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ISSUE 1 2014 MASCHIO & SOAMES IP LTD Unlike the Dutch and German courts, the English judge considered that the accused coffee capsules were “means relating to an essential element of the invention”. However, the judge held that the capsules were not “means relating to an essential element of the invention for putting the invention into effect”, because using the capsules in the machine is not an act of making an infringing system. Having considered the case law on what is meant by “making” an infringing product, in particular the recent UK Supreme Court decision in Schutz (UK) Ltd v Werit UK Ltd [2013] UKSC 16, , the judge concluded:
“Only in the world of patents could it even be suggested that a person “makes” a “product” merely by purchasing a consumable for use with a machine (i.e. before they have even used the consumable in the machine, here by making a cup of coffee).”
Accordingly, the supply of the capsules was found not to infringe the system claims of the patent. We can conclude that system and method claims do not provide a useful route to patent protection of consumables in Europe in the absence of patent protection for the consumables per se. The position in Europe in this respect is therefore similar to that adopted by the United States CAFC in Keurig v. Sturm Foods 732 F.3d 1370 (2013).
Can anything then be done to protect market share of unpatented consumables?
Registered Design protection is worth investigating in view of the long term of protection (25 years), low cost and flexibility of the Registered Community Design in Europe. However, the usefulness of registered design protection for consumables is severely limited by the functional and
“must-match” exclusions in Articles 8(1) and 8(2) of the Community Design Regulation. These respectively exclude from design protection “features of appearance of a product which are solely dictated
Lexmark’s UK Registered Design 2104043 - Printer Cartridge
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