Chapter 15Business propertyis for the case to be completed within six months of
being commenced. The procedure can be used if both
sides agree to it or if the court agrees with one party that
it is appropriate.
Further improvements that will assist particularly small
businesses to enforce patent rights are contained in the
Patents Act 2004. The Act, among other things, enables
the Patent Office to provide an independent non-binding
opinion on patent validity or alleged infringement to
settle disputes over patent rights without the parties
having to resort to litigation in the Patents Courts. Out-
of-court settlement of disputes is encouraged and there
are provisions to deter patent owners from making
unreasonable allegations of infringement.
The European Patent Convention 1973, along with
provisions in the Patents Act 2004, allows the issue of a
Community patent protected in European states. Applica-
tion is to the European Patent Office and a centralised
Community Patent Court of first instance situated in
Luxembourg has exclusive jurisdiction over invalidity
and infringement proceedings.
Patents: effect of repair
The matter of infringement of patented goods by repair
was raised in United Wire Ltd vScreen Repair Services
(Scotland) Ltd(2000) where the Court of Appeal decided
that, while in the normal way a repair would not amount
to an infringement of the patent, much would depend
on the extent of the repair. If, for example, it amounted
to manufacture of a large part of the product, it might
do so. In this instance repairs to filtering screens used
in the oil industry were sufficiently extensive to infringe
the patent in the screens held by United Wire.
Employees’ inventions
Under the Patents Act 1977 an invention of an employee
belongs to the employer if the employee arrives at it
during his normal employment or during a specific job
outside his normal duties. Other inventions, e.g. those
made during the employee’s spare time, belong to the
employee.
Under the 1977 Act, where the invention turns out to
be of outstanding benefit to the employer the employee
may be awarded compensation by the Comptroller-
General or the court so as to ensure that the employee
gets a fair share of the benefit. The court will come in
where the Comptroller-General will not deal with the
matter because it is felt that the issues in a particular
case would be better dealt with by the court. Terms of a
contract of service which cut down an employee’s rights
in inventions where these exist are unenforceable.Designs: the UK regime
What is meant by a design?
A design refers only to the features of shape, pattern or
ornament applied to an article by an industrial process
which appeals to, and is judged solely by, looking at the
article, e.g. the shape of a Coca-Cola bottle.
For example, a firm making a special design of fabric
for use in curtains or chair covers might register the design.
It is now possible to register the Coca-Cola bottle as a
trade mark under the Trade Marks Act 1994 (see further,
later in this chapter).Registration
Designs may be registered at the Patent Office (Designs
Registry) under the Registered Designs Act 1949 (as
amended by the 1988 Act), and there is an appeal to the
Registered Designs Appeal Tribunal if the Registrar
refuses to register a particular design. Registration gives
the owner of the design protection for five years and this
can be extended for four further periods of five years
on payment of four further fees every five years, making
25 years in all. The Register of Designs can be inspected
on payment of a fee.Infringement
The registered or unregistered design right owner’s re-
medies for infringement are to sue the person respons-
ible for damages and/or an injunction, or an account of
profits made from the wrongful use of the design or an
order for the delivery up of the infringing copies.Unregistered design right
The Copyright Act 1956 gave protection against the
reproduction of articles from drawings of them. The
provisions were primarily intended to give protection
against unauthorised use of drawings of cartoon charac-
ters, as by making dolls from them. Also, while the pro-
tection offered to an article under a registered design
was limited to 15 years (now 25 years, see above), the
copyright protection lasted for 50 years (now 70 years).
The law of copyright was therefore increasingly used
to protect articles in effect by copyright law, by protecting
a drawing from which they were made. This approach
was used, in particular, by motor manufacturers to433