Rights beyond the Registration: from Black and White to Grey

In the UK, a patent confers a 20-year legal monopoly over an invention. The patentee has the exclusive right to prevent third parties from doing certain things in relation to that invention. In exchange for the 20-year monopoly, the patentee discloses the invention to the world in technical detail, thereby disseminating information and enriching the pool of knowledge available to third parties. This social bargain is predicated on the patentee clearly specifying the limits of the legal monopoly that they are claiming,⁸ as monopolies stifle competition. The grant of an exclusive, anticompetitive right is justified by the detailed disclosure, which allows the person skilled in the art to work the invention: what has been termed the ‘exchange for secrets’ theory.⁹

A patent application filed at the UK Intellectual Property Office (UKIPO) must include an abstract, any drawings used to illustrate the invention, a description and the claims. The claims summarize the technical features over which legal protection is sought. At first blush, the boundaries of the patented subject matter appear to be relatively clear and precise. Indeed, if the invention is not disclosed clearly enough and completely enough for it to be performed by a person skilled in the art, the patent is vulnerable to revocation.¹⁰ Long argues that objective and verifiable characteristics lower the information costs incurred in understanding the boundaries of what is claimed for the purposes of avoiding infringement.¹¹ Articulating the invention’s boundaries through necessary and sufficient characteristics acts as a content notice.¹² For this reason, any actual knowledge of and/or intention to copy the patented invention is irrelevant to determining infringement, save for in limited circumstances.¹³ A party must, therefore, incur increased costs in searching the patent register to ensure freedom to operate.¹⁴

However, patented inventions have blurred boundaries. The legal monopoly resides over those technical attributes of the invention that are listed in the claims. Given those attributes are confined to writing, their breadth must be construed. Claim construction is necessary for the purposes of determining validity, by comparing what is claimed with the prior art, and for determining infringement, by assessing whether certain acts fall within the scope of the claims. The European Patent Convention provides that the protection conferred by a patent shall be determined by the claims, as interpreted using the description and drawings,¹⁵ such that claim construction occupies a middle ground between two extremes: a strict, literal interpretation and treating the claims as mere guidelines.¹⁶ Ultimately, the claims convey to the public what monopoly the patentee has chosen to obtain.¹⁷ The patentee is perfectly free to claim less than the patent teaches, but not more.

The UK has favoured a purposive approach to claim construction, requiring the skilled person to consider what the patentee was claiming in light of background facts.¹⁸ However, in Actavis v Eli Lilly, the Supreme Court held a patentee’s rights cover not only subject matter falling within a literal interpretation of the claims but also immaterial variants.¹⁹ In his leading speech, Lord Neuberger stated that, when interpreting whether a variant falls within the claims, the correct approach is to ask: (i) notwithstanding that it is not within the literal meaning of the relevant claim, does the variant achieve substantially the same result in substantially the same way as the invention?; (ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? and (iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim was an essential requirement of the invention?²⁰ If the answer to the first two questions is ‘yes’ and the answer to the third question is ‘no’, the variation is immaterial and falls within the scope of the claims. The Court of Appeal and High Court have since clarified that the ‘literal’ meaning of the claims means the normal or purposive approach to claim construction.²¹

It is important to interpret the patent’s claims in the context in which they were drafted. The patentee is attempting to describe the parts of the invention over which they are seeking a legal monopoly. Often, the claims will fail to capture the inventive concept in its entirety. This is because the drafting seeks to be optimally inclusive without risking the validity of the application.²² Nevertheless, what you see written in black and white in the body of the patent is not what you get. Rather, the patentee’s rights extend to any immaterial variants, which exist in a grey area outside of what is represented in the patent document. Extending legal protection of a patented invention beyond the literal words of the claims may, arguably, compromise the public’s right to notice of what acts will infringe.²³ Not only must a party scour the patent register so as to ascertain what legal monopolies exist over the technology in that field, they must also analyse which variants of the invention represented in the patent may comprise an ‘immaterial variant’. This amplifies the search costs a party must incur when ensuring freedom to operate. It may also force parties to reconsider existing freedom to operate analyses that pre-date the Supreme Court’s judgment in Actavis.²⁴

Following the UK’s decision to leave the EU, at 11 pm on 31 December 2020, the UK–EU transition period came to an end. The UK now recognizes several different forms of registered design: (i) the UK registered design; (ii) the re-registered design, comprising a comparable UK design registration automatically created for proprietors of a registered Community design as at 31 December 2020 and (iii) a re-registered international design, comprising a comparable UK design registration automatically created for proprietors of an international design registration that designated the EU as at 31 December 2020.

In the UK, a protectable design can comprise the whole or part of a product resulting from the features of lines, contours...