Reform of Japan's Patent and Design Acts Initiated
The Ministry of Economy, Trade and Industry has announced that Japan’s Cabinet has approved a Bill for the Reform of the Patent and Design Acts, and the Bill has now been submitted to the National Diet. The Bill is expected to be passed and be implemented in early 2020. If so, the following changes will occur:
- Designs will not need to be recorded or displayed on articles in order to be protectable. As such graphic images that are provided via computer networks, displayed on electronic devices or projected onto another surface will also be protectable. However, applicants must specify how the graphic image will be used.
- Designs protection will be extended to include immovable property. As such the design of building exteriors and interiors will be protectable.
- The period in which the same applicant can file a design that is similar to a prior application of theirs (principle design) will be extended from prior to the publication of the principle design in the Official Gazette, to 10-years from the principle design’s application or priority date.
- The duration of the design right will change from 20-years from the registration date to 25-years from the application date.
- A single design application will be able to be made in respect of multiple designs.
- Enhancing the protection of registered designs for finished products by allowing third party manufacturing or importation of the main components thereof to constitute indirect infringement.
- Where third party infringement of a patent right is suspected the rights holder can request neutral technological experts to conduct on-site inspections of plants and other sites of the alleged infringer.
- Allowing compensation for infringing acts beyond what the rights holder could have produced themselves on a deemed licence basis.
Examination Based on Allowed Corresponding Foreign Applications Soon to Finish
Currently applicants can request that their Singaporean patent application is examined on the basis of allowed corresponding foreign applications, which is both quicker and cheaper than requesting substantive examination. However, this option will no longer be available for applications filed (or having a deemed filing date) from 2020 onwards, with such applications having to request substantive examination.
Look ... Is It A Bird? ... Is It A Plane? ... No! It's Prior Art!
In 2019 EWHC 991 E Mishan & Sons Inc v Hozelock Ltd patents for a commercially successful product survived an obviousness attack based on the inventors own prior use, but were nonetheless found to be obvious in light of a publication in a distinct area of technology.
In early November 2011 Mr Berardi filed a US patent application for an expandable garden hose after reducing it to practice at his home. This became the priority application for subsequently granted patents in a significant number of jurisdictions. The hose, which was branded as the XHose, consisted of two tubes one inside the other, the inner tube (which carried the water) being made of an elastic or expandable material such as natural rubber, and the outer tube, several times as long, made of a non-elastic and flexible material such as nylon or polyester. By connecting the tubes at both ends but not otherwise, the hose, when empty of water, would be the same length as the inner tube (with the outer tube ruffled around it); but when the hose was filled with water, the inner tube would expand to the length and diameter of the outer tube (which constrained it from expanding further and bursting). This construction of garden hose is qualitatively different from prior garden hoses and resulted in a garden hose that is less bulky, lighter, easier to store and has no tendency to kink. The XHose proved to be commercially successful and resulted in other manufacturers offering expandable garden hoses.
In an earlier judgment involving a different manufacturer a novelty and obviousness attack based on two pieces of prior art (Ragner and McDonald) failed, with the appeal on the basis of the obviousness attack being dismissed by the Court of Appeal. In the current case obviousness was again pleaded in relation to both pieces of prior art as well as an obviousness attack based on Berardi’s own prior use.
The Judge found that the skilled person would be a hose designer with exposure to both garden and technical hoses, and largely accepted the parties’ respective characterisations of the common general knowledge. However, after construing the terms “unattached” and “coupler” the Judge held that neither version of the Hozelock hoses fell within the scope of the claims on a purposive construction. Nonetheless, after applying the three Actavis questions, the Judge held that the Hozelock hoses infringe the patents on a doctrine of equivalents basis if they are valid. In the case of the second version of the Hozelock hose that finding was subject to purposively construing “non-elastic” as a non-technical term or in the alternative by applying the three Actavis questions to that term to find that the patentee did not intend strict compliance with the literal meaning of “non-elastic”.
The allegation of obviousness on the basis of prior use was based on the work that Berardi did in his garden on the prototypes, and what could be seen by a notional skilled person standing on the public road at the front of his house. The evidence showed that such a person would have an uninterrupted view of anything done in front of the house and (although more distant) of anything done at the sides of the house. Also relevant in this respect are some of the videos Berardi’s wife made, for proof of reduction to practice purposes, of Berardi working on the prototypes. In particular, this involved work outside the house on three dates prior to the filing of the patent application. While conceding that on any one of those dates there was not sufficient disclosure to a notional skilled person standing on the public road at the front of the house, it was alleged that mosaicking those prior uses would be enabling. However, in principle, mosaicking of prior uses is only permissible if such disclosures cross-refer to each other such that each subsequent disclosure would cause the skilled addressee to consult the earlier disclosures. On the evidence the Judge held that on account of the different perspectives available on those dates such a notional skilled person would not have had any reason to believe that Berardi was doing anything other than watering his garden.
Although not required given the above finding the Judge further considered whether Berardi’s actions amounted to a prior use given that there was no evidence that any third party actually did view his actions on those dates. While rejecting the arguments that the ephemeral or transient nature of the uses or that they occurred on private property counted against them being disclosures, the Judge went on to accept Berardi’s claim that if a person started observing him then he would have stopped and packed up the gear. As such, the Judge distinguished this situation from a publication available in a library for anyone who chooses to view. In further elaboration of this point the Judge gave the following example:
the inventor advertised a public lecture and, even though no-one came, proceeded to give it so it could be recorded for his own purposes, that would on the view I take be an oral disclosure that was accessible, and hence made available, to the public and it would not matter that no-one had in fact turned up. But that would be very different from the inventor talking out loud to himself while taking a walk along a deserted but public footpath over the moors. If in the latter case he would have stopped talking as soon as any member of the public was close enough to hear, I do not think he would have made anything available to the public.
Like the previous decisions the Judge concluded that the patents were not obvious in light of the Ragner publication as it would require inventive steps to move from the disclosure in Ragner to the disclosure in the patents. It was also noted that Ragner showed Berardi and others his expandable hose that utilizes a spring mechanism with a view to raising funds for its commercial production. The next day Berardi bought materials and began working on what would become the XHose. However, the Judge did not accept the argument that this shows that the XHose is obvious in light of Ragner’s hose. The Judge considered Berardi to be an inventive type of person and found that Berardi’s subsequent actions could not provide the basis for inferring that the XHose would be obvious to an uninventive skilled person who had been shown the Ragner hose. The Judge also accepted Berardi’s claim that he had conceived the idea of the XHose before meeting Ragner, but only decided to proceed with it after deciding that Ragner’s hose would be unlikely to be commercialised.
However, unlike the previous decisions the Judge concluded that the patents are obvious in light of the McDonald publication, which discloses a dual layered oxygen hose for aircraft crew which is self-elongating when gas pressure is applied inside it and which self-contracts when the gas pressure is lowered. After noting the many similarities in features the Judge noted that the McDonald disclosure does not expand by the operation of water pressure and does not have a water-flow restrictor. The Judge then held that while the aerospace industry is in general quite removed from garden hose design, the skilled person could still be expected to consider aerospace industry hoses when considering options for garden hose design, and that the novel type of hose in the McDonald disclosure would not put them off considering it. The Judge found that a hose designer would be used to designing hoses for both gases and liquids and would immediately appreciate that the construction in the McDonald disclosure would work for other fluids and what adaptations would be needed. In making the finding of obviousness the Judge accepted that the commercial success of the XHose was on account of meeting a long felt want, but in the absence of evidence that hose designers generally knew of the McDonald publication the non-adoption of the construction therein could not be used as evidence of it requiring an inventive step.
3. Trade Marks
Court's Decision Evoques Roar of Approval from Jaguar
In Jaguar Land Rover Limited v Jiangling Holdings Co Ltd (Case (2016) 10383 BJ 0105 Civ. Tri.) Jaguar Land Rover was successful in using the relatively new Anti-Unfair Competition Law (AUCL) against a Chinese competitor in the Chinese vehicle market.
In 2010 Jaguar Land Rover introduced its high-end Range Rover Evoque SUV to various markets including China. It was well received and won various design awards. However, when Chinese automotive company Jiangling Holdings Co Ltd subsequently introduced its Land Wing X7, a low-cost SUV sharing or closely imitating many of the design features of the Evoque, Jaguar Land Rover was far from flattered.
Article 6(1) of the AUCL prohibits the unauthorized use of the same or similar product name, packaging or decoration as that used by another operator in that market who has a certain influence or reputation in those features amongst consumers. While the allegation of unlawful copying was made prior to the new AUCL, it was applied with retrospective effect by the Beijing Chaoyang District Court. That aspect of the new AUCL is effectively unchanged from the prior version.
While finding that the overall design of the Land Wing X7 is essentially identical to the Evoque the Court agreed that five design features in particular had been duplicated: the sloping car roof, the floating car roof, rising feature lines, a clam-shell shaped engine bonnet, and the contour of the entire vehicle. Each of these elements was found to be distinctive and having a reputation attaching to the Land Rover Evoque. The Court rejected Jiangling Holdings’ argument that those design elements were unprotectable on account of being merely functional. Finding to the contrary, the Court noted that incorporating some of the design elements required other modifications so as not to interfere with the vehicle’s functionality.
While this decision was achieved using a provision of the new AUCL that is little changed from the prior version it is still notable for being the first time a Chinese Court has found in favour of a Western automobile company’s intellectual property rights against a Chinese automotive manufacturer. It is likely that the new AUCL will increase the number and scope of such enforcement actions, particularly given that it now includes a catch-all provision. Article 6(4) prohibits businesses from engaging in other acts of confusion sufficient to mislead a person into thinking that the goods of one business is that of another business or has a particular connection with another business.
Chameleon Like Qualities of Logo's Finnishes
Finland has amended its trade mark legislation with effect from 1st May 2019. Primarily the changes give effect to the changes introduced by EU Directive (EU) 2015/2436 as well as making Finland’s law compliant with the harmonized administrative trademark registration procedures provided for in the Singapore Treaty.
In addition to those changes trade marks registered under the revised Act that consist of a black and white logo will not be considered to cover all colour variations of the logo. This interpretation will not apply to black and white logo marks registered under the pre-existing legislation (as well as not in respect of any EU trade mark registrations).