This is the first in a series of posts taking a critical look at some common intellectual property misconceptions.
1. I can avoid infringing someone else’s rights in a design by making at least three changes to the product.
Another variation of this myth which we have encountered is that changing at least 30% of a work is sufficient to avoid infringing someone else’s design rights or copyright. There is, however, no truth to such statements and you simply can’t put a number on the features of a design which have to be changed to ‘get away’ with copying. In fact, copyright in a protected work is infringed when someone does (or authorises another person to do) any of the following acts, without the licence of the copyright holder, in relation to the work as a whole or any substantial part of it: copying the work, issuing copies to the public, renting or lending the work on the public, performing, showing or playing the work in public, communicating the work to the public or making an adaptation of the work. Similarly, UK design right is infringed by copying a protected design to produce articles exactly or substantially to that design. Finally, a UK or Community registered design, or a Community unregistered design right, is infringed by subsequent designs which do not produce a different overall impression on the informed user, taking into account the degree of freedom the designer had in creating the design.
There is no simple test to determine whether a substantial part of a design has been copied or whether the overall impression has been reproduced – a court must instead decide based on the individual facts of the case, taking into account the relevant case law. It is therefore important to take advice from a suitably qualified patent or trade mark attorney or IP solicitor if you think you may risk infringing another person’s rights. For an example of a recent court case discussing by how much you must change a design in order to avoid infringement of a design registration, see the Trunki case as reported by Darren Meale (2014) and David Brophy (2016).
2. I can protect my invention by posting a description to myself in a sealed envelope.
Again this is simply not true. The only way to seek real protection of an invention is to apply for a patent. In the UK and the rest of Europe, and in many other territories, a patent will be granted to the first person to file a patent application for an invention. If another person independently comes up with the same invention at an earlier date, but fails to file a patent application before the first person, they are not entitled to a patent.
It can still be helpful to keep evidence of having made an invention, particularly if you intend to disclose that invention to someone else under a confidentiality agreement or as part of a joint venture. However, posting a description of the invention to yourself is not, and never has been, of value. More reliable methods for proving you have made an invention include having a description of the invention signed and dated by a reliable witness or depositing the description with a solicitor.
3. Obtaining a patent gives you the right to sell a product.
Obtaining a patent gives you the right to seek a court order to prevent others from making, selling, offering to sell, using or importing a patented product or keeping it for any such purpose, and to claim damages caused by someone infringing your patent or an account of the profits made the infringer. In some cases a patent also allows you to claim a reduction in corporation tax on profits derived from your patented product through the UK’s Patent Box scheme. However, a patent does not give you the right to sell the product yourself or indeed even make the product. This is in part because others may have conflicting rights, including patents, which can prevent you from making or selling your product. Many inventions are, for example, improvements of existing inventions which may themselves already be covered by a third party’s patent. You may also be restricted from selling your product by other regulations or laws.
A related, although equally untrue myth, is that it is necessary to get a patent in order to sell a product. While patents can be commercially beneficial, they are not a requirement in any normal business situations.
4. There is no point filing a patent application because I can’t afford to enforce it.
It is true that prosecuting a patent infringement case in the High Court in England and Wales, or in the Court of Session in Scotland, can be very expensive. There are, however, alternative options. For example, the Intellectual Property Enterprise Court in England and Wales is a specialist IP court which deals with cases for damages claims of up to £500,000 but where costs awards are limited to £50,000 for the main trial and £25,000 for the damages enquiry (compared to the High Court where legal costs are unlimited). The majority of patent disputes also never reach court and are either settled directly by the parties or sometimes through the use of an independent mediator.
In any case, the existence of the patent alone is itself a significant deterrent to potential infringers who cannot know whether the proprietor would intend to enforce it. Although most patent holders will never have to enforce their right, this does not mean the patent hasn’t been effective at preventing infringement. Accordingly, if you have a patent then you should tell others about it (for example by mentioning it on your website) because this can put other people off infringing in the first place. A patent is also an asset which an early stage business may use to attract investors, and the business may be in a better position to enforce the patent once they have received investment.
5. Registered designs can be a low cost alternative to patents.
Patents protect inventions which are new, which involve an inventive step and which are capable of industrial application. In contrast, registered designs protect the appearance of the whole or part of a product. Essentially, patents protect how something works whereas registered designs protect how something looks. In fact, registered design protection in Europe specifically excludes features of appearance of a product which are dictated solely by technical function. There are therefore only a small number of cases where a registered design is really an alternative to a patent, although there are many products which may be protected simultaneously by both patents and design registrations.
Patents and registered designs are also infringed in different ways. The scope of a patent is defined by the claims, which set out the essential technical features of the protected invention and which are infringed by a product or a process having the same technical features. In contrast, the scope of a registered design is defined by the representations (e.g. drawings or photographs) of the design which have been registered, and the design is infringed by products which produce the same overall impression as the registered design.
How can we help?
If you have any questions regarding intellectual property, please contact us.