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.

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

1 min read

IAM Patent 1000: The World’s Leading Patent Professionals 2021 has again Highly Recommended Shelston IP for Patent Prosecution.

Shelston IP has not only been Highly Recommended by IAM Patent 1000 for Patent Prosecution, we have also been Recommended for both our Litigation and Transaction work.

Our attorneys also continue to be ranked with Michael Christie, PhD, Paul Harrison and Greg Whitehead listed as Highly Recommended for Patent Prosecution together with Chris Bevitt for his Transaction work.

Congratulations to all our ranked attorneys.

Authored by Chris Bevitt, Michael Christie, PhD, Paul Harrison and Greg Whitehead

2 min read

Managing Intellectual Property (MIP) IP Stars publication has listed Shelston IP once again as a Tier 1 firm for both patent and trade mark prosecution. Four of our Principals have been recognised individually as IP Stars.

MIP’s IP Stars is the leading resource and most respected guide in the IP profession. Their worldwide survey of IP practitioners is used as a key benchmark for the industry.

Congratulations to all our IP Stars for being recognised as leaders in the IP industry:

Paul Harrison

Paul is a Principal and head of the chemical biotechnology team. He has over 35 years’ experience in the protection and enforcement of IP rights in Chemical Engineering and Chemistry technologies and is valued by his clients for his strategic and pragmatic approach to intellectual property.

Sean McManis

Sean heads Shelston IP’s Trade Marks team. He has extensive experience in assisting clients with trade mark protection and selection. He has been recognised by Managing Intellectual Property as an IP Star for the last 6 years and was a finalist in the 2020 Client Choice Awards for Best IP Specialist.

Charles Tansey, PhD

Charles is a Principal and experienced patent attorney with 25 years’ experience in the drafting, prosecution, enforcement and defence of patents in Australia and overseas. His technical experience across a wide range of chemistry related technologies is sought out by domestic and multinational clients.

Peter Treloar

With over 25 years of experience, Peter is an authority in Patents in Australia and New Zealand for complex electronics, computer science, and optics, with a particular bent for complex mathematical material.

IAM Patent 1000: The World’s Leading Patent Professionals 2020 has again listed Shelston IP as Highly Recommended for their patent prosecution.

Congratulations to our ranked practitioners Paul Harrison, Chris Bevitt, Greg Whitehead and Michael Christie.

“The impeccably qualified team of patent attorneys and attorneys at law at Shelston IP has achieved great success in recent years, especially in tapping into the Chinese market. Processing one out of every 15 applications entering national phase in Australia already, the side now represents the greatest number of Chinese entities among Australian IP firms and files the most China-originating patent applications in Australia. Paul Harrison  and Greg Whitehead are fine examples of the group’s first-rate advisers. With a chemical engineering background, Harrison aptly handles building and construction products and systems, material separation, treatment and handling, metallurgy, food processing, medical equipment and process technology briefs. He is also the Asian Patent Attorneys Association Conference chair 2020. Head of the mining team, Whitehead is not just technically excellent, he also has a great track record building up and consolidating the patent portfolios of start-ups for commercialisation. Similarly, Michael Christie, a former senior associate at MinterEllison who joined the firm in May 2020 to head up the life science practice, specialises in molecular biology. Elsewhere, Chris Bevitt is the commercial law team leader who tackles transactional work effortlessly.”

Authored by Chris Bevitt, Greg Whitehead, Michael Christie, PhD and Paul Harrison

IAM Patent 1000: The World’s Leading Patent Professionals 2019 results have been announced.  Shelston IP have again been Highly Recommended for their patent prosecution.

Those who have been commended, are to be congratulated.

“Shelston IP is head and shoulders above the rest, for its holistic service and deep reserves of knowledge. The team is super proactive and always one step ahead of the opposition; they work around the clock, never missing a deadline and will go above and beyond to ensure the work is first-rate.” An example of the firm’s innovative tendencies is its recent launch of OneAsia, a business solution aimed at providing clients with seamless one-stop shop protection across the Association of Southeast Asian Nations. Paul Harrison leaves both clients and peers in awe. As one patron enthuses: “Paul fuses his technical knowledge in chemical engineering with his legal expertise and sound commercial thinking, to produce great work. He has strong patent searching and analysis skills and his overall strategic approach makes him a stand out. Paul is proactive and his ability to understand complex processes and distil it into simple and easily digestible language is extremely valuable.” Patent attorney Greg Whitehead has a broad mechanical engineering practice; he possesses detailed and unique knowledge of robotic systems, automation equipment and industrial drying and heating machine patents. Commercial law department spearhead Chris Bevitt comes “highly recommended for his finesse in transactional matters. He has the ability to take intricate commercial arrangements involving the past, present and future rights and obligations of parties and draft meticulous, concise and effective clauses to reflect them perfectly. Chris’ turnaround is fast and his communication extremely effective – he proposes alternative solutions to achieve the best possible outcome. He is courteous and always available to answer questions too.”

Authored by Paul Harrison, Greg Whitehead and Chris Bevitt

We handle the intellectual property (IP) portfolios for a diverse range of clients, many of whom are large multinationals. Their IP portfolios typically include all forms of registrable rights – patents, trademarks and designs. We also often find that certain clients have many IP service providers, each of which handle one or more of those registrable rights. Such a fractured vendor landscape can arise due to a variety of factors, such as historical reasons. For example, different IP Managers within the organisation have had different preferences for IP services providers and have spread the work around over time, or there may have even been an internal policy in this regard. Sometimes, a parent company may acquire smaller entities and will transfer any IP into the parent’s name, but will retain management of the IP with the existing service provider. This may be for perceived convenience, or simply due to a perceived cost for transfer of the portfolio. Whatever the reason, there are disadvantages to having the IP handled by plurality of service providers.

By reviewing the IP portfolios of the most successful organisations it is clear that industry best practice is to have the IP handled by a very limited number of service providers, and preferably consolidated to a single provider.

Industry best practice

There are many advantages of having your IP handled under one roof by a single dedicated IP team. For example, to enable the attorneys handling the IP to better understand:

  • the client’s commercial objectives,
  • the client’s existing technology, the technology currently under development, and what technology may be required in the future,
  • the client’s main competitors and their technologies, and
  • to gain a better understanding of the industry in general, including the common technical knowledge.

An understanding of the commercial objectives is important, as these objectives should frame the IP being developed now and into the future, and will assist the attorney to more comprehensively protect and enforce the IP. Consolidation of IP with a single service provider enables the attorneys to become more embedded in the organisation and fosters a more collaborative working relationship with the key people in the organisation (researchers, inventors, business development managers, etc). It can also be important to understand the client’s key competitor(s) and its technologies for freedom to operate issues and to assist the organisation in its decisions to attack its competitors’ IP.  All these factors lead to:

  • greater proactive and strategic management of the client’s IP (rather than a reactive approach to IP issues as they arise);
  • increased efficiencies in dealing with IP matters;
  • a service provider enabled to add real value to the organisation, and
  • cost benefits.

Furthermore, there are synergies which come about from this approach.  As attorneys/lawyers become more embedded in an organisation they are better able to brainstorm technical solutions with R&D personnel and to assist them to understand the commerciality of the solutions they develop to real-world problems. Additionally, the improved collaboration which is possible between attorneys and R&D staff can lead to more robust patent specifications being drafted, thereby improving the strength of the IP, reducing the ability of infringers to work around the IP, and increasing the prospects of surviving a validity attack. It also leads to the attorneys having a better understanding of the key prior art in the field, and the common ‘terms of art’.  The organisation can also benefit in other ways. For example, many in-house IP teams are relatively small and there can sometimes be a high turnover of attorneys. Utilising a single service provider supports portfolio knowledge and corporate memory.

Conclusions and summary

There are many advantages to an organisation having its IP handled by a single service provider, and is a ‘best practice’ approach to strategic IP portfolio management.

Shelston IP is well placed to assist with management and consolidation of your IP portfolio to achieve your commercial objectives.

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 Paul Harrison

There are a couple of ways to file a patent application in a country of interest. The choice is usually based on a commercial strategy, and balanced by cost considerations. If protection of the invention is required in only a few countries, it is usually most cost effective to file directly into those countries and claim priority to any provisional patent application which has been filed – known as (Paris) Convention applications. Alternatively, where an applicant requires more than a few countries, it is more common to file a Patent Cooperation Treaty (PCT) patent application (and claim priority). It is also possible to pursue Convention applications in parallel with a PCT application.

The strategy of filing Convention applications incurs the relatively-expensive filing costs sooner compared to filing a PCT application, where the major filing costs are deferred for 18 months – a period referred to as the International Phase. In other words, the PCT application takes the place of the individual foreign patent applications that would otherwise have been required. After the International Phase, in a period referred to as the National/Regional Phase, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought.

What is the PCT system?

The PCT is an international agreement administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world. A list of the PCT contracting/member states can be accessed here. The IB receives all of the PCT applications, wherever they were originally filed, maintains compliance with PCT rules, maintains an official record of all PCT applications, forwards copies of relevant papers in PCT applications to regional and national patenting authorities, and publishes PCT applications.

Advantages of the PCT system

One significant advantage of a PCT application is deferral of the cost of the national phase applications, allowing Applicants more time to explore the commerciality of the invention. The PCT is also an attractive option for applicants who intend to find licensees for their foreign patent rights, as the PCT keeps the options open in many countries and then the licensee can pay the costs of prosecution in any countries in which the licensee is interested.

Another advantage is that a PCT application is automatically subject to both search and examination, and therefore provides some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before the major filing and prosecution costs are incurred. The PCT system permits a central prosecution before a single patent office, and can be used to reduce the number of objections that will need to be addressed later, before individual patent offices, thereby lowering prosecution costs. The PCT application route is costlier initially due to the filing costs of the PCT application itself, however it may be more cost effective overall due to streamlined prosecutions.

The PCT system can also be used to manage risk. For example, if the invention disclosed in the PCT application is subsequently found to be unpatentable in view of the prior art, an early decision can be made to withdraw/abandon the application, thereby avoiding the national phase filing costs.

The PCT system is also flexible in that if the applicant requires further time to raise funds or assess the potential of the invention the priority claim can be withdrawn close to the national/regional phase entry deadline, effectively extending the deadline to file national/regional phase applications. Of course, the applicant should only take this step if unaware of any relevant publications.

Examination of PCT applications

The PCT system does not examine patent applications fully, and it does not grant patents. The examination may be without interaction between the applicant and the Examiner (under Chapter I) or with interaction between the applicant and the Examiner (under Chapter II). By default, the examination is performed under Chapter I, unless a Demand is filed under Chapter II.

  • Chapter I: The main steps include: filing the PCT application, preparation of the International Search Report (ISR) and the Written Opinion (WO) of the International Search Authority (ISA), and the publication of the international patent application, with the ISR and any amended claims which have been filed. If a Demand is not filed (see below), the WO is later reissued as the International Preliminary Report on Patentability (IPRP) under Chapter I (IPRP/ Chapter I).
  • Chapter II: Chapter II is optional and is also known as International Preliminary Examination (IPE). The main steps include: the filing of a Demand including amendments and/or arguments to address any objections raised in the WO, and the subsequent preparation of the IPRP/Chapter II. Obviously if the WO is clear of issues of patentability, there is no need to file a Demand and undertake IPE.

What is International Preliminary Examination?

IPE is used to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable”[1].  It is carried out by an International Preliminary Examining Authority (IPEA) at the request – called a “Demand” – of the applicant, and gives the applicant the opportunity to evaluate the prospects of obtaining patents in the countries of interested before incurring the expense and trouble of entering the national phase. Fees are payable for making the Demand, and it must be filed within a certain time limit and accompanied by a response to the WO. The examination is “preliminary”, since a final opinion will be formulated only in the national phase by the national or regional patent office, and is “non-binding” on anyone, including national/regional patent offices.

It is not necessary to file a Demand if you the applicant is content with the WO being reissued as an IPRP, and is happy to address any objections raised during the regional/national stage. For example, where the objections raised in a WO relate to matters of inventive step the applicant may choose not to respond to the WO.  This would allow the applicant to address the inventive step issues separately before each national office, and in accordance with national inventive step law and practice.

The PCT application is filed with a Receiving Office (RO) and is followed by search of the application by the ISA (who prepares the ISR and WO). For nationals and residents of Australia, the choice of RO is IP Australia or the IB, and the choice of ISA (and IPEA) can be IP Australia or the Korean Intellectual Property Office (KIPO).

What is examined?

There is not a uniform approach to the criteria for examining patentability in the national laws of each of the 150+ countries that are currently party to the PCT. Therefore, the criteria on which IPE is based correspond to internationally accepted criteria for patentability, namely: novelty[2], inventiveness[3], and whether the invention is industrially applicable[4]. A secondary objective is to identify whether there appear to be any defects in the form or content of the international application, for example with regard to clarity (claims, description, drawings), whether the claims are fully supported by the description, or whether there are multiple inventions claimed (lack of unity of invention). Additional objections can relate to inconsistencies in the description (ambiguous syntax, relative terms, etc.), whether there are too many independent claims in one category (conciseness), and whether the claims are framed in a result to be achieved (stating the desired result without explaining how the result is achieved).

What are the benefits of IPE?

According to the PCT guide[5], while the IPRP is not binding on a patent office, “it carries considerable weight … and a favorable report will assist the prosecution of the application…” Also, an application “… will generally proceed rapidly to the grant of a patent” where the IPRP is favourable. In practice, this is generally true for many countries, although many countries will use the IPRP as the starting point for further examination in the national/regional phase, especially the larger jurisdictions such as the US, Europe, China, and Japan, and will effectively start “from scratch”. Despite starting from scratch, the IPE procedure is of some benefit as many of the issues will have already been addressed prior to national phase prosecution, thereby potentially expediting prosecution in these countries and reducing overall costs.

From a risk management perspective, obtaining a clear IPE can also be of benefit to licensees, who can take some comfort from a clear report, and can make commercial decisions based on the likely scope of the claims.

What happens after the international phase?

The normal deadline for entering the National/Regional Phase is 30 or 31 months from the priority date, depending on the country, although it is possible to enter the National/Regional Phase “early”, before the deadline. The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney to handle the application, filing formal documents signed by the inventor/applicant, and paying official fees to the patent office of that jurisdiction. Once filed, the application is handled and examined according to the usual treatment of patent applications in the countries/regions involved, and all of the local time limits, laws, rules, and procedures must be observed.

Closing comments

The decision of whether to file Convention applications or a PCT application (and subsequently enter the national/regional phase) depends on the budget and the commercial strategy. Assuming a PCT application is filed, there is a further decision on whether to file a Demand, which depends on factors such as the commercial stage of the product, the interest of licensees, the scope of the planned national/regional filings, the budget, and the scope of the prior art cited in the ISR. We recommend that you discuss these important matters with your Shelston IP attorney early in the patenting process so that there is a targeted strategy for your innovation.

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.

[1] Article 33(1)

[2] Article 33(2), and Rule 64

[3] Article 33(3), and Rule 65

[4] Article 33(4)

[5] http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

On August 10, Patricia Kelly retired from her position as Director General of IP Australia, after almost five years in the role. Patricia will be replaced by Michael Schwager whose current role is as acting Chief Operating Officer at the Australian government scientific research agency, the Commonwealth Scientific and Industrial Research Organisation (CSIRO).

Shelston IP would like to acknowledge the significant contribution and leadership that Patricia has made to modernizing IP Australia by introducing many beneficial initiatives, including the introduction of digital technologies – making IP Australia the country’s first fully digital government agency; and the creation of a national IP register called the IP Government Open Data (IPGOD), allowing public access to more than 100 years of IP records. Patricia also was acutely aware of the importance of education and awareness of the IP system. This commitment resulted in the creation of a number web-accessible “IP toolkits” which brought the needs of Australian innovators into sharp focus.

As Patricia’s successor, Michael Swager brings a background of industry, science, and innovation to the Director General role. Shelston IP wishes Michael all the best for continuing and extending Patricia’s legacy by implementing further beneficial changes to IP Australia.

Authored by Paul Harrison

It is very common for patent examiners to cite patent documents as prior art to support novelty and inventive step objections. However, the information in patent literature is different to the kind of information published in peer-reviewed journal articles. In the latter case, the technical information is written for other scientists/engineers and is presented in a way that is intended to convey the results of that scientific research and to present conclusions that future researchers can build upon in their own research. In contrast, whilst a patent specification also covers technical subject matter, it is primarily a legal document that aims to set out the terms by which the patent owner and others will be bound. Accordingly, even though a patent specification should always be read through the eyes of a relevantly skilled person, it is written with public officials such as patent examiners, judges and business partners in mind. It is also often drafted around a particular commercial objective.

In light of these differences, the contribution and relevance of patent literature must be assessed in a different manner to non-patent literature. The purpose of this article is to cover some useful tips on how to read and understand prior art patent literature more efficiently.

Don’t just read the claims

The general structure of a patent specification is: title, abstract, background, summary of the invention, detailed description of the invention, examples, claims, and figures. It is useful to read the title and abstract to get an indication of the field of the invention. However, inventors often then immediately jump to the claims to ascertain what technical information is disclosed. In practice, we often encounter inventors who solely focus their review of a prior art patent on the claims. Some inventors deduce that because the claims seem to be quite different from the field of their own invention, the patent is not relevant.  Alternatively, they conclude that because a particular feature of their own invention is not disclosed in the claims, their invention must be new in view of that patent. At first blush, these are reasonable assumptions – after all, the claims should define the invention.  However, this kind of analysis is erroneous – the new invention must be assessed against the entire disclosure of the prior art patent specification.

It is useful at this point to understand what can influence the subject matter of the claims of a patent. In some cases, applicants disclose multiple inventions in a single patent application, but only pursue the main (or most commercially relevant) invention in a first application. Accordingly, just reading the claims will not necessarily give a clear picture of other inventions that may be disclosed in the patent specification. Further, for commercial reasons, claims can sometimes be directed to a specific embodiment of the invention, but a broader form of the invention contained in the detailed description may be highly relevant. An additional complication is that different claims can be pursued in different jurisdictions.

It should also be remembered that, until the claims are granted, they are a work-in-progress. In the usual course of events, patent applications are filed and initially published with broad claims. During the patent prosecution process, the claims are examined and typically narrowed in view of prior art raised by the examiner, and the patent is again published at acceptance/grant with those narrower claims. Under some circumstances, claims can also be amended post acceptance/grant, in which case the patent will be published again.

Therefore, for the above reasons, it is certainly useful to read the claims – but it is more important when evaluating the disclosure of a patent specification to read the detailed description in full, including, in particular, the examples.

It is also worth noting that the status of the patent – i.e., whether it was/is granted, in force, lapsed or expired, is not a relevant consideration when assessing the disclosure of the specification.  Patent documents cannot be dismissed on the basis that they did not proceed to grant or are not currently in force.

Scrutinise the examples

In many cases, applicants have limited resources and only generate a limited number of embodiments of the invention for inclusion in a patent application.  In order to maximise the commercial value of that patent application, the attorney handling the case will usually claim the invention broadly around that limited number of embodiments. Of course, the reason for claiming broadly is to cover enabled, routine alternatives and to maximise claim scope up to the limit of what has been previously disclosed.  In practice, the intent is to claim broadly enough to overlap with the prior art and then amend during prosecution up to the limit of the prior art, or to what is not obvious in view of that prior art. Claiming broadly can also reduce the likelihood that an infringer can avoid infringing the claims.

The net result can be, however, that inventors narrow the claims to their own inventions in view of patent prior art that makes broad claims, or worse – they may set aside their invention altogether.

A better starting point for inventors is therefore to review the examples of the prior art patent and compare their new invention against those actual examples to ascertain whether their invention is new. If there are similarities between the actual examples and a potential new invention, it is then prudent to consider whether the similarities are likely to constitute routine alterations or substitutions (an ethyl group for a methyl group in a chemical compound, for instance) or would otherwise be unlikely to have any measurable effect (a slightly different percentage of a non-active excipient, for instance).  Conversely, if there are one or more differences between actual examples and a new invention that appear to give rise to a surprising or unexpected technical effect (superior efficacy or stability, for instance) – then an inventor may be in a position to argue novelty and inventiveness over a patent disclosure with broad claims.

As mentioned above, patent applications are not peer reviewed, meaning the validity of the technical information in a patent (i.e., experiments in the examples) is not subject to the kind of scrutiny that a peer reviewed journal article will receive.  Because the technical information in a patent will only be assessed in patent validity proceedings, the information is usually assumed to be accurate by a patent examiner. Accordingly, it may be worthwhile repeating experiments in a highly relevant patent specification where the accuracy of the results is in question. This may assist in overcoming inventive step rejections over that patent prior art.

Pay attention to detail – but don’t be deterred by a broad specification

In addition to having broad claims, it is very common to encounter patent documents that include long lists of options and alternatives – be these applications (e.g., medical conditions), active ingredients (e.g., substituents and/or chemical compounds), non-active components (e.g., excipients, stabilisers, colours), physical parts (e.g., joints, adhesives, materials), etc.  Such lists are often included during drafting to demonstrate how components in specific examples can be replaced or altered in a routine manner without departing from the spirit of the invention (in patent terminology, to meet support and enablement requirements).  However, in practice, a patent applicant has rarely tested each and every combination.  Therefore, a new invention that combines selected features from across multiple lists and thus appears to be disclosed in a broad patent document is not necessarily anticipated.  If there were certain technical barriers that had to be overcome to make that combination, for example, or the combination gives rise to a surprising or unexpected technical effect – there is scope to argue rejections over broad patent prior art disclosures.

Notwithstanding the above, it is worth remembering that features which are not explicitly disclosed in a patent prior art document can be implicitly/inherently disclosed. Accordingly, it is important to read patent prior art through the eyes of the skilled person.

Finally, although terms in patent documents are usually given their ordinary meaning in the relevant art, it is permissible for the description to give terms special meanings.  That is, the patent might be its own dictionary.  Furthermore, different attorneys may use different terminology to refer to a feature. Because the language of a patent is very important, and misunderstanding or misinterpreting a technical term or even a commonly used word that has a very specific meaning in patent specifications (e.g., “consisting” in a patent specification is generally interpreted in the exhaustive sense) can lead researchers astray, it is important to read the patent literature carefully to ensure that a relevant disclosure is not dismissed due to terminology differences.

Conclusions and summary

Patent research is a tedious task and sometimes a researcher may dismiss a prior art patent on the basis of a title or abstract, or even the claims, when the relevant disclosure is contained in the examples or detailed description. For this reason, we recommend reading patent documents in full, paying particular attention to the examples.  In this way, you can provide your attorney with valuable information on the content of a prior art patent as read through expert eyes, which can streamline the patent prosecution process. More importantly, this may reduce the possibility of dismissing valuable IP in view of, for example, broad patent prior art disclosures.

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 Paul Harrison