5 min read

How do you make a cup of tea?  Pot or cup…or mug? Loose leaves or a teabag?  Milk first or last?  Don’t worry, this article is not about any of that.

You take a cup (or a mug), grab a teabag, and carefully place the teabag bit inside the cup, and then dangle the tag bit over the rim of the cup.  So far, so good.

The kettle boils, and you lift it to pour water into the cup.  The water hits the teabag, and the velocity of the water imparts sufficient momentum to the teabag such that the string and tag are pulled into the cup, which is now half filled with boiling hot water.  You resort to fishing around for the tag, scalding your fingers (because it is always your fingers in that mad rush), and emitting a few words that will shame your family for generations.

It’s an age old problem, but what have people done to solve it?

I conducted a very limited search* for teabag-related patents in PatBase, and culled anything not related to this topic.  I finished with a set of about 50 patent families, from which I have determined these technology groups.

ObjectTechnologyExample
Cup or potCleats for tying off




Grooves or incisions

NL1002810
AU2011101068
CN105686558


KR200404017
KR20080010469
CN208439552
TagSticky tags




Big tags


Grooves or incisions



Magnets
US4153153
US20060045935
WO2016209316


US4875574


KR101022889
CN201929560
CN210708847

CN204324057
StringSemi rigidGB304115
OtherSeparate devices for holding the teabagUS5129524
DE10308740
DE202004018654
KR20110037156
KR101352223
US9902557
CN209142847

As with many things in life, it’s complicated.  Some of these technologies overlap, and I’ve had to make a decision as to which technology group some fall into.

Starting with technologies for cleats for tying off the string, I’ll focus on the more permanent types, as the last group, ‘Other’, is directed more to temporary or removable devices.

Here are three examples.  The first is a cleat head that can be attached to a cup or pot in any position with an adhesive or by suction, the second is a cleat head specifically for a handle, while the third is part of the handle design.

The next group, where there are grooves or incisions in the cup, appears to relate to paper cups, although there would be nothing to stop it being applied to a ceramic cup.  The three examples below range from a single incision in the rim of the cup, to a more sophisticated shaped groove combined with a cleat arrangement at the base, to a slit in the side of the cup where the tag can be slipped into and secured.

Moving to what is arguably the most popular method of solving the problem, we get to technologies involving sticky tags.  The idea is simple.  The tag has an adhesive or gum on one side, sometimes with a peelable cover, that allows the user to temporarily attach the tag to the outside of the cup, and provide sufficient counterforce to the poured water imparting momentum to the teabag.

It’s pretty self-explanatory but here are a couple of examples.

There is one notable example that is just that little bit different to the rest of this group.  It also falls into the first group to some degree as part of this solution is a permanent addition to the cup or pot, and that’s because it uses Velcro, with the hooks attached to the cup or pot and the loops attached to the tag.  It does the job it is designed to do but is perhaps not the most environmental solution in this group.  Here are a couple of images from the specification.

The next group also utilises a simple solution.  Why not just make the tag so big that there is no way it could ever fall into the cup?  Here it is, although admittedly it is part of a bigger idea to do with packaging and squeezing the wet teabag.

In addition to grooves and incisions in cups, we also find them in tags.  There are two types:  those with an incision within which the string can be secured after it has been wrapped around the handle, and those that have a larger groove that is wide enough to sit on the rim of the cup as a form of anchor.

The first example shown here is the closest to my preferred method where I slip the tag under the string to form a loose knot.

The last group in tag technology is the use of a pair of magnets, with one on the tag and the other on the teabag.  The idea is that the two magnets attract each other through the wall of the cup.  Again, this is not an environmentally sound solution.

The third part of the modern teabag triumvirate is the string, and this has not been forgotten in a solution to this problem.  The example here is also the earliest I have seen in patent literature, and dates to 1928.

I’m calling it semi-rigid string but it is an aluminium wire with a rudimentary teabag at one end and a tag at the other.  The wire is rigid enough to be able to swirl the bag in the hot water, but also malleable enough to bend to form a hook to hang over the rim of the cup.

The very last technology group I have found is a bit of a catch-all class, but these devices are all removable or independent of the whole cup-teabag relationship, and some of them are a little wacky.

If you have an interest in making a bucket of tea, or in craning your teabag into the cup, then these two are for you.

Next are a few devices that hang over the rim of the cup in some way.  Most are reusable but the third image shows a folded piece of card, and so would be recyclable after its usefulness has ended.

Lastly, there is this.

Not only does it hold the teabag and prevent the tag falling into the cup, but you can also wind it up and set it loose around the rim of your cup and swirl the teabag in the hot water at the same time.

There is one further teabag I found.  It doesn’t fit into the theme of this article but it demands to be mentioned.  It looks simple enough, and this image gives it no justice.

The innovation here relates to making the tag fluorescent, and the reasoning behind it is that a person might want to make a cup of tea at night, and in an effort to save energy, they don’t need to turn on the light to find a teabag.  No mention is made of the energy required to heat the water for said cup of tea, nor of a fluorescent teapot.

That ends our journey through the world of teabags.  I hope you have found a useful way of preventing wet teabag tags and scalded fingers.

* (TAC=(teabag*, ((tea, coffee) w1 bag*)) OR IC=(b65d85/808, b65d85/812)) AND TAC=(cup, mug, tumbler) AND TAC=(label, tag, string)

Authored by Frazer McLennan and Paul Harrison

3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here, and the second article on patent expiries can be found here.

This third, and final, instalment takes a closer look at how to read kind codes.

Kind Codes

If you’ve ever looked at a patent specification you’ve seen a kind code.  They are the As, Bs and Cs, usually with a number, tacked on to the end of a patent number.

Kind codes have meaning.  They tell you what significant events have occurred in the lifecycle of a patent.  Those significant events range from being filed to grant to amendment, and can also tell you what type of application you are looking at.  In Part 2 of this series on patent expiries, we considered the shorter patent terms for utility model applications.  Kind codes will tell you if you have one.

In Australia, there are kind codes starting with A, B and C.  Standard applications such as convention completes or national phase entries get the kind code A1 with their first publication, and B1 when they are granted.  If they are amended post-grant, they get the kind code C1.  Corrections to bibliographic data get A8/B8/C8 kind codes when the corrected specification is published.

The utility model/innovation patent applications get A4 or B4, and even C4 if corrected during its short lifespan.

The United States has a set of similar looking kind codes but they don’t mean exactly the same things.  Published applications get A1, or A9 if corrected, but the granted patents get B1 if there was no A1 published (first published on 15 March 2001), and B2 if there is an A1 published.

Other United States kind codes include a C for a re-examined patent, and E for a re-issued patent.

Patent Cooperation Treaty, or PCT, applications don’t get granted so we generally just see a range of “A” kind codes.  There is A1 when the specification is published with a search report, A2 when it isn’t, and A3 when they do eventually publish the search report.

Other letters used often in kind codes are U or Y for utility model patents, and T for translations of foreign language specifications.  Sometimes, in the spirit of the Zeroth Law of Thermodynamics, where an extra, more fundamental law was determined after the other three laws, provisional applications are given an A0 kind code, because they are the initial application upon which the rest of the patent family arises.

Each country has its own set of kind codes, some with just a couple to indicate filing and grant, and many more with an extensive array, especially where they have utility model applications and working in a number of languages.  There are many lists available online, some for specific countries if that’s all you need, but this list from Clarivate is a nice summary of kind codes around the world.

To tie this series together, while you’re searching, you can use kind codes on the fly to see where a patent is up to, the patent expiry date to see if it could be alive, and the status to determine if it is truly dead or alive.

Authored by Frazer McLennan and Gareth Dixon, PhD

3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here.

This second instalment looks at patent expiries around the world.

Looping back to the article on statuses for a minute, patent term expiry dates are both theoretical and precise.  Precise in that a definitive end date for the maximum patent term can be calculated, but theoretical in that other events occur to prevent the patent reaching that date.  These events include non-payment of renewal fees (Ceased, Ended), and revocation of the grant of the patent (Revoked).

Patent Expiries

Let’s get United States patent expiries out of the way.  There are a couple of rules to follow, and I have covered those in an earlier article

There’s a transition date of 8 June 1995 where rules moved from the latter of 20 years from filing/17 years from issue to just 20 years from filing.  That date is over 25 years ago now, and almost all of those filed before it have now expired.  I say almost all because I can find a small number with an earliest effective filing date before June 1995 and an issue date after 2004 (because that’s 17 years ago), not to mention any submarine patents we will never know about until they are granted. 

These days most United States patents will expire 20 years after the earliest effective filing date, which is in line with the rest of the world.  That’s not taking into account any patent term adjustments which add days to the expiry date as a result of patent office delay, or any terminal disclaimer that limits the term of a patent to that of another patent.  The number of days of adjustment, and details of terminal disclaimers can be found in PAIR.

Article 33 of the WTO’s TRIPs Agreement states

“The term of protection available [for patents] shall not end before the expiration of a period of twenty years counted from the filing date.”

As such, patents around the world, including the United States, have 20 year patent terms, calculated from the filing date for convention applications, and the international filing date for PCT applications.

The calculation is easy.  A patent filed on 10 April 2017 expires on 10 April 2037.

There are a few exceptions.  Every rule has at least one.

Divisional applications or continuation applications, although physically filed on a later date, take the filing date of the original, or parent application.  Shown below is an example from Australia, for the application 2019210667.  It’s just one in a chain of divisionals stemming from the original application filed in 2007.  Although this application was filed in August 2019, the effective filing date is in September 2007, making the expiry date of this application 7 September 2027 and not 2 August 2039.

The other exception to patent expiries being less than 20 years is through applications such as Australia’s innovation patents or Chinese utility patents, where the application is subject to less scrutiny in exchange for a shorter patent term.  For innovation patents this is eight years, and for utility patents it is ten years.  WIPO helpfully provide a list of countries that have this model of patent filing, and more detail can be found here.

Those two examples cover shorter patent terms but what about patent terms that are longer than 20 years?

Some biologically active ingredients, such as for use in human and veterinary medicines, can take a long time to obtain regulatory approval and get to market, so it is possible to obtain an extension of the patent term for up to five years as compensation for the time lost.  These are generally known as supplementary protection certificates (SPCs) or patent term extensions (PTEs).  Not all countries allow for such extensions of the patent term, but those who do include countries through Europe, North America and Asia, as well as Australia.

So, in summary, patent expiries can easily be calculated, especially for anything filed so far this century, but take care with older United States patents, and check whether an patent is a utility model filing or is subject to a patent term extension, in order to determine the expiry date, and don’t forget to use this in combination with status information to determine if a patent is dead or alive.

In part 3 I’ll look at how to read and understand kind codes.

Authored by Frazer McLennan and Paul Harrison

4 min read

You’ve found a patent of interest but how do you know if it’s dead or alive, and if alive, when it expires, and what exactly do those kind codes indicate?

I’ll explore all these in a three part series of articles, starting with where to find status information and what it means.

Statuses

Some patent offices explicitly report the status of an application, while others make you dig a little deeper, and some make you work hard for that information.  Before we get to who’s who and what’s what, let’s look at what the language around statuses is.

At the most basic level a patent is dead or alive, but within those labels there are a number of ways to describe where in the patent lifecycle they are.  Statuses in both categories are split into pre-grant and post-grant.  Every patent office has its own language around statuses.  Here’s a selection.

Pre-grantPost-grant
AliveAccepted
Filed
Pending
Under examination
Under opposition
Unexamined
Certified
Granted
Issued
No opposition filed
Patented
Registered
Sealed
DeadAbandoned
Converted
Lapsed
Refused
Rejected
Void
Withdrawn
Ceased
Dead
Ended
Expired
Revoked

Although data aggregators such as commercial patent databases often have status data, the recognised place to go for accurate status information is the national register for the patent of interest.  In Australia that’s AusPat, and in New Zealand it’s IPONZ.  Other sources include PAIR (United States), the European Patent Register, KIPRIS (South Korea), J-Plat-Pat (Japan), and thanks to Brexit, Ipsum (United Kingdom) now has more relevance than it used to.  Of course the list of national registers is far too long to mention every one here, but you can find a list at the WIPO Patent Register Portal.

In some national registers all you need to do is search for a patent number (or any search) and the status will be provided as part of the search results or record view, such as AusPat below.

Others in this group include IPONZ, KIPRIS and Ipsum.

National registers in the next group don’t explicitly state the status of a patent, and usually require a single click, or maybe two, from the search results page through to the record view.  For example the search results page for J-Plat-Pat is shown below, and a click on ‘Details’ will take you to the information required.

Others in this group include In-PASS (India), PRV (Sweden) and the Canadian Patents Database.

The last group of national registers make you work harder to find the status of a patent.  I’m looking at the European Patent Register, and giving death stares to the United States’ PAIR in particular, and for different reasons.

First to the European Patent Register.  The initial view is straightforward as shown here.

The status ‘No opposition filed within time limit’ refers to the period after acceptance where an application can be opposed before grant, and in this case that time has expired and the patent has been granted.  Simple isn’t it?  Not quite.  Europe is a group of countries, and a number of these get designated so that the EP patent is applicable in each of them, so your country of interest has to be on that list, as shown below.  To find this list just scroll down the register page for this application.

Are we there yet?  Sorry, no.  We still need to scroll down the page a little further.  The list of designated countries is essentially an ambit claim, hedging that the patent is going to make it big.  They usually don’t so many of the designated states find themselves on the ‘lapsed’ list, shown here in part.

Now you need to conduct a reverse search to see if the country of interest is on the list or not, made all the harder by having the list in date order, not alphabetical order.  If the country of interest is here, the patent is dead, if not, possibly still alive.  At first glance I can see Germany, France, Great Britain and Ireland are still potentially alive.  A trip to their respective registers (Depatis, INPI, Ipsum and IPOI) is necessary to confirm that.

Now to PAIR.  Many national registers will change the status of a patent when a significant event such as ceasing through non-payment of renewal fees, or expiry after the full term of the patent, but the USPTO do not. Take the example shown below where the initial view in PAIR indicates it is a ‘Patented Case’.

The image doesn’t show the application filing date or the earliest effective filing date but it is 3 May 1999 for both.  If you’ve read my previous article on calculating United States patent expiries you’ll know the expiry date is 3 May 2019.  That’s a date in the past so this patent has expired, but PAIR does not say so.  You have to do all the work here.

There’s always the possibility of a patent term adjustment of more than two years, but with an issue date just over three years after filing, that’s unlikely, so you can assume it is well and truly dead.

This example is for a patent around the end of its expected life, but for others, in addition to calculating the expected expiry date, you may need to check the patent maintenance fees to see if they are up to date.  You can access that information through PAIR.

That’s a brief rundown on statuses, where to go to find them, and what language is used to describe them.  I touched briefly on patent expiry dates for the United States.  In Part 2 I’ll look at patent expiries in other parts of the world.

Authored by Frazer McLennan and Gareth Dixon

4 min read

Patent classification titles are usually pretty boring, but occasionally one will jump out at you and fire up your imagination.  A62B33 is one of those.  Its full title is Devices for allowing seemingly-dead persons to escape or draw attention; Breathing apparatus for accidentally buried person.

See what I mean?  Right now your mind is conjuring up images such as:

This one isn’t even that old.  It dates back to 2013, and it’s not even the most recent disclosure of this type.

Generally though, devices such as these have a very long history with the first recorded back in the late 18th century.  The earliest patent I can find dates to about one hundred years later, in 1892, but it’s just one of a flurry of patents in this area over the next decade or so.

It’s a simple mechanism comprising a bush of feathers in a tube, protruding above the ground, and triggered essentially by the seemingly dead person attempting to sit up, and as such bumping their head, releasing the bush of feathers out of the tube to be noticed by eagle-eyed cemetery goers.  It’s not all bad though as the point at which one bumps their head has been thoughtfully padded.  An egg on your head is probably the least of your worries in that situation.

If we switch for a moment to filings in the class over time, you can see three distinct periods: from the late 1800s to the mid 1960s, from there to the mid 1990s, and from there to today.  The number of families filed within these periods steps up four-fold each time, so is this by necessity or technological advance?

If I was to generalise regarding the subject matter within these three distinct periods, I would have to say that the first period corresponds with what are known as safety coffins.  These are coffins with mechanical mechanisms that allow someone to signal that they are indeed alive, and breathe while waiting for that signal to be seen.  Here are a few more examples: US500072, GB191006409 and FR1065868.

The second period would appear to coincide with the rise of electronics and personal devices.  There is also a move away from safety coffins, and towards buried persons of other types such as avalanche or landslide victims or lost scuba divers.  Advancements in the field of electronics mean beacons carried by skiers or mountaineers allow a person to be located by rescuers easily when there is no visible sign of their presence, but other personal devices still rely upon a mechanical device in the same way a safety coffin would have.  Gas canisters with balloons on long ropes can be activated in the event of an avalanche to expand the balloon to provide a visible signal to rescuers.  The balloons also serve as possible buoyancy aids while you’re sliding down the mountain, leaving you close to the surface, or as possible snow free refuge and air providers if they end up close to the person and can be deflated.  Examples in this group include CH450499, US3786406, US3911913 and US5490501.

The third period still appears to electronics driven, although now the devices are getting smaller, more sophisticated, and reliant upon communication networks, even those being filed in the safety coffin space.  There is also a focus on wearables such as jackets and helmets, with more features such as air bags, an air supply or illumination, providing more time before rescue.  Here are some examples from this period:  DE19957408, US2003208890, US2009121930, and US2018326233.

I’ve drawn the line for the most recent period as flat, but really filings are trending positively.  Much more than the previous two periods did.  One of the first things to do is see where these patent families are originating from.  As Chinese originating applications are surging in general, I looked to see if that is the case here, and it’s not.  No one country appears to stand out.  Some of the higher filing jurisdictions are the European Patent Office, the United States, Germany and China. 

The highest of those is the European Patent Office, and the majority subject matter is wearable airbag systems, so perhaps that’s where the trend has been in recent years.

Lastly, the award for the ultimate in ‘on trend’, or serendipity or opportunism, has to go to the applicant for DE102018005497

As you can see it’s a rescue system for people trapped in caves enclosed by water.  Sound familiar?  It was filed just one day after the Tham Luang cave rescue in Thailand.

This patent class, A62B33, sounds funny, and early examples do look ridiculous these days, but today the subject matter is quite serious and along very different lines, which shows just how much a broadly titled, long forgotten class can change over time.

Authored by Frazer McLennan and Charles Tansey

7 min read

Defence export controls (limitations on exporting “sensitive” Australian technologies) and intellectual property (especially patents) have been linked for the best part of a decade.  A 2018 review predicated on strengthening the restrictions appeared to go nowhere – that is, until an interesting article in this morning’s Guardian hinted that tightening the laws is still very much on the cards.

Local inventors (and indeed, patent attorneys) may think “so what?  Unless I’m looking to patent a weapon, how is this remotely relevant to me?”  Well, if your invention falls into what’s termed the “dual use” category – inventions having potential downstream military application (and it’s the Government that decides this – not you, and not us), then please read on…     

The status quo

The Defence Trade Controls Amendment Act 2015 entered into Australian federal law on 16 May 2015 and amended the original Defence Trade Controls Act 2012 (“the DTC Act”).  The (criminal) sanctions for non-compliance took effect from 2 April 2016.  In regulating the extent to which one can communicate new technologies overseas – and in providing criminal sanctions for non-compliance, the legislation stands to impact significantly upon the day-to-day activities of Australian patent attorneys – and their clients.  On this basis, the fact that defence export controls has raised its head again places this little-known piece of legislation squarely in the public eye and provides an opportunity to issue a reminder as to the scope and significance of the DTC Act.    

Criminal sanctions for non-compliance with the restrictions

The DTC Act regulates the overseas supply and publication of Defence and Strategic Goods List (DSGL) technologies and the brokering of DSGL goods and technology.

Shelston IP actually worked closely with Defence Export Controls (DEC) throughout the 2015 public consultation process, and as a consequence, our internal systems have been fully compliant with the restrictions imposed for the best part of five years.  In short, when dealing with Shelston IP, local clients can rest assured that we fully understand the situation and will have taken the necessary steps to minimise any risks to the parties involved.

Communicating technology – restrictions on our “day jobs”

As patent attorneys, the communication and publication of “technology” is a staple of our everyday work.  Often, such communications are sent offshore.  Other times, we communicate new technologies in the form of patent specifications to our local clients, who in turn, send these documents overseas.  Depending on the nature of the “technology”, the DTC Act stands to criminalise such activities.

Because the offence provisions for supplying and publishing DSGL technology and for brokering DSGL goods and technology took effect from 2 April 2016, individuals and organisations are required to seek permits for any otherwise-offending activities. 

Why have export controls in the first place?

The DTC Act is a little-known document having significant, wide-reaching consequences.  Australia’s export control system aims to stop goods and technologies that can be used in military applications from being transferred to individuals, states or groups of proliferation concern.  As a member of various international export control regimes, Australia is part of a global effort to regulate the export of items of concern, many of which have potential terrorism or weapons of mass destruction applications.

Australia already regulates the physical export of certain military and dual‐use items under Regulation 13E of the Customs (Prohibited Exports) Regulations 1958.  However, the DTC Act is Australia’s means of closing any gaps that have appeared in the interim (as required by the Wassenaar Arrangement, to which Australia is a signatory).

Accordingly, the DTC Act regulates three main activities:

  • The intangible supply (transmission by non‐physical means, such as e-mail) of controlled technology from a person in Australia to a person outside of Australia;
  • Publishing controlled military technology; and
  • Brokering (akin to enabling another to communicate overseas) controlled military goods or technology.

How do I know if my technology is covered under the DTC Act?

The DTC Act applies to different stakeholders, depending on whether their activities involve military or “dual‐use” items listed in the Defence and Strategic Goods List (DSGL).  The DSGL, accessible here, is a 338-page legislative instrument defining as “dual use” a broad range of otherwise fairly benign-sounding technologies.  As such, one could assume (fairly reasonably) that a technology was exempt on the basis that it had no immediate or apparent primary military end use.  However, as noted above, it’s the Government that has the final say by way of the DSGL listing being the sole arbiter.  It is important to note that secondary or incidental military applications may suffice, hence the term “dual use” technologies.

International export control regimes are generally conscious of their impact upon people’s day-to-day activities, and so the controls are designed to only capture what is considered necessary.  For example, the DSGL lists computers that are specifically designed to operate below ‐45 °C or above 85 °C.  The DTC Act controls only apply to the technology which is necessary for the computer to operate at these extreme temperatures.  Technology that does not influence the computer’s ability to function at these temperatures is not controlled.  Using the above example, an Australian inventor who has created such technology for the primary purpose of, say, exploring the surface of Mars, would need to be acutely aware of the restrictions imposed by the DTC Act – as would his/her patent attorneys.

All things in perspective…

As mentioned, the offence provisions specified in the DTC Act came into force from 2 April 2016.  Although the sanctions for non-compliance are criminal in nature, this should be tempered with the knowledge that being hit with the full extent of the sanctions (10 years’ imprisonment) would require prosecutors to prove the requisite levels of intent, knowledge, recklessness and negligence.  The operation of the Criminal Code Act 1995 means that a person who mistakenly supplies, publishes or brokers controlled technology contrary to the DTC Act after diligently following institutional compliance processes would be unlikely to be prosecuted, much less to the full extent of the law.  The Code applies general principles of criminal responsibility to Commonwealth offences; in particular, the knowledge requirement is akin to having received fair warning. 

If the goods or technology at issue are listed in the DSGL, a permit or approval may be required from DECO.  The qualifier “may” is dependent upon:

  • The activity being undertaken (“supply”, “brokering”, or “publication”); and
  • Whether it is a military or a “dual‐use” DSGL technology; and
  • Whether an exemption applies (such as “basic scientific research” or material that has been lawfully placed into the public domain).

As readers will appreciate, a simple “yes/no” answer as to whether a permit is likely to be required is necessarily dependent upon the unique circumstances that each scenario presents.  

Patent-specific exemptions

As mentioned, a staple of our day-to-day activities as patent attorneys is the exchange of information relating to “technology”.  On a daily basis we communicate technology internally, domestically and internationally – and our clients do the same.  It is useful, therefore, to understand the activities that are exempted under the DSGL regulations.

Firstly, the “pre-publication” exemption amounts to recognition, on the Government’s part, that they cannot regulate the publication of information.  As such, the communication of information contained in a patent document that will later be published (e.g., a draft convention application or a draft PCT application) appears to fit comfortably within the definition of “pre-publication”.  On the other hand, provisional patent applications do not appear to fit within this category – and as such, another exemption must be invoked.

To this end, the “patent application exemption” covers activities “directly related to seeking a patent”:

This exemption applies to the supply of DSGL technology where it is done for the purpose of “seeking a patent” in Australia or overseas. “Seeking a patent” includes lodging a patent application and the supply of DSGL technology to a person or organisation (e.g., a Patent Office, patent attorney, research collaborator or a patent review panel) that is directly associated with the lodging (or potential lodging) of a patent application, or as a result of the patent examination process.

Supply for a purpose that is not directly related to seeking a patent will require a permit (unless other exemptions apply). This includes supply of DSGL technology to a research collaborator located overseas before a decision is made to seek a patent. Once a provisional patent application is filed, any supplies of DSGL technology to further develop an invention prior to preparing/submitting a complete patent application will require a permit. Supplies of DSGL technology to locate investors and determine overseas markets (including forwarding a recently-filed provisional application) will require a permit.

The process of publishing a patent (or an unsuccessful application) into the public domain is covered by this exemption. Until such time as that information exists in the public domain, it is still controlled and would require a permit to be supplied if it is not for the purpose of “seeking a patent” and no other exemptions applied.

As such, the Government would appear to have intentionally extricated the acts of overseas communication for the purposes of preparing a patent application (exempt) and communication with a view to ancillary business activities such as seeking investor funding (not exempt).

We will keep abreast of any changes to, or unusual interpretations of this new exemption.  As it is, it is clearly important to the manner in which we – and our clients – go about our everyday professional activities.    

Shelston IP’s proactive approach to the DTC Act restrictions

Being aware of the potential impact of the DTC Act, Shelston IP has closely monitored progress throughout the public consultation process (dating back to 2014).  We have liaised with DEC on a regular basis and have developed an internal best practice guide.  Adherence to such best practice will protect not only our interests, but also those of our clients.  This, in turn, means that clients dealing in controlled or dual-use technologies can be assured that their interests are in safe hands.

Based on our experience and understanding, compliance with the DTC Act can be as easy as following a few simple rules.  In some instances, a deeper consideration of the specific circumstances and legislative requirements will be necessary.  Those concerned about their own internal procedures under the DTC Act are invited to make contact with their Shelston IP patent attorney. 

Our specialist patent searcher, Frazer McLennan, is an expert in assessing technologies against what is prescribed in the DSGL register.

Authored by Gareth Dixon, PhD and Frazer McLennan

2 min read

The World Intellectual Property Organisation (WIPO) have been adding a range of useful tools for many aspects of intellectual property for a while now, including searching databases for patents, trademarks and designs; classifications; statistics; and multilingual terminology across patent documents.  I’ve written before about where you might go to conduct a search, sticking mainly to free sources, but WIPO have just introduced a new tool called WIPO Inspire that is a collection of reports on patent databases and their features.

There are only 24 databases at present but I’m sure that list will grow as new entrants establish themselves in the market.  It’s weighted slightly in favour of fee paying, or commercial, databases, and the free ones are currently restricted to the IP5 (the five largest intellectual property offices), but not either of PatFt or AppFT from the United States, but including WIPO’s own PatentScope, and a few others such as The Lens.  If you need to look further afield, WIPO Inspire has incorporated the older Patent Register Portal page, so you can still locate the relevant national databases for jurisdictions outside the IP5.

The reports on each database are quite extensive, and go into detail regarding the jurisdictions covered, which patent classifications can be used, how their patent families are structured, and how you can manipulate your results through sorting, export or analysis features, plus a lot more.

While it is a short list of databases, and quickly scanned, it is also possible to filter the databases by their features.  For example if you are looking for a database that allows semantic searching, to find those that do involves checking a box within the menu on the left hand side.

WIPO Inspire includes a comparison tool that sits up to four database selections side by side so the features of particular interest can be compared easily.

WIPO Inspire looks like a good tool to help if you are unfamiliar with patent databases, in terms of knowing what their names are, and what they can do.  You may just find one that has the combination of features you’re after.

Authored by Frazer McLennan and Gareth Dixon, PhD

4 min read

Patent searching is already black magic, wrapped in a puzzle, inside an enigma, passing through a black box, and thinking about how something could be unsearchable is an extra layer you just don’t need, so, how do you find something you can’t search for?

To assist, I’ll define what I consider unsearchable.  It’s essentially numerical ranges and relative terms.

Here’s claim 1 of US20200060950:

Carbonate- and magnesium-substituted hydroxyapatite having a part of calcium substituted with magnesium and a part of a phosphate group substituted with a carbonate group, and being composed of primary particles in a non-aggregated state, the primary particles having a particle size of 5 nm or more and 60 nm or less.

I chose this one for the last line: ‘a particle size of 5 nm or more and 60 nm or less’.  It exemplifies both of the unsearchable categories.  It’s essentially a numerical range of 5 to 60 nm, but it also includes the relative terms ‘or more’ and ‘or less’.

Other relative terms you might see are ‘greater than’, ‘less than’, ‘higher’, ‘lower’, ‘heavier’, ‘narrower’ and so on.  You learnt all of these before you were five years old, and they are back.

I summarised the numerical range as 5 to 60 nm, but I could have just as easily written 5 nm to 60 nm, or 5nm to 60nm, or 5-60 nm, and variations on that theme.  Measuring particle size in nanometres may be convenient for this inventor, but others might choose a different unit, so 50 to 600 Angstroms or 0.005 to 0.06 microns, or even 5 x 10-3 to 6 x 10-2 microns is an option.  A search conducted for 5 nm would miss almost all, if not all, of these alternatives.

Similarly a range such as 3 nm to 75 nm would not be located in a specific numerical search for 5 nm to 60 nm even though it would be a highly relevant result.  Considering relative terms again, values of ‘less than 100 nm’ or ‘greater than 2 nm’ would not be located.

So, going full circle, how do you find something you can’t search for?

Searching is a matter of filtering the entire universe of patent applications to get a searchable set you can work with.  I’ve written about that before.  That article considers filters you can apply through a patent database.  They are fairly concrete and well defined, or at least you as the searcher can define them to your satisfaction.

Numerical ranges and relative terms are much less defined, and although you can search for particular numbers, with or without a relative term, you are taking stabs in the dark if you use a patent database filter, and are unlikely to be successful.

At this point you are going to have to apply an internal filter.  No, not the sweary one; a different one.  As you consider each one of your search results (that you obtained with patent database filters) you can apply a mental filter that is equivalent to what you might have liked to apply in that patent database.

The advantage of this is that your mental filter can cope quite well with different numbers defining ranges, or differing units, or various relative terms, something a computer doesn’t do.

So, using the example claim above, a likely search will focus on non-aggregated hydroxyapatite particles with a size, possibly with reference to it being substituted with carbonate or magnesium, although that last bit could be very broad, but the point is that you have not considered at all what that particle size is.

I’ve searched (very quickly and simply, in the title, abstract or claims in PatBase) for (TAC=(hydroxyapatite) AND TAC=(nonaggregated OR (non w1 aggregated)) AND TAC=(particle w2 size*)).

Just looking at the first few I find phrases in the first claim such as:

  • an inorganic fine particle having an average particle size of 0.01.about.5 mu m
  • hexagonal primary particles and having a secondary particle size from about 50 nm to about 5000 nm
  • non-aggregated nano-sized particles,

all of which can be filtered mentally as fitting the 5 to 60 nm range in some way, including the last one which requires some digging to find a range in claim 4.

You can see that none of them would have been located had the particle size formed part of the search string, whether that included the numbers 5 or 60, or as a range, or by using greater than 5 or less than 60, and so on, possibly with the exception of the last one where claim 4 describes a range of 5 nm to 500 nm, but that all depends on how you framed the particle size search string.

The first phrase has different units; ‘mu m’ or micrometres or microns, not nanometres.  The second phrase does use nanometres but the numbers used in the range are different.  The third phrase doesn’t use numbers or units at all, but the more general ‘nano-sized’.

To reiterate, the advantage of this strategy is that your mental filter can cope quite well with different numbers defining ranges, or differing units, or various relative terms, something only a necktop computer can do.

Authored by Frazer McLennan and Gareth Dixon, PhD

7 min read

When Winston Churchill said, “broadly speaking, the short words are the best, and the old words best of all”, he (most likely) wasn’t speaking about the words found in patent specifications.  However, in saying that, he is both right and wrong.

Old, short words would be described today as “plain English”.  Describing something in plain English adds succinctness and clarity to any document, something patent specifications, or at least the claims, are supposed to possess, but sometimes only do so in the most obscure way possible by using new, long words. There have been many years of innovation since Winston was alive, and by necessity we have had to invent new words or repurpose old ones to describe our modern world, so perhaps we can be a little forgiving when using one of our newfangled words.

He is right though, because we shouldn’t forget the old words.  They still may adequately describe a modern innovation.  Calculators weren’t always called calculators; Charles Babbage called his a difference engine, and computers once referred to humans, not machines.  They, of course, used a necktop, not a laptop.

In this article we’re going to talk about words, or as they are more commonly known in the searching world, “keywords”, and how you can use them effectively.  I’ll be straying into territory I’ve covered before, so here are links to my articles on patent classification and narrowing your search results.

Before we start manipulating our keywords, we need to determine what the keywords are.  One of the biggest mistakes is only considering the words you know to describe a concept.  This may be because it is commonly used industry jargon or simply how you have described it.  Even when you have settled on a set of keywords, be open to discovering more as you read through any specifications you think might be relevant, and add those new words into your keyword set, and search again.

Don’t be overly descriptive when determining your set of keywords.  A doohickey bolt is just a bolt; a thingummy panel is just a panel; and a whatsit tube is just a tube.  Sometimes using doohickey, thingummy or whatsit might be required, but usually when they are the industry jargon, and never when it’s something you just made up.

This is where the above reference to old words comes in.  Patent literature goes back a long way to simpler times, and with a whole lot less prior art, inventions could be described more simply and broadly without having to navigate a minefield of potential infringements, so go back further than your own time and history, and consider ye olde time technology terminology as well.

Using ‘tube’ as the initial keyword should lead you to words like cylinder, duct, pipe, pipeline, pipette, conduit, tunnel, chute or straw.  You can also go a little more abstract with ‘hollow’, or technical with ‘lumen’.  Not all of these will be relevant to your particular concept.  For instance, ‘straw’ is more likely to be used in foodstuffs or packaging applications compared to say, ‘tunnel’, so you don’t have to use every keyword you can find.  Stick to the most likely in the first instance, and broaden your search with others as necessary later.

Now that you have a set of keywords, what can be done to ensure you will capture all instances of those keywords?

If you have ‘tube’, what about tubes, tubing, tubular, and so on.  Sometimes it’s effective to just add these to your set, but it’s easier to use truncation, so tube, tubes, tubing and tubular can all be summarised with ‘tub*’.  Pipe, pipeline and pipette above can be truncated to ‘pipe*’, and cylinder can become ‘cylind*’ to also cover cylindrical, as further examples.

In most freely available patent databases an asterisk can be used to truncate, but the USPTO uses a $ symbol.  If in doubt, check the help pages available in whatever system you’re searching in.  Truncation not only allows you to get a number of keywords for the price of one, but can also be used to cover spelling variations, such as American/British spelling, or capture typos.

Here’s something else to consider.  I like to have a number of sets of keywords, each relating to a different aspect of the concept.  For example if I’m searching for ‘red bicycle tubes’, I’ll have three sets of keywords:  one for keywords relating to ‘red’, another for ‘bicycle’, and one for ‘tubes’.  It just means I can more easily manipulate them by combining them in different ways.

So, let’s start combining those sets of keywords.  To keep it simple I’ll refer to the various sets of keywords as A, B and C, and individual keywords within those sets as A1, A2, A3, etc.

There are three Boolean operators to be aware of.  These are OR, AND and NOT.

Firstly, stay away from NOT as much as possible.   Using A NOT B means you are taking everything from A that is also in B.  The problem with using NOT is that you don’t know what you’re excluding.  In many applications it is suitable, but not for patent searching.  One of the features of a patent specification that often appears is a background of the invention, or a description of related art, where earlier inventions in the field are described.  If there is a specification that happens to be all about B, for example, but also happens to describe A, your concept, in great and precise detail in the description of related art, by conducting a search for A NOT B, you will exclude that highly relevant specification from your search results.

In general, with OR and AND you will end up with search strings that look like

(A1 OR A2 OR A3) AND (B1 OR B2)

Likewise you can search for A AND C, or A AND B AND C.  What you want, ideally, is a number of search results that is manageable.  That may mean for example splitting up your sets of keywords or removing the truncation and spelling out some of those words in full.  For example when truncating tube, etc. earlier we would also pick up tuberculosis and tuberosity, among others that are clearly not relevant, although you would hope that when combining tub* with bicycle you wouldn’t find much in the field of bicycle tuberculosis (FYI, the answer to that is not zero).

The problem with using AND and OR is that they don’t care how the two words are related in a patent specification.  All you know is that two of your keywords appear in a specification, somewhere.  One could be in the first sentence and one in the last, but you won’t know until you read it.  Ideally you would like the words to be more closely related than that; at least the same sentence or paragraph.

Let’s be clear though, AND and OR are very important, and you absolutely have to use them.  What follows does not replace those primary tools, but just allows you to get your keywords a little closer together if you need to.

There are two methods for getting keywords closer together.  The first is to search for a direct phrase.  This can be as long as you want but two or three words is really all that will be effective.  If we take our ‘red bicycle tubes’ example from above, we could search for something like “red bicycle” or “bicycle tube*”.  Note how I’ve used double quotes this time.  In most freely available searching databases you will need to use double quotes to indicate a direct phrase search.  Espacenet allows you to enter the words without quotes as it will automatically consider it a direct phrase search.  You can usually use truncation on one or both of the words.

The problem with this search is that you wouldn’t pick up any combination of keywords such as ‘red racing bicycle’ or ‘bicycle inner tube’.  To find those you can use a feature called proximity searching but could be called ‘words within so many words’.  Not many freely available databases have this feature but it does allow you to expand your search beyond the restrictive direct phrase search.

PatentScope allows for the use of NEAR to find two keywords within five words of each other, but it also allows for the use of a ~ (tilde) to customise that gap, so you could search for ‘red NEAR bicycle’ which is the same as “red bicycle”~5, or you can go further to “red bicycle’~10, and these would pick up ‘red racing bicycle’.

AusPat used to let you use NEAR but that has been replaced by /n/ where n is the number of words in the gap between your keywords, so “red /5/ bicycle”.  Note that this, and the PatentScope search have to take the form of a direct phrase search using double quotes along with the words within words operators.

So, rack your brain (cerebellum, grey matter, head…), grab a thesaurus (dictionary, onomasticon, lexicon, source book…) or whatever you can, to come up with a list of suitable alternatives to your initial keywords, and try combining them in a few different ways to assist with your search.

Authored by Frazer McLennan and Gareth Dixon, PhD

6 min read

A perpetual motion machine is one that can do infinite work with no energy input.  Such a machine is impossible as it would violate the first or second law of thermodynamics (that internal groan isn’t likely be your last).

The first law of thermodynamics relates to the conservation of energy, so if you are not adding energy to a system, you cannot take energy out and expect the system to work indefinitely.

The second law of thermodynamics relates to entropy, defining that the total entropy of a system will always increase over time.  Some energy is always lost through friction or otherwise dissipates so that not all of the energy is produced as work.

Violating a few of the laws of thermodynamics hasn’t seemed to be a problem for countless individuals, even long before there was any way of protecting their intellectual property, and now that there is, the good burghers of IP Land have decided that such machines are unpatentable subject matter.

The purpose of this article is not to start reciting and examining the law.  It is what it is, and a simple googling will tell you so, but that does not stop inventors from claiming machines that do more work or create free energy from nothing.  Some even explicitly claim perpetual motion as an essential feature.

As a patent searcher, when I have to conduct a novelty search into an inventor’s magnum opus, and I look at the IPC (International Patent Classification) and find that there is an obscure subclass specifically dedicated to that aspect of the technology, I know things are not going to end well.

The same goes for perpetual motion, or as the Latinistas of WIPO have put it, perpetua mobilia.  There are four IPC classes that specifically mention perpetua mobilia, and a couple more that seriously think about it.

  • F03G7/10 Mechanical-power-producing mechanisms using energy sources not otherwise provided for, with a 1-dot subclass for alleged perpetua mobilia
  • F03B17/04 Other machines or engines, with a 2-dot subclass for alleged perpetua mobilia
  • H02K53/00 Alleged dynamo-electric perpetua mobilia
  • H02N11/00 Generators or motors not provided for elsewhere; Alleged perpetua mobilia obtained by electric or magnetic means

The two others are F03G3/00 Other motors, e.g. gravity or inertia motors; and F25B9/00 Compression machines, plant, or systems, in which the refrigerant is air or other gas of low boiling point, but for simplicity I am going to ignore these.

The CPC (Cooperative Patent Classification) is almost identical, except the H02N11 class has been subdivided so that the CPC gives H02N11/008 as the relevant subclass.

There are two points to make here.  First, they all say “alleged”.  They are giving inventors the benefit of the doubt before refusing the application.  Second, these classes have been in place since year dot of the IPC, way back in 1971.  These are not classifications that have expanded over time as the level of innovation in these areas demands it, and where a subclass has been added years later.  They were always there; the idea has always been doubtful.

I have conducted a search in PatBase in the four IPC and CPC classes above as well as looking for the keywords “perpetual motion” in the title, abstract or claims, for anything filed since January 2015.  There are a few other keywords that could be used, but it is useful to look for those inventors who are upfront about their ambitions.  This search finds just under 8000 patent families.  I will take an extra step at this point and remove any family where one of the classes above is not the first listed.  Any family falling into this category would appear to have utility by being classified first in a typical IPC or CPC class, and having an alleged perpetua mobilia class thrown in at the end just in case.  After doing this I am down to just over 3100 patent families of genuine alleged perpetual motion machines.

Looking at this data set, there are a few things that really stand out.

While there are fifty-seven jurisdictions around the world that can claim some passing interest in perpetual motion, the Peoples Republic of China accounts for almost half of all patent families in this field, and as with Chinese patent applications in general, the number is rising year on year.

Another stand out is that electrical devices are the predominant field of endeavour, outstripping mechanical devices by a factor of 3 to 1.  This probably reflects the modern world where renewable energy generation and storage is a growing industry, and generating free energy forever for zero cost is an attractive proposition.  These points are apparent in the ‘concept cluster cloud’ below.  This is a chart generated by PatBase Analytics that gives frequently occurring concepts or keywords found within the set of 3100 patent families more prominence, in this case with a larger font.

One last stand out is that some of these applications get granted, even when they are classified primarily in an alleged perpetua mobilia class.  In fact, almost two hundred per year are granted, as shown below.  Most of them, about three quarters, are granted in China, and it appears that the majority of these are utility patents, where there is little or no examination and a lower requirement for an inventive step.  That still leaves a substantial proportion of granted patents theoretically with unpatentable subject matter.  It may be that some of these applications had multiple inventions, and the unpatentable ones have been weeded out, or that at first glance it appeared to be a perpetual motion machine, but was not, or was suitably amended to enable acceptance and grant.

So, the question remains: what is allegedly new in the field of perpetual motion machines?

I would be loath to point out anything I thought was half serious, just in case it’s ‘the real deal’, so I will stick to highlighting a few of the more unusual patent applications in the field.

CN10456473A is a perpetual motion machine for drawing water from a low level reservoir to a higher level one using a waterwheel and siphon tube where a portion of the water siphoned is used to drive the waterwheel while the remaining portion is sent to the higher reservoir.

The interesting thing about this specification is that three quarters of it is dedicated to an essay on the futility of perpetual motion, before moving on to time travel, the space-time continuum, gravitation energy, and last of all, God.  The last quarter, without a hint of irony, describes the invention.

CN105587479A is a gravity driven perpetual motion machine based on the idea that a circular chain, where part of the chain rests on a sloping surface, and by calculating the relevant gravity force vectors, conclude that the sloped portion of the chain weighs less than the portion of the chain that is vertical, and as such the heavier part of the chain will pull the lighter part up the slope thus creating perpetual motion.

Energy generation doesn’t rate a mention for this device.  Its sole utility appears to be as a toy.

GB2547229A relates to electric vehicles, where the vehicle has two batteries.  The energy from one battery is used to propel the vehicle, while the vehicle engine charges the second battery.  When the first battery is drained, the roles of the batteries are reversed, and the second battery now propels the vehicle while the first battery is recharged by the engine, thus negating the need to stop and refuel.  There’s not much to this specification, certainly no grand theory of everything nor any delving into the nitty gritty of the laws of physics, no doubt because the idea is so obvious and useful that it needs no further explanation.

AU2016256693 was withdrawn before examination occurred.  There’s not really anything to say about this one as the title says it all, which is:

The Newton Perpetual Motion Machine is a Machine which uses the outside source of energy initially then it will work by newly discovered method. Albert Einsteins equation e=mc2 so energy is everything. But; Who made them as they are now? In the Quantum world; Everything is made of uncertain things the elementary particles So, we cannot able to say anything with absolute certainty. So, laws of thermodynamics. This machine may violate the first and second laws of thermodynamics so It might not make any general sense like a spooky action in a distance (Quantum entanglement). Energy is the law.

One thing I can say about most of these inventors is that they have some idea of the laws of thermodynamics, know that they can’t be violated, and know that perpetua mobilia do violate the first and second laws, but it does not stop them from trying, and claiming, to have achieved the impossible.

Authored by Frazer McLennan