Q: l want to manufacture a product which is a consumable used with another product which is protected by patent rights. Am I allowed to do this?
A: You need to make sure you do not breach the copyright or other rights in the products you are copying. If in doubt seek a licence from the manufacturer of the branded product. The law will be changing in this field when the EU designs directive is eventually agreed. A case reached the House of Lords in this area. In Canon v Green Cartridge [1997] AC 728 the court enabled the claimant, Canon, to stop the defendant manufacturing cartridges to fit Canon copiers. The court referred to an earlier case called BL v Armstrong from 1986, which had appeared to say that there may be a general right to repair goods, but thought it did not apply here, as the toner was not a repair for the product - the copier or printer.
Canon supplied toner in a disposable plastic cartridge to be inserted by the owner into laser printers and copier machines when the toner ran out. Canon made a great deal more money from selling toner to purchasers of Canon products than from the original sale of the products themselves. In Hong Kong, the defendant made new cartridges and sold them there for export in competition with the claimant. The claimant sued for infringement of copyright in the drawings from which 48 of the parts for the cartridge were made and won. The court held that the replacement of cartridges was not really a “repair” of a copier or printer and there was plenty of other competition. There was a breach of the artistic copyright in the drawings of the cartridges and the defendant must stop copying the cartridges. It is a salutary lesson for all inventors who should check out existing intellectual property rights first before proceeding.
Inventors Legal Problems
Related further reading by Susan Singleton...
Further Reading:
Editors Note: These articles first appeared as Susan Singleton's very popular column in Inventors World magazine.
Due to the changing nature of the law, Susan has fully updated them for 2015.
Part #9
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Q: I have a limited company registered in the UK to protect a name. Now I find that someone else has registered it as both a trade mark and an Internet address. They have sent me a solicitor's letter claiming damages. Surely this cannot be right? I registered the name first.
A: Many people confuse trade mark and company name registration. You may have a company name registration but this is not the same thing as a registration of the trade mark at the Trade Marks Registry. However, all is not lost. You may have built up valuable goodwill in the trade mark and be able to oppose the trade mark application which has been put in by the other company. On the Internet front you may have more problems. A software company called Prince in one case was unable to get its domain name registration because it had not applied for a registered trade mark for that name. On-line there is the Uniform Dispute Resolution Procedure which is an on line settlement system. No damages or costs are awarded to the winner but the winner will be given an order requiring the other party's domain name to be transferred to them. Finally, the courts may help. Harrods was able to stop a rival Internet registration on the grounds of passing off and registered trade mark rights.
Q: My father has just died. What happens to his inventions? He has several patents.
A: Contact the solicitor or executor handling your father's estate. The first issue is whether he left a will. If he did not then he died intestate, and special rules apply - i.e. the state rules determine who gets what. Assuming he left a will and you are his heir then you inherit all his property including intellectual property (which can be hard to value for probate purposes). Sometimes, assets have to be sold off to pay inheritance tax.
The other question is whether anyone else jointly owns the inventions, such as your father's business or partners. Check this before proceeding. Then look at any contracts he signed licensing the rights. Do they say what happens when he dies? They may give a right to the other party to terminate or they may be incapable of being assigned. It would be best to seek independent legal advice.
Q: A friend has been working with me in the evenings on a new product. We both have a scientific background and he understands the area I am involved in. We are close to a breakthrough, so should soon have a marketable product. Last night he made some comments which made it perfectly clear he thinks we are in a 50/50 partnership, which we are not. I told him so and we had an awful row, ending with him storming off to talk to a lawyer. What should I do?
A: Assuming you have no written agreement with him, the question of whether you have a partnership or not is a matter of law. You would be best going to a solicitor too, and in future ensure that anyone "helping" does so under a written agreement or letter saying on what basis they are providing the assistance. If you have done most of the work and he has just been watching, and perhaps offering a bit of advice, with no agreement he will be paid for it then it is unlikely you have formed a partnership. However, there does not have to be written partnership agreement for a partnership to be formed under English law. The law is set out in the Partnership Act 1890.
If he has produced inventions himself and not assigned them to you then he may own part of your product or the rights in it. If he has done work you agreed to pay for without agreeing a price then he may be entitled to payment under a legal principle called ‘quantum meruit’.
In practice, it would be best to head off any dispute, so try to talk him round. Sit down and discuss an amicable basis for the future. Take legal advice first to see whether he has any case for claiming either payment or a partnership or ownership of intellectual property rights in the product. Finally, if you become involved in similar arrangements in future, make sure the basis is set out in writing.