Changes to UKIPO trade mark search

The official British trade marks database at http://www.ipo.gov.uk/tm/t-find/t-find-text/ has been revamped. As of today.

The old "beta search" option has now become the default format, so that searches can be for within phrases (so that Manchester United will be picked up by a search for "teruni" as that is within the words).

There is also the possibility of searching by Vienna Classification for e.g. the appearance of a mountain. This can be combined with a word. You click through the boxes, as with the design database, to identify the relevant classes. If the user is uncertain the Classification itself has to be used, at http://www.wipo.int/classifications/nivilo/vienna/index.htm . I don’t think there is a link to it on the site.

Advice is supplied on how to do these things on the right hand side. Useful, if a little limited.

The hitlists include images even if words were asked for (some marks contain both elements).

My only slight quibble is that you have to remember to select Image at the top if you want an image, otherwise it assumes a word search is going on when you select a Vienna class. An error message then appears.


Steve

Steve van Dulken
British Library

"FYI - The new revamped database also allows you to 'add' selected trademarks to a 'pick list' along the lines of the 'my patents list' in Espacenet - Maria"

Wellcome Library’s “Free For All” training session

Today I went to the Wellcome Library’s “Free For All” training session on free medical history resources on the web – potential sources to point people with medical history queries that turn up in the patent inbox.

This was mainly a list of recommended sites:

US National Library of Medicine history division, http://www.nlm.nih.gov/hmd/index.html - wide range of online exhibitions, large image collection, a small but increasing collection of digital books, and “Profiles In Science” on prominent figures with digital documents. Also a lot of catalogues to indentify material.

Karolinska Institutet: http://www.mic.ki.se/History.html - Massive list of links to medical history websites and articles, in English. Not easily searchable as you have to read through the pages.

PubMed Central: http://www.pubmedcentral.nih.gov or http://ukpmc.ac.uk – Archive of freely-accessible academic medical articles, including some notable journals digitised back to the 19th and early 20th centuries.

Bibliotheque Interuniversitaire de Medicine, Paris: http://www.bium.univ-paris5.fr/histmed/ - French-language website with a huge range of digitised historical texts, including English-language material – look under “Editions electroniques”.

Medhist: http://medhist.ac.uk – Indexed and searchable web gateway to quality history of medicine resources edited by staff at the Wellcome Library.

Of even more interest is that I discovered that the Wellcome Library has a collection of British patents on medical subjects up to 1906 that can be searched through their online catalogue by applicant, title and patent agent. I’m still trying to find out if they have all medical ones and what the earliest date is – unfortunately the patent years given initially on the catalogue are publication years, so everything’s about a year later than it should be and all the pre-1852 stuff is dated 1853 or 1854 by when it was printed. Have a play around, it’s a free search facility for material that has no other free database. Go to the search by document type at http://catalogue.wellcome.ac.uk/search/m and type patent in the search box, then search within results using the “Limit/Sort” button.

They still won’t copy them, though, for the same reasons as we restrict.

Phil

Philip Eagle
BIPC - British Library

Interview with Wolfgang Pilch of the EPO

You might find this Richard Poynder interview with Wolfgang Pilch interesting

http://poynder.blogspot.com/2007/10/interview-with-epos-wolfgang-pilch.html

Important Changes to UK Trademark Procedures

From 1st October the UKIPO will not be rejecting trade marks if there is already a potentially-conflicting mark on the register ("relative grounds"). They will still reject inherently unacceptable marks ("absolute grounds") – ie not distinctive, descriptive of goods or service, offensive and so on. Instead they will tell the applicant and the holders of the previous mark(s) about any potential conflicts and leave it to them to negotiate a solution or fight out an opposition action. This is because the EC Community Trade Marks are not examined for conflict at all and applicants were unhappy about having their British trade marks rejected over EC marks which did not have to face that hurdle.
They will inform the holders of potentially-conflicting earlier British marks and Madrid marks with Britain as designated state automatically. However, holders of EC marks and Madrid marks designating the international EC scheme will only be notified if the holder has informed the UKIPO that they wish to be notified. This is a charged service and they have to register using a web form that will be put onto the UKIPO web site on 1st October. So that the site doesn't collapse under a rush, holders of EC or Madrid (EC) marks have until 20th October to register before the first batch of notifications go out. The potentially-conflicting earlier marks will be visible in the entry for the new application on the free UKIPO trade mark status database, but there will not initially be any reference to the conflict on the status page for the earlier mark (apparently there has been some demand for this in the meetings and it may be introduced later).
Under the new rules nobody will be able to bring an opposition action (a legal action to oppose the grant of a trade mark on the grounds of a conflicting prior mark) except the proprietor of the prior mark. For oppositions based on existing unregistered marks, anybody who would have the right to bring an action for common law passing off to defend the mark will also have the right to bring an opposition. Licensees of the earlier mark will only be able to oppose by bringing the action in the name of the proprietor with their permission ("intervention") but they will be able to bring an invalidation action after the mark is granted without this being necessary.
Current legal opinion is that any proprietor of an older mark who does not immediately oppose the grant of a conflicting application will not be prevented from bringing an action later by either the laches or acquiescence rules (whatever they are).
Philip Eagle
British Library

Patlib Conference Warsaw 2008

Planning is already underway for next years PATLIB conference and Sue Ashpitel (BL) is the UK representative on the committee.

The EPO is inviting suggestions from PATLIB UK members for a theme and a slogan for the conference - the EPO have provided some examples of the type of theme /slogan they are looking for;

1. Making PATLIBs fit for the future
2. The European Patent network
3. The role of PATLIBS in raising the quality of patent applications
4. PATLIBs - improving patentability
5. Strategic allocation within EPN of target audiences (ie industry, SME's lone inventors , legal profession)

Your suggestions would be most welcome - please send them to Sue Ashpitel
not later than 13th September

Business Advice Open Days

The UK-IPO are visiting various parts of the UK - are they coming to a location near you?
http://www.businessadviceday.gov.uk/

Staff Changes

ABERDEEN

Muriel Dickson and Joy Grimmond are the new contacts for Aberdeen

GLASGOW

John McGuire will be leaving Glasgow libraries on 19th October

SHEFFIELD

Lynne Hinchliff is the new contact for Sheffield PATLIB