Epoch Company Limited v Character Options Limited, UK, Intellectual Property Enterprise Court, Hacon HHJ, 22 March 2017

This case concerned a UK patent directed to a toy comprising transparent decorative beads made of water soluble resin. In use such beads are arranged on a tray in a desired pattern. Water is then sprayed on the beads causing the beads to fuse together. When dry the beads are removed from the tray and the fused beads can be kept as a decorative item.

The defendant alleged that the patent was invalid on three grounds. First that the claims were not patentable being claims to an aesthetic creation as such; second that the patent was not inventive over the common general knowledge alone being a mere collocation of known fusible bead toys having transparent polyhedral shapes; and third the patent lacked inventive step over a specific piece of prior art disclosing a similar bead toy based on spherical rather than polyhedral beads.

The judge rejected the defendant’s first two arguments.

In relation to the defendant’s first argument, the judge noted that an aesthetic effect is not in itself an aesthetic creation. In the present case, reflection of light by polyhedral transparent beads provided a bead model with “brilliance” which was absent from a system involving spherical or translucent beads. Such an effect was not achieved through the creation of a particular design or group of designs and hence the claims were not directed to an aesthetic creation as such. The judge also rejected the defendant’s second argument – that the claimed invention amounted to a mere collocation of known features. The judge considered synergy between transparency, polyhedral beads and their use in a fusible bead toy arose because such brilliance gave rise to a new toy that was more attractive for children. There was therefore sufficient synergy between the claimed features to treat the claimed features as a single invention.

The final question before the judge was whether the claimed invention was obvious over the cited art. The key feature of claim 1 which was missing from the prior art was that spherical rather than polyhedral beads had been used in the prior art. The judge described establishing an inventive step based on the replacement of spherical beads with polyhedral beads in the absence of any technical prejudice against polyhedral beads as “an uphill task” and in the cross-examination it was accepted that a person skilled in the art would naturally consider beads with a gem-like shape. Based on this evidence, the judge concluded that the claimed invention would have been obvious at the priority date and the patent was invalid.

The judgment can be found here.

Headnote: Nicholas Fox, Simmons & Simmons