Searching IP Databases and using what you find

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Jane Lambert
Searching IP Databases and
using what you find.
29 Nov 2019 Menai Science Park, Gaerwen, Anglesey

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Why search?
L
Intellectual Property Office, Newport

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Some of the more common reasons
 You want to apply for a registered right (that is to say, a patent,
registered design or trade mark) and you need to know what
could possibly prevent your doing so.
 You are carrying out academic or commercial research.
 You want to keep tabs on your competitors or the industry in
general.
3

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Applying for a Registered Right
 Patents are granted only for inventions that are new and involve
an inventive step.
 Designs can be registered only if they are new and have
individual character.
 Trade marks can be registered only if they can distinguish the
goods or services of one undertaking from those of all others.

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Carrying out Research
 The world’s patent databases are a vast store of scientific and
technical information.
 Valuable market research can also be obtained from patent,
design and trade mark databases:
• Patents may indicate the products that a company may wish to develop
and the market that it may wish to enter.
• The goods or services for which a company has registered a mark may
indicate the products that it intends to launch in the next 5 years.
• Design registrations may indicate trends in fashion goods and
accessories, home furnishings and other fast moving markets,

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What sort of information is
available?
 Patents: Disclosure of an invention in a manner which is clear
enough and complete enough for the invention to be performed
by a person skilled in the art the proprietor and filing and
prosecution details
 Registered Designs: Photographs or drawings of the product
from various angles, particulars of the registered proprietor,
filing and history
 Trade Mark: A representation of the sign and particulars of the
proprietor, filing and history.

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Patent Databases
 Ipsum: operated by the Intellectual Property Office at
https://www.ipo.gov.uk/p-ipsum.htm;
 Espacenet (formerly “esp@cenet”) operated by the European
patent office at https://worldwide.espacenet.com/;
 Google Patents at https://patents.google.com/

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GB1426698 (A) - Chromatically
selective cat flap

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Chromatically selective cat flap
The idea was to detect the difference in fur colour between a
ginger cat and a black cat. He came up with this idea because a
black cat named "Blackie" from next door kept trying to steal his
own cat's food. However, with Pedrick's new cat flap design, if
Blackie attempted to use the cat-flap he would not be allowed in.
Ginger was impressed with the idea, and further suggested that
the concept could be applied as a nuclear deterrent. Ginger's
concern over the Cold War and the nuclear arsenals threatening
the world was a regular motivator for Pedrick's inventions.

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Chromatically selective cat flap

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Registered Designs

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Trade Mark Searches

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How to read a Patent
S.14 (2) Patents Act 1977 provides:
“Every application for a patent shall contain -
(a) a request for the grant of a patent;
(b) a specification containing a description of the invention, a
claim or claims and any drawing referred to in the description or
any claim; and
(c) an abstract.”

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Abstract
PROPELLING AUTOMOBILES WITHOUR USING PETROL OR GASOLENE
1405575 Horse-propelled automobile A P PEDRICK 14 March 1974 11289/74
Headings B7B and B7T An automobile is propelled by a horse pushing from
behind. A U-shaped member 4 is attached by its free ends to the automobile,
the automobile pulling a trailer in which food for the horse can be placed. The
horse is connected to the U-shaped member 4 in such a way that it can only
reach the food by pushing against the U- shaped member and so propelling the
automobile. The accelerator of the automobile can be connected to pneumatic
cylinders 6 in the ends of the U-shaped member to influence the thrust of the
horse. The ignition switch can also be arranged to give a mild electric shock to
the posterior of the horse when it is switched on. The brake pedal maybe linked
by cables to halter 18 around the neck of the horse. In a modification (Figs. 4
and 5, not shown), the horse is placed inside two rotating assemblies in the
manner of a treadmill. Each assembly has two wheels one inside the other, with
a freewheel arrangement between the two to enable the horse to rest, e.g.
when the automobile is running downhill.

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Description
In the time when the automobile vehicle was being pioneered it
was often referred to as the "horse-less carriage", and in the
about 100 years since then, it might be said that the "horse-less
carriage" has pretty well driven the horse off the main road-ways
between cities in nearly every country in the world.
However, the horse-less carriage needs petrol, or gasolene, to
provide its driving energy, and in the present "energy crisis", and
shortages of oil production below demand, it is likely that there
will be a progressive increase in the price of petrol, or gasolene,
which make it sensible to consider how the automobile could be
driven on some other form of fuel.

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Claims
S.14 (5) of the Patents Act 1977 provides:
“The claim or claims shall -
(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so
linked as to form a single inventive concept.”

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Claims
“For the purposes of this Act an invention for a patent for which
an application has been made or for which a patent has been
granted shall, unless the context otherwise requires, be taken to
be that specified in a claim of the specification of the application
or patent, as the case may be, as interpreted by the description
and any drawings contained in that specification, and the extent of
the protection conferred by a patent or application for a patent
shall be determined accordingly.”

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Claim 1 of GB1405575A
“An automobile having coupled to its rear end a trailer truck
for carrying food for a horse, the automobile also having a U
shaped member the free ends of which pass into tubes
secured to each side of the automobile, through which
member a propulsive thrust can be applied to the
automobile by a horse behind the trailer truck, the
arrangement being such that the U shaped member is
secured to a saddle, or is otherwise securable to the horse's
back, in such a manner that the horse cannot reach the food
on the trailer unless it advances in a manner by which the
ends of the U shaped member apply a thrust to the
automobile body.”

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Interpreting Claims
“The Protocol on the Interpretation of Article 69 of the European
Patent Convention (which Article contains a provision
corresponding to subsection (1) above) shall, as for the time being
in force, apply for the purposes of subsection (1) above as it
applies for the purposes of that Article.”

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Protocol on the Interpretation of
Article 69 EPC
Art 1 General Principles:
“Article 69 should not be interpreted as meaning that the extent
of the protection conferred by a European patent is to be
understood as that defined by the strict, literal meaning of the
wording used in the claims, the description and drawings being
employed only for the purpose of resolving an ambiguity found in
the claims. Nor should it be taken to mean that the claims serve
only as a guideline and that the actual protection conferred may
extend to what, from a consideration of the description and
drawings by a person skilled in the art, the patent proprietor has
contemplated. On the contrary, it is to be interpreted as defining a
position between these extremes which combines a fair
protection for the patent proprietor with a reasonable degree of
legal certainty for third parties.”

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Protocol on the Interpretation of
Article 69 EPC
Art 2 Equivalents
“For the purpose of determining the extent of protection
conferred by a European patent, due account shall be taken of any
element which is equivalent to an element specified in the
claims.”

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Eli Lilly v Actavis
The Supreme Court changed the law on interpretation of patents
in Eli Lilly v Actavis UK Ltd and others [2017] RPC 21, [2017] UKSC
48, [2017] Bus LR 1731:
 Interpret the claim literally remembering it is written for a
person skilled in the art;
 Ask the reformulated Improver questions.

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Eli Lilly v Actavis
“i) Notwithstanding that it is not within the literal meaning of the
relevant claim(s) of the patent, does the variant achieve
substantially the same result in substantially the same way as the
invention, ie the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading
the patent at the priority date, but knowing that the variant
achieves substantially the same result as the invention, that it
does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the
patentee nonetheless intended that strict compliance with the
literal meaning of the relevant claim(s) of the patent was an
essential requirement of the invention?”

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Gray’s Inn London WC1R 5AH
DX No 1029 LDE
clerks@4-5.co.uk
Tel +44 (0)20 7404 5252
Any Questions
Jane.lambert@nipclaw.com
www.nipclaw.com
www.nipcwales.co.uk

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