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Wednesday, 18 April 2007

Patent Pending? Or not?

A recent QMW IP graduate, Iain Russell, has written to the IPKat with a query. Iain is a lifelong fan of rock music, and in particular the type known as punk. He happens to know that there is a US pop-punk band (think Green Day or Blink 182) called "Patent Pending". The band have a website at www.patentpendingsmells.com, and they apparently have CDs for sale in the UK.

Iain's question is whether an offence is being committed under section 111 of the UK Patents Act by (according to the wording of s111(3)), "for value dispos[ing] of an article having stamped, engraved or impressed on it or otherwise applied to it the words “patent applied for” or “patent pending”, or anything expressing or implying that a patent has been applied for in respect of the article".

The IPKat thinks that the band (and possibly their record company and shops selling their records) appear prima facie to be committing an offence, and therefore ought to be facing the real prospect of prosecution. Unless, of course, a patent has actually been applied for on an aspect of their CDs. He also wonders whether the fact that CD technology is inevitably associated with many different patents, some of them possibly still pending, could be a mitigating factor.

Can anyone enlighten the IPKat and Iain further?

8 comments:

Jeremy said...

This is driving me mad. The offence appears to have been committed in purely formal terms, though this is manifestly not the mischief that the provision of the Patents Act 1977 was intended to prevent. Mitigation goes to the sentencing, doesn't it, rather than to the question of initial liability?

Anonymous said...

One hopes the CPS would recognise that the to prosecute would not be in the public interest under their guidelines...

Anonymous said...

CPS = Criminal Patent Suppressors?

Anonymous said...

I am not sure that a court would find someone culpable. My guess is that a court would decide that in interpreting the provision it should construe the words “patent pending” in the context of the words following which are “or anything expressing or implying that a patent has been applied for in respect of the article”. Thus, if the words “patent pending” are not used in the context of expressing or implying that a patent has been applied for then the person should not be taken to have so indicated.

Otherwise I am with Jeremy and think it is clearly a case where, on conviction, a court would absolutely discharge the band. Finally, even if in accordance with the Code of Crown Prosecutors the CPS decide that it is contrary to the public interest to prosecute it would not stop the band facing the possibility of a private prosecution… one never knows how far a battle of the bands can go.

Gerontius said...

Does the context in which the words "patent pending" matter?

There are an awful lot of "or"s in Section 111 so doing any one of those things, even if not in the same context as doing one of the other things, might still get you caught by the section.

Anonymous said...

This is undoubtedly an offence, but I suspect that it would be considered that the public interest would not be served by a prosecution. Even if a private prosecution was commenced, whist no prior consent from the DPP is required in this case, the DPP can always take it over and kill it (http://www.cps.gov.uk/legal/section1/chapter_h.html#09). I am more interested in the meaning of sub-section (4), which I had previously paid no attention to. What exactly does it mean?

Iain said...

Thanks to everyone who has taken the time to offer their thoughts on this.

Upon reading the section again, would it be correct to assume that since s.111(1) includes the wording "disposed of for value", no offence would be committed if the CD, or at least any parts having "patent pending" on them, were given away for free?

Gerontius said...

Now you're moving the goal-posts, Iain!

Does "Value" necessarily mean "monetary" value, or can it be of value from an advertising or public relations perspective, or even just good karma? I suspect the former.

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