It’s obvious, patents are not child’s play!
28 March 2017
In a recent decision the Intellectual Property Enterprise Court had to consider whether a patent for a children’s toy consisting of water soluble, fusible, translucent beads was merely an aesthetic creation, and therefore excluded from patentability and if not, whether the patent claims lacked an inventive step and were obvious. If the patent was valid, the Court also had to determine whether it was infringed by the Defendant’s product.
Epoch Company Ltd v Character Options Ltd  EWHC 556 (IPEC) (22 March 2017)
Epoch owned a patent for a children’s toy, which claimed beads which could be fused together using water, in order for the child to create an object from their imagination. The beads in the patent were polyhedral, rather than simply spherical. This difference meant that the beads had more reflective surfaces giving “brilliance” to the beads which were much more attractive and engaging for children, when the beads were stuck together to make a shape or object. The beads described in the prior art were spherical, rather than polyhedral.
Epoch claimed that Character Options’ products infringed its patent and Character Options alleged that the patent was not infringed and invalid as it was merely an aesthetic creation and hence excluded as patentable subject matter by section 1(2)(b) of the Patents Act 1977 and that the beads lacked an inventive step over both the prior art and the common general knowledge at the priority date of the patent.
Firstly, dealing with whether the patent claimed an aesthetic creation, the Court drew the distinction between an invention which produces a new aesthetic effect and is hence patentable, from one where the aesthetic creation as such was claimed and is not patentable. The Court decided that the subject matter of Epoch’s patent was patentable. It created an aesthetic effect by virtue of the way in which the beads were arranged and the effect is not achieved through the creation of a group of designs and it is therefore not an aesthetic creation as such.
The prior art disclosed water fusible spherical beads or various colours, including translucent beads, although not polyhedral beads. The evidence indicated that the person skilled in the art would know of polyhedral beads and contemplate using them in place of the spherical beads. Therefore, the patent was invalid over the prior art for lack of inventive step.
Finally, if the patent had been valid it would have been infringed by the Defendant.
This case provides salutary guidance to potential patentees where the invention also includes aesthetic features. Claims to an aesthetic creation are not permissible and will be struck down by the Courts. This shows the importance of ensuring the scope and technical contribution to the art claimed in the patent is carefully defined, so as to minimise the susceptibility of such claims to an invalidity attack.