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Chinese Utility Models and prior art

Print publication

29/05/2014

The Court of Appeal [1] has upheld a decision of HHJ Birss QC in the Patents County Court (now the Intellectual Property Enterprise Court) finding that the appellant’s patent for a baby buggy module was invalid for obviousness.

The respondent, Phil & Ted’s Most Excellent Buggy Company, argued that the prior art – the “Goodbaby” – was such that, if a skilled person were to put the disclosure into practice, without any inventive step, the resulting product would fall within the ambit of the claim of the patent in suit. The patent in suit was a buggy module, convertible between seat and cot configurations; the Goodbaby was also convertible between seat and cot configurations, so the Court of Appeal had no difficulty in concluding that a skilled person would have treated the Goodbaby as an appropriate starting point for the invention.

The parties agreed that two features of the claim of the patent in suit were not described in the Goodbaby patent:

  • the first related to suspension that allowed the relative positions of the body support panels to be adjusted between the seat and cot configurations. Whilst this was not set out in the Goodbaby patent, HHJ Birss QC inferred from the evidence that this feature must be present. The Court of Appeal agreed
  • the second related to reversible attachment, which again was not mentioned in the Goodbaby patent. The evidence was to the effect that the ability to reverse the direction of the module was a desirable characteristic so that the seat could be adjusted to face the carrier or away from the carrier, so the baby would face forwards. Again, the Court of Appeal upheld HHJ Birss QC that these “adapters” would be an obvious implementation of the Goodbaby.

This case serves as an important reminder to UK/EU patentees who might not be familiar with Chinese Utility Models. Utility Models are similar to ordinary patents, but are granted in China for technical solutions that relate to shapes or structures. The inventiveness requirements for Utility Models are lower than for patents which – although meaning that the term of protection is less – means that these Utility Models could seriously impact UK/EU patent cases in terms of prior art. This reinforces the importance of undertaking thorough research into Utility Models before action is taken so that patents are not exposed to invalidity action.

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[1] Phil & Ted’s Most Excellent Buggy Company Ltd v TFK Trends for Kids GmbH [2014] EWCA Civ 449

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