It’s that time of the year once more in Australia: National Ride2Work Day (Wednesday 16 October 2019).  In celebration of pedal power, here’s a tour of some weird and wacky cycling patents.

One wheeled vehicle (US patent 325,548)

This curious vehicle, where the rider sits inside the wheel, was patented by John Otto Lose in 1885.  I love the way the illustrator has gone to the trouble of including a little umbrella in case of rain (not an essential feature of the invention).

Aerial bicycle (US patent 563,793)

Another slightly bizarre contraption was invented by Hiram Nickerson and patented in 1896.  The crucial problem, which seems to render this invention almost completely impractical, is that without a network of elevated track, the aerial bicycle can’t go anywhere.

Rowing bicycle (US patent 642,544)

Like the idea of rowing and fresh air but scared of the water?  No problem!  Louis Burbank has the solution for you with this rowing bicycle, patented in 1900.  More recent iterations of such a machine are available for purchase in 2019, but I suspect it’s probably a niche market.

Double bicycle for looping the loop (US patent 790,063)

Next up, it’s Karl Lange’s patent, granted in 1905, for a “double bicycle for looping the loop for circus and other performances.”  I’m not sure I fancy my chances with this one.  Especially without a helmet.

Exercising device for water use (US patent 4,241,688)

More recently, Ralph and Kathryn Mansolill’s 1980 patent is for a device useful for exercising in a swimming pool or other body of water.  The general idea is not to achieve some sort of miraculous unicycling on water.  In essence, the device is buoyant so that it can support a person “in a substantially seated upright position in the body of water such that the neck, head and upper shoulders of the person remain out of the water, allowing the person to exercise the legs, arms and torso while neutrally buoyant.”

Mowing apparatus adapted to be towed by a pedal-operated vehicle and the like (US patent 5,410,864)

Can’t afford a motorised ride-on lawnmower?  In 1995, Thomas Lacy and Kenneth Shackles, Jr. patented this mowing apparatus adapted to mount to the frame of a vehicle such as a bike.  Especially handy if you have a long, thin lawn.

Apparatus for harnessing wind to drive a bicycle (US patent 6,932,368)

Granted in 2005, Vladimir Zam’s patent protects his sail attachment which, when connected to a bicycle, harnesses wind to drive the bicycle forward.  My assumption is that it’s not intended for use on crowded city streets and I guess it might take a bit of practice not to fall off and hurt yourself when the wind changes direction.  However, Google suggests that others have also proposed bicycles with similar attachments – so perhaps this idea may have wind in its sails yet.

Body-connected bike (US patent 6,805,657)

Do you live in a small apartment and don’t have space for a bicycle?  Just do away with the frame.  And the pedals.  Indeed, Justin Trenary’s 2004 patent does just that.  It’s an interesting concept, probably quite exciting for downhill riding, but I’m not tempted to replace my commuting bike with one of these any time soon.

Authored by Serena White, DPhil and Charles Tansey, PhD

First of all, what is a patent family?  Like a family made up of people, it’s a collection of things that are related in some way, where the things just happen to be patent documents.  Although all methods of constructing a patent family are artificial, some are more artificial than others, which, I guess, implies that some are almost natural.

There are really two main types of patent family:  simple and extended.  These two are the most logical, but there are a few that aren’t so logical, and really just exist so as to give a convenient name to a particular collection of patent documents.

The table below can be found in quite a few publications explaining how patent families are constructed.  I’ll add a bit of colour to it as we go to help explain the difference between the various types.

Patent families table 1

Simple

In a simple patent family all of the patent documents have exactly the same priority document (or documents), which means they all include basically the same inventive subject matter.

Essentially we’re looking at a nuclear family.  Mum and/or Dad are the priority documents, and their offspring are the patent documents.

Family 1 is a single parent family with one kid, while Family 2 is a two parent family with two kids, and so on.  Things are kept, well, simple and easy to understand.

Patent families table 2

While each patent document belongs to a single family, this table clearly shows that a priority document can belong to more than one family, so where I say above that a patent family covers an inventive subject matter, it’s not necessarily mutually exclusive with the subject matter of a second patent family.  For example, Family 4 has the elements of Priority P3, which must also form part of Family 3’s subject matter, but Family 3 also contains the elements of Priority P2, which is sufficient to differentiate it from Family 4 and to call it a separate patent family.

So, why don’t we define a patent family by a single priority document instead…

Complex

A complex patent family is generally defined as one where all patent documents are linked by at least one priority document.

The definition says ‘at least one’ but the table below doesn’t provide an example.  In the table above, Family 2 could also be considered to be a complex patent family as it has a pair of priority documents that are both shared by Patent documents 2 and 3.  It doesn’t include Patent documents 1 and 4 as they don’t share both priority documents.

Otherwise, this is a people family where the parents have separated.  You have Family 1 with Mum with three kids, and Family 2 with Dad, also with three kids, but where two of the kids are in common.  Depending on which family you are looking at, sometimes the kids in common are staying with Mum, and sometimes with Dad, and Dad’s just hanging out for that one weekend in a blue moon when he has no kids at home and he can go and play a round of golf.

Patent families table 3

I prefer the simple patent family approach to this one as, in complex families, a single patent document can belong to more than one family.  The simple family allows for the concept of patent equivalents.  As the priority document and subject matter are the same, you can say that Patent document 2 is an equivalent of Patent document 3.  You can look at the claims of one and be certain that they will be substantially the same as the other.  It’s handy when one of the patent documents is not in English as you can read an equivalent that is.  You can’t say the same about Patent documents 1 and 2 in complex Family 1.

So, what’s the solution…

Extended

In an extended patent family all patent documents have at least one priority document in common with at least one other family member.  An extended patent family is the marriage between a simple patent family and a complex patent family.

This can lead, in some instances, to extraordinarily large patent families where the family members are in a similar technical area, but with potentially a larger diversity because two family members with different priorities may cover different inventions.

Now you have Mum, your stepdad, Dad, Dad’s new girlfriend, half brothers and sisters, cousins, second cousins once removed, aunts, and mad Uncle Bob, all of whom may live in different cities or countries, perhaps never having had met except for that one time when your grandmother died, and you wouldn’t know them if you passed them in the street.

Patent families table 4

An extended patent family does provide the whole picture by putting everything you need to know in one place.  From there you can tease out a number of simple patent families (or complex ones if that’s your thing), or report the family as a whole.  It really depends on the question you are looking to answer.

Technical

This is perhaps the most artificial of all the patent families.  It draws together patent documents that are not related by a common priority, but is determined intellectually, i.e. by sitting down and using your necktop computer.  Patent documents in technical families will sometimes have priority documents in common, but others will have same inventor(s), and the same or similar title, subject matter and drawings, and so should be included for a sense of completeness.

Patent documents can become separated from what would have been their simple patent family as a result of missing a convention filing or divisional applications not being connected properly with their parent application.

This has to be Kevin from Home Alone.  Mom and Dad (Inventors 1 & 2) have applied for “Christmas Vacation” in the United States but have forgotten one of their patent documents when it came to flying out to the “Paris Convention”.

Patent families table 5

National

A national patent family consists of any patent applications from a single country having at least one priority in common, so for example, in addition to the original application, patents of addition, divisional children, and continuations.

Domestic

A domestic patent family relates to subsequent publications of same application, i.e. with same number but with different kind codes. For example the published application (A1) and the granted patent (B1).

Where can you find patent family data?

In an automated world, patent family information has to be constructed from priority data, which is why the technical family above has to be constructed manually.  It also goes some way to explaining why some members can get separated from their patent family as priority data isn’t particularly standardised.  Even if you apply a reasonable standard, a missing or extra zero somewhere can throw the system out, but that’s up to people like me to notice and correct.

The best free aggregating sources are the European Patent Office’s INPADOC database available via Espacenet, and to a large degree, WIPO’s PatentScope.  Google Patents should also provide a reasonable patent family.

There are other free patent information databases, like Depatis and the USPTO, among many others, that you can use to construct your own patent family if you are so inclined, but that level of enthusiasm is best reserved for looking for any outliers in countries not usually covered by the aggregating sources.

The other sources are commercial patent databases such as PatBase or Derwent Innovation, among a few others, but of course you will need to pay for the privilege.  Commercial patent database providers define patent families for their own purposes, whether it’s to differentiate themselves from their competitors, or it’s just easier to do from a technical viewpoint, but they are always mixtures of the types described above, and sometimes you have the option of choosing your family, unlike the real world.

Authored by Frazer McLennan and Charles Tansey, PhD

It’s time to talk of mice and McCaw. While that Richie won’t be playing in 2019 edition of the Rugby World Cup soon to be held in Japan, it is time to wonder which ball the new Richie (Mo’unga) will be kicking off with in the final on November 2.

This will be the seventh rugby world cup for which Gilbert have supplied the official match ball, and they continue to make changes to improve handling and aerodynamics. Gilbert have been producing footballs since 1823, and it is said that the ball picked up by William Webb Ellis all those years ago was a Gilbert.

While Adidas have sought to improve their world cup soccer balls by reducing the number of seams, getting down now to a six-piece ball, rugby balls have been settled in their four-piece configuration for many decades. It’s even defined as such within the Laws of Rugby.

So, where then have the changes been made?

After problems with the aerodynamics of the ball used in the 2003 tournament, the shape of the ‘pimples’ on the surface of the ball were changed from round to star shaped to improve handling and kickability for the 2007 tournament. Remarkably, Gilbert (and their new owners, Grays International) don’t seek protection for very much of their innovation, but in this case they did, which was published as WO2006/061608.

The next development was for the 2011 tournament where a new valve was produced, which distributed weight along the seams of the ball to improve rotational stability and accuracy.

Both these features were retained for the 2015 world cup ball, and most of the improvement appears to have been in the polymers and laminations of the synthetic cover material.

Moving forward to the latest ball to be used in 2019, Gilbert have made further improvements to the pimples, making them ‘dual height’, and altering their distribution across the surface. This needed to be done without increasing the actual height of the pimples as it would have affected the aerodynamics, but as there doesn’t appear to be any patent protection and hence publication of the details, all I can say is they claim to have produced a ball with the largest total surface area of any international match ball.

These changes seem to be getting more and more infinitesimal and highly technical, which someone has suggested is creating a rugby ball that is close to perfection, so it will be interesting what Gilbert come up with as we approach 2023.

Authored by Frazer McLennan and Charles Tansey, PhD

IP Australia have just released the new Australian Design Search into the wild, replacing the (now) old Australian Designs Data Searching system, or ADDS.

It’s a vast improvement over the old system, although if you’re familiar with IP Australia’s efforts over the last few years you’ll see a lot in common with the Australian Trade Mark Search.  None of the glitchy bits or unsearchable fields of the old system have been carried over, which will be a relief for those of you who search designs regularly.

The link above will take you to the Quick Search.  It has a limited range of search options, most of which are non-technical; a name or a number.  You can also search images from here but I’ll go into that later.  If you’re not sure what to do, there is a range of colourful help tabs relating to each of the options below the searching field, otherwise try the Help link at the bottom of the search page.

Here’s the Quick Search page.

quick search page

The Advanced Search is exactly what it says.  You can now search multiple search options including images, numbers, keywords, statuses, dates and classification codes.  If you enter data into more than one field it treats the search as if you had an AND between the two fields.

Here’s the Advanced Search page.  You can open this page using the link towards the top right of the page.

design numbers

Many of the fields are similar to the old ADDS search, but are easier to use.  I’ll focus here on some that are different.

The major changes in what you can now search are the addition of status searching, and being able to search the text of the Statement of Newness and Distinctiveness, or the SOND.

Status searching is important to have when you want to limit your search to relevant designs.  I’m simplifying things, but for instance a freedom to operate search is generally limited to active statuses, i.e., pending or registered designs, or you may be interested in whether a registered design is under examination so that you can anticipate it being certified.  The point is, you now have options that you never had before.

Being able to search the SOND is also important.  I’m not saying they are always brilliant works of literature as they often just refer you to the images, but occasionally they contain relevant keywords not found in the product name, allowing you to locate that hidden gem that has been inaccessible in past searches.

Another major change is being able to look up classification codes, and enter them directly into the search page.

The symbol to the right of the classification codes text field, as shown below, opens up the Australian Designs Classification Codes popup.

classification codes

If you’re not familiar with the designs classification, you can search for a class in the text field at the top of the popup.  It looks for words appearing in the classification descriptions so be aware that you may need to try a range of keywords to find what you want.

design classification codes

Otherwise you can click on the text to open up the next level of classification, and in some cases a third level, and select the classes you want by clicking on the plus symbol.  You can select multiple classes as well.

The last new search option is image searching.  It’s an interesting exercise to search for an image, and I’m sure further refinement will happen, but for now you should treat an image search as supplementary to a search of classes or keywords.  It’s simple enough to conduct an image search.  Clicking on the Select Images link on the right hand side of the page allows you to choose an image file from your computer.

select images

Once that’s open you can crop it to any part of the image you wish to search for, before conducting the search.  I think best results are obtained from an image that is a drawing on a white background, but try it for yourself and give feedback to IP Australia about how it might be improved.

Once you’ve conducted your search there are a number of ways you can view the results.  The default grid view is customisable to show between two and five images across the screen.  Mousing over each design provides basic details, and clicking through reveals more detail including the entire gallery of representations for that design.  You can also choose a list view with one line per design.

From your search results, or from My List once you’ve selected a few designs that are relevant, you can export your results to Excel, or produce a pdf search report that outlines the searches you conducted, the relevant designs you selected, and the details of those selected designs.  The Excel spreadsheet is good if you like a lot of detail, including a thumbnail image, and want to customise a report, and the pdf provides a nice summary of your efforts for distribution purposes to management or investors for example.

IP Australia have done a nice job on the new Australian Design Search, and this has been done by consulting widely with users of ADDS and other interested parties to get the best possible outcome.  I say give it a go and conduct some design searching today.  You never know what you might find.

Authored by Frazer McLennan and Charles Tansey, PhD

On May 1, Japan entered a new era, known as Reiwa, following the abdication of Emperor Akihito, and, consequently, ending the Heisei era.  You may be asking, “What does this have to do with Japanese patent numbers?”, and these days the answer is “not much”, but that hasn’t always been the case.

Prior to 2000, the Japanese patent numbering system used the Emperor year (the number of years since the current Emperor ascended the Chrysanthemum Throne) as part of its numbering system to indicate the year in which various events occurred.  The main events that affect those of us searching the Japanese patent database are the publication of patent or utility applications, and publication of the examined patent or utility applications.

The numbering format for these four publications is Yyy-nnnnnn, where Y refers to the Emperor era, yy refers to the Emperor year, and nnnnnn is a six-digit number.

Emperor eras relevant to us are Showa which ranges from 1926 to 1989, and Heisei which ranges from 1989 to 2019, although it is the period from 1989 to 2000 that is most of interest here.

Now things start getting a little more complicated, but stick with me.  The numbering of years within each era restarts with each era, so 1926 is year one of the Showa era, or S01, and so on, up to 1989, which is S64.  1989 is also the first year of the Heisei era, so it’s also known as H01.  2000 is therefore H12, and H30 has just concluded.

One more thing, the six-digit number, nnnnnn, restarts each year at 000001, and the number for the unexamined application is different to the number for the equivalent examined application.  What this means is, for a random number such as H01-066151, this could be the publication number for the unexamined or the examined application.

That’s generally fine within the Japanese system as it only takes one or two searches to find what you’re looking for, but here in the West we removed the Emperor era symbol, and we also took to removing, and I’m not sure it was consistent, some of the leading zeros within both the Emperor year, and the six-digit number.  So the number above became JP 1066151.  Is that H01-066151 or H10-066151? Is it examined or unexamined? Is it a clamp for a sofa or an antidepressant or even a piece of radio telephone equipment?  Thankfully the European Patent Office realised there was a level of confusion, and now insist on the Emperor era as part of the number, although the leading zeros thing is still an issue.  Many other sources of Japanese patent information haven’t made this leap.

After 2000, the numbering system moved to yyyy-nnnnnn, where yyyy is the Western year, and the application keeps this number until grant, regardless of where it is in the application process.  It’s a much more straightforward system.

I also haven’t mentioned anything about granted patent numbers.  They are numbered consecutively, regardless of a change in year or Emperor, although there have been a couple of jumps forward to a round number when the law changes.  The last was to JP 2 500 000 in 1996 for patents.

What you need then, in order to locate older Japanese publications, is a sense of what the Emperor era is, a kind code such as A or U for an unexamined application or B or Y for an examined application, and an applicant name or an idea of the subject matter to help pinpoint the right one.

If not, there’s always this for afterwards.

Authored by Frazer McLennan and Charles Tansey, PhD

A new database has been launched with the principal purpose of providing easily accessible and understandable information about the patent status of a specific medicine in a particular country, by identifying key patents related to the medicine worldwide.

This database is meant to have all this information in a single place, and to complement other patent databases including commercial products, national patent offices and WIPO’s PatentScope.

It is called Pat-INFORMED, or more fully, the Patent Information Initiative for Medicines.

Establishing the patent status of medicines can be a difficult task.  The Orange Book has been providing the relevant information for many years but only contains US patent numbers. Pat‑INFORMED aims to provide similar information on a worldwide basis.

It currently contains information on 160 products in six therapeutic areas plus additional products on the World Health Organization Essential Medicines List. There are over 14,000 patents from over 600 patent families at this time.

The six therapeutic areas are HIV/ AIDS, cardiovascular disease, diabetes, hepatitis C, oncology and respiratory conditions.

Pat-INFORMED is a collaboration between WIPOIFPMA and 20 pharmaceutical companies, namely Abbvie, Astellas, Bristol-Myers Squibb, Daiichi-Sankyo, Eisai, Gilead Sciences, GSK, Ipsen, Johnson & Johnson, Leo Pharma, Lilly, Merck, MSD, Novartis, Novo Nordisk, Pfizer, Roche, Shionogi, Takeda and UCB.

This is undoubtedly a valuable addition to the Orange Book but as a patent information professional with many years of searching pharmaceuticals notched on my belt, it is clear that Pat-INFORMED is not without its shortcomings.

It is limited to granted patents. Pending applications are not listed, for the reason that pending applications can be refused, amended or abandoned, where they may no longer be applicable to a pharmaceutical product. To be fair the Orange Book is the same. These databases are to start you off in the right direction, but patents are not listed if they are solely directed to metabolites, intermediates, packaging or methods of manufacture. The problem is there are many more patent applications, and granted patents for that matter, that will be relevant to the drug you are interested in, and these are not discoverable here.

Some shortcomings are listed in Pat-INFORMED’s terms and conditions of use.

Any participant who lists patents or provides information or other services does so on a purely voluntary basis. This can be contrasted with the Orange Book, where providing patent information is mandatory. Pat-INFORMED is already limited to just twenty participants and their patents. Many drug names do not appear. Hopefully this picks up and we see more pharmaceutical companies adding information.

The next issue is twofold. The terms state that “Once fully populated, information in the database will be updated at least annually”. Firstly, it points to the fact that the database is essentially incomplete, or a work in progress. There’s no indication as to when it will be complete. Secondly, it won’t be updated very often, which can lead to out of date information being relied upon. Commercial patent database providers and many national patent offices update their information daily, or at the very worst, weekly.

There are some challenges to searching for pharmaceuticals, and this database touches on one of those in particular. Pat-INFORMED relies on the International Nonproprietary Name (INN) or ‘generic’ name of the drug as the basis of the search. This is deliberate. It is relying upon participating pharmaceutical companies to provide patent information that might otherwise be undiscoverable by someone searching for an INN in PatentScope, for example.

Generic or brand names are not likely to appear in patent specifications early in the lifecycle of a particular drug, typically because the INN is approved some years after the first, or ‘molecule’ patent.

The language of the INNs and medical sector is different to the language of patents, which describe drugs in different ways or with different names.

It is therefore difficult to identify relevant patent applications filed before the INN is approved through a search using the common, generic name.

A variety of sources of information is required to bridge the information gap between the molecule patent of a pharmaceutical and the recommendation of its INN.

Some of the pieces of information are non patent, such as the chemical name, the manufacturer’s code name and the drug type.

For example, the drug Brexpiprazole, approved in the United States in 2015, was originally filed as a patent application in 2006 and obtained its recommended INN in 2012,        and is known by its chemical name (7-{4-[4-(1-benzothiophen-4-yl)piperazin-1-yl]butoxy}quinolin-2(1H)-one), its manufacturer’s code (OPC-34712) and the drug type (antipsychotic/antischizophrenic).

Two of these pieces of information should be enough to identify the molecule patent as US7888362 as its chemical name appears in claim 7 and the drug type appears in the preamble. The third piece of information has been used in eleven patent families to identify the drug as being of interest, with some prior to the INN being proposed.

Other sources of information are relevant to a patent search. These include the IPC (International Patent Classification), or more recently, the CPC (Cooperative Patent Classification), and citation searching.

The patent classes that a drug such as Brexpiprazole is placed into are very straightforward. The compound class (C07D409) focuses on the benzothiophene ring and what is attached to it; the active ingredient class (A61K31) considers the piperazine ring as the primary ring; and the indications class (A61P25) relates to disorders of the nervous system and specifically mentions antipsychotics and schizophrenia. It is unlikely that a patent application relating to Brexpiprazole will not be placed in the correct patent class.

There are also other patent classes that may be of interest that relate to the pharmaceutical form or the inactive ingredients making up the form.

There are a number of searching techniques available that use these patent classes either alone, together or in combination with other pieces of information such as keywords and relevant parties (especially the manufacturer) that enable a searcher to locate relevant patent families filed between the filing date of the molecule patent and a time when the INN is in common use.

It is also worth remembering just because there is an INN, and it is in common use, that patent applicants will use it. There is no requirement to do so. For instance, use of the generic name ‘Brexpiprazole’ peaks in 2016, some four years after the INN was approved. Some advantage can be sought by not using the INN and instead referring to the chemical name, the manufacturer’s code or sometimes “the compound of Formula I” in order to disguise the application to avoid early discovery of a competitor’s intentions.

A further method of discovering patent applications filed before the INN is approved is citation searching. A patent application filed today may cite some related, earlier filed patents in the preamble, so while those earlier patents may not mention the INN, the later patents make the link.

Here’s a line from the preamble of a patent application filed in 2016, clearly referencing an application that could not have mentioned the INN.

WO 2006/112464 A1 discloses brexpiprazole and its use for the treatment of schizophrenia…

Citations can not only be found in the preamble but also on the front page and in the search report.

Pat-INFORMED has the potential to reduce the amount of searching required when establishing the patent position around specific medicines. However, it should be regarded as a first step for the global health community and pharmaceutical procurement agencies, rather than a complete source of information, particularly given the consequences of missing a critical pharmaceutical patent.

Authored by Frazer McLennan and Charles Tansey, PhD

In most jurisdictions, it is possible simply to abandon a patent or application by not paying the required maintenance fees, which are generally due annually. If the fee is not paid by the due date, the case is deemed to be abandoned and the matter is closed.

However, the Indonesian Directorate General of Intellectual Property (DGIP) over the last few years has taken a rather unique view of maintenance fees, regarding them as a debt to be settled up until such time as the case has been actively abandoned by the patent owner.  This is particularly significant because under Indonesian patent law, all the accumulated back-annuities become due at the time of grant.

To illustrate the situation, if an Indonesian patent grants after 10 years, the Indonesian patent office considers that the applicant has incurred a debt of 10 years renewal fees that must be paid.   By the time a case has progressed to grant stage, there is simply no way to avoid that debt.  Active abandonment of that case (to prevent further debt) can only take place if the back fees are paid.

The unusually long grace period of three years for payment of annuities in Indonesia also means that even if the applicant decides to passively abandon the case at grant by non-payment of the back fees, an annuity debt will continue to accumulate for an additional three years.

The DGIP attempted to recover this asserted debt from patent owners in 2015, prior to a change in the law, although, unsurprisingly, it appears that this approach did not meet with a great deal of success.

The DGIP has now taken the rather extreme position that they will not accept any new patent applications from patent owners who have incurred such an asserted debt.  Any such debts need to be settled by 17 August 2019 according to the Indonesian patent office.

The situation applies for any unpaid annuities up until 26 August 2016, when the law on annuities was changed to aligned with accepted global practice.

This situation could be of importance to parties who may have an earlier abandoned Indonesian case but are looking to file there in the future.  If you have any questions, please get in touch with your regular contact at Shelston IP, or contact charlestansey@shelstonip.com.

Authored by Charles Tansey, PhD

It’s that time of the year again: it’s National Ride2Work Day (Wednesday 17 October 2018). With this in mind, I thought I’d take the opportunity to show my appreciation for my favourite way to travel to work: the Brompton folding bicycle. I take a brief look at the bike and the role of intellectual property in its success.

What is a Brompton bike?

The Brompton folding bicycle was invented by Cambridge University graduate Andrew Ritchie in 1975 and named after the Brompton Oratory in South Kensington, London, which his flat overlooked. It folds conveniently into a compact package and, despite its small wheel size, displays surprising acceleration and nimble handling. Designed for commuters, this iconic bike is popular the world over.

Intellectual property protection

Patents

Patents provide protection for inventions which are new, inventive and useful. The original Brompton patent (EP 0 026 800 B1) was filed in 1979. This patent has long expired, so how is intellectual property contributing the continuing success of the Brompton?

Know how

These days, whilst the manufacturing of certain parts or processes is outsourced, the core production work is still carried out at Brompton’s UK factory. The manufacturing is complex and the company designs all of its own tooling. Keeping this know how within the company makes the bike difficult to copy and helps to keep the company a step ahead of potential competitors.

Designs

Brompton Bicycle Limited has a collection of registered designs for various bike parts, such as brakes and grips, registered in the UK and Europe. These registered designs protect how the parts look.

Trade marks

The company also owns several internationally registered trade marks, including the word mark “Brompton” and an instantly recognizable picture mark consisting of 3 bikes, stylized, in unfolded, partially folded and fully folded configurations.

Each trade mark acts as a “badge of origin”, identifying the source of Brompton bikes, parts and accessories and related services.

Marketing

Interestingly, Brompton Bicycle Limited does not advertise. Its marketing philosophy is to produce a great product that its customers love and to let its happy customers spread the word. And it works … arguably this article is one example!

Authored by Serena White, DPhil and Charles Tansey, PhD

With still no decision on whether or not a legal challenge at the German Constitutional Court is admissible, it is becoming increasingly uncertain if the new legislation for the Unified Patent Court (UPC) and the unitary patent will come into force before the UK’s departure from the EU. This article briefly outlines what the unitary patent and Unified Patent Court are, summarises the current issues and explains the significance of the timing of German ratification in the context of “Brexit day”.

What is the Unitary Patent?

Currently, when a European patent application is granted, it essentially becomes a “bundle” of individual national patents; one in each state in which it is validated.  A unitary patent will be a single, indivisible right and will cover most member states of the European Patent Convention (EPC).  After the relevant legislation comes into force, it will be possible to obtain a so-called unitary patent by requesting unitary effect within one month of grant of a European patent.

What is the Unified Patent Court?

The UPC will be a new international court which will have jurisdiction over all unitary patents.  It will also have jurisdiction over nationally validated European patents in states covered by the UPC, provided that patentees have not elected to opt out their patents from the UPC’s jurisdiction before any legal proceedings commence.

When will the UPC and the Unitary Patent arrive?

In order for the legislation to come into force, ratification of the UPC Agreement by Germany is required.  German ratification will mean that the requirement for ratification by at least thirteen EU states, including the three EU member states with the largest number of patents, is fulfilled.  The new legislation is set to come into force on the first day of the fourth month thereafter.

What is the German legal challenge about?

A legal challenge filed in Germany by Dr. Ingve Stjerna (a German attorney) essentially argues that the UPC Agreement is incompatible with German law.

The first step is for the panel of judges to decide whether or not the complaint is admissible.  A decision that the complaint is inadmissible would pave the way for Germany’s ratification.  Alternatively, if the complaint is determined to be admissible, it will then need to be decided if the arguments have merit.  This could involve referral of questions to the Court of Justice of the European Union (CJEU).

Why is the timing of resolution of the German challenge so important?

Many opinions suggest that the challenge is unlikely to be ultimately unsuccessful.  Nonetheless, the resulting delay could have serious ramifications for the UK’s participation in the UPC (and the unitary patent), bearing in mind the timetable for Brexit.

Working back from 29 March 2019 (“Brexit day”), in order for the legislation to come into force before the UK’s departure from the EU, Germany would need to ratify before the end of November 2018.

However, even if the legal challenge is resolved in time, Germany is not obligated to ratify immediately and may decide to wait in view of the current absence of agreement on any Brexit deal.

Brexit

As noted in our earlier article “Patent news from Europe: The Unitary Patent and the Unified Patent Court move a step closer”, the UK ratified the UPC Agreement in April 2018.  The UK’s ratification indicates its desire to be part of the unitary patent package in spite of Brexit.  The UK Government’s White Paper of 12 July 2018, about the future relationship between the UK and the EU, also supports this position.  However, at the end of August 2018, intellectual property was described as an “unresolved issue” in the context of Brexit negotiations.

If the UPC Agreement comes into force before the UK’s expected withdrawal from the EU, opinions suggest that the UK may be able to stay in the UPC.  However, the UK’s continued participation would require navigation of various legal and political obstacles.  Currently it is uncertain whether the UK would continue to be a part of the unitary patent, particularly because the unitary patent is provided for by EU Regulations.

In view of the delay caused by the German challenge, it seems increasingly likely that the UPC Agreement will not come into force before the UK’s expected withdrawal from the EU on 29 March 2019.  In this circumstance, the UPC might proceed without the UK.  This is because the wording of Article 89 of the UPC Agreement refers to the three EU member states with the largest number of patents.  With the UK becoming a non-EU member state, this wording would essentially enable the UK to be replaced by Italy, which would become the EU member state having the third largest number of European patents in force after Germany and France.  There is also the question of whether the UK could be a part of the unitary patent in this situation.

In short, the UK’s participation in the UPC and the unitary patent will be subject to negotiation.

What if the German challenge is ultimately successful?

Although many expect the challenge to fail, if it is successful, the UPC will certainly be in troubled waters because Article 89 of the Agreement requires ratification by the three EU member states with the largest number of patents in force.  Although this criterion does not mention any states by name, in practical terms it requires Germany’s ratification because Germany is the EU member state with the largest number of patents.  Amendment of the legislation would be required in order circumvent this problem, but the question is whether the appetite to continue with the UPC without Germany would still exist.

Need advice?

These are certainly interesting times.  We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC and would be happy to discuss what these changes mean for you.  Watch this space for further updates and information.

Authored by Serena White, DPhil and Charles Tansey, PhD

In a previous article, we outlined the various stages of innovation – from conception of an innovative idea, through the research and development (R&D) stage, followed by commercialisation, and then marketing of innovative products or services. We have also outlined what IP considerations are most relevant at each stage. The purpose of this article is to outline an example (which is based on a real-world example) that may assist in illustrating the types of IP considerations that were made prior to, and during the course of, research intended to lead to the development of a commercial product.

Commercial and IP considerations during R&D

In this particular example, an academic had been contracted by a commercial partner to conduct R&D to prepare a fire-retardant coating composition for a new market opportunity that had been identified. Initially, a “landscape” prior art review was undertaken (see our article here for further information on prior art searching). In reviewing the relevant prior art, it became apparent that there were two options, namely to either:

  1. start with a known fire-retardant coating composition and modify it to improve fire-retardancy; or
  2. take a known “standard” coating composition and modify it to introduce fire-retardancy.

Because there was some time pressure and a limited budget, it was unlikely that both options could be pursued simultaneously and naturally, therefore, the question arose as to which option was preferable.

In this case, the commercial partner’s attorneys were brought into the project from an early stage and advised that it was important to consider the IP position before starting and during research. In particular, it was important to consider:

  • the potential for patentability;
  • the potential for infringement; and
  • how to maximise the commercial value of, or add value to, the IP produced by the research at each stage of the R&D.

It is useful to explore these factors for both options a.) and b.).

Option a.)

In the case of the first option (i.e., modifying an existing fire-retardant coating composition to improve its fire-retardancy), assuming that the research was successful, patent claims could be directed to the improved fire-retardant coating composition. This of course assumes that the improved composition is new (i.e. no-one had previously modified the existing fire-retardant coating composition in the same way) and the modifications are arguably inventive. If the inventiveness was questionable, for example if routine modifications were made that had an expected outcome, it may be that the only IP protection which was possible was the “use”-type claims (especially if it was a new application), which would be a relatively narrow scope of protection, although use-type claims may still be commercially valuable.

The main issue that may arise is that the existing fire-retardant coating composition could “belong” to a third-party. Issues of infringement and whether there was freedom to operate could compromise the commerciality of the project. This is an important factor to consider prior to commencing the research, as significant time and money can be wasted if no license were to be given to the existing coating composition, or if it were not possible to buy the existing coating composition from that third party, in which case more time and effort would be required to work around the third-party rights. As third-party IP rights may act as “roadblocks” to commercialisation of a product or service, and as significant resources are usually required to commercialise new products or services, it is important to understand the risks of infringement before going to market. In this case, it would be preferable to start with an existing fire-retardant coating composition that was more than 20 years old, if possible.

Option b.)

In the case of the second option (i.e., whereby a known “standard” coating composition is modified to introduce fire-retardancy), assuming that the research is successful it is likely that the new fire-retardant coating is patentable (i.e., meets the requirements of novelty and inventiveness), including the use of it for the commercial purposes that had been identified in the marketplace. Claims to the new coating composition would comprise broad protection. Also, infringement issues would be less likely, as presumably the starting “standard” coating would be at least 20 years old, and therefore any IP rights relating to the starting coating composition owned by a third party would have expired.

The downside with option b.), however, is that a greater research effort is likely to be required to develop the new coating composition, meaning a longer time to market. This is in contrast with option a.), whereby a relatively lower research effort is expected as the existing fire-retardant coating composition is already known, and therefore the innovation could be expected on the market relatively sooner. Of course, this assumes that it is technically easier to improve fire-retardancy than to introduce it, and this assumption is one of the main technical factors which would determine the option to pursue.

The R&D process

During the research, it was important to define the specific steps that would be undertaken, and to review every step that may infringe third party patent rights, and to design the project around these constraints or seek licenses from the technology owners. Further prior art searching was also conducted as the research matured. Agreements covering ownership of the resulting IP were established, and various innovations which were not discernable in the final product were protected via trade secret.

The competition

During the course of the research and subsequent commercialisation it was also important to consider what the competition may do, as a competitive alternative can reduce the value of the IP resulting from the research. Accordingly, it can be important to consider understanding other technologies that work, and those that don’t work. From a strategic perspective, it may be appropriate to consider publishing other methods that work (i.e., a so-called “defensive publication”) since there will be less chance a competitor will compete using published technologies if they cannot obtain a monopoly on the technology. It may also be useful to keep trade secrets around what does not work, so that others expend resources and time investigating the negative results, keeping them out of the market for longer.

The “best” option

Returning to the question of which option was best, clearly there are a number of factors to consider, including those that are:

  • technical – which course of scientific research to pursue, for example whether it is technically easier to improve fire-retardancy than to introduce it;
  • IP-related – the scope of patent protection which is likely to be available and the risks of infringing third party rights;
  • commercial – such as the likely speed of bringing the innovation to market, and
  • practical – such as managing the overall cost of the project.

Additional factors to consider included whether the product would be exported to, or manufactured in other countries, in which case those IP-related factors must also be considered for those other jurisdictions.

Closing comments

It should be clear from this example that it is preferable to think about IP before one starts a course of research, and that there is a balance of science, law, and commercial considerations during the innovation process. Whilst a specific example has been used in this article, it should be clear that this could be replaced with another technical solution, and what is more important is the methodology that was followed rather than the specifics of this particular example.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

Authored by Charles Tansey, PhD