INTELLECTUAL PROPERTY

NOVELTY : ORIGINALITY : COMMONPLACE DESIGNS : DESIGN RIGHT : MUST FIT EXCLUSION : MUST MATCH EXCLUSION : PATENTS : ROOFING PANELS FOR CONSERVATORIES : INVENTIVE STEP NOT FULLY EMBODIED IN PATENT : INFRINGEMENT OF DESIGN RIGHT AS A WHOLE : ROOFING SYSTEM : MODULAR PANELS : FIXING METHODS

Although a claimant's patent for conservatory roofing panels was valid, a competitor had not infringed it because the inventive step was not fully disclosed in the patent. However, the claimant's design as a whole was groundbreaking, and the competitor had infringed it as the differences in the latter's design would have been imperceptible to the eyes of the person to whom the design was directed.

The claimant manufacturer (U) claimed that the defendant distributor and manufacturer (E) had infringed its patent and design rights. E counterclaimed for revocation of the patent. U was a market leader in the making and supplying of conservatories, notably a modular system (the U500) characterised by a particular method of joining plastic panels together. Previously, two people were needed to hold the panels together overhead, in situ, while a stiffening bar was inserted along the join. Throughout the process there were attendant difficulties of lining up, negotiating flaws in the plastic and balancing the panels. The U500 method allowed the panels to be laid side by side before putting them in site, and a stiffening bar "zipped" them together, a procedure requiring only one person. E distributed the U500, and later manufactured its own (the P500) designed to compete with it. U alleged infringement of its patent and its design right in both the U500 system as a whole, and in respect of many of the components. E argued that the zipping process was not disclosed by the patent and was therefore not part of the invention. E contended that claim 1 of the patent only covered a system in which the roofing panels partially restrained each other vertically from moving before the stiffening beam was slid into the gap between them, and therefore the P500 did not infringe. It was agreed that the P500 would infringe if the patent also covered a system in which the roofing panels were simply placed side by side and were held together by the stiffening beam alone. E submitted that U's patent was invalid and ought to be revoked as the patented invention was obvious and not novel. E argued that U's designs were not original, and were commonplace when they were created. Part of the designs were outside the scope of design right and were within the "must fit" and "must match" exclusions. E contended that is own designs were original.

HELD: U500 and all its components were independently designed by the U team and not copied from any other source. The U500 patent was valid. There was novelty in the U500 in the way the bar restrained the coupling members of the panels, and in that they could be fitted without lifting or tilting. There were no prior instructions to do that and they were not obvious. Those features constituted a modified version of the description of an inventive step, even though the zipping process itself had not been embodied in the patent. However, the P500 did not infringe the patent. Its panels were not restrained by any of its parts and this had no material effect on the way the invention worked. The must fit and must match exclusions did not apply to the U500 design right as a whole, which did not have to fit or match anything else. The U500 as a whole design was groundbreaking. P500 did infringe U's design right in the assembly as a whole and in the design of the panels taken as a whole. The differences in design would have been imperceptible to the eyes of the person to whom the design was directed, following C & H Engineering v K Klucnik & Son Ltd (No2) (1992) FSR 667.

Application granted in part.

ULTRAFRAME (UK) LTD v (1) EUROCELL BUILDING PLASTICS LTD (2) EUROCELL PROFILES LTD (2004)

Ch D (Lewison J) 22/7/2004

"Lawtel": 31st August 2004