Case Study Analysis: Patentability and Trademarks

This case study analysis explores the issue of patentability for an invention and the use of trademarks for protection. It discusses the criteria for obtaining a patent and the importance of confidentiality agreements. It also examines the option of using trademarks to distinguish products. The case highlights the mistakes made by the inventor and the potential legal actions that can be taken.

Running head: CASE STUDY ANANLYSIS
CASE STUDY ANANLYSIS
Name of the Student:
Name of the University:
Author Note:
Total Words: 1996

1CASE STUDY ANANLYSIS
Introduction:
In the given case study, the main issue in this case was whether Sandra could apply for
patent for her invention under the given scenario under the Patents Act1.
The main purpose of securing a patent is to have a monopoly right to use such invention.
The patent provides justice to the original inventor and it encourages innovation. According to
the provisions of the Patents Act, patent protection is allowed to only patentable inventions.
Patents mean rights legally granted by the UK Intellectual Property Office on behalf of the
Government for any new invention2. It allows the inventor or the patentee to take legal steps
against others who has used the invention without the assent of the original patentee. When a
patent is granted it becomes the property of the inventor, which like any other property can be
purchased, sold, rented or hired. They are territorial rights that can be exercised in particular
territory only. The patents granted in UK will give holder to execute it in UK only and not
outside. The holder can stop its infringement in UK only. The characteristics of a patentable
invention laid in Section 1 of the act comprises of four essentials which are:
a) Invention must be new and not anticipated. It does not form part of the state of art.
b) Invention must not be obvious. It must involve an inventive step.
c) Invention must be capable of industrial application.
d) Invention must not be excluded under sections 1(2) and 1(3) of the said act.
1 The Patents Act 1977.
2 Tom Harris, "How can you protect your ideas?." (Start-up. Springer, Cham, 2019) 23-38.

2CASE STUDY ANANLYSIS
The foremost criteria to obtain a patent is it must be new, inventive and does not form a
part of state of art3. In order to form a state of the art, the invention related information is to be
made available to any member of the public in UK or elsewhere, before the priority date as laid
down by LZ Bowen in Humpherson v Syer4. Elsewhere as in section 2(2) means matter to be
made available worldwide. However such invention will not be regarded to be made to public
when such disclosure is made by a person under a duty of confidentiality as given in section 2(4)
of the act. This has been reiterated in the case of Pall Corpn V Commercial Hydraulics5.
Similarly, such disclosure will not be presumed to be made to public when made to few
individual research workers experimenting in private as held by LJ Purchas in Genentech’s
Patent6. The information can be made available to the public not only by written or oral
description but also by use or in other way as given in section 2(2) of the Patents Act7.
For the subject matter to have been anticipated, it must coincide with other previous
inventions exactly. The test to find out anticipation is given in the case of General Tire v
Firestone8. According to the case, two situations are to be kept under consideration. Firstly, the
earlier invention is to be analyzed such that whether its publication provides a clear description
to do or to make anything which if executed would infringe the patent of later invention. If the
answer is affirmative, the later invention is said to be anticipated and its patent will not be
granted. The second situation is when the earlier inventor and the later patentee have reached the
particular invention from two different aspects but have explained their ideas in such a manner
3 Mark James Thompson, Measuring patent quality: A claim and search report approach. (World Patent
Information 45 2016) 47-54.
4 Humpherson v Syer [1887] 4 RPC 407.
5 Pall Corpn V Commercial Hydraulics [1990] FSR 329 at 347.
6 Genentech’s Patent [1989].
7 Gov.uk. (2019). Section 2: Novelty - The Patents Act 1977 (as amended) - Guidance - GOV.UK. [online] Available
at: https://www.gov.uk/guidance/the-patent-act-1977/section-2-novelty.
8 General Tire v Firestone Tyre and Rubber Company Limited HL ([1976] RPC 197, [1975] 1 WLR 819, [1975] 2
All ER 173, [1975] FSR 273) .

3CASE STUDY ANANLYSIS
that it can be easily understood from their documents that their invention is same, then the later
invention could be anticipated and its patent will not be granted.
The date on which the application of patent is filed in an appropriate authority is known
as priority date. When the communication to the public about the patent is made before priority
date, such invention is not patentable9.
The second essential point is it must be involve an inventive step. It must not be obvious.
According to Ld Hoffman in Biogen Inc v Medeva Plc case, inventive step means the result of
the addition of a new idea to the existing stock of knowledge resulting in something innovation
done for the first time10. For inventive step, the only criterion is it must not be very obvious as
explained in the case of General Tyre v Firestone in its field of research where the invention
lies11.
The fourth necessity is the industrial application as given in section 4(1) of the Patents
Act. It means that an invention to be patented, it must have industrial application such that it can
be used in any kind of industry or agriculture. According to European Patent Office Guidelines
under European Patent System, industry has been interpreted widely such that it includes
anything that is of technical nature within useful or practical arts12.
The main objective of granting patent given by Lord Halsbury in Reddaway v Banham
says that none has the right to represent other person’s invention made as his own13. It is sought
to protect invention of the original inventor against others.
9 'Section 2: Novelty - The Patents Act 1977 (As Amended) - Guidance - GOV.UK' (Gov.uk, 2019)
<https://www.gov.uk/guidance/the-patent-act-1977/section-2-novelty>.
10 Biogen Inc v Medeva Plc RPC 1, [1996] UKHL 18, (1997) 38 BMLR 149.
11 General Tire v Firestone Tyre and Rubber Company Limited HL ([1976] RPC 197, [1975] 1 WLR 819, [1975] 2
All ER 173, [1975] FSR 273) .
12 Naina Khanna, "Patent Quality: Does One Size Fit All?." (4iP Council, January2019).
13 Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199.

4CASE STUDY ANANLYSIS
However, the inventor must keep in mind that before revealing their idea or innovation to
anyone, it must protect it by implementing appropriate protection. It is a major trap into which
most of the inventors fall into by disclosing it to people with the aim of commercializing and
making money out of their invention. If the invention is reveled in a public domain, before the
application for patent is made, it is termed as public disclosure and may hinder one from getting
patent. One should file an application for patent before public disclosure. Another option
available to the inventor is signing a confidentiality agreement called non-disclosure agreement
which says that one cannot disclose any idea or invention without the inventor’s permission. It
must be borne in mind that if the invention is opened to public, there is nothing left to trade, so
patent would not be granted.
Another important aspect of Intellectual Property Rights is the Trade Marks whose
provisions are enumerated in the Trade Marks Act14. As given in section 1(1) of Trade Marks
Act, trademark is nothing but a symbol or sign which is capable of being represented graphically
such that the goods or services of one undertaking can be distinguished from that of others15. The
main purpose of using trademark is to allow the public to identify and distinguish the goods or
services of one undertaking from another, thus preventing them from being deceived. Trademark
provides protection for 10 years from the date of the registration and it can be renewed
indefinitely for every 10 years as laid in Section 42 of TMA 199416.
In the present case, Sandra’s invention of shower head is made to public in three ways;
firstly, through an advertisement on a satellite shopping channel. Secondly through the
manufacture of the replica of shower head that were incorporated in shower cubicles across
14 Cassandra Mehlig Sweet and Dalibor Sacha Eterovic Maggio, Do stronger intellectual property rights increase
innovation? (World Development 66, 2015) 665-677.
15 The Trade Marks Act s. 1(1).
16 The Trade Marks Act 1994, s.42.

5CASE STUDY ANANLYSIS
Europe. Thirdly, it was made available to public through the launch of deluxe shower heads
using Sandra’s technique.
Sandra has signed the confidentiality agreement with the representatives of four shower
head manufactures. Rupert was one of them who had been an executive producer of that channel
where he promoted Sandra’s shower head through advertisement to make it popular in public.
Considering this situation, patent cannot be granted because there was a breach of the non-
confidentiality agreement between Sandra and Rupert. Rupert signed it with Sandra being the
representative of a shower head company. But he disclosed the invention in the channel where he
had worked previously. There was no agreement between Sandra and that channel. The
disclosure of the invention to the public domain though Sandra agreed to it will prevent her from
getting the patent.
Sandra has again signed a confidentiality agreement with Grace, a representative from
Aqua Wash. Grace replicated Sandra’s shower. Such replica was mass produced and had been
installed in all newly built shower cubicles of Aqua Wash across Europe. Here Sandra’s consent
was not taken by the company before making replica. Hence the terms of the agreement is
violated. Hence if patent is not granted to Sandra considering the mass manufacture of the
replica, Sandra could sue the company for such breach and use it as a defense for getting the
patent.
Sandra has not signed any non disclosure agreement with Stella but Sandra has let her use
it as they are next door neighbors. However Stella emailed the chief designer at Clean and Sheen,
an international manufacturer of shower heads, giving a detailed idea of Sandra’s invention.

6CASE STUDY ANANLYSIS
Using it, the company has recently launched a range of shower heads. Thus her invention was
again made to public domain.
From this discussion, it can be held that Sandra has made few mistakes. It was Sandra’s
duty to make application for patent immediately after making the shower head which she failed
to do. Moreover, she had made her invention a part of the state of the art by making it
communicated to public before the priority date. A product or service is anticipated if it is part of
the state of the art. According to the PA 1977, patent will not be granted if the product is not new
and is anticipated.
However, though it is made to public use or public knowledge, by creating replica or
through advertisement or through launch of shower heads using the invention, it may not
constitute the disclosure of the invention if it is found by the court that the product cannot be
analyzed to disclose the invention, then the prior use or knowledge of public will allow later
patent. If Sandra is able to prove then she can get patent for her invention.
If Sandra is not able to get the patent, she has another option left to her by distinguishing
her invention from others by the using trademark. If Sandra is able to realize her invention into
work, then she can apply for trademark to register her products to distinguish them from others.
Trade mark will provide her product with an identity that cannot be copied or imitated by other
companies or competitors. Such trademark registration will last for 10 years and can be renewed
for the next 10 years again. It can be renewed innumerable times. If one fails to renew, the
trademark will expire. The provisions related to trade mark are provided under the Trade Marks
Act 1994.

7CASE STUDY ANANLYSIS
A perusal of the given case and the provisions enumerated in the PA 1977 shows that
Sandra can not apply for patent easily as her product is already made to available and known to
the public before she had made the application of the patent.

8CASE STUDY ANANLYSIS
References:
Books:
Harris T, How can you protect your ideas?. Start-up (Springer, Cham, 2019) 23-38
Naina K, Patent Quality: Does One Size Fit All? (4iP Council, January 2019)
Sweet CM and Maggio DSE, Do stronger intellectual property rights increase innovation?
(World Development 66, 2015) 665-677
Thompson MJ, Measuring patent quality: A claim and search report approach. (World Patent
Information 45, 2016) 47-54
Cases:
Biogen Inc v Medeva Plc RPC 1, [1996] UKHL 18, [1997] 38 BMLR 149
Biogen Inc v Medeva Plc RPC 1, [1996] UKHL 18, [1997] 38 BMLR 149
Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199
Genentech’s Patent [1989]
General Tire v Firestone Tyre and Rubber Company Limited HL ([1976] RPC 197, [1975] 1
WLR 819, [1975] 2 All ER 173, [1975] FSR 273)
General Tire v Firestone Tyre and Rubber Company Limited HL ([1976] RPC 197, [1975] 1
WLR 819, [1975] 2 All ER 173, [1975] FSR 273)
Humpherson v Syer [1887] 4 RPC 407

9CASE STUDY ANANLYSIS
Pall Corpn V Commercial Hydraulics [1990] FSR 329 at 347
Legislations:
The Patents Act 1977
The Trade Marks Act
Websites:
'Section 2: Novelty - The Patents Act 1977 (As Amended) - Guidance - GOV.UK' (Gov.uk, 2019)
<https://www.gov.uk/guidance/the-patent-act-1977/section-2-novelty>