Searching IP Databases and using what you find
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The document outlines the importance of searching intellectual property databases for various purposes such as applying for patents, conducting research, and monitoring competitors. It explains the criteria for registering patents, designs, and trademarks, and provides examples of available patent databases. Additionally, it discusses how to interpret patent claims and the recent legal precedence affecting patent interpretation.
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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.](https://image.slidesharecdn.com/2019-11-29-191130015338/85/Searching-IP-Databases-and-using-what-you-find-31-320.jpg)
Searching IP Databases and using what you find
- 1. www.4-5.co.ukwww.4-5.co.uk Jane Lambert Searching IP Databases and using what you find. 29 Nov 2019 Menai Science Park, Gaerwen, Anglesey
- 2. www.4-5.co.uk Why search? L Intellectual Property Office, Newport
- 3. www.4-5.co.uk 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
- 4. www.4-5.co.uk 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.
- 5. www.4-5.co.uk 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,
- 6. www.4-5.co.uk 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.
- 7. www.4-5.co.uk 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/
- 11. www.4-5.co.uk GB1426698 (A) - Chromatically selective cat flap
- 12. www.4-5.co.uk 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.
- 21. www.4-5.co.uk 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.”
- 22. www.4-5.co.uk 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.
- 24. www.4-5.co.uk 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.
- 25. www.4-5.co.uk 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.”
- 26. www.4-5.co.uk Claims S.125 (1) of the Patents Act 1977 provides: “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.”
- 27. www.4-5.co.uk 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.”
- 28. www.4-5.co.uk Interpreting Claims S.125 (3) of the Patents Act 1977 provides: “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.”
- 29. www.4-5.co.uk 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.”
- 30. www.4-5.co.uk 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.”
- 31. www.4-5.co.uk 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.
- 32. www.4-5.co.uk 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?”
- 33. www.4-5.co.ukwww.4-5.co.uk 4-5 Gray’s Inn Square 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