A recent decision handed down from the UK Court of Appeal illustrates the potential treasure trove of prior art available for parties challenging the validity of patents. Conversely, it also presents a potential headache for patent applicants and proprietors defending any such validity attack.
TFK v Phil and Ted
The case in question involved German company Trends for Kids GmbH (TFK) who alleged patent infringement by the memorably named Phil and Ted’s Most Excellent Buggy Company Ltd (Phil and Ted) - see ‘useful links’ below right for link to full decision. Phil and Ted’s response was to challenge the validity of the TFK patent. At first instance Phil and Ted were successful and this was subsequently confirmed on appeal.
The details of the case relate to, as the name suggests, a child’s buggy. The invention concerned a buggy configuration which converted between a seat and a flat bed to allow the child to sleep. It also included the feature of a reversible adapter to allow the child to face forwards or to face backwards.
In short, the courts decided that the patent was obvious over the prior art. The specifics of the decision are not what makes this case interesting but rather the prior art which was successfully cited by Phil and Ted against the patent.
The success of the obviousness attack was attributed to a Chinese utility model. This decision highlights the fact that prior art documents can be found in less usual places than the English language documents commonly sought after.
Utility models and industrial designs
The sheer volume of prior art being created in the form of utility models is in itself quite incredible. The volume of utility models is such that Asia is creating a deepening pool of opportunities for parties contesting the validity of patents. Of course, utility models are limited to less complex inventions but nevertheless there are many patents granted in Europe and elsewhere that could be vulnerable to obviousness attacks based on documents selected from this ever growing pool of prior art, not least from China.
The World Intellectual Property Organization (WIPO) statistics database for 2012 illustrates just how much prior art is being created. The WIPO database shows that as far back as 2010 a total of nearly 440,000 utility models were filed in Asia in a single year (an overall increase of 27% for the region compared with 2009-10).
China alone accounted for 82.6% of all utility models counted in the WIPO statistics. Combine this with industrial designs in excess of 510,000 and this represents approaching a million new documents in a single year from Asia alone.
Is this anything to be concerned about? Well, it goes without saying that if you are intending to challenge the validity of a patent, be it at opposition or in the courts, then subject to the cost of searching and to the technology involved, it may well be worth dipping a toe into the deep pool of prior art that is being created in the form of Chinese utility models.