Zip patent found invalid
09. September 10
On May 10, 2010 Borgarting Court of Appeals maintained a judgement from Oslo District Court in which patent NO 323 290 from the Swiss company RIRI Group SAs was pronounced invalid. The Court of Appeals concluded, as did the District Court, that neither the method nor the product in the patent were sufficiently described as to enable a skilled person to carry out the invention in practice (cf. Patents Act §8).
The patent concerns a waterproof zip which is produced by injection moulding
of the teeth of the zip to a tape by chemical bonding. Injection moulding of
zips is known, but the proprietor of the patent was of the opinion that the novelty
of the manufacture method was related to chemical covalent bonds between the tape
and the teeth as opposed to previously known production of physical bonding ("entanglements").
The production of covalent bonds should ensure that the zip is especially watertight.
RIRI had previously raised an infringement case in Øvre Romerike District Court
with Flyfish Europe AS as defendant. Flyfish markets and sells equipment for
outdoor life, among other things wading trousers with a zip, "YKK Aquaseal Zipper",
manufactured by the Japanese YKK Corporation. YKK claimed that their zip is based
on physical bonding between the tape and the teeth. RIRI, on the other hand,
claimed that the zip has been manufactured with the patented technology and therefore
constitutes an infringement. Both YKK and Flyfish have made a claim that RIRI's
patent is invalid.
The Court of Appeals stated that the patent lacked inventive step and that it
had not been proved that covalent bonds quantitatively provide a significant contribution
to the grip between the tape and the teeth using this technique. Moreover, at
the time of application there was no suitable method which made it possible for
a skilled person to verify the degree of covalent bonds: "The description does
not give the skilled person any grounds to know whether the person in question
has managed to use the invention in practice" i.e. a skilled person cannot tell
whether such covalent bonds are sufficiently created to achieve the desired effect.
In the same manner this makes it impossible for a third party to know if or when
an infringement has been made in a patent claim.
The patent infringement was rejected and RIRI was sentenced to pay compensation
of approximately 1,3 million Norwegian kroner to YKK Corporation and 0,36 million
Norwegian kroner to Flyfish Europe AS, corresponding to their court costs, and
to pay costs for expert judges. An opposition has been raised against a corresponding
European patent in the European Patent Office (EPO). The case in EPO is under
prosecution.
