SAMPLE ANSWER PAST PAPER EXAMS COMPARATIVE DESIGN PATENT LAW (UK vs US) By Ahmad Rawi The writer

can be contacted at

scholars.assist@gmail.com
In order to advise BRODON BREVE Motor Company Ltd (BRODON BREVE) as to its rights under the UK Copyright Design and Patents Act 1988 and also their chances of successfully suing LALALEX Spare Parts Ltd (LALALEX) in the US,several issues in the BRODON BREVE-LALALEX case above will be examined viz : 1. 2. 3. 4. Whether the subject-matter is protected or protectable under the relevant legislations. Whether BRODON BREVE has locus standi to sue Whether BRODON BREVE rights under the relevant legislations have been infringed by Whether there are any possible exceptions and defences that could be relied upon by LALALEX in an action for infringement against them by BRODON BREVE. SUBJECT MATTERS PROTECTED With regard to UK situation, it is submitted that there is only one subject matter in the above problem namely the Sherry Sports car design. In the UK, since the Sherry Sport car design is not registered, BRODON BREVE has to rely on unregistered design right accorded by Part III of UK Copyright, Design and Patents Act, 1988 (UKCDPA). Under the S.213(2) UKCDPA, design is defined as design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.Assuming that Sherry Sports car design was designed after August 1,1989 (the date of implementation of UKCDPA 1988), then design rights would subsist in the original design of any aspect of the shape and configuration of the whole or part of the Sherry Sports car provided that it fulfilled the criteria of originality (S. 213(1) of UKCDPA) and is not caught by any exclusionary provisions i.e. Section 213(3) to Section 213(7).It is submitted that the design of the door of Sherry Sports car is not protectable as it is caught by the must fit exclusionary provision of S.213 (3)(b)(i) of UKCDPA 1988. (Ocular Science Ltd). CRITERIA In the UK, for a design rights to subsist in Sherry Sports car overall design, it must fulfil various eligibility criteria as laid down by UKCDPA 1988 namely it must fulfill the requirement of originality (S. 213(1) of UKCDPA) and is not caught by any exclusionary provisions i.e. Section 213(3) to Section 213(7). It is submitted that Sherry Sports overall design is not caught by the must fit,must match exclusionary provision of S.213 (3).

LALALEX.

Originality means that the design is not copied but is an independent work of the designer (C&H Engineering v. F Klucnik & Sons Ltd [1992] FSR 421).In order to be original, a further requirement stipulates that SHERRY SPORTS design must not be commonplace in the design field in question at the time of its creation (Section 213(4) UKCDPA). With regards to Section 213(4), in order to determine whether it is common place or not, the court will conduct an objective comparative exercise to determine the similarities and difference of a design in issue with other designs in the relevant field and it is the court that will decide whether the design is commonplace or not (Farmers Build Ltd v Carier Bulk Material Handling Ltd [1999] RPC 461).Among the factors considered by the court are the closer similarity of the various designs in the relevant field to each other, which points to the commonplaceness of the design, especially in the absence of copying (Farmers Build Ltd v Carier Bulk Material Handling Ltd [1999] RPC 461).Another factor which is considered by the court to determine commonplace-ness is whether the alleged infringed design is trite and trivial or of the type that does not excite peculiar attention to those in the relevant art, if it is, then the court is more inclined to make a finding of commonplace-ness and negates originality (Ocular Science Ltd v Aspect Vision Care [1997]RPC 289;followed in Philip Parker & Ors. v. Stephen Tidball & Ors.[1997] FSR 680).In deciding the relevant design field, the court will assume the mantle of the notional designer of the article at issue and will determine the scope of the relevant design field based on the field which the notional designer of the article at issue would be familiar with (Lambretta Clothing Co. v. Teddy Smith (UK) Ltd [2005] RPC 6, CA). In determining the scope of the field, the court called for a reasonably broad approach (Lambretta Clothing Co. v. Teddy Smith (UK) Ltd [2005] RPC 6, CA) which mean that in BRODON BREVEs case, the relevant field should be the sedan automobile field in general (excluding the SUV and 4x4 segments) and not the narrowly focused two-doors,sports automobile field. It is submitted that SHERRY SPORTS also fulfil the requirements of limb of S.213(5) (a) of UK CDPA.Though Mat Kreatif, the designer of SHERRY SPORT, is a Malaysian, he was commissioned to design the car by BRODON BREVE, a UK company (and thus BRODON BREVE is a qualifying person under S.217(1)(a)).Thus the design qualifies for protection under UKCDPA 1988 by virtue of s.213(5)(a) read together with s.219(1) (qualification by reference to commissioner or employer). Since an article (i.e. the SHERRY SPORTS car has been made to the design), it is submitted that SHERRY SPORTS design fulfils the requirement of s.213(6) of UK CDPA 1988.It is also submitted that though the design is not printed by Mat Kreatif,SHERRY SPORTS design fulfil the recordal requirement (s.213(6) first limb) as on the authority of Mackie Designs v Behringer [1999] RPC 717 design document can exist in the form of data stored in a computer. As a conclusion, It is submitted that that we can say with certainty that SHERRY SPORTS design fulfil all the requirements of eligibility for protection of unregistered design rights under UK CDPA 1988 except for non-commonplace requirement which depend on the court to decide. It is submitted that if after considering all the evidence, the court found that SHERRY SPORTS design is not commonplace in the sedan automobile field, SHERRY SPORTS design will be considered original and is therefore

protectable. However, if SHERRY SPORTS design is proven to be commonplace according to the court, it would not be original and therefore will not be accorded the protection of unregistered design right.

OWNERSHIP In the UK, with regard to SHERRY SPORTS design ownership, it is submitted that BRODON BREVE is the owner of SHERRY SPORTS design by virtue of section 215(2) of UKCDPA 1988 (first owner of design right belongs to the person commissioning it). As such, by virtue of Section 229(1) UKCDPA, infringement of design right in SHERRY SPORTS design is actionable by BRODON BREVE as the design right owner. RIGHTS INFRINGED We now will advise BRODON BREVE, as the design rights owner, on its rights under the UK CDPA 1988 and USC 35 (US Patent Act) and whether those rights have been infringed by any act of LALALEX Spare Parts Ltd. In the UK, with regard to SHERRY SPORTS design, assuming that the court finding (with regard to the issue of commonplace) is in favour of BRODON BREVE i.e. SHERRY SPORTS design is not commonplace and therefore original as to make it protectable under UK CDPA 1988, BRODON BREVE, as the owner of unregistered design right in SHERRY SPORTS design is given the exclusive right by Section 226 UK CDPA 1988 to reproduce the design for commercial purposes by, inter alia, making articles to that design (S.226(1)(a)). S.226 (3) of UK CDPA 1988 further provides that design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner. It is submitted that BRODON BREVE has no cause of action against LALALEX since LALALEX copied and reproduced the design for the door to SHERRY SPORTS only and does not copy or reproduce the whole design of SHERRY SPORTS (i.e. they do not produce overall imitation SHERRY SPORTS).It is submitted that based on the authority of Ocular Science Ltd v Aspect Vision Care Ltd [1997] RPC 289, the design of SHERRY SPORTS door is caught by the interface provision (S. 213(3)(b)(i) of UK CDPA 1988) and thus is not protected by unregistered design right. EXCEPTIONS AND DEFENCES

We have decided that BRODON BREVE has no cause of action against LALALEX.However, even if BRODON BREVE has cause of action against LALALEX, it is submitted that LALALEX will have defence.In particular the commonplaceness of the design in issue (S.213(4)) UK CDPA). In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 the held that merely changing the scale of an existing design would not create a fresh right.LALALEX may point out that the fact that the design was actually made by only tweaking certain parameters provided by commercially available computer software shows that car door design is commonplace. It is not given in the fact when Mat Kreatif designed the car, however the first marketing occurred in 2005 as such since UK CDPA 1988 intended to protect original design either for 15 years from date of creation or for 10 years from date of first marketing (whichever is less) than 10 years protection will apply (ending in 2015).By virtue of this LALALEX could argue that during the last five years anyone may apply for a licence of right which entitles them to use the design. BRODON BREVE US SITUATION In the US situation, it is submitted that that LALALEX may contest the validity of BRODON BREVEs design based on few grounds. Design patent under USC 35 is accorded for any new,original and ornamental design for an article of manufacture (35 USC,S. 171). S.171 further provides that the provisions applicable to utility patent is also applicable to design patent. As such requirement as to nonobviousness (s.103) is also applicable to design patent. LALALEX may invalidate BRODON BREVEs design patent by proving that the design patent is caught by any of the novelty defeating provision in S.102. Apart from that, BRODON BREVEs US design patent can also be attacked on the ground that it does not fulfil the requirement of non-obviousness. By virtue of S.171, 35 USC, the provision applicable to utility patent under USC 35 (US Patent Act) is also applicable to design patent. Under section 103 of the Patent Act, a patent will be invalid if the subject matter is obvious to a person of ordinary skill in the art. The court in Graham v John Deere provided a four factor test to assess obviousness, namely : 1) Determine the scope and content of the prior art. This factor is analyzed using s 102 of the Patent Act. 2) Ascertain the difference between the prior art and claim at issue. 3) Determine the level of person having ordinary skill in the art. 4) Utilize secondary consideration e.g. market success which points to long felt need by the consumers for the invention. 5)The Court of Appeal of the Federal Circuit(CAFC) imposed a fifth factor i.e. look for a teaching,suggestion or motivation to combine the prior art (the presence of which will render the invention obvious).

It is submitted that the SHERRY SPORTS design would have been obvious (and thus render the design patent invalid) to a car designer (the PHOSITA) considering the manner in which Mat Kreatif come about with the design i.e. with the help of a computer programme which is commercially available from vendor. LALALEX may also attack the validity of BRODON BREVE on the basis that it lacks ornamentality i.e. the design is functional (L.A. Gear Inc v Thom Mcan Shoe Company and Melville). CONCLUSION In conclusion, it is submitted that in The UK, BRODON BREVE has unregistered design right in the overall design of SHERRY SPORTS, but not to the design of the door of SHERRY SPORTS. Since LALALEX only copied and reproduce the design to the door of SHERRY SPORTS, BRODON BREVE has no cause of action against LALALEX in the UK. In the US, assuming that SHERRY SPORTS overall and components design is patented under USC 35,BRODON BREVE will have cause of action for infringement of design patent.however,LALALEX have several defences and exception that may invalidate BRODON BREVEs design patent.