IP Database Searches and Understanding Specifications

Searching IP Databases and using what you find from Jane Lambert

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.