8.12 Search Activity – Finding an EST (fuel cells) and determining freedom to operate using the IPC Green Inventory and patent family data

Your client, the government of Brazil, asks you to investigate a particular technology relating to fuel cells. You are told that a patent application has been filed for a fuel cell with an electrode made from a carbon material which can be for instance fullerene, carbon nanotube, carbon nanofiber or metal encapsulated fullerene. You are also told that there is a company Fullerene USA, Inc that wishes to bring such fuel cells into Brazil. Using the Inventory to identify the appropriate IPC and whatever other information you may find, locate the relevant patent application(s) and/or patents and report whether the Brazilian government is free to utilise the invention covered by such patents to produce fuel cells for the Brazilian market.

Answer to search Activity 8.12

Step Description of step

Model answer

1 What clues do you have?

Possible search terms: Fuel, cell, electrode, carbon, inter-alia fullerene, carbon nanotube, carbon nanofiber (or nanofibre), metal encapsulated fullerene

Applicant: Fullerene USA, Inc.

2 Which databases will you us?

Espacenet;

the Lens www.lens.org

3 Identify the appropriate IPC from the Green Inventory

Access the Green Inventory at http://www.wipo.int/classifications/ipc/en/est/

Most appropriate IPC : H01M 4/96 Carbon-based electrodes

4 Search in Espacenet

Select Advanced search and use:

- in the Title or abstract field: Fuel* cell* fullerene nano* metal*

- in the Applicant field: Fullerene- in the IPC field: H01M4/96

5 View the result list then click on the title

US6706431 or US2002061433.

6 Select INPADOC patent family

No Brazilian family member

7 Check with another database:

www.lens.org

Click on the title:

Click on Family info:

Again no Brazilian family member

From the Brazilian patent database (searched by applicant “Nome de depositante”: fullerene

No patent found for Fullerene as an applicant in Brazil

8 Conclusion The Brazilian government is free to utilize in Brazil the invention protected by US6706431 because there is no family member in that country. (Though in practice best to check with the Brazilian Office)