Thursday, July 22, 2010

Prior Art from the Ark - are old Community Designs legally new?

We see that an enterprising Evangelical church is to rebuild Solomon's Temple in Brazil (though shaved, in the Brazilian manner, of its gold - a notoriously poor structural material).  We wonder whether an exact replica could be novel over the original lost, lamented Temple, or the descriptions of the same in Scripture to which the church is presumably working? 
Lacking, as we do, the wisdom of Solomon, we are happy to see that according to Hogan Lovells' excellent newsletter, the Milan Court wrestled with somewhat the same question in Fortune S.r.l. v. Schneider Italia S.p.a (Court of Milan, Decision of 3 March 2010, N. 2843/2009), a case concerning rival watchmakers. I can't find either an online copy of the judgment or details of the Community Design concerned - can any of our readers assist? 
Quoting with thanks to the authors Maria Luce Piattelli and Alberto Bellan of Hogan Lovells, "The court clarified that "the informed user was not a person skilled in the art who has a deep knowledge of prior designs including very early patent rights filed and only marketed outside the European Community". Therefore the informed user did not necessarily have knowledge about "designs filed in very old times" which have not been used in the relevant market."
Which raises the question: can old prior art really vanish from the public mind after a while?  And if so, for novelty, individual character, or both?
In this case, the citations were apparently US patents from the early 20th century.  They would not, of course, have come to the attention of readers in the European Union for alas, dear readers, at the time there was no such beast.  However, they would have been deposited on public display a few days after publication in the reference libraries and Patent Offices of the UK, Germany, the Netherlands, and, we suppose, Italy, where they have remained available ever since.
There used to be explicit "time bar" rules for excluding prior art - for example, the UK had a 50-year time bar on citation of earlier patents (s50(1)(a) of the Patents Act 1949) and, I believe, the Benelux design law excluded designs more than a century old.  There isn't anything explicit in the current EU design laws, but the Commission commentaries on the draft laws did discuss excluding prior art which was only to be found in museums, or had otherwise disappeared from the market and the mind of the public.  But should exclusions of that type bite on patent publications which have always been available and which, thanks to the efforts of Google Patents and others, have now been resurrected on the Internet (somewhat in the manner of the Brazilian Temple)?  Our collective heart is with the design owners and the Milan Court, but our collective head is unpersuaded.  As to the principle, if the prior art is a knockout, why reward re-monopolising that which the public already had as of right? and as to the practicalities, where would the line be drawn - does prior art have to be as old as Methuselah to be excluded?  Oh for the wisdom of Solomon.

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