in Section 1(2) of the Patent Protection Act 1977. Moreover, Barak and John have reasonable grounds to believe that the Exit Poll has industrial value. To this end, courts will typically look to ascertain whether the property is novel or inventive.5 In this regard, the Exit Poll does appear to fit the criteria for patentable property. It therefore follows that the invention is patentable property within the meaning of Section 1 of the 1977 Act. The Patents Act 1977 as amended provides the primary source of substantive law with respect to patent protection within the UK. The 1977 Act incorporated the application of UK patent protection within the ambit of the European Patent Convention as well as the Patent Cooperation Treaty. Subsequent statutory provisions such as the Copyright, Designs and Patents Act 1988, the Regulatory Reform (Patents) Order 2004 and the Patents Act 2004 have modified the Patents Act 1977.6 In order to obtain patent protection within the UK it is necessary to complete an application form with the Intellectual Property Office. The form requires a full description of the invention together with any applicable drawings, claims and an abstract.7 Form 9A, Request for Search form is also required and can be submitted online.8 Form 9A compels the Intellectual Property Office to conduct a search for the purposes of determining whether the invention seeking registration for protection is indeed new and satisfies that particular requirement under Section 1 of the Patent Protection Act 1977.9 A statement of inventorship is also required and in this case must include both Barak and John.10 Each of these items, together with the application fee must be submitted to the Intellectual Property office within 12 months of submitting the application for patent protection registration.11 Although the application is published so that the public is aware of the new technology and its application for patent protection, an application typically takes two to three years to process.12 However, the application process can be accelerated and registration can occur in less than a year. This requires one of three separate approaches, the combined search and examination, accelerated search and/or examination or early publication.13 An application for fast grant must include the reasons for seeking accelerated registration. Justifiable grounds are reasonable apprehensions about the risk of patent infringement. This might be a concern for Barak and John given the relatively small size of the exit poll and its use over the internet. The fact is, the product is ready for marketing and will be exposed to the public domain, making the risk of exploitation and infringement a very real possibility. The entire purpose of patent protection via registration is to prevent infringement and exploitation of an invention. However, the law seeks to balance exploitation against the public’s interest in gaining access to innovative creations. Dr. Llewelyn explains that is why “...there has been considerable strictness exerted in defining the requirements which have to be met before a right will be granted.”14 The underlying goal is to ensure that the restrictive use of patents by others does not impede the rights of others. This explains why it is necessary for evidence of the patent’s originality and that it is not among the “categories of excluded material.”15 Patent protection has as its goal the prevention of product exploitation, particularly by those in competition. Ultimately, patent protection regulates how others may or may not copy, manufacture, sell and otherwise use a registered patent without authorization from the patent holder. Should others use a registered paten without prior authorization of the patent holder, the patent holder is at liberty to commence legal action for damages and/or injunctive relief in respect of such exploitation.16 Patent protection is best understood in terms of how infringement applies. By virtue of Section 60 of the Patent Protection Act 1977 there are three main ways in which a registered patent may be infringed.17 To start with, infringement hinges on failure to obtain the patent holder’s permission and in the absence of permission the following amounts to statutory patent infringement: 1. In the event of a patented product: disposal, offers to dispose of, imports, uses or retention for disposal “or otherwise.”18 2. In the event of a patented process: Use or offers of use of the process knowing that the use of the process without the holder’s consent would amount to patent infringement.19 3. If the invention is a process: disposal of, offers of disposal, imports or uses of “any product obtained directly by means of” the patented process or retention of that product “for disposal or otherwise.”20 Remedies for infringement pursuant to Section 60 of the 1977 Act are contained in Section 61 and can apply to patents that in the application for registration process as well as registered patents.21 A civil action under section 61 permits applications for injunctive or interdictions restraining an “apprehended act of infringement.”22 Other remedies include applications for an order for delivery or destruction of a patented product which is subject to patent protection and the use of such patent is infringed.23 In addition the patent holder may apply for damages for the infringement,24 and an accounting of profits in respect of the infringement,25 or for declaratory relief.26 Declaratory relief is no more than a statement that the patent is “valid and has been infringed.”27 Patent protection with respect to a registered patent will be effective throughout Europe by virtue of Article 75 of the European Patent Convention 2000 provided a European patent application for registration is filed with a national authority or the European Patent Office.28 John and Barak are therefore advised to complete the application for a community patent at the time of applying for a UK patent registration. This is important since Sections 22-23 of the Patent Act 1977 requires clearance from the UK’s Intellectual Property Office before an application for a foreign patent can be processed in cases of sensitive material.29 Community patent protection is subject to Article 69 and its protocol on interpretation of Article 69 of the European Patent Convention 2000.30 To this end, community protection is limited by virtue of the extent to which the patent is described in the patent claim. Article 69 provides as follows: “'The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”31 The Protocol on the interpretation of Article 69 requires that the patent description is not constructed literally and that due consideration is given to the drawings that accompany the patent.32 The UK’s Court of Appeal in Improver v Remington [1990] FSR 181 explained the extent to which Article 69 affords protection of a community patent as follows: “...in the end the question is always whether the alleged infringement is covered by the language of the claim...”33 Expounding on this approach, the court in Telsonic AG’s Patent [2004] RPC, 38 ruled that ultimately what must be considered is how the skilled addressee will interpret the language of the claim so that community protection will apply to that extent.34 In order to achiever optimum protection throughout the European Community, Barak and John are therefore advised to ensure that the descriptions and drawings used on the patent registration form include each and every aspect of the Exit Poll that they wish to protect from patent infringement. The question of whether or not John and Barak used U-Vote’s facilities to invent the Exit Poll is question of fact. If it can be proven that they used U-Vote’s facilities in the course of their employment the patent protection will be shared with U-Vote.35 However, John and Barak, as IT professionals may be in a position to defeat any claim by U-Vote and ultimately obtain patent protection to the exclusion of their former employer. b) Trademark A trademark is a distinguishing feature of any business entity or product that sets it apart from others.36 Distinguishing features may include a name, logo, slogan, design, colours and numbers either individually or a combination of any of these characters.37 In this case, Barak and John hope to rely on a distinctive design which is similar to those used by MP3 players and worry that manufacturers of those items might have a case of passing off. Ultimately, the question is whether or not Barak and John’s design will lead to a misrepresentation that the Exit Poll will cause confusion as to the origins of the Exit Poll and that they intend to use that confusion to promote the Exit Poll.38 In order for the manufacturers of MP3 players to substantiate a case of passing off in tort, against Barak and John they will necessarily have to prove both deception and damages or the likelihood of damages.39 Likewise, the manufacturers will also have to prove that the MP3 players and the Exit Poll are vastly similar products that share the same market segment.40 The Exit Poll is an entirely different product than the MP3 player. The former is a product aimed at persons interested in following and predicting election results whereas the latter is primarily for entertainment purposes. It is entirely unlikely that the average consumer would confuse the two products and that as such, Barak and John can pass the Exit Poll off as an MP3 player. To this end, there can be no deception or damages since confusion of the two products are entirely out of the question. U-Vote’s claim to the brand-name Exit Poll is a particularly difficult hurdle for John and Barak and they might want to use a different name. This is particularly so if U-Vote has a registered trademark. Section 10(1) of the Trade Marks Act 1994 provides as follows: "...a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered..."41 Moreover, a similar situation was decided in the case of Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199 where a former employee used a product similar to his former employer and used the same name. The House of Lords ruled that: “I cannot help saying that, if the defendants are entitled to lead purchasers to believe that they are getting the plaintiffs' manufacture when they are not, and thus to cheat the plaintiffs of some of their legitimate trade, I should regret to find that the law was powerless to enforce the most elementary principles of commercial morality.”42 In all the circumstances, it is best that John and Barak attempt to register another trade name, since Exit-Poll is already used by a company that produces election products. Registration of a different name will also protect John and Barak because ultimately confusion among consumers may also negatively impact the sales potential of John and Barak’s new product. In any event, John and Barak should apply for trade mark registration forthwith since protection commences at the time of registration.43 c) Copyright By virtue of the Copyright, Designs and Patent Act 1988 as amended, John and Barak may register for copyright protection of the song “corporate wars.”44 Copyright only applies to produced work and does not apply to ideas alone.45 As such, U-Vote cannot claim copyright protection for ideas that may originate from John and Barak’s experience as employees with U-Vote. The Intellectual Property Office explains that there is no official registration process for copyright protection and protection is automatic.46 In order to obtain copyright protection, John and Barak should ensure that their recordings are marked with the copyright sign with the creation date.47 The court explained in R Griggs Group Ltd. & Ors v Evans & Ors [2003] EWHC 1914 that copyright laws offer protection of the labour and skill that is expended in the creation of original work. Any thing that does not “imply sufficient literary skill or labour” cannot acquire copyright protection.48 Therefore U-Vote’s claim of copyright infringement on the grounds that the song reflects the working experience at U-Vote does not give rise to any form of copyright protection. It therefore follows that U-Vote has no claim for copyright infringement. There is no literary skill, or labour associated with working at U-Vote. It is the actual song that is a product of literary skill and labour and only that product can be protected under UK Copyright laws. Second Report to Barak Re: Product Liability Date: 1 March, 2009 Barak and John may be liable in damages to consumers for defective products with respect to the malfunction send icon in both tort and contract law. The Sale of Goods Act 1979 provides for compensation for faulty or defective products under a sale’s contract.49 Moreover, courts typically interpret the 1979 Act in such a way that goods pursuant to a contract for sale are meant to correspond with the sale’s description.50 Additionally, sold goods are likewise required to be of merchantable quality.51 In other words the goods should be fit for the purposes that they are generally purchased and the consumer has a right to reasonably expect those goods to fit for that purpose.52 Although the Sale of Goods Act 1979 applies to the vendors under contract law, Barak and John as the manufacturers or owners of the manufacturing factory are ultimately liable to the consumers who may seek to recover damages under the law of tort. There is no privity of contract between Barakohn and the consumer and this is where the neighbour principle enunciated by Lord Atkin in Donoghue v Stevenson [1932] AC 562 will apply. The tort of negligence in respect of product liability evolves out of this neighbour principle so that damages are founded on principles of the duty of care so that the chain of custody and distribution of defective products ensures that all distributors are under a duty of care to the protection of the ultimate consumer. Much of these developments have been incorporated into the Consumer Protection Act 1987 which incorporates Council Directive 85/374 EEC. The result is that there is virtually strict liability for defective products. Council Directive 85/374/EEC defines a defective product as that which “does ‘not provide the safety which a person is entitled to expect.’”53 The Council Directive however, leaves much of the issue of liability to domestic law. As Fargrieve explains: “Crucially, under the Directive, various key elements of a product liability action are simply left to domestic law, including areas as fundamental as causation, remoteness of damage, standard of proof, contributory acts, assessment of damages, procedure and rules of discovery.”54 To this end the UK’s Consumer Protection Act 1987 has the following objectives which will determine Barakohn and John and Barak’s liability: Identifying the persons or parties liable for defective products. The identification of the defective products or parts. The factors that characterize the defective product. The scope of liability. The available defences applicable to a defective product claim. Incidental matters such as the time limited for pursuing damages and exemption of liability by an agreement.55 Under the Consumer Protection Act “Producers” “Importers” and brand owners can all be liable for damages in respect of defective products.56 It therefore follows that as brand owners and producers Barak and John and their company will not be able to escape liability. The only means by which Barak and John may escape liability is found in Section 2(1) of the Consumer Protection Act. Section 2(1) provides that the plaintiffs prove that the damages suffered was a direct result of the defective product and not contributed or caused by some wholly independent factor.57 If for instance the defect was caused by some part manufactured by an entirely different entity, John and Barak would not be liable. However, if the defect originated from their factory, liability is strict and does not depend upon proof of negligence. Bibliography Aswan Engineering Establishment v Lipdine Co [1987] 1WLR 1. Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322. Bainbridge, David . (2007) Intellectual Property. Pearson Longman. Biogen Inc v Medeva plc [1997] RPC 1. Christopher Hill v Ltd v Ashton Piggeries [1972] AC 441. Consumer Protection Act 1987. Copyright, Designs and Patent Act 1988. Cornish, W.R.,(2003) Intellectual Property: Patent, Copyright, Trade Marks and Allied Rights , London, Sweet & Maxwell. Council Directive 85/374/EEC. Drexl, J and Kur, A. (2005) Intellectual Property and private international Law: heading for the future, Oxford: Portland, Or: hart Pub. European Patent Convention 2000. Fairgreive, Duncan. (ed) (2005) Product Liability in Comparative Perspective. Cambridge: Cambridge University Press, 1st Edition. Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199. Intellectual Property Office. (n.d.) Available online at: http://www.ipo.gov.uk/patent.htm Retrieved 2 March, 2009. Intellectual Property Office. (n.d.) Apply for a Patent. Available online at: http://www.ipo.gov.uk/types/patent/p-applying/p-apply.htm Retrieved 2 March, 2009. Intellectual Property Office. (n.d.) Copyright. http://www.ipo.gov.uk/copy.htm Retrieved 2 March, 2009. Intellectual Property Office. (n.d.) “Getting Your Patent Granted More Quickly.” Available online at: http://www.ipo.gov.uk/p-fastgrantguide.pdf Retrieved 2 March, 2009. Llewelyn, Margaret Dr. “Proposals for the Introduction of a Community Utility Model System: A UK Perspective.” [1995] 2 Web JCLI http://webjcli.ncl.ac.uk/articles2/llewel2.html Retrieved 3 March, 2009. Patent Protection Act 1977. Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873. R Griggs Group Ltd. & Ors v Evans & Ors [2003] EWHC 1914. Sale of Goods Act 1979. Telsonic AG’s Patent [2004] RPC, 38. Trade Marks Act 1994. Read More