G2/21 decision – Plausibility
A decision has been made in respect of the G2/21 referral. We consider the referral and what the decision…
Wilson Gunn has been successful in securing a declaration of non-infringement for its client Tek-Dek Ltd in relation to European patent 1196672 (B2) in the UK in the name of Flexiteek International A/S.
Tek-Dek and Flexiteek are competitors in the field of synthetic decking materials for use on boat and yacht decks as an alternative to traditional teak decking. Tek-Dek’s products include their Flexible range which comprises extruded lengths of flexible synthetic planking that can be assembled together to form a deck surface. The synthetic planking has a tongue and groove arrangement along either side to aid assembly and is constructed to look like teak planks. Some of the extrusions in the Flexible range have a decorative strip of darker material co-extruded along one edge to simulate the appearance of traditional caulking in the assembled deck surface.
Flexiteek filed a patent application in 2000 directed to a flexible synthetic surface covering for a range of uses including boat and yacht decks. A key question was whether the granted claims were limited to surface coverings made up of separate planks and caulking strips or if they also covered arrangements such as Tek-Dek’s Flexible range in which a caulk imitating decorative strip is co-extruded with the planks. The patent had been subject to post grant Opposition before the European Patent Office during which the Opposition Division indicated that the scope of the patent was limited to surface coverings made up from separate planks and caulking strips. Despite this, Fleexiteek continued to allege that the patent encompassed surface coverings made up of co-extruded planks and decorative caulk imitating strips and refused to acknowledge that the Tek-Dek Flexible range did not fall within its scope.
Wilson Gunn filed an application for a declaration of non-infringement with the UK Intellectual Property Office on behalf of Tek-Dek Ltd and were successful in obtaining an opinion that the claims in the patent are limited to surface coverings made up of separate planks and caulking strips. Accordingly, in a decision dated 3rd January 2014, the hearing offer granted Tek-Dek a declaration of non-infringement which legally prevents Flexiteek instigating infringement proceedings in the UK based on EP(UK)1196672B2 in respect of Tek-Dek’s Flexible product range and which also covers Tek-Dek’s Professional range of synthetic decking materials. Andrew Oates, Managing Director of Tek-Dek Limited, said: “I am delighted by the decision which finally resolves the true scope of Flexiteek’s European patent and allows us to plan for the future with greater certainty”.
The full decision can be read here.
Anyone can apply for a declaration that an act or a proposed act does not infringe a patent in the UK and similar procedures are available in most countries. A declaration of non-infringement can be sought as a defence to an allegation of patent infringement and can also be used to “clear the way” if there is any doubt as to whether a competitor’s patent might be infringed in relation to a product or method.
If you would like advice regarding declarations of non-infringement or any potential patent infringement situation, please do not hesitate to contact us today.