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

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

4 min read

The sentence above is a quote from a journalist, Sharon Begley, in an article interviewing the astronomer, Carl Sagan, and is often misattributed to him.  How does it apply to patent searching?  You’re the one with an idea for the incredible something, and you will want it known, but as I often see, just because that something isn’t known to you, doesn’t mean it isn’t known.  A brainwave today just may have been someone else’s one hundred years ago too.

I’ve recently been telling you how to conduct aspects of your search, but I’ve never mentioned where you should go to conduct it, or why.

If you want to know if your idea is new, you’re going to conduct what is known as a novelty or patentability search.

You’re in Australia, you’ve heard of IP Australia, and that leads you to AusPat, or you’re in New Zealand and you find your way to IPONZ, and so on around the world.  Is a search there enough?  Not really.  Novelty is global these days, and goes back further in time than either of those two, or any, databases cover.

While there are a few commercial patent databases available, you’re going to have search one (or more) of the freely available databases that contain a collection of patent applications from around the world.  There are a couple of good collections by intellectual property organisations.  These are WIPO’s PatentScope and the European Patent Office’s Espacenet.  They don’t cover every country but they do have country coverage pages, so if you are particularly interested in a country not covered, you may have to go directly to that country’s national patent database.

A few other freely available collections not run by intellectual property organisations include Google Patents and The Lens.  Try them all out as the interfaces are different, and you will find one is more comfortable and intuitive to use.

A second type of search that might commonly be undertaken at a layperson’s level, although far more risky if you get it wrong, is a freedom to operate search, sometimes known as an infringement or clearance search.  This time you’re interested in knowing if you will be infringing someone else’s rights by importing, manufacturing or selling a product.

In this case you generally only need to consider the country or countries you will be doing any of those things in (bearing in mind that imporrting and exporting patented goods and processes is something of a legal minefield), so if that’s Australia you only need to search in AusPat.  The other aspect of a freedom to operate search is that you only need to search applications or patents with a live status, or in AusPat speak, an ‘active’ status.  You may also need to consider any application that recently became inactive as they could be restored to an active status.  If you’re searching in a database that doesn’t allow status searching then a useful substitute is restricting the search to filing dates less than 20 years old (or 25 if you’re searching for a pharmaceutical).  You’ll be searching through some inactive statuses but you will capture all active applications.

You can still use the collection databases above but you’ll also have to add a country restriction to your search.

If you want to find the location of your national database, here is a good place to start.

A third useful type of search is a state of the art search, or landscape search.  This is where you want to know what’s out there in a particular field.  As you’re more interested in what’s new, think of it as a date restricted novelty search, so instead of searching back as far as you can, possibly beyond the first instance of the field, you should restrict the filing date to a recent period such as the last ten or five years, depending on how fast the technology is moving.  The most useful databases in this instance are the collection databases.

There is one last type of search you may have heard of, which is an invalidity or validity search.  The two names appear contradictory but it just depends on which side of the pitch you’re on, whether you’re attacking or defending.  It’s unlikely a layperson would ever have to conduct a search such as this, but think of it as a novelty search on steroids.  You not only look at patent literature but also scour non patent literature as well, digging and digging until you’ve exhausted your options or your budget.  A good novelty search takes me somewhere around five hours to complete, but an invalidity search will take many more than that.

So, go somewhere and look for that incredible something, and if you can’t find it, it’s already yours.

6 min read

You’re probably already lacing up your running shoes at the very thought of the mention of the International Patent Classification (IPC), but please stick around; I promise this will be almost painless.

If you’re like me, your introduction to the IPC was a seemingly random string of letters and numbers rolling off someone’s tongue.  It made no sense at the time, and yet, despite the years, when one might think they have it down pat, there are still times when it’s a head scratcher.

I’m going to try to help you, firstly, find the right patent classification for your idea, and secondly, help you use that information in a meaningful way, but before all that, a few letters and numbers.

A typical IPC classification looks like A61K31/192.  This one happens to relate to pharmaceutical compositions containing ibuprofen, but let’s break it down into its constituent parts.

An IPC classification is composed of five parts: section; class; subclass; group; and subgroup, each building on what has come before.  In the example above the section is A; the class is A61; the subclass is A61K; the group is A61K31, and the subgroup is A61K31/192.

Sometimes you’ll see IPC classifications with a space between the subclass and the group, or with some extra zeros in the group numbers.  They all mean the same thing.

There are eight sections, labelled A to H, and these cover broad technology areas as follows:

A             Human necessities

B             Performing operations; Transporting

C             Chemistry; Metallurgy

D             Textiles; Paper

E              Fixed constructions

F              Mechanical engineering; Lighting; Heating; Weapons; Blasting

G             Physics

H             Electricity

These sections get subdivided and further subdivided until you end up with these figures for the most recent iteration of the IPC published in January 2020.

Eight sections – 131 classes – 646 subclasses – 7518 groups – 68030 subgroups.

I know those are daunting numbers if you want to find the right classification but the IPC is a hierarchical system that is laid out in a very orderly fashion.

Here’s the IPC layout for A61K31/192.

A61K31

There are a series of dots known as 1-dot subgroups, 2-dot subgroups and so on. All 2-dot subgroups are subsets of 1-dot subgroups, and 3-dot subgroups are subsets of 2-dot subgroups.  What we are aiming for is the last possible subgroup into which we could put our idea, or in this case, ibuprofen.

We’re looking for pharmaceutical compositions containing an organic compound which brings us to the group A61K31.  Ibuprofen is an acid, so A61K31/185 (1-dot).  It’s also a carboxylic acid, so A61K31/19 (2-dot).  It’s not an acyclic carboxylic acid so we drop down to the next 3-dot, and it is a carboxylic acid having aromatic groups, so A61K31/192.  It doesn’t have two carboxyl groups nor does it have an amino group, so we stop at A61K31/192.

Still here?

I can’t imagine I’ve made your views on the IPC more positive so far, but this is where I make it easier.

The bottom line is:  Forget about all those dots (if you want).

The easiest way to find the right classification for your idea is to use the knowledge of someone who knows the IPC inside out.  Conducting a narrow keyword search for your idea should bring up earlier patent applications in the same technology area.  All of these earlier applications will have an IPC classification on their front page, and they are there because a patent examiner or searcher has determined they are relevant to each of those inventions.  The subgroups (e.g., A61K31/192) might be different but you will find that they all have the same group (e.g., A61K31), and it’s the group you’re after.

Now you can look up that IPC group online and see if you can further classify your idea.  Then, in AusPat for example, you can conduct a search for an IPC classification (or IPC Mark as it’s described there) by looking for A61K31/* as in our example.  The /* after the group is necessary for the search to capture all of A61K31 in this database.

Another method of finding the right IPC classification is to use a tool such as the IPC Search tool.  For this I’ll go back to the battery powered surfboard idea from my previous article on quick patent searches.

A search in the IPC Search tool for “surfboard” brings up two classes which are for two different subgroups in the group B63B32 (water sports boards).

Unfortunately for my example’s purposes, WIPO has just created a new class for surfboards or water sports boards in general.  In the 2019 edition surfboards were classified within a class for vessels adapted for special purposes, so until the relevant patent applications are reclassified we also have to search the subgroup B63B35/79.

Doing the same thing for “battery” gives 75 or so results, which should be expected for something that occurs in multiple applications including vehicles and circuits, and also has a military definition.  We need to check each classification until we find the one most appropriate for our needs.  In this case it is H01M.  We are at the subclass level now as the different groups cover various types of battery.

In the previous article we focussed solely on keywords to reduce the number of patent applications to consider in a search for a battery powered surfboard.  The keyword search gave us about 300 hits in the search results.

It would be possible to combine the classifications we have found in a search that looks for patent applications in both the surfboard and battery classes.  It’s not something I do a lot of, and is mainly for trying to pick out a combination of features that has been described in an unusual way or misclassified within the class of interest, such as describing a surfboard as a water sports board.

If we do that search we get about 30 hits in the search results.  It’s not too many, and useful to consider them even if they would also appear in the next couple of searches as well.

The following searches are essentially backups to the earlier keyword search, where we will swap one of the keywords (or set of keywords) for the equivalent IPC classification.  I previously identified the following variations on describing a surfboard:  a surfing board, a watercraft board, a water sports board, a surfing device, and a surf board.  There could be others, but chances are most of them have been classified in B63B32 or B63B35/79.

The search then is, (IPC = B63B32 OR B63B35/79) AND (keyword = battery OR batteries OR …).  You would also need to find a set of keywords that describe a battery.  Doing this search gives about 350 hits, which is consistent with the keyword only search.

Searching the other way round, i.e., (IPC = H01M) AND (keyword = surfboard OR surf board OR …) gives about 50 hits.

Putting all these four searches together gives about 400 hits because there is a lot of overlap between them, but you are getting more than a keyword search alone, so the IPC can be invaluable even at a very high level to provide additional patent applications you would otherwise have been unaware of.

So, take a deep breath and dive into the IPC as far down as you dare.  Even just having a paddle can make your searching much more effective.

Authored by Frazer McLennan and Charles Tansey, PhD

6 min read

I often hear that a patent search won’t take long, or it will be a small search, or get asked to do a quick search, and in some cases that’s probably right, but in other cases, by which I mean most, things are not always as small as they appear.  I’m going to risk expulsion from some secret society by pulling back the curtain and revealing some the black magic that occurs when someone asks for a patent search.

Why do people think a search will be small or not take long?

Perhaps they only know of three or four other companies that do what they do, or that the idea is a relatively simple concept, or that you only need to look for the doohickey part of the whole thingamajig, or that whenever they’ve done a search they only get a few results to look at, or maybe they just don’t understand the scale of what constitutes patent literature.

Two estimates, made in the last three or four years, of the total number of patent applications filed put the figure at about 90 million, and between 80 and 100 million.  If you want something a little more concrete, WIPO says that there are just over 56 million patent applications up to the end of 2018, which is close, but they’ve only been keeping count since 1985, so it’s definitely an underestimate given there are a couple of hundred years of applications they haven’t counted.  This number is set to rise, and rise exponentially.  To single out the highest filing country of recent times, China became the first country to file over one million patent applications in a calendar year, which happened in 2015, and just three years later they have increased that by half again.

The exact number, or even a credible estimate, doesn’t matter.  It’s a big number, and there’s no way any one of us can look through them all.  The thing is though, we have to, and when it comes to your idea, and I mean Your. Actual. Personal. Idea., at the point you say “Can you do a quick search on…”, every one of those 100 or so million patent applications is relevant, and they remain relevant until I can find a reason to exclude them.  What’s left after I find those reasons are your search results.  That’s going to be a relatively tiny number, and that’s what makes a patent search look small or quick.

So how can you exclude millions of potential search results?

The fastest way to get a more manageable set of results is to apply a patent classification code.  A patent classification code is assigned to a patent application when it is filed, and then further refined upon examination of that application.  You’re relying on people with experience in a subject matter field to say that this patent application belongs in this patent class, so when you apply that patent class in your search, your reason for excluding some of those 100 million patent applications is that other people­—experts—say they aren’t relevant.

If we take one patent classification code relating to pharmaceutical compositions containing a chemical compound as the active ingredient, and apply it at its broadest level, A61K31, to that 100 million, we already bring ourselves down to fewer than 3 million patent applications.  We’ve already excluded 97% by broadly applying a patent classification.

Patent classification systems are something for another day (but if you’re keen here’s the IPC and the CPC) so I won’t go too deep, but if you’re looking for something common such as esomeprazole (Nexium), the relevant classification is A61K31/4439, which brings us down to fewer than 70 thousand patent applications, so you have excluded over 99.9% of all patent applications.

Keywords can also be useful tools for excluding patent applications you don’t need to consider.  Some aren’t so useful, such as the brand name for midazolam, which is Versed.  Versed is also a word used in patent applications, commonly found at the end of a specification in a sentence that includes the words “… those versed in the art will appreciate …” that indicates subject matter experts will understand that some minor differences in the invention are obvious, but that doesn’t assist anyone in a search for midazolam by increasing the number of search results by tens of thousands.

Even if you have a keyword that will be useful and restrict your results to a manageable level, you still have to be aware of variations on that keyword.  The English language is very colourful and allows for a wide range of potential descriptions for a single object.

Consider a surfboard.  It’s a well known object and you would be hard pressed to find someone who described it otherwise when asked.  I’ve had a quick look and I can find reference to a surfing board, a watercraft board, a water sports board, a surfing device, and of course, a surf board (with the space between the words).  In terms of how much that restricts your search, ‘surfboard’ provides 15 thousand results while ‘surf board’ provides 80 thousand.

What’s even more useful than a single keyword is a combination of two or more.  We can take an object (the surfboard) and combine it with an essential feature (and apologies to anyone whose hopes and dreams I’m just about to destroy, a battery).  Combining these two sets of keywords so that we are locating them essentially within the same paragraph in a patent specification, i.e. (surfboard OR surf board) NEAR (battery) we can whittle down the 100 million patent applications to just 300 or so, which is eminently searchable.

The last method of reducing the number of search results you have to consider relates to the type of search you are undertaking.  It’s really a novelty search or a validity search that has to consider all 100 million patent applications as relevant at the start of a search.  An infringement search or freedom to operate search has features that automatically reduce the overall numbers to consider, and that’s before you start to think about patent classifications or keywords.  These searches are restricted to a single country, so with the pharmaceutical class A61K31 above, we have already reduced that number by 75%.  These searches are also restricted by filing date to patent applications that have a live status, which in most cases is within the last 20 years, or the last 25 years for pharmaceuticals.  To continue our pharmaceutical example we have removed a further 50%, and that’s before we even consider what the actual status is.  If you were to look through Australian patent applications in the broad pharmaceutical class A61K31 that have a live status, you would be looking at just over 20 thousand records, which is a lot less than the 3 million we found above.

With most of these examples the numbers of search results are still enormous and I’m not saying you would search them but it shows you how the application of a few parameters, alone or in combination, can substantially reduce them to a manageable level, and make that ‘quick’ search, well, quick.

Authored by Frazer McLennan and Charles Tansey, PhD

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

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

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

Patent families table 1

Simple

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

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

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

Patent families table 2

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

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

Complex

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

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

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

Patent families table 3

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

So, what’s the solution…

Extended

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

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

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

Patent families table 4

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

Technical

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

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

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

Patent families table 5

National

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

Domestic

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

Where can you find patent family data?

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

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

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

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

Authored by Frazer McLennan and Charles Tansey, PhD

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

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

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

Here’s the Quick Search page.

quick search page

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

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

design numbers

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

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

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

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

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

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

classification codes

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

design classification codes

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

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

select images

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

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

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

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

Authored by Frazer McLennan and Charles Tansey, PhD

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

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

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

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

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

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

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

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

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

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

If not, there’s always this for afterwards.

Authored by Frazer McLennan and Charles Tansey, PhD