“Since using Clerq, we regularly find new and highly relevant prior art that proves to be very useful in attacking patents in oppositions, without having to do external searching.”

Background

Dr. Matt Barton is a highly experienced patent attorney who represents parties before several agencies including the EPO, UKIPO and WIPO. As a partner at the IP firm Forresters IP LLP, Matt plays a pivotal role in the firm’s EPO opposition practice, building invalidity arguments that challenge competitor patent rights. This process is vital to the interests of Matt’s clients seeking freedom-to-operate (FTO) in European markets.

Matt’s technical specialty is in metallurgy, specifically aluminum alloys and methods of processing and production. Working with international clients, much of his practice is devoted to identifying prior art critical to invalidate patents under European law, including identifying prior art that shows a claimed invention does not provide a sufficient inventive step. Although this analysis is similar to obviousness under U.S. law, the different standards between jurisdictions often require additional prior art searches to obtain references that more closely match the EPO’s problem-solution approach to analyzing inventive step.

Problem

Chemical mixtures – such as metal alloys, formulations, and blends – pose a particularly difficult problem for patent attorneys searching for relevant prior art. Unlike novel small-molecules, innovations in this field have no fixed molecular structure to search against; they're defined by ranges of several elements rather than a discrete structure. Thus, structure-search tools that work well elsewhere in chemistry aren’t useful in this context, and keyword searching makes it easy to miss references that describe a composition in different terms. Some patents claim specific weight-percent ranges or other percentage measurements, while others describe an advantageous property in functional language. 

There are additional complications posed when searching for prior art in different jurisdictions – a problem faced often by Matt who serves clients operating business across borders. In a particular case, involving the opposition of EP3839085, claiming a method of manufacturing auto body components from high-copper aluminum alloys. The prior art he initially relied on made no reference to the alloy's high copper content, a gap he identified only after the patent owner's reply.

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“Even if I were to use an external search firm, it’s me who’s going to run the case, so I know the silver bullet I need. Clerq helped in this case because I was able to tailor the results to include the critical high-copper feature.”

Solution

Working with prior art provided by a U.S. law firm, Matt knew that the available references did not provide the proper support to sustain EPO opposition proceedings based on different standards at the EPO. He turned to Clerq, running a search on the ‘085 patent itself and by prompting Ask Clerq to find results claiming alloys with high copper content. Honing his results in this way, Matt’s use of Clerq led to several practical impacts contributing to a successful outcome for his client:

• Highly Relevant Prior Art Identified: Using only the patent number as input, Matt instantly uncovered several references reading directly on the high copper content of the claimed aluminum alloy by performing a prior art search that wasn’t strictly constrained to percentage ranges.

• References Met High Relevancy Standard: At the EPO, late-filed documents are only accepted if they are prima facie relevant to validity of the patent challenged through opposition proceedings. Three prior art references identified by Clerq were admitted into the EPO opposition proceedings, even though they were late, because they met this standard.

• Claim Scope Successfully Narrowed: Once admitted, these references required the patent owner to retreat to a second auxiliary set of claims, a patent owner’s third choice after main and first auxiliary claim requests. This significantly limited the claim scope of the challenged patent, providing Matt’s client with better freedom-to-operate.

Since 2024, Matt relies heavily on Clerq's search and analysis functionality (Ask Clerq and Relevance Analysis), giving him more directly applicable insights that he uses to craft oppositions. “When the client instructs me, I ask them if I can go ahead and search in Clerq, and they’re generally happy for me to do that as we often find crucial results that would have been missed otherwise.”

Nowadays, when a new case comes in, Matt goes directly to Clerq first instead of using external search firms. Not only does Clerq save him the cost of outsourcing, the platform does a much more effective job of finding relevant references that he can iteratively refine and validate for relevance, which it does instantly. On average, he is able to find relevant references in  ¼ to ⅕ of the time it would take using traditional tooling. 

Clerq hasn’t just helped Matt achieve more successful oppositions, it has also served as a useful business development tool by identifying documents that signal pathways toward new oppositions, Matt reports. Using Clerq, he has regained control over patent research tasks in a way that fits into his practice and the firm’s business model, while also improving outcomes for clients by identifying previously undiscovered but highly relevant prior art. The success Matt has achieved with Clerq has led Forresters to expand its licensing of the Clerq platform across multiple offices to support opposition proceedings firm-wide.