02 November 2019

Business and Technical Information from Patent Databases

Jane Lambert

An invention is a solution to a technical problem. When applying for a patent for an invention, the inventor has to file among other things a document known as a "specification".  Such specification must contain a description of the invention and any drawing referred to in the description and disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. In due course, the specification is examined by officials of the intellectual property office known as "examiners" for compliance with the legislation governing patents and published on the office's website for all to see.

As an invention has to be new and involve an inventive step to justify a patent, such publications are important sources of scientific and technical information.  Many of those publications are held on giant databases such as the UK Intellectual Property Office's Ipsum, the European Patent Office's Espacenet and Google Patents.

These are two good reasons for consulting such a database.  The first is that you have an invention for which you seek a patent. You will want to check the prior art to ascertain whether your invention really is new and does involve an inventive step.  In almost every case your patent attorney will do that for you when you first instruct him but, if there is something out there that you can spot for yourself, you can save yourself a lot of time and money and instruct him more effectively by making your own search.  The second good reason is to find out about the latest technology.  In Why researchers should care about patents, the European Patent Office offers three advantages:
  • Avoiding duplication of R&D efforts and spending; 
  • Finding solutions to technical problems; and
  • Gathering business intelligence. 
Henk Heus actually gives 10 Reasons Why Research Scientists Should Patent Search though these seem to be substantially the same as the EPO's (see 29 Oct 2015 GQ Life Sciences). According to Heus, up to 30% of R&D expenditure is wasted on duplicating research that has already been carried out.
Different databases will allow you to search in different ways.  With Ipsum, you need the application or publication number and the first page will look like this:

From the menu in the top right-hand corner, you can select the documents that you need.  Nearly every transaction relating to the invention will be recorded on Ipsum. So if you want to trace the prosecution history this is the place to go.   Espacenet and Google will allow you to search by proprietor, title and other search terms as well as by number.  These are the tools that you will use to make a more general enquiry,

When you find an invention that interests you can choose the full specification or the parts of the specification that interest you most such as the abstract, description, drawings or claims. The abstract will be a summary of the invention.  The description is essentially an instruction manual. It will identify the problem that the invention seeks to solve, discuss previous attempted solutions where they fell short. set out the solution in principle and then give an example.  It may do that by reference to numbered diagrams known as the "drawings".  At the end of the specification, there will be numbered paragraphs known as "the claims". That is the monopoly sought by the applicant.  Usually, the widest is expressed first and all subsequent ones tend to be narrower than the first rather like a matryoshka doll.    You should remember at all times that the specification is addressed to the "person skilled in the art", that is to say, the person or team of persons having the knowledge, skills and experience to make or use the invention.  Some words or terms may have a special meaning which is different from everyday usage.

While not essential, some introductory training in patent searching can help at the start.  Patent search workshops have been offered from time to time by the British Library and some of the other Business and IP Centres around the country. I shall be giving a short one-hour introduction to patent, trade mark and design searches and how to read patent specifications at the Menai Science Park on Angelsey between 13:30 and 14:30 on 29 Nov 2019 (see How to use Patent, Trade Mark and Registered Design Databases 2 Nov 2019 NIPC Wales). If you want to sign up for the class which is free, click here.

Anyone wishing to discuss this article or patents generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.

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