Epoch Company Ltd v Character Options Ltd

An invention producing an aesthetic effect is not necessarily an aesthetic creation as such. The relevant question is whether, in substance, the claimed invention contributes something to the art beyond the excluded aesthetic matter. A claim to a particular design or group of designs may fall within the exclusion, whereas a technical product producing an aesthetic effect may remain patentable.

There is no separate law of collocation. Where features interact synergistically to produce a combined technical effect, they may be treated as one invention and assessed together for inventive step. Without such synergy, each feature must be assessed separately. The patent in this case lacked inventive step over the prior use of spherical fusible beads.

Epoch owned a patent for a fusible bead toy using transparent, water-soluble polyhedral beads. Character Options marketed allegedly infringing beads and counterclaimed that the patent was invalid for lack of inventive step and because it claimed an aesthetic creation as such under section 1(2)(b) of the Patents Act 1977.

Epoch conditionally applied to amend claim 1 by adding a set of beads and a tray with specifically arranged dents. The court considered construction, infringement, the aesthetic-creation exclusion and inventive step over common general knowledge, Tobias and the Bindeez Aquadots prior use.

1. Construction. “Transparent” was construed purposively. A bead was transparent within the claims if, under illumination, it displayed visibly more brilliance than an equivalent opaque polyhedral bead. The claimed tray arrangement required the dent intervals to be slightly smaller than the beads’ apex-to-apex diameter, so that adjacent beads touched while remaining stable in the dents.
2. Aesthetic creation. The court applied the substance-over-form approach under art.52 of the European Patent Convention. The invention contributed an aesthetic effect produced by a fusible bead toy, rather than a particular design or group of designs. It was therefore not an aesthetic creation as such.
3. Collocation and inventive step. There was no separate law of collocation. Following the approach in SABAF SpA v MFI Furniture Centres Ltd, where features interact synergistically to produce a combined technical effect they may be treated as one invention. Here, transparency, polyhedral shape and use in a fusible bead toy combined to produce brilliance and a more attractive toy.
4. Validity and infringement. Despite that synergy, it was obvious to use transparent polyhedral beads in place of the spherical beads disclosed or used in the prior art. Claims 1 to 3 and 7 as granted therefore lacked inventive step over Bindeez Aquadots. The conditionally amended claims had no additional inventive significance. The granted claims and the proposed amended claim 1 would have been infringed by Character Options, but the patent was invalid.

First-instance decision. The judgment does not state any prior appellate history.