"A Method or Principle of Construction"
17 Dec 2018
S.213 (3) (a) of the Copyright Designs and Patents Act 1988 provides that design right does not subsist in "a method or principle of construction." The same subsection also excludes features of shape or configuration of an article that enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, and surface decoration.
The phrase "method or principle of construction" seems to have been imported from s.1 (3) of the Registered Designs Act 1949 as originally worded:
"In this Act the expression " design " means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction ,,,,,,,,"
That subsection removed from that Act by reg 2 of the Registered Designs Regulation 2001 which implemented Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289, 28/10/1998 P. 28 - 35.
In Landor & Hawa International Ltd v Azure Designs Ltd. [2006] EWCA Civ 1285, [2006] ECDR 31, [2007] FSR 9, the Court of Appeal approved the following passage from the 7th edition of Russell-Clarke on Copyright in Industrial Designs at para 3-80:
"A method or principle of construction is a process or operation by which a shape is produced, as opposed to the shape itself. To say that a shape is to be denied registration because it amounts to a method or principle of construction is meaningless. The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle instruction. In other words, any conception which is so general as to allow several different specific appearances as being made within it, it is too broad and will be invalid."
In Rolawn Ltd and another v Turfmech Machinery Ltd. [2008] RPC 27, [2008] EWHC 989 (Pat), Mr Justice Mann said at paragraph [79] of his judgment that design right is confined to what one can actually see in an article - either the physical article or a drawing. In relation to the design of wide area mowers which was the subject of the action before him, he said at paragraph [91] that the method or principle of construction exclusion did not apply in relation to the particular designs of the overall machine in its unfolded, semi-folded and finally folded states or in relation to the particular appearance of a tank between two sloping support arms at the rear of the machine. However, his lordship added in the next paragraph that the abstract idea of an arm holding cutters which folds over on to itself by means of a hinge in the middle seemed to him to describe a method of construction of such an arm. So, too, did the idea of a tank sitting over the rear wheels. Judge Hacon explained at paragraph [54] of his judgment in Action Storage Systems Ltd v G-Force Europe.Com Ltd and another [2016] EWHC 3151 (IPEC), [2017] FSR 18 that the effect of the "method or principle of construction" exclusion was to limit the claim to the design of a particular mower and to prevent a monopoly of the construction of wide area mowers.
It is submitted that s.213 (3) (a) has to be read with paragraphs (b) and (c) and the "commonplace" exclusion in s.213 (4) in the historical context in which the Act was passed. Prior to the Copyright, Designs and Patents Act 1988, product designs were protected by copyright as original works of art. The scope of protection was believed to be far too wide and the policy was to cut that protection down to size. Alternative ways of protecting industrial designs such as utility models or an unfair competition law were considered and rejected. Protecting designs by an unregistered intellectual property right analogous to copyright was convenient just so long as the object of protection was the design of an article and not a design method or principle which would be tantamount to the protection of a technology.
Contact
Jane Lambert
S.213 (3) (a) of the Copyright Designs and Patents Act 1988 provides that design right does not subsist in "a method or principle of construction." The same subsection also excludes features of shape or configuration of an article that enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, and surface decoration.
The phrase "method or principle of construction" seems to have been imported from s.1 (3) of the Registered Designs Act 1949 as originally worded:
"In this Act the expression " design " means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction ,,,,,,,,"
That subsection removed from that Act by reg 2 of the Registered Designs Regulation 2001 which implemented Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289, 28/10/1998 P. 28 - 35.
In Landor & Hawa International Ltd v Azure Designs Ltd. [2006] EWCA Civ 1285, [2006] ECDR 31, [2007] FSR 9, the Court of Appeal approved the following passage from the 7th edition of Russell-Clarke on Copyright in Industrial Designs at para 3-80:
"A method or principle of construction is a process or operation by which a shape is produced, as opposed to the shape itself. To say that a shape is to be denied registration because it amounts to a method or principle of construction is meaningless. The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle instruction. In other words, any conception which is so general as to allow several different specific appearances as being made within it, it is too broad and will be invalid."
In Rolawn Ltd and another v Turfmech Machinery Ltd. [2008] RPC 27, [2008] EWHC 989 (Pat), Mr Justice Mann said at paragraph [79] of his judgment that design right is confined to what one can actually see in an article - either the physical article or a drawing. In relation to the design of wide area mowers which was the subject of the action before him, he said at paragraph [91] that the method or principle of construction exclusion did not apply in relation to the particular designs of the overall machine in its unfolded, semi-folded and finally folded states or in relation to the particular appearance of a tank between two sloping support arms at the rear of the machine. However, his lordship added in the next paragraph that the abstract idea of an arm holding cutters which folds over on to itself by means of a hinge in the middle seemed to him to describe a method of construction of such an arm. So, too, did the idea of a tank sitting over the rear wheels. Judge Hacon explained at paragraph [54] of his judgment in Action Storage Systems Ltd v G-Force Europe.Com Ltd and another [2016] EWHC 3151 (IPEC), [2017] FSR 18 that the effect of the "method or principle of construction" exclusion was to limit the claim to the design of a particular mower and to prevent a monopoly of the construction of wide area mowers.
It is submitted that s.213 (3) (a) has to be read with paragraphs (b) and (c) and the "commonplace" exclusion in s.213 (4) in the historical context in which the Act was passed. Prior to the Copyright, Designs and Patents Act 1988, product designs were protected by copyright as original works of art. The scope of protection was believed to be far too wide and the policy was to cut that protection down to size. Alternative ways of protecting industrial designs such as utility models or an unfair competition law were considered and rejected. Protecting designs by an unregistered intellectual property right analogous to copyright was convenient just so long as the object of protection was the design of an article and not a design method or principle which would be tantamount to the protection of a technology.
Contact
Jane Lambert
