Catheter removal pack not protected as UK unregistered design

On Wednesday, in CliniSupplies Ltd v Park and others [2012] EWHC 3453 (Ch), Mr Justice Arnold (Chancery Division, England and Wales), struck out Clinisupplies' claim for infringement of a UK unregistered design right in a catheter removal pack, on the basis that the features which were listed in the particulars of claim disclosed no grounds upon which design right could be asserted.  The claim, as amended, read:

"CliniSupplies is the owner of the following unregistered design rights in the shape and configuration of the Vesica product and/or its design, pursuant to section 213 of the Copyright, Design and Patents Act 1988 …. In particular, the Claimant will rely upon the following features and each of them, and any combination thereof, of the design, namely:

(1) The overall external profile of the Vesica product, comprising two separate layers with each layer separated from the other by a sterile wrapping.

(2) The overall product comprising a catheter removal pack containing various components sited upon and within a larger catheter insertion pack with each pack wrapped in a sterile field made of polyethylene tissue.

(3) The larger catheter insertion pack wrapped in a sterile field made of polyethylene tissue which visibly contains a receiver and/or receptacle, which holds the additional components in this pack.

(4) The catheter removal pack wrapped in a sterile field made of polyethylene tissue which visibly contains various components.

(5) The overall product packaged in clear plastic packaging so that the overall product is visible.

(6) A small pouch (25ml) of saline solution attached to the underside of the clear plastic packaging.

(7) The catheter removal pack and the configuration of its components. In particular, the latter in the following order: a white plastic apron, clinical disposable bag, gloves, syringe, and three 4-ply non-woven swabs.

(8) The catheter insertion pack and the configuration of its components. In particular, the latter in the following order: a receiver, a white plastic apron, clinical disposable bag, gloves, two procedural drapes, second set of gloves, five cotton balls in a gallipot, a catheter fixation strap, five 4-ply non-woven swabs, a urine drainage leg bag and bag straps.

(9) The configuration of the component parts of the Vesica product and in particular their positioning relative to one another; this configuration was designed by reference to aseptic non-touch techniques, such techniques not previously being used in any urology product. These aseptic non-touch techniques were developed by clinicians in conjunction with the Claimant and were not publicly available until the Claimant launched the Vesica product in May 2011."

 Arnold J observed that this list of features read more like claims to a series of concepts, such as one might find in a patent application, than like the description of a design. Having examined each of the nine claimed features in turn, the learned judge concluded that six of them were excluded from design right because they were a method or principle of construction, while the remaining three were mere concepts.

So why did CliniSupplies do this? Arnold J supplied the motive: the company had pitched its claim at this conceptual level precisely because the degree of similarity between CliniSupplies' and Park's products was minimal.