“The longest standing, best known, and arguably, economically most valuable form of protection of rights provided by the law of intellectual property comes in the form of the patent.” In recent years, the fierce competition of modern sports brings huge business profits. As sports have become big business, it is widely acknowledged that sporting apparatus should be protect by patent law. Nevertheless, there is a surprising amount of debate on whether awarding patent to sports moves. Such issue is no longer a theoretical discussion, United States has already provided patent protection to sports moves. More and more professors argue that not only sporting apparatus but also sports moves should receive patent proctection. According to intellectual property attorney Robert M. Kunstadt, “the possibility of securing exclusive right in sports moves-slam dunks, pitching stances, golf swings and fosbery flops-is real. The legal tools already exist, and it may be time for them to be put to use.”
However, from the angle of the essence of sports competition, giving patent protection to sports moves will reduce the intensity of sports competition and affect the charm of sports. If Dick Fosbury (the man who first used the backward style of high jumping) had patented on his revolutionary reform of high jump, he could have obtained great advantages and dominated the game for years. It would be a damage to sports competition. In other hand, not all sports moves satisfy the requirements of patentability. As Smith points out “when applied to sports moves, the novelty and nonobvious elements would limit the breadth of moves that athletes may patent”. Furthermore, applying intellectual property law to sports moves is hard to enforce, especially to celebration moves.
This essay will focus on analysing the arguments for and against the granting of patent rights over sporting apparatus and sports moves, and points out that sports moves should not be patentable. There will be three parts in this essay, part I makes a brief overview on patent law, including the history, origin and the development of patent law, and illustrates some relevant cases and examples for patented sporting apparatus and sports moves. Part II examines the requirements to obtain patent protection and outlines some strong arguments to explain why the sporting apparatus should granting patents. Part III analyses the patentability of sports moves and negative impacts on granting patent on sports moves.
Overview On Patent Law
A. History and development of patent law
Patents can be traced back as far as the late middle century. The earliest case of granted a patent in England was Queen Elizabeth granted patent to an inventor from Italy. However, at this period patents were a reward for royal supporters rather than a reward for invention. Such abuse of power led to inflation and exclusive rights were excessively protected, so the public strongly opposed the granting of patents. As the technology advanced and the development of Industrial Revolution, Parliament enacted the Statute of Monopolies 1624. This statute provided a maximum period for fourteen years to protect inventions through patent, it could be a landmark of modern patent law. As a result, the Statute of Monopolies 1624 is viewed as the origin of modern patent law. After that, there are two important legislation were enacted, the Patents, Designs and Trade Marks Act 1883 and Patents Act 1977. The former established the patent office and entitled it to investigate the paten applications, the Patents Act 1977 made significant changes to the system for granting a patent.
B. The development of patented sports industry
For maintain its leading position in technology, the US keep enhanceing the protection of patents. Under the current patent law of US, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” In traditionally, sports moves are viewed as a method and cannot be protected as a patent. However, as the business method has been patented, the patentability of sports moves greeted a favourable turn in the US. Nowadays, sports methods and other movements of the human body have been granted patents by the Patent Office.
In the case of State Street Bank and trust Co v Signature Financial Group Inc, the US Court of Appeals for the Federal Circuit held that if “it produces a useful, concrete and tangible result” and according “anything under the sun made by man is patentable”, the business methods should be protected by patent law. The importance of State Street decision is not so much the Court held that business method was patentable but rather the case has apparently expanded the subject matter of patent and have an immense impact on the patentability of sports moves. After that, the Patent Office has granted patent protection to many sports methods and other processes involving movement of the human body. The following are the most famous examples of patented sports moves.
- Method of swing training for sports
2. Method of putting a golf ball
The Requirements To Obtain Patent Protection And Reasons For Granting Patent Over Sporting Apparatus
Against several centuries developing, the main purpose of patent law is to reward the inventors in order to encourage innovation and protect the right owner’s benefit. Thus, a patent can be a powerful legal tool that protects new inventions and how they work, what they do,how they do it, what they are made of, and how they are made.After a patent is granted, you can use your invention for business purpose, sell or license the patent to other people else. For this reason, set a strict and clear requirement for patentability is becoming a common view. This part examines these requirements, discusses whether sporting apparatus fit within the ambit of these conditions, and points out that, sporting apparatus should be patentable and granting patent to sporting apparatus is necessary.
- Requirements for patentability
Unlike the US that before patents are granted for inventions, it must meet Patent Act requirements of usefulness, novelty, and non-obvious. The UK Patents Act 1977 set forth four requirments that must be satisfied in order to become the subject of a granted patent, an invention must meet the following conditions: ● the invention is new (novelty)
- it involves an inventive step(non-obvious)
- it is capable of industrial application(consists of subject matter that is patentable)
- the grant of a patent for it is not excluded by subsections (2) and (3) below.
The Patents Act 1977 emphasize that for an invention to be patentable it must be new. To satisfy the requirement of “novelty”, an invention cannot be disclosed or anticipated by the the “state of the art”. The “state of the art” is defined very broadly to comprise all matter (whether a product, a process, information about either, or anything else) that is available to the public before the priority date of the invention. Both the Patents Act 1977 and EPC provide that the date at which the novelty is to be assessed is the “priority date” of the invention. According to EPC Art , the priority date is normally the date on which an application was filed , in some case the priority date is calculated from an earlier date the date(if in the previous twelve months, applicants apply patents in a Paris Convention country).
It should be noted that whether the invention has been made available to the public at the priority date also determining novelty of the the invention. Which means the relevant information cannot have been previously known or used by others anywhere in the world before the date when the patent application is filed at the Patent Office. As L.Bently pointed out that ” the new test provides that an invention will lack novelty if at the priority date of the invention it has been made available to the public.” However, public availability is not very difficult to define, at least in the sense that a clear line can usually be drawn between public and private.
- Inventive step
It is not enough that an invention qualify as novelty, it must also involve an inventive step. The inventive step determines whether an invention has been developed an original way to solve a problem. Section 3 of the Patents Act 1977 states:”an invention shall be taken to involve an inventive step if it not obvious to a person skilled in the art……”. Although the ” inventive step” in the sence is closely related to the novelty requirement, an invention may be new and does not gain patent protection if the invention has been obvious to a person with ordinary skill in the relevant field at the time of ivention. The case of Graham. v. John Deere Co is a good example to illustrate the concepts of obviousness. In this case the Court did not inquire on the terms of the result achieved by the invention but rather on what one skilled in the art would find obvious. The Court held that ” There will be difficulties in applying the non-obvious test”. Therefore, even if an invention meets the requirement of novelty and produces an improved result, it may can not to become the subject of a granted patent if it fail the non-obvious test.
- Be capable of industrial application
After the first two conditions set forth in Patents Act 1977 are satisfied, the third requirement – that the invention fall within the subject matter of patentable- must be addressed. In order for an invention be patented,it must be capable of industrial application. As the Patents 1977 provides that “An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture”. This statutory scheme emphasizes that patent protection should not be available for the pure theories of “intellectual creations”, and it is necessary to show that the invention has a “useful purpose”.
In addition, even if an invention satisfies the requirement of novelty, inventive step, and industrial application, the application for a patent could also be denied, because of the “Non-patentable matter”. Under the s.1(2) ,(3) and s.4A of the Patents Acts 1977, the following are excluded from the ambit patentability:
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;
(e) contrary to public policy or morality.
B. The arguments for patenting on sporting apparatus
As mentioned in the prior part, whether granting patents on sporting apparatus and sports moves should be separately treated. Sports related industries have been booming in recent years, according to Verow Richard “now the sports industry has arrived at that status, it is here to stay and, in terms of spending, the business of sports is now larger than the chemical, agricultural or motor industries in the UK”.In this case, there is an urgent demand for sporting goods companies to protect their original creations such as sporting apparatus. Obviously, the best way is to obtain a patent. This part will explain why sporting apparatus should be patentable.
1. Satisfy the requirements of patentability
From legal perspective, sporting apparatus meet all the requirements of patentability. The notion of granting patents on sporting apparatus is not new. It is common for sporting manufacturers to obtain patent protection for sporting apparatus. Like other patentable inventions, sporting apparatus also satisfy the conditions of novelty, inventive step, capable of industrial application. A well- known example is Windsurfing International Inc. V. Tabur Marine ltd.
The plaintiff was the manufacturers of windsurfer and patented an arc-shape sailboard in the UK. The patented equipment was a sophisticated arc-shaped model, which made the sailboard to attain higher speed and stability. In this case the plaintiff sued another company for patent infringement as a result of producing and selling the similar windsurfing equipment in UK. In the same time, the defendant(Tabur Marine) alleged that the validity of the patent can be challenged. Because at least 20 years ago, a boy has already used the similar method to hold the sail taut and provided a handhold for the rider. The Court upheld the claim of defendant and held that the boy’s invention predated the plaintiff’s application and the sailboard designed by the plaintiff was an obvious improvement on the boy’s invention. Thus the patent for winsurfing equipment had been anticipated. Although the windsurfing equipment was judged non-patentable, it must be noted that in this case the court held “the improvement carried out by the patentee was not sufficient to gain the protection of a patent”, in other words, the sporting apparatus could be patentable if the requirements of patentability are satisfied.
- The economic and competitive impact
The best way of encouraging the development of innovation and economy is to grant the patent protection to inventors, according the research of Edwin Mansfield, many invention would not be introduced without patent (especially in the pharmaceutical and chemical area). Because of the intense competition, sporting manufacturers are continuously aiming at research and development for new products and technology innovation. With the same reason, the sports clubs and athletes enthusiastically adopt the advanced sporting apparatus as soon as they appear. In the field of modern sports competition, sometimes the sporting apparatus directly decide the result of competition. Lewis Hamilton, British F1 racing diver of Mclaren Mercedes team and who is the youngest F1 world champion. There is no doubt that Lewis Hamilton is a talent athlete of car racing. Imagine if the Mclaren Mercedes team cannot offer him the more advanced racing car than other teams. Could Lewis still get the world champion?
As everyone knows, it is very difficult and costly to develop a new product. So if the innovations of sporting apparatus fail to obtain patents, it will be a heavy blow to sports manufacturers when they suffering patent infringement. Many economists point out patent protection tends to be more important to small firms than to large firms. As compared to large firms, smaller firms are in a weaker position in terms of market occupancy, marketing networks, goodwill, intensity of advertising, etc. Thus, the smaller firms need to seek more widely for patent protection to compensate these weaknesses. From the above, it can be seen that sporting apparatus is patentable. In the meantime, granting patent on sporting apparatus has a significant impact on the development of economy and sport.
Problems Associated With Patenting Sports Moves
Can sports moves be patented? Such question sounds ridiculous. More and more researchers suggest that sports moves should be granted patent protection. Because sport is no longer just a game, it has become big business. In an article of Kunstadt, he argues that “sports is now big business and demands this protection”. In addition, he points out that athletes may benefit from their sports moves and patents, copyrights, trademarks are the best tools for remedy. Furthermore, Kunstadt suggests sports moves should obtain same patent protection with sports equipment. However, it is noteworthy that although some sports moves fall within the subject matter of patent protection, greater negative impacts may be brought.
A.Not all sports moves are patentable
As mentioned in the part Ⅱ, in order to obtain a patent one sports moves must satisfies the Patents Act requirements of novelty, non-obvious and capable of industrial application. To assess the patentability of sports moves more adequately, the same criterion is required and not all sports moves are patentable. The non-obvious and novelty requirements are the biggest problems for patenting sports moves.
According to Smith, the novelty and nonobvious requirements would limit the scope of patentable moves. For example, some sports moves such as free-kick or slam dunk would not be patentable because of the novelty requirement. Beckham became a household name when he scored an astonishing goal in the match against Wimbledon in 1996. With ManUnited leading 2-0, Beckham noticed that Wimbledon’s goalkeeper was standing a little far away from his goal, and made a goal from the halfway line. So, can David Beckham patenting this amazing goal? The answer is doubtful. Many football players ever shot from the halfway line and novelty requires that the move have not been known or used by others previously, which means the Beckham can not patenting his goal. It must be judged from the perspective of professional player to examine whether a new sports move meets non-obvious condition. It must be judged not from the perspective of an ordinary person but rather from that of another professional basketball player. In the field of sport, take high jump as an example, most athletes adopted the Fosbury Flop to over the bar, even some athletes improved this move it also hard to be considered non-obvious in the opinion of another high jump athletes.
In addition, the novelty and nonobvious requirements would cause some inconveniences to athletes, Smith figure points out that “In addition to limiting the extent of patentable moves dramatically, the novelty and nooobvious requirements would force athletes to alter their training methods”. Athletes who tend to patent their moves would have to work or training individually. Athletes can not practice their new moves in front of their teammates or that is “available to public”. What is more, if the owner of patent is the team or club rather than athletes, the players who have invented these moves would never leave their teams. Because, once leaving the original team the athletes could not use their moves. To small team (especially to football club) sell athletes is the main channel to get money to maintain the team operating.
B. Negative impacts on patenting sports move
According to Kukkonen patenting on sports moves would have a series of negative impact.If a basketball team has patented the three point shot, then who can beat them? If Beckham has patented his super long shot, then how about the similar goal from other players? Part of the excitement of sports is seeing athletes use various new moves to play the game, and seeing other players catch on to it and improve the moves. Moreover, athletes are very willing to perform their moves in public, because the applause and clapping are the best reward to them. The essence of sports is to break the records to and constantly surpass oneself. Patenting sports moves may have a negative effect on the intensity of the sports and the sportsmanship. Sports fans want to see a fierce game with both sides on the same level rather than a match without any suspense. The recent research of Economists Henry Demmert and Roger Noll indicates that sports fans will pay their attention in game with each team has the opportunity to win the champion.
The Innovation is the life of sports indutry. Huge business profits makes the sports manufactures invest a lot of money in researching and development. The patent protection would be a good choice to sports manufactures. In other hand, sports moves should not be protected by patent law. Since the modern Olympic Games were established in 1894, the Olympic motto of “faster, higher, stronger” has been an aspiration and constantly drive many athletes to surpass themselves. The incentive of innovation of sports moves derives from desire to win rather than the protection provided by Patent Law. Granting patent on sports moves would direct unfair competition and hinder the development of sports. In sum, quoting Smith’s word as the ending” athletic competition belongs on the playing field, not at the Patent Office or in the federal courts”.
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