For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 10 March 2009

Rapstrap

The IPKat noticed with interest an opinion issued recently by the UK-IPO relating to an cable tie (pictured right) known by the name (and registered trade mark) 'Rapstrap'.  Regular viewers of the BBC programme Dragons' Den may already be familiar with this name, as it relates to one of the programme's major success stories (see relevant clips from the BBC here), resulting in entrepreneur Andrew Harsley securing a £150k investment from Dragons Duncan Bannatyne and James Caan.  Rapstrap Ltd then went on to secure an order in September 2008 for 1 billion units, amounting to £36M according to this report, in which Mr Harsley is quoted as saying, "When I first came up with the idea, I could not believe someone else hadn't thought of it". 


Unfortunately for Mr Harsley, it turns out that someone had already thought of the idea, and at least once before.  Bizarrely, it appears that this someone also goes by the name of Andrew Harsley, who is named as sole inventor on European patent EP0765281, issued in March 1999 to Millepede Cable Ties Limited.  Now known as Millepede Marketing Limited, the patent proprietor requested an opinion under section 74A of the Patents Act 1977 regarding whether the Rapstrap product infringed claims 1 and 5 of the patent.  Two relevant figures from the patent are shown below.

Claim 1 of the patent reads as follows:
"An integrally formed tie strip (10), made of a semi-rigid resiliently bendable material, comprising a series of unit cell portions (1) connected one to the next along the strip, each of the said unit cell portions (1) being formed to define at least one latch member (11) projecting laterally of the strip’s longitudinal axis, and to define an aperture (14) through the strip, characterised in that the aperture (14) of each unit cell portion (1) is bounded on at least one side by a spring portion (13) formed by parts (13) of the strip that extend transversely with respect to the said longitudinal axis, the spring portion (13) being resiliently deformable so as to enable the shape of the aperture (14) to be changed, wherein a first unit cell portion (1) of the strip can be passed through the aperture (14) of a second unit cell portion (1) of the strip so as to form a closed loop by way of the spring portion (13) of the first and/or second unit cell portion (1) being bendingly deformed such that the shape of the aperture (14) of the first and/or second unit cell portion (1) is respectively changed upon relative passage of the unit cell portions (1), and where the spring portion (13) of the first and /or the second unit cell portion (1) relaxes after said passage so that the at least one latch member (11) of the said first unit cell portion (1) inhibits withdrawal thereof from the aperture (14) of the said second cell portion."
The examiner found this claim to cover the Rapstrap in the form presented.  Rapstrap Ltd, through their patent attorneys Agile IP, attempted to argue that interpreting the claim to cover their product would inevitably mean that it would be invalid over another much earlier patent, US 3,438,095 (figures 2 and 3 of which are shown below). The examiner rejected this argument because consideration of the validity of the patent would be beyond the scope of the opinion [the IPKat notes that this would not prevent another opinion being requested relating to the issue of validity].


The examiner then concluded that the Rapstrap tie fell within the scope of claims 1 and 5 of EP0765281, implying that it would infringe the patent.  

The IPKat suspects that there is a lot more going on behind the scenes than is apparent on the surface of this opinion (which, as we all should know by now, is strictly non-binding and does not mean that Rapstrap will be now forced to pay damages or royalties to Millepede).  He is quite surprised though that the Dragons chose to invest in someone who apparently had no control of a patent covering the product he was pitching, which he presumably would have known at the time the pitch was made.  The IPKat further wonders what due diligence (if any) went on before the investment was made. 

Updates: Thanks to a commenter below, some background to the story can be found here. A press release has now been issued by Millepede, and the story has now been picked up by the Daily Mail here, and the Scotsman here

18 comments:

Anonymous said...

Mr Harsley has a further European patent application, no. 04736517.6, which is in a little bit of trouble. Will the request for re-establishment of rights be granted? Will there be any 3rd party rights in the intervening period?

Anonymous said...

Those skilled in the art will see that Rapstrap behaves very different from the Millipede invention (as defined by the latch member 11) when tensioned. A patent attorney should be able to work out something here.

However I do wonder if Ratstrap Ltd. has used a patent attorney; the arguments fielded re. the US patent appear on the suicidal side of strange. Cited documents surely need not be granted/valid patents to be of significance for novelty.

Anonymous said...

What is also interesting is that the Companies House database does not include a company called Millipede Cable Ties Limited.

Simon said...

Some of the older readers may recall the Boomtown Rat song....

Rapstrap,
You've been caught.

Anonymous said...

To 2nd Anonymous - Rapstrap used Agile IP to represent them, according to the Opinion. I don't understand why you think the argument in relation to the US patent is strange. It is a standard non-infringement/validity squeeze argument, which, however, cannot be used when the Opinion relates to infringement only. It has nothing to do with the nature of the citation.

Anonymous said...

A little warning bell went off in my head when Andrew Harsley was asked about the patent on Dragon's Den:
"It sailed through *preliminary* examination -- no problems at all!"

[emphasis on *preliminary* mine]

This shows a worrying degree of ingenuousness about the patent system...

Anonymous said...

Some background gossip here: http://www.thesun.co.uk/sol/homepage/news/article1736125.ece

Anonymous said...

@ Anonymous #1 - J 22/88 would indicate that the request is likely to fail.

Anonymous said...

anonymous @2:29:00PM
You are right my posting looks strange, I was too hasty thinking this was about an official action, not an opinion as to infringement. My fault.

Anonymous said...

Millipede is an Australian company, hence no entry at Companies House.

Anonymous said...

this is an example, how a missed prior art can come back and hound ...years down the road ...oh oh

Anonymous said...

There seems to be some confusion as to whether the proprietor of the patent is Millipede or Millepede (the opinion cites both!).

According to the patent register, the proprietor is "Millepede Marketing Limited". "Millepede Cable Ties Limited" was a previous owner and changed its name to "Millepede Holdings Limited" and has been placed in compulsory liquidation.

http://wck2.companieshouse.gov.uk/941a4bc598c7210c03db9d456d152608/insolvency

David said...

Sorry, confusion partly my fault for spelling millipede correctly by mistake! Post above now corrected.

Anonymous said...

http://www.dailymail.co.uk/news/article-1161187/Dragons-Den-tycoons-stand-lose-millions-invention-copied.html

Anonymous said...

Anyone else get a whiff of a media frenzy?! Though if the Daily Hate Mail reports it then it must be true......

Anonymous said...

The question is: who missed the prior art taught by the US patent 3, 438,095?

Validity opinion on cards?

Anonymous said...

The front page of US 5,799,376, equivalent to the European patent held to be infringed in the UKIPO opinion, lists US 3,438,095 as prior art, so I guess it wasn't missed after all.

Anonymous said...

What I find interesting here is that two so called sophisticated investors were prepared to invest in a product based business without any significant due diligence on the IP front. Also a company was prepared to place an order of £36 million in ignorance!!

Witnessing the crass IP related gaffs by the Dragons is one of my more enjoyable pastimes.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':