Saturday 30 November 2019

IP Database Searches and Understanding Specifications

I should like to thank Emily Roberts and her colleagues at M-SParc (the Menai Science Park) for organizing an excellent seminar yesterday. We had so many attendees that we had to move to a bigger conference room.  It was particularly good to see graduate students and undergraduates from Bangor Law School in the audience. After the talk, I held a pro bono clinic with representatives of 5 local companies.  We have laid the foundations for a very successful support network for the new knowledge-based enterprises located in the science park and elsewhere in Northwest Wales.

In yesterday's presentation, I discussed the reasons for searching IP databases. Obviously, if you want to register a patent or design you need to know the prior art.  Similarly, if you want to register a trade mark, you need to be aware of the same or similar signs for the same or similar goods or services. However, that is not the only or possibly even the main reason for searching patent, design or trade mark databases. There is an enormous volume of technical and commercial information in those records and it is available to anyone with access to the internet absolutely free.

I introduced my audience to three patent databases that I use frequently:
  • The IPO's Ipsum service if you want lots of information about the prosecution of a patent application which is not available anywhere else;
  • Espacenet which is very easy to search; and
  • Google Patents which has records from many patent offices all in one place.
After regaling the attendees with stories of Arthur Pedrick and his wacky inventions (something they really ought to teach in law school) we looked up Ginger's cat flap (GB1426698) and its wider embodiments and the cart before the horse (GB1128974A). For trade marks, we explored the IPO's service looking up the UK's first registration, namely the Bass triangle for pale ale. For designs, I recommended DesignView.

I pointed out that searches that business people and students can make are nothing like as extensive as searches carried out by attorneys and specialist search services and anybody seeking patent, design or trade mark registration should not dispense with their professional services.

We then discussed the elements of a patent specification, namely the abstract, description, drawings and claims and I stressed the importance of claims.  I introduced the audience to the Protocol on art 69 EPC and we considered the consequences of the new art 2.  I mentioned the Supreme Court's judgment in Eli Lilly v Actavis and we considered the three reformulated Improver questions by reference to whether the substitution of a carrot hanging from a string in front of the horse's nose was an equivalent to the food tray would fall within claim 1 in the cart before the horse invention.

After I finished my clinic I drove across the Britannia Bridge to Bangor to attend a splendid triple bill by Ballet Cymru at the Pontio Centre.  Members of the company had introduced ballet to the students of a local primary school who presented an impressive curtain-raiser in the theatre's foyer.  Alex Hallas, who tutored the children, told me that many including several boys had been inspired to take up ballet seriously.  Throughout my life, I have found ballet to be an excellent mental as well as physical exercise. Probably I could not do my job well without it.

Anyone wishing to discuss this article or any of the topics mentioned in it should call me on 020 7404 5252 or send me a message through my contact form.

Thursday 28 November 2019

Patent, Design and Trade Mark Filings in Wales

GB189420431 (A)

Jane Lambert

Wales can claim to have invented one of the world's first flying machines years before the Wright Brothers.  Wiliam Frost of Saundersfoot filed an application for a patent for the following invention on 25 Oct 1894:
"The flying machine is propelled into the air by two reversible fans revolving horizontally. When sufficient height is gained, wings are spread and tilted by, means of a lever, causing the machine to float onward and downward. When low enough the lever is reversed causing it to rise upward & onward. When required to stop it the wings are tilted so as to hold against the wind or air and lowered by the reversible fans. The steering is done by a helm. fitted to front of machine."
Nowadays, aerospace is an important sector of the Welsh economy - one of several that are developing impressive new products and processes that require legal protection.

According to the Intellectual Property Office's Facts and Figures 2018, some 351 patent applications were filed from Wales in 2018 which was 2.7% of the UK total placing Wales 10th in the UK's nations and regions behind London with 2,625, Southeast England (1,944), Eastern England (1,811), Southwest England (1,312), the West Midlands (977), Northwest England (956), Scotland (756), Yorkshire and the Humber (693) and the East Midlands (486). However, Wales was ahead of Northeast England (279) and Northern Ireland (143).  That was 8% fewer than the number of applications made the previous year which was more than the UK trend that was down from 13,286 to 12,843. On the other hand, Wales bucked the trend in the number of grants which was 114 in 2018 - up from 109 in 2017.  The number of grants for the UK was 3,001 in 2018 down from 3,260 the year before.

There was an increase in the number of trade mark registration applications from Wales (1,809 in 2018 up from 1,700 in 2017) which was in line with the UK as a whole (66,875 in 2018 and 63,097 in 2017).  As in patents, Wales trailed all other nations and regions except Northeast England and Northern Ireland in trade mark applications.  There was also an increase in the number of grants to applicants in Wales (from 2,274 in 2017 to 3,159 in 2018) in line the rest of the UK (113,334 in 2017 to 122,165 in 2018).

Wales was ahead of the East Midlands, Northeast England, Northern Ireland and Scotland in the number of design registration applications in 2018 (1,965 in 2018 compared to 634 in 2017). That was also roughly in line with the UK as a whole which made 14,797 applications in 2017 and 20,984 in 2018.  There was also a similar increase in the number of grants up from 541 in 2017 to 939 in 2018.

Tomorrow I shall be speaking to Welsh entrepreneurs, inventors and creatives at the Menai Science Park (M-SParc) about patent, trade mark and design searches and how to read patents between 13:30 and 14:30.  We have had such a brig response that we have had to move the meeting from the boardroom to the training room but I am sure we could still take in a few more.  This link will take you to the Eventbrite page where you can register for the talk.

Anyone wishing to discuss this article or IP generally may call me on 020 7404 5252 during normal office hours or send me a message through my contact page.

Saturday 2 November 2019

How to use Patent, Trade Mark and Registered Design Databases

Standard youtube Licence 

Jane Lambert

On Friday 29 Nov 2019 I shall give a free class on how to search for patents, trade marks and registered designs and how to use the information that may be uncovered.  It will take place at the Menai Science Park (M-SParc) at Gaerwen on Anglesey between 13:30 and 14:30. Possibly this will be one of the most useful talks that you ever attend.

The patent, trade mark and design databases kept by the world's intellectual property offices contain a massive volume of technical, scientific and commercial information which is free to use for just about anyone, anywhere in the world.  All you need to know is where to look and how to use the information that you find.

As you know, patents are granted for inventions that are new and involve an inventive step.  Similarly, designs can be registered if they are new and have individual character.  Finally, signs can be registered as trade marks if they can distinguish one business's goods or services from those of all others.  Patent, trade mark and registered design prosecution is not cheap.  You can save yourself lots of money, time and grief by checking what has already been registered before you apply to register an intellectual property right that is either refused or taken away after it has been granted.

But that is not the only reason why folk search patent and other IP databases.  Because an applicant for a patent has to disclose his or her invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art every specification is in effect an instruction manual. Every patent database is in a massive library of scientific and technical literature.  Of course,, patent specifications have to follow certain formalities.  I shall show you how to read the specifications so that you can unlock and use the information.

Even if you have no plans for patenting an invention knowing how to search a patent or other IP rights database can still be useful.  The registers can tell you a lot about the business of a competitor, supplier or customer.  The classes for which a company has registered a trade mark will indicate the business that it hopes to develop in the next few years.  The designs register may even indicate what its new products will look like so you can take steps to take advantage of any opportunities that may be created or counter challenges that be laid.

While I cannot make you experts within an hour I can at least tell you where you can get further assistance either free of charge of for a  modest additional fee. These include the Business and IP Centres that partner the British Library in London and the Intellectual Property Office in Newport and the Patent Information Units around the country.

As I shall be making online searches you may want to bring your own laptop, tablet, smartphone or other devices to the event.  Free wifi is available at the science park so you will be able to follow what I do online.

If you want to attend, you need only click this Eventbrite link to register.  Should you want to find out more you can call me on 020 7404 5252 during office hours or send me a message through my contact form.