Information Sources in Patents [4th completely rev. ed.] 9783110550061, 9783110552263, 9783110550269

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Stephen Adams Information Sources in Patents

Guides to Information Sources

A series under the General Editorship of Ia C. McIlwaine, Michael W. Hill and Nancy J. Williamson

Stephen Adams

Information Sources in Patents 4th completely revised edition

ISBN 978-3-11-055006-1 e-ISBN (PDF) 978-3-11-055226-3 e-ISBN (EPUB) 978-3-11-055026-9 Library of Congress Control Number: 2020939685 Bibliografische Information der Deutschen Nationalbibliothek The Deutsche Nationalbibliothek lists this publication in the Deutsche Nationalbibliografie; detailed bibliographic data is available on the internet at http://dnb.dnb.de. © 2020 Walter de Gruyter GmbH, Berlin/Boston Typesetting: Integra Software Services Pvt. Ltd. Printing and binding: CPI books GmbH, Leck www.degruyter.com

Dedicated to: Brenda Rimmer, C.Eng., M.R.Ae.S. (1917–2011), whose magisterial work “International Guide to Official Industrial Property Publications” has been my constant guide throughout my career in patent information and to: Peter Adams, C.Eng., F.R.Ae.S. (1931–2012), role model, inspiration and father.

Preface to fourth edition The time interval since the third edition appeared in 2012 has seen no slackening in the pace of change in patent information. Although some challenges have remained the same – for example, the increasing number of active patent offices around the world – others have been less easy to anticipate, such as the continuing rise in the number of patent applications filed annually worldwide, and the decline in dominance of English as a major language of the source documents. Both of these latter factors have led to massive developments in the technology for machine translation of patent texts. Equally significant has been the development of computer-assisted tools at all stages of the patenting process, from the initial filing through examination, work-sharing between patent offices, granting and eventual publication of granted specifications. There is even speculation that IT systems of the future will completely replace the human work of search, if not examination. Despite all these changes in the processes within the patent community, the fact remains that any search is only as good as the sources used, and in my consultancy work I have to return time and again to the basic question – what does my database contain? No search engine, however “intelligent”, can find an answer if the relevant data items are missing from the data repository which is being searched. For that reason, I believe that there is still a place for a guide to the resources available for searching in patents. Note that this is not a guide to all the resources which a competent patent searcher may need to use when conducting a patentability search. With modern patent laws demanding universal novelty, this book has only undertaken the task of discussing sources of patent information, not sources of prior art as such; it is beyond my scope to discuss every source of non-patent literature which might impinge upon granting or validity decisions. The existing chapter on non-patent literature can only be taken as the briefest of overviews; each individual searcher needs to develop their expertise in this area, and the choice of significant information sources to use will depend heavily upon the technical domain in which they do their searching. The past years have seen a continued expansion of national economies in Africa, South America and parts of Asia. To reflect this, the current edition has added chapters covering the major patenting countries from these regions. The chapters covering the established patent systems of other nations have also been reviewed and updated. At the time of writing, it is still uncertain whether the European Union regulations concerning unitary effect of patents granted by the EPO will come into effect, either in their original form or amended after the UK’s exit from the EU. https://doi.org/10.1515/9783110552263-202

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There are always going to be some changes “in the pipeline” at the point where a book publisher’s patience finally runs out and the author is persuaded to stop amending their text and allow the publication presses to roll. For that reason, I am grateful to the liaison staff at Walter de Gruyter who allowed me to continue to work as long as I have, and to the staff at many of the organisations whose products are described, who have submitted to ongoing requests for the latest information. Much of the current awareness for the modern patent search professional has to come from personal networking and the painstaking collection of numerous pieces of isolated information, which build up into a coherent picture of what is happening in the industry. I am grateful for every such conversation – face-to-face or electronic – with colleagues, which has helped me in this process. On the human side, we have seen the process of professional registration for the patent searcher finally get underway with the formation of the International Standards Board for Qualified Patent Information Professionals (ISBQPIP). I am hopeful that the dedication of my contemporaries, searching patents within corporations and patent offices around the world, will be more fully recognised as a result. I trust also that the next generation of patent search professionals will have a heightened appreciation that their work – complex, dynamic, often multilingual and international – adds up to a fulfilling career path. It is my hope that both the experienced and novice searcher will find something in these pages which helps their journey. Stephen R. Adams, MCLIP MRSC

Preface to third edition In the brief space of five years since the production of the second edition, the pace of change in patent information has barely slackened. Even without feedback from reviewers, it became evident a short time after the second edition was printed, that revision would be needed given the extraordinary speed of development of patent information in East Asia, especially in China. As other countries have become more prominent in the world marketplace, they too have improved their IP regime in order to offer comparative levels of protection for foreign manufacturers seeking to set up a new manufacturing base. To address this, the current edition has concentrated new material on the so-called BRIC countries and the prominence of the PCT system. New chapters have also been included on the importance of the non-patent literature and on sources for establishing the legal status of a patent within a specific jurisdiction. The remaining chapters have been updated to take account of new procedures which affect the documentation seen by the searcher, as well as multiple changes in sources and web-page addresses – the patent information community is no stranger to the “broken link”! As with the second edition, many individuals have contributed to the continual flow of snippets of information which prove so challenging to collate into a coherent whole. I would particularly like to recognise the technical staff at many of the online services who have provided details of their content, the EPO’s Asian patent information team in Vienna, the Business & IP Centre staff at the British Library, and the speakers from national patent offices who have presented at the PIUG annual meeting over the last several years. Thank you all for your input and comments. I hope that the resulting text is a fair reflection of the enormous variety and complexity of patent databases and the work of the patent searcher in patent offices, legal practice or industry. Stephen R. Adams, MCLIP MRSC CChem.

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Preface to second edition Since the first edition of this book, edited by Peter Auger and published in 1992, a complete revolution has taken place in the dissemination of patent information. Technical developments – most notably the internet – have caused great changes in the information industry, including the patent sector. Perhaps the largest influence has been upon the nature of the databases emerging from different suppliers, which in turn affects our choice of the “right” database for a particular patent search. In writing a book which purports to be a “Guide to Information Sources” in the subject, I therefore feel duty-bound to give some space to considering how the current range of products has developed over time, and to provide some background on how patent publications come to be at all, rather than merely provide a shopping list of alternative search files. A fundamental point to recognise is that patent offices are required to publish information, as an integral part of the patenting process. The commitment to provide such data to the public was foreseen by the framers of the 1883 Paris Convention, who included Article 12, which states that: 12(1) Each country of the Union undertakes to establish a special industrial property service and a central office for the communication to the public of patents, utility models, industrial designs and trademarks. [i.e. to establish a patent office] 12(2) This service shall publish an official periodical journal. It shall publish regularly: (a) the names of the proprietors of patents granted, with a brief designation of the inventions patented; [i.e. to produce some form of gazette]

Despite the clear requirements of Article 12, there was – and still is – considerable variation in the degree of enthusiasm and commitment with which countries complied with this aspect of their operations. Some of the larger, wellestablished offices, such as the United States, the United Kingdom, Germany and France, have a history of producing regular documentation; others have a lessimpressive record. For many patent offices, however, generating this information is seen as essentially a spin-off product from the primary function of the office, namely to examine and grant patents. Few patent offices believed that the development of sophisticated retrieval tools should be part of their function. During the 1950s to 1970s, the commercial information sector took the lead in developing patent information into a more “industry-friendly” tool. The raw “first-level” data from the patent offices were obtained by pioneer information companies such as Derwent Publications in the UK and Information For Industry (IFI) in the US, and re-issued as “value-added” products, such as printed bulletins or batch-searchable (later online, interactive) electronic files. The patent offices were happy to co-operate with this, as it provided a means of https://doi.org/10.1515/9783110552263-204

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getting their information out to a wider audience than the small numbers of industrial users who could reach their public search rooms. Through to the early 1990s, the patent offices generally saw no mandate – or opportunity – to enhance their role by becoming direct suppliers to the end user. With the advent of the internet, the established chain of distribution (patent office-database producer-host-user) has begun to break down. Many patent offices are using the internet to supply their first-level data directly to the user. Some database producers have either begun to buy into the host industry, or to sell their products on a web-based platform, circumventing the hosts completely. As a consequence, users are being exposed to patent information products from multiple suppliers, with varying degrees of refinement. The same basic data set may now be available through many routes, resulting in a proliferation of products and services. Efficient searching depends upon both the data quality and the platform used to search it, and free internet sites offering first-level data from the major patent offices cannot deliver to every type of user, nor for every type of search requirement. Research-based industries rely upon good patent searching for their commercial survival, and are prepared to pay for access to premium tools if they provide the necessary degree of insurance against accidental duplication of research or – worse – infringement of others’ rights. Despite the growth in browser-based systems, these users largely continue to rely upon the established value-added data sources, with sophisticated command languages, developed prior to the internet. It is clear that the information sector has not seen the end of development in browser-based tools, and they will certainly have a role to play in the future of patent information systems. However, it will always remain true that the choice of “best database” for a patent search will be influenced by a complex combination of the information need (data source), the technical requirements (search engine) and the available budget (free or fee). It is the hope of the author that this work will help with the decision-making process, irrespective of whether the user is a beginner or more experienced searcher. I would like to give my sincere acknowledgement to the many friends and colleagues in the industry, who through useful discussions – both electronic and verbal – have contributed to the shape and substance of this book. There are too many to name individually, but many are co-workers in one or more of the various user groups in the UK, Europe and the United States. I hope that I have done justice in capturing your expertise for the benefit of all. Stephen R. Adams, MCLIP MRSC CChem.

Contents Preface to fourth edition Preface to third edition Preface to second edition Index of figures Index of tables

VII IX XI

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Part I: Patent processes and documentation Chapter 1 Principles of patenting 3 Legal processes 3 Patents as information tools 13 Bibliographic standards and the form of a patent document Special document types 25 References 31 Chapter 2 The European Patent system 35 History and development 35 EP patent documents – centralised and nationalised procedures Databases and database-specific aspects 50 Relationships with the European Union 53 References 56 Chapter 3 The United States Patent system 59 Historical aspects 59 Recent law changes 62 US patent documents 63 Databases and database-specific aspects National classification of US patents 79 References 80

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Chapter 4 The Japanese patent system 81 History of Japanese patents 81 Japanese patent documentation and recent law changes Databases and database-specific aspects 93 The Japanese patent classification and indexing systems References 100 Chapter 5 The Patent Co-operation Treaty 101 Background to the PCT system 101 PCT documentation 102 Databases covering the PCT system 112 Other WIPO information resources 116 References 119 Chapter 6 National patent systems of the G8 countries 121 Introduction 121 Canada 121 France 125 Germany 135 Italy 145 Russian Federation 159 Regional patent systems: the Eurasian Patent Organisation (EAPO) 169 United Kingdom 174 References 183 Chapter 7 Asia and Australasia 185 Introduction 185 People’s Republic of China 185 Hong Kong and Macao 197 India 206 South Korea 217 North Korea 227 Taiwan 230 Asian national systems 234 Australia 236

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New Zealand References

244 253

Chapter 8 South America and Mexico 255 Introduction 255 National patent systems in South America 257 Brazil 259 Argentina 267 Chile 272 Colombia 277 Peru 283 Cooperative systems in South America 288 Mexico 292 References 302 Chapter 9 Africa and the Middle East 303 Introduction to Africa 303 South Africa 310 Morocco 314 Tunisia 319 Algeria 324 Egypt 328 Kenya 334 Introduction to the Middle East 340 Israel 343 Saudi Arabia 349 Jordan 355 Iran 359 Regional patent systems in Africa and the Middle East References 372

Part II: Databases and search techniques Chapter 10 Patent guides and libraries 377 General directories and reference works United Kingdom patent libraries 379

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United States patent libraries 379 German patent libraries 380 The European PATLIB network 381 Japanese patent libraries 381 Chinese patent libraries 382 South Korean Information Centers 384 The WIPO TISC project 385 References 386 Chapter 11 National and multi-national patent information sources Paper sources 389 Optical disk (CD-ROM, DVD) 390 Linked disk+internet products 394 Proprietary electronic databases 396 Public internet sources 431 Controlled-access internet 448 References 455 Chapter 12 The non-patent literature for the patent searcher Legal background to non-patent literature use Open Access journals 460 Internet disclosures 461 Reference guides 462 Source indexes 463 Special library sources 464 Subject guides 466 Reviews 467 Tertiary literature 467 Other forms of literature 469 Conclusion 479 References 479 Chapter 13 Common search types (I) – alerting searches Standard bulletins 483 In-house strategies 486 Specialist suppliers 488 References 489

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Chapter 14 Common search types (II) – patentability and freedom-to-operate searches 491 The patentability search 491 The freedom-to-operate search 496 References 500 Chapter 15 Common search types (III) – portfolio and legal proceedings searching 501 The portfolio search 501 Validity and opposition searching 503 References 506 Chapter 16 Sources for legal status searching 507 What is “legal status”? 507 Services from patent offices 509 Multi-country sources 519 Third-party sources 528 References 531 Chapter 17 Commercial intelligence search and analysis 533 State-of-the-art searches 533 Patent analysis tools and techniques 535 References 538 Chapter 18 Specialist techniques 539 Citations 539 Patent classification 541 Additional non-word elements References 554

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Chapter 19 Future developments 557 The impact of the World Trade Organisation and WIPO 557 The Trilateral Offices and the IP5 561 Future developments in regional patent systems 561

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The future of patent searching? References 565

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Annex A: Member states of the PCT as of 2nd January 2020

567

Annex B: Numerical tables for reformatting national application numbers 573 Annex C: Website addresses of national and regional patenting authorities 579 Annex D: Comparison of the class-level structure of the CPC (2018.05 edition) and IPC (2018.01 edition) 605 Annex E: Selective comparison of Japanese FI classification schedules with the corresponding IPC 617 Annex F: The theme groups of the Japanese F-term system (2016 revision) 629 Appendix 1: Glossary of patent terminology Appendix 2: Index of abbreviations Index

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Index of figures Figure 1.1 Figure 1.2 Figure 2.1 Figure 2.2 Figure 3.1 Figure 3.2 Figure 4.1 Figure 4.2

Example time line for processing a patent family 12 The formation of a patent family 19 EPO search report header 40 Contents of European search report 41 US front page showing provisional filing data (INID 60) 67 Title header of a US Statutory Invention Registration 68 Japanese publication (INID 45) and grant (INID 24) dates 86 Headers for Japanese language (pre-1995 (a) and current (b)), and translated © PCT republications 89 Figure 4.3 Japanese national classification (INID field 52) 99 Figure 5.1 Numbers of PCT publications in each language group (1995–2018) 104 Figure 5.2 Publication sequence under the PCT system 105 Figure 5.3 Designated states listing on PCT front page (INID 81 and 84) 107 Figure 5.4 Example record from PatentScope showing the Documents tab 113 Figure 5.5 PatentScope CLIR strategy and sample results after query translation 115 Figure 6.1 Front page data – French unexamined publication 134 Figure 6.2 Eurasian Patent Organisation – unexamined application 172 Figure 6.3 Eurasian Patent Organisation – granted patent 173 Figure 6.4 UK republication of a PCT application entering national phase 179 Figure 7.1 Korean unexamined and accepted front pages 225 Figure 7.2 Taiwan publication numbers under old (TW 595872-U) and new (TW I 595872-B) systems 233 Figure 7.3 Total patent grant statistics 2015–2018 for active ASEAN states 235 Figure 8.1 Brazilian pipeline application numbering and kind code 263 Figure 8.2 Colombian patent register contents 280 Figure 8.3 Peruvian grant record from the PROSUR database 287 Figure 8.4 Contrasting copies of MX 351074-B 301 Figure 9.1 South African patent strength index 2010–2015 (after Papageorgiadis) 309 Figure 9.2 Front page of Moroccan patent validating EPO grant 317 Figure 9.3 Front page data on Egyptian documents indicating patent term 332 Figure 9.4 Sample announcement in Kenya Gazette of GB re-registration 338 Figure 9.5 Home page of ARIPO Regional IP Database 365 Figure 9.6 OAPI Bulletin entry and link (“Consulter le mémoire”) to corresponding specification 367 Figure 9.7 Gulf Cooperation Council Patent Office – old style gazette entry 370 Figure 9.8 Gulf Cooperation Council Patent Office – new style gazette entry (two parts) 371 Figure 10.1 Chinese industry support centres (website map) 383 Figure 10.2 The South Korea Regional IP Centers network (website map) 384 Figure 11.1 MIMOSA application searching ESPACE-ACCESS disks and linking to other servers 395 Figure 11.2 An example of a Markush (generic) chemical structure 428 Figure 12.1 The UNESCO Libraries Portal 465

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Figure 16.1 Figure 16.2 Figure 16.3 Figure 16.4 Figure 16.5 Figure 18.1

Index of figures

WON directory of public register sources 510 Continuity Data tab from Public PAIR 512 Example record (truncated) from EPO Register 515 EPO file inspection – table of contents 516 Global Dossier record via the USPTO (WO 2011/129660) 528 Family equivalents classified to different IPC levels 545

Index of tables Table 1.1 Table 1.2 Table 1.3 Table 1.4 Table 2.1 Table 2.2 Table 2.3 Table 2.4 Table 2.5 Table 3.1 Table 3.2 Table 3.3 Table 3.4 Table 3.5 Table 3.6 Table 3.7 Table 4.1 Table 4.2 Table 4.3 Table 4.4 Table 4.5 Table 4.6 Table 4.7 Table 4.8 Table 4.9 Table 5.1 Table 5.2 Table 5.3 Table 5.4 Table 5.5 Table 6.1 Table 6.2 Table 6.3 Table 6.4 Table 6.5 Table 6.6 Table 6.7 Table 6.8

Examples of some multi-lingual patent publishing authorities 15 Key WIPO standards for bibliographic control of patents 21 WIPO standard codes for regional patent authorities and intergovernmental organisations 22 Some important INID codes from ST.9 23 Members and Extension States of the European Patent Organisation 36 Translation requirements of European Patents after the London Agreement 45 European Patent publication stages 48 Summary of current (2019) EPO document codes 48 European Patent databases 51 Publication milestones in US patent history 60 US application number series codes 64 US publication sequence 66 US Re-issue publications 71 Summary of historical and current US KD codes 72 Redundant US KD codes 74 United States patent databases 77 Japanese Imperial Era and Western calendar dates 82 Japanese patent publication stages and number formats 85 Example of publication order under Japanese accelerated examination 87 Database numbering conventions for publication of PCT national phase entry documents in Japan 90 Japanese utility model publication stages and number formats 92 Additional KD codes for Japan 95 Selected Japanese patent databases with English content 96 Selected Japanese-only patent sources 97 Subject coverage of PAJ 98 Adoption date of publication languages under the PCT 102 Changes in PCT numeration 106 Operational status of the PCT International Search Authorities 108 PCT KD codes 109 PCT databases 117 Canadian patent databases 126 Formatting of French patent application numbers pre-1968 131 KD codes in France prior to 1968 and transitional period to 1975 132 French KD codes for post-1968 patent applications 133 French patent databases 136 German Intellectual Property Right numbering codes 140 German KD codes and sequences for national patent granting procedure 142 German KD codes relating to EPO, PCT, translation and corrections (2004 onwards) 142

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Table 6.9 Table 6.10 Table 6.11 Table 6.12 Table 6.13 Table 6.14 Table 6.15 Table 6.16 Table 6.17 Table 6.18 Table 6.19 Table 6.20 Table 6.21 Table 7.1 Table 7.2 Table 7.3 Table 7.4 Table 7.5 Table 7.6 Table 7.7 Table 7.8 Table 7.9 Table 7.10 Table 7.11 Table 7.12 Table 7.13 Table 7.14 Table 7.15 Table 7.16 Table 7.17 Table 7.18 Table 7.19 Table 7.20 Table 7.21 Table 7.22 Table 8.1 Table 8.2 Table 8.3 Table 8.4 Table 8.5 Table 8.6 Table 8.7 Table 8.8 Table 8.9 Table 8.10

Index of tables

German patent databases 144 Italian KD codes 151 Italian numbering systems for patents and utility models 153 Italian patent databases 157 Russian Federation application and publication number formats 162 Russian Federation KD codes 165 Russian patent databases 167 EAPO application number formats 171 EAPO KD codes 171 Extended GB publication sequence 180 United Kingdom KD codes (current) 180 Application process for Supplementary Protection Certificate in the UK 181 United Kingdom patent databases 182 Chinese numbering series 1985–date (patents) 189 Examples of Chinese patent numbering in use 190 Chinese numbering systems 1985–date (utility models) 191 Examples of Chinese utility model numbering in use 192 Chinese-language abbreviations for document types 193 Chinese patent databases 198 Application and publication number formats for Hong Kong 202 Indian application, publication and grant numbers (1972–2015) 210 Indian application, publication and grant numbers (2016–date) 213 Indian patent databases 215 Variation in term of Korean patents and utility models 220 South Korean numbering formats and KD codes (1948–1997) 221 South Korean numbering formats and KD codes (1997–date) 223 Korean patent databases 226 Application, publication and KD formats for DPR Korea 230 Taiwan numbering systems 232 Australian KD codes 240 Australian patent application and publication numbering 242 Australian patent databases 245 New Zealand KD codes (post 2017) 249 New Zealand application and publication numbering 250 New Zealand patent databases 253 Treaty and trading status of South American states (entry into force) 256 Major patenting authorities in S. America, based on average grant rates 2013–2017 257 Brazilian number formats 1971–date 262 KD codes used for Brazil (main series) 264 KD codes used for Brazil (unofficial translation series) 265 Brazilian patent databases 266 Application and publication number formats in Argentina 269 KD codes used for Argentina 271 Argentinian patent databases 271 KD codes used for Chile 274

Index of tables

Table 8.11 Table 8.12 Table 8.13 Table 8.14 Table 8.15 Table 8.16 Table 8.17 Table 8.18 Table 8.19 Table 8.20 Table 8.21 Table 8.22 Table 9.1 Table 9.2 Table 9.3 Table 9.4 Table 9.5 Table 9.6 Table 9.7 Table 9.8 Table 9.9 Table 9.10 Table 9.11 Table 9.12 Table 9.13 Table 9.14 Table 9.15 Table 9.16 Table 9.17 Table 9.18 Table 9.19 Table 9.20 Table 9.21 Table 9.22 Table 9.23 Table 11.1 Table 11.2 Table 11.3 Table 11.4 Table 11.5 Table 11.6 Table 11.7 Table 11.8

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Chilean patent databases 276 Colombian numbering formats 279 Application and publication sequences for Colombia 281 Colombian KD codes for published documents 281 Colombian patent databases 282 Application and publication number formats in Peru 285 KD codes for Peru 286 Peruvian patent databases 286 Decisions of the Andean Community in respect of patents 289 Mexican KD codes 295 Mexican number formats and publication sequences for patents and utility models 297 Mexican patent databases 299 Treaty status of African states 304 Major patenting authorities in Africa, based on average grant rates 2011–2015 310 South African patent databases 313 Numbering schemes for Moroccan patent applications and grants 318 Moroccan patent databases 319 Transition in Tunisia application numbering systems 322 Numbering schemes for Tunisian patent applications and grants 322 Tunisian patent databases 323 Algerian publication and Bulletin dates 327 Algerian patent databases 328 Numbering schemes for Egyptian patent applications and grants 330 Egyptian patent databases 333 Kenyan publication (grant) numbers by date 337 Kenyan patent databases 339 Treaty and membership status of selected Middle East states 341 Major patenting authorities in the Middle East, based on average grant rates 2011–2015 342 Patent rights scores for selected Middle East countries, compared to South Africa (after Park) 342 Israeli patent databases 348 Saudi application number formats 353 Sequence of publications from Saudi Arabia 354 Saudi patent databases 355 Jordanian patent databases 358 Iranian patent databases 362 Optical disk-based products produced under the EPO data standards 391 A selection of non-EPO disk-based products 393 Derwent Chemical Patents Index (CPI) sections 397 Non chemical sections of DWPI 398 Country coverage for selected multi-country databases 402 Example CPI and GMPI Manual Code hierarchies 415 Example Chemical fragmentation code hierarchy 416 Pharm country coverage 424

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Index of tables

Table 11.9 DEPATISnet full text coverage 436 Table 11.10 Google Patents full text coverage (2020) 437 Table 11.11 PatentScope full text country coverage (national collections, excluding PCT) 440 Table 11.12 Total Patent One, PatBase and PatSeer full-text content 442 Table 11.13 Principal country coverage of the WIPS Global service 451 Table 12.1 Example hierarchies from The New Walford, Volume 1 468 Table 12.2 Selected repositories and preprint servers 475 Table 12.3 Selected search engines for social media 478 Table 13.1 The Derwent range of patent current awareness products (2018) 484 Table 13.2 Bentham Science “Recent Patents on . . .” journals 486 Table 16.1 Selected Asian legal status registers 518 Table 16.2 INPADOC PRS and PatentScope legal status coverage (2020) 522 Table 16.3 Content of the Global Dossier system 528 Table 17.1 Patent analysis, visualisation and AI-assisted search tools 537 Table 18.1 IPC revision periods (1968–2005) 543 Table 18.2 IPC reform and ongoing revisions 544 Table 18.3 Variations in classification for members of the same patent family 548 Table 19.1 WIPO patent information activities 560

Part I: Patent processes and documentation

Chapter 1 Principles of patenting Legal processes The English word “patent” is derived from a Latin phrase litterae patentes, meaning “open letter”. For centuries, “letters patent” were a form of administrative communication from the State (be it monarchy or republic) to its subjects or citizens, to announce the conferring of certain privileges upon an individual, such as the granting of land, titles or privileges. Typically, the opening sentences might address the letter “to all to whom these presents come”. Letters patent are still issued in the United Kingdom by the College of Arms when a grant of arms is made to a new peer. Other uses are for the creation of a public office (e.g. Queen Victoria issued Letters Patent when creating the post of Governor-General of Australia), on the creation of a new public body, the transfer of land rights or in the commissioning an individual to a certain task, in which case the letters patent could be seen as a form of passport or warrant of authority. Letters patent were also issued in order to confer a State monopoly right over a trade or craft. During the 14th and 15th centuries in England, the Crown used the grant of monopoly rights to control trade in cloth and the manufacture of glass. This procedure was open to abuse, and the creation of future Crown monopolies was banned by the Statute of Monopolies of 1623a. However, this statute specifically excluded Letters Patent for “the sole working or making of any manner of new manufactures” issued to their inventors – in other words, modern-day patents for inventions. By the mid-19th century, the most common usage of a letters patent was for exactly this purpose, to confer rights in a new invention for a limited period, and consequently the layman’s understanding of the word “patent” has come to be limited to a patent for invention. On the development of patents as information resources, readers are referred to the introductory chapter of Liebesny’s classic book, unfortunately now out of print1. A more legal-orientated viewpoint is supplied by Grubb et al.2. A good

a The Statute of Monopolies is variously cited as 1623 or 1624. Acts of Parliament at this time came into force at the beginning of the Parliamentary session in which they were passed, not from the date of Royal Assent. Prior to the Calendar (New Style) Act 1750 (24 Geo. II c.23), the new year commenced from 25th March. Under the calendar system of the time, the relevant Parliamentary session started on 12th February 1623 and Royal Assent to the Statute of Monopolies, despite being only 3½ months later, was dated 29th May 1624. Using the modern calendar, both dates are in 1624; at the time, the Act would have been regarded as passed in 1623. https://doi.org/10.1515/9783110552263-001

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source for setting patents in the wider context of the whole of intellectual property is the 1997 publication by the World Intellectual Property Organization (WIPO) in Geneva, particularly the section on the history and evolution of intellectual property3. This is now out of print, and the successor publication4 unfortunately contains less of this background material. From the point of view of the information specialist, rather than the attorney, the prime importance of patents is not the legal rights to work an invention which they confer upon the patent holder, but the volume of technical information which is laid open to the public as a result of the granting procedure for the patent. The British Library in London holds stocks in excess of 100 million individual patent documents, capturing the progress of technology from the 17th century to the present day, in many countries around the world. The bulk of this present book will be devoted to the use of modern-day patent documents (say, from around 1950 to the present), but that is not to say that the older material is useless. Students of the history of technology can gain great insight from the examination of original patents for invention from the Industrial Revolution onwards. An comprehensive overview of the early English system and its social context is provided by McLeod5. Retrieval of older documents presents distinct challenges, for which the reader is referred to the work by van Dulken6 for British patents, or the briefer outline chapter by Comfort7 in relation to the United States. Further afield, background information on some historical patent series for a range of countries can be found in Rimmer8, Kase9, and at the beginning of each country chapter in the current book.

Defining a patent There are many definitions of a patent. One suitable statement, which the author has found to be a useful summary and is taken from p.1 of the 1999 third edition of Grubb (ref. 2) is that a patent is: – a grant of exclusive rights – by the state – for a limited time in respect of a new and useful invention. Each of those three aspects has a bearing upon our perception of patents and how we can use them as information tools. In respect to “a grant of exclusive rights”, this implies that a patent is not “for the taking”. The popular press often refers to patents as being “registered”, as if one merely has to turn up at some Dickensian establishment and submit your

Legal processes

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application to a large rubber-stamp, in order to walk away as a satisfied patentholder. The word “grant” carries with it the implication that certain fixed criteria need to be satisfied in order for the application to be allowed. Failure to satisfy these criteria will result in the patent being refused, irrespective of how good (or how expensive!) the research behind the patent application has been. In the information context we should never overlook the legal implications of the documents which we are using – many published patent applications are destined never to emerge as granted patents. The second aspect is that a patent is “by the state”. This implies that patents are not universal. There has never been a single global patent system, granted by a central authority and having effect in all the territories of the world. There are a few regional patent systems, which grant on behalf of a limited number of countries, but these are the exception rather than the rule. In general, if an inventor wants to protect their invention by patent, they must apply in each and every country individually, complying with local filing requirements and having their case examined under local laws. One consequence of this is that the same invention may be allowed patent protection in one country but refused it in another. In countries for which no protection is sought, no protection is obtained. The final aspect of our definition is that a patent is “for a limited time”. Again, the popular media image of patents sometimes portrays them as tools by which multi-national companies can dominate the market for a particular invention, in perpetuity. The fact is, that all patents eventually expire. The most common term of a modern patent is 20 years, counted from the date of filing the application. In addition to expiry at the end of this period, a substantial proportion of granted patents never reach their 20th birthday, but die earlier. If the owner finds that their invention is less of a commercial success than they hoped, they can choose to allow their rights to lapse when the next round of renewal fees becomes due. Once a patent expires or irrevocably lapses prematurely, any third party can enter this previously protected market space, and start to operate the invention, without being liable to the erstwhile patent holder for any royalty or other licence. The consequences of our three-part definition are multiple. For the information user, it is clear that we need to pay close attention to the various dates associated with a patent, its status (e.g. How far is it along the process towards grant? or, Is it still in force?) and its geographical limits. If a database fails to address these issues, it will be of less use in certain types of patent searching than one which does. We will see the implications of this in later chapters of this book.

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Chapter 1 Principles of patenting

The concept of priority Before discussing the historical and current processes used in examining patents, it is necessary to introduce a very important idea, namely that of “priority”. The legal concept of priority was first created by the International Convention for the Protection of Industrial Property, signed in Paris in 1883 and commonly referred to as the “Paris Convention”10. The Convention was signed by eleven founder states (Belgium, Brazil, El Salvador, France, Guatemala, Italy, Netherlands, Portugal, Serbia, Spain and Switzerland). It entered into force on 7th July 1884 after 8 of these states (excluding El Salvador, Guatemala and Serbia) ratified the agreement and Tunisia and the United Kingdom had also acceded to it. Signatory states are referred to as belonging to the “Paris Union” or simply as “Union countries”. In Article 4 of the current (1979) text of this document, it is stated that: A (1) Any person who has duly filed an application for a patent . . . in one of the countries of the Union . . . shall enjoy, for the purpose of filing in the other countries, a right of priority . . . . C (1) The periods of priority referred to above shall be twelve months for patents and utility models . . .b

The essential result of this Article is that a patent applicant is allowed a period of 12 months from their first filing (which usually takes place in their home country) in which to lodge corresponding applications for the same invention in other countries. Provided that they file within this deadline, their corresponding applications will be treated as if they were filed on the first date, which is thus referred to as the “priority date”. This reciprocal treatment by other Union countries means that an company or individual inventor may make multiple applications for patent protection of the same invention in many countries around the world, and be assured that they will be given equal treatment when examined – in effect, their applications are treated as they were all filed simultaneously. The original signatories were rapidly augmented by additional states (Denmark, Dominican Republic, Japan, Norway, Sweden and the United States by 1900, the first amendment of the text). By 2019, there were 177 countries in the Paris Union, giving a very wide applicability to this right of priority; some of the most recent additions include Samoa (2013), Kuwait (2014) and Afghanistan (2017).

b The original 1883 text of the Paris Convention allowed only a 6 months priority, but this was soon amended to 12 months.

Legal processes

7

The existence of the right of priority has a fundamental effect upon the activities of the patent information specialist. Firstly, it affects which part of the literature has to be searched, for each of the major search types discussed in Chapter 13 onwards. Secondly, the priority details – reproduced on the front page of modern patent documents – are used in the compiling of databases of patent documents, and need to be understood if the output from a search is to make sense. The priority details are used by database producers as the common key to link individual national publications, relating to the same invention, into a so-called “patent family”. The construction of patent families is discussed in detail later in this chapter.

The historical examination process for patents It is often remarked that the process of granting a patent is a “bargain” or “contract” between the patentee and the national patenting authority. The national authority (usually but not invariably a government department) issues a statement – in the form of the grant certificate – which establishes a prima facie right of the patent holder to prevent other people making, selling, using or importing the defined invention without the patent holder’s prior permission. Clearly, third parties cannot be expected to avoid infringement if they do not know what they have to avoid. Hence, the reverse side of the bargain is for the patentee to allow the full details of their invention (in the form of a descriptive document, the patent specification) to be made available to the public. For many years, the publication of details of the invention only occurred once – at the point when the patent was about to be granted or had just been grantedc. To initiate the process of examination, the applicant was required to pay certain statutory fees to the patenting authority (for simplicity, I will use the term “patent office” hereafter, although it may not occur in the actual title of the organisation concerned). In return for these so-called examination fees, the patent office would complete the legal steps required to ensure that the application complied with their national patentability requirements. These steps varied enormously, from a simple check to ensure that the pages were correct in layout and that certain bibliographic details were complete, through to a rigorous examination of the entire contents of the application, line-by-line. After examination had been completed, the patent was granted and the specification published.

c Under pre-19th century procedure in the UK, a specification describing the invention had to be deposited (“inrolled”) at the civil courts within a specified period after the royal grant of the patent itself; the concept of simultaneous publication of an official document at grant is relatively new.

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Chapter 1 Principles of patenting

The problem with this approach is that all the steps in the procedure – and all the fees which the applicant must pay – have to be completed before any document sees the light of day. In the course of many years, patent offices started to take longer to complete the examination stage and backlogs started to develop. The worst backlogs were experienced in those countries which required a particularly strict examination process. During a typical examination, the patent office seeks to establish whether the invention complies with a number of legally defined criteria of patentability. These would generally include: (a) Novelty (b) Inventive step (c) Industrial applicability (d) Non-excluded material The simplest criteria to satisfy are usually (c) and (d) – it is generally fairly straightforward for the applicant to show that their invention has some usefulness in industry, and does not fall into one of the classes of non-patentable material, such as being a literary or artistic work (which is covered by copyright and hence excluded from the patent law), or a set of rules for playing a game. The classes of excluded material can be modified from time to time; for example, the Patents Act 1977 in the United Kingdom has been amended since it first passed, in order to bring certain microbiological inventions within the scope of permitted patentable subject-matter. The harder parts of the examination process come in establishing (a) and (b). Criterion (a), novelty, is on the face of it fairly easy to establish – either the invention is new or it is not. However, different countries have historically had different definitions of novelty. In some places, an application may be regarded as new if its subject matter has not be published in earlier patents from the same country within the previous 50 years; that is, there is a limitation both in terms of the type of publication consulted and in the time-scale concerned. At the other extreme, a definition of so-called “universal novelty” is increasingly being used, which requires that no publication of any sort (including non-print media and verbal disclosures) may occur anywhere in the world prior to the filing date of the invention. Clearly, this sort of definition of novelty places a much greater burden on the patent office, as there will be a much larger volume of literature to screen in order to establish novelty. The size of this literature (the prior publications or, as it is often called, the “prior art”) is affected by the right of priority. This is because the filing date of a patent application is an intrinsic part of the definition of novelty. To illustrate, consider the United Kingdom Patents Act 1977, at section 2(1)–(2):

Legal processes

9

2(1) An invention shall be taken to be new if it does not form part of the state of the art. 2(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way. [my emphasis]

In other words, the priority date becomes a cut-off point in defining which literature should be considered against our application. Anything published after that date will not, on its own, damage the chances of obtaining a patent, whereas a careless disclosure by the inventor, or a competitor’s publication, occurring before the priority date may indeed jeopardise the application on the grounds of lack of novelty. This is not a unique British situation – corresponding laws exist in many other countries. Indeed, the original 1883 text of Article 4 of the Paris Convention is explicit that this effect should be the main benefit of a priority claim, saying that, “Consequently, the subsequent filing in one of the other States of the Union before the expiry of those periods [of priority] cannot be invalidated by facts done in the meantime, namely, in particular, by another filing, [or] by publication of the invention or its exploitation by a third party . . .”. Possibly the hardest criterion to satisfy is (b), that of inventive step (or, as it is referred to in some countries, non-obviousness). The essential task for the patent office during examination is to answer the question, “Is this application a trivial extension of what is already known, or does it have inventive merit?”. In practice, this process may involve taking several pieces of prior knowledge and trying to prove whether or not they point unambiguously to the invention. This can be the cause of much argument between applicant and examiner before grant, and between patent holder and third parties after the grant. Given the above criteria for patentability, and its application during a sequential examination process, it was perhaps inevitable that most patent offices around the world were facing a manpower crisis by the early 1960s. As each application had to be rigorously compared with an extensive set of previous publications (the “prior art”) and argued for inventive step, it could take many years for an application to be granted. During this period, the applicant was uncertain whether they could take steps to commercialise their invention, and third parties were generally in ignorance of pending cases. This could have the costly result of a third party making extensive preparations to operate an invention, only to be faced at the last minute with a granted patent and the threat of litigation. Clearly, the patent office’s processes had to be reviewed. One solution, widely adopted worldwide, was the revised system of early publication combined with a deferred examination.

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Chapter 1 Principles of patenting

The development of deferred examination and early publication The factors leading up to the development of the deferred examination process have been reviewed elsewhere (11 and references therein). Briefly, the first country to adopt the system was the Netherlands, effective from 1964, followed shortly afterwards by West Germany in 1968 and Japan in 1970. During the 1970s, it became the method of choice for most patent offices as they revised their patent laws. The characteristic of deferred examination was the separation of the expensive, time-consuming procedure of substantive examination from the relatively cheaper steps of establishing a search report against the prior art. This builds in extra “thinking time” for the applicant, between receiving the search report and having to pay the substantive examination fees. The hope was that this would result in a higher percentage of voluntarily withdrawn cases, particularly if the search revealed significant prior publication, and that the patent offices would be able to concentrate their resources on examining only those inventions which did not appear to have been disclosed before, and which had realistic potential for commercialisation (at least, in the mind of the applicant). In return for this flexibility, most deferred examination laws required that an application was published whilst it was still pending (sometimes referred to as being “laid OPI” or Open to Public Inspection). As a result, the main feature of the system for the information specialist is that each “patent” is published twice – once as an unexamined application and a second time (if granted) as the final patent itself. One complication, when compared with the traditional system of only publishing after grant, was the effect upon bibliographic control. With single publication – such as happened in the United States from 1836 until 2001 – documents could be identified by using a simple running series of publication numbers. Under the newer dual publication regimes, it was necessary to devise a system which allowed the user to distinguish between multiple stages of publication – usually two documents, the early published unexamined case and the later granted patent. Some countries did this by using a distinct number series for each set of documents, whilst others introduced a system of alphanumeric suffixes to the publication number(s). These suffixes were picked up by the database producers and have gradually become formalised into the present-day system of Kind-of-Document (KD) codes for each country, which will be discussed in more detail in later chapters. Under deferred examination, the same processes of examination against patentability criteria are used as for the historical one-stage system, so delays in pendency still occur. However, the information specialist – and industry in general – is no longer penalised by the lack of information coming out of the

Legal processes

11

patent office. The early publication of pending applications, typically on or shortly after 18 months from the earliest filing date, serves to warn industry that a case has been filed. This information helps them to keep track of developments in their field of technology, and to become aware of competing applications which might impinge upon their activities, and which could be an infringement threat if they are granted. As a result of the deferred examination system, patents have, over the last 50 years, become a hugely important tool for commercial current awareness. They are used by scientists and technologists, lawyers, marketing and financial experts and others to monitor, evaluate and guide research and development activities all over the world.

A typical sequence in modern patent examination By following one invention, we can start to see the range of processing activities which take place across different patent offices during pendency. In Figure 1.1, the columns indicate activity carried out by a single patent office, and the vertical axis represents time, increasing from top to bottom of the page. A number of points can be taken from this Figure. Firstly, it is clear that each member of the family receives its unique national filing application number, in a wide variety of formats. For example, the European Patent Office (EPO) number has a decimal and check-digit at the end, whereas the US number has an additional series code 14 at the beginning. Secondly, we can see that although the case started life in the Netherlands, there is no Dutch publication as such. There is no inherent reason why a family of patent publications should include an exemplar from its country of origin. Often, a “home” filing may be used simply to establish a priority, and then allowed to lapse in favour of the applications in other countries, where protection is sought, or under a regional system which incorporates the home country. In this case, the Dutch application was cited as priority under the Paris Convention, to create a so-called “Convention filing” under the European Patent Office (EPO) system. Since the EPO includes the Netherlands amongst its members, the emerging granted European Patent provides protection within the Netherlands by this route. Thirdly, we see that all of the unexamined cases were published promptly around the 18-month mark after priority, within a day or two of one another. Although this would be the ideal, in practice the actual publication dates can vary quite widely. The guideline of expecting to see an unexamined publication “18 months after priority” is generally fixed in law as a requirement to publish “as soon as possible after the expiry of 18 months”; it is certainly not unknown

11 Oct 2016: granted patent, pubn. no. US 9463994-B2

26 Nov 2015; unexamined application laid OPI, pubn. no. US 2015/0336838-A1

19 May 2015: Convention filing, allocated appn. no. 14/715987

United States

Figure 1.1: Example time line for processing a patent family.

Patents begin to be published, and post-grant administrative proceedings

First unexamined applications published around 18 months after priority

Convention filings within 12 months of first (priority) filing

Netherlands 22 May 2014: first filing, allocated appn. no. 2012866

13 Sep 2017: granted patent, pubn. no. EP 2947056-B1

25 Nov 2015: unexamined application laid OPI, pubn. no. EP 2947056-A1

8 May 2015: Convention filing, allocated appn. no. 15166916.5

EPO

11 Dec 2017: translation of claims of granted EP into Danish, pubn. no. DK/EP 2947056-T3

Denmark

1 Feb 2018: translation of granted EP into Spanish, pubn. no. ES 2652264-T3

Spain

?

25 Nov 2015: unexamined application laid OPI, pubn. no. CN 105084714-A

22 May 2015: Convention filing, allocated appn. no. 201510268260.1

China

12 Chapter 1 Principles of patenting

Patents as information tools

13

for cases to be substantially delayed, and in a few jurisdictions (e.g. China) there may be large numbers which are published earlier than the projected date. Note also that the time which the same case may spend in substantive examination can vary – the US case was granted within 2½ years of the original Dutch application, whereas the EPO case did not grant until nearly a year later and the corresponding case in China may still be pending, or be withdrawn, at the time of this snapshot. Finally, we note an example of the use of KD codes, with the European patent. The unexamined case is numbered EP 2947056-A1, and it retains this number through to the later grant stage, but with the suffix changed to a -B1. Some authorities retain the same number across stages, others use a new number; in the former case, the KD code becomes a vital indicator of the status of the document. We also see that after the grant of the EP-B, some countries republish translations of part or all of the document in their local language, and these enter the bibliographic record in their own right (in this case, for Denmark and Spain). More detail on this will be discussed in Chapter 2.

Patents as information tools Language of publication One of the issues surrounding the use of patents as information tools is that of language. As noted above, in our definition of a patent, these documents are territorial and political – they only have effect in a specified country (or, strictly speaking, jurisdiction). As such, they are logically published in the national language of the country granting the patent. This can be a hindrance to effective global communication, especially considering the large numbers of patent applications published in Asian languages such as Japanese, Chinese or Korean, which are effectively lost to most Western researchers. Although English is accepted as the primary language of communication in science and technology, any suggestion that all patents be published in English is fraught with political difficulties. Unlike other scientific and literature, where the bulk of the expected user community usually has some knowledge of technical English, patent documents have multiple roles, and consequently multiple readerships. The same published patent document has to stand as both – a statement of the technical nature of the invention, which requires the use of technically precise language, and

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Chapter 1 Principles of patenting

– a legally binding description of the precise nature of the trading monopoly which the patentee can exert. This dual role means that all the parties – legal, technical, industrial and commercial – which may be affected by the scope of a patent need to be able to access its contents in an efficient manner. For many, that means that it should be available in their national language. Despite the fact that translation into national languages is an expensive process, it therefore has an important function. If the government of a country is granting to a private enterprise the means with which to control a defined market or sector of industry within that country, then it is only reasonable that the citizens of that country (or at least its affected industries and the national authorities) are granted the corresponding means quickly and effectively to understand the legal extent of that control. This can only really be achieved if the claims of a patent document are readily available in the national language. The arguments concerning how to implement this dissemination without inordinate cost were central to the discussion in Europe concerning the Community Patent for many years, and have had to be addressed under the regulations for unitary protection (the so-called Unitary Patent) within the European Union. The present proposals are discussed in more detail in Chapter 2. The issue of communicating patent contents to their user community has traditionally been solved – in part – by commercial information providers, who have undertaken the systematic collection of multi-lingual patents and created abstracts of each in a common language, usually English. In recent years, particularly since the advent of the internet as a search tool, there has been a greater emphasis on socalled “first-level” data i.e. the information as released by patent offices themselves, in their national language. This has brought a great advantage in terms of the speed of availability of the data, but at the expense of searching convenience. In order to take advantage of the full range of first-level data sources, the searcher must be multi-lingual. There has been concentrated and rapid development of machine translation technology, in an attempt to create full text databases in English from a multiplicity of original document types. For the moment, however, the searcher should be aware that multiple publication languages at source are the norm, and that such machine translated versions that do exist are largely the work of the private sector. In any event, if a patent is challenged in the courts, it is necessary to establish which is the authentic text – the document as issued by the patent office or a certified human translation. At Table 1.1, there are some examples of patent publishing authorities which allow the use of more than one language in their publications. Some countries use a multi-lingual gazette, whilst in others, both

Patents as information tools

15

gazette and specifications can appear in more than one language. See Appendix 2 for the ISO 639-1 language codes used in this Table and elsewhere in the book.

Table 1.1: Examples of some multi-lingual patent publishing authorities. Country / authority of publication

Publication languages

Belgium

Fr, Nl, De

Canada

En, Fr

Cuba

Es, En, Ru (Gazette)

Egypt

En, Ar (Gazette)

European Patent Office

En, De, Fr

Finland

Fi, Sv

India

En, Hi

Israel

En, He

Korea (South)

Ko, En (Gazette)

Kyrgyzstan

Ky, Ru (Gazette)

Luxembourg

Fr, De

Moldova

Ro, Ru

North Macedonia

Mk, En (Gazette)

Norway

No, En

PCT

En, Fr, De, Ja, Ru, Es, Zh, Ar, Pt, Ko

South Africa

En, Af

Sweden

Sv, En

Switzerland

De, Fr, It

Uzbekistan

Uz, Ru (Gazette)

There has been a trend in recent years for more patent offices to issue official English-language abstracts of its patent publications, in addition to adopting English as a second language for issuance of basic bibliographic data through the national Gazette. However, the bulk of national patent applications still issue in the national language of the country concerned. A few offices (notably Norway and Sweden) have gone as far as accepting English as the procedural

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Chapter 1 Principles of patenting

and publication language for their national patents, even though English is not an official language of the country12.

Patents as accessible documents Irrespective of the “human” language involved, all patent publications to a great extent are published in “patentese”, a peculiar mixture of technical and legal terminology. The business of learning to interpret the text of a patent (and particularly the claims, which will be discussed below) is really outside of the scope of this book. The role of the information specialist is to locate the documents – they should then work in close co-operation with a qualified patent agent or attorney in order to understand the implications of the documents for the particular commercial decision facing the user. However, it is helpful if the information specialist can get at least a basic understanding of the legal principles involved. Various introductory texts in the legal field can help, for example the book by Philips13 and the previously cited work by Grubb (ref. 2). There is also a useful booklet produced by the American Chemical Society, which provides an view of the US patent system focussed on the needs of the working scientist, and discusses some important concepts specific to the American law14. A similar approach is taken by Amernick15, again considering only the US situation. Despite many efforts over the years, it is still sadly true that patents are regarded as “difficult” documents, and frequently ignored as an information resource by small businesses. A large-scale survey on behalf of the European Patent Office in 2003 and later studies by the same organisation16 underlined many of the lessons of an earlier report17, but there are other examples in the literature of the extent of use (or non-use) of patent documents in industry and academia (see, for example, the papers by Hall et al.18, Schofield19 and earlier works by Schmoch20 and Stephenson21). The advent of the internet has certainly boosted the accessibility of patents, in terms of getting them onto people’s desks, but there still remains a basic problem with information literacy. The processes for locating the right documents out of the many millions “available”, and using them in practical situations, are still far from routine.

Patent families As discussed earlier in this chapter, the concept of the patent family arises from the use of priority details when compiling a patent database with multiple country coverage. If a number of patent applications are filed by the same entity

Patents as information tools

17

(inventor, corporate body) to protect the same invention in different parts of the world, the main body of the text of each published patent application and granted patent will usually be substantially the same, albeit in the national language of the publishing authority. For example, if an invention originates in the United Kingdom but protection is applied for in Japan, the United States, France and Germany as well, it is conceivable that the database producer will be faced with at least five different documents in four different languages, effectively disclosing the same technical details. Although it is true that the texts may not be absolutely identical (especially in the form of the claims, which may differ from country to country according to the national law requirements), they can usually be treated as duplicate publications of the same invention for the purposes of novelty searching. Rather than create new records and abstracts for each document in this cluster, various database producers – such as the Derwent DWPI file, INPADOC, Chemical Abstracts and the free EPO Espacenet service – have devised a mechanism for identifying the duplicates and grouping them together. This is particularly valuable for any producer who may be adding additional metadata to the records before loading them into the database; once a family is identified, the editorial processing can be done only once, usually based on the earliest published example. Later documents with corresponding subject matter can be added to the cluster without further comment, building up a “super-record” or patent family. This process is not only cost-effective for the producer, but also saves time for the searcher, who will not have to de-duplicate their search results manually. The main criterion for grouping technically equivalent patent documents into a family is the priority details. Since all applications which claim the same priority under the Paris Convention are – by definition under Article 4 – relating to the “same invention”, the database producer is able to group together all documents citing such priority into a family cluster. At its simplest, a patent family can be defined as “all patent documents which have priority details in common.” However, it should be emphasised that the process is not as precise as might appear, for two reasons: a) The definition of a family is not defined by law, but by each database producer for their own convenience. It is therefore quite possible that the family structure produced by one database will vary from the structure in another, due to differing rules of application. For many families, there will be very similar results; the main cause of variation is where one or more cases in the family claims multiple priorities. Some rules will put these members into a second distinct family, whilst others will group all cases into a single large family.

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Chapter 1 Principles of patenting

b) The use of priority data to group family members does not preclude the possibility that the legal rights pertaining to any given member may vary from the others. This happens when, for example, the claims of one case may be cut down under the local examination requirements more than the claims in a corresponding case. The changes in subject matter created by examination do not get reflected in the priority data, which is the grouping criterion. Consequently, whilst it is reasonable to assume that the technical disclosure in all family members will be substantially the same, the same assumption should not be made concerning the enforceable rights for each family member. The formation of a patent family can be seen in Figure 1.2. Each of the published documents indicated by the heavy boxes is a patent application or granted patent which claims priority under the Paris Convention from the initial filing in the United States, indicated by the box at top left. This priority filing is not itself laid open until it emerges as either a US document or another case claiming priority from it. Each member of the family can be linked with its parent by means of the cross-references on the front page, using INID field code series 30 (for more on INID codes, see the section on Bibliographic Standards later in this chapter). When patent database producers receive the corresponding published documents (or more commonly, the electronic data-feed from patent offices, which includes the front-page data), they are able to link together the family members and treat them as if they were identical documents for indexing purposes. Some database producers use the terms “basic” and “equivalent” to assist in defining the patent family. The first appearance of an invention described in a patent document – irrespective of the country from which it comes – is treated as a “basic”, and usually fully abstracted and indexed according to the producer’s policy. Any later-published documents which claim the same priority as the basic are termed “equivalents”, and added to the same family with minimal added value indexing applied. This means that indexing effort can be concentrated on new documents, and that other members of the family can be retrieved as if they were fully indexed, by virtue of being put into the same database record. It is important to note in this context that the basic is not necessarily published by the same country that originated the invention. For example, under the old US patent law when US cases were slow to publish, many database records list an EP or German family member as the basic, since it was the first to appear in the public domain, and the later published US family member is classed as an equivalent. It is equally important to remember that there is no guarantee that a family member will ever appear which corresponds to the country of priority filing

Unexamined application published as BR 8703863-A

Unexamined application published as AU 75086/87-A

Granted patent, pubn. no. AU 596195-B2

Convention filing, allocated appn. no. 87/03863

Brazil

Convention filing, allocated appn. no. 75086/87

Australia

Figure 1.2: The formation of a patent family.

Granted patent, pubn. no US 4726971-A

United States Priority filing, allocated appn. no. 891131

Translation of granted EP into German, pubn. no. DE 3784281-T2

Granted patent, pubn. no. CA 1292643-C

Convention filing, allocated appn. no. 540902

Canada

Patent amended after opposition, pubn. no EP 257752-B2

Translation of granted EP into Spanish, pubn. no. ES 2038182-T3

Granted patent, pubn. no. JP 2505210-B2

Unexamined application published as JP 63-050502-A2

Unexamined application published as EP 257752-A2

Granted patent, pubn. no. EP 257752-B1

Convention filing, allocated appn. no. 62-191494

Japan

Convention filing, allocated appn. no. 87306021

EPO

Granted patent, pubn. no. KR 95-8165-B

Convention filing, allocated appn. no. 1987-008246

South Korea

Granted patent, pubn. no. MX 166017-A

Convention filing, allocated appn. no. 1987-007411

Mexico

Patents as information tools

19

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Chapter 1 Principles of patenting

(see Figure 1.1 above for the Dutch example). This is particularly true in cases which are filed in one of the member states of the EPO. Applicants in these countries will often file a national priority case (for example, in the United Kingdom) and use this to file a corresponding EPO case within the Convention year. The parent national case can then be safely abandoned, and patent protection in that country obtained by means of a designation on the corresponding EP patent. As indicated above, different database producers use distinct sets of rules for creating families. It is important when searching that the appropriate documentation is consulted to ensure that the searcher is thoroughly familiar with the implications of the rules for the database in use. Some details are provided in the WIPO Handbook on Industrial Property Information and Documentation22, which recognises and defines five types of family (simple, complex, extended, national and artificial). However, this does not include all the variations from different commercial database producers. It is recommended that users should consult the documentation provided by these organisations in order to establish the exact rules which are applied in compiling families.

Bibliographic standards and the form of a patent document One of the advantages of working with patent documents, as an information specialist, is the extent to which their citation and physical form is controlled by well-established standards. Since the late 1970s, patent documents from all over the world have become increasingly fitted to a common format, which makes it easier to use the original documents, and easier for database producers to compile them into a common record format. The major technical standards relating to patent documents are promulgated by the World Intellectual Property Organization (WIPO), based in Geneva. Initially produced on paper, they are now available on the WIPO website. The complete list of standards is available by selecting the Knowledge tab on the home page and following the link for “Standards (WIPO Handbook)”; alternatively, the direct URL is www.wipo.int/standards/en/. Working documents relating to their revision can be found in the website section on the Committee on WIPO Standards (CWS) at www.wipo.int/cws/en/. The entire set of standards was previously available in CDROM format as PDF files, but these have not been updated for some years; the current versions are all loaded on the website, together with the ability to track changes across different revisions of the same standard.

Bibliographic standards and the form of a patent document

21

The most significant bibliographic standards in relation to patent “front page” data are shown in Table 1.2. There were changes implemented in ST. 10/C (Presentation of bibliographic data components) in 2011, to accommodate changes in the usage of the IPC following to the abolition of the core IPC system from 1st January that year; although corresponding changes were also made to ST.8 (IPC symbols on machine-readable records), these are largely invisible to the searcher using paper or PDF records.

Table 1.2: Key WIPO standards for bibliographic control of patents. Standard number

Latest revised publication

Title

ST. 

.

Recommendation concerning the minimum data elements required to uniquely identify a patent document.

ST.

.

Two-letter codes for the representation of states, other entities and intergovernmental organizations.

ST. 

.

Numbering of published patent documents.

ST. 

.

Bibliographic data on and relating to patents and SPCs.

ST./C

.

Presentation of bibliographic data components.

ST. 

.

Numbering of applications for Industrial Property Rights (IPRs).

ST. 

.

Standard code for the identification of different kinds of patent documents [also referred to as Kind-of-Document or KD codes]

ST. 

.

Corrections, alterations and supplements relating to patent information.

The ST.3 standard for two-letter country codes is based upon the international standard ISO 3166, with some additions for non-state authorities. New versions of ST.3 today are usually only produced in response to national changes in formal naming (e.g. when Swaziland was re-designated as Eswatini), and only rarely in response to new countries (e.g. the division of Sudan to create South Sudan). The time for adoption of new country names in ISO 3166 can be protracted, but for the avoidance of doubt, the names used in this book are the currently accepted form of the English short name, irrespective of whether the standard has been formally amended. A list

22

Chapter 1 Principles of patenting

of the codes for non-state authorities appears in Table 1.3; codes for individual countries will be noted as the country information is introduced in later chapters of this book. Users should note that on a number of occasions, codes for nation states have changed and the old code re-used for a different entity – see the corresponding chapters or sections on individual countries in this book, or Annex B to the main standard, for details. Refer to Table 2.1 for the codes for individual members of the European Patent Office.

Table 1.3: WIPO standard codes for regional patent authorities and intergovernmental organisations. Code

Authority or organisation

AP

African Regional Industrial Property Organisation (ARIPO) [English-speaking Africa]

EA

Eurasian Patent Organisation (EAPO)

EP

European Patent Office (EPO)

GC

Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC)

IB

International Bureau of WIPO (used for applications under the PCT)

OA

Organisation Africaine de la Propriété Industrielle (OAPI) [French-speaking Africa]

WO

Patent Co-operation Treaty (publications by the International Bureau of WIPO)

XN

Nordic Patent Institute (NPI)

XV

Visegrád Patent Institute (VPI)

Appendix 1 to Standard ST. 9 is a particularly important introduction for users new to patent information. It defines a set of field tags, called INID codes, which are used on the front pages of patent documents to define certain key data elements. The INID codes (Internationally agreed Numbers for the Identification of bibliographic Data) appear in brackets or a ring on the printed front page, in Roman numerals, and can be extremely helpful to locate the significant data item when a user is unfamiliar with the language of the document. Many of the codes have corresponding machine-readable tags in SGML or related mark-up languages such as XML, which are used to speed up the loading of electronic records by commercial patent database producers. The full listing of INID codes is in ST.9, but some key ones are noted in Table 1.4.

Bibliographic standards and the form of a patent document

23

Table 1.4: Some important INID codes from ST.9. Code number Shortened definition (Series )

(Identification of the publication)



Number of the patent, SPC or patent document



Kind of publication (plain language)



Kind of publication (using Kind-of-Document code from ST.)



Country code (ST.), or other identification, of the publishing office or organization

(Series )

(Local filing details)



Number(s) assigned to the application(s)



Date(s) of filing the application(s)

(Series )

(Priority details)



Priority application number(s)



Priority application date(s)



Country in which priority application was filed

(Series )

(Publication dates)



Date of making available to the public an unexamined patent document (view or copy on request)



Date of making available to the public an examined patent document (view or copy on request)



Date of making available to the public an unexamined patent document (printed specification)



Date of making available to the public an examined patent document (printed specification)



Date of publication by printing of a granted patent

(Series )

(Technical information)



International Patent Classification



Domestic or national classification



Title of the invention



List of prior art documents (applicant and/or examiner)

24

Chapter 1 Principles of patenting

Table 1.4 (continued ) Code number Shortened definition 

Abstract or claim



Field of search

(Series )

(Identification of parties)



Name of applicant



Name of inventor



Name of grantee



Name of inventor who is also applicant

(Series )

(Data relating to international conventions)



Designated states according to the PCT



Designated states under regional patent conventions

Moving beyond the front page, most modern patent documents also adhere to a common sequence of elements in the main text. Not all elements will be present in every case, but a typical sequence will be: – the “front page” data, which may spread over two or more physical pages, comprising the data defined by INID code – the detailed description (disclosure) of the invention, which may be subdivided into sections such as – technical preamble, describing the need for the invention and earlier attempts to meet that need – description, giving general guidelines on how the invention is made and used – examples, consisting of more detailed, step-by-step implementation of the invention (in the case of a chemical patent, this is typically a set of synthetic methods) – efficacy data (for pharmaceutical and agrochemical patents, including drug trial or glasshouse trial results) – claims, providing a precise definition of those invention aspects for which the applicant is seeking legal protection – a set of drawings, particularly important for mechanical inventions – a search report, in the case of an unexamined patent application, consisting of the retrieved literature which, in the opinion of the examiner, constitute the most likely obstacles to patentability for the application.

Special document types

25

Patent documents from the United States have some variation from this typical format, in that the drawings section is found at the front of the text, immediately after the front page data. Their granted patents also have a listing of “references cited” as part of the front page data, identified using INID (56), which is sometimes mistakenly referred to as a “search report”. As will be discussed in the chapter on the United States (Chapter 3), differences in the legal process here mean that this is not an exactly equivalent data element.

Special document types With the proliferation of databases available, it is important to be aware that not all sources contain the same data, even if they superficially cover the same country from the same starting date. Patents are just one part of a spectrum of intellectual property rights, each generating their own national registers and databases. A given source may contain all the patent and patent-like documents produced by that country, or only a selection, and accordingly indicate a different answer to a given query. Three areas need to be considered; alternative forms of IP rights, patent amendments & corrections and patent-related protection mechanisms.

Alternative forms of intellectual property (IP) rights In many countries of the world, the same authority (IP office) will be responsible for issuing a range of different IP rights. Historically, these were quite distinct and searches tended to be confined to a single right. However, in recent years some of the boundaries around each set of rights have become a little more blurred, at least from the information retrieval point of view. In the case of designs, the protection is focussed upon the aesthetic aspects of the appearance of a product. It is therefore quite feasible for a given product to be protected both by patent (for the technical innovation) and by registration of the design. For example, in the pharmaceutical industry, a marketed drug may contain a patented active ingredient and also have design protection for the size, shape or colour of the pill itself. The message for the searcher is to be aware that, even if a search for patent protection on a product returns a negative answer, that product may still have some enforceable rights behind it, and it would be extremely unwise to undertake copying the product until all avenues have been investigated. In the same way, trade marks are words or graphic devices which distinguish a given product (or, in the case of a service mark in some jurisdictions, a service)

26

Chapter 1 Principles of patenting

from those offered by competing companies in the same sector. The use of a trade mark guarantees that certain goods and services originate from a recognised supplier, and infringement of the mark occurs if the same or a similar mark is used without permission by another supplier, in such a way as to create confusion in the mind of the consumer. When originally created, trade marks were derived from the medieval guild marks, and were limited in application to words (real or invented) and designs (logos). In recent years, trade marks have been granted for designs of vehicles, certain shapes, colours, sounds and even smells. As with registered designs, this has had the result that a given marketed product may be protected by multiple intellectual property rights, any or all of which may have been applied for by the inventor. If the invention being researched has any substantial element to it which could be protected by alternative IP rights, it is a wise precaution to search the corresponding databases as well as the obvious patent sources. A detailed discussion of the search sources for registered designs and trade marks is beyond the scope of this book. However, readers may find that the appropriate national IP office can advise on searching their own web-based sources such as official registries, and there are a few published articles outlining the basics of design search in commercial source files23, 24. In addition to designs and trade marks, some countries in the world have special IP rights for such areas as plant varieties, software or semiconductor topographies (the design of chip masks for semiconductors). Depending upon the jurisdiction of the searcher, it is helpful to be aware of which alternate protection routes are available, since industries may employ a mixture of IP rights around the same product. For example, some advocates of open-source software tend to use copyright as their principal protection mechanism, whilst other companies will use the conventional patent system.

Patent amendments and corrections Patent documents and databases containing them are generated by a process which includes a long chain of human activity. As such, they are not immune from errors. The European Patent Office, which operates some of the largest bibliographic databases in the field, estimate that they make up to 1,000,000 corrections per year to the data flowing into their database production centres, from over 70 countries. However, not all producers are this painstaking in their approach, with the consequence that the same search conducted over several databases may well produce different results, simply because of errors in the raw data. Clearly, this is not a desirable situation, and by the mid-1990s, major

Special document types

27

industry users were lobbying for the introduction of a more rigorous method of handling corrections. This was finally agreed in 1998 with the introduction of WIPO Standard ST.50 (Guidelines for issuing corrections, alterations and supplements relating to patent information). This provides a framework for patent offices to announce amendments at any stage in the public processing of a patent application, on any media. For example, if a patent office issues an announcement both in its paper gazette and on a disk-based or other electronic product, it is possible that the first will be correct but the second may get corrupted in the production process. The ST.50 guidelines allow the patent office to issue correction notices specific to not only the individual document, but the different media used to distribute the information. The types of notification which ST.50 addresses fall mainly into the class of bibliographical amendments. The information specialist also needs to be aware of legal amendments – that is, when a document progresses from one version to the next by virtue of the normal patent office procedure. Bibliographical amendments A bibliographical amendment may be required as a result of a simple recording error, such as a mistake in the name of an inventor on the front page, or a transposition of two digits in an application or priority number. At the time of writing, approximately 30 IP offices around the world have reported to WIPO that they have completely or partially implemented ST.50. They are most frequently encountered in the publications of the European Patent Office, the United States Patent and Trademark Office (USPTO) and WIPO themselves. Details of the usage by these authorities, together with the special KD codes used, are dealt with in Chapters 2, 3, and 5, respectively. Other patenting authorities which, according to the latest WIPO survey, use parts of ST.50 include Australia, China, the EAPO, Germany, Japan, South Korea, Russia, Spain, Switzerland and the United Kingdom25. Legal amendments A legal amendment may come in one of two forms. In a few cases, progression from one stage of the legal procedure to the next is implicit in the issue of a new document. For example, the grant of a European Patent is formally notified by the issue of a notice in the European Patent Bulletin, but this is accompanied by the simultaneous publication of the specification, bearing the new Country-KD code EP-B. Hence, simply by monitoring the bibliographic record for the publication of a document series, the user is operating a de facto monitoring of a change in legal status.

28

Chapter 1 Principles of patenting

However, a substantial majority of legal amendments are issued not in the form of documents, but as notices in the appropriate patent office’s official journal (often referred to as a “Gazette”, even if that word does not appear in the title). These notices of change in status may include, for example, a re-assignment to a third party (either through sale of the patent, or as a result of company merger, acquisition or demerger activity), the notice of payment of renewal fees, indications of certain legal proceedings involving the patent, term extensions and so on. Although such Gazette notices often fall into recognised chapters within the Gazette, they are not accompanied by a new document issue. The principal sources for tracking such changes are either the Gazette itself (in paper or electronic form), or a specialist register or database. Individual registers are increasingly becoming available via the internet, using data supplied by the national patent office and often mounted on a patent office server. The only database which collates and publishes legal status changes for a range of countries is the INPADOC file produced by the European Patent Office; it currently has some legal status information for nearly 60 countries.

Patent-related protection mechanisms This book is devoted to the information aspects of patents, but the information specialist should be aware of a number of other “patent-like” intellectual property rights. They may be found during searches within patent databases, or sometimes as special sub-sets or document types. The two most important variations on the conventional patent are the utility model and the supplementary protection certificate (SPC). Utility models The utility model is used as a parallel protection mechanism in a number of countries. It is not possible to protect the same invention (identical claim sets) simultaneously by both utility model and patent, so if an applicant reaches the situation where both have been granted, they must make a choice of which to maintain, and withdraw the other. The characteristics of a utility model are that it is granted for a shorter period than a conventional patent (typically between 6 and 10 years, instead of 20 for the patent), and the examination process is usually less rigorous than that for a patent. In some countries, utility models are not examined at all unless challenged by a third party; in others, they may be examined against the novelty criteria, but not against inventive step. Utility model protection is usually not available

Special document types

29

for all the classes of patentable subject matter – a typical exclusion is that utility models may not be available for processes of manufacture, as opposed to products. The background to the utility model system is often based upon a national policy to promote the use of intellectual property rights by small industries. These companies may be producing products which represent a small, but nonetheless useful, advance on known technology, and for which there is a time-limited demand in the marketplace. For such products, the procedure of obtaining full patent protection may not be cost-effective; the product may be out-of-date by the time the patent is granted. The utility model, with a lower hurdle to cross, is granted relatively quickly (months rather than years), and provides a simple mechanism for such products to have a reduced level of protection. Utility model protection is an attractive option for mechanical products, and indeed in past years it has been part of some utility model laws that the applicant has had to supply a three-dimensional model of their product as part of the application process. Given the limited range of products which benefit, and the limited term of the protection, it is not surprising that the system is commonly used by inventors from within the country granting the protection. Two of the bestestablished utility model systems for many years were in Germany and Japan, and in both countries, a substantial proportion of the applicants are local inventors. The same is true for the relatively new but rapidly expanding Chinese utility model system. Utility models appear under a variety of names, and the corresponding documentation in a variety of formats. The archetypal German Gebrauchsmuster (Gbm.) and Japanese utility models (Kokai jitsuyo shin’an koho) have a distinct document numbering series and use the KD code U. In Ireland, the same system is known as a “short-term patent”, whilst in France, they are “certificats d’utilité” and in Australia there is the “innovation patent”, which replaced the earlier “petty patent”. Few of the commercial databases have added comprehensive utility model content in their coverage, at least until recent years. However, these documents still form part of the state of the art, and should be considered for inclusion in a search whenever the subject matter is appropriate. The searcher may have to make their best efforts based upon free-of-charge web-based services from the originating patent office, or arrange for a visit to the patent office in question to obtain access to in-house indexes. Although coverage in commercial databases has improved in the last decades, particularly in respect of utility models from Asian countries, it is still not as complete as the main patent coverage in most cases.

30

Chapter 1 Principles of patenting

Supplementary protection certificates Despite the discussion in earlier sections which emphasised that all patents eventually expire after a fixed term, it is a long-established practice in many countries to make provision for extension of the term of a patent under particular circumstances. For example, one of James Watt’s early patents on “a new method of lessening the consumption of steam and fuel in fire engines” (today, we would call it a steam engine), was granted on 5th January 1769. It would normally have had a term of 14 years, expiring in 1783. However, by 1774, Watt had a new commercial partner, Matthew Boulton, who was concerned about the relatively short period of life left in this seminal patent, and also had experience of lobbying in Parliament. By early 1775, a petition for a special Act of Parliament had been submitted, as this was the only process available at the time for a patent term extension. After much debate, on 22nd May 1775, the Act was passed allowing a 25 year extension, giving an expiry date of 1800. Furthermore, the same Act extended the effect of the patent into Scotland26. The importance of this extension can be seen from the fact that it was not until the late 1790s that Watt was in a position to commence infringement action against some of the Cornish mine owners who had copied his engine. The settlement eventually netted several million pounds in today’s terms. Today, the pharmaceutical industry is probably the most sensitive on the issue of patent term. This is for two reasons. Firstly, drugs are relatively easy to copy, and new manufacturers will be waiting to enter the market as soon as the patent on a successful drug expires. This means that the inventing company can see their profit margin eroded very rapidly after patent expiry, as new (generic) forms begin to be sold. Hence, they need to be able to make as much profit as possible whilst the patent is in force; this income has to support both the cost of marketing the successful drug and the research costs invested in the many candidate drugs which have failed to reach the marketplace. As a consequence, the longer that an inventing company can hold off generic competition, the greater its chances of being able to make a financial return over the lifetime of the drug. The second reason which affects the pharmaceutical industry is that they are effectively prohibited by law from utilising the full life of their patents. In most sectors, once a patent has been obtained, the holder can go to market, secure in the knowledge that they will be able to warn off competitors. However, in the pharmaceutical sector, there may be a gap of several years between the grant of the patent on a drug and the date when it is launched on the market. This period is taken up by a strict regime of government testing, to prove safety and efficacy. Until these tests are completed and a Marketing Authorisation (MA) awarded, the product cannot be sold. This means that a granted patent effectively sits idle on the shelf for several years, until the MA is available. A typical timescale may be

References

31

that the patent is granted 4–6 years after initial discovery, but the MA is not granted until a further 5 years, leaving as little as 9 years during which the drug can be sold under patent protection. In order to address these issues, various national governments and the European Union have devised schemes to extend the protection for a marketed drug beyond the original expiry date of the patent. Different countries have adopted distinct mechanisms, but all are based upon a formula designed to restore part or all of the lost exclusivity period. There are essentially two mechanisms being used to obtain term extension. The first is to extend the term of the original patent – this is the approach used in the US and Japan. The alternative approach, used in the European Union, is to create an entirely new legal instrument, which only enters into force upon patent expiry. This new instrument is usually referred to as a Supplementary Protection Certificate, or SPC. The US introduced comprehensive provisions for term extension in 1984 (often called the Hatch/Waxman Act), followed by Japan in 1988. The European Union has two provisions, for pharmaceuticals and for agrochemicals dating from 1992 (amended and recently codified27) and 1996 respectively. Unfortunately for the inormation specialist, the introduction of these provisions was not straightforward – both France and Italy implemented national SPC legislation before the EU-wide Regulations entered into force, so some products may be extended under these laws rather than the EU system. At the time of writing, all of the G8 countries reviewed in detail in later chapters have provision for pharmaceutical patent term extension; the most recent addition is Canada, whose law revision came into force in 2017. The coverage for the different national schemes can vary; for example, the US offers term extension for food colourings and flavours and for certain medical devices but not for agricultural chemicals, whereas the EU system explicitly provides for agrochemicals, which also face a regime of marketing authorisation. The information aspects of term extension will be discussed in more detail in the country chapters, and also in the context of legal status searches in Chapter 16.

References 1 Liebesny, F. (ed.). (1972). Mainly on patents; the use of industrial property and its literature. London: Butterworths. ISBN 0-408-70368-7. 2 Grubb, P.W., Thomsen, P.R., Wright, G., Hoxie, T. (2016). Patents for chemicals, pharmaceuticals and biotechnology: fundamentals of global law, practice and strategy. (6th ed.). Oxford: Oxford University Press. ISBN 978-0-19-9684731.

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3 The History and Evolution of Intellectual Property. (1997). In Intellectual Property Reading Material. (pp. 21–28). WIPO Publication No. 476(E). Geneva: WIPO. ISBN 92-805-0629-3. 4 WIPO Intellectual Property Handbook: Policy, Law and Use. (2008). WIPO Publication No. 489(E). Geneva: WIPO. ISBN 978-92-805-1291-5. 5 McLeod, C. (2010). Inventing the Industrial Revolution: the English patent system 1660–1800. Cambridge: Cambridge University Press. ISBN 978-0-521-893992. 6 van Dulken, S. (1999). British Patents of Invention, 1617–1977: a guide for researchers. London: British Library. ISBN 978-0-7123-08175. 7 Comfort, J. (2004) Finding Grandpa’s Patent: using patent information for historical or genealogical research. In Baldwin, V. (ed.). Patent and Trademark Information: uses and perspectives. (pp. 39–56). New York: Haworth Press. ISBN 0-7890-0425-9. 8 Rimmer, B, van Dulken, S. (1992). International Guide to Official Industrial Property Publications. (3rd revised ed.). London: British Library. ISBN 0-7123-0791-5. 9 Kase, F.J. (1972). Foreign Patents; a guide to official patent literature. Leiden: A.W. Sijthoff. ISBN 90-286-0272-0. 10 Paris Convention for the Protection of Industrial Property 1883. (1979, reprinted 2017). Official English text. WIPO Publication 201(E). Geneva: WIPO. ISBN 978-92-805-0291-6. 11 Adams, S. (2003). A comparison of early publication practices in the United States and Europe. World Patent Information 25(2), 117–122. 12 (a) Norwegian Industrial Property Office (2019.02.25). Language requirements. Patentstyret. Retrieved from www.patentstyret.no/en/services/patents/language-requirements/. (b) Swedish Patent and Registration Office (2019.02.25). Swedish patent application. Patent- och registreringsverket. Retrieved from www.prv.se/en/patents/applying-for-a-patent/swedish-patent-application/. 13 Phillips, J., Firth, A. (1995). Introduction to Intellectual Property Law. London: Butterworths. ISBN 0-406-04515-1. 14 McLeland, L-N. (ed.). (2002). What every chemist should know about patents. (3rd ed.). ACS Joint Board-Council Committee on Patents and Related Matters (CPRM). Washington DC: American Chemical Society. Updated 4th ed. (2019.02.26). Retrieved from https://www.acs. org/content/acs/en/about/governance/committees/patents.html. 15 Amernick, B.A. (1991). Patent law for the nonlawyer: a guide for the engineer, technologist and manager. New York: Van Nostrand Reinhold / London: Chapman and Hall. ISBN 0-442-00177-0. 16 (a) Doornbos, R., Gras, R., Toth, J. (2003). Usage profiles of patent information among current and potential users; report on the main results of the survey commissioned by the European Patent Office. Amsterdam: Motivaction Research & Strategy. (b) European Patent Office (2019.02.26). SME case studies. European Patent Office. Retrieved from https://www.epo.org/ learning-events/materials/sme-case-studies.html. 17 European Patent Office (1994). Utilisation of patent protection in Europe; representative survey carried out on behalf of the European Patent Office. EPOScript, Volume 3 (ISSN 1021-9390). Munich: European Patent Office. 18 (a) Hall, M., Oppenheim, C., Sheen, M. (1999). Barriers to the use of patent information in UK small and medium-sized enterprises. Part 1: Questionnaire survey. Journal of Information Science 25(5), 335–350. (b) Hall, M., Oppenheim, C., Sheen, M. (2000). Barriers to the use of patent information in UK small and medium-sized enterprises. Part 2(1): Results of in-depth interviews. Journal of Information Science 26(2), 87-99. 19 H. Schofield, H. (1996). Patent information usage by chemists in universities. In Collier, H. (ed.). Proc. Chemical Information Conference, Nimes, 21–23 October 1996. (pp.111–120). Calne: Infonortics Ltd.

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20 Schmoch, U. (1990). Disclosure of patent information for small and medium sized enterprises. World Patent Information, 12(3), 158–164. 21 Stephenson, J. (1982). The use of patent information in industry. World Patent Information, 4(4), 164–171. 22 WIPO (2019.02.26). Glossary of terms concerning industrial property information and documentation. Appendix III to Part 8 of the WIPO Handbook on Industrial Property Information and Documentation. Retrieved from https://www.wipo.int/standards/en/. 23 Blackman, M.J.R. (1996). Designs as a searchable intellectual property right. World Patent Information 18(4), 193–204. 24 Adams, S. (2001). Design searching; the forgotten corner of intellectual property. Online 25 (3), 54–58. 25 WIPO (2019.02.28). Survey on the use of WIPO Standards. Retrieved from www3.wipo.int/ confluence/display/usestandards/CWS+Survey+on+the+use+of+WIPO+Standards+Home. 26 The Fire Engines Property Act 1775. 15 Geo. III, c.61. 27 European Union (2009.06.16). Supplementary protection certificate for medicinal products (codified version). Regulation (EC) No. 469/2009 of 6 May 2009. Official Journal of the European Union, L152, 1–10.

Chapter 2 The European Patent system The European Patent system is the best current example of a fully-functioning regional patent system, in which a central body takes on the role of examining and granting patents on behalf of its member states. As such, it breaks the “one country, one patent” rule and has important implications for the searcher. Regional patent systems are not a totally modern phenomenon. In the United Kingdom, prior to 1852, there were separate systems granting patents in England (which included Wales), Scotland and Ireland. During the 1950s, the four Scandinavian countries (Denmark, Norway, Sweden and Finland) tried to set up a Nordic patent system, and got as far as passing identical legislation with a view to facilitating this process. However, the principal regional patent system in the modern era is the European Patent Office (EPO), founded on a diplomatic Convention signed in Munich on 5th October 1973, the European Patent Convention (EPC). Technically, this Convention brought into existence the European Patent Organisation, which comprises two organs, the European Patent Office and the Administrative Council. The latter supervises the work of the Office and sets general policy directions. The main European Patent Office website can be found at , which provides links to much of the documentation and databases produced by the EPO.

History and development The EPO started operation in 1978, and is now recognised as one of the most influential patent offices in the world, as one of the so-called IP5 (CNIPA, EPO, JPO, KIPO and USPTO). Table 2.1 shows the membership as of 2020, in chronological order of their joining.

Member states, extension states and validation states It is clear from Table 2.1 that many member states of the EPO are also members of the European Union (EU), although Switzerland and Turkey are prominent exceptions. The relationship between the EPO and the EU institutions does not require that the membership of the two bodies is identical, and it is important thus to realise that a European Patent is not equivalent to “an EU patent”. In legal terms, the https://doi.org/10.1515/9783110552263-002

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Chapter 2 The European Patent system

Table 2.1: Members and Extension States of the European Patent Organisation. Country name

ST. Country Code

Date of entry into force

Membership status

Belgium

BE

..

Member

France

FR

..

Member

Germany

DE

..

Member

Luxembourg

LU

..

Member

Netherlands

NL

..

Member

Switzerland

CH

..

Member

United Kingdom

GB

..

Member

Sweden

SE

..

Member

Italy

IT

..

Member

Austria

AT

..

Member

Liechtenstein

LI

..

Member

Greece

GR

..

Member

Spain

ES

..

Member

Denmark

DK

..

Member

Monaco

MC

..

Member

Portugal

PT

..

Member

Ireland

IE

..

Member

Finland

FI

..

Member

Cyprus

CY

..

Member

Turkey

TR

..

Member

Bulgaria

BG

..

Member

Czechia

CZ

..

Member

Estonia

EE

..

Member

Slovakia

SK

..

Member

Slovenia

SI

..

Member (extension state ..–..)

Hungary

HU

..

Member

History and development

37

Table 2.1 (continued ) Country name

ST. Country Code

Date of entry into force

Membership status

Romania

RO

..

Member (extension state ..–..)

Poland

PL

..

Member

Iceland

IS

..

Member

Bosnia & Herzegovina

BA

..

Extension state since ..

Lithuania

LT

..

Member (extension state ..–..)

Latvia

LV

..

Member (extension state ..–..)

Malta

MT

..

Member

Croatia

HR

..

Member (extension state ..–..)

Norway

NO

..

Member

North Macedonia

MK

..

Member (extension state ..–..)

San Marino

SM

..

Member

Montenegro#

ME

..

Extension state since ..

Albania

AL

..

Member (extension state ..–..)

Serbia#

RS

..

Member (extension state ..–..)

#

The Federal Republic of Yugoslavia (YU), consisting of Serbia and Montenegro, became an extension state of the European Patent Organisation on 1st November 2004. When Montenegro became independent in 2006, the extension state agreement was continued by the Republic of Serbia (RS) as the legal successor to the agreement, and remained in force until Serbia became a full member on 1st October 2010. Montenegro (ME) concluded a separate extension agreement with the EPO which entered into force on 1st March 2010.

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Chapter 2 The European Patent system

European Patent Convention is part of the acquis communautaire, meaning that a country which commits to joining the EU is obligated in due course to ratify the EPC and hence become a full member of the EPO. However, the reverse does not apply – joining the EPO pre-supposes no commitment to joining the EU. In 1973, all the member states of the EU (then the EEC) signed the Munich Convention, but over the following decades, the membership of the two institutions has not followed in step as originally planned. When a country becomes a member of the EPO, it undertakes to accept the patents examined and granted by that body as being valid on its territory without further restriction. The member state does not abolish its own office, but continues to grant national patents and to accord the European Patents an equal status with them. As a consequence, inventions in EPO member states may be protected in theory by one of two equivalent routes – a national patent or a European Patent. However, an application for a European Patent does not necessarily result in a patent in all member states. The applicant has the option to select (or “designate”) those member states in which they wish to obtain protection; this list can vary from one upwards, and frequently consists of the entire membership even when the applicant has no intention of obtaining patent rights in all the countries concerned. In order to establish whether an invention has been protected in an EPO member state, it is necessary to determine firstly whether a European Patent for the invention has been granted and secondly whether that patent has designated the member state of interest. A number of smaller states have opted for status as extension states, rather than full members. An extension state has entered into a bilateral agreement with the EPO, to recognise granted European Patents as being valid on its territory. There may be differences in the documentation issued by extension states, compared with full members (for example, they may issue a national patent document with a special number series or KD code to represent the converted European Patent). Extension states do not have voting rights on the Administrative Council, and in some cases this status has been a transition to full membership in due course (e.g. for Slovenia and Romania). At the time of writing, there are only 2 remaining extension states: Bosnia & Herzegovina (BA) and Montenegro (ME). In addition, a new form of agreement was first implemented from 2010. The EPO announced that, with effect from 17th December 2010, Morocco (MA) had become the first country outside of continental Europe to sign an agreement to recognise European Patents on its territory. The agreement entered into force on 1st March 2015. This new form of arrangement is referred to as a “validation agreement” and such states are referred to as “validation states”; the term “extension states” will no longer be used. These arrangements will in practice be very similar

EP patent documents – centralised and nationalised procedures

39

to the previous extension agreements, in that the countries will agree to recognise granted European Patents as valid IP rights on their territory with the minimum of administrative effort. Each validation state will make its own arrangements about announcing grants, such as publishing a new document type or a simple listing in their local patent gazette. Similar agreements have been concluded with Moldova (MD) in 2013 (following its renunciation of the Eurasian Patent Convention; entered into force 1st November 2015), Tunisia (TN, entered into force 1st December 2017), Cambodia (KH, entered into force 1st March 2018) and Georgia (GE, signed on 31st October 2019, not yet in force). It was announced in 2019 that negotiations had begun with Jordan (JO) to become a validation state.

EP patent documents – centralised and nationalised procedures The operation of the European Patent system is a mixture of activities, some carried out at the EPO offices and some at the national level. Typically, the national level stages are at the very beginning and the end, with the EPO taking responsibility for the main process of examining and granting. At the point of initial application, the EPO can be considered as if it is a single “mega-country” for claiming their priority rights under the Paris Convention. Hence, an applicant in (e.g.) the United States can make a single application to the EPO, claiming a US priority date, in order to initiate the process of obtaining a European Patent. Each of the member states of the EPO can act, via their national patent office, as the receiving point for an application to the EPO. Specific ranges of application numbers are allocated to each office or group of offices, enabling a user to determine where and how an application was filed, simply from the format of the EPO application number. The most recent listing was published in 20011, although it does not take account of new number series added for the more recent member states. Formal examination and search report In order to proceed through the official stages, the applicant must provide a translation of their application into one of the three official languages of the EPO (English, French or German). This language is then used as the language of proceedings throughout the granting stages. Further translations into other European languages can thus be deferred, with significant cost savings for the applicant at this stage. A brief examination for formal completeness of the document is carried

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Chapter 2 The European Patent system

out shortly after application, and provided that the necessary fees are paid and formalities completed in time, a search report will be prepared. The application is published unexamined around 18 months from the priority date.

Unexamined publication Unexamined applications are published electronically at 14:00 CET on Wednesday of each week – during 2018, average production was some 3,000 new bibliographic announcements and approximately 1,600 new specifications (excluding delayed search reports and amendments); the difference between the two figures is the 1,400 sets of bibliographic data only which relate to PCT documents entering the regional phase at the EPO without republication of the specification. At the time of publication, the application is given a new number with the appropriate ST.3 country code “EP” prefix, and one of two possible Kind of Document (KD) suffixes. If the search report is available at the time of publication of the specification, both documents are bound together and published as a EP-A1. If the search report is delayed, the specification only is published, and given the code EP-A2. The delayed search report will then be published separately, using the same publication number as the A2 to which it relates, but with the suffix changed to A3. In recent years, the EPO has concentrated on concluding searches more rapidly, and the proportion of A1 documents has improved to over 95% of each week’s publications, leaving less than 5% in the form of A2 documents with the corresponding A3 documents following on within weeks or months2. This improvement has been welcomed by applicants, since any delay in publishing the search can have a knock-on effect upon final progress to grant, as an applicant is not obliged to file a request for the next stage – substantive examination – until 6 months after the publication of the search report. A header from a delayed search report is reproduced at Figure 2.1, showing the INID codes for the publication date of the report itself (88) and the corresponding A2 specification (43).

Figure 2.1: EPO search report header.

EP patent documents – centralised and nationalised procedures

Figure 2.2: Contents of European search report.

41

42

Chapter 2 The European Patent system

The search reports of the European Patent Office are highly regarded for their completeness and quality, both for their own documentation and when they are operating as an International Search Authority under the PCT. The citations in the report represent those parts of the prior art which the search examiner believes will represent the most significant hurdles during substantive examination. A system of relevance indicators is used, to denote whether the citation is particularly damaging on its own (category X, usually in relation to novelty) or when taken with one or more other documents (category Y, usually in relation to inventive step). The list of available codes is reproduced with each search report, and can be seen at the foot of the page in Figure 2.2. It is important to note that the rules on designating states at the time of application have changed, and that it is now automatic for all EP-A documents to list the entire membership of the EPO on the front page, at INID code 84. These lists are therefore not indicative of the member states which will be confirmed as designated by the time the application is granted. The list of designated states on the granted (EP-B) document is a better indication of where the patentee wishes their patent to enter into force, although users are always advised to consult the EP Register for definitive information. Although the EPO takes every care to apply publication numbers in a systematic fashion, events can result in individual applications being withdrawn very close to the date when the EP-A document is published. This means that the publication number may be subsequently withdrawn from the record, leaving a gap in the sequence. Known gaps in the sequence are publicised as a separate listing at https://www.epo.org/searching-for-patents/technical/publication-server/unpub lished.html. In addition, the EPO now regularly produces an authority file, containing a complete list of all its published applications and grants since the beginning of operations, including a note of where publication numbers were un-used or withdrawn from use. The authority file is published at https://www.epo.org/search ing-for-patents/technical/publication-server/authority-file.html. Most of the exceptions are single documents, but one specific known gap occurred in 2007 due to technical problems in production, resulting in a break in the sequence of allocated publication numbers between EP 1821590 (week 34) and EP 1824331 (week 35) inclusive, leaving a block of 2742 missing numbers. The publication of unexamined applications has led to some problems in the biotechnology area, as the original application may include large numbers of very long genetic sequences, resulting in documents of more than a million A4 pages. In 2007, the EPO made a policy decision that such “megaapplications” would be published in electronic form only3 with the sequence listings available as zipped files from a dedicated area of the website, at https://www.epo.org/searching-for-patents/technical/publication-server/se

EP patent documents – centralised and nationalised procedures

43

quence-listings.html. Each case has a publication number in the conventional series, but this only includes the text portion of the application. The last case to be published in this way was in 2009; subsequent publications are available from the EPO Publication Server. It was recently announced4 that the complete back-file of all sequence listings contained in EPO applications has been made available as a bulk data set.

Grant publication Following publication of their search report, the applicant has the option to withdraw their application from further processing by the EPO, and may choose to do so if it appears that the effort and cost of proceeding to grant is no longer worthwhile. This can happen if the search report contains a number of X-citations, which might require extensive modifications of the application in order to circumvent them. However, if the applicant chooses to persevere and argue their case, the contents of their application will be examined in detail (“substantive examination”). If they can satisfy the examiner that it fulfils the criteria for patentability, the application will be granted and published a second time. The same publication number as for the -A stage is retained, changed to a -B1. The official notice of grant is mentioned in the EPO Bulletin, available in paper form (until 2005) and electronically via the EPO website (as individual issues or a cumulated database). With effect from April 2005, paper versions of EP-A and EP-B documents ceased to be published, and a new publications server was introduced as the official source of supply for European Patent specifications. Granted patents are issued on Wednesdays at 14:00 CET, in electronic form which is now the definitive publication record. Note that prior to 1 January 2006, the PDF format is regarded as the only definitive replication; although the older copies exist in XML format, these have been converted later and the reproduction cannot be guaranteed. In 2018, the EPO granted 127,623 patents, an average of some 2,400 patents per week, up some 20% on the previous year. The annual rate of grant grew rapidly in the period 2015–2018, after averaging averaged just over 65,000 cases per year for the 2011–2015 period.

Post-grant publications Once a patent has been granted by the EPO, it is open for a period of 9 months for opposition. If third parties object to the grant within that period, the arguments are heard centrally before the Opposition Division of the EPO. This may result in

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Chapter 2 The European Patent system

revocation, or the re-issue of an amended patent with the same publication number but the KD code -B2. Alternatively, if the patent is upheld in its entirety, no further document is issued and the EP-B1 stands as published. A granted European Patent retains the body of the specification in the original language of the proceedings, but has 3 sets of claims, one in each of the official languages. A further KD code, which is relatively new, is the EP-B3 code. This is used for documents published after the central limitation procedure, which was introduced in late 2007 when the revised European Patent Convention (EPC 2000) entered into force. Central limitation allows a patent owner to restrict the scope of the claims of their own patent, at any point after grant, and may be used as an alternative to expensive litigation in the courts when the validity of a patent is challenged. This process is still relatively little used; the first publications emerged in 2009 (49 cases) and has remained at much the same level up to the present day (2015 = 33, 2016 = 36, 2017 = 32, 2018 = 41).

Post-grant translations and the London Agreement For most of the life of the EPC, certain national procedures have been required after the EPO has issued a granted patent, in order to enter into force in all the designated states. One of the most common steps is to lodge translations of the entire specification, in accordance with Article 65 of the EPC. For example, if the granted specification is in English, and the patent holder has designated Italy, they must provide a translation into Italian within a fixed time period, usually 3 months. Failure to do so results in the patent being declared void for that country. A number of the EPO member states have created special number series and/or KD codes for the publication of their Article 65 translations. For example, as shown in Figure 1.1, the grant of EP 2947056-B1 (in English) was translated and re-published in Spain as ES 2652264-T3; although not shown in the Figure, the German validation was also renumbered as DE 60 2015 004581-T2. However, the translation into Danish retained the original EP number and merely changed the code, becoming DK/EP 2947056-T3. When the London Agreement5 entered into force on 1st May 2008, the regime for post-grant translation changed. Although it is designed to reduce the burden on the patent proprietor of supplying multiple language translations, the London Agreement is an optional arrangement and has not been taken up by all the member states. At the time of writing, only 21 of the 38 member states are operating under this system, whilst the remaining 17 states still have their original Art. 65 requirements in place.

EP patent documents – centralised and nationalised procedures

45

The principle of the London Agreement is that it distinguishes between (a) member states which have an official language in common with one of the official languages of the EPO (English, French and German) and (b) all other member states. States in the first group, and in which the Agreement is operating, are France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom. They are obliged to dispense with all their current translation requirements under Art. 65(1) EPC, and to allow granted European Patents in any one of the three EPO languages to enter into force on their territory. The remaining states in this group (Austria, Belgium and Malta) have not yet implemented the London Agreement and their pre-2008 translation requirements remain in place. Translation arrangements for the second group of states consist of a range of options, including translation of claims only into a national language. In Table 2.2, the different approaches are detailed as of August 2019.

Table 2.2: Translation requirements of European Patents after the London Agreement. ST. Country Code

EPC Contracting State

Entry into force

Translation Prescribed requirements national language

AL

Albania

..



AT

Austria

Not in force



BE

Belgium*

Not in force



BG

Bulgaria

Not in force



CH

Switzerland

..



CY

Cyprus

Not in force



CZ

Czechia

Not in force



DE

Germany

..



DK

Denmark

..



EE

Estonia

Not in force



ES

Spain

Not in force



FI

Finland

..



FR

France

..



GB

United Kingdom

..



Albanian

Danish

Finnish

46

Chapter 2 The European Patent system

Table 2.2 (continued ) ST. Country Code

EPC Contracting State

Entry into force

Translation Prescribed requirements national language

GR

Greece

Not in force



HR

Croatia

..



Croatian

HU

Hungary

..



Hungarian

IE

Ireland

..



IS

Iceland

..



IT

Italy

Not in force



LI

Liechtenstein

..



LT

Lithuania

..



LU

Luxembourg

..



LV

Latvia

..



MC

Monaco

..



MK

North Macedonia

..



MT

Malta

Not in force



NL

Netherlands

..



Dutch

NO

Norway

..



Norwegian

PL

Poland

Not in force



PT

Portugal

Not in force



RO

Romania

Not in force



RS

Serbia

Not in force



SE

Sweden

..



Swedish

SI

Slovenia

..



Slovene

SK

Slovakia

Not in force



SM

San Marino

Not in force



TR

Turkey

Not in force



Icelandic

Lithuanian

Latvian

Macedonian

* National law amended to waive requirement for translation of English-language granted European Patents after 2017.01.01. This has the same effect as if Belgium had acceded to the London Agreement.

EP patent documents – centralised and nationalised procedures

47

Key to Translation requirements code (column 4): 1. Complete specification, including claims, into national language 2. No post-grant translation required, irrespective of language of grant 3. Claims into a prescribed national language, specification into English 4. Claims into a prescribed national language, specification into either English or national language 5. Claims into a prescribed national language, no translation of specification required It is important for the information specialist to note that the London Agreement only removes the obligation to deposit translations. Proprietors may continue to lodge translations if, for example, they have reason to suspect infringement is possible in a particular country and wish to establish public availability of their granted patents. This means that although the established document series covering EP translations (e.g. the DE-T3 range) have reduced substantially, they have not ceased altogether.

Other post-grant events Provided that the Article 65 (or London Agreement) translations are duly lodged at the appropriate national patent offices, no further action affecting the text is required for a granted EP to enter into force into each state for which designation fees have been paid. Some additional procedures, referred to as the “validation” of the patent, may be required in some member states under national law. The subsequent renewal fees are paid to the individual states, hence it is possible for a granted EP to lapse in one state but not in another. Similarly, the granting of licences, registration of re-assignments or other transactions in the patent must be carried out at the local level. For this reason, it is regarded as more a “bundle” of national patents rather than a true unitary patent. Crucially, if the 9month opposition period ends without objection being filed, anyone wishing to challenge the patent at a later date must do so at each national court individually. During litigation, the court findings in one country are not indicative of the status in another country. The new central limitation procedure is the only means by which the scope of the granted claims may be amended for all states in a single action, and this can happen at any point in the life of the patent. Applications for central limitation are lodged at the EPO and heard within the Office, rather than at the national level. If the amendments to the claims are accepted by the EPO, the specification is re-published with the new claims as an EP-B3

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Chapter 2 The European Patent system

document. The application supporting the changes, and subsequent correspondence, is added to the case dossier within the EPO Register record. At Table 2.3, the sequence of events leading up to a European Patent is illustrated. The “normal” course of prosecution would only result in an EP-A1 followed by an EP-B1, but this example has a rather more convoluted history and the publication stages incorporate both a delayed search report and two correction documents. If the same patent were subsequently to have an application for central limitation accepted, there might yet be more publications to the sequence, and it should be noted that the numerical part of the KD code is only denoting the document type, not the order of publication – for example, an EP-B3 can in theory be published soon after grant, followed by further amendments during opposition which lead to a chronologically later EP-B2 publication. Table 2.4 summarises the full range of available KD codes, as of 2019. Table 2.3: European Patent publication stages. Number

Date / comments

European application



 Apr ; Convention filing

European unexamined publication (no search report)

EP -A

 Nov ;  months after original German priority

European search report

EP -A

 Mar 

Correction to European unexamined publication

EP -A

 Feb  – corrects applicant data; new applicant added

European grant

EP -B

 Jun 

Correction to European grant

EP -B

 Oct  – corrects inventor data; two new inventors listed

Table 2.4: Summary of current (2019) EPO document codes. Code

Definition

A

Publication of unexamined specification with search report

A

Publication of unexamined specification without search report

A

Publication of search report

A

Supplementary search report on PCT application entering regional phase

EP patent documents – centralised and nationalised procedures

49

Table 2.4 (continued ) Code

Definition

A

Correction of front page of an A, A or A document

A

Complete reprint of an A, A or A document

B

Publication of grant of European Patent

B

Re-publication of amended grant of European Patent after EPO opposition proceedings

B

Re-publication of granted European Patent after central limitation procedure*

B

Correction of front page of a B, B or B document

B

Complete reprint of a B, B or B document

* The EPC allows for the possibility of several cycles of central limitation procedure, but the same KD code is used for each. The front page of a “second generation” EP-B3 would be annotated to indicate the dates of the original EP-B1 or EP-B2 and of the previous EP-B3.

National Classification Since its inception, the European Patent Office has used an enhanced version of the International Patent Classification (IPC) in order to classify its internal search files. Initially, the document holdings of the Institut International des Brevets (IIB) located in The Hague, which became the EPO’s search division, were classified by the Dutch IdT system, but this was progressively migrated to European Classification (ECLA) during the first decades of the EPO’s operations. ECLA was a sophisticated extension of the IPC, using a similar notation but with much finer sub-divisions available in many areas of technology. The ECLA scheme was eventually made available to the public when the corresponding search files were loaded on commercial vendor systems and Espacenet. Following an agreement with the US Patent and Trademark Office, the internal classification systems of both offices were abolished from 2013 in favour of the Cooperative Patent Classification (CPC). The CPC notation is also very similar to the IPC, which forms the core of this expanded system. All documents previously classified by ECLA have now got electronic CPC marks tagged to their records and the new system is used within the EPO’s search documentation, which covers multiple countries over many years. As a public search tool, CPC is also becoming available for use in Espacenet, as well as an increasing range of commercial search files. Some further aspects of CPC are discussed in Chapter 18.

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Chapter 2 The European Patent system

To date, ECLA classes, and latterly most CPC classes, have not been printed on the front page of European published documents; they are retained solely as electronic records. There are some moves to ensure that, for their own publications, all relevant CPC classes are available within the EPO on the date of publication, which may allow that in future there will be a printed listing of CPC classes on the front pages of EP publications. For most other countries, the CPC is applied post-publication by EPO examiners, to at least one member of most patent families in the DocDB database. As more countries (such as South Korea, China, Russia and Mexico) start to use the CPC in-house, the system will become usable in single-country collections as well as patent family databases. In recent years, EPO examiners have been classifying some non-patent literature as well as patents from other countries. Examiners have access to a wide range of non-patent literature, either by internal loading under publisher agreements, or by searching external systems. If a relevant item is located and cited as part of a statutory search, it may also be classified by CPC and added to the DocDB database. For ease of identification, the dummy country code “XP” is used to indicate these record types, followed by a numerical accession number.

Databases and database-specific aspects This section refers to only those databases which are dedicated to European Patent data. Many multi-country databases include EP data within their coverage, and these are discussed in Chapter 11. The summary listing is shown in Table 2.5. A complete listing of the EPO’s own product range is available in the publication “EPO Patent Information Products and Services – Price List 2019”, available from the EPO website. The EPO system has developed in parallel with the electronic information industry, and many databases cover the system from EP 0 000 001-A to the present day. However, character-coded full text of the specifications did not begin to be produced at source until the 1980s, and was generally not available for the granted documents until the 1990s. Prior to this, the documents were distributed in the form of image files, using a modified TIFF format, with only the basic (front-page) data being searchable. The early ESPACE diskbased products were principally used for document delivery, and had only a very restricted number of searchable fields from the front page data set; offline searching was facilitated by the companion ESPACE-ACCESS index disks. Subsequent back conversion, by both the EPO and some commercial publishers, has been

http://patentscope.wipo.int www.epo.org/publication-server EP-A + EP-B +

PatentScope

Publications Server#

Register

Free Patents Online (SumoBrain Solutions)

Google Patents

The Lens (formerly Patent Lens)

SureChEMBL*

EPFULL

EPO

EPO

EPO

EPO / Google / CLAIMS Direct

EPO / Cambia

EPO / SureChem

EPO / STN

STN

www.surechembl.org

www.lens.org

http://patents.google.com

AcclaimIP

www.epo.org/register

(continued )

Bibliographic data + EP-A full text + / Euro-PCT applications full text EP-B full text +

EP-A full text + Chemical structure image capture from +

EP-B full text +

EP-A full text + EP-B full text +

EP-A full text +

Procedural stages, file inspection and legal status +

EP-A full text + EP-B full text +

EP-A bibliographic data + (Worldwide file) EP-A full text +

EPO / WIPO

Public internet: (www. espacenet.com)

Espacenet

Coverage

EPO

Platform

Service name

Producer

Table 2.5: European Patent databases.

Databases and database-specific aspects

51

FamPat, FullPat

European Patents Fulltext (part of the Global Patents Fulltext suite)

Wisdomain

InnovationQ

WIPS Global

Total Patent One

PatBase

EPO

EPO / LexisNexis Univentio

EPO

EPO

EPO

Lexis-Nexis IP

Minesoft / EPO

www.patbase.com

www.totalpatentone.com

www.wipsglobal.com

www.ip.com

www.ActionablePatents.com

Dialog (http://dialog.proquest.com)

Questel (Orbit.com)

Platform

Bibliographic data + EP-A full text + EP-B full text +

EP-A full text + EP-B full text +

EP-A full text + EP-B full text +

EP-A bibliographic +, full text +. EP-B bibliographic +, full text +.

EP-A full text + EP-B full text +

EP-A full text + EP-B full text + Some legal status data +

Bibliographic data + EP-A full text + EP-B full text +

Coverage

the Publications Server is intended as a document delivery mechanism and has very limited search functionality. Text cannot be searched on this system. * The SureChem dataset has been annotated to improve chemical structure-based searching. SureChem was part of Macmillan’s Digital Science division 2010–2013, and transferred to the European Bioinformatics Institute (EMBL-EBI) in 2013, and re-branded as the SureChEMBL search service.

#

Service name

Producer

Table 2.5 (continued )

52 Chapter 2 The European Patent system

Relationships with the European Union

53

able to make available the vast majority of the entire EPO collection of specifications available in a text-searchable format. The searcher should remember that the full text databases listed will be in the three official languages of the EPO. In the case of granted documents, the claims are translated into all three languages, but the main part of the specification will remain in the same language as the corresponding EP-A document. Search files containing only EP-A documents must be searched in all three languages to ensure comprehensive retrieval; some distributors (e.g. STN) have added English abstracts to non-English EP-A records in their EPFULL file, some weeks after publication of the original language specifications.

Relationships with the European Union As noted above, the EPO is not an EU body, and its membership is not synchronised with that of the EU. At the time of writing, all 28 EU states belong to the EPO, but a number of states are EPO members but not belonging to the EU. Although the two bodies are independent, the EU is active in producing policies and international law which aim to stimulate and direct innovative capacity within its own member states. These policies have helped to shape certain revisions of the European Patent Convention. The EU also has a common interest with the EPO in seeking to promote the use of the patent system and related intellectual property protection regimes. The IPR Helpdesk (http://www.ipr-helpdesk.eu/) started as an EU initiative funded by the Directorate-General for Enterprise, and has now expanded into a number of different sites, providing information on the IP situation in SouthEast Asia, China and Latin America. The original helpdesk focussed on IP support for actual or intended holders of research grants from the EU Framework and Horizon 2020 programmes, but with these extensions, the resources have developed into a more general advice centre. The EU established the Office for Harmonisation of the Internal Market (OHIM) in Alicante, Spain, for the purposes of granting EU-wide Community trade marks from 1994 and Community designs from 2003. This was subsequently re-styled the EU Intellectual Property Office (EUIPO) from 2016. There has been discussion on a common EU utility model as well, but so far without progress. In other areas of IP, the EU has established a Community Plant Variety Office and a system of geographical indications, administered by the Commission.

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Chapter 2 The European Patent system

The effect of European Regulations and Directives When the European Commission and Parliament pass a new Regulation or Directive, it is intended for implementation amongst the EU member states. This could in theory lead to the anomalous situation of certain EPO member states being obligated to amend their national patent legislation in a fashion incompatible with their membership of the EPO and their commitments under the EPC. Hence, there is ongoing liaison between the two bodies. Specific examples include the Directive on certain aspects of biotechnology6 and a proposal on software/computer-related inventions7. In the former instance, the EPO has incorporated key provisions of the Directive into the EPC and amended the Implementing Regulations and the EPO Guidelines for Examination. Since a granted European Patent normally passes out of the jurisdiction of the EPO once the 9-month opposition period is over, any events relating to the end of the patent life are handled at a national level. Consequently, the two important Regulations on Supplementary Protection Certificates for pharmaceuticals8 and agrochemicals9 have been implemented by the EU member states without the need for any amendment to the EPO’s operating legislation. The EPO takes no part in the granting of these certificates, and no central record is maintained, even when it is a granted EP which is being extended; the case is treated entirely at the national level and definitive records will be maintained in the national register(s) only. Some information may be sent to the EPO for inclusion in the legal status data of the relevant EP Register record, but this is dependent upon the actions of the Member States.

Towards EU-wide patent protection; the Community Patent and unitary effect Over the last 45 years, the principal driving forces for – and the chief stumbling blocks against – progress towards a pan-EU patent right have been litigation and translation. The lack of a central patent court structure, capable of establishing decisions across all the EU states, has resulted in the situation with today’s European Patent, which is examined centrally but litigated nationally. Translations, which have to be carried out at the applicant’s expense for all the designated states, form a substantial part of the costs of maintaining a European Patent in force. Many argue that the majority of the Article 65 postgrant translations are never consulted, and that money could be saved by requiring only a smaller portion of the document – such as the claims – to be translated at the time of grant, instead of the entire specification. The London Agreement holds out the hope for some improvement in this area, but this

Relationships with the European Union

55

has not been ratified by all the current EPO member states. The language of publication for the so-called Community Patent has been at the heart of negotiations for many years. Discussion on a Community Patent has been ongoing since 1975, when the nine members of the then-EEC concluded the Luxembourg Agreement. Neither this nor a later 1989 revision entered into force. Further attempts were made by means of a draft Regulation published in 2000, which initially appeared to have broken the deadlock10 but was finally rejected in mid-2004. A second draft Regulation in 2008 was also rejected. The most recent attempt was launched in 2011 with the unusual step of 25 out of the (then) 27 EU member states agreeing to use the so-called “enhanced cooperation” procedure, which does not require unanimity in order to pass a Regulation11. Although not initially participating, Italy subsequently joined the procedure12, raising the number of Participating Member States (PMS) to 26 out of the current 28; Spain and Croatia (which was not an EU member when the process started) have remained outside of the discussions. The new procedure to obtain unitary effect is laid out in two Regulations, one concerning the application for unitary effect itself13 and the second concerning the regime for postgrant translations14. The EPO will act as the examining and granting body. It will not be possible to apply for a “unitary patent” as such – any application for a patent at the EPO can be converted (in an optional step) to include unitary effect, but only after the announcement of grant. From the information specialists’ point of view, this is not a new patent at all, but a change in the legal status of a regular EP grant. Within one month, the proprietor of any European Patent will be able to request the EPO to register that their patent is to be treated as a single IP right – a unitary patent – for the purposes of transfer of ownership or benefit, maintenance, revocation or lapse. The unitary effect will be valid for as many of the PMS as have, at the time of the request, ratified the Unified Patent Court (UPC) Agreement15. Validation of the European Patent in any of the EU states which are not bound by the UPC Agreement at that time, and in any non-EU member states of the EPO, will be carried out under national law, as at present. After a transitional period, registering for unitary effect will remove some of the obligations of the patent holder to provide further translations after grant (beyond the current tri-lingual claim set as for all EP-B documents), and advanced machine translation will be relied upon to ensure that local information needs are fulfilled. The system for unitary patent protection will not start operations until the UPC Agreement enters into force, which requires a minimum of 13 of the PMS to ratify the Agreement, including as a mandatory minimum the ratifications by the United Kingdom, France and Germany. At the time of writing, the ratification

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Chapter 2 The European Patent system

status falls short of this target, since Germany has not yet ratified the Agreement16. Shortly after the parliamentary procedure was completed in Germany, a legal action was commenced at the Federal Constitutional Court (the Bundesverfassungsgericht) which sought to prevent ratification being finalised. In March 2020, the Court delivered its judgement, which was to uphold the complaint17. Some commentators subsequently indicated that this could hold back the Unitary Patent system for another 5 years or more, whilst others were more optimistic that the procedure could soon start, once a new attempt at ratification was completed. However, even if Germany does ratify the Agreement in the near future, the United Kingdom’s status in the Agreement has changed since officially leaving the EU on 31st January 2020. The only thing which can be said with any certainty is that some variation in the administration both of granting and litigating unitary patent effect is likely to be introduced, if indeed the system will be able to commence operations at all. As far as documentation of unitary effect is concerned, the EPO will create a separate “chapter” within the EPO Register record for each grant where unitary effect is applied for, which will record if the application was accepted, and for which of the PMS the unitary effect becomes valid. It will remain the responsibility of the patent owner to arrange for validation in any remaining designated states, using the current national law procedure and/or the London Agreement procedure, whichever applies. In order to ensure that the fact of granting unitary effect is as widely disseminated as possible, the EPO has – at the time of writing – agreed in principle that a new bibliographic entry will be generated in parallel with the change in legal status. European Patents for which unitary effect has been granted will be indicated in the EP Bulletin using a new dummy KD code, EP-C0. The same publication number will be re-used e.g. published application EP-4567890-A1 may be followed in the bibliographic record by granted patent EP-4567890-B1 and, if unitary effect is granted, by EP4567890-C0. Since there is no change in the text of the patent itself, no new specification will be published, although it seems likely that a new “grant certificate” bearing the C0 number may be issued to the proprietor.

References 1 EPO (2001). Notice dated 1 October 2001 concerning new patent application numbering system for 2002. Official Journal of the European Patent Office, 24(10), 465–467. See also EPO (2019.11) Guidelines for Examination in the EPO, Part A, Chapter II, section 1.7. 2 EPO (2018). Publications Corner. EPO Patent Information News No.4/2018, p.15.

References

57

3 EPO (2007). Decision of the President of the European Patent Office dated 12 July 2007 concerning the form of publication of European patent applications, European search reports and European patent specifications. Official Journal of the EPO, Special Edition no. 3/2007, 97–98. 4 EPO (2019). Sequence listing data. EPO Patent Information News No.1/2019, p.3. 5 EPO (2001). Agreement dated 17 October 2000 on the application of Article 65 of the Convention on the Grant of European Patents. Official Journal of the EPO, 12/2001, 550–553. 6 European Council (1998). Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions. Official Journal of the European Communities, L213, 13–21. 7 European Commission (2002). Commission Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-related inventions. COM (2002) 92 FINAL. Brussels: European Commission. 8 European Council (1992). Council Regulation (EEC) No. 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products. Official Journal of the European Communities, L182, 1–5, (now codified as Regulation 469/2009, Official Journal of the European Union, L152, 1–10). 9 European Council (1996). Regulation (EC) No. 1610/96 of the European Parliament and of the Council of 8 August 1996 concerning the creation of a supplementary protection certificate for plant protection products. Official Journal of the European Communities, L198, 30–35. 10 European Commission (2003). Report of the 2490th meeting of the Competitiveness Council. Document 6874/03 (Presse 59), 15–18. 11 European Council (2011). Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection. Official Journal of the European Union, L76, 53–55. 12 European Commission (2015). Commission Decision (EU) 2015/1753 of 30 September 2015 on confirming the participation of Italy in enhanced cooperation in the area of the creation of unitary patent protection. Official Journal of the European Union L256, 19–20. 13 European Council (2012). Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection. Official Journal of the European Union, L361, 1–8. 14 European Council (2012). Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements. Official Journal of the European Union, L361, 89–92. 15 European Commission (2013). Agreement on a Unified Patent Court. Official Journal of the European Union, C175, 1–40. 16 The current ratification status of the UPC Agreement is maintained at the EU website, at www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id= 2013001 [Accessed 2019.09.05]. 17 Federal Constitutional Court (2020). 2nd Senate, Dr. S.’s complaint. Case reference 2 BvR 739/17 (decision 13th February 2020). Press Release 20/2020, 20th March 2020. Retrieved from www.bundesverfassungsgericht.de/SharedDocs/Pressemitteilungen/EN/2020/bvg20-020.html

Chapter 3 The United States Patent system Historical aspects The United States Patent Office (later, the Patent and Trademark Office, or USPTO) was established in 1836, but the earliest patent legislation dates from 1790, making this one of the oldest continually operating patent systems in the world. Prior to the formation of the United States, several of the colonies had their own patent laws, such as Massachusetts in 1641, Connecticut in 1672 and South Carolina in 1691. Between 1790 and 1836, some 10,000 patents were granted but not numbered. Many of the records were lost when the new Patent Office building was destroyed by fire in December 1836. Various attempts have been made to reconstruct the records from other collections, and these have been allocated a new number series starting with an X. As a result, the first US patent is not No. 1, as might be expected, but No. X1, which was signed by George Washington himself. The United States signed the Paris Convention shortly after it was completed, in May 1887, and joined the Patent Co-operation Treaty from the beginning, hence being able to be designated by this route from 1978. The standard country code for the United States is “US”. Patents granted by the USPTO are valid in the 50 states of the Union, plus Washington D.C., the US overseas territories and possessions such as American Samoa, Guam and Puerto Rico. The terminology for patent documents under the US system is potentially confusing. The main patents for invention are termed “utility patents”, which should not be confused with “utility models” for the lesser, patent-like, IP rights in other countries. The protection of designs, familiar in (e.g.) the United Kingdom as Registered Designs, are similarly termed Design Patents, which were introduced in 1842. Some plant material has been capable of protection by a special series of Plant Patents since 1930. For simplicity, it should be assumed in this chapter that references to “patents” indicate US utility patents. For many years, the US maintained a system of only publishing its patents once, after grant, in a single numbered series. This system continued for decades later than the other industrialised countries who progressively adopted deferred examination, with early publication at 18 months, from the mid-1960s. It was only in 2001 that the US changed its law, and it still has marked differences in practice from most other countries.

https://doi.org/10.1515/9783110552263-003

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Chapter 3 The United States Patent system

It is instructive to consider the rate with which patent issuing has increased over the lifetime of the Office. Table 3.1 shows the year of issue of each of the “million” milestones, and the decreasing interval to the next million. Table 3.1: Publication milestones in US patent history. Issue Year

Number

Interval (years)



X







,,





,,





,,





,,





,,





,,





,,





,,





,,





,,



*

* Approximately 10,000 X-series patents were granted in the pre-1836 period.

There are two fundamental aspects of US patent practice which impact upon information work. These are the grace period and the “first to invent” system; both of these aspects have undergone some changes in recent years, which has some impact on the work of the searcher. The grace period is not unique to the United States, but due to the importance of US industry, their utilisation of it within patent law is perhaps the most significant. Within the US system, the grace period lasts for 12 months, but its application has changed significantly since a law revision, which affects patent applications filed on or after 16th March 2013. The basic principle of a grace period is to ensure that certain disclosures of an invention to the public do not count as a bar to patentability, provided that they take place within a limited interval before the filing of a patent application. Under the old law, public use or sale was considered allowable if it took place within the United States; the new law disallows any public use or sale, irrespective of where in the world it happens.

Historical aspects

61

The operation of the grace period in the United States has permitted US inventors to be somewhat more relaxed about disclosures within the US than elsewhere, but only if the inventor has no intention of filing outside of the country. Even under the old law, a disclosure under the grace period in the US could still constitute a novelty-destroying act in respect of other patentgranting authorities. Perhaps the most famous example of this is the CohenBoyer patents, including US 4,237,224 on the fundamental processes of gene splicing. Stanley Cohen, an inventor based at Stanford University, published some details about the technique in a journal during 1973. The earliest US patent application was not filed until 1974, which was allowable within the grace period. However, the same journal article and a further disclosure in a US newspaper prevented corresponding applications elsewhere in the world for the same invention. In terms of patent information work, the grace period needs to be recognised in the context of an invalidity search, when attempts are being made to cast doubt on the patentability of an invention. If apparent prior art is discovered in the United States, it may not affect a United States application, but could still affect other applications in different parts of the world. Consequently the same invention may be patentable in the United States but unpatentable elsewhere. A second important aspect is the US’s “first-to-invent” system. This is sometimes confused with the grace period, since both aspects can lead to the same contrast in behaviour between a US inventor and an inventor elsewhere – namely, a pressure to file patent applications as soon as an invention is first recognised. Under the rest of the world’s “first-to-file” system, preference is given to the applicant who lodges their earliest (priority) application first. Although there is nothing guaranteed (each case has still to be examined), the earliest applicant has the best a priori claim to be granted the patent(s) on the invention. In the US “first-toinvent” system, the presumption is that the person entitled to the patent is the one who first conceived the idea and reduced it to a workable form. This means that if two competing applications are filed for the same invention, the patent may be awarded to the inventor who can prove the earliest date of invention, rather than the one who lodged their papers at the patent office first. In information terms, this means that industry must take particular care to maintain records (for example, laboratory notebooks) showing the development of a research project, as they may be called upon for evidence of date of invention in the event of dispute. As with the grace period, the America Invents Act (AIA) brought about a change to this legal approach. This removed the “first-to-invent” aspects from US patent law and brought it more into line with practice in other countries, using a so-called “first-inventor-to-file” system. The information implications of this will be discussed in more detail in the next section.

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Chapter 3 The United States Patent system

Recent law changes The two most significant recent developments, from the information scientist’s point of view, came in 1999 with the passing of the American Inventors Protection Act (AIPA), and in 2011 with the America Invents Act (AIA). In common with US practice, both these laws are now consolidated into a revised Title 35 of the United States Code (35 USC). The initial impact of the AIPA for the patent searcher was the introduction of dual publication within the United States. Prior to this point, the USPTO had been alone amongst the major patent offices in its policy of only publishing once, at grant. The AIPA introduced publication of most pending US patent applications at 18 months from priority. The first of these documents appeared in March 2001, and they continue to publish regularly on each Thursday (the granted patents series continue to publish on Tuesday of each week). This has significantly increased the volume of USPTO-originated publications to be handled by the commercial patent family database producers. Many of the implications of the AIPA for the information specialist were reviewed in a symposium of the Chemical Information (CINF) Division of the American Chemical Society1 in 2002. The changes for the searcher which were brought in by the AIA were rather more subtle. Amongst these were the introduction of a revised system of postgrant opposition procedures, called inter partes review (or IPR) in addition to the existing mechanism of ex parte re-examination; this had the effect of complicating the interpretation of post-grant documentation, since the -C publications are now no longer the only place to locate amended claims for a granted patent. Other changes which can lead to changes in searching practice include; – the ability of a corporate entity to be the patent applicant, replacing the earlier limitation to natural persons only, – the effective removal of the “best mode” requirement, which may render US-filed applications less informative than before, – an expanded definition of prior art, to include all pre-filing activities such as (i) universal public use and sales, (ii) universal publications, and (iii) other disclosures available to the public anywhere in the world. This has the effect of limiting the application of the grace period to the inventor’s own disclosures within one year of filing. An earlier significant hiatus in the legislation, important for the legal status searcher, came in 1995. The Uruguay Round Agreements Act (URAA) of 1994 was designed to bring the United States into line with the requirements of the TRIPS (Trade-Related Aspects of Intellectual Property) Agreement, which was

US patent documents

63

part of the founding treaties of the World Trade Organisation. TRIPS required a minimum term of 20 years from filing for patents. Up to this time, the United States, with its single-publication policy, had calculated patent term from the date of issue (grant) of the patent, for 17 years. Under the URAA, patents in force on 8th June 1995, and granted patents based on applications pending before the same date, were allowed a term of 17 years from grant or 20 years from application, whichever was the longer. Applications filed after this date have a uniform term of 20 years from application. Further term changes (known as Patent Term Adjustments, or PTA) were brought in under the AIPA, from 29th May 2000, and may be applied if the USPTO takes excessive time in prosecution of an application. The intention is to ensure that the effective life of a patent is not reduced below the old Act term of 17 years, even if the prosecution takes longer than 3 years. These adjustments should not be confused with Patent Term Extensions (PTE), which correspond to the additional protection term granted for marketed pharmaceuticals, and are administered jointly by the USPTO and the Food & Drug Administration (FDA). The PTA arrangements are available for all subject matter, whereas only certain subject matter patents are eligible for PTE-style extension.

US patent documents Application procedure In common with other patent offices, an application for a patent in the United States is allocated a serial number on receipt. However, unlike other offices which usually recycle to number 1 at the start of each new year, US serial numbers are in blocks of approximately one million. On each occasion when it appears that, during the course of the current calendar year, there will be a need to allocate a serial number in excess of 999,999, the sequence reverts to 000,001. This means that, in recent decades, the same serial number has been given at approximately 8–10 year intervals. In order to distinguish between potentially conflicting serial numbers, the full citation of a US application number has two parts – a so-called “series code” which identifies the cycle, and the actual serial number itself. Table 3.2 shows the application number series which have been used so far for utility patents. It can be seen that, in recent decades, the clean break due to the closure of one series and the opening of a new series has become more blurred, with several series running concurrently. In addition, the allocation of a US application number to a PCT case upon entering the national phase can cause a mismatch

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Chapter 3 The United States Patent system

Table 3.2: US application number series codes. Regular application series code

Start date

Closing date

Provisional application series code

Start date

*

..

..



..

..



..

..



..

..



..

..



..

..



..

..



..

..



..

..



..



..

..





..

..



§

..

..





..

.



..

.





.

. ?





. ?





. ?





*

∞

Closing date

. .

 ?  ?

* Series 01 contained two sequences of approximately 750,000 applications, reverting to number 000,001 on 1 Jan. 1925. § Some authorities indicate that series 11 ran concurrently with the end of series 10, although the USPTO table asserts that series 10 closed in November 2004. ∞ Some authorities indicate that series 13 ran concurrently with the end of series 12, but others indicate that series 12 closed on 2010.12.17 and series 13 opened on the same day.

between the legal filing date (derived from the PCT international application) and the apparent year of filing (as derived from the application series code), which is in fact the year of national phase entry. In modern practice, the series code has become an essential part of the input format for many search systems, but the corresponding data has unfortunately been lost from database records of older documents. The above Table and a more detailed concordance on the

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65

USPTO website2 are included in order to assist the information specialist to derive the full citation if necessary. For example, if an article or patent cites (a fictitious example) “US patent application 345,678” and it is clear from the context that this is dated in the early 1980s, then reference to the above Table will confirm that this number must fall within series 06, and the correct citation would be 06/345678. The USPTO website table is current as of 2016, and does not appear to be being updated. The application series code assumed additional importance from 1995, when the United States began using a provisional application system. This allows the applicant to lodge an “informal” application, which is not required to be as complete as a conventional first filing. The provisional application must be converted into a regular utility patent filing within 12 months and – perhaps more importantly for information purposes – can be used to claim foreign priority under the Paris Convention. This means that the serial number from a US provisional application may appear on the front page of (for example) a European corresponding filing. The serial number, just like the regular numbers, ranges from 000,001 to just under one million, but the series codes started at 60, moving to new series 61 in 2008 and series 62 in approximately 2014. However, this system creates potential for confusion if the series code is lost, either from the front page citation or any corresponding database records. There have been two periods in which the serial number portions of the provisional series and the in-force regular series have been overlapped; these were 1998–1999 (series 60 overlapped with series 09) and 2003–2004 (series 60 overlapped with series 10). The only way of distinguishing documents is by determining which series is intended in the citation. Some commercial databases have attempted to remove this ambiguity by reformatting US provisional application numbers, using additional letter P to distinguish the provisional series, or by retaining the series code itself; the latter action has been done in the case of the Derwent World Patent Index and EPO DocDB databases, from series code 13 onwards.

Examination, early publication and grant The USPTO examiners are divided into subject-matter groups called Art Units, with each examiner within the Art Unit having responsibility for a specific area of technology. Newly received patent applications are classified and allocated to an Art Unit, where the process of examination commences. This includes a search by the examiner of the previous literature (patents and non-patents). Under the new US procedure, the processes of examining a patent and of publishing the specification as filed at 18 months operate in parallel. This contrasts with the process at (e.g.) the EPO where search and examination are strictly sequential, with no progress

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being made on examination until the search report has been published and the applicant has filed a request for examination. As a consequence of these differences, there are distinct aspects of the US patent documentation which differ compared to other major systems. One difference, illustrated by the example in Table 3.3, shows that it is possible for the two publications to leap-frog one another. The normal sequence would be for the appearance of the unexamined publication as a Kind of Document (KD) code US-A1, followed later by the granted patent, issued as a US-B2. However, if the examination time required for a particular application is less than 18 months, the first publication is the granted patent, which retains the -B suffix for grant, but distinguishes it by using a “B1”, meaning first publication. The corresponding unexamined publication may then publish a number of weeks or months after the grant, still using the -A1 suffix. Note that the number formats for early publication and grant differ; the early published cases have a 4digit year followed by a 7-digit serial number, which recycles to 0000001 every year, whereas the granted patents continue to be published in the running series, now around the 10,400,000 mark. Under previous legislation, when there was only one publication, the granted patent bore the KD code US-A in the databases, although this was not actually printed on the front page of the documents for many years, and rarely used in contemporary discussions of US patent documentation.

Table 3.3: US publication sequence. Pre-AIPA legislation

Printed numeration

US application

/, (..)

US publication / grant

US ,, (..)

Under AIPA – “conventional” order US application

/, (..)

US unexamined publication (pre-grant publication, PGP)

US /-A (..)

US granted patent

US ,,-B (..)

Under AIPA – “reverse” order US application

/, (..)

US granted patent – first publication

US ,,-B (..)

US unexamined publication

US /-A (..)

US patent documents

67

In cases where the provisional application processes has been used, this data is captured at INID field (60) under the title “Related U.S. Application data”. Depending upon the database, this earliest priority may be captured and searchable, or lost. If lost, the earliest searchable application data will be the regular US application based upon the earlier provisional, which appears at INID field (21). An example of this is shown in Figure 3.1.

Figure 3.1: US front page showing provisional filing data (INID 60).

One further major difference between the US and rest-of-the-world practice is in the area of search reports. These appear at INID field 56, entitled “References cited”, but only on the granted patent, not on the US-A1 documents. As a consequence, the literature which appears on a US patent is, by definition, prior art which has failed to result in the complete rejection of the patent application (although it may have forced a modification to the claims). By contrast, the search report on an EP-A or GB-A document is untested at the time of publication, and may result in the rejection or substantial modifications to the text of the granted patent. This difference in the purpose of the search reports for different documents

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Chapter 3 The United States Patent system

can have important consequences when these data fields are used in citation searching. In recent years, it has been noticeable that US lists of references cited have increased in length and (according to much anecdotal evidence) decreased in relevance. This is probably due in part to the requirement under US law to lodge an Information Disclosure Statement (IDS) as part of the application procedure. This is a list of all the relevant prior publications which the applicant knows about. Failure to disclose known relevant prior art is treated very severely by the USPTO, and as a consequence these IDS’s tend to err on the side of generosity. Much, if not all, of the IDS is transferred to the list of “References cited”, which tends to dilute the precision of these lists and affect their usefulness for citation searching even more. Prior to the new procedures under the AIPA, which provided for systematic early publication of pending applications, a small number of US patent applications were published before grant. The main schemes for these were the Statutory Invention Registration process and the so-called NTIS (National Technical Information Service) publications. The Statutory Invention Registration process was a mechanism whereby a US applicant could request that the contents of their application were laid open to the public, even after the USPTO has indicated that they would not permit the granting of a patent on the same application. This procedure was useful if an inventor applied for a small incremental advance in technology, which was insufficient to merit a patent in its own right, but nonetheless commercially important. The inventor, by deliberately laying open their invention, could ensure that the information entered the public domain and became unpatentable in other jurisdictions as well. A Statutory Invention Registration document appeared similar to a patent, but had none of the enforceable rights of a patent. They were published in a separately numbered series, with a KD code of -H. After the introduction of 18-month publication from 2001, the procedure became largely redundant, and was repealed in 2013 under §3(e) of the AIA. An example of the header information from an S.I.R. is shown at Figure 3.2.

Figure 3.2: Title header of a US Statutory Invention Registration.

US patent documents

69

The second process of “early publication” under the old legislation applied only to patent applications arising from Federally-funded research. In order to facilitate the process of licencing of any patents arising from such work, the patent applications were published prior to grant. The co-ordinating body for this was the Department of Commerce’s National Technical Information Service (NTIS), who already produced large numbers of US Government reports in regular series, and a corresponding bibliographic database. Patent applications published under this system were allocated a dummy US “patent” number, which consisted of the application number preceded by the series code. For example, if application 345,678 in series 07 was published as an NTIS case, the dummy US number allocated would be 7345678. During the period from the 1960s to the 1980s, this system did not create any problems, but once the regular granted patent series exceeded around 6,000,000, it was possible to get conflicts, with the same apparent publication number being issued twice. As a result, commercial database producers have had to modify the number formats in order to distinguish between NTIS published applications and regular patent grants. Some have applied a dummy KD code of US-A0 (A-zero) to the NTIS cases, whilst others have used a letter N prefix and/or suffix to the publication number, e.g. USN 7532327-N. If an application which had been published under the NTIS scheme subsequently proceeded to grant, it would be allocated a proper grant number in the conventional sequence. In addition to the NTIS series and the SIR series, a small number of applications were published under various procedures such as the Trial Voluntary Protest Program (TVPP), using the application number as a dummy publication number, with a B prefix, hence US B123456-A, and the Defensive Publication procedure (1969–1985), using a T- prefix. Further details on number formats and coverage for these minority document types can be found in the documentation produced by the commercial database producers such as Chemical Abstracts Service (CAS) and Clarivate (for the WPI database). Searchers may also sometimes see reference to the publications of the Office of the Alien Property Custodian (APC). These were foreign-owned patents and pending applications confiscated during wartime by the US government. The bulk of documents relate to German and Japanese inventions seized during World War II. The information aspects of the APC’s activities are dealt with in a detailed paper by White3. The same author produced a detailed guide in 2008 of the various minor document series produced since the beginning of the USPTO4. In recent years, the USPTO has started to use the WIPO ST.50 corrections standard, which provides for new KD codes to be allocated to documents which correct earlier faulty publications. In the case of the US, two new KD codes are used: US-A8 for a republication of a front page of a specification, and US-A9 for

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Chapter 3 The United States Patent system

the complete republication. Unfortunately, the USPTO has chosen to adopt a different practice to the EPO and WIPO on this standard. Instead of re-using the publication number and changing only the suffix, the US practice is to publish under a totally new number. This means that it is substantially more difficult to determine which correction documents correspond to which original publication, from a simple family listing. For example, the corrected version of US 2003/ 0003092-A1 is not US 2003/0003092-A9, as might be expected under the EPO model of ST.50 usage, but US 2004/0086498-A9.

Post-grant activities Under the US system, there is no exact equivalent to the opposition procedure handled by the granting office, as in Europe. The majority of post-grant events surrounding patents, prior to the introduction of the AIA, were handled by court action. A limited number of events under the jurisdiction of the USPTO could take place in the life of the granted patent, which did result in a new or revised publication entering the bibliographic record. The passing of the AIA saw the creation of the Patent Trial and Appeal Board (PTAB), which has considerably enhanced the amount of post-grant activity which is heard before the USPTO. It was intended that these new procedures could replace protracted – and expensive – litigation, but it appears that in practice many cases before the PTAB are run in parallel with court action. The most common established procedures are re-issue and re-examination. For very minor changes, amendments to a granted patent can be achieved via a Certificate of Correction, which does not result in the re-publication of the patent itself, but takes the form of a document corresponding to an errata slip. For more significant textual changes, where the patent is in some way defective “through error without any deceptive intention”, the re-issue procedure leads to the withdrawal of the granted patent, and a new document, which is not permitted to contain any new subject matter, is issued in place of the old one. The new document totally replaces the original from the legal point of view, and the claims in the re-issue become the enforceable claims for the invention. A reissue patent has a new number, preceded by the letters Re, and a KD code of US-E. Although the majority of re-issues replace utility patents, they are occasionally issued to replace Design Patents or Plant Patents as well. Some example publication sequences are shown in Table 3.4. By contrast to a re-issue, the re-examination process more commonly results in a substantive change in the subject matter protected by a patent. The reexamination process can be initiated by the Director of the USPTO or by a third

US patent documents

71

Table 3.4: US Re-issue publications. IP right

Original application Original grant (date) (date)

Re-issue application Re-issue grant (date) (date)

Utility patent

/, (..)

US -A (..)

/, (..)

US Re ,-E (..)

Design patent /, (..)

US D (..)

/, (..)

US Re ,-E (..)**

, (..)

US PP , (..)

, (..)

US Re ,-E (..)

Plant patent

** Note: Some database entries will change this prefix to US RD38467, but the actual printed document retains the Re prefix in common with re-issues of utility patents.

party. Re-examination requests are assigned a “control number” which has a similar format to a conventional application number, but uses series 90 or 96 for an ex parte re-examination, or series 95 for the newer inter partes review procedure. Either form of procedure is designed to address issues where “a substantial new question of patentability” has been raised in respect of a granted patent. The new document which emerges after re-examination frequently has a different number of claims, with different scope. Under the old (pre-AIPA) legislation, the re-examination certificate used the same number as the original patent, but changed the KD code to US-B. In the (rare) event of multiple re-examinations, US-B2, US-B3 etc. certificates could be issued. Once the AIPA procedure started, the -B code was needed for the normal granted sequence, so re-examinations from 2001 were allocated the code US-C1. Corresponding multiple re-examinations would result in US-C2, US-C3 etc. certificates. Since a reissue document can itself be re-examined, it is possible to see combinations of prefixes and suffixes such as US Re 35,860-C1, which was a re-examination of US Re 35,860-E which was a re-issue of US 5352046-A (old Act). Depending upon the source of data, such documents may alternatively carry a different KD code, being listed as US Re 35860-F1. One problem for the searcher following the creation of the AIA inter partes review has been the lack of documentation entering the conventional bibliographic work flow. Unlike the EPO opposition procedures, where there may be a new publication such as a EP-B2 document if claims are amended, the documentation showing the effect of a PTAB decision is available only within the PTAB part of the USPTO website or the PAIR record of an affected patent. It is possible to search for a published unexamined application number or a granted patent number individually, but other search fields are very limited (e.g.

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Chapter 3 The United States Patent system

the user cannot browse to obtain all PTAB hearings or decisions in relation to a specific patent assignee’s portfolio), unless a user creates an account to the PTAB E2E system. A number of commercial information providers have started to include PTAB documentation under their search services, and a useful comparison of these has been provided by the Law Library of the University of Akron5. For an attorney’s-eye view on how post-grant proceedings have changed since the AIA, the article by Hanovice et al.6 is a useful summary. As far as official documentation is concerned, it is possible to monitor the Notices section of the USPTO Official Gazette, for weekly listings under “AIA Trial Proceedings Filed before the Patent Trial and Appeal Board”. The USPTO also releases a new daily “Official Gazette for Certificates”, which provides an interim announcement of the PTAB proceedings during Monday-Friday, before being cumulated into the following Tuesday Official Gazette for Patents. The publication is released on the USPTO website at www.uspto.gov/web/patents/dailycert/. Note that the final decisions of the PTAB are not announced in the Official Gazette, only the filing of new applications for review. Certain documents relating to the work of the PTAB will be added to the PAIR record of the patent in suit, but in order to obtain a more comprehensive record of the actions and decisions, the E2E system is preferable. It is worth pointing out that the USPTO only began to print the official KD code on its documents from 2nd January 2001, at which point a number of changes to its code series were introduced. Prior to this, although a plain-text designation of the type of document was included (e.g. the words “Reexamination Certificate”), no code was included. Any electronic bibliographic records prior to 2001 bearing KD codes will be non-official codes added by the database producer. The current range of official KD codes is shown in Table 3.5. Some redundant codes are shown in Table 3.6.

Table 3.5: Summary of historical and current US KD codes. Code

Pre- Definition

A

Granted patent

B, B, B..

Re-examination certificate (successive generations carry increasing number suffix)

E

Re-issue patent

US patent documents

73

Table 3.5 (continued ) Code

Pre- Definition

F, F, F..

Re-examined Re-issue patent (successive generations carry increasing number suffix)

H

Statutory Invention Registration (.. onwards)

P

Granted Plant Patent

S

Design Patent

Code

Post- Definition

A

Publication of unexamined application (Pre-Grant Publication, or PGP)

A*

Re-publication of unexamined application (with new number)

A*

Complete reprint of an A document (with new number)

B

Publication of grant of patent without prior A publication

B

Publication of grant of patent following prior A publication

B, B#

Reprinted front page or entire specification of -B or -B document

C, C, C..

Re-examination certificate (successive generations carry increasing number suffix)

E

Re-issue patent

F

Supplemental examination certificate (.. onwards)

H

Statutory Invention Registration

J, J, J..

Post-grant review certificate (.. onwards) (successive generations carry increasing number suffix)

K, K, K..

Inter partes review certificate (.. onwards) (successive generations carry increasing number suffix)

O, O, O..

Derivation certificate (.. onwards) (successive generations carry increasing number suffix)

P

Publication of unexamined Plant Patent application

P

Granted Plant Patent without prior P publication

P

Granted Plant Patent following prior P publication

P*

Re-publication of unexamined Plant Patent application

P*

Complete reprint of a P document

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Chapter 3 The United States Patent system

Table 3.5 (continued ) Code

Pre- Definition

S

Design Patent

X

Certificate of Correction

#

Although the US has publicised these codes, their function is largely taken on by the issue of Certificates of Correction or (rarely) by Re-issue, and so far the -B8 and -B9 codes have not been used. * The distinction between “republished” -A2 or -P4 documents and “corrected” -A9 or -P9 documents is not always clear. Both types may include additional material; an -A9/-P9 may only include new material which should have been in the original -A1/-P1 but was omitted due to a technical error in the publication process, whereas -A2/-P4 documents may incorporate later filed material (e.g. a new set of claims, new examples) which was not available at the time of printing of the -A1/-P1.

Table 3.6: Redundant US KD codes. KD code

Documents

Numbering format

I

Publication of granted patent between ..–..

XNNNN†

I

Re-issue patent granted between  (first re-issue statute) and  Jul. 

as for granted patents (US-I)

I

Additional Improvement patent (–)

AINNN#

I

Defensive Publication (..–..)

TNNNNNN or TVVVNNN*

I

Published patent application under the TVPP (–)

BNNNNNN (based on -digit application number)

†

The highest number available in the USPTO facsimile collection is X9900 (with gaps in the sequence); possibly up to X9957 issued. # The AI number was not related to the parent patent (e.g. US AI 318-I3 is based on US 31359-A), and is often not cross-referenced explicitly in the AI document. * Early references (1968–1969) were issued using the 6-digit application number alone. After Dec. 1969, a new unambiguous number format (TVVVNNN) was also adopted in parallel, consisting of the first 3 digits of the Official Gazette volume number (VVV) followed by a running serial number within the volume (NNN). The earlier format was retained in some databases for the entire collection.

Databases and database-specific aspects

75

Databases and database-specific aspects The main USPTO website can be found at www.uspto.gov, although some direct access web addresses are used for particular sub-services. The earliest document search facility was in the form of two separate search files, one of abstracts and second containing full texts. The current method of access to both published applications and granted patents is by the full text; indeed, there has never been a paper analogue to the Official Gazette for the published applications, and the electronic file of these documents constitutes the authoritative source. In addition to the public web-based file, the USPTO has a public reading room in its headquarters outside Washington D.C., from which it is possible to access an enhanced system called EAST (Examiner Automated Search Tool). This contains full text from 1920 to the present, including OCR scanning of the 1920–1970 segment. Since this service cannot be considered “public” in quite the same sense as other electronic services, due to its restricted access means and times, it will not be considered further in this section. The well-established major public databases are listed in Table 3.7. There have been substantial numbers of databases available on the public internet which contain subsets of US data, usually dedicated to specific subject areas: some of these continue, whilst others have ceased to be funded and/or updated. Some examples include the DNA Patent Database (DPD – now closed), a collaborative project of Georgetown University and the Foundation for Genetic Medicine7, the US Department of Energy’s patent database (part of its research grant and invention licensing programme, including patents back to the 1940s)8 or the US National Agricultural Library (NAL) listing of new plant cultivars which are subject to Plant Patent protection or the Plant Variety Protection (PVP) Act9. The latter illustrates the problem with many such “selected” sources – whilst they may be the basis of a useful search cluster, they do not tend to be well publicised outside of the industry, nor searchable in a way which delivers more effective or current results compared to the full authority files supplied by the USPTO. Despite these shortcomings, it is worthwhile for the specialist searcher who has a particular interest in a single, well-defined subject field to spend some time identifying these niche products. If they are maintained, they often incorporate additional information not readily available from standard patent databases, or have been augmented with additional searchable meta-data such as industry-specific classification. As with the EPO, the USPTO’s publication programme on optical disk has been largely replaced in recent years, with more products being distributed via the public internet. At the time of writing, the best overview of the various distribution mechanisms used by the USPTO can be found on the website at www.uspto.gov/learning-and-resources/bulk-data-products; this also includes

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downloadable spreadsheets with more detail about the year ranges for specific data sets and the search fields available. The USPTO has entered into an agreement with Reed Tech, a subsidiary of LexisNexis, to make a range of products available to the public free-of-charge. The home page for this distribution portal is at http://patents.reedtech.com/. The disk-based products were marketed under the CASSIS label, and covered not just patents but trademarks. Some of the more long-lived disk products included an annual index to the electronic Official Gazette, a number of tools relating to the US patent classification, and a static offline version of the Assignments database, which is also loaded on the USPTO website. The CASSIS products may still be available for searching older data at the various Patent and Trademark Resource Centers (PTRCs) spread across the US. A newsletter called “CASSIS Currents” was produced between 1998 and early 2005, and the archived copies may still be useful for reference. In addition to many files based on “first-level” data, an earlier product dedicated to US patents was the IFI Claims ® database. This was one of the earliest electronic databases covering US patents, and started life as an industry collaboration (Information For Industry, IFI) in 1955 before developing as a commercial corporation (subsequently sold to Wolters-Kluwer and then to Fairview Research LLC in 2010). The IFI Claims label is now used for a larger range of information products (the so-called Claims Direct service), but the original US-only content is still available, although rather more restricted than originally produced. From 2011, the addition of value-added indexing was ceased, and subsequently, some of the commercial vendors have laid open the original subscription-only files to all users (e.g. STN has merged the original IFI Uniterm database and the IFI Comprehensive database into the IFIALL file). During the period when additional indexing was being provided, the coverage was most extensive for chemistry, dating back to 1950, and from 1963 for electrical and mechanical patents. Unlike many collections of US patents, the IFI files included Design Patents from 1980, as well as utility (invention) patents. The added value indexing in the original CLAIMS file was based upon strictly controlled thesauri of general concepts, chemical names and patent assignees. The subject indexing was formalised into the so-called Uniterm system, which provided extremely detailed subject retrieval capabilities, and additional fragmentation coding for generated for searching chemical structures. A companion legal status file (CLAIMS/Current Patent Legal Status) has been produced by the same publisher, and is still maintained up to date; some thirdparty distributors merge this data with the bibliographic file. The website for the file producer can be found at www.ificlaims.com.

Service name

Claims/US Patents and Legal Status

US Patents Fulltext

FamPat

FullPat

IFIALL

IFICLS

Claims Direct

USPATFULL / USPAT / USPATOLD

Applications Full Text; Granted Patents Full Text

Assignment Database

Producer

IFI Claims

LexisNexis Univentio

USPTO / Questel

USPTO / Questel

IFI Claims

IFI Claims

IFI Claims

USPTO

USPTO

USPTO

Table 3.7: United States patent databases.

https://assignment.uspto. gov/patent/index.html#/pat ent/search

http://patft.uspto.gov/ne tahtml/PTO/index.html

STN

www.ificlaims.com

STN

STN

Questel

Questel

Proquest Dialog

Proquest Dialog

Platform

#

US patent assignment and re-assignment +

(continued )

US grants – (number, class only); + full text. US pre-grant publications +, bibliographic + full text.

US grants full text + (OCR prior to ); US pre-grant publications full text +

US grants (chemical) +, (electrical/mechanical) + US pre-grant publications +; bibliographic + claims US grants full text + (OCR prior to ); US applications full text +

US post-issuance legal status, +

US grants (chemical) +, (electrical/mechanical) + US pre-grant publications +; bibliographic + claims

US grants full text + (OCR prior to ); pre-grant publications +

US grants bibliographic +; pre-grant publications +

US grants full text + US pre-grant publications full text +

US grants (chemical) +, (electrical/mechanical) + US pre-grant publications +; bibliographic + claims. US patent assignment and re-assignment +

Coverage

Databases and database-specific aspects

77

eOG:P

Public PAIR / IFW

Wisdomain

IP.com

Cambia (Lens)

WIPS Global

Google Patents

Anaqua Inc. / FreePatentsOnline

PatBase

TotalPatent One

USPTO

USPTO

USPTO

USPTO

USPTO

USPTO

USPTO / Google

USPTO / FPO

USPTO / RWS

USPTO / LexisNexis IP

www.totalpatentone.com

Minesoft / RWS

www.freepatentsonline.com

http://patents.google.com

WIPS Co. Ltd.

CAMBIA

InnovationQ

www.actionablepatents. com/

https://portal.uspto.gov/ pair/PublicPair

www.uspto.gov/learningand-resources/officialgazette/official-gazettepatents

Platform

#

US grants + (full text OCR from +); US applications full text +

US grants full text +; US applications full text +

US grants full text – * US pre-grant publications full text –

US grants full text + (OCR prior to ); US applications full text +

US grants full text +; US applications full text +

US grants full text +; US applications full text +

US grants full text +; US applications full text +

US grants + (full text from ); US pre-grant publications +

Current legal status and images of file wrappers

Weekly Official Gazette (new grants): current  weeks only

Coverage

# Note: This listing does not include details of additional document kinds, such as re-examined patents, defensive publications, SIRs and reissue patents. Consult provider documentation for details. * Based on currently available public table of coverage.

Service name

Producer

Table 3.7 (continued )

78 Chapter 3 The United States Patent system

National classification of US patents

79

National classification of US patents Unlike virtually all other national patent offices, the USPTO has retained a fully-functional national classification. All US patents (and since 2001, all unexamined applications) bear the national classification on the front page, at INID code 52. The original US Patent Classification (USPC) system was started in 1836, and underwent its first revisions in 1898. It remained in virtually the same form until 2013, when it was largely replaced by the Cooperative Patent Classification (CPC), a jointly-owned project of the USPTO and EPO. The CPC is modelled heavily on the IPC, and retains the rapid updating schedule and flexibility of its predecessors, the USPC and ECLA. The USPC system at the time of its closure had approximately 140,000 subdivisions (possible valid class marks), grouped within some 430 main classes. The notation system was mainly numerical, although some alphabetical suffixes are used after sub-classes. The notation 73/597, for example, refers to main class 73, sub-class 597. When included in patent databases, some reformatting took place, to standardise the length of the field. There were extensive help tools created for the USPC, some of which have been retained and archived on the USPTO website or may still be available in specialist reading rooms. Their value today is mostly in relation to understanding the definition of older class marks printed on the front of historical patents. The tools are: – Index to the US Patent Classification System – a broad, back-of-book style keyword index to assist users in identifying one or more candidate classes for a subject; – The Manual of Classification – containing the full class schedules in a hierarchical fashion; – Classification Definitions – expanded scope notes and examples of the use of each class, with cross-references to related classes. Although CPC is now used for the main series of US patents, the separate national classification scheme for use with Design Patents has been retained. Users of the patent databases may occasionally find records of US utility patents which have been classified using a mixture of utility patent and Design Patent classes; this may happen if a technical invention featured in a utility patent application also has an aesthetic element which is better classified by the Design Classes. A Design classification can be easily identified by the D prefix to the class number. It is also worth noting that the original USPC system was highly developed in the class 700 series, covering the subject matter

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of software and computer-assisted business methods. Since neither the IPC nor the older ECLA system in Europe contained equivalent classes, these particular strengths of the USPC were incorporated into the successor CPC. More discussion of the use of classification systems in general can be found in Chapter 18.

References 1 American Chemical Society (2002). Living with AIPA: Impact of the American Inventors’ Protection Act after a year. Chemical Information (CINF) Division Symposium, 223rd National Meeting, Orlando, Florida, USA, 7–11 April 2002. Papers CINF 41–43, 48–52. 2 USPTO (2019.09.06). Filing Years and Patent Application Serial Numbers Since 1882. USPTO. Retrieved from http://www.uspto.gov/web/offices/ac/ido/oeip/taf/filingyr.htm. 3 White, M. (2001). Patents for Victory: Disseminating enemy technical information during World War II. Science and Technology Libraries, 22(1/2), 5–22. 4 White, M. (2019.09.06). US Patent Number Guide. Queen’s University, Kingston, Ontario. Retrieved from http://ptrca.org/files/handouts/US_Patent_Number_Guide.pdf. 5 Anon (2019.09.07). Patent Law Research Guide; PTAB decisions. School of Law, University of Akron, OH. Retrieved from https://law.uakron.libguides.com/patentlaw/ptab. 6 Hanovice, R., Belagodu, A., Bruzzone, L., Holloway, C. (2014). 18-Months Post-AIA: How Has Patent Litigation Changed? Association of Corporate Counsel Docket, 32(7), 52–65. 7 Anon (2019.09.11). DNA Patents Database. Georgetown University. Retrieved from http://dna patents.georgetown.edu/. 8 Anon (2019.09.11). DOE Patents. U.S. Department of Energy, Office of Scientific and Technical Information. Retrieved from http://www.osti.gov/doepatents/. 9 Anon (2019.09.11). Patented Available Plant Cultivars. USDA Agricultural Research Service. Retrieved from https://data.nal.usda.gov/dataset/usda-agricultural-research-service-patentedavailable-plant-cultivars.

Chapter 4 The Japanese patent system History of Japanese patents The modern patent system in Japan dates back to the Rules of Monopoly in 1871, shortly after the Meiji restoration of 1868. A trademark registration office was established by 1884, followed by a new patent law, the Patent Monopoly Act of 18th April 1885. Modifications to the law were made at various times in the early twentieth century, with substantial revisions in 1909, 1921, 1959 (in force from 1st April 1960) and again in 1970 (in force from 1st January 1971). The latter brought in the deferred examination system, with early publication at 18 months. From the searcher’s point of view, it is worth noting that a further revision in 1976 introduced patent protection for food, medicines and chemical products per se (as opposed to methods for their production) which had previously been excluded. The latest legislation is in the form of the Revised Patent Act 2011 (in force from 1st April 2012), as amended. Readers interested in following up details of earlier Japanese patents are referred to the work by Drazil1. Chapter 2 of the English translation of “Patent Law”, provided by the Institute of Intellectual Property2 gives more detail of the history of intellectual property laws in Japan. Japan signed the Paris Convention in 1899, and joined the Patent Cooperation Treaty from the beginning, hence being able to be designated by this route from 1978. The standard country code for Japan is now “JP”, but prior to 1978 the code “JA” was used, and may be still found in older printed material. The normal term for a granted patent is the now-standard 20 years from filing, although extensions up to a maximum of 5 years are possible for pharmaceutical and agrochemical inventions. Prior to 1996, the term was counted as 15 years from the date of publication of the granted patent, for opposition, but not exceeding 20 years from filing. The utility model registration has a term of 10 years from filing, if filed on or after 1st April 2005; earlier legislation has provided for various different terms, including (i) 10 years from date of publication for opposition, not exceeding 15 years from filing or (ii) 6 years from filing. Prior to 1996, all utility model applications were subject to substantive examination. The change from examination to registration has resulted in a substantial reduction in applications for utility models, which are still declining year on year. Japan has historically used a dating system based upon the Imperial calendar for all its official government documents, including patents. Since Japanese patents up until the year 2000 make use of dates both for recording filing details and as a component of the publication numbers themselves, it is worth https://doi.org/10.1515/9783110552263-004

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getting familiar with this system from the beginning. The basic function is identical with the pre-1964 citation method for United Kingdom Acts of Parliament, which were referred to according to the session of Parliament in which they were passed, which is in turn identified by the regnal year(s) of the monarch. Hence the old United Kingdom Patents Act 1949 can be cited as “12, 13 & 14 Geo. 6. c. 87”, meaning chapter 87 of the Public & General Acts passed in the Parliament during the 12th, 13th and 14th years of the reign of George VI. The Japanese calendar system is similar, based upon the Emperor’s regnal year. During the modern period in Japan, there have only been five Emperors. On accession, the new Emperor’s reign is given a distinctive Era name, and during his lifetime, the official calendar years are denoted by this Era. The Era is not, strictly speaking, linked to the Emperor’s person until after his death, when he will be referred to as the Emperor [Era], rather than by his personal namea. Year one of the new Era commences when the Emperor accedes to the throne, and ends at December 31st of that year. This means, for example, that the final year of Hirohito’s reign (Showa year 64) was actually only just over a week long, since he died on 8th January 1989. His son’s first regnal year, commencing on 9th January, was thereby 51 weeks long. Following the abdication of Emperor Akihito on 30th April 2019, the same re-synchronisation will occur at the end of 2019, when Reiwa year 1 will come to an end. Table 4.1 indicates the Eras since the Meiji restoration.

Table 4.1: Japanese Imperial Era and Western calendar dates. Emperor Name

Personal Era name Name

Matsuhito 睦仁

Meiji

Posthumous Accession Abbreviation Year range Year name year (Western) range (Western) (Japanese) 明治天皇



M

– –

Yoshihito

嘉仁

Taishō 大正天皇



T

– –

Hirohito

裕仁

Shōwa 昭和天皇



Sho. or S.

– –

Akihito

明仁

Heisei

平成天皇



Hei. or H.

– –

Naruhito

徳仁

Reiwa

令和天皇



Rei. or R.

–

–

a In Japan, the living Emperor is not referred to by their personal name, preferring to use the style His Majesty the Emperor (天皇陛下 Tennō Heika) or The Reigning Emperor (今上天皇 Kinjō Tennō). For convenience of Western readers, the more familiar convention of using an Emperor’s personal name may be used herein.

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83

Provided that a searcher knows the Western year coverage of a database, it is relatively straightforward to deduce which calendar is being used in the database records. For example, when using the PAJ database, we know that coverage starts from 1976. Hence, a record which contains the year prefix 62 cannot be using the Western year 1962, but must refer to an Imperial year. Since only one Emperor has reached his 62nd regnal year during the period of the database, the document must have been published in Showa 62, corresponding to Western year 1987. The difficulty comes as databases expand to cover wider year ranges: for example, a publication with year 15 could refer to Heisei 15 (2003), Showa 15 (1940), Taisho 15 (1926) or even Western year 1915 in some circumstances. During 2012–2013, the EPO invested a massive effort in re-keying over 28 million Japanese bibliographic records from the pre-2000 period, in order to include a single-letter Era abbreviation code into older publication numbers, to assist in searching for these documents3. There is an unfortunate added dimension to the case of Japanese patents, which occurred during the changeover in 1989 from Showa to Heisei. Although legal electronic records show the year component of publication numbers reverting to Heisei 01 from 9th January 1989, the printed documents continued to bear the Showa 64 year for the following three months, until the changeover was completed on 11th April 1989. Hence, for example, JP 01-020000-A, published on 24th January 1989, actually has 64-020000-A printed on the front page, although retrievable by the correct legal number from electronic databases. Clearly this can cause problems in some document supply services if the actual and official numbers are not correctly matched. Fortunately the same problem did not occur in 2019 after the accession of the new emperor.

Japanese patent documentation and recent law changes One striking aspect of Japanese patents is their quantity. Many thousands of unexamined applications are published each week, resulting in an annual output in excess of 500,000 documents per year. Some of this is due to legal differences – for many years, Japanese patent applications could only contain one claim, resulting in an inflated application and publication rate. It has been estimated that during the late 1990s and early 2000s, up to one-third of the entire annual growth in the Chemical Abstracts Service (CAS) bibliographic file was due to new Japanese patent applications. Since CAS only abstract the first family member, this only accounts for unexamined applications, and in a restricted subject field. Recent WIPO statistics reveal that an average of nearly 200,000 cases were granted per year in Japan over the period 2015–2018 inclusive,

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together with an average of 6,000 utility models per year; the unexamined publications are even more numerous. It can be seen that Japanese documents are adding considerable volumes of technical knowledge to the state-of-the-art, which need to be consulted in order to establish patentability in other parts of the world, despite the language difficulties. Some of the key databases which assist this process will be discussed in later sections. Different publication stages of IP publications tend to be issued on separate days of the week. Subject to national holidays, the current pattern appears to be publication of granted designs (JP-S) on Monday, trademark applications and grants on Tuesday, granted patents (JP-B) on Wednesday and unexamined patent and utility model applications (JP-A, JP-U) on Thursday, although some variation from this general scheme is known to occur.

Normal progress to grant The main sequences of publication under the 1970–1995 legislation and at the present day are illustrated in Table 4.2 below. For filings up to 1st January 1996, the normal route was for an unexamined case to be published (with KD code A) around 18 months after priority filing. This is often referred to as the “Kokai” (公開) stage, after the Japanese language designation of kōkai tokkyo kōhō (公開特許公報). The applicant had up to 7 years in which to defer the search and examination, which meant that the second stage “Kokoku” publication (kokoku tokkyo kōhō or 特許公報) frequently did not appear until well after the grant in most other countries. This second stage was the examined specification (JP-B), but was not yet granted. Both of these stages had a publication number with the Emperor year prefix, but unlike (e.g.) the European Patent Office system, the same number was not retained between the publication stages. In any given year, the same serial number 12345 could be applied to the 18-month stage of one invention and the examined stage of an earlier-filed one. To distinguish for document delivery purposes, it is therefore necessary to know the KD code of the required document. Following publication as an examined case, it was open for a period of 3 months of “pre-grant opposition”, during which the final grant could be opposed by a third party. If no such opposition occurred, a grant certificate was issued. This certificate had a third publication number, in a continuous running sequence. Few databases collated the information on this third stage – the European Patent Office’s internal EPODOC search file was one exception, which allocated these certificates the KD code of -C. Some commercial search services such as Questel also licensed these data.

Japanese patent documentation and recent law changes

85

Table 4.2: Japanese patent publication stages and number formats. Pre- legislation

As printed

Typical database entry

Japanese application

- ( Oct, Showa ) (..)

JP- (DWPI standard)

Japanese unexamined publication

JP --A (..)

JP --A

Japanese examined publication

JP --B (..)

JP --B

Japanese registration

JP -B

JP -C

Japanese application

- ( Dec, Showa ) (..)

JP- (DWPI standard)

Japanese unexamined publication

JP --A (..)

JP --A

Japanese granted publication

JP -B (published .., grant date ..)

JP -B

Japanese application

- ( May, Heisei) (..)

JP- (DWPI standard)

Japanese unexamined publication

JP --A (..)

JP --A

Japanese granted publication

JP -B (published .., grant date ..)

JP -B

–

 onwards

After the 1995 law change, the system of pre-grant opposition was abolished, and the grant and publication of examined documents were near-simultaneous. The granted publication is the “Toroku-kōhō” stage, replacing the earlier “Kokoku”, and the number format changed to a running sequence, which started at 2,500,001 dated 29th May 1996, with a KD code of B2. There is a post-grant opposition period which dates from the publication of the granted specification, but the actual date of grant is not simultaneous but some weeks earlier. Note in Figure 4.1 the different dates associated with the two INID codes concerned: field (45) represents the date of publication of the granted patent, but the date from which the patent rights have effect is shown at field (24), in this case some 2 months earlier.

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Chapter 4 The Japanese patent system

Figure 4.1: Japanese publication (INID 45) and grant (INID 24) dates.

After the year 2000, there were further changes to the system. Firstly the Emperor’s year was dropped as the prefix to the unexamined stage publication number and the application number series, in favour of a 4-digit Western year. The Japanese form of the year was only retained for any dates on the front page. Secondly, the deferment period was reduced from seven years to three. The post-grant opposition period was abolished in 2004 but was reinstated from 1st April 2015, with a 6-month window for filing oppositions.

Japanese B1 publications In addition to the “conventional” route to publication, proceeding from JP-A to JP-B2, a proportion of patent applications in Japan make use of an accelerated examination process. This has the effect of passing over the early published stage at 18 months and proceeding directly to the granted document, which is given the code JP-B1. The details of the process were described by O’Keefe4 in 2000, reviewing the effects since the law change in 1996. According to this article, cases which publish as a JP-B1 will never appear in the Patent Abstracts of Japan (PAJ) file, which is devoted to published unexamined applications (JP-A documents), and hence may be missed in a search of Japanese prior art unless additional sources are consulted. The Derwent DWPI file and INPADOC are two sources which capture these additional records. However, there is some evidence that even when cases are granted rapidly via this route, a corresponding Kokai is still produced. In the example in Table 4.3, the grant stage was published in August 2000, only 15 months after filing, but the corresponding Kokai appeared as expected 3 months later, at 18 months from filing. The user should note that there are some special aspects to the numbering system applied to Japanese patent documents filed via the PCT system; some additional details of these can be on the EPO’s Asian Patent Information website5, although the guidance notes only refer to the most recent practice. Japan was a signatory state of the PCT from the earliest years of operation, and the exact method of re-publishing PCT documents in Japanese has varied across time, as discussed in the next section. Depending upon the database, origin

Japanese patent documentation and recent law changes

87

Table 4.3: Example of publication order under Japanese accelerated examination. Number

Date

Japanese application

-

.. (Heisei )

Japanese registration

JP -B

.. (publication), .. (in force).

Japanese unexamined publication

JP --A

..

and time period, these documents may carry a variety of number formats and kind codes.

PCT national phase publications As with the EPO practice, only certain WO-A documents are officially republished by the national office if the application proceeds to national phase in Japan. However, the decision on re-publication is not based purely on language but on the Receiving Office of the international application, as indicated by the country code in the PCT application number. Applications filed at the JPO as Receiving Office are prefixed PCT/JPYY/ or PCT/JPYYYY/. For more details on the overall PCT procedure, refer to Chapter 5. After international filing under the PCT and publication at 18 months of the so-called “pamphlet”, consisting of the specification with a WO publication number, many countries will generate some form of national document to indicate that the application has entered the national phase. In the case of Japan, if the WO document has published in any language other than Japanese, a new document corresponding approximately to the national Kokai stage is published by the JPO. These are referred to as Kohyo-koho or Kohyo (公表特許公報) publications. They are translations into Japanese of the original WO document, and carry an official JPO publication number, found at INID (11); the presence of the Japanese characters 公報 in the header indicates that the document is officially published by the JPO. The national KD code is -A, but the header is different to the national Kokai documents, and the publication serial number is always in the 500,000 range. See Figure 4.2(c) for an example. Both DocDB and DWPI use this official publication number, although DWPI initially replaced the -A code with its own KD code -W (WO publication in non-Japanese) and currently designates these documents with KD code -T (Translation).

88

Chapter 4 The Japanese patent system

The treatment of PCT applications for which the JPO is the Receiving Office is somewhat different, and has changed over time, following the revision of the patent law in 1995. Between the start of PCT operations in 1978–79 and the law revision, any international application filed in Japanese at the JPO would be published twice – once by WIPO as the WO pamphlet with publication number prefixed by the WO country code, and a second time within Japan as a nongazetted publication bearing the same publication number as the WO pamphlet, followed by the KD code -A1. These “reprints” had a Japanese national application number added, and lacked the WIPO logo and certain other front page details from the WO pamphlet, but were otherwise virtually a facsimile of the WO version. The two documents were usually printed within a few months of one another. See Figure 4.2(a) for an example of this type of document, where the Japanese application number has been highlighted. After the 1995 law change, JPO publication of these Japanese language WO pamphlets was re-designed, with a new header (referred to as Saikohyo-tokkyo or simply Saikohyo, 再公表特許) but still re-using the original WO country code and publication number at INID (11) and a new Japanese KD code -A1. The absence of the characters 公報 indicates that these are not considered to be formal official JPO publications; in the JPlatPat record displays, they are listed in the “Other Documents” column. The EPO’s DocDB database records Saikohyo documents using a double country code JPWO followed by the original WO publication number (e.g. JPWO9318062-A1). The Derwent treatment is different again; in order to avoid confusion by re-using the same WO publication number twice in a single DWPI family, the Derwent editorial process replaces the doublecoded JPWO publication number with the corresponding Japanese national application number, which is allocated on national phase entry, and is always in the 500,000 range. This number appears on the front pages as an unlabelled sub-field of INID (21). The DWPI KD code for these entries is -X e.g. the family record entry corresponding to JPWO9318062-A1 in DocDB is JP05-515539-X in DWPI – see Figure 4.2(b) for an example. The result of this reformatting means that the DWPI database may contain two different national publications from Japan with apparently identical numbers, one being a dummy JP-X number derived from its national application number (Saikohyo) and the other being a genuine JP-A or -T publication number (Kohyo). See Family 3 (JP 08-503016-T) and family 7 (JP 08-503016-X) in Table 4.4.

Japanese patent documentation and recent law changes

89

(a)

(b)

(c)

Figure 4.2: Headers for Japanese language (pre-1995 (a) and current (b)), and translated © PCT republications.

PCT publication number

WO /-A

WO /-A

WO /-A

WO /-A

WO /-A

WO /-A

WO /-A

WO /-A

Family No.

















Japanese

Japanese

Japanese

English

Japanese

German

Japanese

English

Publication language of WO pamphlet

WO S /-A

-

S

S

K

J

K

J

K

JP--X

JP--X

JP--X

JP--T

JP--X

JP--T

JP--X

JP--A

Type* DWPI record format

WO /-A

WO /-A

--A

WO /-A

--A

WO /-A

--A

Front page data at INID () of publication in Japanese

-

-

-

-

-

-

-

Japanese national phase entry application number

JP,/,A

JP,/,A

JP,-,A

JP,/,A

JP,-,A

JP,/,A

JP,-,A

JPlatPat record format

JPWOA JP,/,A

Not present

Not present

JPHA

JPWOA

JPHA

Not present

JPSA

DocDB record format

Table 4.4: Database numbering conventions for publication of PCT national phase entry documents in Japan.

90 Chapter 4 The Japanese patent system

WO /-A

WO /-A

WO /-A







Japanese

English

Japanese

English

-

-

-

- K

K

WO S /-A

--A

WO S /-A

--A

JP--X

JP--T

JP--X

JP--T

JP,-,A

JP,-,A

JPWOA JP,/,A

JPA

JPWOA JP,/,A

JPA

* K = Kohyo (formal publication of PCT application entering national phase; WO in non-Japanese language – header 公表特許公報) * S = Saikohyo (publication of PCT application entering national phase; WO in Japanese language or claiming JP priority – header 再公表特許). * J = pre-1995 publication by JPO of earlier Japanese language WO pamphlet – header translates as “Japanese language patent application which has been internationally published under the PCT” – see Figure 4.2(a) for an example. Note that although the Saikohyo header and name is only officially used after 1995, these earlier documents fulfil the same role from the point of view of the documentation specialist.

WO /-A



Japanese patent documentation and recent law changes

91

92

Chapter 4 The Japanese patent system

The importance of utility models Japanese law allowed application for utility models from 1905, and until a significant law change in 1994 they formed a substantial part of the body of intellectual property literature emerging from Japan. Although designed to protect only small innovative developments, they were examined just as the main patent system, and had a term of approximately 15 years. Since the law change, in which the examination phase was dropped and the term reduced to 6 years, they have become much less popular as a protection tool and numbers of utility model applications have fallen significantly in recent years. In response to this, a further law change in 2005 has increased the term again, to 10 years from filing, but this will not affect pending cases. A further change enabled a utility model holder to file a patent application based on their utility model, within 3 years of the application date for the utility model. The sequence of publication under the pre-1994 legislation and at the present day are illustrated in Table 4.5 below. The number format for the old Act sequence followed that for patents closely. However, under the new system, there is only a single publication, which takes place a few months after filing and runs in a single continuous series from 3,000,001 upwards. Since it is unexamined, it retains the conventional first level publication code of U. Cases which were pending when the 1994 legislation entered into force were still examined as under the old system, but the old Y2 and final U stages were abolished in favour of a single examined/registered document, also coded Y2, with numbers starting at 2,500,001 as for the patents.

Table 4.5: Japanese utility model publication stages and number formats. As printed

Typical database entry

Japanese utility model application

- ( May, Showa ) (..)

JP-U

Japanese unexamined utility model

JP --U (..)

JP --U

Japanese examined utility model

JP --Y

JP --Y

Japanese registration

JP -U

Not recorded

Pre- legislation

Databases and database-specific aspects

93

Table 4.5 (continued ) As printed

Typical database entry

Japanese application

- ( Jan, Heisei ) (..)

JP-U

Japanese granted utility model (no examination)

JP -U (published .., grant date ..)

JP -U

Japanese application

- ( Dec, Heisei ) (..)

JPU

Japanese unexamined utility model

JP --U(..)

JP --U

Japanese granted utility model

JP -Y (published .., grant date ..)

JP -Y

Cases filed after 

Cases pending in 

Databases and database-specific aspects This section will discuss a number of databases which contain only Japanese information. For multi-country databases which include Japan within their coverage, refer to Chapter 11. The main JPO website can be found at www.jpo.go.jp. Large portions of the site are available in English, for non-Japanese speaking users. Most of the bibliographic searching facilities are provided by INPIT (the National Center for Industrial Property Information and Training) and are found on a separate website (www.j-platpat.inpit.go.jp) linked to the main JPO one. For document supply, the JPO hosts a separate publication server at www.publication.jpo.go.jp, including all major document types and the Gazette since 2015. Although the situation has changed markedly in recent years, it is still the case that substantial numbers of information services covering Japanese patent documents operate solely in Japanese. For the non-Japanese speaker/reader, such services are effectively invisible, and it can be quite difficult to obtain information about the content and range of search facilities available. The following Table 4.7 is not therefore a comprehensive survey of all available Japanese sources, but concentrates upon those which have at least some English-language elements to them. The most common searchable elements include abstracts – the “coverage” column should be understood to refer to these unless “full text” is indicated. Table 4.8 includes brief details of a number of additional

94

Chapter 4 The Japanese patent system

search sources which are only available in Japanese, or which only service Japanese-based customers. The major domestic patent database supplier is now the JAPIO (Japan Patent Information Organization). The JAPIO website also provides a list of other domestic IP information suppliers; some of these organisations can provide services to non-Japanese customers (www.japio.or.jp/english/link/link01. html), although many of them deal directly with professional representatives, rather than as database vendors to the general public. A list of Japan-only service providers, including vendors of specific database collections, can be found on the INPIT Japanese language website at www.inpit.go.jp/info/dbinfo/list_ index.html – this information needs to be translated into English, as there is no corresponding list on the English-language version of the INPIT website. The former Patolis Corporation was a major supplier of both Japanese and English-language data, and provided an English-language version of its own database for a number of years, but unfortunately closed to further English-language customers in 2006 and ceased trading eventually in 2014; some of the assets were taken over by NRI CyberPatent, which was itself acquired by Questel in 2020. The Japan Patent Data Service Co. (www.jpds.co.jp/eng/) is less recognised than JAPIO outside of Japan, although it operates the JP-NET internet service in Japanese, and has some English-language services. Unlike many commercial vendors, JP-NET still requires a dedicated browser configuration for its complete range of web services. A review of the English language version, JP-NETe, was published in 2009 by Oda6. Many additional aspects of Japanese document searching have been discussed in the regular “East meets West” conferences held by the EPO’s Japanese information section. Archive content from previous years’ sessions can be retrieved from the EPO website (reference5 above). A number of the published document types appear only rarely in bibliographic databases; Table 4.6 lists some of these more unusual types. For pre-1970s documents, KD codes were rarely printed on the front pages but only exist in electronic bibliographic records; others are non-official codes used by database producers but not by the JPO themselves. The Patent Abstracts of Japan (PAJ) service is by far the best known source of English-language material covering the Japanese patent system. However, it is available in a number of different editions, not all being updated to the full file content. The policy on coverage changed during the life of the database, and not all hosts have loaded the missing data into their backfiles. There are two significant changes in the coverage, both being implemented in 1989. The first was the decision to include all published JP-A documents, irrespective of origin. During the period 1976–1989, English abstracts were only produced for cases originating within Japan; all other publications deriving from Convention filings into Japan from elsewhere in the world were assumed to have published

Databases and database-specific aspects

95

Table 4.6: Additional KD codes for Japan. Kind Code

Usage period

Description

A

–date

Amended published unexamined patent application

A

–date

Corrected published unexamined patent application

B

–date

Corrected examined patent application (Second level)

C

–

Patent grant

C

–

Patent grant (amended)

K

ad hoc

Non official translation of JP-A document, not issued by JPO

K

ad hoc

Non-official translation of JP-B document, not issued by JPO

K

ad hoc

Non-official translation of JP-U document, not issued by JPO

K

ad hoc

Non official translation of JP-Y document, not issued by JPO

U

–

Unexamined utility model application

U

–date

Amended published unexamined utility model application

U

–date

Corrected published unexamined utility model application

U

–date

Corrected description of registered utility model

Y

–

Published examined utility model application

Z

–

Registered utility model specification

Z

–

Registered utility model specification (amended)

in at least one Western language, and hence substantially more accessible than the domestically-filed applications. The second major change was one of subject selection. Between 1976–1989, only a subset of JP-A documents was chosen for abstracting, based upon the primary IPC sub-class. This was biased to select mainly chemical and some electrical patents, leaving substantial numbers of mechanical cases not abstracted and missing from the database. There do not appear to be any plans to create a back file to fill in these gaps. Table 4.9 shows the breakdown according to IPC on coverage; for definitions of the IPC classes, refer to the Annexes of this book. It is worth pointing out that all Japanese-language sources which have been translated into English suffer from the same weakness, namely the difficulty of transliterating from Japanese characters into Western letters. For the searcher, this is a particular problem when attempting to search on names, such as assignee or inventor fields. The level of inconsistency in rendering

FullPat

JPlatPat

Patent Abstracts of Japan (PAJ)

JP-NETe

TotalPatent One

JPFULL

Japan Patents Fulltext

PatBase

Japan Patent Office

Japan Patent Office

JAPIO

Japan Patent Data Service

LexisNexis Univentio

LexisNexis Univentio

LexisNexis Univentio

Minesoft

JP-A, JP-U full text +; JP-B full text +; plus English machine translation

Coverage

JP-A + JP-B, JP-U + Legal status + PAJ content + machine translation for most recent  months.

See Table .; JP-A abstracts only, +

www.minesoft.com

Proquest Dialog

STN International

JP-A full text + JP-B full text + JP-U full text +

Bibliographic data –date. JP-A, JP-U full text +; JP-B full text +; plus English machine translation.

JP-A, JP-B, JP-U full text, applications filed +; machine translations.

www.lexisnexisip.com/ JP-A (old Act grant, new Act application) bibliographic +; full text +. products/total-patent- JP-B (grant) bibliographic +; full text +. one/ JP-U (grant) bibliographic +; full text +

www.jpds.co.jp/eng/

Browser based* Command line**

JPO/INPIT JP-B, JP-U + www.j-platpat.inpit.go. JP-A, JP-B + jp/ JP-A +

Questel www.orbit.com

Platform

* via Espacenet, JPO, Wisdomain (FOCUST), DepatisNet, WIPS Global. ** via STN (file JAPIO – closed 2013), Proquest Dialog (JAPIO), Minesoft (PatBase).

Service name

Producer

Table 4.7: Selected Japanese patent databases with English content.

96 Chapter 4 The Japanese patent system

HYPAT-i

ShareResearch

SRPartner

JAPIO-GPG / FX

CyberPatent Desk www.patent.ne.jp

PatentSQUARE

Patent Integration

FOCUST-J

Ultra-Patent

Hatsumei-Tsushin Co.

Hitachi Ltd

Hitachi Systems Ltd

JAPIO

NRI Cyber-Patent

Panasonic Solution Technology Co.

Patent Integration Co. Ltd.

Wisdomain

Wisdomain, Inc.

www.ultra-patent.jp

www.wisdomain.com/wis_html/jp/Product/Product. htm

https://patent-i.com/ja/index/

www.panasonic.com/jp/business/its/patentsquare. html

www.japio.or.jp/service/service.html

www.hitachi-systems.com/ind/srpartner/index.html

www.hitachi.co.jp/Prod/comp/app/tokkyo/sr/

www.hatsumei.co.jp/hypat_i/index.html

www.cks.co.jp

CKS Web

Chuo Kogaku Shuppan KK

Web address

Service name

Producer

Table 4.8: Selected Japanese-only patent sources.

JP-A +, JP-B +

JP-A +, JP-B +

JP-A, JP-B, JP-U +, JP-Y +

JP-A +, JP-B + (full text)

JP-A +

JP-A +

JP-A +

Unknown

JP-A + (abstracts) JP-A + (full text) JP-B + (full text)

Unknown

Approximate coverage

Databases and database-specific aspects

97

98

Chapter 4 The Japanese patent system

Table 4.9: Subject coverage of PAJ. IPC class / sub-class

Coverage start year

Chemical sections AN, AK, B, B, B, B, B, C, C, C, C, C, C, C, C, C, C, C, C, C, D, DN



Remainder of A (excluding AN), A, A, A, A, A, A, A, A, A, A, A, remainder of A (excluding AK), A, A, B, B, B, B, C, C, C, C, C, C, D, D, D, D, remainder of D (excluding DN), D, D



Physical / Electrical sections G, G, G, G, G, G, G, HF, HJ, HL, HM, HP, HQ, HS, HK, HM, HN, HP, H, H, HG



G, G, G, G, G, G, remainder of H (excluding HF, J, L, M, P, Q and S), remainder of H (excluding HK, M, N and P), remainder of H (excluding HG)



General / Mechanical sections B, B, B, B, B, B, B, B, BD, B, BG, BH, E, F, F, F, F, F, FC, FD, FF, FG, FH, FJ, FK, FN, F, F, F, F BN B, B, remainder of B (excluding BN), B, B, B, B, B, B, B, remainder of B (excluding BD), B, remainder of B (excluding BG and H), B, B, B, E, E, E, E, E, E, remainder of F (excluding FC, D, F, G, H, J, K and N), F, F, F, F, F, F, F



* 

* sub-class B27N was introduced with the 4th edition of the IPC from 1st January 1985. Some subject material in the new sub-class was previously classified under sub-class B29J, which was included in PAJ from 1976.

Japanese personal names into English is such that the JPO has taken the decision to remove this field from its search files altogether. Similarly, the Derwent World Patent Index did not record Japanese inventors at all until 2005. For more information on the challenges facing the Japanese translator, see the paper by Huby et al.7.

The Japanese patent classification and indexing systems

99

The Japanese patent classification and indexing systems For a substantial part of the twentieth century, Japan used its own system of patent classification to assist retrieval. By 1969, this was based upon 136 classes (not all introduced from the beginning) using a numerical system, with further alphanumeric suffixes. For example, Figure 4.3 shows the front page of a 1970 granted patent, with a range of classification marks drawn from group 16 (Organic Compounds). They appear under the INID code (52) at the top left of the front page.

Figure 4.3: Japanese national classification (INID field 52).

The Japanese classification was phased out from the early 1970s in favour of the International Patent Classification (IPC). However, this soon became insufficient for the JPO’s searching needs, and was supplemented by two further subject retrieval schemes. The FI (File Index) classification is based upon the IPC but elaborates it further, while the F-Term (File Forming Term) indexing codes are used in some areas of technology to provide enhanced retrieval capability. Since both of these systems are essentially in-house, the corresponding codes have not been printed on the front pages of the patent documents until quite recently (2001 for FI classes). Not all public search systems provide access using these systems, so for these search files the user is still limited to the IPC. However, in recent years more commercial vendors have loaded these detailed systems, including Questel’s Orbit platform, the Chemical Abstracts file, Clarivate’s DWPI file and Minesoft’s PatBase. Some more information on FI is provided in Chapter 18. For information on the tools to identify and use the F-terms, see the paper by Adams8. For further background on the old Japanese national classification, users are referred to the books by Drazil1 and Finlay9. The Japanese classification system was finally abandoned in 1980.

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References 1 Drazil, J.V. (1976). Guide to the Japanese and Korean patents and utility models. London: British Library, Science Reference Library. ISBN 0-9029-1421-9. 2 Nakayama, N. (2000). Industrial Property Law. Volume 1: Patent Law. (2nd ed.). Tokyo: Koubundou Publishers. (English translation September 2012). Retrieved from https://www.iip. or.jp/translation/nakayama/. 3 European Patent Office (2013). Changes to millions of Japanese numbers! EPO Patent Information News No.3/2013, 8–9. 4 O’Keeffe, M. (2000). Japanese submarine patents: examined patents within a year of filing! World Patent Information 22(4), 283–286. 5 Asian Patent Information Team (2019.09.12). Asian Patent Information. European Patent Office. Retrieved from https://www.epo.org/searching-for-patents/helpful-resources/asian. html. 6 Oda, S. (2009). JP-NETe – A English-language search tool for Japanese unexamined patents. World Patent Information 31(2), 131–134. 7 Huby, R., Schenk, V.T. (1994). Some problems in the translation of Japanese patents. World Patent Information 16(3), 154–158. 8 Adams, S. (2008). English-language support tools for the use of Japanese F-term patent subject searching online. World Patent Information 30(1), 5–20. 9 Finlay, I.F. (1969). Guide to foreign-language printed patents and applications. London: Aslib. ISBN 0-85142-001-X.

Chapter 5 The Patent Co-operation Treaty Background to the PCT system The Patent Co-operation Treaty (PCT) is an extremely important system for the specialist in patent information, as it has become one of the most popular routes by which newly-filed applications are laid open to public inspection. The number of publications produced per year exceeded 100,000 for the first time in 2002, then 200,000 in 2014 and continues to rise. The publication of unexamined patent applications under the PCT system now corresponds to many millions of pages of technical intelligence – and addition to the state of the art – per year. The PCT entered into force on 24th January 1978, based upon the Treaty which had been signed in Washington D.C. in 1970. International filings were accepted from 1st June 1978 and the first publications appeared on 19th October 1978 (WO 78/00001-A1). The main distinguishing feature of the PCT is that it does not grant any patents. The International Bureau at WIPO acts as a clearing house, which handles applications centrally from the time of their filing, through the prior art search process, until they are forwarded to national patent offices for substantive examination. This process includes a centralised publication of the application at 18 months after priority, and may optionally include the preparation of an international non-binding opinion on patentability. Filing, search and publication constitute the so-called Chapter I procedures, named after the section of the Treaty covering these actions. The production of initial opinions and preliminary examination reports form the Chapter II procedure, but still within the “international phase”. Dispatch to the national (or regional, in the case of offices like the EPO and EAPO) patent offices for substantive examination leading to grant is the “national” or “regional” phase. Increasingly, the work being done in the early stages is being re-used by national offices in reaching their decisions concerning grant. This process is being formalised in the PCT-PPH (Patent Prosecution Highway) mechanism. As at the beginning of 2020, there are 153 member states of the PCT. They are listed in Annex A, in chronological order according to when the treaty entered into force on their territory.

https://doi.org/10.1515/9783110552263-005

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PCT documentation It is very important to realise that, as presently constituted, the PCT system does not examine or grant any applications. Consequently, many of the legal status questions asked of national applications do not have any relevance in respect of the PCT. For purposes of comparison, we should remember that although the EPO only publishes a single granted document, it too is not a true supra-national patent system. Legally, the outcome is a bundle of national patents which happen to have been examined separately under one statute (the EPC), and accepted by all the member states concerned. In a similar fashion, the outcome of a PCT application is that each individual patent office takes on the task of examining its own national application which has “matured” from a PCT international application. The case will be examined under national legislation and be either granted as a national patent or rejected. The overall result is still a bundle of national patents, but this time they have been examined under local statute, not according to a single procedure. The great benefit of the PCT is that it allows the applicant to defer the considerable cost of translation of their patent application into multiple official languages, and the cost of requesting national substantive examination, until they have had a chance to assess the search report produced at 18 months. The documents published at this point can appear in a range of languages, initially chosen from 5 but with more being added since the system started, to encompass different parts of the world. The current choice for publication, defined by Rule 48.3 of the PCT Regulations, is the 10 languages shown in Table 5.1. The dates when each language was first allowed are also shown. Table 5.1: Adoption date of publication languages under the PCT. Language(s)

Accepted as PCT publication language for applications filed on or after:

English, French, German, Japanese, Russian

.. (PCT entry into force)

Spanish

..

Chinese

..

Arabic

..

Korean, Portuguese

..

The introduction of these additional publication languages has resulted in a gradual move away from English as being the primary language for PCT

PCT documentation

103

publications. In particular, with the addition of Chinese to the list, the proportion of cases published in the Asian languages (Japanese, Chinese or Korean) has increased markedly in recent years. Figure 5.1 shows the numbers of cases published each year between 1995–2018 in each of the 4 major language groups: Latin script (English, French, German, Spanish and Portuguese), Asian languages (Japanese, Chinese and Korean), Cyrillic (Russian) and Arabic. All documents carry a country code “WO” code prefix to identify them, which is intended to represent WIPO (technically, the International Bureau of the WIPO) and not, as commonly described, “World”. Prior to approximately 1981, the Derwent DWPI database used an unofficial country code of “WP”, but the database has since been amended. The following Figure 5.2 illustrates a typical sequence of events using the PCT procedures. There are a number of points to note here: – The priority filing in the United States was used to pursue patent protection in the US via the national route and also as a basis for filing the International Application which led to all the other patents in the family. This is not uncommon – the presence of a PCT publication in a patent family should never be taken to imply that all protection for the invention worldwide derives from the PCT application. In particular, the protection in the country of origin and/or priority country may be sought via the national route. – All the national applications (Canada, Australia, UK, EPO) derived from the PCT International Application are accorded a national filing date which is the same as the date of filing of the International Application itself (in this case, 14th October 1997), even though the file will not actually be sent to these national patent offices until some while later. This can cause an apparent mis-match between the eventual national application number and the application date. For example, the UK application number has a 99 prefix, showing that it was allocated in 1999, but the filing date is from 1997. – National authorities differ in their policy concerning publication of unexamined cases corresponding to a previously published WO document. Some allocate a dummy publication number with KD code -A for issue in their gazette, and do not republish any document. Others may issue a single page in the normal format for national unexamined application, crossreferring to the corresponding WO document, whilst others may insist on publication of the entire specification in a national language as part of the progress through examination at that office.

0

50000

100000

150000

200000

250000

Latin script

Asian languages

Cyrillic

Arabic

1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018

104 Chapter 5 The Patent Co-operation Treaty

Figure 5.1: Numbers of PCT publications in each language group (1995–2018).

Figure 5.2: Publication sequence under the PCT system.

Patents begin to be published, and post-grant administrative proceedings

1998.04.23 : unexamined application WO 98/16717 A1

Initial unexamined applications published around 18 months after priority

1998.11.24: granted patent, pubn. no. US 5839521-A

1997.10.14: Convention filing, allocated appn. no. PCT/US97/18890

PCT International Bureau

Convention filings within 12 months of first (priority) filing

United States 1997.03.10: US filing, allocated appn. no. 08/813462 US

1998.04.23: unexamined application CA 2256382 A1

1997.10.14: Canadian application derived from PCT international filing, allocated appn. no. 2256382 CA

Canada

2000.11.02: examined application AU 199748250 B2 2000.11.02: granted patent registered as AU 726230 B2

1998.05.11: unexamined application AU-A-48250/97

1997.10.14: Australian application derived from PCT international filing, allocated appn. no. 199748250 AU

Australia

2000.11.08: granted patent GB 2334058 B2

1999.07.14 : application filed noted in gazette, publication no. GB 9910978 A0 1999.08.11 : unexamined application GB 2334058 A1

1997.10.14: UK application derived from PCT international filing, allocated appn. no. 9910978.7 GB

United Kingdom

2003.09.03: granted patent EP 1015730-B1

1998.04.23: unexamined application EP 1015730-A1

1997.10.14: EPO application derived from PCT international filing, allocated appn. no. 97911012.9 EP

EPO

PCT documentation

105

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Chapter 5 The Patent Co-operation Treaty

The PCT published applications (officially referred to as “pamphlets”) published at 18 months can be in any one of 10 official languages, as stated above. In recent years, the proportion of English-language pamphlets has fallen, from just over 70% in the year 2000 to less than 50% by 2016, and it seems likely that it will continue to fall. The front page data will always be duplicated in English whenever the body of the specification is in another language; this is helpful for searching as even first-level data services can provide at least an English abstract for all published pamphlets. Applicants can file an international application at their national patent office (leading to an application number in the current format PCT/CCYYYY/ NNNNNN, where CC is the country code of the place of filing, YYYY is the year of application to the PCT system and the NNNNNN is a serial number) or directly at the headquarters of the PCT administration, which is the International Bureau of WIPO based in Geneva. If they choose the latter route, the country code used is the two letters “IB”, for International Bureau (of the PCT). In order to encourage patent applications from less-developed countries, it is now possible to apply in any language, but a translation must be supplied in order for the pamphlet to be published in one of the ten official publication languages. Both the application and publication number formats have been modified to take account of increasing numbers of applications and the need to accommodate the “Year 2000” problem. The changes were implemented at different times, as shown in Table 5.2. The nominal dates of the changeover were 1st July 2002 for publication numbers and 1st January 2004 for application numbers, but due to the actual publication dates of the closest issues of the PCT Gazette, the new formats were public from the dates shown in the Table. To further confuse the user, related documents which straddled the transition date(s) use whichever format is in force at the actual date of publication e.g. WO 02/50995-A2 published on 27th June 2002 was followed by its late search report WO 02/050995-A3

Table 5.2: Changes in PCT numeration. Data type

Date range

Format

Application number

–..

PCT/CCYY/NNNNN (+)

.. to date

PCT/CCYYYY/NNNNNN (+)

–..

WO YY/NNNNN (+)

..–..

WO YY/NNNNNN (+)

.. to date

WO YYYY/NNNNNN (+)

Publication number

PCT documentation

107

on 10th October 2002 i.e. after the new format was introduced. Different database producers have taken different measures to normalise these numbers, so it is not possible to generalise about the “correct” format for any given number in the database. During the application process, the applicant is invited to designate one or more of the member states of the PCT, in a similar fashion to the EPO system. At the time of writing, there are 153 member states in the Treaty; see Annex A. However, unlike the early form of the EPO designation listings, inclusion on the front page of a PCT application does not indicate that the applicant is definitely seeking protection in all the states listed. On the contrary, since new regulations came in during 2003, designation of a single PCT member state is regarded as valid designation of all member states. Since examination is only done at the local level, a listing at INID field 81 or 84 is no guarantee at all that there will be eventually a granted patent corresponding to the invention – see Figure 5.3 for an example of a designated states listing.

Figure 5.3: Designated states listing on PCT front page (INID 81 and 84).

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Chapter 5 The Patent Co-operation Treaty

The pamphlet is usually accompanied by an official search report, which is drawn up by one of the International Search Authorities (ISAs). These are a group of patent offices who have been sub-contracted to search PCT cases on behalf of the International Bureau. Each ISA has to show that they have access to a specific body of prior literature, the so-called PCT Minimum Documentation defined in the text of the PCT and its Regulations1, before they are affirmed as a search authority. At the time of writing, there are 23 ISAs in operation; these are shown in Table 5.3 in chronological order of commencement of operations. Table 5.3: Operational status of the PCT International Search Authorities. Country code (ST.)

Authority name

ISA operational date

EP

European Patent Office (EPO)

..

RU

Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)

..

US

United States Patent and Trademark Office (USPTO)

..

SE

Swedish Patent and Registration Office

..

JP

Japan Patent Office

..

AT

Austrian Patent Office

..

AU

Australian Patent Office

..

CN

National Intellectual Property Administration, PRC (CNIPA)

..

ES

Spanish Patent and Trademark Office

..

KR

Korean Intellectual Property Office

..

CA

Canadian Intellectual Property Office

..

Finnish Patent and Registration Office (PRH)

..

XN

Nordic Patent Institute

..

BR

National Institute of Industrial Property (Brazil)

..

IL

Israel Patent Office

..

EG

Egyptian Patent Office

..

IN

Indian Patent Office

..

CL

National Institute of Industrial Property of Chile

..

SG

Intellectual Property Office of Singapore

..

FI *

PCT documentation

109

Table 5.3 (continued ) Country code (ST.)

Authority name

ISA operational date

UA

State Intellectual Property Service of Ukraine

..

XV**

Visegrad Patent Institute

..

TR

Turkish Patent and Trademark Office

..

PH

Intellectual Property Office of the Philippines

..

*

Co-operative institute of the patent offices of Denmark, Iceland and Norway. Co-operative institute of the patent offices of Czechia, Hungary, Poland and Slovakia.

**

After the pamphlet has been published, the applicant has a choice of routes. He may opt for Chapter I, which means that the application moves out of the hands of the International Bureau and is forwarded to the national patent office(s) designated by the applicant. The alternative, Chapter II, route involves one additional step, the creation of a non-binding opinion on patentability, before the application is forwarded. This opinion is prepared by an International Preliminary Examination Authority (IPEA), drawn from the same authorities as the ISAs. In either case, Chapter I or Chapter II procedure, the application is put into a state where it can be forwarded to the designated offices, which usually happens within 12 months of the publication of the pamphlet (30 months from priority for most countries, but subject to some variation – see www.wipo.int/pct/en/texts/ time_limits.html for current details). The current range of KD codes used for WO documents2 are shown in Table 5.4.

Table 5.4: PCT KD codes. Code

Definition

A

Published application with search report

A

Published application without search report or with null search report#

A

Late publication of search report

A*

Re-publication of specification with amended claims

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Chapter 5 The Patent Co-operation Treaty

Table 5.4 (continued ) Code

Definition

A*

Re-publication of front page of specification

*

A

Re-publication of entire specification

#

technically, with a declaration of non-establishment of search report under Art.17(2)(a) of the PCT. * introduced for publications issued or re-issued from 1st January 2009.

Although no PCT cases as such go to grant, there were a number of additional KD codes which were used for a short period before 2009 and are confusingly similar to those used for examined patents: – WO-B1 publication of amended claims (now replaced by WO-A4) – WO-C1 modified first page (now replaced by WO-A8) – WO-C2 complete corrected document (now replaced by WO-A9) The same publication number is re-used in all cases, with the changed suffix. From August 2001 a decision was made, as part of the move towards more electronic filing, that patent applications which incorporated large volumes of genetic sequence data could be published in two parts; a normal WO-A document containing the main text, plus an electronic-only supplement with the sequence data. The sequence data are made available as a separate downloadable file3. There is nothing explicit in the KD code applied to the “main” publication to indicate whether there may be an electronic-only part to the specification. The “Documents” or “Notices” tabs of the PatentScope record should contain a link to download the sequence data for a given publication. Prior to some rule changes during 2003, the Chapter I procedure did not include any establishment of a written opinion – this was all left as an optional process under Chapter II. However, the new procedures meant that this element of the old Chapter II procedure was incorporated into the international search procedure under Chapter I, effective for applications filed after 1st January 2004. From this date, the ISA also provides a Written Opinion on patentability as well as a search report; confusingly, the former is also sometimes referred to as a “WO” document but is not the same as the 18-month pamphlet publication. The International Bureau converts this opinion into an “International Preliminary Report on Patentability (Chapter I of the PCT)”, or IPRP (Chapter I) for short, supplied to the applicant. If the applicant requests to proceed via Chapter II, the same written opinion will be used as the basis for a corresponding – but still not binding – IPRP (Chapter II) in place of the International Preliminary Examination Report (IPER) under the old Chapter II

PCT documentation

111

procedure. Details of the operation of the system under these new rules were laid out in the PCT Newsletter4 – the section of most relevance to information scientists is “Enhanced International search and preliminary examination system”. The Newsletter is well worth monitoring for other changes in the system. One final procedural point concerns the interface between regional patent systems and the PCT. This can impact in two ways. Firstly, the current PCT rules ensure that the designation of a single PCT member state at the time of application is regarded as equivalent to the designation of all states, by all routes, for all available IP rights in those countries. This can result in double or even triple designation. For example, a designation of Germany is taken to mean designation for the purposes of (a) a German national patent, or (b) a European Patent with effect in Germany or (c) a German national utility model. The front page data includes this triple designation. This does not mean that the applicant will obtain three sets of IP rights, even if this were legally possible. The time limit for making the final choice of which countries to enter as national or regional phase, and by what route, is generally 30 months from priority date (hence after the publication of the international application with the lists at INID 81 and 84). In practice, protection is rarely sought in the majority of the listed states. In 2009, WIPO statistics showed that on average, for every PCT application filed, applicants entered the national phase in only 2.7 patent offices (counting the EPO as a single office)5. This number is slightly misleading, in that an arithmetical average is lowered by all the cases in which no national phase entry took place at all, but nonetheless indicates that very large numbers of the states listed on the front page never receive a PCT application for further processing, for any form of IP right. Since 2009, the International Bureau has collected these statistics in a slightly different form, but the same general picture emerges; in the review of 2018 activity, the average number of national phase entries per PCT application originating from the IP5 offices was 1.0 (origin = CN), 1.7 (KR), 2.9 (JP), 3.2 (US) and 3.8 (EP – derived from the statistics for the 12 EPO member states listed individually)6. The second issue surrounding designation relates to those PCT member states which also belong to the EPO. Under Article 45(2) of the PCT, a country belonging to a regional patent system may provide within its national law that a PCT designation of that country will only be regarded as a regional application and not a national one; this is referred to as “closing the national route”. At the time of writing, a number of EPO member states have taken this option; these are Belgium (BE), Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Italy (IT), Lithuania (LT), Latvia (LV), Monaco (MC), Malta (MT), the Netherlands (NL) and Slovenia (SI). All of these countries will appear on the front of the WO publication, but when the time for national and regional phase entry is reached, it is only possible to obtain substantive patent protection by means of an EPO examination and grant.

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Consequently, if a patent family contains (for example) both a PCT publication and a French national patent, it is possible to infer that the French case must have been filed separately and not matured from the international application. The closure of the national route is not a permanent decision; countries may choose to re-open the national route at a later date, or may choose to close it after initially maintaining it open. At the time of writing, it has been announced that San Marino (SM) will close the national route with effect from 1st January 2020. Conversely, it is known that both Ireland and France have considered re-opening their national route, and Italy has passed a law permitting the re-opening of the national route from 1st July 2020 (see Chapter 6 for further details). For other regional systems, refer to the listing on the WIPO website, under the PCT System sub-section7. This variation in procedure is important from the patent information specialist’s view when it comes to analysing the structure of a patent family, in order to understand which family members are derived from a PCT application and which rights have been obtained through individual national applications.

Databases covering the PCT system The WIPO PatentScope system, www.wipo.int/patentscope/ has expanded considerably since its original launch. Since 2009, document collections from national patent offices have been added under the same interface, and it currently offers over 60 series, including many from Central or South America, Africa or parts of Asia where WIPO has offered technical assistance in the digitisation process. Discussion of PatentScope as a tool for searching multiple collections is included in Chapter 11. The present chapter will consider only the access to PCT documentation. One of the characteristics of the PCT system, being only involved in the early stages towards publication, is the lack of a centralised legal status register. However, recent changes in the PatentScope system mean that more of the early stage documentation is now available to the public whilst the application is still in the international phase, rather than having to wait until a case enters the national phase. Documents such as the early Written Opinion are stored in PatentScope after publication of the WO-A document, and further documents such as priority filings may also be added. A separate tab within the PatentScope record may also contain links to national registers when cases are known to have entered national phase. Nonetheless, it is always advisable for third parties to consult both PatentScope and relevant national or regional registers to obtain a complete picture. Once granted, a national patent which matures from a PCT international application is indistinguishable (in legal effect and for

Databases covering the PCT system

113

most documentation purposes) from one filed directly, through the national route. Occasionally, a country may reserve special ranges of numbers for PCT applications, but there are rarely any other distinguishing features. PatentScope offers multiple language search interfaces, and much of the official documentation appears in English as well as the publication language of the application. As well as the published pamphlets (including delayed search reports and amendments), each record normally includes the priority documents, the old-style Chapter II IPERs until they were phased out in 2003, and the new-style IPRP Chapter I and Chapter II from 2004, grouped under the “Documents” tab. As noted above, a separate “National phase” tab within the record includes national phase entry data for some countries, including in some cases, a hyperlink to the corresponding national patent register. Since a change in the PCT Regulations in 20178, the International Bureau has seen an increase in the amount of national phase entry data being reported, and it is hoped that this will result in the National Phase tab becoming much more useful in the future. An example record from PatentScope is shown in Figure 5.4.

Figure 5.4: Example record from PatentScope showing the Documents tab.

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Chapter 5 The Patent Co-operation Treaty

The fundamental problem with any attempt to search the full text of PCT documents is their multiple publication languages. For many years, even the most complete databases only contained the full texts of those documents which had published in languages using Latin characters, such as English, French, German or Spanish. Texts published in different character sets such as Cyrillic, Japanese or Chinese were only retrievable via the supplementary abstract in English; no full-text searching was possible. This could mean that a substantial proportion of publications was more difficult to retrieve by text searching, and that text-based search results were at best skewed in favour of documents published in the Latin languages only. It is clear that there is downward pressure on English as the primary language, in favour of Asian languages – see Figure 5.1. This means that not only will word-based searching become more difficult in first-level data, but also there is an increased burden to prepare translations for information services such as Chemical Abstracts and the Derwent DWPI file, which rely upon producing abstracts in a single language for all their records. To address this situation, from June 2010 WIPO launched its Cross-Lingual Information Retrieval (CLIR) tool, enabling 5 languages to be used (English, French, German, Japanese and Spanish) in keyword searching of the claims and descriptions of PCT applications. By May 2011, Chinese, Korean, Portuguese and Russian were added. The function of CLIR is to help searching in a multi-lingual collection by translating a user’s query into multiple different languages before sending it to the database for retrieval. This is by no means a trivial task, since a keyword search, by definition, consists of short words or phrases with little surrounding context. When multiple translations of the same word in English are available in one or more of the target languages, it becomes very difficult to select the most appropriate keywords in the revised strategy, particularly if the searcher has limited knowledge of the subtleties of each translation. However, the tool does provide the user with the opportunity to specify one or more broad subject domains in order to refine the translation. Figure 5.5 shows the effect of submitting a simple word-based search term (in this case, “safety belt”) in English and limiting the translation to the fields of automotive or aeronautical engineering. Translations of accepted words or phrases are offered in German, Spanish, French, Japanese, Korean, Portuguese, Russian and Chinese, limited to several IPC classes. When the query is sent to the database, the hit terms are highlighted in each language. Three example hits are shown, where the search has retrieved from the main body of the text of publications in Spanish, German and Chinese.

Figure 5.5: PatentScope CLIR strategy and sample results after query translation.

Sample answer in German

Sample answer in Chinese

Sample answer in Spanish

Search strategy after CLIR analysis and selection of English synonyms

Databases covering the PCT system

115

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Chapter 5 The Patent Co-operation Treaty

Prior to the launch of PatentScope, commercial database producers had already been making efforts to provide at least some of the PCT documents to the searching community. Table 5.5 provides an overview of databases dedicated to coverage of PCT published pamphlets. It should be noted from Table 5.5 that many different versions of the “PCT full text” searchable file exist. In the early 2000s, OCR technology was only available to create machine-searchable texts from PDF originals in English, French, German or Spanish (and potentially other Latin script languages such as Portuguese). The remaining PCT texts published in non-Latin scripts such as Cyrillic, or in ideogram-based languages like Japanese and Chinese, could not be converted to character-coded texts, nor used as the basis for machine translation into English. As electronic filing has increasingly become the method of choice under the PCT system, source data in XML has become available. Several commercial suppliers, as well as WIPO themselves, have been able to add additional texts to the searchable file in their original language and/or in English. File content is being continually updated and older material progressively converted. The user is recommended to seek the latest situation from the file supplier or distributor when comparing coverage.

Other WIPO information resources WIPO has responsibilities in a range of other global IP activities, including areas such as trade marks and designs. As the organisation has developed software solutions to the filing, prosecution and grant of these registered rights, the corresponding databases of public documentation have tended to develop piecemeal. However, in 2019, WIPO launched its IP Portal, branded as a “one-stop shop” for online IP services. The current home page is found at https://ipportal.wipo.int/. This portal requires (free) pre-registration for the fullest use of its functions, which can include electronic fee calculators and payment means, distribution of various gazettes, access to legal texts and classification tools. The existing menu of services includes PatentScope and the corresponding Global Brand (trademark) and Global Design databases. At present, these latter services are also accessible without the need to log in to the IP Portal, but it is possible that in the future the website structure may be unified and that it will become necessary to access these databases via the Portal as well.

WIPS Co. Ltd.

FreePatentsOnline

CAMBIA/ PatentLens The Lens www.lens.org WIPO www.wipo.int/pat entscope/en/

Wisdomain

PatentScope

WIPS Global .

PatBase

WIPO

WIPO

WIPO

WIPO

WIPO

WIPO / RWS

(Worldwide file) Bibliographic data, English abstracts for all publications, +. PDF page images + (Worldwide EN/FR/DE) Full text of WO-A in English, French or German, +

Coverage

Minesoft

Acclaim IP www.freepatent sonline.com

(continued )

Bibliographic data, full text (En/Fr/De/Es/Pt/Ja/Zh/Kr +, Ru +, no Ar). Image pages +

Bibliographic data, English abstracts for all publications, +. Images +. Some full text – coverage not disclosed.

Bibliographic data, OCR full text, legal status + (all publication languages)

Bibliographic data, full text +. No explicit information on language groups – previously covered at least En/Fr/De/Es from +, plus some Zh and Ja.

Bibliographic data, full text – (free service). No explicit information on language groups – previously covered documents in En/Fr/De/Es only.

Actionable Bibliographic data, full text +. No explicit information on language groups – Patents previously covered documents in En/Fr/De/Es only. www.actionablepa tents.com

www.espacenet. com

DocDB/Espacenet

WIPO / EPO

Platform

Service name

Producer

Table 5.5: PCT databases.

Other WIPO information resources

117

Service name

FULLPAT

FAMPAT

PCTGEN

PCTFULL

Total Patent One

WIPO/PCT Patents Fulltext

Producer

WIPO /Univentio

WIPO / Questel

WIPO/FIZ Karlsruhe

WIPO/Univentio

WIPO/Univentio

WIPO/Univentio

Table 5.5 (continued )

Proquest Dialog

LexisNexis Univentio

STN

STN

Questel www.orbit.com

Questel www.orbit.com

Platform

Bibliographic data, full text +. No explicit information on language groups.

Bibliographic data, OCR or XML full text, MT En full text, +. No explicit information on language groups – previously covered documents in En/Fr/De/Es only.

Bibliographic data, original full text (all languages apart from Arabic) + English MT of title, abstract, description, and claims from Fr/Es/Pt/De/Ru/Ja/Zh/Kr. English transliteration of titles and abstracts from Ru/Zh/Ja/Kr. +

E-filed nucleic acid and protein sequences from PCT applications, +

Bibliographic data (all languages apart from Arabic), +

Bibliographic data, full text (all languages apart from Arabic), PDF page images +

Coverage

118 Chapter 5 The Patent Co-operation Treaty

References

119

References 1 WIPO (2019.07.01). The International Search, Article 15 (4), Patent Cooperation Treaty; Minimum Documentation, Rule 34, Regulations under the PCT. 2 WIPO (2008). Modification of Kind Codes. PCT Newsletter No. 12/2008, p.13. 3 WIPO (2019.11.26). PatentScope Products and Services: Free Services: Sequence Listings. WIPO. Retrieved from https://www.wipo.int/patentscope/en/data/. Data are also retrievable by publication number or date from https://patentscope.wipo.int/search/en/sequences.jsf / or by anonymous ftp from ftp://ftp.wipo.int/pub/published_pct_sequences/publication/. 4 (a) WIPO (2003). Overview of changes to the PCT system as of 1 January 2004. PCT Newsletter No. 11/2003, 1–5. (b) WIPO (2003). New enhanced international search and examination procedure. PCT Newsletter No. 12/2003, 13–15. 5 WIPO (2019.11.26). PCT, the International Patent System; yearly review 2010. Section A20. WIPO. Retrieved from https://www.wipo.int/pct/en/activity/index.html. 6 WIPO (2019.11.26). PCT Yearly Review 2019: The International Patent System. WIPO. Retrieved from https://www.wipo.int/pct/en/activity/index.html. Statistics derived from Figure B.8. 7 WIPO (2019.11.26). PCT Contracting States for which a regional patent can be obtained via the PCT. WIPO. Retrieved from https://www.wipo.int/pct/en/texts/reg_des.html. 8 WIPO (2019.11.28). Information Concerning Events at the Designated and Elected Offices. Rule 95.1, PCT Regulations. WIPO. Retrieved from https://www.wipo.int/pct/en/texts/rules/ r95.html#_95.

Chapter 6 National patent systems of the G8 countries Introduction A mature patent system usually follows (or according to some commentators, precedes) a high level of industrial development, signalling a move away from agriculture and towards manufacturing industry as the primary contributor to a country’s gross domestic product. Statistics from WIPO certainly indicate that the G8 countries (the United States, Japan, Canada, the United Kingdom, Germany, France, Italy and Russia) generate a large proportion of total global granted patents per year, and probably an even larger proportion of the published unexamined documents. Since the USA and Japan have been dealt with in earlier chapters, this chapter will examine the remaining countries of the G8, as being some of the most commonly-occurring sources of publications facing the patent information specialist, outside of the Asian region.a

Canada Historical aspects and current law The first true Canadian patent system was not formed until 1869, shortly after the British North America Act 1867 (30 & 31 Vict. c.3), under which the Dominion of Canada was created. The new Confederation government was explicitly assigned law-making powers for the whole Dominion in respect of patents, by s.91(22) of the Act. Prior to this, the earliest patent legislation anywhere in the provinces was the 1824 “Act to Promote the Useful Arts in the Province” (4 Geo. IV c. 25) for Lower Canada. Various others of the individual provinces also had their own patent laws and published patent specifications or numerical lists of patents prior to the formation of the Confederation; Upper Canada (1826 – a later law in union with Lower Canada dates from 1849), Nova Scotia (1833), New Brunswick (1834), Prince Edward Island (1836) and Newfoundland (1850). The province of Newfoundland

a Russia was excluded from the political/economic Group of Eight (G8) in 2014, and indicated in 2017 that it has no plans to rejoin. However, for the purposes of this book, and in consideration of the economic size and volume of patent publications from this country, it is still convenient to include Russia within this bloc, even though it is no longer technically correct to do so in other statistical or economic studies. https://doi.org/10.1515/9783110552263-006

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retained some independent legislation until as recently as 1949, at least in the area of trademarks. Some historical milestones are described by McMaster1 and by Colman2. For much of the nineteenth and twentieth centuries, Canada’s patent legislation and documentation was modelled closely upon that of the United States. The first Patent Act of the Dominion of Canada (32 & 33 Vict. c.16) in force from 1st July 1869 was modelled on the 1832 US Act. It provided for an initial term of 5 years, with two possible 5-year extensions. Significant revisions were made in 1886 (eliminating the need for the Minister of Justice to approve all grants) and 1892 (extending the maximum term from 15 to 18 years). By the early 20th century, procedure consisted of publication of a single document after substantive examination and grant, with a term of 17 years calculated from the date of publication (having been reduced by a 1935 Act from 18 years). Canada also used the “first to invent” system, equivalent to that of the United States, and still maintains a grace period system. This means that an inventor can disclose their invention in public within Canada up to 12 months before they file their application, without losing their Canadian rights. However, such disclosure will prejudice their applications outside of Canada in countries which do not recognise this grace period. Canada is a long-term signatory to the Paris Convention, having signed in 1925, but was relatively late amongst major industrial countries in joining the Patent Co-operation Treaty, not becoming a member state until January 1990. Around the same period – 1989 – there was a major revision of domestic legislation which affected patent granting and publication, in the form of the Patent Act (Revised Statutes of Canada, 1985, c. P-4, as amended). This introduced the “first-to-file” system, but retained the general 12-month grace period. Shortly after the new law came into force, the Patent Office was restructured into the present Canadian Intellectual Property Office (CIPO) in 1991. The main website for CIPO is found at www.cipo.gc.ca. The site is bilingual throughout. Patent applications filed in Canada on or after 1st October 1989 are treated under a deferred examination system with dual publication. The specification is published unexamined at 18 months after national filing (or from priority if claiming it), and is allocated a number in the 2,000,000 series. Grants based on pre-1989 filings had reached publications numbers in the region of 1,250,000, so there is a break in the sequence where the new law becomes the predominant publishing mechanism. Post-1989 old Act grants still publish occasionally; the most recent case appears to be CA 1,341,640-C granted in 2014, based on a 1986 filing date. After filing, an applicant may request examination at any point up to 4 years later – this has been reduced progressively from the original seven-year

Canada

123

deferment under the 1989 legislation. From an information point of view, this means that Canadian applications can appear inactive for longer than normal after the publication of the unexamined document, yet still have the potential to proceed to grant. Careful checking of the legal status is required before assuming that an application has lapsed or been withdrawn. Since the 1989 legislation, renewal fees (annuities) have been payable to maintain Canadian patents in force after grant. Canada introduced a system of extension of patent term (Certificate of Supplementary Protection) for human and veterinary pharmaceuticals from 20173. Prior to this, an amendment to the Patent Act passed in 2001 had ensured that the term of all old Act patents still in force on 1st October 1989 was the longer of 17 years from grant or 20 years from filing, but there had been no other term extension mechanism available under the new Act.

National patent documentation The Canadian patent system is relatively unusual amongst major patent offices, in that its publications reflect the bilingual nature of Canada itself. All bibliographic data are identified in both English and French, and a small proportion of Canadian patents have the entire specification written in French. The standard country code for Canada is “CA”. Prior to the introduction of the 1989 publication sequence, granted Canadian patent documents did not always carry KD codes on their front pages, since they were only published once. An exception is for some patents granted during the later years of the old Act procedure, which had a letter C printed before the number at INID (11). However, for the sake of uniformity, various of the major databases assigned a dummy code -A to all old Act grants, corresponding to the WIPO standard for a first publication. Similarly, re-issue documents carried a KD code of -E on the published version, but electronic databases assigned a code -B to them, reflecting the fact that they were second-stage publications after grant. When the new early publication system was developed, Canadian published applications began to be printed with an official code -A1, which was potentially confusing with the existing dummy database form. Consequently, some databases were forced to adopt a second dummy code, this time -AA, to distinguish new Act -A1 published applications from the old Act grants. The type of documents can also be distinguished by the range of their publication number (new Act documents are always greater than CA 2000001) and the fact that the prominent publication number is printed opposite INID code (21) rather than INID (43). Applications which proceed to grant carry a KD code of -C on

124

Chapter 6 National patent systems of the G8 countries

their front page, and also in the database record. Re-issue publications are coded -E and re-examination certificates as -F. Further details on number series can be found in the Patent Number Guides prepared by Michael White at Queen’s University, Ontario, at https://guides.library.queensu.ca/patents/find ing-patents. Prior to the 1989 law revision, national application numbers and corresponding national grant publication numbers were not the same e.g. application number 579,733 dated 11th October 1988 was granted as CA 1,312,175-C. Some authorities4 indicate that for a period, a more complex system of application numbers, in the format YYNNNN where YY was the last 2 digits of the year of application, appears to have been used in the early days of the 1989 Act. However, examples of this are difficult to locate. Most bibliographic evidence shows that from 1989, application numbers were also selected from a new (2000000+) series and were re-used as the corresponding publication number, both for the new Act publications (-AA) and granted documents (-C) e.g. application 2893235 dated 12th July 2006 was published as CA 2893235-A1 on 12th January 2008 and published as granted patent CA 2892235-C on 14th August 2018. Basic bibliographic data of new documents is announced weekly in the Canadian Patent Office Record (CPOR), published every Tuesday. Since 22nd June 1999, the electronic PDF version has been the official publication. One particular aspect of bibliographic data from Canada is worth noting. Since the accession to the Patent Co-operation Treaty (PCT), an international application has been capable of maturing into a national filing and – subject to national examination – a granted Canadian patent. The PCT is a major entry route into the Canadian system, and a substantial proportion of the unexamined cases published each week represent transfers from the PCT. During the early years of Canada’s membership, there were no announcements in the Canadian Patent Office Record to show that these cases had entered national phase in Canada. The corresponding Canadian documents also failed to cross-refer to the PCT documentation or earlier priority filings. Consequently, a number of major database producers, such as the Derwent World Patent Index (DWPI), were unable to link these records into the rest of the patent family. Users should note that it may be necessary to supplement family searches with a separate interrogation of the Canadian national data in order to locate any corresponding Canadian member. In more recent years, Canadian publications have used the INID (85), (86) and (87) fields on their front page to cross-refer to any earlier PCT publication, so linkages to the patent family are more reliable.

France

125

Databases and database-specific aspects Canada was one of the earliest national patent offices to load a substantial amount of its back-file of documents onto the internet. Whilst many offices tended to limit their offering to the most recent few years, Canada opted to digitise their entire backfile to 1920 as a first step, and have since extended coverage to include basic bibliographic data back to the beginning of their patent system in 1869. In addition to legal issues such as the grant term and grace period, Canadian patent documentation shows one further similarity to the United States system, in the persistence of a national classification system based on an all-numeric form of class notation e.g. 2/98.08 (may be printed as 2-98.08). By the early 1990s, this system had 403 main classes, some of which could have up to several hundred subclasses. After the new law in 1989, this system was gradually phased out, and modern Canadian specifications carry only the International Patent Classification, which has been in use in Canada since 15th August 1978. At the time of writing, the Canadian classification system has been retained as a searchable field in the databases mounted on the CIPO website, and it is still of use for retrieving older specifications, between 1869-c.1995. The field is labelled “CPC” and it remains to be seen what will happen when, as expected, Canada starts to use the Cooperative Patent Classification system (also widely known as the CPC). A summary of databases of Canadian patent documents is shown at Table 6.1.

France Historical aspects and current law France has had a patent system since 1791, shortly after the French Revolution, and patents of importation (allowing a French citizen to have rights over the importation into France of an invention patented elsewhere) were introduced by a Napoleonic decree of 1810. There were further modifications introduced by the law of 5th July 1844 and again in the law of 7th April 1902, at which point the French Patent Office was founded and took control of printing of full specifications. Pre-1902, patents were initially filed and issued by various government offices, including the Office of the Interior and the Ministry of Agriculture and Commerce. The present day administration (today the Institut National de la Propriété Industrielle, or INPI) was founded by a law of 1951. The term of a patent under the 1844 law was a maximum of 15 years, subject to renewal at 5 and 10 years; it is currently the standard 20 years from filing, following a 1939 law amendment. At this point in time, patents were granted by a simple registration

Canadian Patents Database (CPD)

Library & Archives Canada

Register of Certificates of Supplementary Protection (CSP)

Patent Register

CIPO

Library & Archives Canada / CIPO

Health Canada

Health Canada

Historical Canadian patent series, – (digitised microfilm). Limited bibliographic data only, page images.

Granted patents – (bibliographic only). Granted patents + (bibliographic, claims and abstracts and page images). Unexamined applications + (bibliographic, claims and abstracts and page images). Legal status and post-grant actions also available.

PDF version, available +. Annual indexes also available. Published monthly –, weekly +.

Coverage

www.canada.ca/en/health-canada/serv Alphabetical listing of medicinal drugs (human and ices/drugs-health-products/drug-products veterinary), patent protection and expiry dates. /patent-register.html

www.canada.ca/en/health-canada/serv Listing of CSP grants and pending application, including ices/drugs-health-products/drug-products active ingredient, parent patent number and start/finish /applications-submissions/guidancedates of CSP. documents/register-certificates.html

www.bac-lac.gc.ca

www.ic.gc.ca/opic-cipo/cpd/eng/ introduction.html

Canadian Patent www.ic.gc.ca/opic-cipo/cpor/eng/home. Office Record (CPOR) html

CIPO

Platform

Service name

Producer

Table 6.1: Canadian patent databases.

126 Chapter 6 National patent systems of the G8 countries

STN

TotalPatent One

PatentScope

Univentio

Lexis-Nexis

CIPO / WIPO

www.wipo.int/patentscope

www.lexisnexisip.com/ products/totalpatent-one/

CANPATFULL

Bibliographic data +; abstracts from , full text c.% of records in original languages (En, Fr).

Grants: Full text (original language + MT English) and PDF pages from +; bibliographic data from  (some –). Applications: Full text, bibliographic data (original language), PDF page images +, MT +,

Full texts (some –; complete +). Frenchonly records have English abstracts and MT English specifications. Page images +.

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system, without examination. Consequently, questions of validity had to be determined by the courts, and patented goods were marked as “Breveté SGDG”, the abbreviation standing for “sans garantie du gouvernement”; the 1844 law explicitly stated (Article 11) that there was no Government liability for the invention (grants were “sans examen préalable, aux risques et périls des demandeurs, et sans garantie soit de la réalité, de la nouveauté ou du mérite de l’invention, soit de la fidélité ou de l’exactitude de la description”). France was a founder signatory to the Paris Convention, as it entered into force in 1884. It is also a founder member of the European Patent Office, from 1977, and joined the Patent Co-operation Treaty system in 1978. The standard country code for the France is “FR”. Until a major revision of the law in 1968, French patent applications were not examined for novelty and did not include any claims as such. Cases from the early 20th century were only examined for unity of invention, and normally granted around 9 months after filing. Abridgements were published around 1 month after grant, and specifications published around 3 months later. This process meant that effective decisions on patent protection could only be decided after the issue of the document, by means of court action. Prior to 1968, the only applications subject to search were a special series of documents covering pharmaceuticals, the Brevet Spécial de Médicament or BSM series. These special forms of patent were subject to a novelty search – unlike other subject matter at the time – under Ordinance 59-250 of 4th February 1959. The first cases issued the following year; mostly published between 1961 and approximately 1973, although a small number appeared as late as 1978, having been filed before the major 1968 amendments came into force. The 1959 law changes were brought about as part of the revision to pharmaceutical marketing approval procedures in France, in the wake of the “Stalinon” case of 1954, in which oral treatments for staphylococcal infection were found to contain lethal concentrations of tin5. The 1968 legislation required the inclusion of claims in an application, and also introduced utility models into the French system, at the same time as closing the BSM system to new applications. The French utility models are termed certificat d’utilité and use a different KD code to distinguish them, but are published in the same numerical series as regular patents. Their term is 6 years. No new filings for certificates of addition were allowed after 1990, although existing applications were processed and existing grants were allowed to complete their term. The current legislation is the Intellectual Property Code6, a consolidation of all French laws in this area which is regularly revised; the first edition was created in 1992. Patents fall under Book VI of the Code. The current (so-called Search Report) procedure requires that a request for a search report must be

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filed within 18 months of the priority. Following issue of the search report compiled by INPI (or by the EPO under contract), the applicant has three months in which to either file new claims or submit arguments showing why the claims should be retained as originally filed. If no reply is received, the application may be rejected for “manifest lack of novelty”. After the deadline for response to the search report, the patent is granted and published. This search report procedure is not properly speaking an examination, and except in cases of manifest lack of novelty, the patent is always granted and with the claims last filed by the applicant. At the time of writing, a new law has been passed7 which includes various measures to strengthen the French national patent system. These include the extension of the term of utility certificates to 10 years, a more modern system of rigorous substantive examination for patents (in force with respect to applications filed after 22nd May 2020), a system of provisional patent applications and post-grant opposition to national patents (the latter provision entered into force on 1st April 2020). French patents are valid in the mainland of France, plus the Overseas Départments and territories of Réunion, New Caledonia, French Polynesia, Saint-Pierre and Miquelon, Wallis and Futuna, and the French Southern and Antarctic Territories. As with Italy, France instituted a supplementary protection certificate system (known in French as the Certificat Complémentaire de Protection, or CCP) under a national Law 90-510 of 25th June 1990, which pre-dated the EU legislation. Term extensions for pharmaceuticals were available under this law between 1990 and 1992, and allowed a maximum 7-year extension, or a term of 17 years from marketing authorisation. The EU legislation replaced this system from 1993, allowing only a maximum 5-year extension. In 1977, France became a founder member of the European Patent Office. As with many of the national patent offices of the member states, the advantage of the parallel EPO procedure made a significant impact upon the numbers of applications being filed in France under the national system. An approximate measure of the balance between the two systems shows that in any given year, the ratio of applications filed via the PCT international or EPO regional routes to applications filed via the national (Paris Convention) route is at least 6:1. France is one of a number of EPO countries which has not permitted applicants to use the PCT route to enter its national patent system directly. It has opted to “close the national route”. An applicant wishing to obtain patent protection in France via the PCT must do so by designating an EPO application covering France. Although the PACTE law in draft form did include a proposal to re-open the national route, this was not in the final text.

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National patent documentation The Bulletin Officiel de la Propriété Industrielle (BOPI) has been published since 1884, and today is produced only in an electronic version, in several editions for the different classes of IP rights granted by INPI (BOPI Brevets, BOPI Marques, BOPI Dessins et modèles). Archive copies back to 1884 are available from INPI’s main office. The modern BOPI-Brevets is published on Friday each week and contains a number of separate sections: 1. Publication des demandes de brevets d’invention, de certificats d’utilité, de certificats d’addition. (mainly abstracts of published unexamined applications, FR-A1) 2. Listes relatives aux demandes de brevets et aux brevets d’invention ayant fait l’objet d’un dépôt en France. (numerical listings of published search reports and granted patents, FR-B1) 3. Listes relatives aux demandes de brevets et aux brevets européens produisant ou non leurs effets en France. (validation details of EP-B cases designating FR or lapsing with respect to FR) 4. Certificats complémentaires de protection pour les médicaments ou pour les produits phytopharmaceutiques. (SPC applications and proceedings) 5. Topographies de produits semi-conducteurs. (semiconductor chip topography rights) 6. Registre national des brevets. (numerical index of entries in the RNB; changes in legal status). 7. Registre national spécial des logiciels. (national software register). Post-1968 application numbers in France are a conventional YYNNNNN format, with YY representing the last two digits of the year of application in France, and the remainder a running annual series of numbers. Application number formats before this period are presented in a different manner, which can lead to differences in database coverage if proprietary formatting has been applied. Prior to 1968, the data corresponding to a modern patent application number was recorded as a “No. du procès verbal de dépôt” or “P.V. No.”. These numbers were issued by the receiving offices in each geographic département (e.g. 7,178 Seine-Maritime or 1,764 Hérault) and it appears that sequences ran across several years for receiving offices which handled a low volume of applications. This resulted in the potential for multiple overlapping series of application numbers allocated by different offices, so they are distinguished in the numbering format adopted by the EPO, by replacing the name of the département by its numerical equivalent from the French postal/INSEE code system (hence the two applications above would become FR YYYY 7607178 and FR YYYY 3401764 respectively). In Table 6.2, Example 1

P.V. No. ., Paris (claiming US priority), filed ..

P.V. No. ., Bouches-duRhône, filed ..

n/a

FR

Native format as printed

Standardised INPI format

EPO format

FRD

n/a

Example 

Example 

Number format

Table 6.2: Formatting of French patent application numbers pre-1968. Example 

FR

n/a

 

  filed ..

Example 

FR FR

 

P.V. No. ., Paris   filed filed .. ..

Example 

France

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Chapter 6 National patent systems of the G8 countries

illustrates this reformatting. If no département name was given (common for national applications deposited in Paris or applications claiming foreign priority), the application number could be made up to seven digits using a “0” or “00” prefix instead of the INSEE code (Example 3 in Table 6.2). However, some applications deposited in Paris or in other popular regions where the PV number length exceeded 5 characters could not be processed in this manner. Instead, the PV number may not recorded at all in the EPO databases and a dummy application number consisting of the 7-digit publication number preceded by a letter “D” is used in the application number field e.g. Example 2 in Table 6.2. To assist the user of historical data, the current listing of INSEE codes is included in Annex B. Under the current legislation, France publishes its patent applications at 18 months, as an FR-A1 document (Demande de Brevet), followed by the granted patent using the same number but with the suffix changed, as an FR-B1 grant (Brevet). An application for a utility model is numbered in the same series, but with a code FR-A3 (Demande de certificat d’utilité), which is followed if granted by the grant FR-B3 (Certificat d’utilité). A new publication number series commenced at FR 2,000,001 when the 1968 legislation came into force, and is currently just over the 3,000,000 mark (number FR 3081673-A1 published in November 2019). The old BSM series mentioned above used a distinct KD code of FR-M. Tables 6.3 and 6.4 record the pre- and post-1968 usage of KD codes. In Table 6.4, the codes indicated are printed on all documents from 1975. The A4A7 codes were required for a period between 1968 and 1975, whilst production of search reports was phased in. Certain subject areas such as medicinal products were the earliest classes to be subject to the new procedure. During this

Table 6.3: KD codes in France prior to 1968 and transitional period to 1975. Type of right

EPO code Printed code c.-c.

Granted patent, brevet

A

B

Patent of addition, certificat d’addition à un brevet

E

A

Utility certificate, certificat d’utilité

C

Certificate of addition to utility certificate, certificat d’addition à un certificat d’utilité

E

Medicinal product patent, brevet spécial de medicament

M

M or BSM (to )

Certificate of addition to BSM, Certificat d’addition à un brevet spécial de Médicament

F

CAM (to )

France

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Table 6.4: French KD codes for post-1968 patent applications. Type of right

First publication (transitional-series applications)

First publication (published application, demande)

Second publication (granted right)

Patent

A, granted patent, première et unique publication

A, demande de brevet d’invention

B, brevet, deuxième publication

Certificate of addition to patent

A, granted patent of addition, première et unique publication

A, demande de certificat d’addition à un brevet d’invention

B, certificat d’addition à un brevet, deuxième publication

Utility certificate

A, granted utility certificate, première et unique publication

A, demande de certificat d’utilité

B, certificat d’utilité, deuxième publication

Certificate of addition to utility certificate

A, granted addition to A, demande de utility certificate, première certificat d’addition à et unique publication un certificat d’utilité

B, certificat d’addition à un certificat d’utilité, deuxième publication

transition period, some cases were granted and published without a search report (“première et unique publication”); all other cases were published twice, at 18 months after priority (“première publication”) and a second time at grant (“deuxième publication”) accompanied by the final search report (at this time referred to as the “avis documentaire definitif”, later becoming the “rapport de recherche”). These KD codes ceased to be used by 19758. Similarly, the codes A2, A4, B2 and B4 ceased to be used after the last applications for certificates of addition had been processed. Since the implementation of the London Agreement in 2008, French national law no longer requires the deposit or publication of complete translations of granted European Patents. Prior to this date, the only indication of a translation being deposited was found in the BOPI: Brevets in Section 3; there was no formal publication or dedicated KD code for these documents (unlike, for example, the German -T2 documents). Contrary to common practice, the French Patent Office recommends that the numéro de publication at INID 11 is used only for ordering copies of the specification, and uses the application number, or numéro d’enregistrement national found at INID 21, for all other purposes. Bibliographic databases usually give prominence to the former. The front page of a FR-A1 document showing both fields is at Figure 6.1.

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Chapter 6 National patent systems of the G8 countries

Figure 6.1: Front page data – French unexamined publication.

Databases and database-specific aspects INPI chose for a number of years to stay outside of the general EPO-wide Espacenet service. The main search engine, Plutarque, was accessible via the main INPI website or directly from www.plutarque.com and gave access to a range of search services, including patents, trade marks, designs and models, but only the most recent two years-worth of data (FR, EP and WO documents) were freely accessible. Prior registration was required to access the larger back-files, which contained abstracts and page images. Viewing the full text was a chargeable extra feature. A feature of the Plutarque system was its use of natural language input to derive IPC class marks, which were presented to the user as alternative search terms. In recent years, Plutarque was closed down and INPI made available a file of national patents as an old-style Level 1 server under the Espacenet portal, as http://fr.espacenet.com. With the development and launch of the new version of Espacenet in 2019, fewer of these national servers are available and it is likely that their content will be integrated into the general multi-national search engine in the future. The INPI also maintained its own range of CD-ROM and DVD-ROM products, in the BREF and COSMOS series covering French patent documents from 1966 (bibliographic) and 1989 (full page images) onwards; as with the ESPACE series, these have been discontinued since widespread availability of internet distribution of publications. Early versions of these disks were not compatible with the EPO’s MIMOSA search and display software, and needed their own application software.

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135

Detailed legal status for both French national patents and European Patents designating France can be obtained from the national register, loaded on the INPI website; all searching is free of charge, but full documentation relating to dossier entries must still be ordered separately and attract a small charge; unlike the EPO Register, not every document in a case file has been digitised for instant viewing. References in the Table 6.5 to “FR-A” documents refer to the granted specifications before 1968 and to the unexamined applications after that date. In common with a number of major patent offices, INPI now has a collection of Open Access data resources, consisting of bulk data files for download, free or at marginal cost. This includes a collection of approximately 400,000 pre-1902 French national patents in facsimile form, covering the period between 1791 and 1902. In previous years this file was available for search on the INPI website, but has now been made freely available for local searching and analysis. The links to the test file and supporting documentation can be found at www.inpi.fr/fr/services-et-prestations-domaine/donnees-en-acces-libre; the technical documentation includes listings of the 19th century classification schemes used in France.

Germany Historical aspects and current law The modern state of Germany was not formed until the Reich was proclaimed in 1871 at Versailles, in the aftermath of the Franco-Prussian war. The first patent law for the entire country came into force on 25th May 1877, replacing the patent systems of the constituent kingdoms and principalities which made up the new country. Many of these had already passed patent laws, such as Prussia (1815), Bavaria (1825), Württemberg (1836) and Saxony (1843). The Kaiserliches Patentamt (Imperial Patent Office) started operations in Berlin on 1st July 1877. The German Acts of 1877 and 7th April 1891 provided for a term of 15 years, revised in 1936 to 18 years. Patents were granted in an essentially continuous numbered sequence until the Patent Office was closed in 1945, having reached approximately 768,000. In 1949, a new law was enacted and the Office re-opened in Munich. Document publication resumed at number 800,001 from 1950. These documents were termed Erteilten or Patentschriften, and the document type was sometimes designated by the abbreviation “PS” instead of a country code. A new system allowing pre-grant opposition was brought in from 1957, causing another jump in the numbering, to 1000001. Under this system, documents were

Service name

BOPI

Base Brevets (Patent Base) / Registre national des brevets (RNB)

Espacenet

France Patents Fulltext

FRANCEPAT

FRFULL

Producer

INPI

INPI

INPI

INPI / Univentio

INPI

LexisNexis Univentio

Table 6.5: French patent databases.

STN

STN

Proquest Dialog

https://worldwide.espacenet.com

www.inpi.fr/fr/base-brevets

www.inpi.fr/fr/services-et-prestations /bulletins-officiels-de-la-pi-bopi

Platform

FR-A full text (French, MT English) and page images + (some coverage from +)

FR-A bibliographic data –, abstracts and images – FR-M – Legal status including SPC data +

Bibliographic data + Full text (French, MT English) +

FR documents (PDF) and bibliographic data +, abstracts +, classification + Full text +, granted documents; some FR-E, -F, -M.

Bibliographic data for French applications (+), national Certificat Complémentaire de Protection (CCP) +, legal status +, file inspection +. Page images of French translations of EP documents designating FR (–).

Weekly PDF format of Gazette with indexes, from  to date.

Coverage

136 Chapter 6 National patent systems of the G8 countries

FullPat

TotalPatent One

PatentScope

INPI / Univentio

Lexis-Nexis Univentio

INPI / WIPO

www.wipo.int/patentscope

www.lexisnexisip.com/ products/totalpatent-one/

Questel; www.orbit.com

Bibliographic data +; abstracts from , full text c.% of records in original language (Fr).

Full text (original language + MT English) +, bibliographic data +, page images +

FR-A granted, full text + FR-A applications, full text + (both with page images).

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137

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published twice; initially as an Auslegeschrift, examined but not yet granted and open to a 3 month period of pre-grant opposition, then after opposition proceedings (if any), the document was republished as a granted patent, the Patentschrift. Although it is not much help to the present-day searcher dealing with monochrome PDF documents, these original documents could be distinguished by the colour of paper; Auslegeschriften were printed on pale green paper and Patentschriften on white. In cases where the opposition proceedings had caused a change in content between the two documents, the granted patent bore an endorsement “Weich ab von Auslegeschrift” or “Patentschrift weicht von der Auslegeschrift ab”. Germany used a national patent classification from the late 1800s until it was replaced by the IPC in 1975. A number of other countries, including Austria and Denmark, utilised the same or a slightly modified system. With the proclamation of the German Democratic Republic on 7th October 1949, a new patent law for East Germany was promulgated in 1950. The country continued to grant its own forms of patent documents until the re-unification, effective 3rd October 1990; on the same date, the German Patent Office took over the functions of the Amtes für Erfindungs- und Patentwesen, based in Berlin. Details of the documentation from the former East Germany can be found in Rimmer9. The so-called Extension Act of 23rd April 1992 allowed for patent applications filed in either of the two former countries prior to re-unification to be extended to have effect in the entire territory. Shortly afterwards, in 1998, the German Patent Office was re-structured as the German Patent and Trademark Office (Deutsches Patent- und Markenamt, or DPMA). As noted above, many patent offices started to experience difficulties with backlogs during the 1960s, and Germany swiftly adopted the deferred examination model pioneered by the Dutch in 1964. Applications filed after 1st October 1968 were allocated a new form of application number, starting at 18 00001, which the document carried through all the stages of examination and publication. The publication number retained an appearance similar to the old continuous series, but in fact was a discontinuous system. The publication number was preserved throughout all stages, and retained the same format as the application number, which was in two parts; the first two digits were the calendar year of application minus 50, hence publication number DE 20 04000-A was the first publication stage based upon the 4000th application filed in 1970. The new publication stage, the unexamined application (Offenlegungschrift), was laid open at 18 months after priority, and printed on yellow-brown paper. It was possible to defer both search and examination for a period of 7 years. In 1976, the patent term was extended to 20 years. In 1981, the intermediate Auslegeschrift series was abolished, leaving a two-stage publication

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139

sequence, Offenlegungschrift followed by Patentschrift. In some cases, even this sequence can be amended, in which case the Patentschrift may be the first and only publication. Despite the many changes in practice, the basic patent law in Germany is still officially the Patentgesetz adopted on 5th May 1936, as amended, although some authorities refer to the Bekanntmachung (Notice) of 16th December 1980 as this amendment constituted a major republication and consolidation. In Germany, the utility model or Gebrauchsmuster system is regulated by a separate law, the Gebrauchsmustergesetz, adopted on the same date, also much amended; similarly, this may be referred to as the consolidated Law of 28th August 1986. Utility models in Germany are patent-like rights which require a lesser degree of inventive step and are not examined initially. Following a change in the law in 1990, they can be obtained for products, but not methods or processes. These document types have always been an important part of the prior art for the mechanical and electrical fields, and since this change, small numbers of utility models covering chemical compounds are also being published each year. The term of a utility model is 10 years from the date of filing in Germany. Patents of addition were available until approximately 2014 but have now been removed from the current law; their term was linked to the parent application and would expire with it. Germany is a long-term signatory to the Paris Convention, having signed in 1903. It is a founder member of the European Patent Office, from 1977, and joined the Patent Co-operation Treaty system in 1978. The standard country code for the Federal Republic of Germany since 1978 is “DE”. The code “DT” was used prior to this. For the former East Germany, the codes were “DL” (pre-1978) and “DD” (1978–1990). Certain other code variations can be observed, representing different document stages, such as DE-OS for Offenlegungschrift, and PAS for Patentschrift, but these are rarely encountered in databases, only as page headers in the printed documents.

National patent documentation As a result of the various changes in procedure, Germany has a number of quite complicated KD codes and numbering systems. As with many intellectual property offices, the Deutsches Patent- und Markenamt has responsibility for a number of rights other than patents, such as trade marks, designs, computer chip topographies and so on. Germany was an early adopter of the recommendations of WIPO Standard ST.1310 which proposed a unified intellectual property right numbering system, where each type of right is denoted by a code embedded

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in the application number. Germany completed transition to this system by 1994, which was introduced gradually from 1989 onwards. These numbers are retained from application through to grant, so also appear as publication number formats in searchable databases. The system is outlined in Table 6.6. The most recent form of these numbers came into effect from 1st January 2004. The overall format is wholly numerical, in segments 2+4+6+1. The first 2 digits represent the type of intellectual property right. The next 4 digits represent the year of application, but this part remains the same throughout the process; hence cases published in 2020 may have 2018 at this position. The third segment of 6 digits is a running serial number, and the final single digit, separated by a decimal point, is a computer check-digit. This final digit is often omitted from database records of publication number. The earlier form of these numbers, between 1994 and 2004, was similar but used only one digit to represent the right, the last two digits of the year and 5 digits for the serial portion, giving a 1+2+5+1 format. In order to denote certain document kinds, the 1994–2004 system preserved specific number ranges in combination with a type of right code. In the current system, the two-digit ranges 13–19, 23–29, 31–39, 42–49, 51–59 and 61–69 are un-used.

Table 6.6: German Intellectual Property Right numbering codes. Type of right

Number (+)

Number+Serial Range (–)

National patent application



 +  to **

PCT application designating Germany



 +  to 

Supplementary Protection Certificate



 +  to 

Utility model application



 +  to 

Utility model application by means of PCT application



 +  to 

Semiconductor topography application



 +  to 

Trade mark application



 +  to 

Registered design application



 +  to 

Typographical font application



 +  to 

EP Patent designating Germany granted in German language



 +  to 

Germany

141

Table 6.6 (continued ) Type of right

Number (+)

Number+Serial Range (–)

EP Patent designating Germany granted in English or French language



 +  to 

** Note: Initially, the range 00001–89999 was reserved for national applications and 90001–99999 for PCT transfers. The separate range for SPC applications was introduced from 1994. Other sources list the range up to 79999 for national patents, from 80001 to 89999 for SPC’s and 90001 to 99999 for PCT transfers.

Examples of use of these codes are: DE   -A DE   -B DE   -U DE    DE   -T

Published unexamined patent application, applied for in  Granted national patent, applied for in  Published utility model application, applied for in  Application for registered design, applied for in  Registration of granted European Patent published in German, filed at the EPO in  DE   -T Registration of granted European Patent published in English, filed at the EPO in  DE   -B Granted national patent, applied for in  DE   -U Published utility model application, applied for in 

Due to the various numbers of publication stages at different times, new KD codes have been introduced over the years to try to prevent duplication of the meaning. The most common sequences are as shown in Tables 6.7 and 6.8. A new KD code of DE-A5 was introduced in 2007 to denote re-publication of a single front page when a PCT case transfers to German national phase and has previously been published as a WO-A document in German; all other PCT cases (published in a language other than German) have been re-published as a DE-T5 since 2004. The DPMA has archived a series of German-language guidance notes (DPMAinformativ sheets) concerning current and historical application and publication number formats and KD codes, together with information on the formatting used in DEPATISnet11. These include more information on the codes used in the former East German office up to re-unification. Cases which were pending on 3rd October 1990 were processed by the DPMA and published using some new codes for a transitional period; these included DD-A9, which were in the form of Offenlegungsschriften published after the Extension Act but using the old East

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Table 6.7: German KD codes and sequences for national patent granting procedure. – Normal sequence Accelerated examination

Auslegeschrift (B) followed by Patentschrift (C)

Rare cases

Patentschrift only (C)

– Normal sequence

+

Offenlegungschrift (A) followed by Auslegeschrift (B) followed by Patentschrift (C)

Offenlegungschrift (A) followed by Patentschrift (C)

Accelerated examination

Patentschrift only (C)

Normal sequence

Offenlegungschrift (A) followed by Patentschrift (B)

Accelerated examination

Patentschrift only (B)

Table 6.8: German KD codes relating to EPO, PCT, translation and corrections (2004 onwards). Code Definition A

Republication of front page of WO-A pamphlet previously published in German*

A

Corrected front page of DE-A document

A

Corrected complete DE-A document

B

Corrected front page of DE-B or -B document

B

Corrected complete DE-B or -B document

C

Republished specification after amendment (opposition, limitation or invalidity proceedings)

C

Corrected front page of DE-C document

C

Corrected complete DE-C document

T

Translation of claims of a published European Patent application (EP-A,A) designating Germany

T

Translation of granted European Patent (EP-B) designating Germany#

Germany

143

Table 6.8 (continued ) Code Definition T

Translation of amended granted European Patent (EP-B)#

T

Correction of DE-T or DE-T document

T

Publication of specification of WO-A pamphlet previously not published in German (national phase)

T

Corrected front page of DE-T to -T document

T

Corrected complete DE-T to -T document

* code introduced from 2007. code used between 1992–2008.

#

German numbering system, for cases where examination had not yet been concluded and no prior publication had taken place. A more detailed listing of the codes used by the former East Germany can be found in the WIPO Handbook, section 7.3.212.

Databases and database-specific aspects The national gazette for Germany, the Patentblatt, forms the basis for a number of electronic products, both internet and non-internet based. From the late 1940s, a commercial company, Wilhelm Lampl Verlag (later WILA Verlag) produced a range of abstract journals covering German patent and utility model applications. These formed the basis for several bibliographic databases which were made were available on the STN service as the PATOS series of files (PATOS-DE covering German national documents, PATOS-EP covering EP documents and PATOS-WO covering PCT publications). After WILA Verlag was purchased by the owners of the DWPI database, the file content was absorbed into Derwent products and the separate databases were withdrawn. A summary of the major databases is given in Table 6.9. A wide variety of disk-based products were produced during the 1990s covering various German IP documents, and latterly these were converted to an online service (PATONbase) based at the University of Ilmenau in eastern Germany. The PATONLine system was also one of the few places where users could obtain copies of former East German documents (1950–1990); this was partly open-access, with wider facilities available to registered users within the

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Table 6.9: German patent databases. Producer Service name

Platform

Coverage

DPMA

DEPATISNet

www.dpma.de/ recherche/ depatisnet/index. html

DD basic bibliographic data and images +, most with abstracts +. DE-A, -B, (+), DE-U (+), Near-% full texts.

DPMA

Publications http://register. server and legal dpma.de/ status register

All IP rights from DPMA, plus DD (–); document delivery and legal status, searchable by publication number. Searchable weekly Patentblatt plus page images +

DPMA / Questel

FamPat/FullPat

Orbit.com

DE-A full text + DE-B/C full text + DE-U full text + DE-T full text + DD bibliographic + DE bibliographic +

DPMA

PATDD

STN

DD bibliographic data +

DPMA

PATDPA

STN

DE-A, -B/C, -U; bibliographic data, main claims –

DPMA

PATDPA SPC

STN

German Supplementary Protection Certificates for drugs and agrochemicals; bibliographic data –.

DPMA

PATDPAFULL

STN

DE-A full text +; DE-B/C full text +; DE-T full text +; DE-U full text +

Univentio DEFULL

STN

Granted patents full text, + Utility models full text, unspecified.

Univentio Global Patents Fulltext

Proquest Dialog

DE-A, -B, -U bibliographic data; full texts + in original and MT English DD –

LexisTotalPatent One www.lexisnexisip. Nexis com/ products/ Univentio total-patent-one/

DD; full text (original language + MT English) + DE; full text (original language + MT English) +; utility models +

DPMA / WIPO

Bibliographic data +; abstracts from , full text c.% of records in original language (De).

PatentScope

www.wipo.int/ patentscope

Italy

145

German academic community. At the time of writing, this centre still provides document delivery and searches under contract, but is no longer a database supplier in its own right. After the re-unification of Germany in 1989/90, complicated transitional procedures were put into place to handle the merging of the two national patent systems. The European centre for the STN host, located in Germany, had already mounted a file of East German patents (PATDD), and subsequent bibliographic data relating to pending applications continued to be added to this file, even though the data itself was published from Munich by the new Federal agency for the re-unified state. This is not a complete file, with a starting date of 1981 only, but has the benefit of being loaded under the uniform file format and command language of an established host system.

Italy Historical aspects and current law The territories in modern Italy have a distinguished history in patent information, having been responsible for what is probably the world’s first codified patent statute in Venice, dated 19th March 1474; this included several aspects of modern patent law, such as a novelty requirement and a definition of the patent term and territorial applicability. Even earlier examples, from the 1410–1420 era, are known. Several of the states within 19th century Italy, such as Sardinia and Lombardy, had their own laws. By 1864, the first moves were made to a united Italian patent law, by adopting the Sardinian Law No. 3731 of 30th October 1859 as the new Italian law of 31st January 1864 with a term of 15 years13. The first substantial updating to come into effect was not until Decree 1127 on 29th June 1939. This excluded pharmaceuticals (both product and process) from patent protection, and introduced requirements to publish specifications within 3 months of grant. The term of the patent was 15 years. Following a constitutional court decision which ruled against the subject-matter exceptions in March 1978, a complete new substantive law was passed the same year, as Law 260 of 26th May 1978, implemented by Decree 338 of 22nd June 1979. This enabled Italy to ratify the PCT and the European Patent Convention (EPC), and harmonized the national law with the EPC, including the adoption of a patent term of 20 years from filing. Following Legislative Decree 30/2005 of 10th February 2005, all Italian IP law was codified as the first edition of the IP Code, which has been revised

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periodically. The current implementing regulations were adopted by Decree 33/2010 of 13th January 2010, entering into force on 10th March that year. Italy has opted to close the national route under the PCT, so that a PCT application may only designate Italy by way of a European Patent. However, Italian Law No. 34/2019, in force since 30th June 2019, provides for the reopening of the national route, permitting direct designation of Italy in a PCT patent application14. A later Ministerial Decree of 13th November 2019 indicates that the new procedure will be available for PCT applications designating Italy filed after 1st July 2020. Italy was one of the founder signatories of the Paris Convention, which entered into force on 7th July 1884. It was an early member of European Patent Office, from 1978, but only joined the Patent Co-operation Treaty system in 1985. The standard country code for Italy is “IT”. Today, patents are granted by the Italian Patent and Trademark Office (the UIBM, or Ufficio Italiano Brevetti e Marchi) which was founded in 1884 as the Ufficio Centrale Brevetti (UCB). The name was changed to better suit the office’s expanding role, in 1992 (Legislative Decree 480/1992 of 4th December 1992, Art. 73) and it has a website at www.uibm.gov.it. National patents have effect in the Republic of Italy and the Holy See (Vatican City), although the latter has its own standard country code (VA), and applies the laws of Italy on patents, subject to them “not being contrary to precepts of divine right, the general principles of canon law or the 1929 Lateran treaties”. Royal Decrees in 1907 and 1913 extended Italian patents to the colonies of Eritrea and Libya, and in 1938 to Italian East Africa (AOI, Africa Orientale Italiana) but these have long since been repealed. San Marino (code SM) acceded to the Paris Convention in its own right in 1991, promulgated its own patent laws in 1997 and their patent office started work in 1999. An existing bilateral treaty with Italy, which contains provisions relating to mutual recognition of IP rights, still holds15. This was recently clarified, to be interpreted that only national industrial property rights obtained in Italy are binding and enforceable in San Marino and vice versa; however, IP rights obtained by international agreements or conventions (e.g. PCT or EPC) are not mutually recognised16. Examples are known in recent years of applicants filing simultaneously in Italy and San Marino under the two separate systems, with no priority claim in either case. Despite the long historical background, modern Italian patent documentation is poorly developed, and both sources of documents and their coverage in databases create considerable problems for the searcher. The official gazette (Bollettino dei brevetti per invenzione, modelli e marchi) was split into 3 monthly parts from 1966, with Parte I: Invenzioni industriali containing data on newly

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granted patents. This was produced on paper, and was typically much slower to publish than the corresponding specifications. The gazette was produced only sporadically during the late 1960s/early 1970s and has not been produced at all since the 1980s. Information about new patent grants is now obtainable only in the form of the final specifications published at grant (in paper or some in electronic form). Some legal status information can also be obtained from the records in the UIBM bibliographic database. Bibliographic details of pending applications are nominally published at 18 months after the filing date, although a request for early publication (3 months from filing) may be made at the time of lodging the application. Patentability search (for priority filings only) was introduced from 1st July 2008, with the search stage being sub-contracted to the EPO. If a search report is completed, it is typically provided to the applicant within 9 months of filing, together with a patentability opinion. A reply to this is generally required within 21 months (publication of unexamined specification + 3 months), similar to the current French system. A decision on grant or refusal is usually delivered by 24–30 months from filing; the bibliographic details are published a second time on grant, together with the specification. No opposition is possible; invalidity proceedings can only be initiated before the civil courts. Renewal fees were briefly abolished in 2006, but reinstated the following year, and are now payable annually. Italy used a regional approach for its national patent applications during the period before 2015, which is described in more detail in the following section. In addition to filing directly in Rome at the UIBM or by post, each of the Chambers of Commerce in the provincial capital were authorised to act as a local receiving centre for lodging a patent application, and preserved its own format of application number. Applications received at these regional offices were then forwarded to the UIBM for further processing. In common with many member states of the EPO, a substantial proportion of the patents in force in Italy are not national patents, but European Patents designating Italy. The approximate proportion can be inferred from the statistics since 2010, which show between 25,000–30,000 translations of granted EP cases lodged per year in Italy, compared to fewer than 10,000 national applications per year. Searchers should note that a comprehensive search for freedom to operate will need to pay particular attention to both routes of patent protection. Italy has a large generic pharmaceutical industry, for which the status of patent term extensions is an important factor to clarify before investments are made. Italy, as a member of the EU, has operated an SPC system under the 1992 (pharmaceutical) and 1996 (agrochemical) EU Regulations since they were

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brought into force, but it also had its own national law on term extension, Law No. 349 of 19th October 1991, which was in force between 19th November 1991 and 2nd January 1993, when it was replaced by the EU system. This national law granted approximately 400 cases, and was considerably more generous than the later EU provisions, allowing up to 18 years extension. Later amendments (Decree 63 of 15th April 2002, now Article 61 of the Industrial Property Code) were brought in to gradually reduce these extensions until they were in line with the maximum permitted (5 years) under the EU system. Consequently, calculation of the actual term of any given pharmaceutical patent is an extremely complex business. As of the end of 2010, all the remaining cases of national SPC extension have expired. Italy operates a utility model system, granted with formalities examination only, for a term of 10 years from date of application; prior to 1977, the term was only 4 years from date of application. Patents of addition were abolished in 1979.

National patent documentation As indicated above, Italy has used a regional system for identifying national patent applications over many years. With the exception of European Patent applications or PCT international applications, which are always filed at the UIBM, most other applications for national IP rights could be deposited at the Chamber of Commerce local to the applicant (if resident in Italy) or their professional representative (if claiming foreign priority). Although the record of the Chamber of Commerce where the application was lodged has always been retained by the UIBM, the identity of the Chamber did not feature in the application number; instead, each Chamber of Commerce was allocated a fixed range of numbers to be used within a given year, resulting in a discontinuous but all-numeric series. After 1991, the method for allocating national application numbers changed17. The new system introduced a two-letter code representing the Chamber of Commerce as an explicit element in the application number, with each Chamber starting at number 1 in a new year. The full original format is CC YY K NNNNNN, where CC represents the Chamber of Commerce code, YY is the last 2 digits (or, after 2000, the 4 digits) of the application year, K is a Kind of Right indicator (described below) and NNNNNN is a fixed length 6-digit serial number. This format created problems for third-party database producers who could only import application numbers in a numeric form. To circumvent the problem, the EPO’s DocDB database adopted a set of 2-digit codes corresponding to the Chamber of Commerce codes, and used these instead. For example, application number RM91A000011 (the 11th application received at the Rome chamber in 1991)

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149

became EPO standard format 91730011, as Rome is the 73rd province in alphabetical order. To complicate matters, a further 8 provinces were created during 1997, forcing the EPO to insert additional 3-digit codes to take account of this. This conversion routine was subsequently dropped after a system upgrade at the EPO, and post-1991 application numbers in DocDB/Espacenet now preserve the original Chamber alpha-codes. For historical completeness, the full listing of the Chamber codes is shown in Annex B. The 18-month publication number re-uses the application number format; after grant, a new 7-digit number in a running series is allocated to the patent. The letter K in the national format from 1991 represented a single code letter as a Kind of Right indicator; code A represents patent applications and code U represents utility model applications. Since the DocDB database only received data relating to these two types of application, the EPO numbering format deleted the letter A for patents and only retained the U indicator to distinguish utility model applications. Other databases may include additional document types represented by other codes, used at the UIBM to represent the lodging of official documents or transactions, and for applications for other kinds of IP right, as follows: B = Translation into Italian of granted EP-B specification (e.g. MI2012B031765) E, F, G = Application for changes in legal status to be recorded in official register (e.g. re-assignments, licensing etc.) P = Application for Supplementary Protection Certificate (pharmaceutical) (e.g. UB2013P001275) Q = Application for Supplementary Protection Certificate (agrochemical) (e.g. UB2014Q000160) U = Application for utility model (e.g. VR2012U000015) V = Application for plant patent In the case of translations of EP-B documents, a separate application number is allocated in the event of an amendment to the granted EP case; for example the original translation of EP 136398-B1 (granted 1990.09.05) was lodged as TO1990B068985 (1990.09.21) but after the completion of opposition proceedings and the publication of EP 136398-B2 (1997.08.20), a revised translation was deposited with a new number TO1997B070331 (1997.09.17). There is no official publication of the translation documents. Applications for SPCs always use the code UB in place of a Chamber code, and the serial numbers are in a single running series irrespective of whether the basic patent is a national Italian case or a European Patent validated in Italy. Some examples are:

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Basic patent grant

Filing date

Patent expiry date

SPC application (date)

SPC granted (date)

Extension period

SPC expiry date

IT .. .. UBP  y m -B (..) (..) d

..

EP .. .. UBP  y m -B (..) (..) d

..

EP .. .. UBP  y m d -B (..) (..)

..

After Italy introduced its e-filing system in 2006, the role of the Chambers of Commerce could be by-passed and it became less useful to retain this code element in the application number. The existing process of filing was only retained for paper applications. From 2015, Italy adopted a numbering system more compliant with WIPO Standard ST.13. Cases filed on or after 2nd February 2015 were allocated numbers in the new system only. The new system is all-numeric, creating a 15-digit application number of the form KK YYYY NNNNNNNNN (2+4+9). All reference to the Chamber of Commerce (alpha or numeric) has been dropped, and the single letter Kind of Right indicators replaced by the first two digits where KK = 10 (patent), 13 (pharmaceutical SPC), 14 (agrochemical SPC), 20 (utility model), or 50–51 (translation into Italian of EP granted patents). Other codes are used for other forms of IP right such as trade marks or plant variety rights, or for other transactions such as were covered by the kind of application codes E, F and G under the old system (e.g. change of ownership, address, withdrawals, waivers, limitations, etc.). The 4-digit year refers to the year of application, and is preserved throughout prosecution i.e. it does not correspond to the year of publication when used as the publication number, so that application 102017000114747 filed 30th October 2017 was published as IT 102017000114747-A1 on 30th April 2019. The new system also retains the same number to the grant stage, e.g. IT 102017000114747-B1 based on this application was granted on 10th January 2020. In addition to using the new format for filings from February 2015 onwards, all existing cases had their old format numbers converted to the new format; tables of the correlated formats are available for download in a single zipped file on the UIBM website at www.uibm.gov.it/bancadati/old_new_number/index/, covering applications for Supplementary Protection Certificates filed in the period 1990–2015 and validation of European Patents in Italy, applications for utility models and for patents for invention filed in the period 1989–2016. Completing this conversion process required the insertion of a new dummy code UA or UB

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(for UIBM) in cases which had no pre-existing Chamber of Commerce code, to allow all application numbers to be allocated and recorded in both the old and new formats. Due to the overlap in use of the pre- and post-2015 systems, the EPO has imposed a cut-off date within its own databases; applications filed before 1st July 2016 are represented by the old format number, and cases filed on or after 1st July 2016 are represented by the new format number only. A summary of the KD codes and the Italian publication numbering systems in different databases is given in Tables 6.10 and 6.11. The KD codes in particular Table 6.10: Italian KD codes. Code Document type

Period of use Comments in DocDB

A/ D

Patent application filed

–

Brief bibliographic details only (<  months)

A

Published unexamined patent application

c.+

 months after filing or earlier, on request.

A

Published unexamined patent application, divisional

?

None reported in DocDB

A

Published unexamined patent application, with utility

+

Publication of patent application which has a co-pending utility model application claiming the same patent application priorityb

A

Published unexamined patent application

+

Transformed from utility model application into patent application

B

Granted patent

–

Published from  onwards (incomplete coverage pre-)

B

Published granted patent +

B

Supplementary protection certificate

+

Same KD code for SPCs granted under national or EU legislation

T

Unofficial translation of IT-A

Ad hoc

Prepared for legal proceedings (e.g. EPO Board of Appeal)

Published following earlier -A

b According to the Kluwer Law “Manual for the handling of applications for patents, designs and trade marks throughout the world” (the “Brown Book”, 2014 edition), Part 1, section 16 in the chapter “Italy” – “on filing an application for a patent, it is also possible to simultaneously file a utility model application relating to the same invention. The latter will come into consideration in case the patent application is refused.” (See also Italian IP Code at Art. 84.1).

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Table 6.10 (continued ) Code Document type

Period of use Comments in DocDB

T

Unofficial translation of IT-B

Ad hoc

Prepared for legal proceedings

T

Unofficial translation of IT-U

Ad hoc

Prepared for legal proceedings

U

Published utility model application

c.+

U

Published utility model application, divisional

?

None reported in DocDB

U

Published utility model application, with patent

+

Status uncertain – may indicate parallel publication of dual-filed application (cf. IT-A).

U

Published utility model application

c.+

Transformed from patent application into utility model application

V

Utility model application filed

–

Brief bibliographic details only (<  months).

Y

Granted utility model

+

Published following earlier -U

Z

Granted utility model

–

must be interpreted with caution; the UIBM has never applied KD codes itself, and the policy for deciding which code to apply to which publication/document in commercial or public sector databases has been determined by editorial policy alone, which has also changed over the years. The earliest records indicate that, during much of the 20th century, Italian grant procedures produced a single publication for both patents and utility models; these were both issued in a running numerical series and have been retrospectively assigned KD codes of B (granted patent) and Z (granted utility model) in modern databases. Very brief bibliographic details were released in the form of gazette announcements shortly after filing, and have been allocated KD codes of A0/D0 and V0 respectively. No INID codes or KD codes are used on front pages of published documents. This leads to the situation where the same publication may appear differently in different databases; for example, granted Italian patent number 1255348 has consistently been assigned KD code -B in the Derwent WPI database, but has variously been recorded as IT 1255348-A or IT 1255348-B in the INPADOC file, at different times. The corresponding gazette filing announcement for this same application was

IT (historical) → ITUD (current)

DocDB

UIBM

BOA → →

IF FI-A →

ITFI →

DocDB

–

→

IT 

IT -B

IT 

IT -B

IT UD-A →

FIA →

IT 

→

UIBM

–

UDA →

UIBM

–

IT -B

IT -A →

IT →

DocDB

Unexamined utility model publication number

TOU →

ITGEU →

GEU →

ITU (historical) → ITVTU (current)

VTU →

ITU →

→

IT GE-U →

→

IT VT-U →

→

→

RMU → →

Granted patent Utility model publication number application number

IT 

Unexamined patent publication number

BOA → →

Patent application number

UIBM

Pre-

Filing period

Table 6.11: Italian numbering systems for patents and utility models.

(continued )

IT 

IT -Y

IT 

IT -Y

IT 

IT -Z

IT 

Granted utility model number

Italy

153

 →

ITA →

UIBM

DocDB

IT -A→

IT -A →

IT BO-A →

ITBO →

DocDB

–date

Unexamined patent publication number

Patent application number

Filing period

Table 6.11 (continued )

(not yet present)

IT 

IT -B

ITU →

 →

ITTOU →

Granted patent Utility model publication number application number

IT -Z

Granted utility model number

IT -U →

IT -Y

IT -U IT  →

IT TO-U →

Unexamined utility model publication number

154 Chapter 6 National patent systems of the G8 countries

155

Italy

recorded in the original INPADOC format as ITMI921750-A0, but in the nowdefunct Italpat database the number was recorded as ITMI9201750-A. As a consequence, it can be difficult to determine whether a change in the form of KDs applied in a given database is indicative of a change in documentation practice or procedural law at the UIBM, or merely a change in the policy applied by the database producer. After 1996, the EPO’s DocDB database began to apply the code B1 to granted patent specifications, but the distinction (if any) between the document types is unclear, as publications with this new code appear to be allocated numbers from the same series as those with the older code B, and to run concurrently with them. The KD code B has been used for grants as far back as 1909, and for complete coverage since 1973. For example: Granted document

Grant date

IT -B

Prior publication

Publication date

Earliest priority

Priority date

.. ITUD-A ..

FR

..

IT -B

.. ITMO-A ..

ITMO

..

IT -B

.. ITMN-A ..

ITMN

..

IT -B

.. ITNA-A ..

ITNA

..

IT -B

.. ITMI-A

DE

..

..

The choice of B or B1 code is clearly not related to whether the case claims foreign priority, nor whether there was an intermediate A1 publication. The same running series of grant publication numbers is used for both the B and B1 documents. The old B code continued to be applied to substantial numbers of documents until 1997, and the last use (at present) is as late as 2011 (IT 1387503-B granted 13th April 2011, based on a 2008 application). Similarly, the A1 publication code was introduced by the EPO from c.1991, after the revision of the Chamber of Commerce numbering scheme for applications, but is otherwise unrelated to any change in practice at the UIBM. Its adoption is not related to any new legal provision, since publication of applications at 18 months after priority dates from 1979 (Presidential Decree No.338, 22nd June 1979). The A1 stage “publication” does not in any case include the complete specification; it takes the form of creation of an official register record, with basic bibliographic information only. The grant documents are usually published in the form of facsimiles of the application as filed, due to the limited amount of amendment which takes place during substantive examination.

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Chapter 6 National patent systems of the G8 countries

The kind codes used by the EPO for utility models have also undergone changes, from Z2 as a single “publication” to a dual publication sequence of ITU1 at 18 months after priority, followed by IT-Y1 when granted. As with the patents series, publications tagged with the old form of code continued to appear long after the new code sequence was introduced – the last utility model with the Z code was IT 260088-Z granted in 2008. It is possible to transform an original utility model application into a patent application whilst still pending, and vice versa – the resultant documents are allocated the codes IT-A4 (started as utility model, published as patent application) and IT-U4 (started as patent application, published as utility model), respectively. As with the patents for invention, the utility model series U/Y appears to run concurrently with the earlier KD code of Z, for example: Granted document

Grant date

IT -Y

Prior publication

Publication date

Earliest priority Priority date

.. IT VT-U

..

ITVTU

..

IT -Y* .. IT VT-U

..

ITVTU

..

IT -Z

.. IT FI-U

..

ITFIU

..

IT -Z

.. IT MI-U

..

JPU

..

IT -Y

.. IT MO-U ..

ITMOU ..

IT -Z

.. IT MI-U

..

ITMIU

..

IT -Z

.. IT MI-U

..

ITMIU

..

* Utility models IT 226144–226148 are missing from both DocDB and the UIBM database.

Databases and database-specific aspects As noted above, the issue of obtaining timely and accurate data from the Italian Patent Office for inclusion in any databases (country-specific or multi-country) is a vexed one for the information professional. The few dedicated sources available are frequently out of date, and the limited legal status for Italy in the INPADOC file is devoted to European Patents designating Italy, not national patents. The national user group, the AIDB (Associazione Italiana Documentalisti Brevettuali) has made it a priority to engage in discussions with the Italian Patent Office in order to improve the situation. The situation as of 2009 was summarised by Moradei18, and a list of current files available is given at Table 6.12. Entries for

Service name

SARA (Advanced Search and Archive System)

UIBM Online (SARA data from +)

Online Register

FamPat/FullPat*

TotalPatent One

PatentScope

Producer

UIBM

UIBM

UIBM

UIBM / Questel

Lexis-Nexis

UIBM / WIPO

Table 6.12: Italian patent databases.

Patents and utility models +, granted patents –. EP-B translations + SPC data +

Patents + Utility models + EP-B translations + SPC data +

Coverage

www.wipo.int/patentscope

www.lexisnexisip.com/ products/totalpatent-one/

Orbit.com

(continued )

Bibliographic data +; abstracts from , full text c.% of records in original language (It).

Patents, bibliographic data +; full text (original language and MT English) + Utility models, bibliographic data +; full text +

Patent bibliographic data +; Utility model bibliographic data +

https://uibm.mise.gov.it/index.php/it/nor Monthly listing of communications. mativa-pi/albo-on-line

https://www.uibm.gov.it/bancadati/ (main menu to all databases) http://brevettidb.uibm.gov.it/ (granted patent database)

Restricted access via UIBM public search room. System launched from start of EPO search programme (..), used by UIBM staff.

Platform

Italy

157

National Central Archive, Rome

TELEMACO (SERVICE WITHDRAWN)

FILPAT (SERVICE WITHDRAWN)

Archivio Centrale di Stato (ACS)

InfoCamere (IT)

FILDATA Srl (IT)

Coverage

www.fildata.it

https://telemaco.infocamere.it

Utility models, bibliographic data –.

Patents and utility models +. No EP-B/SPC data. PDF of e-filed applications +

www.acs.beniculturali.it/ Original paper records for patents – and utility OPAC at models/ designs –; incomplete electronic http://search.acs.beniculturali.it/OpacACS/ catalogue. banchedati (limited access to utility models)

Platform

* incorporates data from the withdrawn ITALPAT database, produced by Informacijski Center, Ljubljana/JustInfo Ltd. (Slovenia).

Service name

Producer

Table 6.12 (continued )

158 Chapter 6 National patent systems of the G8 countries

Russian Federation

159

two now-defunct services (TELEMACO and FILPAT) are included for the record; users should note that the TELEMACO service was originally launched as SIMBA, and is referred to by this name in older reviews. The searchability of SPC data is rather limited, since this is issued as two separate downloadable gazettes, the Bollettino dei Certificati Complementari di Protezione (CCP, covering drug SPCs) and the Bollettino dei Certificati Complementari di Protezione Fitosanitari (CCPF, covering agrochemical SPCs), rather than a cumulated database. Once a register record for the parent patent has been located, the SPC information is usually available in the same record, but does not include all the information from the gazette. Following a reorganisation of the UIBM website in January 2020, it is now possible to access the previous 3 months of legal status notices in the form of a socalled “online register”. The entries consist of links to documents listed in numerical order of application or grant number, consisting of scanned correspondence relating to such events as notices and decisions of opposition, issue of search reports and non-payment of fees. It is not known whether this resource will be a rolling 3-month access or be cumulated into a database in its own right. Information on payment of renewal fees for national patents is particularly complicated. For many years, the usual mechanisms involved several different government agencies, with payment being made at a local post office and subsequently registered at the chamber of commerce, or made directly to UIBM Rome. Different databases collated data from different sources, leading to an incomplete picture. More recently, renewal payments are now made online to the Agenzia delle Entrate (Revenue Agency) and directly linked to the patent files. This new system has made it possible to have a more precise and current information on the fees paid.

Russian Federation Historical aspects and current law The patent system of the Russian Federation came into being soon after the dissolution of the Soviet Union on 25th December 1991. This was the latest chapter in a series of political changes in this part of the world since the decree of Tsar Alexander I in 1812 governing the protection of inventions. This remained in force until 1896, when the first Russian patent law as such was passed (20th May 1896), providing for a term of 15 years from grant, with preliminary examination for novelty only. This law only lasted until 30th June 1919, when Lenin signed the Statute on Inventions which effectively abolished all previous patent legislation and declared useful inventions to be “public property”.

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Chapter 6 National patent systems of the G8 countries

New legislation in 1924, 1931, 1959, 1974 and 1978 meant that the Soviet Union gradually restored some semblance of invention protection compatible with the Western model. Two parallel systems of patent-like documentation developed. These were the “inventor’s certificate” system, which was open to residents of the Soviet Union, and provided a remuneration to the inventor in return for assigning all rights in the use of the invention to the State, and a more conventional “patent” which was open to applicants from outside of the Soviet Union. The patent provided for a 15 year term from the application date, whereas the inventor’s certificate was of permanent duration, although after 1978 the exclusive rights of the State also expired 15 years after the date of application. In 1991, a new USSR Law on Inventions had departed from the Soviet system, creating a form of patent protection that was much closer to the Western model. From 1st July 1991, the inventor’s certificate system was closed to new filings, although pending cases continued to be processed or optionally converted to a patent application. For the first time, patent protection could be obtained for chemical substances per se, including pharmaceuticals. A new Patent Law of the Russian Federation was passed on 23rd February 1992 and entered into force on 14th October the same year. As part of the transition process, some inventor certificate cases which would not have been published under the old Soviet legislation were laid open. All Soviet patents in force at the dissolution of the Union automatically became Russian Federation patents, without the need for the re-registration process used by some other of the states of the former USSR. A similar process was used for Soviet inventor’s certificates, although deadlines were imposed. Within days of the formal dissolution of the Soviet Union, a new Provisional Agreement on the Protection of Industrial Property was signed in Minsk, by representatives from Armenia, Belarus, Moldova, the Russian Federation, Tajikistan and the Ukraine. This had the appearance of the beginnings of a supra-national patent system, but after a number of years of negotiation, only 9 out of the 15 countries from the former Soviet Union eventually agreed to form a new Eurasian Patent Organisation (EAPO) – this is discussed in more detail elsewhere in this chapter. The EAPO does not replace the national offices of the member states, but like the EPO operates in parallel with them. The headquarters of both the Russian Federal Institute of Industrial Property (Федеральный институт промышленной собственности) and the EAPO are in Moscow. The Cyrillic abbreviation for the Federal Institute of Industrial Property is FIPS (ФИПС), which is the receiving and examining directorate of Rospatent. Rospatent (Роспатент, or formally, the Federal Service for Intellectual Property) was inaugurated on 1st February 1992 as the successor to the Patent Office of the USSR; the main website is at www.rupto.ru, while FIPS has a separate site at https://new.fips.ru/ [sic: this may be a transitional address; accessed 2020.01.13].

Russian Federation

161

The official gazettes and public registers relating to patents are published by FIPS and can be found on this website. The Soviet Union acceded to the Paris Convention in 1965, and the Russian Federation, as successor state to the USSR, is still a signatory. It was an early signatory to the Patent Co-operation Treaty in 1978, and a founder member of the new Eurasian Patent Organisation when that agreement entered into force in 1995. The standard country code for the Russian Federation is “RU”, succeeding the previous “SU” for the Soviet Union. In 2003, the Russian patent law was amended to make it compliant with TRIPS, although Russia only became a full member of the WTO from 22nd August 2012. On 1st January 2008, the earlier patent laws were replaced by a new Part IV of the Civil Code of the Russian Federation, and the administration and prosecution of all applications filed after this date are governed by the new Code, as amended. The current editions of the administrative regulations, controlling various aspects of FIPS operation, were issued in 2015–2016. The terms of protection are 20 years from filing for patents and initially 10 years for utility models, with a possible 3 years extension; this latter provision was removed for cases filed after 1st January 2015, and utility models now have a non-extendable 10 year term. Term extensions for pharmaceuticals and agrochemicals were first introduced from 2003 (Federal Law 22-FZ of 7th February 2003, in force from 11th March 2003, amending Article 3 of the 1992 law), and are currently regulated by Article 1363.2, Part IV of the Civil Code, providing for a maximum allowable extension of 5 years.

National patent documentation One of the complicating factors when dealing with current Russian documents is the transitional arrangements for handling cases still pending at the dissolution of the Soviet Union, although these have largely cleared the system now. In general, pending patents and inventor’s certificates which had not been laid open as of the date of the new Russian law, have been published with a number format in keeping with the old Soviet Union series, but using the country code “RU” and a distinct KD code. There have been a number of amendments to patent law, affecting application and publication number formats. These changes are analysed in detail by Höhne et al.19. Essentially, application numbers have been amended in three series; 1991–1992, 1992–1994 and 1995 to date, with an additional amendment to take account of 4-digit year numbers from 2000 onwards. A summary is given at Table 6.13. The present (post-1995) system incorporates a “kind of right” code,

YYYY KNNNNN   (++) (..)

  (..)

– YY KNNNNN (++)

+

  (..)

– YY NNNNNN (+)

Example published application number (date)

None

None

None

[none]

RU YYYY KNNNNNA

None

None

None

[not published]

RU  -A (..)

RU YY KNNNNN-A RU  -A (..)

RU YY NNNNNN-A RU  -A (..)

Published application number format

RU Nnnnnn-U#

RU Nnnnnn-U#

RU Nnnnnn-U#

RU NNNNNNN-C

RU NNNNNNN-C

RU NNNNNNN-C

RU NNNNNNN-C

Granted publication number format

RU -U (..)

RU -U (..)

RU -U (..)

RU -C (..)

RU -C (..)

RU -C (..)

RU -C (..)

Example granted publication number (date)

#

* Kind of Right indicator K = 1–4 (patents and utility models), 5–6 (designs), 7–9 (trademarks). Digit 0 is reserved for later use. Variable length, maximum of 6 digits.

Utility model

YYYY KNNNNN   (++) (..)

+

  (..)

– YY KNNNNN (++)

YYYY KNNNNN   (++) (..)

  (..)

– YY NNNNNN (+)

Patent

+

Example application number (date)

Application number format*

Filing Period

Document type

Table 6.13: Russian Federation application and publication number formats.

162 Chapter 6 National patent systems of the G8 countries

Russian Federation

163

similar in style to the current German numbers, which is placed between the year and serial number (position 3 before the year 2000, position 5 after 2000). Applications are published at 18 months. The exact form of this publication has varied somewhat over the years, from a gazette entry with bibliographic data and claims (RU-A) or (for a short period 1995-c.2000) as a complete specification or front page only (RU-A1). In all cases, the publication number is in the same format as the application number. The current form of these documents consists of only the bibliographic data and claims, not the complete specification. PCT transfers into Russian national phase are re-published 18 months after the deadline for entry to national phase, i.e. 31 + 18 months after priority; they are allocated national application numbers which include the year of national phase entry as the YY(YY) prefix, but record the date of filing of the PCT international application as the date of filing e.g. Russian application number 96115122 is based on national phase entry of the PCT application PCT/EP94/ 04154 dated 15th December 1994. When national application numbers are reproduced on the front page of publications, additional digits may be present after an oblique slash (/) – these represent the examining department which is handling the case, and are usually found only on the granted patent. They do not form part of the application number itself and are not captured in the machine-readable data or subsequent databases. The practice appears to have ceased around 2014 e.g. RU 2586922-C1 bears the application number 2014146568/13, but RU 2615571-C1 is published with the application number only, 2015144899. For national filings, substantive examination must be requested within 3 years of the filing date. After substantive examination and grant, applications are republished in a single running series, consisting of a 7-digit number greater than 2,000,001 e.g. RU 2239295-C2 if preceded by a RU-A publication. These documents consist of bibliographic data and abstract in both Russian and English, followed by the remainder of the specification, claims and drawings in Russian only. For many years, a substantial proportion of cases were processed to grant very rapidly and by-passed the unexamined stage, appearing as RU-C1 documents with number formats as for the C2. However, in recent years, the procedure during the search and examination has been modified, and more sequences of RU-A/RU-C2 documents are appearing. Utility models use the same 2+1+5 or 4+1+5 format at the application stage, but the published granted documents (only one publication stage) have only reached a maximum of six digits. The front pages of utility models were published from 4th August 1994. Currently, Supplementary Protection Certificates are published in the form of a brief document re-using the parent patent number but with the KD code -C3, and reciting the claim(s) which relate to the marketed product only. Between

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Chapter 6 National patent systems of the G8 countries

2003 and the entry into force of an amendment to Article 1363 of the Civil Code from 1st January 2015, the primary information about the grant of an extension was in the form of a gazette notice; there was no addition to the bibliographic record as such. With these extensions, all eligible claims in the parent patent were extended. The earliest of the new RU-C3 documents was published from 2017, and many of them so far relate to applications filed via the PCT system. An example sequence of events is as follows:

Event

Document number

Event date

Priority filing

DE .

..

International application

PCT/EP/

..

International publication

WO /-A

..

National phase entry

 (filing date ..)

..

Publication unexamined

RU  -A

..

Granted patent

RU -C

..

Product marketing authorisation



.. ..

Application for term extension Extension patent granted

RU -C

..

In this example, the duration of the term extension is noted at INID (94) on the front page of the C3 document, to provide additional protection between 2021.05.08 (one day after the expiry of the parent patent) and 2026.05.07 i.e. the maximum allowable extension of 5 years. The current range of KD codes is listed in Table 6.14. Some cases which were not published under the last Soviet Union law have been published subsequently and coded as RU-C documents (not RU-C1) within DocDB. Their publication numbers fall within the old Soviet sequence i.e. below 2,000,001, for example RU 1727403-C (published 1994). Although the DocDB code may be RU-C, front pages available from FIPS record these same documents in the SU-A1 series. These publications consist of a variety of types of right, including cases pending under the old Soviet law as of 1992 but not previously published or granted, and some older USSR inventor’s certificates which had been in force for less than 20 years as of 1992, and have been published at the holder’s request. It is known that the sequence of granted publication numbers under the old Soviet Union system used the same running series for both patents and inventors’ certificates, and that there were regular gaps in the sequence; each issue of the gazette consisted of

Russian Federation

165

Table 6.14: Russian Federation KD codes. Code

Document type

Comments

A

Published patent application

Bibliographic data only, no specification

A

Published patent application

Full document published on request, –

A

Patent application search report

Used from .. onwards

A/A

Correction documents

ST. implementation

C

Granted patent based on earlier SU un-published rights

Full document published on request.

C

Granted patent

Published without preceding RU-A document

C

Granted patent

Published after RU-A document

C

Supplementary patent

Patent term extension grant (SPC)

C/C

Correction documents

ST. implementation

U

Published utility model grant

U/U

Correction documents

ST. implementation

a contiguous block of new inventors’ certificates, followed by approximately 300 un-used numbers, and then resumed with newly-granted patents. It is assumed that some of this gap related to IP rights which were not published for security reasons; this is supported by the observation that later RU-C / SU-A1 documents typically carry numbers which fall into these gaps. Other examples of later RU-C publications consist of replacements or duplicates for earlier SU cases; for example, SU 737828-A1 was published as a complete specification on 30th May 1980 but a later single page was issued to one of the named inventors on 30th March 2010, carrying the same Soviet Union number and code but presented on the standard Russian patent office front page. In this instance, DocDB has created a family consisting of SU 737828-A1 and RU 737828-C. Document types from the Soviet Union era were still being published many years after it ceased to exist; for example, a May 2011 Gazette included notice of publication of SU 1289183-A1 and SU 1603822-A1 based on applications from 1981 and 1989 respectively. A few cases were still being published as late as 2016. It should be noted that some cases which were converted from Soviet Union inventors’ certificates into Russian patents have also received a pharmaceutical term extension; for example, Soviet application 4682415 filed 24th April 1989 and published in 1996 as SU 1621449-A1 was converted to Russian patent RU 1621449C with an expected term expiring 24th April 2009. However, in August 2010,

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Rospatent announced that the term had been extended for an additional 5 years, to 25th April 2014.

Databases and database-specific aspects The Official Bulletin “Inventions. Utility Models” (Официальный бюллетень Изобретения. Полезные модели) is published by FIPS 3 times a month. Before 2004, it appeared in paper form, but was replaced with optical disk from 2005–2016. Since 2017, the Bulletin has been posted on the FIPS and Rospatent websites. During the 1990s and early 2000s, Rospatent was active in production of optical disk-based products, including CISPatent, which covered patent applications from 8 of the former USSR states (Armenia, Belarus, Georgia, Moldova, Russian Federation, Tajikistan, Uzbekistan, Ukraine) plus the Eurasian Patent Organisation, a backfile on DVD of Russian/Soviet Union patents from 1924–1993, and electronic forms of various periodical publications such as the official bulletins. Russia is a prominent member state of the Eurasian Patent Organisation (EAPO), and further Russian national bibliographic information can also be found in the internal registries and information system (EAPATIS) of the EAPO; see below for further discussion of this service. As mentioned above, many Russian cases by-pass the RU-A stage and appear in databases only at the granted stage. However, in cases where pendency is longer, the RU-A document is a potentially valuable piece of intelligence, but few databases cover these for the full range of years or to the maximum extent of available information. The PATON service at the German patent information centre in Ilmenau was one of the earliest hosts for the Patent Abstracts of Russia (PAR) file, but the same information is loaded now on other commercial suppliers. Details of the content of PAR are provided in the paper by Höhne cited previously, and the web address for the original service, now closed, is included for information only. The public information services of Rospatent are distributed through the Federal Institute of Industrial Property (FIPS) website (http://www.fips.ru). The main search engine, known as IPS (after the Cyrillic abbeviation for Информационно-поисковой системы) has both free-of-charge and paid-for components. In the following Table 6.15, the individual databases available in IPS are marked (F) and (P) respectively.

Service name

FamPat / FullPat

TotalPatent One

Patent Abstracts of Russia (PAR)

Open Registries

Official Bulletin “Inventions. Utility Models ”

Information Search System (IPS, Информационно-поисковой системы): RUPATABRU (F) RUPATABEN (F) RUPMAB (F) RUPAT (P) RUPATAP (P) RUPAT_OLD (P)

Producer

Univentio / Questel

Lexis-Nexis Univentio

Rospatent / TU Ilmenau

FIPS

FIPS

FIPS

Table 6.15: Russian patent databases.

RU-A, +, English abstracts

RU-A bibliographic data +, full text +, RU-U full text +, RU-C/ full text +, SU full text +, machine translations

RU-A/ full text +, RU-U full text +, RU-C/ full text + SU full text –.

Coverage

RU-C/C abstracts + (in Russian) RU-C/C abstracts + (in English) RU-U abstracts + (in Russian) RU-C/C full text + (in Russian). RU-A full text + (in Russian) SU-A, A, A, A, full text, –.

www.fips.ru/iiss/ www.fips.ru/iiss/ www.fips.ru/iiss/ www.fips.ru/iiss/ www.fips.ru/iiss/ www.fips.ru/iiss/

(continued )

RU-C, RU-U full text, most recent month (in Russian) (F)

PDF of all issues from .. onwards. Separate search engine.

www.fips.ru/iiss/

www.fips.ru/publicationweb/bulletins/IZPM

www.fips.ru/registers-web/ Hierarchical lists of documents: RU-A/ +, RU-C/ +, RU-U +, SU –. Some legal status.

PATON / www.paton.de

www.lexisnexisip.com/ products/total-patent-one/

www.orbit.com

Platform

Russian Federation

167

Service name

RussiaPat

Espacenet

PatentScope

Yandex (Яндекс.Патенты)

Producer

Rospatent

Rospatent / EPO

Rospatent / WIPO

Rospatent / Yandex

Table 6.15 (continued )

RUPM (P)

https://yandex.ru/patents

www.wipo.int/patentscope

http://ru.espacenet.com

STN

www.fips.ru/iiss/

Platform

SU / RU granted patents +, full text (in Russian)

RU: Bibliographic data and abstracts +; full text c.% of records. SU: Bibliographic data +, abstracts |+, no full text, % PDF of records.

RU-A, RU-C bibliographic. Not updated since .; to be integrated into new version of Worldwide file.

SU/RU bibliographic data +, English abstracts + plus legal status.

RU-U full text + (in Russian)

Coverage

168 Chapter 6 National patent systems of the G8 countries

Regional patent systems: the Eurasian Patent Organisation (EAPO)

169

Regional patent systems: the Eurasian Patent Organisation (EAPO) Up to this point, most of the discussion about patent documents has concentrated on the “one country, one patent” model – i.e. there will be as many patents for an invention as there are countries in which the applicant has sought and obtained protection. The exception has been the European Patent Office. However, the EPO is not the only regional system in operation, and it is appropriate here to consider another regional office, whose granting activity has a bearing upon the patent rights valid in the Russian Federation. The other operating regional patent offices will be considered in the chapters which relate to their geographical area, namely ARIPO and OAPI in Africa and the GCCPO in the Middle East. As mentioned earlier in this chapter, moves to institute a regional system for patent granting across the former USSR were started very soon after the Union dissolved in 1991. The European Patent Office was instrumental in helping to draft the new regional agreement, and it bears many similarities to the European Patent Convention. The Eurasian Patent Convention was eventually signed in Moscow on 9th September 199420, by 10 of the former Soviet states, and entered into force from 12th August 1995 after the necessary three signatories had ratified it – Belarus (BY), Tajikistan (TJ) and Turkmenistan (TM). The Russian Federation (RU), Kazakhstan (KZ), Azerbaijan (AZ), Kyrgyzstan (KG), Moldova (MD) and Armenia (AM) joined over the next 6 months, bringing the total membership to nine. Georgia (GE), the Ukraine (UA) and Uzbekistan (UZ) have not joined the EAPO, and the remaining three former Soviet republics (the Baltic states of Estonia, Latvia and Lithuania) have joined the European Patent Office instead. The country code for the EAPO is “EA”. The Office started operations on 1st January 1996, with headquarters in Moscow. The case of Moldova is more complex. After initially joining the EAPO from 16th February 1996, Moldova later renounced the Eurasian Patent Convention and withdrew, effective from 26th April 2012. Shortly afterwards, a validation agreement with the European Patent Office was brought into force, from 1st November 2015. Special arrangements were put into place concerning the rights under any Eurasian Patents which had been validated in Moldova, to ensure that these could be retained until the expiry of the patent21. The current membership of the EAPO is now eight states. For the next few years, the patent rights in force in Moldova will consist of a mixture of national patents, Eurasian Patents designating Moldova and European Patents validated in Moldova. The operation of the EAPO is very similar to the EPO, using deferred examination with early publication at eighteen months, followed by substantive

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Chapter 6 National patent systems of the G8 countries

examination leading to a grant of patent with a term of twenty years from filing date. The EAPO has only a single official language – Russian – as opposed to the three used by the EPO. The first unexamined documents were issued in October 1996, and the first patent was granted in April 1997. Effective from 1st January 1996, it is also possible to designate the EAPO under the PCT system, enabling the applicant to enter a regional phase resulting in substantive examination at the EAPO, instead of the individual member states. One significant difference from the EPO practice is that it is not possible to designate individual member states. All states are by default included in the coverage of any granted patent, and the only way of withdrawing protection is by subsequently not paying the renewal fees for any un-necessary countries.

Patent documentation and databases Application numbers are allocated in annual series (currently 4-digit year of filing + 5-digit serial number), and the 18-month publication number is the same format, shown at INID (21) on the document header instead of at INID (11) as for the EPO practice. There is no code to represent the type of IP right, but the range of serial number is indicative of the method of filing. The most recent WIPO survey dated September 2017 indicates that serial numbers 1–69999 are reserved for paper filing and two further sequences from 70001 and 90001 are for online filings. This leads to large gaps in the numbers used in any one year. The bibliographic record suggests that this system was adopted around 2008, and that prior to this date, all cases were assigned serial numbers from the same series, starting at 1 each year. Applications may be filed directly at the EAPO in Moscow, or via the national patent authorities of the member states. In the latter case, the national office completes formalities checks and allocates a filing date and receiving office application number. After a copy is forwarded to EAPO, the regional application number is applied, which is then re-used as the EA-A publication number. The receiving office application number is recorded at INID (96) on the front page of EA-A publication. In the case of PCT applications, the EAPO application number is not allocated until regional phase entry, and therefore the (EAPO) year component will typically be different to the year of the effective (PCT) filing date. See Table 6.16 for the current application number formats. Note the result of e.g. EA 201891885-A1 based on EAPO application number 2018 91885, entering EAPO regional phase in 2018 but with an effective filing date of 29th March 2017, derived from the PCT international application date. Publication is in the form of either the complete specification with search report (A1) or specification only (A2). The code EA-A3 is reserved for late publication

Regional patent systems: the Eurasian Patent Organisation (EAPO)

171

Table 6.16: EAPO application number formats. Regional/ international application number (date)

Eurasian application number (date)

Eurasian publication number (date)

EAPO application None filed at member state

/EA/ (BY) (..)

  (..)

EA -A (..)

EAPO application  claiming national (.., TJ) priority

 (TJ) (..)

  (..)

EA -A (..)

None

  (..)

EA -A (..)

  (..)

EA -A (..)

Form of application

Priority application number (date, country)

Paris Convention priority

 (.., RU)

PCT regional phase entry

-- PCT/KR/ (.., KR)  (..)

of search reports. The remaining KD codes used by the EAPO are identical in meaning with those used at the EPO; Table 6.17 provides the full listing at the time of writing.

Table 6.17: EAPO KD codes. Code

Document type

Example

A

Eurasian patent application published with search report

EA -A

A

Eurasian patent application published without search report

EA -A

A

Separate publication of a search report

EA -A

A/A

Correction document of patent application (ST. standard)

EA -A EA -A

B

Granted patent

EA -B

B

Republished granted patent after partial revocation

EA -B

B

Republished granted patent following request for limitation

EA -B

B/B

Correction document of granted patent (ST. standard)

EA -B EA -B

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After publication of the search report (as either EA-A1 or EA-A3 document), the applicant has six months in which to file a request for substantive examination. Once this is completed, and the patent is granted, it is republished using a continuous running series, currently standing in the region of 35,000. From November 2019, the EAPO announced that the date of grant for Eurasian patents will be the date on which the grant information (including the full specification) is loaded on the publication server, not the cover date of the official bulletin. The bulletin is then compiled retrospectively from all the details loaded between the first and last days of the previous month. As a consequence of this, the date of grant recorded at INID (45) on the patent no longer corresponds to the Bulletin e.g. EA 33861-B1 was granted on 3rd December 2019 and appears in issue 12 of the 2019 bulletin, alongside cases granted between 2nd December (EA 33837B1) and 30th December (EA 34128-B1). Previously, information published in the Grants section of each bulletin issue was considered to be published on the last day of the month of issue of the bulletin, and the front page data corresponded to this (e.g. the grant of EA 31466-B1 was announced in issue 1/2019 of the Bulletin and carries the date of 31st January 2019 at INID 45 on the specification). The Bulletin “Изобретения (евразийские заявки и патенты)” originally published 6 times per year, but moved to monthly publication from 2012. It is available on the EAPO website in PDF form only from 1996–2006, and from 2007 onwards in PDF and HTML forms. Figure 6.2 shows the header from an unexamined Eurasian application, and Figure 6.3 the header of the corresponding granted patent.

Figure 6.2: Eurasian Patent Organisation – unexamined application.

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173

Figure 6.3: Eurasian Patent Organisation – granted patent.

Unlike the EPO, the EAPO does grant Supplementary Protection Certificates for its patents, although they comprise separate extensions for each member state in which the patent has been validated. The current format of numbering used in gazette announcements is NNNNNN/N/CC, where the initial digits are the grant number of the Eurasian patent, the middle digit is the number of the extension for that patent (1st, 2nd, 3rd etc. extension) and CC is the country code of the state affected by the extension e.g. 000474/2/KZ would be the second extension of EA 000474-B1 with respect to Kazakhstan. The documentation from the Eurasian Patent Organisation is being incorporated into a number of multi-national patent databases, such as DocDB. In addition, the Office is still producing optical disk products, including the EAPO Gazette on CD-ROM and the complete specifications of EA-A and EA-B documents in PDF format on DVD-ROM. The main website of the Office (www.eapo. org) includes links to the official register at www.eapatis.com, which contains a wealth of EAPO legal status data as well as separate databases on the national collections of the EAPO member states. The EAPO runs its own publication server at www.eapo.org/ru/publica tions/publicat/publicat.php. The Russian language version includes an advanced search form, allowing users to search by criteria such as application date, title, applicant, prior PCT data, priority data or legal status code (WIPO ST.17 standard headings). Answers retrieved include links to the official registry

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record for each case, and any later gazette notifications relating to changes in legal status, e.g. MM4A for lapse due to failure to pay maintenance fees. A Eurasian version of Espacenet (ea.espacenet.com), which includes bibliographic data and page images of published applications and Russian full text of granted EAPO patents, is still live at the time of writing, but it is likely that the data will be integrated into the new Espacenet version soon. The Eurasian unexamined applications (EA-A) were added to the WIPO PatentScope service in June 2014, back to the beginning in 1996, including some 85% of records with searchable Russian language full text. An early review of the documentation of the EAPO appeared in a conference presentation by Dzegelenok in 200522. There is also a short but useful paper by Bragarnyk23 covering the national documentation of the former Soviet countries as well as EAPO, with a helpful list of additional references, and a further discussion of Cyrillic-based sources by Milushev24.

United Kingdom Historical aspects and current law Some form of patent protection for inventions has been available in various parts of the United Kingdom since at least the 15th century; one popular competitor to the claim of the Venetian Republic (1474) to be the oldest patent-granting state is that of England, when Henry VI granted a patent in 1449 to John of Utynam for the method of production of stained glass windows. This grant however lacked some of the features of a modern patent, and was more akin to a patent of importation. Whichever claim is preferred, there can be no doubt that the later English Statute of Monopolies of 1623 was instrumental in the development of the modern system. By the Industrial Revolution period, patenting – and the commercial advantages gained by it – was well established, at least in England. The United Kingdom could be regarded as an early experiment in the development of regional patent systems. Prior to 1852 it was necessary to file for protection separately in England (which included Wales), Scotland and Ireland. After the foundation of the Patent Office, completed under the Patent Law Amendment Act the year after the Great Exhibition of 1851 and reflecting a new-found interest in the reform of patent law to match industrial development on a global scale, patents were granted for the entire United Kingdom. However, even today the situation is not quite as simple as may appear. Coverage is automatic for Great Britain, Northern Ireland and the Isle of Man, but not for some other close territories such as the Channel Islands. A number of the dependent territories, Crown

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colonies and even some independent Commonwealth member nations can be brought within the coverage of a UK patent by a process of re-registration. In territories such as Hong Kong, Malaysia and Singapore, which today have their own national patent systems, at least some of the patent rights in force may still be in the form of re-registered British documents. Further legislation was passed in 1883, 1902, 1919 and 1949, by which time a UK patent had a term of 16 years from the date of filing of the complete specification. Under the 1949 Act, publication was in a single numbered series. Detailed abstracts, called abridgements, were prepared by the examiners for each case from 1905 onwards, and published in groups according to the British classification key. These summaries were highly regarded for their content and quality, and have been loaded onto the EPO’s Espacenet search system, as a unique data set. From 1916 until the most recent law change, patents were published in a single numerical series, starting at 100,001. The United Kingdom was one of the founder signatories of the Paris Convention, which entered into force on 7th July 1884. It was also a founder member of both the European Patent Office, from 1977, and the Patent Cooperation Treaty from 1978. The standard country code for the United Kingdom is not (as might be expected from the familiar Internet top-level domain) UK, but “GB”. The operating title of the UK Patent Office was changed to the UK Intellectual Property Office (UKIPO) in 2007, after adding copyright legislation to its portfolio, alongside designs (from 1875) and trade marks (from 1876). Following a Government investigation into patent law reform in 197025, the United Kingdom followed the lead of the Netherlands and Germany by introducing a system of deferred examination with early publication. This came into force as the 1977 Patents Act26, which is still the primary legislation today, albeit modified by some provisions of the Copyright, Designs & Patents Act 1988 and later amending Acts and Regulations, including preparatory stages for implementing the European Patent with Unitary Effect27 and other required changes following the United Kingdom’s exit from the European Union28. It is still unclear at the time of writing exactly how, or whether, the Unitary Patent system will come into force. The new legislation in 1977 was specifically designed to be compatible with the European Patent Convention, and the two documents are very similar, at least in the way in which they lay out the procedure for examining and publishing patents. The system provides for a sequential process of search and substantive examination, with the applicant only required to file a request for substantive examination after the search stage has been completed and the specification published at 18 months after priority. This delay allows for third parties to review the published unexamined application and to bring new prior art to the

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attention of the examiner. If an applicant decides to proceed to substantive examination and the case reaches grant, it is republished using the same publication number, but with the KD code GB-B. There is no opposition period as such, although provision does exist for the publication of an amended document after grant, with a code GB-C; these are quite rare (see Table 6.18 for an exception). Patent term is 20 years from the UK application date, and the patent has to be maintained in force by payment of annual renewal fees for the entire term. Publications under the 1977 Act are numbered in the range of 2000001 upwards, from 1979. For many years after the new series began, a few pending cases have continued to be published each year under the old 1949 Act. The most recent of these was GB 1605470-A (old Act grant), granted to Heckler & Koch GmbH and published on 21st June 2017, based on a UK application from 1970. These cases are typically ones with subject matter related to national security or defence technology; the grant is published for the record and immediately expires. In common with other member states of the EPO which are also members of the EU, the United Kingdom currently operates the EU’s supplementary protection certificate scheme. Term extension may be granted within the United Kingdom on the basis of either a granted UK patent or a granted European Patent designating the UK. It is anticipated that the UK will continue to provide for term extensions after leaving the EU, but it is possible that the conditions for grant and/or the term allowable may diverge from European practice. In common with other EPO member states, the start of operation of the EPO resulted in a substantial drop in national grants, with many major industrial applicants choosing to obtain protection via the EPO route. However, substantial numbers of applications are still filed in the United Kingdom, although a substantial percentage are only used as a means of obtaining a priority date in order to enter the European system, and never publish as UK national documents. The United Kingdom was one of a small number of countries which retained its national patent classification scheme long after the implementation of the IPC in 1968. The British classification key was started in 1888, and finally closed on 1st July 2007. It still has some value for searching older UK records, but is no longer applied to either national documentation or EPO or PCT cases designating the UK. It is still worth recording brief details, which will assist users of some legacy tools, such as the printed abridgements which are ordered according to the UK classification, and some older disk-based products. The scheme underwent a major revision in 1963, applied from specification number GB 940,001 onwards. At this time, the system was regrouped into approximately 400 subject headings under the same 8 main sections as the IPC, lettered A to H. The hierarchical structure is thus Section (letter) – Division

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(Number) – Heading (Letter), followed by the individual alphanumeric code mark. An example classification may thus be: Section C Division C Heading CA Code mark CA C

Chemistry, Metallurgy Macromolecular compounds Cellulose derivatives Articles made from cellular and porous.

The classification underwent regular revision, with new Classification Keys being issued in lettered editions, the last edition being Edition X. These were initially produced every 20,000 specifications, then every 50,000 and in later years reduced to annual or multi-annual releases. The system was applied to United Kingdom national patents, and appeared on the front pages of the documents. From the late 1970s, both EP cases and PCT cases designating the United Kingdom were also classified by the British system, to assist searching within the United Kingdom, but in later years the resource was not committed to this task and the effort ceased. Few electronic systems utilised the British classification as a search tool; one was the disk-based ESPACE-ACCESS-Europe, produced by the EPO and containing bibliographic information from 1978 to the present for United Kingdom documents. Further information on the UK classification scheme has been archived at the UK National Archives and available via links from the UKIPO website29.

National patent documentation The official gazette of the UKIPO has been published since 1854 under a variety of titles, including the Commissioner of Patents’ Journal (1854–83), the Illustrated Journal of the Patent Office (1884–88), the Illustrated Official Journal (Patents) (1889–1930), the Official Journal (Patents) (1931–1997), the Patents & Designs Journal (1997–2008) and most recently the Patents Journal (2nd April 2008-). To many searchers in the UK, however, it will always be “the OJ”. Currently, the Journal is published weekly and the contents are searchable on the UKIPO website (www.ipo.gov.uk) from 2006 onwards, with expanded data from April 2008. Back-copies are available in PDF format only for the period 1998–2008 from the National Archive. Under the 1977 legislation, an applicant resident in the United Kingdom was required to file first in the UK, and then wait for a period of approximately 6 weeks before filing elsewhere in the world. This provision was to enable a national security check to take place. After the 6-week period had elapsed, the gazette

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publishes a short entry for the application, consisting of the title as filed, the application number and the applicant’s name. These listings of newly-filed applications are amongst the earliest public records anywhere in the world of patent filings. Although this national security provision has been amended by the Patents Act 2004 (s.7) the listings of new applications continue to be provided in the Journal. The same listing includes details of applications entering the United Kingdom claiming foreign priority, which means that the record appears at approximately 13½ months from priority. The EPO’s DocDB was one of the few databases to collate the information from this “publication” stage. Since no actual publication of the specification takes place, the database producer generated a dummy KD code of GB-A0 (A-zero) or GB-D0 (D-zero), and re-used the application number as the publication number. These numbers may be rendered unsearchable in some forms of the DocDB data (e.g. on Espacenet). After the initial listing in the gazette, the next public event is the publication of the specification at 18 months after priority, carrying a KD code GB-A. Since the UKIPO Patent Office does not issue specifications without a search report (corresponding to the EP-A2) or delayed search reports (corresponding to the EPA3), there is no numerical suffix to the KD code. It is possible to distinguish between pre-1977 Act granted patents and the current unexamined applications by using the number range, as indicated in the previous section. The GB-A document consists of the entire specification as filed, except in those instances where the applicant is proceeding via the PCT and entering the British national system. In these circumstances, the GB-A document is a single sheet with abstract and drawing, but the body of the specification is not re-published, if the original WO-A pamphlet was published in English. If the WO-A document is published in any other language, the corresponding GB-A document is a complete translation. An example of the single-page form of republication is shown in Figure 6.4; note INID (86) and (87) showing the data for the corresponding PCT publication. At the present time, a substantial proportion of the applications which publish as GB-A documents never proceed to grant, so there is never a corresponding GB-B document. If the case does go to substantive examination, it is eventually republished using the same publication number but with the new KD code GB-B. Provision does exist for the issue of an amended document as a GB-C, but this does not happen very often; a more common use of the -C code is for making editorial changes, equivalent to the WIPO ST.50 code -B8. A full publication sequence towards and beyond grant appears at Table 6.18; this rare example incorporated some post-grant amendments, which led to the publication of three additional amended documents. A straightforward case would only publish the A0, A and B stages. A table of the KD codes used by the UKIPO is at Table 6.19.

United Kingdom

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Figure 6.4: UK republication of a PCT application entering national phase.

One further function of the Journal is in the monitoring of European Patents granted and effective in the United Kingdom. The Journal notes the grant date of all cases which designate the United Kingdom, irrespective of language. Prior to the implementation of the London Agreement, the Journal also produced a separate listing of the EPC Article 65 translations into English of patents originally granted in French or German. Unlike some other EPO member states, such as Spain, these translations are not officially republished or accorded a new national publication number; copies may be obtained on request to the UKIPO. The United Kingdom exercised its Article 65 rights from 1987, so that cases which were granted as an EP-B up to 1986 do not have to have the translations lodged. Following the entry into force of the London Agreement in the United Kingdom, there is no longer a legal requirement for translations to be deposited, although some may be provided on a voluntary basis, typically if the patent owner is concerned about infringement in the UK. The United Kingdom operates the SPC provisions under current EU Regulation, and either UK national or EPO grants designating the UK are eligible. The application process, grant and entry into force of these certificates is a process independent of the main patent granting stream, and new formats of numbers are adopted. Table 6.20 shows the sequence of events for the agricultural fungicide proquinazid.

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Table 6.18: Extended GB publication sequence. Stage

As printed

Typical database entry

Priority application in the UK . (..)

GB-A

Application claiming internal . (..) priority

GB-A

Divisional application lodged

. (..)

GB-A

Unexamined publication

GB -A (..)

GB -A

Granted patent

GB -B (..) ( pages)

GB -B

Corrected patent

GB -C (..) ( pages – missing specification pages re-inserted)

GB -C*

Corrected patent

GB -C (..) ( pages – missing claims page reinserted)

GB -C*

Amended patent

GB -C (..) ( pages – amendments to specification and claims allowed)

GB -C#

* Reprinted to correct errors in the specification; note that these are effective retroactively and the publication date recorded at INID (45) remains the same as for the original GB-B document. # Reprinted after the applicant requested voluntary amendments to specification and claims; note that these are effective retroactively and the publication date recorded at INID (45) remains the same as for the original GB-B document.

Table 6.19: United Kingdom KD codes (current). Code

Document type

A / D

Patent application filed (brief bibliographic details)

A

Unexamined application published

A/A

Corrected front page (A) or reissue (A) of published unexamined application

B

Granted patent

B

Corrected front page of granted patent

C /C /C

Reissue of granted GB-B specification (multiple generations)

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181

Table 6.20: Application process for Supplementary Protection Certificate in the UK. Event

Publication

Priority application

/ (US, ..); / (US, ..)

Published unexamined

EP -A (..) / WO /-A (..)

Published granted

EP -B (..)

Application for SPC

SPC/GB/ (..)

SPC granted

SPC/GB/ (..)

Patent expiry

EP -B (..)

SPC entered into force

SPC/GB/ (..)

SPC expires

SPC/GB/ (..)

Databases and database-specific aspects Until the mid-1990s, the only publicly available electronic access to British national patents was via the multi-national databases such as DWPI or INPADOC. Searchers interested in using country-specific aspects, such as the British national classification, were limited to working at the reading rooms of the British Library or the UKIPO. However, the UKIPO was an active partner in the Espacenet system from its launch in 1999, initially with a 2-year file of GB-A documents, subsequently expanded to all cases published under the 1977 Act (earliest date January 1979), with facsimiles of both unexamined applications and granted patents being made available. Further UK data have also been loaded, consisting of the abridgements for late 19th and early 20th century British patents. Various private sector organisations, including Univentio, have scanned all or part of the archive of paper masters with OCR technology to create full-text searchable archives. Bibliographic data for older GB documents may be found in some of the multi-country databases, discussed elsewhere in this book. The current list of dedicated files is given at Table 6.21; as with other sections in this chapter, inclusion of national documents into family-based databases is not considered here. Searchers wishing to undertake historical research in pre-1977 Act patents are referred to the book by van Dulken30 which includes more details on the various paper indexes and how to use them at the British Library.

PatentScope

UKIPO / WIPO

www.wipo.int/patentscope

STN International

GBFULL

www.ipo.gov.uk/p-find-spc. htm

UKIPO / Univentio

SPC Search

UKIPO

www.ipo.gov.uk/p-pj

Proquest Dialog

Patents Journal

UKIPO

www.ipo.gov.uk/p-ipsum/

Global Patents Fulltext

IPsum

UKIPO

Orbit.com

Univentio

Fampat / Fullpat

Univentio / Questel

www.lexisnexisip.com/ products/total-patent-one/

http://worldwide.espacenet. com

TotalPatent One

Lexis-Nexis Univentio

Platform

UKIPO / EPO Espacenet: Worldwide file / Worldwide EN

Service name

Producer

Table 6.21: United Kingdom patent databases.

Bibliographic data (incomplete) from +, abstracts +; full text c.% of records.

GB-A +, bibliographic data and full text. GB grants +, full text. Bibliographic data (incomplete) from +.

GB bibliographic data; GB full texts +

GB bibliographic data + (comprehensive coverage +) GB full text +

Supplementary Protection Certificates granted under EU Regulations; searchable by SPC or basic patent number.

Contents of Patents Journal (all sections) from th October  to date; links to register entries and specifications.

GB official register; current and in-force grants and proceedings relating to applications published after st January . Full content from st March .

GB grants +, bibliographic data GB applications + bibliographic data GB grants +, full text

GB applications +, bibliographic data and full text GB grants +, bibliographic data; + full text

Coverage

182 Chapter 6 National patent systems of the G8 countries

References

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Parliamentary Decree no. 217 of 23rd December 2014. Retrieved from www.usbm.sm/on-line/en/ home/legal-texts/documento9071949.html. 17 Government of Italy (1990). Ministero dell’industria, del commercio e dell’artigianato. Lettera circolare (Circular Letter) no.270 to Provincial Offices (Ufficio Provinciale Industria, Commercio e Artigianato, UPICA), 17th December 1990. 18 Moradei, G. (2009). Patent information in Italy. World Patent Information 31(1), 19–31. 19 Höhne, M., Ludwig, J., Schramm, R. (2000). Efficient access to Russian patent documents. World Patent Information 22(1), 23–33. 20 WIPO (1994). Eurasian Patent Convention – done at Moscow on 9th September 1994. WIPO Publication No. 222 (R/E/F). Geneva: WIPO. ISBN 92-805-0615-3. 21 Government of Moldova (2010.01.21). Agreement between the Government of the Republic of Moldova and the Eurasian Patent Organization on the Legal Protection of Inventions in the Republic of Moldova after the denunciation by the Republic of Moldova of the Eurasian Patent Convention. Government Decision No. 618, 17th August 2012. AGEPI. Retrieved from www. agepi.gov.md/ro/legislatie/internationale. 22 Dzegelenok, P. (2005). Patent information from the Eurasian Patent Office. In Proc. Annual Conference of the Patent Information Users Group (PIUG), 21st–26th May 2005, Crystal City, Alexandria, VA, USA. 23 Bragarnyk, A. (2010). Patent information of the former USSR countries. World Patent Information, 32(4), 331–334. 24 Milushev, K. (2009). Cyrillic databases of former Soviet Union countries. World Patent Information, 31(4), 304–307. 25 Banks Committee (1970). The British Patent System; report of the committee to examine the patent system and patent law. M.A.L. Banks (chair). Cmnd. 4407. London: HMSO. 26 United Kingdom Public & General Acts (1977). Patents Act 1977. c.37. 27 Statutory Instruments (2016). The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016. S.I. 2016 No. 388. 28 Statutory Instruments (2019). The Patents (Amendment) (EU Exit) Regulations 2019. S.I. 2019 No. 801. 29 UKIPO (2020.01.28). Patent Classification. Sections 4-7. UKIPO. Retrieved from www.gov. uk/government/publications/patent-classification/patent-classification. 30 van Dulken, S. (1999). British Patents of Invention 1617-1977: a guide for researchers. London: British Library. ISBN 0-7123-0817-2.

Chapter 7 Asia and Australasia Introduction Since the publication of the third edition of this book in 2012, the world economic order has continued to change rapidly, and with it the balance of importance of IP regimes in parts of the world outside of the mid- to late-20th century pattern of “US + Europe + Japan”, the so-called Trilateral bloc. The old-established industrialised countries of the G7 suffered considerable loss after the financial crises of 2008, and Asia continued to develop its industry and patent systems. This chapter will consider the two Asian members of the BRIC group (India and China), the third Asian member of the IP5 (South Korea) and selected other countries in Asia and Australasia. There are some elements of regional cooperation in this part of the world, but not – so far – an established regional patent office in the same sense as the EPO or ARIPO. Many of the smaller Asian countries lack the resource to carry out all the functions of a modern patent office, and various initiatives at work-sharing have developed. In addition, some countries have provided for a mechanism to recognise patents which have been examined and granted in other jurisdictions, as valid on their territory.

People’s Republic of China Historical aspects and current law Although most references to Chinese patent law highlight the late arrival of this country on the modern patent scene, in fact there is some history of IP practice much earlier. Some sources believe that an early patent law was attempted in the Taiping Rebellion period (1850–1864), and there is some evidence that the Qing court granted a ten-year patent relating to machine weaving to Zheng Guanying in 1881. An early patent law (振兴工艺给奖章程, Promotion Regulations for Revitalizing Crafts) was enacted by the Emperor Guang Xu during the failed “Hundred Days Reform” (June-September 1898), but this was abolished when the reforms failed and the Emperor was placed under house arrest after the Wu Xu coup. Under the Guang Xu statute, applications were examined by the Zongli Yamen (总理各国事務衙门, the government body in charge of foreign policy) and at least one case was granted, a 15-year patent for a spinning machine to the https://doi.org/10.1515/9783110552263-007

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inventor Chen Tzu-sui on 17th June 1898. After the revolution of 1911, the new government of the Republic of China published regulations relating to the grant of patents with a 5 year term, but these were unavailable to foreigners. New regulations relating to both patents and Soviet-style inventor’s certificates were issued in 1950 and 1954, following the creation of the People’s Republic of China1. However, from 1963, patents were no longer available and all inventions were considered to belong to the state. The modern patent system in China only came into being after the adoption of the “Open Door” policy of Deng Xiaoping in 1979. In 1980, China set up a patent office (initially called the Chinese Patent Office, later reorganised as the State Intellectual Property Office, or SIPO) and on 1st April 1985 the patent law of 1984 entered into force. Shortly before this, on 19th March 1985, China had joined the Paris Convention. Since 1985, the patent law has been amended several times. The amendments of 1992 included changes to the patent term; patents for inventions were granted a 20-year term instead of 15, and utility model term was also extended from 5 (optionally extended to 8) up to 10 years. China’s accession to the WTO and its consequent responsibility to pass TRIPS-compliant patent laws, was completed on 11th December 2001. The standard country code adopted for the People’s Republic of China was “CN”. Some ten years after the first law, China took another step forward by joining the PCT, on 1st January 1994. In the last decade of the twentieth century, the situation was somewhat complicated by the return of the former colonial territories of Hong Kong and Macao. The Paris Convention has a continuing effect in the Hong Kong Special Administrative Region from 1st July 1997, and in the Macao Special Administrative Region with effect from 20th December 1999. However, China has informed WIPO that the PCT does not extend to Macao when China is designated in an international application, although it does extend to Hong Kong2. Both Hong Kong (country code HK) and Macao (country code MO) maintain their own internal patent systems, generating additional documentation; these are discussed following this section on China. The pre1997 patent documentation of Hong Kong has been reviewed by Adams3. The SIPO was restructured in 2018 as the China National Intellectual Property Administration (CNIPA), which resulted in changes to all the internet addresses for the main office home page and its related search services; the main home page is now www.cnipa.gov.cn. The CNIPA has responsibility for granting of patents (including utility models and design patents), geographical indications and semiconductor topographies. Trade marks are administered by a separate sub-division of the State Administration for Market Regulation (SAMR), the parent body of CNIPA. The current law in China is the Patent Law of the People’s Republic of China of 12th March 1984, in force since 1st April 1985, as amended in 1992,

People’s Republic of China

187

2001 and 2008. The 2008 revision brought in a requirement of absolute novelty, for both patents and utility models. Patent applications which pass formalities examination are usually published at 18 months after Chinese filing or priority, if claimed (CN-A document), although exceptions can occur. Substantive examination must be requested within 3 years. China has concluded a number of agreements under the PPH (Patent Prosecution Highway) initiative, which can lead to rapid substantive examination and grant for cases which have been filed in other countries. Maintenance fees are no longer due for pending applications. After granting, the specification is published a second time (designated CN-C or CN-B, depending upon the time period of grant). The first annuity for the current year in which the patent was granted must be paid, and further annual fees thereafter up to the 20-year term from filing date. Grant is announced in the Gazette of Patents for Inventions (发明专利公报, Fāmíng Zhuānlì Gōngbào), published twice weekly on Tuesday and Friday since 6th June 2017, and weekly before that date. There is no provision for opposition as such; the previous post-grant opposition process was abolished at the end of 2001. Currently, anyone may refer a case to the Reexamination and Invalidation Department (formerly, the Patent Reexamination Board) at any time after grant, if they consider there are grounds for invalidation. There is no provision for patent term extension or SPC grants in China at the present time. Utility models are a very popular form of IP right in China. The governing law is the same as for patents, as amended. There are exclusions of certain subject matter from utility model protection, including methods, uses of products or chemical substances per se. Applications are subject to preliminary examination only; in the event that the proprietor wishes to exert their rights against a third party, the registered utility model is referred back to the CNIPA for an opinion on validity before infringement proceedings can commence. The term of utility models is 10 years from the date of filing. Registration is announced in the Gazette of Patents for Utility Models (实用新型专利公报, Shíyòng Xīnxíng Zhuānlì Gōngbào), published twice weekly on Tuesday and Friday, as with the Invention Patent gazette.

National patent documentation Although the Chinese patent law is relatively new, the rapid uptake by national applicants, combined with government incentives, has resulted in dramatic increases in the volume of documentation produced; China is now second only to the United States in terms of patent grants per year, and still growing. This has meant a consequent need for adjustments to the standards applied to the patent

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publications, particularly their numbering systems. This can make it somewhat difficult to understand the content of each database covering some or all of the Chinese patent corpus, or the appropriate format for searching. Different databases have adopted their own internal standards for re-formatting Chinese application and publication numbers, in addition to changes introduced by SIPO itself. In Tables 7.1 and 7.3, the different approaches are shown for patents and utility models respectively; corresponding examples of usage are shown in Tables 7.2 and 7.4 respectively. Note that the spacing between numbers shown in these Tables may not be reproduced on the documents – it is included for clarity in understanding the different elements of the numbers. In both Tables, the letter (K) is a Kind of Right indicator, to represent the type of right applied for: 1 = patent for invention, 2 = utility model, 3 = design patent. From 1994 onwards, when China entered the PCT system, two additional codes were introduced for application and corresponding ZL grant numbers only: 8 = PCT national phase entry for patent in China, 9 = PCT national phase entry for utility model in China. There is no separate publication series for these PCT national phase entries; all PCT documents, both foreign-priority or Chinese-origin cases, are published in the normal Gongkai (CN-A) number range, with the Kind of Right numbers 1 or 2 respectively. The letter (X) represents a computer-generated check digit which is frequently dropped when documents are added to electronic databases. There are a number of aspects of the numbering which are rather unusual. It appears that cases where the two publication stages for a patent application straddle a transition in the number system, each stage generally uses whichever number series is in force at the time. See examples 2 and 3 in Table 7.2, where the number formats for later publication stages have been adjusted to the appropriate series for the time, and do not follow the same format as their earlier publication. Similarly, the KD code adjusts to the form appropriate to the date of publication, as in example 4 in Table 7.2, which might have been expected to grant as CN-B but instead appeared as a CN-C. In the early years of the 1985 law, certain publications (such as the national gazette) used abbreviations of the Chinese language descriptors for each document stage, instead of the Western-style KD codes. These abbreviations, where known, are listed in Table 7.5. It appears that this practice is no longer used, although the ZL prefix appeared on front pages of granted patents between 1985–2010 (at INID 21, 1985–2005 and INID 12, 2005–2010). When the front page was redesigned in April 2010, the ZL abbreviation disappeared as well. It appears that many of the unexamined applications published in the 1985–88 period did not get granted until after 1989, so that Shen Ding documents with the same format as the application number (series 1 in Table 7.1) are relatively rare – see example 1 in Table 7.2.

YY K NNNNN (++)

–

–

.– .

.– .

.– .

..–date YYYY K NNNNNNN.X (+++)











 CN K NNNNNNNN-A (+)

CN K NNNNNNNN-A (+)

CN K NNNNNN-A (+)

CN K NNNNNN-A (+)

CN K NNNNNN-A* (+)

CN YY K NNNNN-A (++)

First publication level

Grant number in Gazette

CN K NNNNNNNN-B (+, as first publication no.)

CN K NNNNNNNN-C (+, new number)

CN K NNNNNN-C (+, new number)

CN K NNNNNN-C (+, new number)

CN K NNNNNN-B* (+, new number)

ZL YYYY K NNNNNNN.X (+++, as application no.)

ZL YYYY K NNNNNNN.X (+++, as application no.)

ZL YYYY K NNNNNNN.X (+++, as application no.)

ZL YY K NNNNN.X (+++, as application no.)

ZL YY K NNNNN.X (+++, as application no.)

CN YY K NNNNN-B ZL YY K NNNNN (++, as first publication no.) (++, as application no.)

Second publication level

*

The post-1989 series of publication numbers commenced at CN 1 03NNNN for the first publication stage and CN 1 003NNN for the second publication stage. When the serial number portions reached 039999 and 003999 respectively, they incremented to 040000 and 004000 and continued a normal numeric sequence.

YYYY K NNNNNNN.X (+++)

YYYY K NNNNNNN.X (+++)

YY K NNNNN.X (+++)

YY K NNNNN.X (+++)

Application number

Number series Time period

Table 7.1: Chinese numbering series 1985–date (patents).

People’s Republic of China

189

Number series



&

&

&



&









Example





















  .

  .

  .

  .

  .

  .

  

  

  

  

Application number

Table 7.2: Examples of Chinese patent numbering in use.

CN  -A ()

CN  -A ()

CN  -A ()

CN  -A ()

CN  -A ()

CN  -A ()

CN   -A ()

CN   -A ()

CN   -A ()

CN   -A ()

First publication stage

CN  -B ()

CN  -B ()

CN  -C ()

CN  -C ()

CN  -C ()

CN  -B ()

CN  -C ()

CN  -C ()

CN  -B ()

CN   -B ()

Second publication stage

Not used

Not used

ZL   .

ZL   .

ZL   .

ZL   .

ZL   

ZL   

ZL   

ZL   

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190 Chapter 7 Asia and Australasia

–

–

–.

.– .

.– .

..–date













YYYY K NNNNNNN.X (+++)

YYYY K NNNNNNN.X (+++)

YYYY K NNNNNNN.X (+++)

YY K NNNNN.X (+++)

YY K NNNNN.X (+++)

YY K NNNNN (++)

Application number

CN-K NNNNNNNN-U (+)

CN K NNNNNNNN-Y (+)

CN K NNNNNN-Y (+)

CN K NNNNNN-Y† (+)

CN K NNNNN-U* (+)

CN YY K NNNNN-U (++)

First publication level

None

None

None

None

CN K NNNNNN–U#, * (+, same number)

None

Second publication level

Not used

ZL YYYY K NNNNNNN.X (+++, as application number)

ZL YYYY K NNNNNNN.X (+++, as application number)

ZL YY K NNNNN.X (+++, as application number)

ZL YY K NNNNN.X (+++, as application number)

ZL YY K NNNNN (++, as application number)

Grant number in Gazette

* The post-1989 series of publication numbers commenced at CN 2 03NNNN for the first publication stage and CN 2 003NNN for the second publication stage. When the serial number portions reached 039999 and 003999 respectively, they incremented to 040000 and 004000 and continued a normal numeric sequence. # Reprinted after opposition period, or reissue. † Registered publication; no second publication stage.

Time period

Number series

Table 7.3: Chinese numbering systems 1985–date (utility models).

People’s Republic of China

191

Number series





&









Example















  .

  .

  .

  .

  .

  .

  

Application number

CN  -U ()

CN  -Y ()

CN  -Y ()

CN  -Y ()

CN  -U ()

CN  -U ()

CN   -U ()

First publication level

Table 7.4: Examples of Chinese utility model numbering in use.

None

None

None

None

CN  -Y ()

Not applicable – not opposed

None

Second publication level

Not used

ZL   .

ZL   .

ZL   .

ZL   .

ZL   .

ZL   

Gazette grant notice

192 Chapter 7 Asia and Australasia

CN-C

Granted patent, no opposition allowed

CN-A

CN-A

(none)

Gazette notification of grant

Published unexamined application

CN-C

Granted patent open to opposition

.. to date Published unexamined application

–

CN-A

CN-C

Gazette notification of grant

Published unexamined application

CN-B

Examined application open to opposition

–

CN-A

Published unexamined application

–

Patent

Shenqing Gongbu (#) (申请公布)

Shouquan Gonggao (授权公告)

Gong Kai (公开)

Zhuan Li (专利)

Shouquan Gonggao (授权公告)

Gong Kai (公开)

Zhuan Li (专利)

Shending Gonggao (审定公告)

Gong Kai (公开)

KD code Chinese description

English description

Time period

IP right

Table 7.5: Chinese-language abbreviations for document types.

GK

ZL

GK

ZL

SD

GK

(continued )

Chinese abbreviation

People’s Republic of China

193

Time period

Registered utility model

. to date CN-U

CN-Y

Shouquan Gonggao (授权公告)*

Shouquan Gonggao (授权公告)

Gong Gao (公告) Gong Gao (公告)

GG GG

Chinese abbreviation

†

also used for correction documents with KD codes CN-A8, -A9 also used for correction documents with KD codes CN-B8, -B9, and for amended specifications after partial invalidation, KD codes C1-C7. * also used for correction documents with KD codes CN-U8, -U9 and for amended specifications after partial invalidation, KD codes Y1-Y7.

#

Registered utility model

Published utility model CN-U Reprinted utility model after amendment in opposition CN-U

CN-B

Granted patent, no opposition allowed

Shouquan Gonggao (授权公告)†

KD code Chinese description

English description

–

Utility model –

IP right

Table 7.5 (continued )

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People’s Republic of China

195

A converse peculiarity is the retention of old formats despite the introduction of a newer one. Between 1989 and 2010, a patent grant was allocated a different publication number to its predecessor CN-A document. After changes were introduced from 7th April 2010, grant documents retained the same number. Consequently, some post-2010 CN-B documents were issued with a publication number format carried over from earlier series e.g. the granted stage corresponding to CN 1 819591-A (published 16th August 2006, series 4, example 10 in Table 7.2) did not publish until 7th April 2010, and carries the same format number CN 1 819591 with the appropriate new KD code of -B. Any other cases where the CN-A document was published before August 2007 would show the same effect. The early prosecution for utility models, up to 1993, could involve two publication stages. After completion of formalities examination, cases were published as a CN-U document, open for opposition for a period of 3 months. If no opposition was lodged, the registration of the utility model was announced in the gazette using the ZL number – there was no second publication. In the event of a successful opposition, the document was published a second time as an amended version, using the same number as the original publication and an unchanged CN-U code. The only difference between the two documents was the addition of the Chinese characters 更正 (Correction) stamped on the front page; this version replaced the original in the SIPO databases. There were very few cases of opposition in practice. Following the abolition of the opposition procedure in 1993, utility models have been published once only, as a registered CNY document. After the change in Kind Codes in 2010, the single registered stage was re-designated a CN-U document. There are two additional phenomena which the information specialist needs to be aware of, in respect of Chinese documentation. The first is the so-called “dual filing” issue. The Chinese law at present permits an applicant to simultaneously file a patent application and a utility model application for the same invention. Neither application will refer to the other in a systematic manner, either via shared priority details or through bibliographic data elements when each is published. There may be cross-references on the front pages of some cases, but this is not systematically applied. As a consequence, database producers who are attempting to build patent families corresponding to a single invention are implementing a variety of semi-automatic/semi-manual methods of processing publication data, in an attempt to reunite these documents in the same family. The other factor, which relates to patents only, is the proportion of unexamined applications which are published by CNIPA before the statutory 18-month period. It does not appear that there has been any explicit request for early publication, but it is notable that substantial numbers of CN-A documents publish much earlier than would be expected, based on their priority/application dates.

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Databases and database-specific aspects The Chinese Patent Office was quick to take advantage of the relatively new internet capabilities, and produced some searchable databases and publications on its website from the beginning. The Chinese language version is understandably more up-to-date and comprehensive than the companion English version, which can be reached from the home page, www.cnipa.gov.cn. In common with a number of other Asian patent offices, China has subcontracted the distribution of its bibliographic data to a number of different, though related, organisations. The Intellectual Property Publishing House (IPPH, www.ipph.cn) is a semi-autonomous part of CNIPA, and is responsible for the China Intellectual Property Right Net (CNIPR) website at www.cnipr.com. This is a full text search engine with online machine translation, which also offers customised alerting services. Some features are available to all registered users, others require a paid subscription. The China Patent Information Center provides a commercial alternative to the Government sources, at www.cnpat.com.cn, including sale of bulk data in a variety of formats including XML or PDF, and some products on CD-ROM, such as CNPAT/FRONT.EX (Front Extended) mixed-mode search of Chinese patent abstracts and images. As indicated above, the English language interfaces and content for a number of Chinese patent information products is less extensive, and sometimes less current, than the corresponding Chinese language interfaces. It can therefore be an advantage to be able to navigate the Chinese sites directly. The Asia Information team at the EPO has produced a number of guidance sheets to assist non-Chinese speaking users to carry out some simple searches. The support information for this can be found at the Asian help desk pages at the EPO website (www.epo.org/searching-for-patents/helpful-resources/asian.html). Distribution through existing commercial channels started with the loading of the ChinaPats file on Questel and Dialog. This file was an early product analogous to JAPIO’s Patent Abstracts of Japan, and was produced by the EPO in co-operation with the Patent Documentation Service Center (PDSC) in China. The content comprised English-language abstracts and bibliographic details of all unexamined Chinese applications since 1985. The basic Chinese bibliographic data was supplemented by INPADOC family information of all equivalent cases which had been published at the time of publication of the Chinese family member. A similar restriction on coverage applied to this file as was used for the early days of the PAJ content; namely, that abstracts are assumed to exist in an alternative language for cases claiming non-Chinese priority, so they were only included in the file where the applicant (individual or corporate)

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197

was resident in China. The file did not include data on Chinese utility models or granted Chinese patents. Since these early attempts to increase awareness of Chinese data, the volume of production – and consequent significance for the prior art searcher in particular – has increased to such an extent that all commercial and public sector family databases have expanded to include Chinese information, and some of these early China-only sources have disappeared. Sources covering abstracts only have typically been supplemented with PDF page images or replaced by searchable full text, either in original Chinese or machine-translated English. Users should be aware that some full text databases are still likely to include records created by OCR technology rather than original character-coded text at source, so full text search results (and translations thereof) may vary between databases. Table 7.6 is not a comprehensive survey of all databases of Chinese information; it concentrates (as do the other country-specific listings) on singlecountry sources or search engines where the user can select to search Chinese data only. Due to the particular demands of the pharmaceutical industry, the Table also includes some multi-country databases which include coverage of traditional medicine patents from China.

Hong Kong and Macao Historical aspects and current law The two Special Administrative Regions (SARs) of Hong Kong and Macao were returned to the government of the People’s Republic of China in 1997 and 1999 respectively, but both territories had a history of a distinct IP regime based on that of their former colonial powers, the United Kingdom and Portugal. Hong Kong acceded to the Paris Convention with effect from 16th November 1977, by virtue of United Kingdom legislation and the Chinese government confirmed that this continued to apply after 1st July 1997. Similarly, any PCT designations of China after 1997 are also effective in respect of Hong Kong. The granting authority in Hong Kong is the Intellectual Property Department of the Government of Hong Kong (www.ipd.gov.hk) and in Macao is the Intellectual Property Department of the Macao Economic Services Bureau (www.economia.gov.mo). Between 1892 (Patent Ordinance No.2/1892, amended in 1932) and 1997, patent protection could be obtained in Hong Kong only by means of re-registration of a United Kingdom right, either in the form of a granted UK patent or latterly also a European Patent validated in the UK. The procedure could be completed

Online Gazettes

Patent Search and Analysis System (PSS)

China and Global Patent Examination Information Inquiry (CPQUERY)

Reexamination and Invalidation Department

PatentScope

CNIPA

CNIPA

CNIPA

CNIPA

CNIPA / WIPO

Patent Star Search Platform (CPRS) www.cnpat.com.cn

China Patent Information Center

CN-A + bibliographic, abstracts.

Multi-country coverage of selected patents in traditional medicine. Includes deep indexing and controlled Chinese vocabulary.

Coverage

www.wipo.int/ patentscope

http://reexam.cnipa.gov. cn

http://cpquery.cnipa. gov.cn (Registration required)

http://pss-system.cnipa. gov.cn (Registration required)

CN-A +, basic bibliographic information and OCR full text, no page images.

Results and reports of the Department; searchable by number, party, IPC, legal citation

Record of fee payments, + Online file inspection for cases filed > ..*

CN +, also US, JP, KR content. Full text and English MT; PDF display, no download.

http://epub.cnipa.gov.cn/ Patents and utility models, + (Flash player may be Searchable by basic bibliographic fields. Full documents in PDF, required to display) legal status in Chinese.

www.eastlinden.com

World Traditional Medicine Patent Database (WTM)

Beijing East Linden (DongFang Lindun)

Platform

Service name

Producer

Table 7.6: Chinese patent databases.

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CNIPR Pharm

Chinese Abstracts Library / Full English Digest

TotalPatent One

Pat-List-CN/Web

SearchIP / Invention Navigator Plus

China Patents Fulltext

CNFULL

FamPat/FullPat

IPPH

JZMC Intellectual Property

Lexis-Nexis Univentio

Raytec (Japan)

SIP GmbH

Univentio

Univentio

Univentio / Questel

www.orbit.com

STN International (www.stn-international. com)

Proquest Dialog (www.dialog.com)

www.patent family.com

www.raytec.co.jp/sys tem-tools/cn-web (Subscription required)

www.lexisnexisip.com/ products/total-patentone/

www.iprtop.com/jszl/

www.ipph.cn Available on subscription

http://search.cnipr.com Available on subscription

CN-A full text +, CN-B/C full text +, CN-U/Y full text +

CN-A + full text + English MT CN-B/C +;CN-U/Y +

CN-A full text +; CN-U/Y full text +. Limited legal status.

CN full text, +. No information on KD coverage.

CN-A, CN-B/C, CN-U bibliographic, abstracts, claims. Query and results translation.

CN-A, CN-B/C, CN-U +, bibliographic and full text plus English MT

CN-A, CN-U +, bibliographic. Link to page images and legal status

Traditional Chinese Medicine (TCM) and CN pharmaceutical patents, +

Multi-country coverage, including CN full text and MT data, CNIPR Pharm content, TW, HK, US, JP, EP, KR.

* also available via one of the IP5 Global Dossier interfaces, with machine translation from CNIPA.

CNIPR Search

IPPH

Hong Kong and Macao

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at any time within 5 years of the date of grant, and the resulting gazette announcements were allocated a code HK-A. After the territory was returned to China, new national legislation was introduced4, with two patent types. The standard patent (HK-A1) continued the earlier re-registration system but extended it to include the possibility of re-registration of a granted Chinese patent as well. The applicant is required to file a “request to record designated application” within 6 months of the publication date of the unexamined application (GB-A, EP-A or CN-A); this request is then published in the Hong Kong Government Gazette (latterly the Official Journal of the Patents Registry), and is treated as a “first publication stage”. A second “request for registration and grant” is then lodged, at 6 months after the “request to record” or the grant date of the corresponding patent, whichever is later. The specification of the parent patent is then reprinted with a new Hong Kong front page. Once granted, these rights are deemed to have been filed simultaneously with their parent and last for 20 years from their filing date. After a revision of the law5 in 2019, the mechanism for Chinese or UK/EP reregistration to obtain standard patent protection remains in place, now termed a Standard Patent (R) (Re-registered), but this is supplemented by a direct filing route, leading to the so-called Original Grant Patent (OGP) or Standard Patent (O). Applications for this new form of standard patent protection can be filed independently in Hong Kong, obtain their own domestic filing date and, if granted after substantive examination by the Hong Kong Intellectual Property Department (HKIPD), the term of the patent will be 20 years from the Hong Kong filing date. The other form of right is a short term patent (HK-A2), which may be filed locally within Hong Kong, and has a term of 8 years, granted in two 4-year segments. These are subject to formal examination only, as with most national utility model systems. The applicant is required to supply their own IPC class mark, to the sub-class level only, and support their application with the results of a statutory search report issued by another national patent authority. The 2019 law revision introduced the possibility of a post-grant “technical evaluation” for a registered short term patent, at the request of the proprietor or third party – this is similar to the requirements in other jurisdictions for utility models to be substantively examined prior to the owner exerting their rights against alleged infringers. There is no provision in Hong Kong for patent term extension. On 13th December 1999, the Government of Macao published Decree-Law No. 97/99/M (Industrial Property Act), which replaced all earlier legislation on industrial property matters passed under Portuguese administration. The Chinese government has confirmed that the provisions of the Paris Convention continue to apply to Macao. The new Industrial Property Act came into force on 6th June 2000 as the Macao Industrial Property Code, after the territory had been formally

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201

handed back to China on 20th December 1999. The new Act governs all areas of intellectual property, including patents and utility models, and provides both local patent application procedures and (from 2004) for the extension of granted Chinese patents or pending applications to the SAR of Macao. Prior to the entry into force of the IP Code, Portuguese patents could be extended to Macao, with a term linked to the parent. New applications are subject to initial formalities examination in Macao, and after 18 months from filing or priority, a disclosure notice is published in the Official Gazette (Boletim Oficial). The application is then open for opposition at any point up to the grant date. The applications are subject to substantive examination (currently carried out by the CNIPA), which may be initiated by the applicant or a third party, within 7 years of filing. Notification of grant or refusal appears in the Official Gazette once completed, and the specification is made publicly available 1 month later. In the case of an extension from China, the application process may be initiated before or after the case is granted by CNIPA, but at the latest within 3 months of the grant, and will generally obtain protection in Macao within 3–4 months. Utility models in Macao undergo a similar procedure to patents, including substantive examination which must be requested within 4 years, and the term is a maximum of 10 years from filing, granted as an initial 6 year term plus two 2-year extensions. As with the patents, Portuguese utility models could be extended to Macao prior to the new IP Code, and have a term corresponding to that of their parent. Term extensions of up to 7 years are available for pharmaceutical or agrochemical patents, subject to market authorisation having been received for Macao. National patent documentation Standard Patents (R) published in Hong Kong have a bilingual Chinese/English front page, with the main text in the same language as their parent case. Shortterm patents are published in Chinese only and it seems likely that the new Standard Patents (O) series may also be Chinese only. The numbering system used in Hong Kong for applications and grants is shown in Table 7.7. Note that the various dates recorded in standard database fields do not have the same significance as for major patent systems; the “application date” as recorded by DocDB under the pre-1997 regime was the date of legal effect of the re-registration (so more similar to a grant date), and the “publication date” corresponds to the cover date of the Hong Kong Government Gazette (or Hong Kong Intellectual Property Journal) notice announcing the re-registration.

. (..)

. (..)

. (..)

Example 

Example  (Re-registered CN granted  via PCT route)

Example  (National application claiming US priority) n/a

HK  (..)

HK  (..)

HK NNNNNNN ( digits, starting at )

YY NNNNNN(.n) ( digits)

-

HK nnnn/YY HK / (.. – legal effect)

nnnn/YY (variable length)

Pre-

Publication of request to record (HK IPJ)

Example  / (based on EP B) (..)

Application number

Period

Table 7.7: Application and publication number formats for Hong Kong.

HK nnnnYY-A

Publication of granted patent (EPO code)

HK -A Short-term patent (..)

HK -B Standard patent (R) (..)

(deemed withdrawn – not granted)

HK NNNNNNN-K ( digits, starting at )

HK -A Short-term patent (..)

HK -A Standard patent (R) (..)

n/a

HK NNNNNNN-A (Standard patent) HK NNNNNNN-A (Short-term patent)

HK / HK -A (.. – IPJ cover date) (..)

HK nnnn/YY

Publication of granted patent (national code)

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. (..)

K YYYY NNNNNN.C

. (old format) (..)

. (old format) (..)

Example  (Re-registered EP granted  via Paris route)

–

Example 

Example 

HK   (..)

n/a

HK K NNNNNNN ( digits)

HK  (..)

(not yet granted)

HK  -A Short-term patent (..)

HK K NNNNNNN-K ( digits)

HK -B Standard patent (R) (..)

(not yet granted)

(not present)

(not known)

HK -A Standard patent (R) (..)

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The actual application number and date is available through the official register, and is different to the re-registration number, although still allocated in an annual series. Publication numbers under the post-1997 standard patent system started at HK 1000001 and are different to the preceding application numbers, allocated at the time of the “request to record”. The same number is re-used once the application is granted. This means that, depending upon the time taken for a parent case to grant (in the case of re-registration) or for substantive examination to be completed (original grant patents or short-term patents), the publication numbers of new granted cases will be discontinuous in any given week. For example, HK 1013995-A1, 1030104-A1 and 1106391-A2 were all granted the same date, 7th March 2008. With the introduction of amendments to the Hong Kong law in 2019, a new numbering system was brought in. Applications filed on or after 19th December 2019 use an application number format KYYYYNNNNNN.C (1+4+6+1) where K = Kind of Right designator, YYYY = year of application, NNNNNN = 6-digit annual serial number range used for all application types and C = check digit. Publication and grant numbers are given a new format number KNNNNNNN (1+7) where K = Kind of Right designator and NNNNNNN = 7-digit continuous series used for all application types. Note that under this new system, applications which were already pending on 19th December 2019 will not publish or grant with numbers in the new format, but retain their old formats throughout, unless the Registry record is not created until after that date. The K digits for application numbers and publication numbers are as follows: Code

Application number

Publication number



Standard patent (O)

Standard patent (O)



Short term patent, not based on PCT filing

Short term patent



Standard patent (R), parent not based on PCT filing

Standard patent (R)



Short term patent, based on PCT filing



Standard patent (R), parent based on PCT filing

The HKIPD allocates a code -A to the publication of request to record (bibliographic data only) and the EPO has indicated that it could use code -A3 for the same data, but does not at present collect this information for inclusion in DocDB.

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Databases and database-specific aspects The website of the HKIPD includes PDF copies of the Hong Kong IP Journal from Apr 2003 to date, as well as a searchable database for all IP rights in the SAR, https://esearch.ipd.gov.hk/, which includes data on grants (both patent types), withdrawals or refusals, lapses (both patent types), expirations and restorations, as well as access to PDF versions of the full documents, in English or Chinese. Data on applications to Hong Kong have been included in the DocDB database from 1976, although as observed above, the pre-1997 content must be interpreted differently to the standard bibliographic fields for other national patent systems, due to the re-registration process and its associated “publications”. Basic bibliographic details for publications (no full text) for Hong Kong is available in Total Patent One from 1976, and details of grants are in the Patbase system from 2004 and the Orbit search system from 2013. The documentation from Macao includes the Official Bulletin from January 2009 to date (some missing issues) in machine-readable form and in PDF. Three separate searchable databases are available, for patents granted by the Macao office, for patent extensions from mainland China and for Macao utility models. The databases are linked from the home page www.economia.gov.mo via intermediate menus Home » Intellectual Property » Information Enquiry. Each contains basic bibliographic and legal status information and links to PDF specifications. In the case of published patent applications, the PDF files contain only the text of the document, without a standardised front page; for extensions, the full version of the original Chinese grant is linked from the Macao record. There is no clear information about the extent of coverage of these databases. A separate database on pharmaceutical and agrochemical term extensions is also provided via the same menu system. Publication numbers as listed in the Bulletin are preceded with a Kind of Right designation letter followed by a fixed length 6-digit number. When searching in the individual databases, the Kind of Right designator is redundant, as all records belong to the same document kind, and left-filled zeroes are not used. The country code MO is not used in the Bulletin or in the searchable databases. Examples of publications are: Number

Application date

Date of Publication

Kind of Right

I/

..

..

Published application for MO patent

J/

..

..

Extension of CN granted patent

U/

..

..

MO utility model

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There is also a separate searchable “IP database” covering both Hong Kong and Macao, at www.ip-prd.net, although this does not at present consolidate any bibliographic information on applications or grants, and is limited to links to legislation and procedures, with the aim of promoting IP awareness within the Pearl River Delta region.

India Historical aspects and current law The earliest patent law in India, the Exclusive Privileges Act 1856, was based on the 1852 United Kingdom Act. This was modified in 1859, 1872, 1883 and consolidated in the form of the Inventions and Designs Act 1888 (Act No.5 of 1888), after the passage of the significant 1883 Act in the United Kingdom, which was brought in to reflect the changes due to the Paris Convention of the same year; the patent term was 14 years. The first substantive change of the 20th century was the Indian Patents & Designs Act (Act No.11 of 1911), which also created the national patent office; today it is formally known as Intellectual Property India (IP India). Following independence in 1947, Indian patent law still borrowed heavily from that of the United Kingdom, although it was revised several times in the 1950s after reviews of the system, including steps to ensure that food and medicines would be available at affordable prices, introducing a system of compulsory licensing for these patents. The major change came about from 20th April 1972, when a new Patents Act 1970 (Act 39 of 1970) entered into force. This Act removed major classes of subject matter from patentability entirely, including all bioactive molecules such as drugs and agrochemicals. The term of process patents was limited to only 7 years, instead of the normal 16 (increased from 14 years in 1930). At this time, India was not a signatory to the Paris Convention, although priority could be claimed in some cases by means of bilateral arrangements with a number of other countries, including the United Kingdom, Australia, Canada, Ireland, New Zealand and Sri Lanka. With the formation of the WTO, and India’s application for membership, major changes in the law were required, but proved difficult to enact. On 31st December 1994, the Patent Ordinance 1994 (No.13 of 1994) effecting certain changes in the 1970 Act was issued, which ceased to operate after six months. A further short-lived ordinance was issued in 1999. Substantive and permanent changes to the law were finally implemented by the Patents (Amendment) Act

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1999 which was brought into force retrospectively from 1st January 1995. This amended Act provided for filing of applications for product patents in the areas of pharmaceuticals and agrochemicals, even though these were not eligible for grant; this was the so-called “black box” procedure allowed for less-developed countries under TRIPS ratification procedures. Any applications filed on such chemical products would not be opened for examination until after 31st December 2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in India, subject to fulfilment of certain conditions. These also ended when the black box filing period closed on 31st December 2004. A second change came through the Patents (Amendment) Act 2002 (No.38 of 2002), which came into force from 20th May 2003. This Act introduced an IP India Appellate Board replacing some of the functions previously held by the Courts, and required substantive examination to be requested within 2 years of filing, as well as introducing provision for publication at 18 months after filing, although the latter did not start in practice until implementing regulations were passed. Granted patents which had not lapsed by 20th May 2003 had their original term extended to 20 years from filing. A more detailed survey of the changes to other IP legislation up to the 2002 amendment can be found in the paper by Ganguli6. The third and final major change was initially in the form of the Patents (Amendment) Ordinance 2004 in force from 1st January 2005, which was later repealed by the Patents (Amendment) Act 2005 (No.15 of 2005) dated 4th April 2005 which was also brought into force retrospectively, from 1st January 2005. This Act brought India into full compliance with TRIPS with respect to pharmaceutical and agrochemical protection, and introduced new provisions on Traditional Knowledge and genetic resources. Section 5 of the 1970 Act, which had prohibited product patents for drugs, food and chemical substances, was removed by the 2005 amendment; product patents for drugs, food and chemically-produced substances per se are allowed in applications pending on or filed on or after 1st January 2005. The current law in India is the Patents Act 1970 as amended by the above three Acts of 1999, 2002 and 2005. India joined the Paris Convention simultaneously with its accession to the PCT on 7th December 1998. The Indian Patent Office started functioning as an International Searching Authority under the PCT with effect from 15th October 2013. The patent term has been set at 20 years from filing for standard patents, effective from 1st January 2000. India does not at present have a utility model system, although this has been considered in the past. The Office does, however, issue patents of addition, which may not be granted before their parent and have a term corresponding to their parent i.e. they lapse or expire with it. India does not at present allow patent term extensions for any subject matter.

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The standard country code for India is “IN”, and the national patent office (IP India) website is at www.ipindia.nic.in. The most common working language of the Office is English, which is used for publication of all specifications; some other official communications may be carried on in Hindi. The current procedure consists of formalities examination after initial application has been received (sometimes preceded by an application with a provisional specification but no claims, which expires within 12 months if no complete specification is received), followed by publication in the weekly Patent Office Journal shortly after 18 months from filing. After this publication, third parties may lodge a so-called pre-grant opposition; this is similar to the third-party observation process at the EPO and some other European countries, and the evidence submitted is only considered if a request for substantive examination is received for the case. Substantive examination must be requested within 2 years of the priority filing date, otherwise the application is deemed withdrawn. After grant, the specification is published a second time. The 2005 amendment introduced a further 1 year period during which post-grant opposition may be lodged. Annual renewal fees are payable for all patents other than patents of addition.

National patent documentation For many years, India only published once, at grant, following the model of the UK Acts of the early 20th century. The KD code was not routinely used by the Office itself, and different database producers designated the specifications with a code -A or -B, according to their own policies. Numbering started at No. 1 in 1912 and ran in a continuous series, reaching somewhat less than the 200,000 range by the time the 1990s law amendments began to take effect. However, few databases outside of India covered the documents, apart from Chemical Abstracts which made a selection of chemical filings by national applicants from 1948 onwards, expanding to cover all chemical patents from 1982. DocDB also covered Indian granted patents from 1975, initially using the -A code to represent them, currently replaced by -B. Coverage in a family database was complicated by India’s non-membership of the Paris Convention at this time, so priority links had to be established manually unless they were claimed by means of a bilateral agreement. The Patent Office Journal was published intermittently between 1912 and 1960, as an annual publication with short abstracts of granted patents. From 1970, this was replaced by The Indian Gazette Part III, section 2, which ran until December 2004 as a weekly listing, including IPC classification from 1975 and details of PCT national phase entry from 1998. Since January 2005, the

India

209

weekly publication has been the Official Journal of the Patent Office, issued from the Kolkata headquarters and loaded on the website7. India began to publish unexamined applications from late 2004. In order to understand the numbering system for these new document types, it is necessary at this point to review how the national application numbers are allocated. From 1972, application numbers for IP rights in India were filed in separate sequences at one of four provincial receiving offices, or branches, of the Patent Office. When early publication started, the Indian Patent Office decided to retain and continue the existing running series of publication numbers for its granted patents, and designed a new annual series for published applications. There has been some misunderstanding of the role of the provincial receiving offices and their significance. All patents granted in India are valid in the whole territory of India, irrespective of the branch where the application was deposited. An application for an Indian patent must be filed at the Patent Office branch within whose territorial jurisdiction the applicant normally resides, has his place of business or domicile or where the invention actually originated. Applicants without Indian domicile must file in the Patent Office branch having jurisdiction in their Indian patent agent’s location or the applicant’s address for service8. The applications may be transferred to a different branch for examination purposes, in order to share the workload across all branches. In all cases, the application will be examined under the same law and, if granted, have effect throughout India. The earliest use of the branch codes indicated the receiving office using a three letter code corresponding to the old Anglicised name of the city e.g. Bombay (Bom), Calcutta (Cal), Delhi (Del) or Madras (Mas). Later, the code for Delhi remained the same but new codes for Mumbai (MUM), Kolkata (KOL) and Chennai (CHE) were substituted. The exact date of the transition to the new codes is not clear; the new codes KOL and CHE appeared on applications filed from 2003, and although the new code MUM was officially implemented for applications filed from 2000, examples of the use of the old code BOM are known well into 2001. The three major multi-national databases covering Indian documents have each adopted different solutions to reformatting the application numbers, publication numbers and KD codes to represent the documents, as shown in Table 7.8. Each column represents a single invention, from application to grant. Note that prior to 2003, national phase PCT entry numbers were in the format IN/PCT/YYYY/NNNNN/MUM instead of the later NNNNN/MUM-NP/YYYY (example for the Mumbai office; other regional codes also apply). A further significant change to application numbering was introduced from 1st January 20169. This reduces the branch office or jurisdiction code to a single number (J) and introduces a second number for the Kind of Right

/DELNP/ IN-DP IN DN INPD /DEL-NP/ -A IN -P

IN DEN-A IN  IN -B IN -A IN -B

/DEL/

IN-DE

IN DE

INDE

/DEL/-A

IN -I

IN DE-A

IN DE-A IN 

IN -B

IN -A

IN -B

Application number

DWPI#

CAS#

EPO

Publication number

DWPI

CAS

EPO

Grant number

DWPI

CAS

EPO

IN DN-A

Delhi – PCT transfer

Delhi – national filing

Table 7.8: Indian application, publication and grant numbers (1972–2015).

IN -B

IN -A

IN -B

IN KO-A IN 

IN KO-A

IN -I

/KOL/-A

INKO

IN KO

IN-KO

/KOL/

Kolkata – national filing

IN -B

IN -A

IN -B

IN KON-A IN 

IN KN-A

IN -P

/KOLNP/-A

INPK

IN KN

IN-KP

/KOLNP/

Kolkata – PCT transfer

210 Chapter 7 Asia and Australasia

IN MN INPM /MUM-NP/ -A IN -P

IN MUN-A IN  IN -B IN -A IN -B

IN MU

INMU*

/MUM/-A

IN -I

IN MU-A

IN MU-A

IN 

IN -B

IN -A

IN -B

EPO

Publication number

DWPI

CAS

EPO

Grant number

DWPI

CAS

EPO

IN -B

IN -A

IN -B

IN 

IN CH-A

IN CH-A

IN -I

/CHE/-A

INCH

IN CH

IN-CH

/CHE/

Chennai – national filing

IN -B

IN -A

IN -B

IN 

IN CHN-A

IN CN-A

IN -P

/CHE-NP/ 

INPC

IN CN

IN-CP

/CHE-NP/ 

Chennai – PCT transfer

Note: some instances have been found in which EPO format application numbers have use BO (Bombay) instead of MU (Mumbai), and CA (Calcutta) instead of KO (Kolkata). # DWPI has adopted the convention of changing the application code with a prefix letter “P” (for PCT national phase entry), similar to the EPO’s “P” suffix. CAS has used a replacement letter “N” (for national phase entry). At 18-month publication, DWPI has adopted a range of -I and -P kind codes combined with an all-numeric publication number.

*

IN MN-A

IN-MP

IN-MU

DWPI#

CAS

/MUM-NP/ 

/MUM/

Application number

#

Mumbai – PCT transfer

Mumbai – national filing

India

211

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Chapter 7 Asia and Australasia

(K), in the format YYYY J K NNNNNN. Requests for examination delete the Kind of Right code and introduce a Kind of Examination code (E) at the beginning e.g. E YYYY J NNNNNN. The values for (E) can be R (regular examination request) or X (express examination request). Further details on the application and publication numbers and the key to the various codes is shown at Table 7.9. Some database producers adopted the KD code -A1 (granted subject to opposition) for the grant specifications after the system of 18-month publication commenced, and redefined the old -A grant code to cover the new early publications i.e. the normal sequence is IN-A followed by IN-A1. However, since the numbering system for grants still continues the same continuous series in use since 1912, some database producers have opted instead to re-allocate all these documents as code -B and adopted the -A code for the 18-month documents i.e. the normal publication sequence is IN-A followed by IN-B. Patents of addition have a separate grant number from their parent, and are given the KD code -A7 or -E, depending upon the database. Early (express) publication of the unexamined case may be requested, and a number of examples (c.10% of weekly output) are released in each Gazette. No special number series or code is used to represent these pre-18 month examples, which can be published in as little as a few weeks after application e.g. application 201711032633 was filed on 14th September 2017 and published barely 3 weeks later, on 6th October 2017. Such examples are typically Indian priority filings, but a few claim a foreign priority date e.g. Indian application 201714033886 was filed on 25th September 2017 claiming a Chinese priority date of 27th September 2016, and published in India on 6th October 2017. Early publication is also common for national phase entries under the PCT, where the earlier WO-A pamphlet was available in English.

Databases and database-specific aspects Coverage of most Indian patents is included in the discussion of multi-country databases in Chapter 11. A number of official and semi-official sources are available. Early examples only contained limited ranges of recent documents, but the reliability and completeness of sources has improved markedly over the last 5 years. Users should still be aware that timely inclusion in family databases still leaves something to be desired, and the most up-to-date information is likely to be only available from IP India itself or sources directly using their data. The following Table 7.10 is a listing, current as of 2020. For convenience, the code IN-A is used for the unexamined publications and IN-B for the





IN 

IN 

IN 

IN 

IN 

A

-

IN



PCT transfer

Chennai –

For format YYYY J K NNNNNN: YYYY = year of application J = branch office of filing – 1 = Delhi, 2 = Mumbai, 3 = Kolkata, 4 = Chennai K = Kind of Right (application type) where digits 1–3 represent Indian first filings, 4–6 represent filings claiming priority under the Paris Convention and 7–9 represent PCT national phase entries. Each series sub-divides into a standard patent application (K = 1, 4 or 7), divisional application (K = 2, 5 or 8) or application for patent of addition (K = 3, 6 or 9), by the appropriate route. Some combinations are very infrequent. Some examples are shown below, with the corresponding grant publication where available (Note: spacing is shown for clarity, it is not in the normal presentation of the application numbers):

IN 

A

IN 

A

IN 

number

Grant

A

A

A

A

IN



national filing

Chennai –

A

IN



PCT transfer

Mumbai –

- -

IN



national filing

Mumbai –

- - - - -

IN



PCT transfer

Kolkata –

IN

IN



national filing

Kolkata –

number

IN

PCT transfer

national filing

Publication

number

Application

Delhi –

Delhi –

Table 7.9: Indian application, publication and grant numbers (2016–date).

India

213

    (-B)

    (pending)

    (pending)

Kolkata     (-B)

Chennai     (-B)

    (pending)

    (-B)

Delhi

Mumbai     (-B)

First filing, divisional application

First filing, standard application

Office

Table 7.9 (continued)

    (-B)

    (-B)

        (-B) (-B)

    (pending)

        (-B) (-B)

    (pending)

First filing, Paris patent of Convention, addition standard application

    (pending)

    (pending)

    (pending)

    (pending)

Paris Convention, divisional application

    (-B)

    (-B)

PCT national phase, standard application

    (pending)

    (-B)

YYYY      NNNNNN  (no example) (-B)

    (pending)

    (pending)

Paris Convention, patent of addition

    (-B)

    (pending)

    (-B)

    (-B)

PCT national phase, divisional application

    (pending)

YYYY   NNNNNN (no example)

    (pending)

    (pending)

PCT national phase, patent of addition

214 Chapter 7 Asia and Australasia

Service name

CIPIS

PatEstate.com

Indian Patent Advanced Search System (InPASS)

Patent Application Status

Patent e-Register

Patent Office Journal

Global Patents

INFULL

TotalPatent One

Producer

Clairvolex IP Solutions

Council of Scientific and Industrial Research (CSIR)

IP India

IP India

IP India

IP India

Lexis-Nexis Univentio

Lexis-Nexis Univentio

Lexis-Nexis Univentio

Table 7.10: Indian patent databases.

IN-A, IN-B bibliographic and full text. Legal status links and file inspection (post -months).

Selective database of patents granted to CSIR (India) +, full text*

IN-B, bibliographic data + full text (content not verified)

Coverage

IN-A bibliographic and full text + IN-B bibliographic and full text +

IN-B full text, +

Weekly updates (Friday). PDF available from .

File inspection; searchable by granted patent number only

(continued )

www.lexisnexisip.com/products/total-patent IN-A bibliographic +, full text +; -one/ IN-B bibliographic and full text +

STN International

Proquest Dialog

http://www.ipindia.nic.in/journal-patents. htm

http://ipindiaservices.gov.in/PublicSearch/ PublicationSearch/Eregister

https://ipindiaservices.gov.in/PublicSearch/ File inspection for published unexamined PublicationSearch/ApplicationStatus cases; searchable by number only.

https://ipindiaservices.gov.in/publicsearch

www.patestate.com

http://cipis.clairvolex.com/ (Subscription required)

Platform

India

215

www.mcpairs.com/app/Mcpairs.jsp (Subscription required)

MCPaIRS ™

FamPat/FullPat

PatentScope

Molecular Connections (India)

Questel

WIPO

IN-A bibliographic +

IN-A bibliographic and full text + IN-B bibliographic and PDF +, full text +

IN-A bibliographic, full text IN-B bibliographic, full text, +

Coverage

* The CSIR is probably the largest single Government institution in India with its own patent portfolio. Whilst other Indian research institutes also have pages on their websites listing their own patent holdings, PatEstate is an exception in that the data have been developed into a fully searchable database.

www.wipo.int/patentscope

www.orbit.com (Subscription required)

Platform

Service name

Producer

Table 7.10 (continued )

216 Chapter 7 Asia and Australasia

South Korea

217

granted patents, for all sources. Note that year coverage for the 18 month publications is listed as 1993–94 for some sources, but the law change for early publication was not implemented until much later than this, so it is unclear how these coverage dates have been derived. The claim to cover earlier publications may be the result of misunderstanding of the application numbering system, but this is unproven at the time of writing. Some databases (e.g. CIPIS, InPASS) include a field for “Indian classification” or “Field of invention”. The Indian Patent Office requires an IPC mark to be present on all applications for work-flow purposes, but due to the lack of standardised front page on the publications, this classification is not part of the electronic data flow to other vendors. The present IP India website does not appear to publicise the form or content of the Indian classification.

South Korea Historical aspects and current law An early form of patent protection, the Patent Law No. 196, entered into force in the territory of modern South Korea on 16th August 1908, when the region was occupied by Japan in the aftermath of the Russo-Japanese War of 1904–5. From 1910, the Japan Patent Act was directly applicable in Korea. After the Second World War when Korea regained its independence, the Patent Office was created in January 1946, later re-designated the Patent Bureau of the Ministry of Commerce and Industry. A new patent law came into effect later the same year, based heavily upon the US legislation of the period with a 17-year term from grant, but with the addition of a German-style utility model system in the same statute. A replacement Act (Law No. 950) was introduced in 1960, entering into force on 31st December 1961, which re-orientated the patent system to be modelled on the 1921 Japanese Act and reducing the term of patent protection to 12 years. A separate Law No. 952 was introduced to cover utility models, effective from the same date. There have been further multiple revisions since then; some estimates reckon nearly 40 amendments or revisions, sometimes several times in one year, between 1961 and 201410, with at least another 9 additional changes since then. Principal patent term was increased to 15 years in 1986 and again to 20 years from filing after 1995. Patent term adjustment was introduced following the conclusion of a Free Trade Agreement with the USA in 2012. The impact of these multiple revisions, for the information specialist, is that changes in term, either by statutory revision or administrative adjustment, have been very difficult to track, and users should be particularly cautious about interpreting an anticipated expiry date of in-

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force rights. South Korea did not become bound by the Paris Convention until relatively recently, on 4th May 1980, and by the PCT on 10th August 1984. KIPO started to operate as a PCT International Search Authority on 1st December 1999, and Korean patent publications became part of the PCT Minimum Documentation set from 1st April 2007, an indication of the rising importance of Asian literature in general. The modern patent administration dates from 1977, initially as the Korea Industrial Property Office, then the Office of Patent Administration, the Korean IP Office (KIPO) and eventually the current name of the Korean Intellectual Property Office (KIPO) from 2000. The main web page is found at www.kipo.go. kr. The standard country code for South Korea is “KR”; the Democratic People’s Republic of Korea (North Korea) uses the code “KP”. Further historical background on the development of the IP systems in South Korea can be found in the early chapters of the WIPO publication edited by Lee11. The basis of the current law on both patents and utility models is considered by some authorities to be the Law No. 3566 of 29th November 1982, as amended, although the WIPO Lex service retains the Acts No. 950 and 952 dating from 1961 as the ultimate foundation. From the point of view of the information specialist, the largest single change in documentation practice was the adoption of a form of deferred examination with early publication, and away from the US-style model of single publication at grant; this revision appears to have been completed in the early 1980s, with the first publications appearing from 25th March 1983 (KR 83-00001-A). Compound per se protection was allowed from 1st July 1987, and pharmaceutical and agrochemical patent term extension is allowed, up to a maximum of 5 years, limited to one extension per patent. The current sequence of events for patent granting consists of formalities examination followed by publication of the unexamined application at 18 months after filing or priority date (code KR-A). Substantive examination requests must be lodged within 3 years of filing (reduced from 5 years after 1st March 2017), otherwise the application is deemed withdrawn. Cases which complete their examination are republished (code KR-B1) with a different number and opened to post-grant opposition for 6 months. Post-grant invalidation proceedings may be brought at any time after grant. There are four patent gazettes used for disclosing this information, covering unexamined patent applications, granted patents, unexamined utility model applications and granted utility models, which have been published in electronic format on the internet since 2001. It is published daily in Korean; the most recent 3 months issues are available via the Korean language version of the KIPO website, at www.kipo.go.kr/ kpo/HtmlApp?c=4135&catmenu=m03_03_02. Older issues are cumulated into the KIPRIS search service.

South Korea

219

National patent documentation One aspect of Korean documentation which can make it difficult to understand is that KIPO has retrospectively standardised the numbering system over its complete backfile of data, so that all records carry the modern format. This means that entries in the national databases may not correspond to the number style shown on the original front pages of the documents, nor to the form of numbering which has been captured in other third-party databases. In particular, the 2-digit Type of Right indicator was not used in the official documentation until the late 1980s. Furthermore, there may be more gaps in sequences than expected. Patent prosecution in Korea is somewhat unusual in that there is a very short pendency period for substantive examination, on average less than 1 year between examination request and first office action. This means that an unusually high percentage of cases may be ready to grant even before the application has been laid open i.e. the KR-B1 document is published in less than 18 months after filing; in these instances, there is no corresponding KR-A document published. There have also been changes with respect to the number and form of publication stages in recent years. Prior to 1997–1998, accepted patent applications were published as a KR-B1 document, followed by a 2-month pre-grant opposition period and final allocation of a new registration number. There was no new document or KD code corresponding to the final registration number, and this is rarely recorded in third-party databases outside of KIPO. The last document to be published under this system was KR 10-1997-0011972-B1 dated 8th August 1997. The new system abolished the pre-grant opposition period and the specification was published as a granted KR-B1 document, using the final registration number, with a post-grant opposition period; the first document under this procedure appears to be KR 10-0117690-0000-B1, published 4th October 1997. In June 2007, post-grant opposition was also abolished, in favour of invalidation proceedings, with no change in the documentation. The current system of post-grant opposition was reinstated from 1st March 2017. There was no change in the documentation over this period. Unlike many other countries, the utility models are substantively examined, and currently publish twice as KR-U and KR-Y1 documents; during the period 1998–2006, substantive examination was abolished in favour of a so-called Quick Registration System, when only a single registered utility model was published. As indicated above, the multiple changes in statutory term for patents and utility models raises challenges for the interpretation of older database records. As an indication only, Table 7.11 outlines some of the major changes to term.

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Chapter 7 Asia and Australasia

Table 7.11: Variation in term of Korean patents and utility models. Filing period

Patent

–

 years from grant

–

The longer of  years from grant or  years from filing

Utility model

..– The longer of  years from grant or  years .. from filing

The longer of  years from grant or  years from filing

..–  years from filing (Patents in force on .. st July  were extended to  years from filing)

 years from filing

..–  years from filing date

 years from filing

As with China and Japan, the different published documents are more commonly referred to by their national names rather than the WIPO-style KD code codes, although these are also used and reproduced in family databases. The EPO’s Asian helpdesk pages provide examples of the Korean characters used for each document type, at www.epo.org/searching-for-patents/helpful-resources/asian/korea/ numbering.htmlwww.epo.org/searching/asian/korea.html. Tables 7.12 and 7.13 are a summary of the use of these names and the corresponding KD codes and numbering systems. In addition to the KD codes shown in Tables 7.12 and 7.13, KIPO introduced new ST.50 codes from February 2010. These use the accepted definition for “correction documents” at the early publication stage (KR-A9 and KR-U9 for total reprints), but the corresponding codes after examination (KR-B9 and KR-U9) may in addition be used for documents which are reissued after amendment during opposition, invalidation or correction trial, as well as for the normal correction of errors in the production of the document (e.g. missing pages). The KR-B9 and KR-U9 documents are not directly searchable in the KIPO databases, since they re-use the original publication number, but can be found under a separate tab in the KIPRIS record display. A WIPO survey dating from 2016 also indicates that additional KD codes have been allocated, relating to publication of examined applications for patents and utility models before (KR-B4, KR-Y4) or after (KR-B5, KR-Y5) the corresponding KR-A or KR-U documents12, although it has not proved possible to locate examples of their use in practice.

YY-Nnnnnnn - (..) -- KR YY-Nnnnnnn-A (Unexamined) KR --A (..) -- 공개특허공보 (Gonggae T’ukho Gongbo)

YY-Nnnnnnn

- (..)

--

KR YY-Nnnnnn (Examined, open to opposition)

KR - (..)

--

특허공보 (T’ukho Gongbo) OR 공 고 (Gonggo)

n/a

Application numbers*

Example

KIPO standard format

First publication level

Example

KIPO standard format

Korean header

Second publication level

KR YY-Nnnnnnn-B (Examined, open to pre-grant opposition)

Four-digit year numbering gradually introduced (electronic records)

Introduction of  month publication

Documentation changes

(continued )

KR YY-Nnnnnnn-B (Examined, open to pre-grant opposition)

공개특허공보 (Gonggae T’ukho Gongbo)

--

KR --A (..)

KR YY-Nnnnnnn-A (Unexamined)

--

- (..)

YYYY-Nnnnnnn

–

–

–

Table 7.12: South Korean numbering formats and KD codes (1948–1997).

South Korea

221

KR --B (..) -- 특허공보 (T’ukho Gongbo) OR 공고 (Gonggo)

KR --B (..) -- 특허공보 (T’ukho Gongbo) OR 공 고 (Gonggo) KR Nnnnnn (unpublished) KR  (..) -- 등록특허공보 (Deunglog T’ukho Gongbo) OR 등록 (Deungnok)

KR Nnnnnn (unpublished)

KR  (..)

--

등록특허공보 (Deunglog T’ukho Gongbo) OR 등록 (Deungnok)

Example

KIPO standard format

Korean header

Grant registration

Example

KIPO standard format

Korean header

*

Prior to 1997, the first digit of application numbers and publication of PCT national phase entry cases was always “7”. From 1999, this practice was restricted to the application numbers only; the corresponding unexamined and granted publications are issued with numbers in the same series as the regular national cases.

등록특허공보 (Deunglog T’ukho Gongbo) OR 등록 (Deungnok)

--

KR  (..)

KR NNNNNNN (unpublished)

–

–

–

Table 7.12 (continued )

222 Chapter 7 Asia and Australasia

-- (PCT national phase entry format) (.. – PCT International Application date) -- KR TT-YYYY-NNNNNNN-A (Unexamined) KR ---A (..) -- 공개특허공보 (Gonggae T’ukho Gongbo)

-- (..)

--

KR YYYY-Nnnnnnn-A (Unexamined)

KR ---A (..)

--

공개특허공보 (Gonggae T’ukho Gongbo)

n/a

Example

KIPO standard format

First publication level

Example

KIPO standard format

Korean header

Second publication level

(continued )

TT-YYYY-NNNNNNN

TT-YYYY-NNNNNNN

Application numbers*

Type of Right indicator adopted in publication numbers.

Abolition of pre-grant publication; Type of Right indicator introduced, initially for application numbers only.

–

Documentation changes

–

Table 7.13: South Korean numbering formats and KD codes (1997–date).

South Korea

223

KR --B (..) -- 등록특허공보(Deunglog T’ukho Gongbo) OR 등록 (Deungnok)

KR --B (..)

--

등록특허공보 (Deunglog T’ukho Gongbo) OR 등록 (Deungnok)

Example

KIPO standard format

Korean header

* The Type of Right indicator TT is 10 for patents and 20 for utility models. Other codes exist for additional IP rights.

TT-NNNNNNN-B (published)

TT-NNNNNNN-B (published)

–

Grant registration

Korean header

KIPO standard format

Example

–

Table 7.13 (continued )

224 Chapter 7 Asia and Australasia

South Korea

225

Databases and database-specific aspects Users need to be cautious in their use of third-party databases of Korean documents, due to the potentially confusing overlap in KD codes, first as Korea moved to a dual publication system and later re-defined the KR-B1 code for granted patents rather than accepted pre-grant documents. Some databases switched from covering the final publication to covering the first one, as soon as KR-A documents began to be published. In addition, not all sources cover both patents and utility models from Korea, despite the importance of the latter in terms of total IP rights in force in Korea. Before the KD codes were printed on the actual documents (from 1984), the only way of distinguishing the two types was by the Korean-language text header. Despite the standards used for data exchange, the original formats for most numbers as printed on the documents were not zerofilled. Figure 7.1 illustrates the headers from Gonggae KR 87-005737-A and the corresponding Gonggo KR 88-002589-B, showing how the numbers were originally recorded at INID (11). Note that the prominent number at the top right of both documents (266, 1489) is not a grant or publication number, but the volume number of the Gazette which announced these publications.

Figure 7.1: Korean unexamined and accepted front pages.

The information dissemination activities of KIPO are managed by an affiliated organisation, the Korea Institute of Patent Information (KIPI), founded in 1995; the English pages of their website (www.kipi.or.kr) provides access to the KIPRIS system (Korea Industrial Property Rights Information Services), with extensive coverage of Korean documentation, legal status and facsimile copies of specifications.

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There are some services which require the user to register an account for the service, although large amounts of the information are available without this, or without a subscription. One service which is restricted to other intellectual property offices is the Korean Patent Information Online Network (K-PION), which offers a Korean to English machine translation service, to facilitate other patent examiners to use and review Korean language data, including examiner reports, translations of the file wrapper information of national patent and utility model applications, and administration of PCT international applications for which KIPO is the Receiving Office. A similar commercial service was the K2E-PAT real-time machine translation for the various Gazettes produced by KIPO; however this service closed in 2017, although much of the Korean data can now be obtained in machine-translated form by other means, including the OPD service. Table 7.14 lists a number of services which enable searching in the Korean document set. As indicated above, Korean documents are now included in the PCT Minimum Documentation, and coverage in established family databases (both in terms of number of years of content and the document kinds) has increased in recent years. More details of coverage in family databases can be found in Chapter 11.

Table 7.14: Korean patent databases. Producer

Service name Platform

Coverage

KIPI

KIPRIS

http://eng.kipris.or.kr/ KR-B, KR-Y +, bibliographic and legal status. KR-A, KR-U +, bibliographic and legal status. Cross-lingual full text retrieval available.

KIPI

KPA (Korean Patent Abstracts)

http://eng.kipris.or.kr/ KR-A +, KR-B + Bibliographic and English language abstracts.

KIPI

KoreaPat (KPA)

STN International

KIPO

One Portal http://kopd.kipo.go.kr Dossier (OPD)

KR-B +, bibliographic and English language abstracts (grants with no preceding KR-A publication only). KR-A +, bibliographic and English language abstracts. KR patent and utility model file wrappers, +.

North Korea

227

Table 7.14 (continued ) Producer

Service name Platform

Coverage

LexisGlobal Nexis Patents Univentio

Proquest Dialog

KR +, bibliographic and full text.

LexisKRFULL Nexis Univentio

STN International

KR-A, KR-B, KR-U +, bibliographic, full text and English MT.

LexisTotalPatent Nexis One Univentio

www.lexisnexisip.com/ KR-A + ?, KR-B +, KR-U products/total-patent- + bibliographic, full text and English one/ MT.

Questel

FamPat/ FullPat

www.orbit.com

KR-A + ?, KR-B +, KR-U + bibliographic. KR-A + ?, KR-B +, KR-U +, full text and English MT

WIPO

PatentScope

www.wipo.int/ patentscope

KR +, bibliographic and abstracts, c. records with full text.

North Korea Despite its political isolation and lack of coverage in Western databases, the IP system in North Korea is functioning and producing more publications per year than some of the smaller South-East Asian countries; recent statistics are incomplete, but an average of over 6,000 patents were being granted per year in the period 2009–2012. The Paris Convention entered into force in North Korea on 10th June 1980 and the PCT shortly thereafter, on 8th July the same year. The current national legislation is the Law on Inventions, in force since 13th May 1998, as amended (most recently on 10th December 2014), which replaced earlier laws in 1967 and 1986. The current implementing regulations were passed in March 1999, amended in 2010, 2015 and 2016. The law indicates that there are two different concepts behind the issuing of IP rights by the DPR Korea Invention Office, an agency of the Ministry of Science and Technology. These are termed “invention right” and “patent right” respectively. The “patent right” system is closer to a conventional patent, granted after formalities and substantive examination and awarding the owner the right to prevent others using the protected technology. Re-assignment or licensing appears to be possible, with the consent of the government authority. The “invention rights” system is closer in form to the inventor’s certificates of the former

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Soviet Union, and is the preferred method for local inventors. In these cases, the holder does not gain any enforceable rights to their invention, which is given to the state, but is awarded an inventor’s medal and certain social benefits. They may be entitled to a proportion of the profits gained by anyone who uses the technology for a limited period after the grant. Applications for patent rights are subject to application, processing and renewal fees, whereas applications for invention rights do not incur costs. Both the invention right and patent right applications can lead to two levels of grant. The patent term defined within the original 1998 statute is 15 years from filing date, with one extension for a further 5 years available on request; however, the later amendments to the law (text is not readily available) appear to have modified this to a standard 20 year term from filing, and to have introduced a second-tier protection in the form of a utility model with a term of 10 years from filing. The invention rights may be granted as either a certificate of invention or a certificate of innovation. The term of both forms of certificates is essentially unlimited, and the original inventor has no control over who may be allowed to license the technology. The holder of a certificate of invention may be entitled to a greater proportion of working profits, for a longer period of time, than the holder of a certificate of innovation. References to the form of prosecution and kinds of publication are limited and often contradictory/out-dated. One interpretation suggests that applications for inventors’ rights (both kinds of certificate) are only published once, in the Invention Publication Gazette, as document kinds KP-F or KP-H (certificate of invention or certificate of innovation). Bibliographic data relating to patent right applications are published in the Granted Patents Gazette, as KP-L (patent application) or KP-W (utility model application). Some sources indicate that there is an opposition period after these publications, and/or after the announcement of grant. Published applications for patents and utility models appear in the same gazette, using an interleaved numbering system, currently running in the region of 600,000–700,000 with the standard country code prefix of “KP”. An alternative explanation is that applications for the invention rights are not published at all, and that the two gazettes are used to publish two levels of publication for the patent rights. Document kinds KP-F and KP-H correspond to published applications for patent and utility model respectively, in the Invention Publication Gazette, and document kinds KP-L and KP-W are the second publication levels, in the Granted Patent Gazette. The available data has not revealed any obvious examples of KP-F/KP-L or KP-H/KP-W pairs, although it is possible that (e.g.) a KP-F document with one publication number is followed by a corresponding KP-L document with a distinct publication number; under these conditions, it would be harder to

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establish national family members without seeing the priority details for both document kinds. Copies of the two Gazettes are produced on paper, but a subscription is difficult to obtain outside of North Korea, so there is little readily-available information on numbering systems or KD codes used. However, some additional information can be gleaned from examining Convention or PCT applications which claim North Korean priority. Based on the available evidence, it appears that application numbers up to 2011 were allocated in an annual series, formatted YY-NNN(N), where YY is the 2-digit Gregorian year of application. Users should note that the application date is recorded in the gazette using both the Minguo and Gregorian calendars, but only the Gregorian year is used in the application number. A new format was introduced from late 2010, when the application number format changed to closer to WIPO ST.13 compliance, in the format YYYY TT NNNNNN, where YYYY is the 4-digit Gregorian year of application, TT is a 2-digit kind of right indicator and NNNNNN is a 6-digit serial number, usually zero-filled in the first 2 positions. Known values for TT are 10 (patent application), 20 (utility model application) or 12/13/22/23. The meaning of the latter series codes is unclear, as these number ranges are open to definition by the national patent office13; they are most likely to refer to applications for different levels of national invention rights, since applications in these series most commonly result in Korean publications KP-F and KP-H14. Applications in the TT = 10 or TT = 20 series usually lead to KP-L and KP-W publications (patent and utility model bibliographic data), respectively and/or are used to claim priority to external applications. Confusingly, applications in the series TT=10 (patent) may also result in a publication kind KP-W, which appears to be a utility model, although conversion of a patent application to a utility model application is known to be available in other jurisdictions and may have happened in this instance. Overall, the most common bibliographic records indicate that type 13 applications result in a KP-H publication, which tends to reinforce the view that KP-H is a published invention right, not a patent right. Some examples of application and publication numbers are shown in Table 7.15. Limited Gazette data are available via the North Korea Science and Technology Network (NK Tech, www.nktech.net > Invention Patent) website hosted in South Korea by the Korea Institute for Science and Technology Information (KISTI). It is possible to filter the database by IPC sub-class and some keyword text, although only titles and some short abstracts are available. At the time of writing, there were some 24,000 records in the database, but year coverage is unclear, as is the update schedule. None of the established database distributors includes North Korea documents in their coverage, at the time of writing.

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Table 7.15: Application, publication and KD formats for DPR Korea. Application number Application type

Publication number

Publication type (inferred)

- (..)

Common series

WO /-A (..)

- (..)

Common series

RU  -A (..)

- (..)

Common series

CN -U (..)

- (..)

Common series

WO /-A (..)

   (..)

Patent

WO /-A (..)

   (..)

Patent

KP -W (..)

Granted utility model, bibliographic data only

   (..)

Patent

KP -L (..)

Granted patent, bibliographic data only

   (..)

Certificate

KP -L (..)

Granted patent, bibliographic data only

   (..)

Certificate

KP -F (..)

Certificate of invention

   (..)

Certificate

KP -H (..)

Certificate of innovation

   (..)

Certificate

KP -F (..)

Certificate of invention

   (..)

Utility model

KP -W (..)

Granted utility model, bibliographic data only

   (..)

Utility model

WO /-A (..)

   (..)

Certificate

KP -H (..)

Certificate of innovation

Taiwan Taiwan’s first patent code was the Republic of China Patent Law promulgated by the Government of the Republic of China on 29th May 1944, and the Regulations for the Implementation of the Patent Law came into force on 1st January 1949.

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This law included provision for both patents and utility models. The patent term was initially 15 years from the application date, later amended to 15 years from publication or 18 years from filing. The utility model term was 10 years from filing. The modern law is still founded on the 1944 statute, with the most recent amendments entering into force on 1st November 2019. This now provides for a 20 year term from filing for patents. Utility model term has not changed, although substantive examination for them was abolished in 2004. Patents of addition were permitted until 2001. Pharmaceutical and agrochemical patent term extension is available for eligible patents filed after 1994, permitting a maximum extension of 5 years; unusually, Taiwan initially required that the minimum term extension applied for should be 2 years, but this was subsequently removed in 2013. The patent granting authority is the Taiwan Intellectual Property Office (TIPO), with a website at www.tipo.gov.tw, and the standard country code is “TW”. Prior to 1978, some sources used the code “CT” for Chinese Taipei. The political situation in Taiwan has meant that it has never been a signatory to many international treaties, including the Paris Convention of 1883, although Taiwanese nationals may take advantage of the P.R.C’s membership in order to claim priority in foreign filings. Prior to 2002, applicants wishing to take advantage of their national priority when filing in Taiwan could do so through a number of bilateral agreements with countries such as Germany (1995), Switzerland (1996), Austria (2000), France, Japan, Australia, the United States (1996) and the United Kingdom (2000). Once Taiwan had joined the WTO on 1st January 2002 (formally as the Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu), the consequent ratification of the TRIPS Agreement meant that, under Article 2 of that treaty, all other WTO members must afford Taiwanese applicants the rights under the substantive portions of the Paris Convention, including the right of priority, and vice versa. Modern documentation from Taiwan started to be included in some Western databases from the early 1990s, when the country published once, at grant. The law changed for applications filed after 26th October 2001, to introduce publication of unexamined applications at 18 months, at which point the KD code TW-A was adopted for these documents and TW-B for the corresponding granted cases. The first TW-A documents under the new procedure were published on 1st May 2003, and are formally laid open by announcement in the Invention Laying-Open Gazette (every 2 weeks). Utility models are also registered as TW-U publications, but may be allocated an additional TW-Y code if they have also been subjected to a technical evaluation on request to TIPO, after the initial registration but prior to enforcement or invalidation proceedings. The request for examination may be deferred until after the 18 month publication; at present, this may be no later than 3 years from the filing date,

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and may be made by any person, not only the applicant. Post-grant, invalidation proceedings are the only mechanism to challenge a patent, although prior to 2004 there was an opposition procedure. At publication of the granted specification, an announcement is made in the Patent Gazette (3 times a month). There are a number of features of Taiwanese patent documents which are somewhat unusual. Prior to the change in publication practice, both patents and utility models only published once, after examination, termed a Gōnggào Hézhǔn (公告核准). Both document types were given numbers from the same series (up to 6 digits), in alternating contiguous blocks within a common gazette publication e.g. in a given issue the patents might number TW 150000-A to TW 150100-A, followed by the utility models TW 150101-Y to TW 150400-Y, and the following gazette issue would commence with patents from TW 150401A (see Table 7.16 for an example of different document types with sequential numbers). Since the gazette did not use Western-style KD codes, it was possible to confuse the exact right which had been granted, unless the user consulted the printed front page which carried a text description of the document type. Before 2004, the announcement of the examined 6-digit publication number was followed by the allocation of a separate, lower 6-digit Certificate Number (證書號) which generally did not enter the bibliographic record, but is available

Table 7.16: Taiwan numbering systems. Publication Period

IP right

Application number

Pre-

Patent

Grant / Registration number

Certificate number

   n/a (..)

TW -B (..)



– Patent

   n/a (..)

TW -B (..)



Utility model

   n/a (..)

TW -U (..)



Patent

   TW --A (..) (..)

TW -B (..)



Patent

   TW --A (..) (..)

TW I -B (..)

I 

Utility model

   n/a (..)

TW M -U (..)

M 

–date

Unexamined publication number

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233

in the TIPO databases. After the new publication sequence commenced, the certificate number is the same as the granted publication number. Unexamined publication numbers are allocated in the format YYYY-NNNNN-A, where YYYY is the Western (Gregorian) year of publication (not filing). These documents are termed Gongkai (公開). The corresponding granted documents (Gōnggào Fāzhèng, 公告發證) are now distinguished by a letter prefix to a 6-digit grant number (I for patent, M for utility model). However, the number series re-started at TW I 220001-B for patents and TW M 240001-U for utility models, which overlapped with the pre-2004 grant series. It is only in recent years that both new series has overtaken the old interleaved number system; new Act patent TW I 595872-B was granted in 2017, having re-used the same publication number as one of the last old Act cases, registered utility model TW 595872-U dating from 2004. Figure 7.2 illustrates the front pages of both of these documents.

Figure 7.2: Taiwan publication numbers under old (TW 595872-U) and new (TW I 595872-B) systems.

The second unusual aspect is the use of the Minguo calendar (民國紀元) for application numbers and dates. Unlike the Japanese Imperial calendar, the Minguo dates are easily confused with Western ones, because the difference is only 11 years. Year 1 of the Minguo calendar is Western 1912, the year of the declaration of the Republic of China. To convert from Minguo year to Western year, add 1911. From 2011, when the Minguo year became three digits, Taiwanese patent application numbers use a three-digit prefix; this was introduced in 2000 (Minguo 089) in anticipation, but the leading “0” can be omitted when searching. The full format for application numbers is currently (Y)YY T NNNNN, where (Y)YY is the two or three digit Minguo year, T is the type of IP right and NNNNN is a 5-digit serial number. Table 7.16 shows the numbering sequence for the periods before and after the 2003 law amendment; note the interleaved number sequence for grant documents published up to 2004 (TW 595309 and 595310), and that some unexamined

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applications in the transitional period were still published at 18 months, even when the granted patent had already been issued (TW 582078). The Chinese full text, legal status, English abstracts and machine translation are all available from the TWPAT database loaded on the main TIPO website www.tipo.gov.tw, or via the direct link at http://twpat.tipo.gov.tw. The Chinese interface provides character-coded full Chinese text of both patents and utility models, as well as more detailed legal status. TIPO has also loaded additional search collections, including some South East Asian information, into its so-called Global Patent Search System (GPSS), at http://gpss.tipo.gov.tw. The two Gazettes for granted and unexamined publications can be found on the Chinese language version of the website, at https://tiponet.tipo.gov.tw/Gazette/internetGazette/procla mation.aspx?type=issuedData and https://tiponet.tipo.gov.tw/Gazette/ internetGazette/proclamation.aspx?type=pubData respectively. The Taiwan national file wrapper contents are available via TIPONet (www.tipo.gov.tw/tw/mp-1. html), covering all cases which have published unexamined since 2003 and utility models from 2nd May 2012; this information is also accessible as a link from a TWPAT record. Other commercial and public sector search services which have loaded some or all of the Taiwan collection include Orbit (bibliographic TW-B, TW-U/Y 1991+, bibliographic and full text TW-A 2003+, full text TW-B 2005+, full text TW-U 2006+), TotalPatent One (bibliographic TW-B 1950+, full text TW-B 1993+, bibliographic and full text TW-A 2003+) and DocDB/Espacenet (TW-A bibliographic 2003+, TW-B bibliographic 1993+, TW-U bibliographic 1997+). Extensive help on accessing the Chinese-language versions of TIPO’s website can be found in the EPO’s Asian patent information website, at www.epo.org/searching-forpatents/helpful-resources/asian/chinese-taipei/search.html. In considering ad hoc machine translations, it is necessary to be aware that Taiwanese texts use Traditional Chinese rather than the Simplified Chinese found in PRC documents. The Traditional Chinese script is also used in Hong Kong and Macau.

Asian national systems In addition to the individual Asian states reviewed above, a number of other countries in the region are starting to generate reliable flows of information on patenting activity. Malaysia, Indonesia, the Philippines, Thailand and Vietnam all have regular patent examination and granting in place. Singapore is perhaps the most active from the point of view of electronic information, although other states have been getting assistance from WIPO and other agencies to build up their infrastructure. The WIPO statistics for numbers of grants in these

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6 countries is shown in Figure 7.3. There have occasionally been speakers from some of these smaller patent offices present at the annual “East meets West” symposia organised and hosted by the EPO. The information from those meetings is archived for a period after the meeting date, on the EPO website at www.epo.org/learning-events/events/conferences.html and is a valuable resource to obtain first-hand knowledge of the information and documentation aspects of these offices. Coverage of national patents and utility models from these and the other Asian countries within established family databases can be found in Chapter 11. It should be noted that Cambodia (KH) has concluded agreements to recognise granted European Patents and granted Chinese (PRC) patents on its territory, and that this may be the model for increased cooperation in the region, rather than a formal regional patent office. 8000 7000 6000 5000 4000 3000 2000 1000 0

ID

MY 2015

PH 2016

SG 2017

TH

VN

2018

Figure 7.3: Total patent grant statistics 2015–2018 for active ASEAN states. * Source: WIPO Statistics Data Center, latest data as of 2020.02.15.

Although there have been high-level political discussions about common policies and procedures within the ASEAN group of countries, there has not been any substantive move towards the creation of a regional patent office as such, either as the 10-member group itself or the so-called “ASEAN+2” including China and South Korea. A resource-sharing programme called ASPEC (ASEAN Patent Examination Cooperation) has been launched from 2009, initially involving eight member states (Brunei joined later and Myanmar is still not included) but this is seen as a project which circumvents, rather than encourages, the need for national law harmonisation. Other commentators outside the bloc have long seen

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advantages in moving towards a regional office15, and a recent article summarised the political and institutional support for closer cooperation16. The ASEAN group has used the WIPO-PUBLISH software to create a common database (ASEAN PatentScope) for national patents of the ASEAN states, which can be found at www.aseanip.org. Details of the coverage of this are not easy to find at the time of writing, but it is unlikely to be different to that found on the main WIPO PatentScope site, which currently includes the following documents (country code, earliest start year for minimal bibliographic data): Brunei (BN, 1979), Cambodia (KH, 2009), Indonesia (ID, 1987), Laos (LA, 2013), Malaysia (MY, 1986), Philippines (PH, 1899), Singapore (SG, 1995), Thailand (TH, 1980) and Vietnam (VN, 1984). There is no content for the 10th member of ASEAN, Myanmar (code MM), which currently has no patent law. The country’s first patent law (Pyidaungsu Htuttaw Law N. 7/2019) was passed on 11th March 2019, but is not yet in force.

Australia Historical aspects and current law Australia has a long history of its own IP laws, independent of the United Kingdom. Following the formation of the Commonwealth of Australia in 1901 from the separate states of New South Wales, Victoria, Queensland, South Australia, Western Australia and Tasmania, the pre-existing state laws were transferred to the federal government in the form of the Patents Act 1903 (Act No. 21), granting a term of 14 years valid across the whole of Australia. The Patent Office was initially formed in Melbourne, expanded to include trade marks from 1906, and copyright and designs from 1907. The Federal Patents, Trade Marks and Designs Office moved to Canberra in 1933. The formal name of the modern patent office is IP Australia, with a website at www.ipaustralia.gov.au. The country code for Australia is “AU”. Australia has been a long-standing member of some of the significant patentrelated treaties, including the Paris Convention of 1883 from 10th October 1925. The country became bound by the Strasbourg Agreement concerning the International Patent Classification from 12th November 1975 and the Patent Cooperation Treaty from 31st March 1980. Australia became an International Search Authority under the PCT effective from the same date. National patent legislation in Australia is now effective in all states and territories of the Commonwealth of Australia (code AU), plus the external and dependent territories of Norfolk Island (NF), the Ashmore and Cartier Islands, Christmas Island (CX), the Cocos (Keeling) Islands (CC), the Coral Sea Islands, the Heard & McDonald Islands (HM), Lord Howe Island and Macquarie Island. Prior to the full

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independence of Papua New Guinea in 1975, Australian patents were also effective in this territory. Applicants for patents or proprietors of patents in Australia may apply to have their rights registered in the Republic of Nauru (NR). By the mid-20th century, the substantive legislation in Australia was the Patents Act 1952. Amendments with significant impact on the documentation were introduced in 1969 (examination could be deferred up to 5 years from date of filing of complete specification) and 1978 (complete specification laid open to public inspection 18 months after priority date, effective for cases published on or after 26th October 1978). The current legal basis for granting patents is the Patents Act 1990, as amended. This legislation introduced the concept of universal novelty for standard patents. It entered into force on 30th April 1991 and applies to all applications filed after this date. Patents of invention in Australia are termed “standard patents”. Australia also currently grants innovation patents, a form of utility model introduced by the Patents Amendment (Innovation Patents) Act 2000. The innovation patent system started on 24th May 2001, and replaced an earlier system of petty patents, which were introduced from 1979. An innovation patent application is not subject to substantive examination, but only to certain formalities checks. The specification is published after acceptance and sealed, as with a standard patent. The patentee or a third party can request substantive examination after grant; if it passes this, a notice of certification is published. The proprietor of an innovation patent is only entitled to sue for infringement once certification is completed. This form of IP right has been criticised in Australia as not meeting the needs of industry, and there are currently moves to phase out the system, by means of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, which received Royal Assent on 26th February 2020. No further filings for innovation patents will be possible from 26th August 2021. A patent-of-addition is available, which is granted on an improvement in, or modification of, a main invention protected in a “principal patent”, for the remaining term of the principal patent. The patent term under the 1903 Act was 14 years, extended to 16 years in 1921. The Patents Act 1990 allowed a patent term of 16 years from the date of filing of the complete specification, with a possible extension of 4 years for pharmaceutical substances only. This was modified by the Patents (World Trade Organization Amendments) Act 1994, which applies to all patents granted on or after 1st July 1995. Under this amendment, the duration of a standard patent was changed to 20 years from the date of filing of the complete specification, for all subject matter. In the case of patents granted on the basis of a PCT international application, the term is 20 years from the date of filing of the international application.

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Transitional arrangements allowed for in-force patents which were due to expire on or after 1st July 1995 to be extended to 20 years. The term of an innovation patent under the current legislation is 8 years from the date of filing of the complete specification. The term of the older petty patents was initially 1 year from the date of sealing of the patent, with the possibility of an extension up to a total term of 6 years from the date of application. The Intellectual Property Laws Amendment Act 1998 entered into force for the purposes of pharmaceutical patents on 27th January 1999. This provides for extensions of term of up to 5 years for pharmaceutical patents. Patents which had already benefited from a term extension under the 1994 legislation (from 16 to 20 years) were not eligible for a further extension under the 1998 Act. The current prosecution stages for standard patents consist of formalities examination, followed by publication at 18 months after priority, designated as the KD code AU-A. In the case of PCT applications entering the national phase, there will be an announcement of that fact in the Australian Official Journal of Patents, followed by an English translation of the WO-A document. A request for examination of the application must normally be submitted within 5 years of the filing date of the complete application. IP Australia has powers to direct the applicant to submit a request for examination, which may occur between 1–2 years after filing. After examination, the accepted specification is published a second time, also using the same number, but changing the KD code to a B. Following this publication, there is a 3-month pre-grant opposition period. If no opposition is lodged, the patent is “sealed” (definitive grant) and thereafter is cited by its final acceptance number. If a third party lodges an opposition, a sequence of notices will appear in the Journal covering the fact of applying to oppose, if the application to oppose is withdrawn, if the opposition is withdrawn or whether it is proceeded with, and any subsequent actions (including the possibility of re-examination). Proceedings may lead to the patent being upheld, refused or granted in an amended form. After the conclusion of proceedings, the Journal may publish a further notice to indicate that the (revised) patent is proceeding to sealing, and a publication of sealing will appear in due course.

National patent documentation Australia allows for the filing of provisional patent applications, although this route is not available when entering Australian national phase under the PCT. The provisional applications can be distinguished by their numbering system. One aspect of Australian practice which is worthy of note by the information specialist is

Australia

239

the varying provision to consult the specification of pending applications, even before grant. The practice has evolved through several law amendments, as follows: 1946–1952; inspection possible before examination, on payment of a search fee. 1952–1960; all specifications laid open to public inspection six months after the filing of the complete application (in effect, 18 months from internal priority if a provisional application had also been filed). 1960–1962; any specifications still pending after 2 years since the lodging of the complete application were laid open to public inspection. 1962–1978; any specifications still pending after 18 months since the lodging of the complete application were laid open to public inspection. 1978–date; all specifications laid open to public inspection at 18 months after the priority date.

One consequence of these varying practices is that some databases may contain references to documents as “AU-A” publications, even when they entered the public domain prior to the 1978 adoption of universal early publication. In 2001, IP Australia introduced major changes in its numbering system, resulting in the generation of new KD codes to avoid confusion between the old and new system. The first usage was for innovation patents from 24th May 2001, and all other documents began to follow the same system from later the same year. Official notices were split between two complementary issues of the official gazette. The Australian Official Journal of Patents continued to cover events relating to existing standard applications filed before 5th July 2002, and a parallel weekly issue of the Australian Official Journal of Patents (Supplement) contained information on new standard, provisional and innovation patent applications filed after this date. The Supplement was first published on 12th September 2002. The main mechanism for publishing information is now through AusPat, but the Supplement to the Journal is still made available in PDF and (latterly) XML format for download. Users of databases should note that other changes in documentation practice are reflected in the KD codes found in coverage for older years; for example, when unexamined applications were first laid open in 1978, and the phasing out of the petty patent and its replacement by the innovation patent in 2001. Table 7.17 lists both the historical codes and those in current use. Prior to the change in PCT Regulations on 1st January 2004, a PCT application designating Australia was essentially treated as an Australian application even before entering national phase. It was automatically assigned an Australian application number around the time of publication of the WO-A pamphlet. The PCT document was either republished with a front-page annotation giving a formal

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Chapter 7 Asia and Australasia

Table 7.17: Australian KD codes. Code Publication type

Remarks

A

Publication of specification after acceptance

Pre- grant procedure

A

Notice of provisional standard patent application filed

No document; gazette notice only

A

Publication of unexamined application for standard patent Post- grant procedure

A

Amended unexamined application for standard patent, published after A

A

Publication of application for petty patent

A

Publication of accepted application for innovation patent

A

Publication of accepted application for innovation patent, before sealing

A

Amended accepted application for innovation patent, after sealing

A

Published correction of front page of A publication

WIPO ST.

A

Published correction of complete specification of A publication

WIPO ST.

B

Granted standard patent

Usage ceased 

B

Accepted application for standard patent, published without preceding A publication

B

Accepted application for standard patent, published following A publication

B

Published granted petty patent

B

Certified innovation patent

B

Published correction of front page of B publication

WIPO ST.

B

Published correction of complete specification of B publication

WIPO ST.

C

Amended patent

Usage ceased for cases filed after 

C

Amended granted standard or petty patent

C

Amended certified innovation patent

C

Published correction of front page of C publication

Usage ceased 

Usage ceased

WIPO ST.

Australia

241

Table 7.17 (continued ) Code Publication type

Remarks

C

Published correction of complete specification of C publication

WIPO ST.

D

Notice of application filed

Alternative code to A

Australian publication number (AU-A1) or, latterly, linked to the corresponding electronic version. Consequently, many pseudo-documents are listed in bibliographic and family databases which have an Australian publication number but are in fact untranslated copies of the corresponding WO-A pamphlet. After the change in PCT regulations, the Australian practice changed. The official gazette began to record only the actual entry to national phase, for any PCT applications filed after 1st January 2004, in a special section which first appeared in early 2005. The pseudo-documents are therefore no longer being generated or added to bibliographic databases. The numbering system for both applications and publications has gone through a number of distinct series, and a given application may utilise different schemes for each stage of its publication cycle, if its progress straddles a change in practice. A common feature to both old and new systems is that the first stage publication number is the same as the application number, which means that the 4-digit year element in the publication number relates not to the year of publication, but the year of application; in the case of PCT applications entering national phase, the application date and year is the same as that of the PCT international application, and may be more than one year different to the year of publication of the Australian document. Table 7.18 is a summary of the different systems used. The post-2001 system retains the same number format throughout all stages, from application through to final grant, consisting of a 4-digit year prefix, followed by a single digit Type of Right indicator and a 5-digit serial number, i.e. YYYY TNNNNN, where T = 1 (complete application for an innovation patent), 2–7 (complete application for a standard patent, including PCT national phase entries and divisional filings), 8 (complete application for a petty patent) or 9 (provisional application). Bibliographic details of the unexamined application appear approximately 18 months after priority, in the Journal or Supplement to the Journal. Up until approximately 1998, IP Australia also produced a separate publication, the Abstracts Supplement to the Australian Official Journal of Patents, containing front page data and an abstract.

AU -B (..)

Examined publication

AU YYYYNNNNN-B AU -B (..)

 (..)

 (..)

AU -A (..)

YYYYNNNNN

(none)

PQ (..)

Unexamined publication AU YYYYNNNNN-A AU -A (..)

Complete application number

PaNNNN*

AU -B (..)

AU -B (..)

AU NNNNNN-B

Acceptance number (sealing date)

– Provisional application number

AU-B-/ (..)

AU-B-/ (..)

AU-B-NNNNN/YY

Examined publication

AU-A-/ (..)

AU-A-/ (..)

/ (..)

/ (..)

NNNNN/YY

Complete application number

Unexamined publication AU-A-NNNNN/YY

(none)

PN (..)

PaNNNN*

Provisional application number

Pre-

Standard patent without provisional filing

Standard patent with provisional filing

Number format

Document type

Period

Table 7.18: Australian patent application and publication numbering.

AU -B (..)

 (..)

(none)

AU -B (..)

AU-B-/ (..)

n/a

/ (..)

(none)

Petty patent / innovation patent

242 Chapter 7 Asia and Australasia

AU -A (..) AU -B (..)  (..)

AU -A (..) AU -B (..)  (..)

Unexamined publication AU YYYYTNNNNN-A AU YYYYTNNNNN-B YYYYTNNNNN

Examined publication

Acceptance number (sealing date)

YYYYTNNNNN (T =  or –)

Complete application number

 (..)

YYYYTNNNNN (T = )

Provisional application number  (..)

AU  (..) (none)

AU  (..)  (..)

AU NNNNNN

AU -B (..)

AU -A (..)

 (..)

 (..)

AU -B (..)

The second alpha character increased by one letter when the serial number reached 9999 i.e. PO, PP, PQ etc. Numbering PA0001 started in 1970; by the year 1999, the PQ series was in force. # Note that if the provisional application was filed before the new numbering system came in, it retained the old-style format appropriate to the date of filing.

*

– present

Acceptance number (sealing date)

Australia

243

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Chapter 7 Asia and Australasia

After substantive examination is completed, the accepted specification may be allocated a KD code AU-B (pre-2002) or AU-B1/B2, depending upon whether there has been a prior AU-A publication, and announced in the Journal. For these second announcements, there was a corresponding official gazette up to 1987, the Abridgements Supplement to the Australian Official Journal of Patents, which included an exemplary claim and drawing. Prior to the numbering change of 2002, the notice of Applications Accepted included the application number with KD code -B at INID field (11), and a separate so-called “acceptance number” or “serial number” at INID field (10). This serial number ran in a single 6-digit sequence, distinct from the publication number, and corresponded to the KD code -B2 in most databases. However, it should be noted that in the final years of this system, the KD codes on the front page linked the -B2 code with the INID field (11) and allocate no code at all to the serial number at INID (10). For applications filed after 2002, the use of the separate series of serial numbers ceased, and notice of Applications Accepted included only the INID field (11) number.

Databases and database-specific aspects Coverage of patents from Australia typically extends further back in time than for most countries in the region, not least because of their relatively easy accessibility and publication in English. The Australian authority, IP Australia, has produced its own full text database extending back to the earliest patents in 1904, and commercial database providers have coverage back to the middle of the 20th century. The following Table 7.19 lists the major sources of the Australian collection as an individual data set; inclusion in family databases is recorded in Chapter 11.

New Zealand Historical aspects and current law As with Australia, the patent law in New Zealand is a long-standing instrument which was originally inherited from the United Kingdom form and practice. The earliest Patents Act 1860 (New Zealand Acts, 24 Vict. No.14) granted a 14-year term. This was repealed by the Patents Act 1870 (New Zealand Acts, 33-34 Vict. No.89), which effectively formed a New Zealand patent office within the control of the Colonial Secretary, although it was not until the Patents Act 1883 (New

Service name

AusPat

e-Dossier

Official Journal of Patents

Global Patents Fulltext

AUPATFULL

TotalPatent One

FamPat/ FullPat

PatentScope

Producer

IP Australia

IP Australia

IP Australia

Lexis-Nexis Univentio

Lexis-Nexis Univentio

Lexis-Nexis Univentio

Questel

WIPO

www.wipo.int/patentscope

www.orbit.com

www.lexisnexisip.com/products/total-patentone/

STN International

Proquest Dialog

http://pericles.ipaustralia.gov.au/ols/epub lish/content/olsAvailablePatentPDFs.jsp

Available from within AusPat.

http://www.ipaustralia.gov.au/auspat

Platform

Table 7.19: Australian patent databases.

Grants, bibliographic +, abstracts +, full text c. % of records.

Grants, bibliographic +, full text + Unexamined applications, bibliographic +, full text + Petty patents, bibliographic – Innovation patents, bibliographic +

Grants, bibliographic +, full text + Unexamined applications, bibliographic and full text, + Innovations patents, bibliographic and full text, +

AU standard patent applications and accepted publications, bibliographic +, full text + (some coverage –).

AU standard patents, full text +

PDF copies of the Supplement from issue / (..).

National dossiers for all published applications filed .. or later.

AU standard patent applications and accepted publications, bibliographic +, full text –, + AU petty patents/innovation patents, bibliographic and full text +.

Coverage

New Zealand

245

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Chapter 7 Asia and Australasia

Zealand Acts, 47 Vict. No. 14) that a Patent Officer was appointed. Finally, the Patents Designs, and Trade-marks Act 1889 (53 Vict. No 12) provided for the recognition of foreign priorities, but still – like the United Kingdom – did not provide for any novelty examination before granting a patent of 14 years duration. Under this early legislation, New Zealand specifications were not printed at grant, but could be obtained from the patent office; the same principle was retained for many years, in that only bibliographic data was published at grant, and specifications were available on request (or latterly via the national patent office website) instead of being automatically published. A further progression during the early 20th century was the Patents, Designs and Trade Marks Act 1921 (12 Geo. V, No. 18), which confirmed an increase in patent term from 14 to 16 years which had been put into place by the Finance Act 1921 (12 Geo.V, No.5, s.25). The country became a signatory to the Paris Convention 1883 in its own right from 29th July 1931, and the PCT from 1st December 1992. The national patent office has been known as the Intellectual Property Office of New Zealand (IPONZ) since 1997, with a main website at www.iponz.govt.nz, and the country code for New Zealand is “NZ”. Dependent territories of New Zealand include the Antipodes Islands, the Bounty Islands, Campbell Island, the Chatham Islands, the Kermadec Islands, Niue (NU) and Tokelau (TK); New Zealand patents under the 1953 Act were valid in the latter two territories, but the 2013 Act appears to apply to Niue only – Tokelau is specifically excluded. The Cook Islands (CK) became a self-governing state in free association with New Zealand on 4th August 1965. Under the Cook Islands constitution and by virtue of s.635 of the Cook Islands Act 1915 (1915, No. 40), New Zealand’s laws on intellectual property continue to apply in the Cook Islands, and New Zealand patents continue to extend to the Cook Islands. For many years, the main IP law was the New Zealand Patents Act 1953 (1953, No. 64), as amended, which originally entered into force on 1st January 1955 and was virtually identical to the 1949 United Kingdom Patents Act when originally enacted, including a 16 year term from the date of filing. Under exceptional circumstances there was provision for extension up to a further 10 years, to a maximum of 26 years, usually for cases in which patents had been delayed or overridden by emergency circumstances such as wartime but sometimes also allowed for regulatory delay. This was amended by the Patents Amendment Act 1994 (1994, No. 122), in force from 1st January 1995, which increased the normal patent term to 20 years from filing, in compliance with TRIPS. Transitional provisions included the automatic extension to a 20 year term, for patents granted and in force before 1st January 1995. Patents of addition continue to be available, with a term corresponding to that of their parent i.e. they lapse or expire with it. Patents for invention are sometimes referred to as “independent patents” in order to

New Zealand

247

distinguish them from patents of addition. There is no utility model system in New Zealand. Neither the 1953 Act nor the replacement 2013 Act allows term extension for pharmaceuticals, agrochemicals or veterinary medicines. One feature which the 1953 Act included was a limited, or local, novelty requirement, and this was retained throughout the 20th century, at a time when many countries were introducing universal novelty requirements. During the last decade of the 20th century, there were a number of attempts to introduce updated legislation. A number of significant court cases illustrated the difficulty of maintaining a local novelty criterion in an age of global electronic disclosure17. Draft Bills before Parliament typically tried to introduce aspects such as publication of pending applications at 18 months from filing, extending examination to include inventive step considerations, and introducing a new definition of the state of the art. None of these succeeded until the Patents Act 2013 (2013, No. 68) was finally passed and entered into force on 13th September 2014. The implementing regulations are the Patents Regulations 2014 (SR 2014/275). Provisional applications may be filed in New Zealand, followed by a complete specification within 1 year; if no complete application is lodged within the 12 (extensible to 15) month period, the provisional application is deemed abandoned. Convention applications and PCT national phase entry may only be in the form of a complete application. Brief notices are published in the official gazette shortly after the date of filing, followed by substantive examination. This must be requested by the applicant within 5 years of the date of filing of the complete specification, although it may commence earlier under certain circumstances. Under the 1953 law, examination did not consider inventive step and was usually completed within 15 months of the filing of the complete application. The current law does consider inventive step, and further requires that all applications must be placed in order for acceptance within 12 months of issuance of the first examination report. After acceptance, a notice is issued in the Journal, followed by a 3-month pre-grant opposition period and a final notice of grant (previously referred to as sealing), which takes place as soon as possible after the expiry of the opposition period. The new law also requires publication of unexamined applications at 18 months after earliest priority. Patent renewal fees are payable on or before the 4th, 7th, 10th and 13th anniversaries of the New Zealand filing date of the complete specification or the international filing date of a PCT application.

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Chapter 7 Asia and Australasia

National patent documentation Due to the long retention of a single-publication grant procedure, most database producers have assigned the KD code NZ-A to the notice of acceptance of the granted patent, in historical records. Some early information can be derived from the very brief gazette notices published within a few weeks of filing in New Zealand, which correspond to the KD code NZ-D0, although few sources collect this information. As with Australia, New Zealand practice has at various times allowed for the laying open to public inspection of some or all of its pending applications; from 1946, this could happen as early as 3 months after New Zealand filing. The primary information tool of the IPONZ is the New Zealand Patent Office Journal, first published in 1912, which is now produced in electronic form once per month, usually in the last week of the month. The contents are available for the most recent six months in the form of a PDF version, and only contain the general notices. The main content is collated into the so-called “Journal Facility”, consisting of a simple search interface enabling users to view entries in each of the standard Journal sections, back to 2003. Search results do not display as PDF pages, but provide links to the Register entry for the selected answer(s). Direct searching of the Register provides many more available fields than the Journal Facility. All applications, by whatever route, are assigned an application number from the same series/format. The Journal entries for different application routes, recorded in the section Application for Patent Submitted (or the earlier paper Journal section Applications for patents), are therefore indistinguishable apart from the dates – a Convention filing is recorded in the Journal approximately 1–2 months after filing in New Zealand (13–14 months from priority), whereas a PCT national phase entry is listed approximately 1–2 months after the national phase entry deadline of 31 months, i.e. usually some 33–34 months after priority. Provisional applications listed in the section Provisional Application for Patent Submitted were historically distinguished by a P suffix to the filing number, which was dropped once the corresponding complete application had been lodged (unlike the US provisional system which allocates a distinct filing number to any application deriving its priority from a provisional application). However, this suffix now appears to have been discontinued. A provisional application may be closed (abandoned) but used as a priority for filing a new complete application, which is allocated its own new number. Applications entering New Zealand under the PCT system follow a similar sequence, with national phase entry being listed in the Application for National Phase Entry section of the Journal once all formalities have been completed, including the lodging of any necessary translations; previously these were in the overall Applications for Patents section of the paper Journal. Unlike many

New Zealand

249

Table 7.20: New Zealand KD codes (post 2017). KD code

Document type

A

Original filed specification (published at acceptance)

A

Original filed specification (published at OPI date)

A

Accepted specification

A

Re-publication of accepted specification, following an amendment or correction of error

B

Granted specification

B

Re-publication of granted specification, following an amendment or correction of error

C

Publication of a contested patent specification, amended following re-examination, revocation proceeding, court order or similar process

C

Re-publication of a contested patent specification, following an amendment or correction of error

countries, New Zealand does not republish separate translations of non-English language PCT published applications; the Journal section Patent Application made Open for Public Inspection includes references to any earlier WO-A pamphlet when this stands in place of a national document, and the certified translation is placed in the Register record. Applications are accorded a filing date in New Zealand which corresponds to the filing date of the PCT international application. After completion of substantive examination, the publication number of an accepted application is the same as the application number, and there is a separate announcement in the Application for Patent Accepted section (or earlier Complete Specifications Accepted section of the paper Journal), including an abstract. Specifications are not automatically published, but copies (without formal front page data) are added to the case record in the Register. The application in its final form for acceptance is designated NZ-A2. If the prosecution has taken less than 18 months, the application as filed is added to the Register at the same time as the NZ-A2, and designated a NZ-A0 publication; if the 18 month deadline for publication passes without the case reaching acceptance, the specification is laid open at that point and designated NZ-A1. The patent applicant must normally lodge a request for sealing within 4 months of the date of publication of the accepted specification, although this may be extended in certain circumstances. If no opposition is filed and the request for sealing has been lodged, the patent will be sealed shortly after the expiry of the opposition period, and a copy of

..

..

Journal announcement

none

 (..)

 (NPE ..)#

 (..)

Complete application number

NNNNNN

(n/a)

..

Journal announcement

Provisional application number

(n/a)

National application ( Act) – grant <  months

P (..)

NNNNNNP

PCT/JP/  (..)

PCT International Application

PCT national phase ( Act) JP - (..)

New Zealand National number application format ( Act)

Priority application

Document type

Table 7.21: New Zealand application and publication numbering.

..

 (..)

National application ( Act) – grant >  months

PCT/IB/  (..)

FR - (..)

PCT national phase ( Act)

..

..

  (..) (NPE ..)#

n/a

Parent = n/a  (..)

Patent of addition ( Act)

250 Chapter 7 Asia and Australasia

#

*

..

..

NZ -B

NZ -B ..

..

..

NZ -A (..)

..

..

NZ -A (..)

..

..

NZ -B

..

..

Due ..

NZ -B

..

..

NZ NZ -A -A (..) (..)

..

This case entered opposition proceedings; the normal interval between acceptance and sealing is less than 6 months. NPE = National Phase Entry

Journal announcement

..

..

..*

Grant date

Grant specification

..

NZ -A (..)

..

NZ NNNNNN- NZ -A A(n) (..)

Journal announcement of acceptance

Accepted application

..

..

..

..

Acceptance date

..

..

n/a

Journal announcement

NZ NZ -A -A (..) (..)

NZ -A (..)

NZ -A (..)

n/a

Open to Public Inspection

New Zealand

251

252

Chapter 7 Asia and Australasia

the final granted specification will be added to the Register record as a NZ-B2 document. The original Patents Sealed section of the paper Journal consisted of a listing of the publication numbers of the sealed patents, with no other bibliographic data; the electronic Journal section Patent Granted provides a link to the Register entry with the preceding bibliographic data as well. New Zealand only recently started to use the WIPO ST.50 standard for correction documents, from 22nd February 2017. Prior to this, if a form of correction was required, the IPONZ Register would include a second electronic copy of the specification, in which the replaced section(s) or page(s) were struck through and endorsed “Now amended” with an official date stamp, and replacement section(s) or page(s) were inserted and endorsed “As amended”. No new KD code or bibliographic record was issued. All national specifications which are available from the IPONZ website consist of the main text only; there is no standard front page, nor are the specifications laid open automatically. There is no publication server as such – searches may be conducted to identify documents of interest, and links to the complete texts are provided from the result list. The IPONZ began to use a KD code system from February 2017, for applications filed under the new Act. Table 7.20 summarises the codes listed on the IPONZ website and Table 7.21 lists the various formats of application and publication numbers. Note that there is no separate KD code for patents of addition, which are indistinguishable from independent patents unless the Register record is consulted.

Databases and database-specific aspects If a PCT international application claims priority from one or more earlier New Zealand national applications, and subsequently re-enters New Zealand in the national phase, a new Register record is created based upon the later filing number allocated upon national phase entry. No forward links are created from the register record(s) for the earlier priority application(s), which are almost always allowed to lapse and marked as “Voided – pre-acceptance”. Similarly, provisional applications may be closed prior to the lodging of a corresponding complete application, but used instead as a priority for a new application. Both of these practices result in substantial numbers of application numbers being allocated but never leading to granted patents, resulting in gaps in the number sequence of granted New Zealand specifications. Although archives are available for many years, it is therefore difficult to be certain about the comprehensiveness of any collection of New Zealand patents. The IPONZ has not so far contributed to the Authority File portal at WIPO18 which would enable third party database

References

253

producers to audit their databases. A summary of publicly available databases is given at Table 7.22. The first unexamined applications laid open under the Patents Act 2013 were published in September 2014. However, under the 1953 Act, “publication” did not enter the bibliographic record unless there was a corresponding Journal announcement, which formerly took place only on acceptance, as an NZ-A record (granted, not sealed). It is not clear whether cases which were modified during opposition were noted, since the final sealed document was only announced by number, with no distinguishing KD code if amended. Since the passing of the 2013 Act, cases which have been published after acceptance are still coded as NZ-A(n) documents in most databases, even though the IPONZ itself allocates a code NZ-B2 to the specifications after the close of the opposition period. Table 7.22: New Zealand patent databases. Producer Service name

Platform

Coverage

IPONZ

Journal of IPONZ

www.iponz.govt.nz/ about-iponz/thejournal/

Monthly; most recent  issues in PDF (general notices only). Loaded as online search file .. onwards, no PDF version.

IPONZ

Patent Search (New Zealand Patent Register)

www.iponz.govt.nz/ manage-ip > Search Patents

NZ accepted patents, abstracts, – (excl. –) NZ accepted patents, bibliographic data, complete specifications, legal status data +.

LexisTotalPatent One Nexis Univentio

www.lexisnexisip. com/products/totalpatent-one/

NZ accepted patents, bibliographic +, full text, +

Questel

FamPat/FullPat

www.orbit.com

NZ accepted patents, bibliographic and full text +

Archives New Zealand

Archway

www.archway.ar chives.govt.nz/

Historic NZ patent records, – (records older than  years transferred to Archive).

References 1 A. Liao, A. (1995). China’s Patent Law. In Law Lectures for Practitioners, pp.204–220. Hong Kong: University of Hong Kong Faculty of Law/ Hong Kong Law Journal Ltd. Retrieved from http://sunzi.lib.hku.hk/hkjo/view/14/1400201.pdf [Accessed 2020.02.03]

254

Chapter 7 Asia and Australasia

2 (a) WIPO. (2020.01.29). Application of the Patent Cooperation Treaty, with effect from July 1, 1997, to the Hong Kong Special Administrative Region. PCT Notification No. 121, 10th June 1997. Retrieved from www.wipo.int/treaties/en/notifications/pct/treaty_pct_121.html. and (b) WIPO (209.01.29). Non-Application of the Madrid Agreement, the Madrid Protocol and the PCT to the Macau Special Administrative Region. PCT Notification No. 143, 12th July 2000. Retrieved from www.wipo.int/treaties/en/notifications/pct/treaty_pct_143.html. 3 Adams, S. (1995). Patent documentation from the Pacific Rim countries. World Patent Information, 17(1), 48–61. 4 Government of Hong Kong (1997). Patents Ordinance 1997, Cap. 514, 29th May 1997, in force from 27th June 1997. 5 Government of Hong Kong (2019). Patents (Amendment) Ordinance 2016, (No. 17 of 2016), in force from 19th December 2019. 6 Ganguli, P. (2003). Indian path towards TRIPS compliance. World Patent Information 25(2), 143–149. 7 Balasubramanian, M (2005). Developments in the patent situation in India. In Proc. Patent Information Users Group (PIUG) Annual Conference, Crystal City, VA, USA, 21–26 May 2005. Unpublished. 8 IP India (2020.02.06). Jurisdiction of Patent Offices. IP India. Retrieved from www.ipindia. nic.in/jurisdiction-of-patent-offices.htm. 9 IP India (2020.02.06). Manual of Patent Office Practice and Procedure, sections 3.03 and 3.05.02-3.05.03.Version 3.0, 26th November 2019. IP India. Retrieved from www.ipindia.nic.in/ manual-patents.htm. 10 Kim, B-I., Heath C. (eds.) (2015). Intellectual Property Law in Korea. (2nd ed.), § 2.01[A]. Alphen aan den Rijn: Kluwer Law International B.V. 11 Lee, Keun (ed.) (2012). The economics of intellectual property in the Republic of Korea. WIPO Publication No. 1031(E). Geneva: WIPO. 12 WIPO (2020.02.21). Examples and Kinds of Patent Documents. WIPO Handbook on Industrial Property Information and Documentation, part 7.3.2., p.73. WIPO. Retrieved from https://www.wipo.int/export/sites/www/standards/en/pdf/07-03-02.pdf. 13 WIPO (2020.03.05). Recommendation for the numbering of applications for industrial property rights (IPRs). WIPO Standard ST.13 (May 2008 edition), Paragraph 5(b). WIPO. Retrieved from www.wipo.int/export/sites/www/standards/en/pdf/03-13-01.pdf. 14 WIPO (2020.03.05). Recommended standard codes for the identification of different kinds of patent documents. WIPO Standard ST.16 (October 2016 edition), Paragraph 11, Groups 4, 5 and 6. WIPO. Retrieved from www.wipo.int/export/sites/www/standards/en/pdf/03-16-01.pdf. 15 Kusardy, R. (1985). The need for a regional patent organisation in South-East Asia. World Patent Information, 7(4), 264–267. 16 Garcia, E.P. (2017). Intellectual Property and development: the ASEAN story. WIPO Magazine No. 4, 30–36. 17 Molecular Plant Breeding Nominees Ltd -v- Vialactia Biosciences (NZ) Limited [2005] NZIPOPAT 25 (12th September 2005); Agriculture Victoria Services Pty Ltd -v- Vialactia Biosciences (NZ) Limited [2005] NZIPOPAT 26 (12th September 2005). 18 WIPO (2020.03.10). Authority File of Published Patent Documents Provided by Offices. WIPO. Retrieved from www.wipo.int/standards/en/authority_file.html.

Chapter 8 South America and Mexico Introduction The modern nations of South America consist of 12 sovereign states and one French dependent territory (French Guiana), which is subject to French national laws. A summary of some of the IP-related international treaties to which these countries are party is given at Table 8.1. The same Table includes information concerning the relevant regional trading blocs or free-trade areas, and for the 1993 Convention on Biological Diversity (CBD). This latter has particular relevance to South America, whose nations are sensitive to issues of biopiracy. The provisions of the CBD can have implications for those applying for IP rights over material sourced or developed from national genetic resources, especially plant genetic material which is increasingly being used as a source for development of new pharmaceutical molecules. In addition to the widely-recognised international treaties, some of the South American states are still signatories of two older regional IP treaties. These are the Inter-American Convention for the Protection of Inventions, Designs and Industrial Models, signed at Buenos Aires on 20th August 1910 and still in force in Brazil, Ecuador, Paraguay, and Uruguay and the Bolivarian Patent Convention, formally the Agreement on Patents and Privileges of Invention, signed at Caracas on 18th July 1911. The Inter-American (or Pan-American) Convention provides at Article III for a legal basis recognising a 12-month priority period between member states, independently of the Paris Convention. The Caracas Agreement is still in force in Colombia and Venezuela, and provides for a mutual 2-year priority period. Many of the now-independent nations have a history of patent legislation dating back to the middle of the 19th century; in particular, Chile had a patent law from 9th September 1840, providing for a 10 year term, whilst other national laws were in place by 1858 (Bolivia), 1864 (Argentina), 1869 (Colombia and Peru), 1882 (Brazil and Venezuela) and 1885 (Uruguay). The three “Guiana” states (Guyana, Suriname and French Guiana) implemented patent legislation inherited from the United Kingdom, the Netherlands and France respectively. A summary of the historical development is outlined briefly in a WIPO symposium from 19841 and a paper in the Latin American Research Review of 20172, although the latter offers somewhat differing dates for many of the countries reviewed. Today, ten out of the thirteen (excluding Guyana, Suriname and French Guiana) have both modern patent law and utility model law in place. By contrast with Africa, which was only represented by South Africa, five of the South American https://doi.org/10.1515/9783110552263-008

BR

CL

CO

EC

Brazil

Chile

Colombia

Ecuador

PY

PE

SR

UY

VE

Paraguay

Peru

Suriname

Uruguay

Venezuela

–



†

.. (Suspended)

..

..

..

..

..

.. ..

..

..

..

..

.. ..

..

..

..

..

..

..

..

..



..

..

..

..

WTO

..

Associate

..

..

.. ..

Paris Convention

MCS*



–



CAN*

..

..

..

..

..

..

PCT

..

..

..

..

..

..

..

..

..

..

..

..

..

CBD

#

* CAN = Comunidad Andina de Naciones (Andean Community – formerly the Andean Pact until 1996); MCS = Mercado Común del Sur (Mercosur). French Guiana is an département d’outre-mer of France; French treaty ratification/accession status and national patent law applies. † As from 17th September 2008, the provisions of the Cartagena Agreement are no longer in force, but Venezuela’s rights and obligations under the Agreement continued for a further 5 years.

GY

Guyana

FR

BO

Bolivia

French Guiana

AR

Argentina

#

ST. code

Country name

Table 8.1: Treaty and trading status of South American states (entry into force).

256 Chapter 8 South America and Mexico

National patent systems in South America

257

nations figured in the analysis of patent system strength by Papageordias et al. in 20143 – these were Chile (which was adjudged to be nearly comparable to Japan), Brazil, Colombia, Argentina and Venezuela. An alternative ranking, based solely on patent grant rates, is given in Table 8.2. In terms of economic activity, which is often related to a maturing of the national IP system, Brazil was the first South American nation to be recognised (by 2009) to have entered the top 10 world economies, and Argentina is now counted amongst the G20 group of countries. The political and economic situation in Venezuela means that at present it is far less active in the field of intellectual property than the nominal size of the national economy would suggest; information about patenting activity is hard to obtain and very out-of-date. Table 8.2: Major patenting authorities in S. America, based on average grant rates 2013–2017. Office

ST. code











Average –

Brazil

BR













Argentina

AR













Chile

CL













Colombia

CO













Peru

PE













Bolivia

BO













Guyana

GY

*



*







Uruguay

UY

*





*





Ecuador

EC













* Source: WIPO Statistics Data Center. A * symbol in the Table indicates that no data has been reported to WIPO for that year; not considered in calculating averages. At the time of writing, 2017 was the most recent year for which all countries had lodged their data with WIPO.

National patent systems in South America Patenting activity and publication rates across the nations fall into three broad categories; the lowest levels of activity are found in the three “Guiana” states, the middle group of Bolivia, Ecuador, Paraguay, Uruguay and Venezuela have low to moderate levels of granting, and the “big five” (in descending order of grant volumes) of Brazil, Argentina, Chile, Colombia and Peru will be considered separately in the following sections, since these have all been to some extent

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recognised as significant countries for international applicants, and their data have been integrated with international family databases for search purposes. Although many of these countries have a long history of granting patents, relatively few adopted the European/US practice of publishing specifications at grant from the beginning. With the exception of Brazil, most published only abstracts or claims in a periodical patent gazette, until well into the 20th century; complete specifications have only become more readily obtainable since recent law changes and the ability to publish in electronic form (often only achieved through collaborations with WIPO as part of their global capacity-building projects). A further characteristic of the region is the inclusion of compulsory working provisions in the patent legislation, requiring patentees to show proof of using the patented invention within the country of grant; failure to do this may result in the grant of compulsory licences or even forfeiture of the patent. On the positive side, some historical legislation allowed for a grace period allowing for prior public use, to establish the market viability of an invention before patent filing.

Guyana, Suriname and French Guiana Guyana (GY), the former colony of British Guiana, became independent in 1966. The national patent legislation was last amended in 1973 and is based on the old UK law. It grants patents for a term of 16 years; it also permits re-registration of current British national patents and European Patents validated in the United Kingdom, within 3 years of the original grant – these cases will have a term corresponding to their parent, and expire or lapse with them. The state of Suriname (SR) was formerly Dutch Guiana, and also achieved independence, by 1975. However, there is no record of the promulgation of any substantive national patent law, and no patents appear to have been granted since independence. Some authorities consider that the old (1910) Dutch law is still in force, but the exact status is very uncertain. As an overseas territory of France, French Guiana automatically recognises granted French national patents and European Patents validated in France.

Bolivia, Ecuador, Paraguay and Uruguay The only state from this group which is a signatory to the PCT is Ecuador (EC), and that is relatively new, dating from 2001. The substantive patent law in Bolivia (BO) dates from 1916, with a non-TRIPS compliant term in the original text. The country has also implemented Decision 486 of the Andean Community (formerly

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259

known as the Cartagena Agreement or the Andean Pact group of countries), which provides a common intellectual property regulation amongst the member states of that group, including grants of both patents with a 20-year term and utility models with a 10-year term. Uruguay’s (UY) earliest patent legislation dates from 1877, but the current law is from 1999, whilst Paraguay (PY) has also updated its 1925 law as of 2000. Both countries operate parallel legislation for patents and utility models. Ecuador, as well as being bound by the PCT, has also implemented Decision 486 of the Andean Community. Nonetheless, statistics on publication rates still record Ecuador as granting fewer than 100 cases per year; it remains to be seen what will be the impact of national phase entries under the PCT into the Ecuadorian system. The remaining states in this group are also averaging well under 100 cases granted per year.

Brazil Historical aspects and current law Brazil has a long history of IP rights, having been first granted a system in 1809, under the Portuguese monarchy. The law was based on the English Statute of Monopolies and granted a 14 year term. Further laws were introduced by 1830, although a more significant patent legislation dates from 1882, amended in 1945. The country was one of the original signatories of the Paris Convention of 1883, entering into force on 7th July 1884. The country was also an early adopter of the PCT, which entered into force for Brazil from 9th April 1978. Brazil became an operating International Search Authority under the PCT from 7th August 2009. Brazil is alone amongst the South American nations to use Portuguese as its official language, and from 1st January 2009, this became an allowable publication language for PCT published applications4. The national patent office was created in 1970 and is called the Instituto Nacional da Propriedade Industrial (commonly known by its abbreviation INPI or INPI-BR to distinguish it from the French patent office), and the standard country code is “BR”. Prior to 1971, Brazil’s patent law was a registration system, without substantive examination, and it was prominent as a fast-publishing country. In 1971, a new Industrial Property Code was passed as Law No. 5772/71, which took the same approach as India by excluding chemical products, notably pharmaceuticals, from patent protection. This law introduced a system of dual publication, with the aim to publish unexamined applications at 10 months after receipt in Brazil, and allowing substantive examination to be deferred for up to 2 years from filing. After the WTO was formed, Brazil was required to ratify the TRIPS Agreement in order to

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become a member, which meant accepting that patent protection should be allowed for all forms of subject matter, including pharmaceuticals. A new Law on Industrial Property (No. 9279/96 of 14th May 1996) was enacted, and most of its provisions entered into force a year later. The exceptions were Articles 230, 231 and 239, relating to the “pipeline” provisions for pharmaceuticals, which entered into force immediately. There have since been a number of amendments, but the bulk of the legislation is found in the 1996 law. One amendment worth noting is Law No. 10196/01 of 14th February 2001 which amended Article 229 of the 1996 law. The new Article 229-C which this law introduced requires that pharmaceutical patents may only be granted with the specific consent of the National Health Surveillance Agency (ANVISA); after substantive examination is completed by INPI, the case is forwarded to ANVISA for final approval. The new law provided for the first time for a patent (or certificate) of addition and for “pipeline patents” for a transition period under the TRIPS derogation. All applications for chemical products or processes filed before 31st December 1994 and applications for pharmaceutical or agrochemical methods filed between 1st January 1995 and 14th May 1997 were rejected unless converted into “pipeline” applications; these must be based on a foreign priority and are only granted in Brazil if the corresponding priority document is also granted. The Brazilian term was set equal to the corresponding foreign grant term. Grants for utility models resumed under the 1971 law, having been briefly abolished in 1969. One characteristic of the new law is a stronger stance on the use of national genetic resources, especially in respect of plant extracts for development of bioactive molecules; the law at Art. 10 excludes from patentability “all or part of natural living beings and biological materials found in nature, even if isolated therefrom, including the genome or germplasm of any natural living being, and natural biological processes.” Furthermore, applicants are required to certify at the time of filing whether the invention was made by using samples of Brazilian genetic material obtained after 30th June 2000, and to provide details of the required “access certificate” and associated traditional knowledge if it does. Applications are published at 18 months as unexamined cases, followed by a substantive examination request within 3 years of filing or priority. Prior to the 1996 legislation, the terms allowed were 15 years for a patent and 10 years for a utility model; these were amended from 1st January 1997 to become 20 years for a patent and 15 years for a utility model, which is an unusually long term for this form of IP right. Brazil publishes many more unexamined applications per year than granted patents (as a rough approximation, the ratio is 10:1) and there are substantial backlogs. As a result, there are guaranteed minimum terms of 10 years from grant for patents and 7 years from grant for utility models,

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261

unless there is pending litigation or other force majeure reasons preventing completion of substantive examination. Certificates of addition have the same expiry date as their parent patent. Once substantive examination is completed, the applicant must pay an issuance fee within 60 days of allowance; failure to do so results in the case being abandoned. Granted patents can be opposed by an administrative nullification procedure before INPI if lodged within 6 months of grant, or before the courts at any time during the term of the patent.

National patent documentation The native numbering formats for Brazilian documents are somewhat unusual, in that for some periods of time, they included letter portions denoting the different types of IP right, rather than the standard KD code suffixes. They also include a check digit which is placed after a hyphen at the end of the number; this is usually removed when data are loaded into electronic databases. New types of number had to be introduced with the passage of the 1996 legislation. In the following Table 8.3, the spaces within the elements of each number are given for clarity, and do not always appear in the printed version. The first 2 digits of patent application numbers represent the year of application (with the exception of the pipeline applications, see footnote), and the number is retained throughout all publication stages. The corresponding first 2 digits of a utility model application are the year of application minus 20; i.e. the example MU 74 00055-1 U was filed in 1994. This could lead to confusion, in that some search services might re-format original numbers MU YY NNNNN and PI YY NNNNN to the same publication number BR YYNNNNN, which would retrieve two answers, one representing a patent application BR YYNNNNN-A and the other a utility model application BR YYNNNNN-U from 20 years later. Similarly, industrial models and industrial designs use an application number series preceded by YY minus 40; i.e. the example MI 55 00728-7 was filed in 1995. In Espacenet, the PI or MU prefixes were retained in publication numbers from 2004 onwards to ensure more precise retrieval, and must be used as part of the number to avoid a null result. There may be similar confusion in relation to the pipeline applications, since these use the KD code appropriate to when they were filed (1996–97) but were not published until well into the 2000s, when the examination process started. See Figure 8.1 for a comparison of a regular 2011 application and a pipeline application with the same publication number, but different KD code.

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Table 8.3: Brazilian number formats 1971–date. Period

Document type

Number as printed

DocDB format

PI  - A

BR-A

Utility model

MU  - U

BR-U

Industrial model

MI  -

(not in database)

Industrial design

DI  -

(not in database)

PI  - A

BRPI-A

Certificate of addition

C  - A (addition to PI  - A)

BR-E

Utility model

MU  - U

BRMU-U

Pipeline application*

PI  - A

(not in database)

– Published patent application

PI  - A

BRPI-A

Granted patent

PI  - B

BRPI-B

Published certificate of addition#

C  - E

BR-E

Granted certificate of addition#

C  - F

BRC-F

Published utility model application

MU  - U

BRMUU

Granted utility model

MU  - Y

BRMU-Y

Granted pipeline application*

PI  -K B

(not in database)

Published patent application

BR   - A

BR

Granted patent

BR   - B

BR

Granted patent, PCT entry

BR   - B

BR

Granted patent, divisional

BR   - B

BR

Certificate of addition

BR   - E

(not in database)

Utility model application

BR   - U

BR

– Patent publication

– Patent publication #

–date

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263

Table 8.3 (continued ) Period

Document type

Number as printed

DocDB format

Granted utility model

BR   - Y

BR

Granted utility model, divisional

BR   - Y

BR

#

later certificates of addition to the same basic patent will have serial number prefixes C2, C3, etc. which may be used as KD codes by some database producers. * note that both the application and grant stage have numbers starting with PI 11, and the additional K suffix at the -B stage. There may be confusion with normal patent applications filed in the year 2011, which will publish with the KD code -A2. Some database producers have adopted the KD code -A3 to distinguish the pipeline applications. Pipeline applications were only available in the period 1996.05.15 to 1997.05.14. Pipeline application

Standard national patent application

Figure 8.1: Brazilian pipeline application numbering and kind code.

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In 2012, a new system compliant with WIPO Standard ST.13 was introduced. This uses a two-digit Kind of Right indicator as the prefix, followed by a 4-digit year of application and a 6-digit serial number. The Kind of Right indicators in use are two major series: patent rights start with a “1” and include 10 (patent), 11 (PCT filing), 12 (divisional application) and 13 (certificate of addition), while utility model rights start with a “2” and include 20 (utility model), 21 (PCT filing) and 22 (divisional application). Examples of some of these formats are shown in Table 8.3, together with the corresponding KD suffixes. Brazilian designs use the same number format, prefixed by a “3” series. Complete details of this system were provided in a WIPO survey of 2016/2017, now included in the WIPO Handbook5. The adoption of the WIPO correction standard, ST.50, by Brazil in 2008 and the subsequent 2012 change in numbering system has resulted in a large array of unusual KD codes. In addition to the adoption of the suffix numbers “8” or “9” for corrected first page or corrected complete specification, respectively, INPI has decided to increment the alpha part of the code by one letter, to indicate a second generation correction. More details of these KD codes are laid out in Tables 8.4 and 8.5; the non-official series of codes are used for ad hoc translations of Brazilian documents into another language, usually commissioned for the purposes of legal proceedings. Table 8.4: KD codes used for Brazil (main series). Period

Document type

Kind of Document code

First correction

Second correction

–* Patent application (including pipeline application)

A

n/a

n/a

Granted patent

B

n/a

n/a

Certificate of addition (multiple possible)

C-C

n/a

n/a

Patent/utility model filing (no document)

D

Industrial design application

S

n/a

n/a

Granted design

S

n/a

n/a

Utility model application

U

n/a

n/a

Granted utility model

U

n/a

n/a

Brazil

265

Table 8.4 (continued ) Period

Document type

Kind of Document code

First correction

–date

Published patent application, without search report (including pipeline applications)

A

A (front page), A (complete)

Granted patent (including pipeline applications)

B

B (front page), B (complete)

Published certificate of addition application, without search report

E

E (front page), E (complete)

Granted certificate of addition F

F (front page), F (complete)

Published utility model application, without search report

U

U (front page), U (complete)

Granted utility model

Y

Y (front page), Y (complete)

Second correction

C (front page), C (complete)

G (front page), G (complete)

Z (front page), Z (complete)

* Not all document kinds were published for the whole of this period. Table 8.5: KD codes used for Brazil (unofficial translation series). Document type

Kind of Document code(s) for source

Kind of Document code(s) for output

Non-official translation of published patent application

A, A

K

Non-official translation of granted patent

B

K

Non-official translation of published utility model application

U

K

Non-official translation of granted utility model

Y

K

Non-official translation of published application for certificate of addition

E

K

Non-official translation of granted certificate of addition

F

K

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Databases and database-specific aspects As a fast-publishing country with relatively well-organised documentation, Brazil is one of the few South American countries whose patents have been covered in commercial multi-country databases for many years, and coverage typically dates back to the early 1970s. Additional details can be found in Chapter 11; the following Table 8.6 is indicative of the number of single-country sources available. Any services which depend upon the DocDB bibliographic file as primary data (e.g. Espacenet) will have the same content coverage for Brazil.

Table 8.6: Brazilian patent databases. Producer

Service name

Platform

Coverage

INPI

Base de Patentes, Base de Desenhos

www.inpi.gov.br

BR-A bibliographic +, images + (some from +), BR-B images +

INPI / EPO

Espacenet

http://worldwide. espacenet.com

BR-A bibliographic +, BR-B +, BR-U +

INPI / OEPM / EPO

Latipat

http://lp.espacenet. com

BR-A, BR-U + (gaps in coverage). Approx. % with images.

INPI / WIPO

PatentScope

www.wipo.int/ patentscope

BR-A bibliographic +, abstracts +. Approx. % with images.

PROSUR

Buscador de Patentes

http://prosur.org/trami tacion/buscador-depatentes

Unclear – no readily accessible help files.

www.lexisnexisip.com/ products/total-patentone/

BR-A full text (OCR) +, machine translations + BR-B +, BR-U +, full text from +

Lexis TotalPatent One Nexis Univentio

The national gazette Revista da Propriedade Industrial (RPI) is published weekly and is made available in PDF or searchable text formats. As far as classification is concerned, patent documents are currently classified according to the International Patent Classification (IPC), but Brazil is introducing the use of the more comprehensive Cooperative Patent Classification (CPC) system, as its national classification scheme. More information resources at the INPI website (www.inpi.gov.br) include the “e-Patentes” portal, which provides for

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267

electronic filing of applications, and the national register and file inspection service. In recent years, the search facilities available at the INPI’s own website have improved dramatically. Many of the older image (PDF) documents are available on Espacenet, and the INPI site links through to here when a full document image is selected. WIPO has also assisted INPI in the process of digitising their national collection, and the results can be seen both on the INPI website and on PatentScope. Legal status details are incorporated into the record display from INPI, including a statement of the appropriate legislation section and gazette publication for the different stages towards grant, as well as notice of expiry or lapse. The RPI includes many detailed sections relating to prosecution stages, including (for example) national phase entry under the PCT, early publication of applications before 18 months, notification of divisional applications, failure to complete formalities examination, post-grant references to ANVISA, and so on. The Latipat database is supported by the Spanish national patent office, the OEPM, and detailed coverage tables for all of the countries contained in the database are available at the OEPM website, under the INVENES portal (http:// consultas2.oepm.es/InvenesWeb/faces/contenidoBases.jsp).

Argentina Historical aspects and current law The Argentine Republic proclaimed its independence from Spain in 1816, as part of the United Provinces of the Rio Plata, which included present-day Bolivia, Paraguay and Uruguay; the present state was not unified until the 1850–1860 period. The earliest patent law, No. 111, dates from 11th October 1864; patent no. 1 was filed on 29th May the following year and granted on 1st December 1866, for a term of 5 years (optional terms of 10 or 15 years were also available, at the choice of the patentee). Despite this early start, Argentina has not been at the forefront of modern patent procedures; the country’s accession to the Paris Convention did not happen until 1967, and it is still not a contracting state to the PCT, although there are indications that this may change soon. The formal name of the patent examining office is the Administración Nacional de Patentes (ANP, National Patents Administration), a part of the Instituto Nacional de la Propiedad Industrial (INPI), which was created in 1995 and – like Brazil – is sometimes referred to as INPI-AR to distinguish it from other offices which use the same root abbreviation. The INPI website is at www.inpi.gob.ar. The standard country code for Argentina is “AR”.

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The current act is Law No. 24,481 of 30th March 1995, on Patents and Utility Models, as amended. The provision of patent protection for pharmaceutical products was included in this law, but did not come into force until 5 years later. Argentina implemented a pipeline application system until the national law was fully in force. The normal course of prosecution consists of an initial examination for formalities, followed by publication of the application at 18 months after filing, in the weekly gazette, Boletín de Patentes de Invención y Modelos de Utilidad. The first publications under the new act appeared in the gazette dated 25th September 1996 – the 1995 law came into force with the repeal of the 1864 law on 13th January 1996. Until 2018, applicants had 3 years from filing in which to request substantive examination; this was reduced by an amendment in Presidential Emergency Decree No. 27/2018 to only 18 months i.e. virtually simultaneous with the unexamined publication. There is a second publication at grant, this time appearing in the monthly Boletín de Patentes Concedidas (previously Patentes de Invención) and maintenance annuities become due thereafter; these have been in place since April 2004. Compulsory licences may be granted, on application, if the patent is not worked by the owner within 4 years of filing, or 3 years of grant. The 1995 law increased the patent term from 15 years from grant to 20 years from filing; utility models are also allowable, with a 10 year term. Patents of addition are available, with a term aligned to that of their parent or foreign equivalent, but not exceeding 10 years. On 5th June 2019, Decree No. 403/2019 was signed, published on the following day in the Official Gazette, and became effective sixty days later, on 6th August 2019. The major change in procedures was the introduction of more electronic transactions, including filing of certain documents in electronic-only format.

National patent documentation Argentina became a signatory to the Strasbourg Agreement on the IPC from 2008, and its documents are now published with IPC marks. Current databases record the date of publication as being the cover date of the respective issue of the gazette in which the announcement appeared. Specifications are not routinely published at grant, but the gazette includes an abstract and drawing. The gazette is searchable and downloadable in PDF format, and the previous 12 months of copies are available on the INPI website. The historical (pre-1995) and current format for application and publication numbers for the main series of documents is given at Table 8.7. Application numbers under the old Act ran in a continuous series, sometimes with a P prefix, and

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Table 8.7: Application and publication number formats in Argentina. Pre- Act

Patent example 

Patent example 

Patent example 

National filing

 (..)

 (..)

 (..)

Grant

AR -A AR -Q (..) (..)

AR -A (..)

Post- Act

Patent example 

Patent example 

Patent example 

Utility model example 

Utility model example 

National filing

 (..)

P (..)

P (..)

M (..)

M (..)

Unexamined AR -A AR -A AR -A AR -A AR -A publication (..) (..) (..) (..) (..) Grant

AR -B AR -B AR -B AR -B (..) (..) (..) (..)

had reached the 300,000 range by 1995–96. Granted patents were given a new publication number, again in a continuous series, which had reached approximately 250,000 by the time the new law entered into force. A small number of grants were issued as late as 2002 using the old law formats e.g. AR 255595-A1 published 24th May 2002, based on application number 328782 filed 13th July 1994. From 1996 onwards, application numbers commenced a new format using a 2-digit year and 7-digit serial number, starting at 0100000 each year. Patent and utility model applications are distinguished by the addition of a P or M at the beginning of the number e.g. PYY01nnnnn or MYY01nnnnn. In common with many countries, this caused potential confusion in the first decade of the 21st century when YY was in the range 00–09; examples are known where different formats are printed on front pages, such as application number M000100539 rendered as 2000M100539U. After 2010, the format appears to have reverted to a 2digit prefix. The published unexamined documents also commenced a new number series at AR 000001-A1, which had exceeded 100,000 by 2015–16. During the transition period of the old law, there were some cases published which had been filed with the old application number format but used the new publication number style; for example AR 000002-A1 (new style) was published 4th December 1996 based

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on application 331693 of 8th March 1996 (old style). However, the new application series was soon fully implemented and the new styles for both numbers appeared consistently on publications from 1997 onwards. Under the new law, all document kinds are interleaved within the same publication number series; in the same week, it is not uncommon to find publications of all 4 major types. For example, on 28th December 2018, INPI published a block of document numbers which included numbers AR 101550 (A3), 101558 (A1), 101559 (A4) and 101566 (A2). The situation was largely the same under the old law, although it appears that old Act patents of addition may have been given the same publication number as their parent and distinguished solely by the KD code, whenever the parent and addition were published on the same day. Granted patents under the new law retain the same publication number as the earlier unexamined publication but change the KD code. It is important to note that the actual date of grant and entry into force is typically several months before the announcement in the Boletín de Patentes Concedidas; each bibliographic record has three dates, corresponding to the entry into force (INID 24, Fecha de Resolución), availability on request (INID 47, Fecha de Puesta a Disposición) and publication of the specification (INID 45, Fecha de Publicación). In the case of patent example 3 in Table 8.6, the record for AR 065216-B1 indicated grant on 18th October 2017, availability on request from 2nd November 2017 and publication on 28th June 2018. There is an additional date recorded without an INID code, called the Fecha de Vencimiento, which is the presumptive expiry date for the IP right (in the preceding case, 18th April 2028). Concerning the KD codes, it should be noted that Argentina is unusual in that it does not use the conventional U and Y codes for its utility models; these are coded A4-A6 and B4-B6 instead. Additional KD codes are shown in Table 8.8.

Databases and database-specific aspects Argentina participates in the regional South American PROSUR system, and some of the national data are loaded here, as well as the national online register and gazette. Coverage in the current Worldwide file on Espacenet, which is document-based, overlaps with the Latipat service, although the latter is likely to be merged into the new expanded Espacenet system in due course. The contents of other single-country databases covering Argentina are described in Table 8.9.

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271

Table 8.8: KD codes used for Argentina. Kind of Document code – application

Period

Document type

Pre

Granted patent

A

Patent of importation*

A, A or Q

Revalidated patent*

A, A or Q

Patent of addition

A

– date

Kind of Document code – grant

Patent application

A

B

Divisional patent application

A

B

Application for patent of addition

A

B

Utility model application

A

B

Divisional utility model application

A

B

Application for utility model of addition

A

B

Supplementary protection certificate

M

* Facsimile examples of these documents often carry the hand-written code AR-A1 but can be distinguished as patents of importation/re-validation by the accompanying front page crossreference to the foreign patent to which they are related. Different database producers have adopted the An or Q type codes to represent these document kinds.

Table 8.9: Argentinian patent databases. Producer

Service name

Platform

Coverage

INPI-AR

Register

https://consultas.inpi. gob.ar/ patconsultaavanzada

Unclear – presumed to be equivalent to online bulletins.

INPI-AR

Online Bulletins

https://portaltramites. inpi.gob.ar/Boletines/ Index

Granted patents +; published applications + (both PDF)

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Table 8.9 (continued ) Producer

Service name

Platform

Coverage

PROSUR

Buscador de Patentes

http://prosur.org/ Unclear – no readily accessible help tramitacion/buscador-de- files. patentes

INPI-AR / EPO

Espacenet

http://worldwide. espacenet.com

AR-A +, AR-A, -A and -A +, AR-A +, AR-A +, AR-Q –

INPI-AR / OEPM / EPO

Latipat

http://lp.espacenet.com

As for Espacenet

INPI-AR / WIPO

PatentScope

www.wipo.int/ patentscope

Bibliographic data +; abstracts +; PDF facsimiles E_research (Access on request)

c. , records, –. Expansion to  is under consideration.

Chile Historical aspects and current law The Republic of Chile declared its independence from Spain in 1818; this was recognized in 1844, but the country did not achieve its current territorial borders until after the War of the Pacific against Peru and Bolivia (1879–1883), which saw a considerable northern expansion. As noted in the introduction to this chapter, Chile has one of the oldestestablished patent law regimes in South America, the Law on Exclusive Privileges enacted on 9th September 1840, initially granting a 10-year term. This law granted a range of trade rights as well as patents for invention, but the first true patent was granted on 5th October 1840, to Andrés Blest, for a method of rum production. There were regular amendments during the 19th century6; further consolidation

Chile

273

took place in 1925 (Decree No. 588) and 1931 (Decree No. 958), the latter remaining in force for the next 60 years. Despite this early start in the field of intellectual property, Chile did not accede to the Paris Convention until 1991 or the Patent Cooperation Treaty until 2009 (see Table 8.1). The establishment of a patent office as a distinct government agency was not until 1st January 2009, when the current Instituto Nacional de Propiedad Industrial (INAPI) started operations, having been created under Law No. 20254 of 13th March 2008, as the legal successor to the Industrial Property Department of the national Ministry of the Economy, dating from the 1960s. The standard country code for Chile is “CL”; prior to changes in 1978, the code “CE” was used. In 1996, Chile became an associate member of Mercosur, having left the other major South American trade bloc, the Andean Community, some 20 years before, but there has been no substantive patent harmonisation between the members of this group to date. Spanish is the official national language of Chile, and on 22nd October 2014, INAPI became the second national intellectual property office using this language to become an International Search Authority under the PCT framework, and the second ISA in South America (Brazil having started operations in Portuguese from 7th August 2009). The current law is based on Law No. 19039 of 24th January 1991, as amended; the law did not enter into force until 2005, following publication of the implementing regulations. Following the passage of this law, pharmaceuticals were first accepted as patentable subject matter and further amendments (Law No. 19996 of 25th February 2005, in force from 1st December 2005) brought in the TRIPS standard patent term of 20 years from filing, from the previous 15 years from grant date. The first utility model legislation was also brought in with the 1991 law, creating a separate IP right with a 10-year term. The first case was granted on 23rd July 1993; so-called industrial models (now replaced by separate legislation for industrial designs) had been first implemented in 1925. Chile provides for patent term adjustment in cases of excessive administrative delay during prosecution, for which all subject matter is eligible, and under Law 20160, in force from 26th January 2007, it also provides for term extension for pharmaceuticals. For a period, up to 2004, national residents could also obtain a so-called precautionary patent, also known as a certificate of protection. This was valid for one year, and designed to enable inventors to engage in public trials of their invention without jeopardising their ability to file a full patent application later. A standard application for a patent of invention first undergoes a preliminary examination, after which the applicant is expected to arrange for publication of an extract of the patent in the official journal (Boletín de Propiedad Industrial, first issued in 1973) within 60 days; this publication must also

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indicate any prior art which has been found during the preliminary examination. At this point, the file dossier is made public and there is a 45-day period for pre-grant opposition to be filed. If none is lodged, the case proceeds to substantive examination. After grant, an issue fee is payable, followed by a single maintenance fee after the first 10 years of term, to renew the patent up to its full term of 20 years. Post-grant opposition is not provided for.

National patent documentation The INAPI conducts a formalities examination within 6–8 months of receipt of an application, which is followed by publication within 60 working days of completion; the complete specification is not published, but has been allocated a KD code A1 or A2 since 1991. As a result, the Chilean first publication (of cases not claiming foreign priority) is typically within 10 months of filing, rather earlier than the common standard of 18 months. Conversely, if a foreign applicant has taken advantage of the full 12 month priority period allowed under the Paris Convention before filing in Chile, their Chilean first publication can be as much as 22 months after priority (12+8+2) instead of 18 months (12+6). Once substantive examination is completed, publication of bibliographic details of a granted patent typically takes place some 3–4 months after the grant decision. The full list of current KD codes is shown in Table 8.10. Table 8.10: KD codes used for Chile. Period

Document type

Pre-

Granted patent

–date

Patent Divisional patent Revalidated patent* Precautionary patent# Utility model

Kind of Document code – application

Kind of Document code – grant B

A A A P U

B B B Y

* based on a previously-granted patent in another jurisdiction. only issued 1991–2004.

#

The format for application numbers typically follows a 4+5 digit pattern, YYYY/ NNNNN (where YYYY= year of application), although some examples of citations can reverse this to NNNN-YY. The unexamined publication numbers re-use the

Chile

275

application number, but reformat it into a 4+6 standard with a preceding country code and KD code suffix e.g. CL YYYYNNNNNN-A1. The final granted patent is numbered in a running series, with no year component e.g. CL NNNN-B. An example sequence is found in application 2004/01796 (filed 2004.07.16), published as CL 2004001796-A1 (2005.04.29) and granted as CL 43880-B (2008.09.30). The Official Journal is published daily. Copies from approximately the last month are available in PDF format at the INAPI website, under the Procedures and Services > Daily Notifications section or the direct address https://ion. inapi.cl/Patente/NotificacionesDiarias.aspx. Each issue consists of a simple listing in application number order, with an indication of the type of application (national patent application, PCT national phase entry, utility model application etc.) and a standard phrase or sentence indicating the stage of progress through prosecution which that case has reached. A separate section is devoted to cases where there has been an opposition filed. The interpretation of the individual events is not always clear unless the reader is familiar with the INAPI procedural steps. Copies of the specifications are not automatically supplied, but may be obtained after grant by consulting a separate website https://pagos. diarioficial.cl/Servicios/Patente/, which requires pre-registration; the same site also archives earlier copies of the Official Journal. The corresponding home page for the online register is at Procedures and Services > Patent Consultation or the direct address https://ion.inapi.cl/ Patente/ConsultaAvanzadaPatentes.aspx.

Databases and database-specific aspects The supply of Chilean data to most of the publicly available databases appears to have ceased between approximately 2008 until at least 2011, and some databases are still filling other gaps in coverage whilst others have added no new data for many years. It is clear from the Official Journal that pre-grant bibliographic data are still being issued, and that patents are still being granted. The coverage data for sources listed in Table 8.11 represents the best available information at the time of writing. More recent data can only be easily accessed on the INAPI website, which provides individual annual listings under the Open Data menu, in spreadsheet format; the direct internet address is https://ion.inapi.cl/Patente/Opendata. aspx. The PatentScope database mounted at WIPO extends the searchable coverage up to 2016, and the Latipat system also has comparable coverage. There are very few examples of complete specifications in electronic format, since the office does not routinely publish these, even after grant; the Diario Oficial website mentioned above requires payment for ad hoc orders.

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Table 8.11: Chilean patent databases. Producer

Service name

Platform

Coverage

INAPI

Base de Datos de Patentes –

http://barion.inapi.cl

–, granted patents.

INAPI

Advanced Search

https://ion.inapi.cl/Patente/ ConsultaAvanzadaPatentes. aspx

Patents, utility models.

INAPI

Official Journal

https://ion.inapi.cl/Patente/ NotificacionesDiarias.aspx

PDF, c.  month’s copies (issued daily)

INAPI

Patentes de Dominio Público

www.inapi.cl/dominio-publico/ –date (?), expired or www.dominiopublico.cl/) patents.

INAPI / EPO

Espacenet

http://worldwide.espacenet. com

CL-A bibliographic data c. +, (incomplete from ); CL-U bibliographic data +

INAPI / OEPM / EPO

Latipat

http://lp.espacenet.com

CL-B, bibliographic data only, – CL-A (+) CL-U (+)

INAPI / WIPO

PatentScope

http://www.wipo.int/ patentscope

CL-A, bibliographic data only, –

PROSUR

Buscador de Patentes

http://prosur.org/ tramitacion/buscador-depatentes

Unclear – no readily accessible help files.

Lexis Nexis Univentio

TotalPatent One

www.lexisnexisip.com/ products/total-patent-one/

CL-A, bibliographic data only, + CL-B, CL-U/Y, bibliographic data only, +

IBC Network

Chilean Patents –

www.ibcnetwork.org/) > E_research (Access on request)

c.  records, basic bibliographic data –.

Colombia

277

Colombia Historical aspects and current law Colombia declared its independence from Spain in 1819, and the present day country was initially part of “Gran Colombia”, a territory comprising most of the present-day countries of Colombia, Panama, Ecuador and Venezuela. This entity began to break up from 1830, but Colombia’s present day borders were not settled until the early 20th century. Evidence of the long-standing links between these countries in the north-west of the region can be seen even in the IP field, where, as noted in the Introduction to this chapter, the Caracas Agreement of 1911 appears to be still in force between Colombia and neighbouring Venezuela. Colombia is a full member of the Andean Community, and as such is bound by Decision 486 with respect to the operation of national and regional IP laws. It is a relatively recent signatory to the major international treaties and agreements administered by WIPO (see Table 8.1). The number of grants per year is increasing, but is still in the low thousands per year, of which approximately 10% are local utility models and the remainder are patents. The earliest intellectual property legislation in Colombia dates from 15th May 1848, revised by Patent Law No. 35 of 1869 and Decree No. 218 of 1900. There were further amendments in 1971 and 1978, influenced by the early Andean Community Decision of 1974. The current national law is found in Decree No. 2591 of 13th December 2000, which provided for the country to implement the latest Andean Community Decision, no. 486; this has been in force since 1st December 2000. Utility models and patents are governed by the same law. For patents, examination is in two phases; the first formalities examination is followed by publication at 18 months after priority of bibliographic details in the monthly official gazette, although earlier publication may be requested. This opens a 60-day pre-grant opposition period. The second phase of substantive examination is only proceeded with on request, and must be lodged within 6 months of the publication; otherwise the application is deemed abandoned. After grant, there is a second publication, with a further opportunity for opposition before the patent office or (on appeal) the Council of State. Post-grant amendments may include division or limitation of claim scope. Maintenance fees are due annually, only after grant. The patent term allowable is 20 years from the date of filing. Much of the same procedure applies for utility models, except that publication is 12 months after priority, the deadline for requesting examination (which does not consider inventive step) is 3 months, and the resulting grants have a 10 year term, again counted from the date of filing. Colombia has a system of patent term adjustment (Decree 1873 of

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29th September 2014) which compensates the applicant for patent term lost due to severe delays during prosecution. The national patent office is formally the División de Propiedad Industrial (DPI), a department of the Superintendência de Indústria e Comércio (SIC). The standard country code is “CO”.

National patent documentation The twice-monthly Gaceta de la Propiedad Industrial publishes combined information on all patent, trademark and trade name applications, listings of patents and designs granted, renewals, assignments, name changes and court decisions on industrial property. This is available in three different forms. The earliest archive consisted of links to PDF editions from 2006–9th May 2014 (issue 694); at the time of writing, a number of these links are no longer operating and it is believed that the information has been incorporated into SIPI (see later). The basic PDF issues were replaced by a separate searchable database covering the period from 20th May 2014 to 30th June 2016 (issues 695–765). The most recent issues, since 2016, are integrated with other parts of the national electronic IP system (Sistema de Propiedad Industrial, or “SIPI”). Links to all three sources are available from a sub-menu on the basic Industrial Property webpage of SIC (http://www.sic.gov.co/patente-de-invencion). The numbering formats are somewhat unusual, in that the format used in Colombian notifications has not been adopted in the EPO’s DocDB system, but redesigned to a completely new format. The following Table 8.12 illustrates the procedure of deriving the EPO standard from the available data, using the issue number of the Gaceta as the first three digits of a publication number. The national publication numbers re-start at 1 each year, with separate series for PCT national phase entries (patents or utility models) and national patent/utility model applications. For example, Gaceta issue 749 of 15th January 2016 contained PCT national phase entries (numbered 1–99), a single PCT utility model national phase (1), national patent applications (numbered 1–19) and national utility model applications (numbered 1–14). Consequently, it is of some importance to use the correct KD code when referring to these different publication types published in this period. From mid-2016, the Gaceta was incorporated into the searchable databases within the SIPI system, and the format of numbering changed. All applications now receive a 4+7 format number, preceded by two letters – all the examples in the patent field use the letters “NC” at present – this includes national applications, PCT entries and utility models. The national register is presented in the

 (Gaceta no. , .)

 (Gaceta no. , .)

NNNN (no KD code) CO GGGNNNN-KK# CO -A

Publication number

EPO format PCT/IB/ (..) NC / (..)*

CO -A (Gaceta no. , ..)

none NC / (..) CO -A (Gaceta no. , ..)

(AA) YYYY/ NNNNNNN CO YYYYNNNNNNKK

Priority filing

National application number

Publication number

#

* PCT national phase entry date; YY or YYYY = year of filing in Colombia. GGG = the issue number of the Gaceta in which the announcement appears.

–date

- (..)*

- (..)

YY-NNNNNN

National application number

CO -A

PCT/BR/ (..)

JP (..)

Example  (date)

Priority filing

Example  (date)

Pre-

National format

Data type

Time

Table 8.12: Colombian numbering formats.

CO -U (Gaceta no. , ..)

NC / (..)

none

CO -U

 (Gaceta no. , .)

- (..)

none

Example  (date)

Colombia

279

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form of a series of “chapters” which can be opened individually to examine different parts, such as the application data, personal data (inventors, representative etc.), priority claims and son on. Official documents filed and correspondence during prosecution are also available. Figure 8.2 illustrates part of the register for patent grant no. 30186 (CO 15-133555).

Figure 8.2: Colombian patent register contents.

The sequence of actions, with typical timings, which lead to grant can be seen in the four examples of Table 8.13. The official form of numbering to be used after grant is not clear; on the date of grant, a Concession Number (a) is issued, which has a distinct number to that of the Resolution certificate (b), which notifies the applicant of the end of the opposition period and entry into force of the patent (available via the national register as the so-called Diploma document), and is also different from the filing number (c) which is re-used at INID 11 as the publication number in some sources. The KD codes used for patent applications in Colombia distinguish between cases filed via the Paris Convention and those maturing from a PCT international application, as illustrated in Table 8.14.

Colombia

281

Table 8.13: Application and publication sequences for Colombia. Event

National patent

National patent, PCT route

National utility model

National utility model, PCT route

International application

n/a

PCT/US/  (..)

n/a

PCT/HU/  (..)

National phase entry

- (..)

- (..)

- (..)

- (..)

National publication

(.., Gaceta )= CO -A

(.., Gaceta )= CO -A

(.., Gaceta )= CO -U

(.., Gaceta )= CO -U*

Grant

(a) Concession  (b) Resolution , (..) (c) CO -

(a) Concession  (b) Resolution , (..) (c) CO -

(a) Concession  (b) Resolution , (..) (c) CO -

(a) Concession  (b) Resolution , (..) (c) CO -

* Note that the code -U2 has been used here by analogy, but is not in fact deployed in the EPO’s DocDB database. Consequently it is possible that two distinct utility model publications may be assigned the same publication number and both carry the -U1 code.

Table 8.14: Colombian KD codes for published documents. Document type

Kind-of-Document code

Unexamined patent application

CO-A

Unexamined patent application (PCT national phase entry)

CO-A ( onwards)

Unexamined patent application (divisional filing)

CO-A

Translation of CO-A document*

CO-K

Translation of CO-U document*

CO-K

Translation of CO-S document*

CO-K

Industrial design application

CO-S

Unexamined utility model application

CO-U ( only)

Unexamined utility model application

CO-U ( onwards)

* non-official publication; usually prepared on an ad hoc basis for legal proceedings.

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Databases and database-specific aspects In common with many patent offices, the Colombian patent office website now includes a searchable list of expired and lapsed patents, as well as current documentation. As indicated above, the loading of the data from the Gaceta appears to be still in a state of transition, and it is to be hoped that eventually it will all be available under one platform. Colombia is a regular contributor to the Latipat database and the documents are also available in the PROSUR system. A summary of public databases is given in Table 8.15. Table 8.15: Colombian patent databases. Producer

Service name

Platform

Coverage

DPI

Gaceta de Propiedad Industrial

www.sic.gov.co/gaceta-oficial-de-lapropiedad-industrial

–*

DPI

Public Domain patents

http://esearch.sic.gov.co/ PTDominio/modulo/index.jsp

Expired and lapsed patents

DPI

National register http://sipi.sic.gov.co/ > Patentes, PCT, Modelos y Trazados > Buscar

Bibliographic data, basic legal status

INAPI / EPO Espacenet

http://worldwide.espacenet.com

CO-A (+) CO-A (+) CO-U ( only) CO-U (+)

INAPI / OEPM / EPO

Latipat

http://lp.espacenet.com

CO-A (c.+, incomplete –) CO-A (+) CO-U (+)

INAPI / WIPO

PatentScope

www.wipo.int/patentscope

+

Lexis Nexis TotalPatent One Univentio

www.lexisnexisip.com/products/ total-patent-one/

CO-A, bibliographic data only, +

PROSUR

http://prosur.org/tramitacion/busca dor-de-patentes

Unclear – no readily accessible help files.

Buscador de Patentes

* refer to text for links to later issues of the Gaceta.

Peru

283

Peru Historical aspects and current law Peru achieved independence from Spain during the 1820s, and established intellectual property legislation by the middle of the century, starting with the Law of 28th January 1869 and a revised Law from 3rd January 1896. This legislation allowed for a maximum term of 10 years. There was additional revision during the 20th century, including 1979, which allowed for patents of addition and a system of provisional rights certificates, similar to the precautionary patents in Chile. Current law is based on Legislative Decree no. 823 of 25th May 1996. Peru is a later entrant to the Paris Convention (1995), and the 1996 law implemented the earlier Decision 344 of the Andean Community on intellectual property. As the Andean Community regime has been modified, so has the implementing legislation within the member states; in the case of Peru, the latest substantive change was in the form of Legislative Decree no. 1075 of 27th June 2008, in force from 1st February 2009, and its later amendments, which implemented the most recent Decision (486) of the Andean Community. Peru acceded to the PCT in June of the same year, which resulted in a sharp increase in applications corresponding to the first national phase entries in 2011. However, the 2018 Annual report indicates that the total number of grants is still fewer than 1000 cases per year, although continuing to rise. The national patent office, the Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI), was created by law in 1992, and its current structure and responsibilities are framed in Legislative Decree no. 1033 (25th June 2008). The standard country code for Peru is “PE”. Under the present law, after formalities examination, bibliographic details and abstract are published in the Gaceta Electrónica de Propiedad Industrial (Industrial Property Bulletin – latest issues are electronic only). There is a 60-day pre-grant opposition period. The request for substantive examination must be submitted within 6 months of this publication. Patent term is 20 years from filing date, with administrative procedures available for term adjustment in the event of excessive delay. Utility models have a 10 year term, again counting from date of application. Most cases are granted within 3 years of the filing date in Peru.

National patent documentation The application and publication number formats may be recorded in a different format as published on the document front pages or in national registers – details

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are given in Table 8.16. It appears that that in the earlier years of the 21st century, the intended format change from 2 digit (YY) to 4 digit (CCYY) years became corrupted, either at source or during conversion to proprietary database formats. As result, there are examples in some databases where the 4 digit year has been wrongly transposed and split; a native format number in the format NNNNNCCYY has been incorrectly loaded as a new string consisting of CCYYNNNNNCC i.e. the first 2 digits of the year have been appended to the serial number as well as being moved to the front. The serial number also increased to a maximum length of 6 digits after 2000. Utility model applications (KD code Z) were published from 1995 to date, and use the same number patterns as regular patents. PCT national phase entries are given an application number in the year range corresponding to their year of national phase entry, but citing the application date according to the filing date of the PCT international application e.g. 002189-2018 is a 2018 national phase entry based on a PCT international application dated 2016 (PCT/ES2016/ 070323, 2016.04.28). National publication numbers reverse the application number format into a year prefix e.g. YYYY-nnnn-KD, using the year of publication as the prefix and a new serial number. The EPO’s DocDB format retains the same layout as the pre-2000 application numbers e.g. national publication PE 2019-0050 Z is numbered PE 502019 Z; PE 2019-0051 A1 is numbered PE 512019 A1. Granted patents and granted utility models, although not re-published as specifications, are allocated new grant numbers in a running sequence, with no year element. A summary of the KD codes which may be encountered in database entries for Peruvian documents is given in Table 8.17.

Databases and database-specific aspects The national databases from the Peruvian patent office are improving in quality, but the form of loading appears to be still in a state of flux; the web addresses for the different services have changed frequently over the last years, and in common with many other national offices, it is difficult to get definitive information about the coverage, either in terms of document types or range of years. The following Table 8.18 lists the currently available routes to singlecountry collections of the data. The PROSUR database provides no clear information on the size of the national country collections of patents, but the record display is clear and may give access to complete documents in some cases (see Figure 8.3 for an example).

PE YY-NNNN-KD

PE NNNN-KD

National publication

National grant

PE CCYY-NNNN-KD (CCYY = year of publication)

PE Nnnn-KD

National publication

National grant

(not covered)

PE NNNNCCYY KD

NNNNNN-CCYY CCYYNNNNNCC or CCYYNNNCC or (up to  +  digits) CCYYNNNNNNNU

(not covered)

PE NNNNYY KD

CCYYNNNNNN

DocDB format

National application

Post-

NNNN-YY (– digits +  digits)

National format

National application

Pre-

Event (period)

Table 8.16: Application and publication number formats in Peru.

PE  Y (..)

PE  B (..)

n/a

PE --Z (..)

PE PE  --A A (..)



- (..)

PE  Z (..)

PE  B (..)

- (..)

PE --Z (..)

PE --A PE  A (..) n/a

- (..)

Patent example Utility model (DocDB) example (date)



- (..)

Patent example (date)

n/a

PE  Z

U

n/a

PE -Z

U

Utility model example (DocDB)

Peru

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Table 8.17: KD codes for Peru. Period

Document Type

Kind-of-Document code

..+

Patent application

A

..+

Granted patent

B

..+

Patent of improvement

R

..+

Granted utility model

Y

..+

Utility model application

Z

Table 8.18: Peruvian patent databases. Producer

Service name

Platform

Coverage

INDECOPI

Patent Finder (advanced search)

http://servicio.indecopi.gob.pe/ portalSAE/Personas/tituloOIN.jsp

+

INDECOPI / TPI

Tribunal de La Sala http://servicio.indecopi.gob.pe/ Administrative court de la Propiedad buscadorResoluciones/propiedad- proceedings Intelectual intelectual.seam

INDECOPI

Electronic Official Gazette

http://servicio.indecopi.gob.pe/ gaceta/

PE-A, published for opposition after ..

INDECOPI / EPO

Espacenet

http://worldwide.espacenet.com

PE-A + (legal status from +) PE-Z +

INDECOPI / OEPM / EPO

Latipat

http://lp.espacenet.com

PE-A, c.+ (some from +); PE-Z +

INDECOPI / WIPO

PatentScope

www.wipo.int/patentscope

+

Lexis Nexis TotalPatent One Univentio

www.lexisnexisip.com/products/ total-patent-one/

PE-A, bibliographic data, + PE-Y/Z, +

PROSUR

Buscador de Patentes

http://prosur.org/tramitacion/bus Unclear – no readily cador-de-patentes accessible help files.

IBC Network

Peru Patents –

www.ibcnetwork.org/ > E_research c. , records, basic (Access on request) bibliographic data –.

Peru

Figure 8.3: Peruvian grant record from the PROSUR database.

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Cooperative systems in South America There have been a number of attempts to foster regional cooperation across South America in the IP field. Common patent office portals and merged documentation databases were discussed at various points between 2007–2010, but so far with little fruit. There has been more progress at the policy level rather than genuine work-sharing, with the exception of the Prosur system, discussed below. For membership of the blocs discussed, refer to Table 8.1.

The Cartagena Agreement (Andean Community) Shortly after the foundation of the Andean Community, the Commission of the Cartagena Agreement approved intellectual property legislation by means of legal instruments known as Decisions, similar to the Regulations and Directives issued by the European Union. There have been a number of these Decisions over the years, aimed at unifying and updating the patent laws in force in the Community’s member states. The texts of these Decisions are available from the Community website as separate documents or a compiled edition7, 8. Decision 24 issued in 1971 (Régimen común de tratamiento a los capitales extranjeros y sobre marcas, patentes, licencias y regalías) covered general principles, particularly on foreign investment, monetary issues and acceptable forms of licensing agreement for intellectual property rights. Article 54 envisaged the creation of a regional IP office acting as liaison between the national offices, although there is little evidence that this actually happened. The tasks of the office would include the preparation of prototype licence agreements and advice on the application of later substantive regulations. This Decision was followed by new legislation focussed on patent examination and granting; the successive legal instruments are given in chronological order in Table 8.19. From the point of view of the information specialist, there are two (potentially) significant clauses pertaining to information retrieval in Decisions 486 and a later regulation, Decision 689 of 2008. Article 271 of Decision 486 explicitly requires member states of the Community to prepare “mechanisms for disseminating and disclosing the technical information contained in patents of invention”. This could lead to the development of a network of resources, perhaps similar to the European PATLIB or US PTRC programmes. Decision 689 includes a provision for the member states to introduce tougher standards on clarity of the patent specification, such that it does not require “undue experimentation” on the part of third parties skilled in the art to reproduce the invention. The Decision also enables member states to introduce a system to compensate applicants for patent

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Table 8.19: Decisions of the Andean Community in respect of patents. Decision No.

Date(s) in force

Name

Decision 

..

Regulations for the Ch. I : Patents application of the regulations. rules on industrial property.

Adopted classification by the IPC. Claims to be published and specifications made available for purchase Standard term of  years, consisting of initial  years plus additional  years conditional on satisfactory proof of working. No protection for pharmaceuticals.

Decision 

–

Common regime on industrial property

Ch.I (patents). Ch.II (utility models).

Patents:  year term, possible extension to  on proof of working, some pharmaceutical protection. Utility models:  year term.

Decision 

–

Common regime on industrial property

Ch.I (patents). Ch.II (utility models).

Patents:  year term, possible extension to  on proof of working, some pharmaceutical protection. Utility models:  year term.

Decision 

–

Common regime on industrial property

Ch.I (patents). Ch.II (utility models).

Patents:  year term. Utility models:  year term.

Decision *

.. Common regime to date. on industrial property

Title I (general provisions). Title II (patents). Title III (utility models).

Title I: includes mutual recognition of -month priority between Andean Community states irrespective of WTO/Paris Convention status. Title II:  year pre-filing grace period for inventors,  year term. Title III:  year term.

* amended by Decisions 632 and 689.

Key elements

Characteristics

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term lost due to delays at the patent office, if these processes take greater than 5 years from application or 3 years from request for examination. This provision is similar to the patent term adjustment found in the USA and elsewhere. In addition to these, there are common Decisions on other areas of intellectual property, including protection of plant breeders’ rights (Decision 345) and access to genetic resources (Decision 391). In 2004, the Community issued a “Manual Andino de Patentes” (Andean Patent Manual) as common guidelines for examination of patents in the member states. This was prepared in collaboration with WIPO, the EPO and the Mexican Patent Office, IMPI10.

Mercosur Compared to the countries of the Andean Community, the member states of Mercosur have only achieved a modest level of integration of intellectual property, both at the policy level and in establishing legal norms. Since the Treaty of Asunción in 1991 which created the group, there have been two Protocols in the field of specific IP rights. The Protocol relating to trademarks and geographical indications11 was signed in 1995 and went into effect in 2000, but only in respect of Paraguay and Uruguay – the other member states have not ratified it. A second Protocol on industrial designs was signed in 1998, but has not yet come into force12. A more generalised document providing for general rules on all aspects of intellectual property was adopted in 2008, but is also not yet in effect, as of 201613.

Propiedad Industrial Latinoamérica (PROSUR) In 2010 a number of Latin American countries moved to develop a more integrated regional cooperation across several areas of IP, including trademarks, patents and utility models, and industrial designs. It was launched as the “Cooperation System on Aspects of Operational Information and Industrial Property” or PROSURa in 2012. The original eight members were Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguayb. Since then, Costa Rica, El Salvador, Nicaragua, Panama and the Dominican Republic

a The equivalent abbreviation for the Portuguese language name of the organisation is PROSUL. b Some authorities include Suriname amongst the original or current members, but the official PROSUR website does not mention this country in its listing. Delegates from Suriname were present at some of the 2012 meetings of PROSUR committees.

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have joined, bringing membership to thirteen, although El Salvador is only involved at a low level. The aim of the PROSUR co-operative examination project is to facilitate the exchange of data and information systems, improving the efficiency and quality of search, examination and granting. However, this is not a regional patent system as such; all grant decisions will remain at the national level and be issued as national patents. By 2013, a common Operations Manual for PROSUR and an IT system for regional sharing of examination dossiers (e-Pec) was introduced, using technology developed by Argentina and Brazil. In 2016, the original 8 members agreed a pilot project for accelerated examination of patent and utility model applications, using the PCT-PPH and PPH-Mottainai models. Descriptions of the work of PROSUR and its progress can be found at the website www.prosur.org ; the same site also contains a search portal (Buscador de Patentes, or “Patent Search Engine”) for patent documents from the 13 states, under the “Tramitación” (Processing) menu at http://prosur.org/tramitacion/bus cador-de-patentes/. The portal appears to be searchable by bibliographic data only, and has a simple legal status overview filter (cases may be designated as granted, pending, refused or expired). Unfortunately, as is common with many such portals, there is little or no information concerning the depth of coverage or content in the underlying database(s). There is also a so-called “Public Domain Search Engine” which enables specific searching for expired and/or lapsed patents, but again there is little information on the content or currency of the data. A companion website called Comunidad Prosur Proyecta at www.prosur proyecta.org provides a specialist forum for researchers, entrepreneurs and IP professionals in the region.

BRICS (Brazil-Russia-India-China-South Africa) The only country of South America which is directly involved in the BRICS cooperation is Brazil. On the IP front, a meeting of heads of the national IP offices of the BRICS states in 2012 has resulted in an intensified programme of meetings and exchanges of professional staff, to assist the development of IP at both the policy and practice levels. The website IP BRICS (http://www.ipbrics.org/) provides a limited amount of detail relating to current projects, including in the field of information services. This appears to be working on both examiner/ work-sharing initiatives and the development of better patent information services to the public.

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Mexico Historical aspects and current law The first Mexican patent act (the Law on Property Rights for Inventors) dates from 1832, granting a 10 year term. The 1832 act term was progressively adjusted over the years, first to 20 years (with possible extension to 25) in 1903 and then reduced to 15 years in 1942. The law of 1st October 1903 also brought in a so-called provisional patent with a term of 1 year, during which the inventor had the possibility of market-testing their product without the risk of infringement. At the end of the year, the patent holder could request an extension to become a full 20-year patent. From this period, Mexico began to issue a dedicated monthly Gaceta Oficial de las Oficina de Patentes y Marcas, later re-named the Gaceta de la propiedad industrial (1929–1975) and the Gaceta de Invenciones y Marcas (1976–date). Also in 1903, Mexico joined the Paris Convention. An official national classification system was adopted in 1927, and replaced by the IPC from 1980, although the Strasbourg Agreement on the IPC did not enter into force in Mexico until 2001. New 1976 legislation introduced a time limit of approximately 15 months from filing (technically, 1 year plus 90 days), within which the applicant was required to request substantive examination for novelty. The patent term was reduced again, to 14 years from grant. Provisional patents were replaced by a certificate of invention, similar in form to a standard patent but granted subject to an obligation on the patent-holder to grant a non-exclusive licence to any third party on request. The certificates were themselves abolished under the current 1991 law, effective 28th June 1992; utility models with a 10 year term replaced them, having been introduced shortly before, in 1988 and consolidated into the new law. The Patent Cooperation Treaty is in force in Mexico from 1st January 1995. The legal bases for the formation and functions of the patent office, which is formally known as the Instituto Mexicano de la Propiedad Industrial (IMPI), include the Decree on the Creation of the Mexican Institute of Industrial Property (10th December 1993), and the Organic Statute of the Mexican Institute of Industrial Property14. The standard country code for Mexico is “MX”. The current legal framework for patent granting in Mexico is set out in the Law on Industrial Property of 27th June 1991, as amended, and the Regulation on the Industrial Property Law of 23rd November 1994, as amended. The standard procedure to grant consists of a formalities examination, which takes 1–3 months, followed by publication of bibliographic details and abstract of the unexamined application at 18 months after filing. This is followed by a period for third party observations (initially 6 months, reduced to 2 from 2018). Once this has closed, IMPI proceeds automatically to substantive examination; no separate request

Mexico

293

from the applicant is required. IMPI may make use of specialized national bodies or institutions during examination, and may also utilise examination results from other national patent offices. Mexico has a number of PPH programmes in place with other offices, which can result in accelerated grant in Mexico. Once a decision to grant is taken, the applicant has a two month period in which to pay the publication fee and will then be issued with the patent. After grant, bibliographic details are listed in the Official Gazette. There is no formal opposition period, but an administrative procedure for revocation can be invoked on certain grounds, after grant. Total prosecution time is generally in the range of 4–6 years, and the term is 20 years from filing. Examination of utility models is essentially the same as for patents, leading to a non-extensible 10 year term. Prior to a revision of the law in force from 27th April 2018, provisional applications were not published, but since the amendment, they will also be subject to publication in the official gazette, as will all utility model applications and the case dossiers after 18 months. In the field of pharmaceuticals, the Comisión Federal para la Protección contra Riesgos Sanitarios (COFEPRIS), which issues drug marketing authorizations for Mexico, is required to prevent the granting of any authorisations for generic versions of drugs which might fall within the scope of valid Mexican patents. To assist this liaison, IMPI produces a special issue of its Gazette (February and August each year), listing all in-force patents protecting pharmaceutical active ingredients, formulations patents and second medical uses. The same document can also assist in recording accurate ownership records of these rights. Formal pharmaceutical patent term extension is not possible under the existing Mexican patent law, although in theory this may be awarded on the basis of other international agreements, such as NAFTA. The IP system in Mexico is accessible via an electronic filing and fee payment portal, known as Portal de Pagos y Servicios Electrónicos (PASE). This is capable of handling all filings for patents (both national and PCT), utility models and designs. Part of the promotional activities for intellectual property across the country has included the establishment of a network of 45 Centros de Patentamiento (CePat), in addition to a number of regional receiving offices. The CePat centres function in a similar manner to the USPTO’s Patent and Trademark Resource Centers (PTRC), offering liaison and advice on search and applications. Many are located in universities or national research institutes. At the regional level, IMPI is leading an initiative called CADOPAT, through which Mexico conducts search work on behalf of a number of other states or organisations. The original 10 members consisted of the Central American and Caribbean countries of Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua, Panama, Dominican Republic, Cuba and Belize, plus a single South American

294

Chapter 8 South America and Mexico

state, Colombia. Further South American states have since joined, in the form of Paraguay and Ecuador, plus the English-speaking regional African office, ARIPO. The formal title of CADOPAT is the “Sistema de Apoyo para la Gestión de Búsquedas de Solicitudes de Patentes en Centroamérica, República Dominicana y otros países” (= Support System for the Management of Searches of Patent Applications in Central American Countries, the Dominican Republic and other countries) and the website is embedded with the Mexican national authority, at https://cadopat.impi.gob.mx/.

National patent documentation Mexico issues a moderately large number of patent grants, compared with other countries in the region, peaking most recently at just over 12,000 cases in 2012 and currently running at about 9,000 grants per year. Applications are however running at well over 15,000 per year and the office has problems with long prosecution times and backlogs of filings. A substantial number of these applications arise in the form of national phase entries under the PCT, to which Mexico has belonged since 1995. The granted patents are overwhelmingly owned by nonnational entities; the percentage of cases granted to non-national residents or companies was 95% in 2017, reducing slightly from the mean of 97% over the previous decade. Conversely, the average annual share of national grants for utility models since their introduction has been 80%, with the United States (5.3%) and Spain (3.5%) being the only other significant rights holders. Electronic data from a range of statistical studies have been loaded onto the main Mexico government website, at the address https://datos.gob.mx/busca/dataset/informacionestadistica-de-invenciones-signos-distintivos-y-proteccion-a-la-propiedad-intelectu [sic: the address is truncated]. From 2008 onwards, paper production of the Gaceta de la Propiedad Industrial ceased, and was replaced by the electronic version called SIGA (Sistema de Información de la Gaceta de la Propiedad Industrial), which covers PDF issues from 1890 to date. A summary of the KD codes used in Mexico and the application and publication number formats is given at Tables 8.20 and 8.21. The early numbering formats adopted by Mexico include indicators of the type of right, in the form of letter prefixes or suffixes, rather than the KD code suffixes used in other countries. These have changed substantially over the years. From 1976, letter prefixes were used, including PAT for patentes de invencion, CI for certificados de invencion and RM for registros de modelo (registered design). From 2000 onwards, the application number series included an additional two-letter prefix representing the regional office of IMPI where the application has

Mexico

295

been filed; the codes may be GT = Guanajuato (Bajío region), JL = Jalisco (Western region), NL = Nuevo León (Northern region), PA= Puebla (Central region, including IMPI headquarters office) or YU = Yucatán (Southeast region). In some databases, these formats are rendered as AA/k/YYYY/NNNNNN, where AA represents the regional office code, “k” indicates the kind of application (“a” for patent, “u” for utility model, “f” for industrial design) and YYYY is the year of application. This is reused as the publication number at the unexamined stage. Although the system was not applied for applications filed before 1st January 2000, cases which were on file before this date but published after this date were re-numbered into the new format, so examples do occur with YYYY Búsqueda de ejemplares) (SIGA > Búsqueda especializada)

Sistema de Información de la Gaceta de la Propiedad Industrial (SIGA) – Gaceta

Sistema de Información de la Gaceta de la Propiedad Industrial (SIGA) – Register

Catalogue of public domain patents

Visor de Documentos de la Propiedad Industrial (ViDoc, publication server)

Espacenet

IMPI

IMPI

IMPI

IMPI

IMPI / EPO

Bibliographic data + links to documents

Individual gazettes from  ().

Coverage

http://worldwide.espa cenet.com

(continued )

– MX-A, granted patent, MX-E invention certificate; + MX-A, unexamined application; + MX-B granted patent

https://vidoc.impi.gob. Case dossiers and granted mx/ patents

Created , updated https://datos.gob.mx/ periodically busca/dataset/cata logo-de-patentes-deuso-libre-e-invencionesdel-dominio-publico

Platform

Service name

Producer

Table 8.22: Mexican patent databases.

Mexico

299

www.lexisnexisip.com/ products/total-patentone/

www.ibcnetwork.org/) > c., records, basic E_research bibliographic data (Access on request)

PatentScope

TotalPatent One

Mexican Patents –

Lexis Nexis Univentio

IBC Network

www.wipo.int/ patentscope

MX-A +, MX-B + (some full text), MX-U +.

MX-A +, bibliographic data, full-text (% ), images (% ).

MX-A +, MX-B +, MX-E –, Bibliographic, some abstracts, some facsimiles.

IMPI / WIPO

http://lp.espacenet. com

Latipat

Coverage

IMPI / OEPM / EPO

Platform

Service name

Producer

Table 8.22 (continued )

300 Chapter 8 South America and Mexico

Espacenet (standardised front page)

ViDoc (grant certificate)

References

Figure 8.4: Contrasting copies of MX 351074-B.

301

302

Chapter 8 South America and Mexico

References 1 WIPO (1984). General summary of the situation of industrial property in Spanish and Portuguese-speaking countries. Document PI/LAC/BOG/84/4. In Proceedings of 1st Regional Meeting on Industrial Property for Latin America and the Caribbean, Bogota, Colombia, 27th– 30th August 1984. Geneva: WIPO. 2 Beatty, E., Pineda, Y., Sáiz, P. (2017). Technology in Latin America’s Past and Present: New Evidence from the Patent Records. Latin American Research Review 521), 138–149. 3 Papageorgiadis, N., Cross, A.R., Alexiou, C. (2014). International Patent Systems Strength 1998–2011. J. World Business 49 (4), 586–597. 4 WIPO (2019.03.08). Rule 48.3 Languages of Publication. History of the PCT Regulations. WIPO. Retrieved from https://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct_regula tions_history.pdf. 5 WIPO (2019.08.06). Numbering of Applications and Priority Applications – Current Practices. WIPO Handbook on Industrial Property Information and Documentation, Part 7.2.6. WIPO. Retrieved from https://www.wipo.int/standards/en/part_07.html#7.2. 6 INAPI (2015). Graphical History of Industrial Property in Chile. (3rd (bilingual) ed.). Santiago: INAPI. ISBN 978-956-9009-02-0. 7 Comunidad Andina (2019.03.12). Decisiones. Comunidad Andina. Retrieved from http://www. comunidadandina.org/Documentos.aspx. 8 Secretaria General, Comunidad Andina (2019.03.12). Decisiones Andinas en Propriedad Intelectual (Texto Compilado). Comunidad Andina. Retrieved from http://www.comunidadandina.org. 9 Comunidad Andina (2000). Régimen Común sobre propiedad industrial. Decision 486. Gaceta Oficial del Acuerdo de Cartagena (600), 19th September 2000, 2–46. 10 International Bureau of WIPO (2004). Manual para el examen de solicitudes de patentes de invención en las Oficinas de Propriedad Industrial de los países de la Comunidad Andina. (2nd ed.) Quito: Docutech, 2004. ISBN 9978-43-855-6. Retrieved from http://www.comunidadandina.org/ Publicaciones [Accessed 2019.03.12]. 11 Common Market Council (CMC) of Mercosur (2000). Protocol on Harmonization of Intellectual Property Norms in MERCOSUR in the field of trade marks, indications of source and appellations of origin. MERCOSUR/CMC/DEC. No.8/95 (6th August 2000). 12 Common Market Council (CMC) of Mercosur (1998). Protocol on Harmonization of Norms in the field of industrial design. MERCOSUR/CMC/DEC. No.16/98 (10th December 1998). 13 Common Market Council (CMC) of Mercosur (2008). Protocol on Basic Principles and General Rules on Intellectual Property in MERCOSUR. Annex V of Act No. 1/08. Rio de Janeiro, 24–26th September 2008. In I. Calboli, I., Lee, E. (eds.), Research Handbook on Intellectual Property Exhaustion and Parallel Imports. Cheltenham: Edward Elgar Publishing, 2016, p.208. ISBN 978-1-78347-870-5. 14 Government of Mexico (1999). Organic Statute of the Mexican Institute of Industrial Property. Official Journal of the Federation of Mexican States, 27th December 1999.

Chapter 9 Africa and the Middle East The intellectual property regimes in the states of the Arabian peninsula and the continent of Africa are becoming more important as these countries develop economically. Many of the states, particularly in Africa, are former colonial territories and have inherited their patent law structure from countries such as the United Kingdom or France, although increasingly they are passing newer legislation based on the modern WIPO templates. Readers interested in following up the development of colonial laws are referred to the paper by Kongolo1. In addition, the impact of the TRIPS Agreement administered by the World Trade Organisation (WTO) has resulted in many states bringing their existing laws into line with modern standards. From the information specialist’s point of view, patent documents and procedures from these two regions of the world are still much less familiar than those of the developed industrial countries, but their information is beginning to filter into some family databases, albeit in much smaller volumes. Individual country data in this chapter is provided for the major publishing states or authorities only.

Introduction to Africa By way of background, it is worthwhile reviewing the status of these countries with respect to some of the major patent-related treaties. This is particularly pertinent in the case of Africa, since the WTO’s TRIPS Agreement allows important concessions for countries which have Least-Developed Country (LDC) status. The data in Table 9.1 indicates the ratification status of the 54 internationally-recognised sovereign states in Africa, in relation to the Paris Convention, the WTO, LDC status, the Patent Cooperation Treaty (PCT) and membership of either of the regional African patenting systems (OAPI and ARIPO); all data are correct as of mid-2018. The recognition of LDC status for these countries has important implications for IP. The TRIPS Council of the WTO agreed on 11th June 2013 that the transition period incorporated into Art. 66.1 of the TRIPS Agreement, allowing LDCs to take longer to bring their national IP laws into alignment with the TRIPS standard, should be extended from the existing date of 1st July 2013 until 1st July 2021, or until such country ceases to hold LDC status, whichever is the earlier2. As a result, there are a number of states within Africa which are current members of the WTO but do not, at the time of writing, have TRIPS-compliant national patent https://doi.org/10.1515/9783110552263-009

ST. code

DZ

AO

BJ

BW

BF

BI

CV

CM

CF

TD

KM

CG

CI

CD

DJ

Country name

Algeria

Angola

Benin

Botswana

Burkina Faso

Burundi

Cabo Verde

Cameroon

Central African Republic

Chad

Comoros

Congo

Côte d’Ivoire

Dem. Republic of Congo

Djibouti

Table 9.1: Treaty status of African states.

Applicant .. .. .. .. ..

.. .. .. .. .. ..

.. .. .. Applicant .. .. .. ..

.. .. .. .. .. .. .. ..

..

WTO

Paris Convention

Y

Y

Y

Y

Y

Y

Y

Y

Y

LDC status

..

..

..

..

..

..

..

..

..

..

..

..

PCT

..

..

..

..

..

..

..

..

OAPI

O

..

O

O

ARIPO*

304 Chapter 9 Africa and the Middle East

EG

GQ

ER

ET

GA

GM

GH

GN

GW

KE

LS

LR

LY

MG

MW

ML

MR

MU

Egypt

Equatorial Guinea

Eritrea

Ethiopia

Gabon

Gambia

Ghana

Guinea

Guinea-Bissau

Kenya

Lesotho

Liberia

Libya

Madagascar

Malawi

Mali

Mauritania

Mauritius

Applicant

..

.. .. .. .. .. .. .. .. Applicant .. .. .. .. ..

.. .. .. .. .. .. .. .. .. .. .. .. .. ..

Applicant

..

..

Y

Y

Y

Y

Y

Y

Y

Y

Y

Y

Y

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

..

(continued )

O

..

O

..

..

..

..

..

O

O

O

Introduction to Africa

305

MZ

NA

NE

NG

RW

ST

SN

SC

SL

SO

ZA

SS

SD

Mozambique

Namibia

Niger

Nigeria

Rwanda

São Tomé and Principe

Senegal

Seychelles

Sierra Leone

Somalia

South Africa

South Sudan

Sudan

Swaziland

SZ

MA

Morocco

†

ST. code

Country name

Table 9.1 (continued )

.. .. .. .. .. Applicant .. .. ..

.. .. .. .. .. .. .. .. ..

..

..

..

..

..

..

Applicant

Applicant

..

Applicant

WTO

Paris Convention

Y

Y

Y

Y

Y

Y

Y

Y

Y

LDC status

..

..

..

..

..

..

..

..

..

..

..

..

..

PCT

..

..

OAPI

..

..

O

(..)

..

O

..

..

O

..

..

ARIPO*

306 Chapter 9 Africa and the Middle East

TG

TN

UG

ZM

ZW

Togo

Tunisia

Uganda

Zambia

Zimbabwe

.. .. .. .. .. ..

.. .. .. .. .. ..

Y

Y

Y

Y

..

..

..

..

..

.. ..

..

..

..

O

..

#

The official name of Swaziland was changed to eSwatini in 2018, but so far the ST.3 country code is unchanged. NOTE: In the field of intellectual property rights, the federal territories of Tanzania (i.e. mainland Tanganyika and offshore Zanzibar) operate separate laws, and separate applications must be made. However, no separate ST.3 country codes have been adopted to represent IP rights valid in only one of the two territories. * NOTE: Membership of ARIPO is governed by the 1976 Lusaka Agreement. States which have additionally ratified the 1982 Harare Protocol allow ARIPO to grant patents on their behalf. Somalia has signed the Lusaka Agreement but not ratified the Harare Protocol, so ARIPO patents are not granted with effect in that country; the date shown in the entry for Somalia is the entry into force of the Lusaka Agreement only. For all other states, the date refers to the date of entry into force of the Harare Protocol in each country. Note that each member state has subsequently to pass revised national legislation to incorporate the provisions of the Protocol into national law and procedure, before ARIPO grants are fully recognised. The code (O) in this column indicates that the country is an Observer, not a full member of the Organisation.

†

TZ

Tanzania#

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307

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legislation. The most obvious aspect of this arrangement is in the patent term allowed for under these laws; not every country in Africa, irrespective of WTO membership, provides for the conventional 20-years from filing which is expected in modern patent laws. A further undertaking in the context of TRIPS has provided ongoing concessions on patentable subject matter, in that “. . . the least-developed country Members will not be obliged, with respect to pharmaceutical products, to implement or apply Sections 5 and 7 of Part II of the TRIPS Agreement or to enforce rights provided for under these Sections until 1st January 2016, . . .”3. In the years running up to the end of this initial extension period, the situation was summarised in a 2013 document from the ICTSD4. The deadline for implementing these parts of the TRIPS Agreement was further extended in 2015, so that LDCs do not have to protect pharmaceutical patents or test data until 1st January 20335. One of the effects of TRIPS ratification, following a state’s WTO accession, is the requirement that the member state should comply with the substantive obligations of the Paris Convention. The major point of interest to the patent information specialist is the consequent obligation for mutual recognition of priority dates between WTO member states, irrespective of whether those same states have acceded to the Paris Convention itself. However, a large proportion of African states were already party to the Paris Convention at the time of the signing of the Marrakesh Agreement which founded the WTO; indeed, Tunisia was a founder signatory of the Paris Convention in 1883. The Table 9.1 shows that the only country which is currently affected by this TRIPS requirement (Art.2(1)) is Cabo Verde, which is not a signatory to the Paris Convention but is required by its TRIPS obligation to recognise the Convention’s 12-month standard for priority dates with respect to applicants from other WTO member states. If any of the other applicant countries (e.g. Ethiopia, Somalia or South Sudan) complete their WTO accession prior to joining the Paris Convention, they would be similarly affected. Despite the developing sophistication of national patent laws and procedure, patents from the African continent are still not generally perceived as strong rights. In 2014, a group of economic and business academics published a methodology to assess the patent system strength of a range of nearly 50 countries around the world6. At that time, South Africa was the only African state to feature in the ranking at all, and scored approximately halfway down the list (5.40, between the top score of 9.50 and the lowest score of 2.90). The scoring methodology allocates a high score to countries where enforcement of patent rights is effective and patent owners experience low transaction costs

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309

(prosecution and renewal); conversely, low scores indicate poorer enforcement of patent rights and higher transaction costs for the patent owners. Since that paper was written, the survey has been updated to include data to 20157. South Africa is still the only African entry in the ranking, and has continued to feature in the same category as a group of approximately eight other countries including Jordan, Malaysia and some smaller European states. The Figure 9.1 shows how these annual scores have changed over the most recent 5 yearly surveys, for the highest rising country (Malaysia), the steepest falling country (Slovakia) and three countries between these extremes (Hungary, Jordan and South Africa). The data sets indicate that the South African situation has worsened slightly in the last 5 years, and the country remains in the “weak” category (4th out of 5 groupings, from very strong to very weak).

Figure 9.1: South African patent strength index 2010–2015 (after Papageorgiadis).

In addition to this perceived weakness, statistics on the volume of patenting activity across Africa are not easy to interpret. There are substantial gaps in the data supplied by national IP offices to the WIPO IP Statistics Data Center8, and it is not always possible to reconcile the overall continental African statistics with those supplied by the individual states, even allowing for the regional grants under ARIPO or OAPI. However, it is clear that only a small number of states are regularly exceeding grant rates of more than 100 cases per year. The following Table 9.2 shows the top 10 most active granting authorities, sorted

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Chapter 9 Africa and the Middle East

Table 9.2: Major patenting authorities in Africa, based on average grant rates 2011–2015. Office

ST. code











Average –

South Africa

ZA













Morocco

MA







*

*



Tunisia

TN













Nigeria

NG







*

*



Algeria

DZ













Egypt

EG













Sudan

SD













Kenya

KE













Mozambique

MZ

*

*









Madagascar

MG













* no data reported to WIPO; not considered in calculating averages.

according to the average grant rate over the period 2011–2015 (the last year for which the WIPO Data Center provided figures at the time of writing). The Nigerian data are something of an anomaly, in that the years 2011–2013 are three out of only four years which contain any reported data for the country between 1980 (the earliest data available in the WIPO system) and 2015. It would therefore be misleading to treat Nigeria as amongst the major authorities, for the purposes of individual treatment in this chapter. An expanded discussion of the national patent documentation is included here only for those states which have been consistently at the higher end of patenting activity, as measured by grant rates, over a number of years.

South Africa Historical aspects and current law The territory of the modern Republic of South Africa was formed in 1910 as the Union of South Africa, consisting of the former colonial territories of Cape of Good Hope, Natal, Orange Free State and Transvaal. These territories had their own patent legislation earlier (Cape of Good Hope from 1860, Natal from 1870, Orange

South Africa

311

Free State from 1888, Transvaal from 1902). Full independence from the United Kingdom was achieved in 1931 following passage of the Statute of Westminster (22 Geo. 5, ch.4) and the Republic of South Africa was declared in 1961. Each of the former colonies within South Africa had had their own patent systems prior to the Union, and the first legislation covering the united territory was the Patents, Designs, Trade Marks and Copyright Act, 1916 (Act No. 9 of 1916) which came into force on 1st January 1917. This was amended in 1947, and replaced by new Acts in 1952 and again in 1978 (Patents Act, 1978. Act 57 of 1978) – the latter is still the basis for the current legislation, as amended. As indicated in Table 9.1 above, South Africa is a long term signatory of the Paris Convention and a founder member of the WTO, but was relatively late in joining the PCT system. For applications filed after 1st January 1980, the patent term was extended from the original 16 years under the 1952 Act, to the modern standard of 20 years from filing. The WIPO standard ST.3 country code is “ZA”, derived from the old formal Dutch name of the country (Republiek van Zuid-Afrika). The patent office is formally known as the Companies & Intellectual Property Commission (CIPC), and is administered by the Department of Trade & Industry. South Africa is not a full member of either of the African regional systems, although it does have observer status at ARIPO. Patents granted by ARIPO cannot designate South Africa and have no validity in that country. South Africa has no utility model or short-term patent system in place. Patents of Addition may be granted, which are linked to an earlier application or grant (“main invention”) and have a variable term, expiring on the same day as the main invention. The current law allows for an optional provisional filing, which must be followed by a complete specification within 12 months; alternatively, the complete specification can be lodged as the initial filing. There is no substantive examination in South Africa, although search reports from other patent offices handing equivalent applications are considered. Since the country’s accession to the PCT, national phase South African applications arising out the international phase of a PCT application will be accompanied by at least an International Search Report and possibly as an International Preliminary Examination Report, which provides additional information on the likely novelty and inventive step of the invention. The CIPC’s formal examination is completed within 6 months of the filing of the complete patent application (in the case of direct filings) or the national phase entry date (in the case of PCT applications). If the application is accepted, the applicant is required to advertise this fact in the monthly Patents Journal within 3 months. The certificate of patent grant is issued to the proprietor approximately 2 months after the Journal advertisement. Annual renewal fees become payable from the third anniversary of filing.

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There have been some significant patent law amendments since 1978, including the requirement for an applicant to provide information concerning the use of indigenous biological or genetic resources in their invention (Patents Amendment Act, 2005. Act 20 of 2005). A further Act in 2008, the Intellectual Property Rights from Publicly Financed Research and Development Act (Act No. 51 of 2008) set out the objective of establishing technology transfer offices at higher education institutions and creating a National Intellectual Property Management Office (NIPMO) to identify, protect and commercialise inventions arising from academia. The South African patent office continues to account for a large proportion of the published, granted patents on the continent of Africa, and is the bestdocumented patent system by a large margin. Furthermore, there are signs that the country is making efforts to strengthen the perceived value of its national patents; the government department overseeing the patent office (the Department of Trade and Industry) has indicated that the introduction of a substantive examination system is being considered9, 10. In the early stages, it seems likely that resource constraints will mean that South Africa would only apply rigorous pregrant substantive examination to a subset of the patent applications received, possible only those filed by local applicants and/or within defined technical fields. It is believed that progress is being made on the recruitment and training of patent examiners, and that any necessary revisions of the law could be in place by 201911. The 2018 policy document also notes that the subsequent Phase II will consider, amongst other things, the introduction of a utility model scheme in South Africa.

National patent documentation South African patents are published only once, after grant, and in their national publication stream do not utilise the WIPO ST.16 (Kind-of-Document) codes to distinguish their publication stage. Each application on receipt is given an identification number consisting of a year prefix (originally 2 digits, but changed to 4 digits after 2000) and a 6 digit serial number, re-starting at 000001 each year; this is retained as the publication number of the granted patent document (this may be reduced to a standard 5 digits and left-filled in some electronic database records). Basic bibliographic details (application number, title, applicant name, inventor(s), priority data) appear in the monthly Patent Journal within 4–6 weeks of filing; note that dates are recorded in the US-style format of MM/DD/YYYY. Although South Africa has eleven official languages, English is used exclusively in all patent filing and publication matters.

South Africa

313

After acceptance by the patent office, a second entry is published in the Journal, the date of which is considered to be the date of grant of the patent. These Journal notices consist of the same bibliographic data as the earlier notice of filing, plus additional information in the form of an IPC mark (to the 4 character sub-class level only, provided by the applicant/attorney), an English abstract and exemplary drawing, where appropriate. PCT international application data are rarely recorded. Notices are sorted in numerical order of the application number. After publication of the notice of acceptance, the documentation (file dossier) relating to the application, including the text of the specification, is laid open to public inspection, but is not currently available in electronic form; it can be inspected on application to the patent office in Pretoria.

Databases and database-specific aspects As noted above, the national publications do not include KD codes. However, these may be added when South African documents are incorporated into a standard patent database structure. WIPO PatentScope and the Espacenet Worldwide database both use the KD code -B to indicate a South African grant publication. The Derwent WPI database historically used the -A code, since these documents are a first (and final) publication stage. No distinguishing KD code or number series is used to distinguish patents of addition. The following Table 9.3 only includes single-country national files; coverage of South Africa in family databases is included in Chapter 11. Table 9.3: South African patent databases. Producer

Service name

Platform

Coverage

CIPC/WIPO

PatentScope

www.wipo.int/ patentscope

–date (incomplete), bibliographic and page images

CIPC/EPO

Espacenet Worldwide

http://worldwide. espacenet.com

–date (incomplete), bibliographic and page images. Some full text, +

Lexis-Nexis

TotalPatent One

www.lexisnexisip. com/products/totalpatent-one

–date, bibliographic. Page images +, incomplete.

CIPC

South African Online Patent Search

http://patentsearch. cipc.co.za/

Approx. –date; bibliographic data, some abstracts. Page images –

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Morocco Historical aspects and current law The present-day Kingdom of Morocco obtained its independence from France in 1956. During the early 20th century, both France and Spain had colonial territories in the region, but following a 1912 treaty, the majority of the modern country apart from a coastal strip became a French protectorate. Shortly before independence, the remaining Spanish territory was ceded to France apart from the enclaves of Cueta and Melilla. Given this background, it is not surprising that intellectual property laws were initially fragmented, with separate legislation for the Casablanca Zone (Law of 23 June 1916) and the former International Zone of Tangier (Act of 4th October 1938). Although the International Zone was re-integrated with Morocco in 1956, it was not until 2004 that separate IP laws were abolished and an application filed in Morocco had effect in the entire territory of the modern country. The current law is the Industrial Property Law 17-97, in force since 18th December 2004. It has been amended twice to date, in 2006 (Law No. 31-05, adopted on 14th February 2006, and entered into force on 2nd March 2006) and 2013 (Law No. 23-13, adopted on 21st November 2014, and entered into force on 18th December 2014). The 2013 amendment included new provisions in the areas of patents, trade marks, designs and integrated circuits. The patent office, formally the Office Marocain de la Propriété Industrielle et Commerciale (OMPIC), was created by Law 13-99 of 15th February 2000 and entered into force on 16th March the same year. The WIPO standard ST.3 country code for Morocco is “MA”. Even during the colonial years, Morocco retained a legal identity such that it was able to accede to the Paris Convention in its own right as long ago as 1917. The final meeting of the Uruguay Round of GATT talks, which concluded with the agreement to form the World Trade Organisation, took place at Marrakesh, and Morocco has been a member of the WTO from its founding in 1995. Morocco has been a signatory state of the PCT since 1999, and – like South Africa – has remained independent of both of the regional African intellectual property organisations, ARIPO and OAPI. Under historical legislation, Morocco provided for formalities examination only, and was very brief, typically taking approximately 6 months. The 1997 law, as amended, provides for a form of substantive examination procedure very similar to the French “search report” procedure, consisting of preparation of an initial search report, which is sent to the applicant with an invitation to respond within 3 months, either by amending their claims in the light of any

Morocco

315

relevant prior art revealed, or making the case for the retention of the existing claim scope. Applications are published at 18 months after the Moroccan filing date, or priority date if claimed, and third party observations are allowable within 2 months of publication. Once this deadline has passed, and the applicant has responded to the initial search report, a second search report (“rapport de recherche définitif”) is prepared. Unless the application fails to comply with formal conditions of patentability or shows a “clear lack of novelty or inventive step”, the patent is granted and published a second time, incorporating any modified claims. These publications were originally headed by a non-standard front page, with limited bibliographic information, no use of INID codes or standard layout. Current documents are somewhat better, although still lacking in some important bibliographic elements. A new law (no. 11-12, published 4th April 2013) paves the way for Morocco to ratify the Strasbourg Agreement; if it enters into force, this would result in mandatory classification of documents according to the International Patent Classification. There is no provision for opposition post-grant. Maintenance fees for all applications (both national and via the PCT route) are payable annually, starting from the first anniversary of filing. The term of granted patents is set at 20 years from filing date. Certificates of addition, available under the original 1997 law but now no longer issued, had a term corresponding to the remainder of the term of their parent application. Unusually for African countries, it is possible to obtain patent term extensions in Morocco, on two grounds; a) to compensate for unreasonable delays that occur in granting the patent, i.e. the issuance of the patent more than 4 years from the date of filing the application (similar in scope to US Patent Term Adjustment, PTA), or b) for pharmaceutical products, by means of a Supplementary Protection Certificate (SPC), which can add an additional term of protection for the marketed drug only, up to a maximum duration of 2½ years. There is no provision in Morocco for the grant of utility models. Since 1st March 2015, Morocco has had an agreement in force with the European Patent Office, which allows for patents granted by the EPO to enter into force in Morocco, on completion of the validation formalities. This arrangement is similar to the former “extension agreements” with states on the European mainland, many of which have been superseded by full membership of the EPO. There is no indication that the Moroccan validation agreement is a stepping stone towards membership. It will, however, bring into force in Morocco some patent rights which have passed through a substantially more rigorous examination process than is typical for the filings under national Moroccan law. Where an applicant wishes their European Patent to enter into force in Morocco, there is a notice

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on the front page of the grant document to indicate this, at INID code 84 alongside the other designated contracting states and extension states. The corresponding Moroccan patent has an indication of the EPO application number at INID 86 – see Figure 9.2 for example front pages. Patents granted via this procedure do not proceed through the 18-month publication stage, but issue as granted MA-B documents.

National patent documentation Although Morocco’s two official languages are Arabic and Berber, French is widely used in official business and is still used almost universally as the publication language for the country’s patent documents; a small number of recently published applications have appeared in Arabic, but these are still in the minority. Other remnants of old French practice can be seen in the historical method of assigning application numbers, using the French system of procès-verbal; older documents (and occasionally more recent ones) are typically annotated manually on the front page with the details, in the form of the statement “PV nnnnn of [date]”; an example can be seen on the front page of MA 24563-A1, granted as recently as 1998, which carries the annotation “PV 25106 du 10/6/1998”. The various changes to number formats over time are summarised in Table 9.4. Up until approximately 2015, the corresponding first stage publication number (old-style grant or new-style published application number) was a standardised series of 5-digit numbers, which were not the same as the corresponding application number. From 2015 onwards, the application number is re-used as the grant publication number. There was rarely any KD code printed on early documents, but commercial database producers adopted the code -A1, which was used by databases (and a small number of documents) to indicate the granted patent publication up to 31st December 2006. From 1st January 2007, this was replaced by code -B1. From January 2015, when the procedure for publishing applications at 18 months started, the -A codes were re-introduced, but they are now used to refer to published applications with search report (-A1), published applications without search report (-A2) and late published search reports (-A3). This document series originally carried an 8-digit publication number in the form YYYYNNNN. From January 2016, the numbering system was amended again, so that published applications and their corresponding granted patents both used the same 5-digit publication number, distinguished only by a change in the KD code. Note that there is some overlap in the use of the numbering schemes e.g. some cases were published in 2015 using the previous 5-digit standard for both publication stages.

Figure 9.2: Front page of Moroccan patent validating EPO grant.

Morocco

317

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Table 9.4: Numbering schemes for Moroccan patent applications and grants. Publication period

Application number format

Publication number format

Grant number format

Pre-

 digits e.g.  filed ..

n/a

New  digits e.g. MA -A published ..

–  digits e.g.  filed ..

n/a

New  digits e.g. MA -B published ..

–  digits e.g.  filed ..

n/a

New  digits e.g. MA -B published ..



 digits e.g.  filed ..

Same  digits as application e.g. MA -A published ..

Same  digits as application e.g. MA -B granted ..



 digits e.g.  filed ..

New  digits e.g. MA -A published ..

Same  digits as application e.g. MA -B granted ..

–date

 digits e.g.  filed ..

Same  digits as application e.g. MA -A published ..

Same  digits as application e.g. MA -B granted ..

One characteristic of many old examples of Moroccan patents is the use of the two-letter country code of the priority country (if the case claims foreign priority) as a suffix to the publication number e.g. MA 24563US. This may still be printed on each page of a modern specification, but no longer used as part of the official publication number on the bibliographic fields of the front page. Grants arising from EP validation use the same numbering series and KD code as regular national grants, but can be distinguished by a cross-reference to the corresponding EP application number at INID 86 on their front page (e.g. MA 39265-B1 granted 30th Apr 2018 refers to EP application 15001132.8 which corresponds to granted patent EP 2952391-B1, granted 27th Dec 2017). Current publication of all documents from OMPIC takes place monthly, on the last working day of the month; prior to 2015, publication was on the first of each month. There is no paper or electronic gazette; the definitive publication is in the form of the dedicated publication server at http://brevet.ompic.ma or http://patent.ompic.ma. This has limited searchability (application or publication number, date and IPC).

Tunisia

319

Databases and database-specific aspects Moroccan documents have been loaded into a number of family databases, but in addition are available as a separate national file in several public and private sector databases. A summary of known sources is given at Table 9.5. The OMPIC website hosts the national register at https://patentregister.ompic.ma containing brief bibliographic details as well as the searchable publication server, delivering PDF page images for a wide range of years. Table 9.5: Moroccan patent databases. Producer Service name

Platform

Coverage

OMPIC/ WIPO

PatentScope www.wipo.int/patent scope/en

–date; bibliographic data. Abstracts from , page images (incomplete) from .

OMPIC/ EPO

Espacenet Worldwide

http://worldwide.espace net.com

–date; bibliographic data, some page images

LexisNexis

TotalPatent One

https://www.lexisnexisip. com/products/totalpatent-one/

–date; bibliographic data, some page images

OMPIC/ EPO/ WIPO

Arabpat

http://ab.espacenet.com

(as for Worldwide database)

OMPIC

Publication server

http://patent.ompic.ma or .–date; bibliographic data, PDF http://brevet.ompic.ma page images.

OMPIC

Register

https://patentregister. ompic.ma

No data available; searchable by application number only.

Tunisia Historical aspects and current law Tunisian patent law dates back to the Beylical Decree of 22 Rabi al-Thani 1306 in the Hijri calendar (26th December 1888), in force from 8th July 1889, during the period when the country was governed as a French protectorate (1881–1956). Even before independence, it retained a legal identity such that it was a founder member of the Paris Convention in its own right, from 1884. Tunisia is a relatively recent member state of the PCT, coming into force in 2001.

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There were amendments to the 1888 Decree in 1892, 1902, 1931, 1932, 1939, 1954 and 1956 (Act of 31 March 1956), the same year that Morocco gained independence from France. By the time of the last amendment, these changes had prohibited patenting of food, drugs or pharmaceuticals per se. From 1888 onwards, the patent system allowed the applicant to make a choice of patent term between 5, 10 or 15 years, according to a known set of fees. Patents of addition, mirroring the French national system of the time, were also allowable. The current law substantive law, repealing the 1888 Decree, dates from 2000 (Patents of Invention Law No. 2000-84 (24th August 2000)), although certain aspects of the work of the patent office, which also deals with matters of standardisation in industry, were introduced earlier (Standardisation and Quality Law 1982-66 of 6th August 1982). Applicants can file their specification, claims and abstract in English, Arabic or French; publication has historically been solely in French and this is still the majority language at present, although it is likely that Arabic will become a more popular option over time, especially since the adoption of Arabic as an official publication language under the PCT. The old law of 1956 was not TRIPS compliant, in relation to pharmaceuticals, and it is clear from the text of the current law that Tunisia intends to invoke the maximum transition period allowable under TRIPS before examining this subject matter; however, it is not clear whether this period has expired, since Tunisia is not a recognised LDC. The examination is for formalities only. Applicants are obliged to notify the Tunisian authorities concerning search reports from other patent-granting organisations, relating to equivalent applications; this includes the international phase PCT search report where applicable. A notice of filing is published in the Industrial Property Bulletin within 18 months of the filing date and the specification is published as filed, incorporating any amendments submitted following the formalities examination. These published applications are open for opposition for 2 months from the Bulletin publication date and are then granted. Continuation in force is subject to payment of annual renewal fees. A separate notice of grant is issued in the Bulletin. The patent term is 20 years from the filing date (which is deemed to be the international application filing date in the case of PCT applications entering the national phase). There is no longer a mechanism for the granting of patents of addition, which had a (usually shorter) term due to their automatic expiry with their parent case. Utility models are not available in Tunisia. The patent office, known officially as the Institut National de la Normalisation et de la Propriété Industrielle (INNORPI) was created in 1982 by Law 82-66 and Decree 82-1314; it is currently governed by Law 2009-38 which placed the office

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under the oversight of the Ministry of Industry, Energy and Mines. The WIPO ST.3 country code for Tunisia is “TN”. Like Morocco, Tunisia has recently concluded a validation agreement with the EPO. With effect for applications filed on or after 1st December 2017, granted European patents can be validated in Tunisia and thus regarded as national Tunisian rights, subject to Tunisian patent legislation. The text of the European patent (if the original specification is in French) or the required translation must be filed within three months of the date of grant of the European patent, and a registration fee paid in order for the European patent to be fully effective in Tunisia.

National patent documentation INNORPI publishes its official gazette (Al-Muwassafat) on an approximately quarterly basis, which is made available on subscription via the official website. The issues from November 2014 onwards appear have been cumulated into a Tunisian IP Database, using the WIPO PUBLISH software platform; the data can be searched by individual fields or browsed by Journal issue. The numbering scheme used by Tunisia has changed over the years. The application number format reported in the 2001 WIPO survey12 refers to a form SNYYNNN, in which the letters SN denote a new series (similar to the old Australian filing numbers which contained two letters, Pa, wherein letter “a” changed periodically), YY represents the last two numbers of the year of filing and NNN is a serial number allocated in order of filing date. This system is present in the bibliographic data for applications filed up to 2008. Applications were published re-using the same number as the publication number, with a KD code -A1. From 2009, a new application number format was introduced in the bibliographic data. The letters SN were dropped and the year portion was expanded to 4 digits. The generic format is now P/YYYY/nnnn, where YYYY is the year of application and nnnn is a variable length serial number, restarting at 1 each year; database entries standardise the serial number length to 7 digits, left-filled with 0 as appropriate. The corresponding publication number format removed the letter P and standardised the serial number to 6 digits i.e. TN YYYYNNNNNN-A1. However, there is a substantial transition period to the use of the new style numbers. The EPO’s upload record for DocDB shows that the Tunisian office appeared to publish no cases at all between February 1996 and December 1998; publications before this hiatus have the old style application numbers in both the bibliographic data stream and printed on the front pages. A modernised front page design was introduced when publication resumed, which reproduces the application numbers at INID 21 using the new style, even though the electronic

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bibliographic data continued in the old form. This continued for a period of 10 years, until the bibliographic data and front pages match. It was not until well into 2010 that the last applications were published which used the old-style application numbers. The following Table 9.6 shows examples of how the transition appears. Table 9.6: Transition in Tunisia application numbering systems. Bibliographic data (application)

Bibliographic data (publication)

Application number format as printed on front page

SN. (filed ..)

TN SN-A (published ..)

SN .

SN. (filed ..)

TN SN-A (published ..)

TN/P//

SN. (filed ..)

TN SN-A (published ..)

TN/P//

TN (filed ..)

TN -A (published ..)

TN/P//

After publication, if no opposition has been registered after the end of a period of two months, a 5-digit chronological grant number is allotted to the actual patent granted. The granted patent is published again, and the publication number is the same as the grant number. A summary is given at Table 9.7. The published documents do not carry a discrete publication number, at INID 11; instead, the application number is re-used with the addition of a KD code A1 at INID 21. The ST.16 KD codes used in the EPO’s DocDB database are: TN-A1 Published patent application TN-A7 Published application for certificate of addition TN-B1 Granted patent TN-B7 Granted certificate of addition.

Table 9.7: Numbering schemes for Tunisian patent applications and grants. Application number format

DocDB standard format

Publication number DocDB standard format format

SN. TNSN TN SN-A filed .. filed .. published ..

TNSN-A published ..

Grant number format

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Table 9.7 (continued ) Application number format

DocDB standard format

Publication number DocDB standard format format

Grant number format

SN TNSN TN P// filed .. filed ..

TNSN-A published ..

TN P// TN TN P// filed .. filed .. published (national filing) ..

TNA published ..

Granted ..

TN P// TN TN P// filed .. filed .. published .. (PCT filing date) lodged .. (national phase entry date)

TNA published ..

Granted ..

Databases and database-specific aspects As with Morocco, Tunisian documents have been loaded into a number of family databases, but in addition are available as a separate national file through several vendors. These are shown in Table 9.8. At the time of writing, there appears to be multiple interfaces to Tunisian data on the INNORPI website, one of which is labelled the “Base National de la Propriété Industrielle”. This appears to be more comprehensive than the older TPAT interface, and to include some register-type Table 9.8: Tunisian patent databases. Producer

Service name

Platform

Coverage

INNORPI/ WIPO

PatentScope

www.wipo.int/patentscope/en

–date, bibliographic data + abstracts

INNORPI/ EPO

Espacenet Worldwide

http://worldwide.espacenet.com

–date, bibliographic data, some abstracts, page images

LexisNexis

TotalPatent One

www.lexisnexisip.com/products/ total-patent-one

–date, bibliographic data

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Table 9.8 (continued ) Producer

Service name

Platform

Coverage

INNORPI / EPO / WIPO

Arabpat

http://ab.espacenet.com

(as for EPO Worldwide database)

INNORPI/ WIPO

Base National de la Propriété Industrielle

Link from INNORPI website at www.innorpi.tn/Fra/accueil__ > https://intranet.innorpi.tn/wo publish-search/public/home?

Bibliographic and image data for c., patents; year coverage unclear

INNORPI

TPAT

Links from INNORPI home page at Acceuil > > Services en ligne > Brevet > www.innorpi.tn/Fra/brevet_ _

Bibliographic data and abstracts; content unclear.

information as well as access to PDF page images. There is no separate publication server as such. If the EPO validation agreement starts to grow in popularity, resulting in a rise in granted patent rates, it is to be hoped that the publication and distribution systems will be upgraded to handle the additional traffic.

Algeria Historical aspects and current law Algeria is the third former French colony in northern Africa, gaining independence in 1962, and has had its own national patent legislation since 1966 (Decree 66-60 concerning Patents and Inventors Certificates, March 1966), the same year as the country became bound by the Paris Convention. Prior to independence, Algeria was administered by France as an overseas département, and French patent law extended to this territory by a Decree of 5th June 1850. The first post-independence law was supplemented by the Décret Législatif no. 93-17 dated December 1993, and has now been replaced by Law No. 03-19 (4th November 2003) which approved a new substantive text in the form of Ordinance No. 03-07 (19th July 2003) on Patents. Additional laws from 2003 revised the regime for trade marks and semiconductor chip topographies. There has also been an implementing regulation in the form of Décret Exécutif No. 05-275 (2nd August 2005), laying down the procedures for filing and issuance of patents. The national patent office was originally

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325

established as the Office National de la Propriété Industrielle (ONPI) in 1963, and changed by Ordinance No. 73-62 (21st November 1973) to the Institut Algérien de Normalisation et de Propriété Industrielle (INAPI). In 1986, responsibility for trade marks was transferred to the Centre National du Registre de Commerce (CNRC). There was a further reorganisation and renaming in Décret Exécutif No. 98-68 (21st February 1998), which centralised all IP, including the former CNRC functions, back under the remit of the re-named Institut National Algérien de Propriété Industrielle (INAPI). The WIPO ST.3 country code for Algeria is “DZ”, derived from the transliteration of the Algerian Arabic name for the country “Al-dz āyīr”. The modern patent term under the 2003 law is 20 years from the filing date. This law also provides for certificates of addition to a patent, which may be applied for by the owner of a patent at any time during the validity of the parent. If granted, certificates of addition have a term equal to the remaining term of their parent case i.e. until the parent case lapses, expires or is revoked. Since the accession of Algeria to the PCT, national phase entries which are granted have a term dating from the international PCT filing date. Examination is for formalities only, although applicants are required to provide the results of search reports conducted by patent offices in relation to any corresponding (equivalent) applications worldwide. National applications must be lodged with a specification in both French and Arabic, but PCT national phase cases must be supplied in Arabic only; this suggests that, in future, more granted patents will appear in the Arabic language. Once granted, patent details are published in the Bulletin Officiel de la Propriété Industrielle (BOPI). Grant is on the basis, according to the wording of the 2003 law, of “sans garantie, soit de la réalité, de la nouveauté ou du mérite de l’invention, soit de la fidélité ou de l’exactitude de la description” – in other words, identical wording to the old French patent law of 1844, which drew upon the Napoleonic decree of 17th September 1800, which led to the patent marking of “S.G.D.G.” or ‘sans garantie du gouvernement’. There is no provision for opposition; any revocation proceedings must be brought through the civil courts. The publication takes the form of basic bibliographic details only, including publication number, name of patentee, and dates of application and grant. The specifications may be obtained on application to the patent office.

National patent documentation Prior to 2002, the EPO formatted the application numbers for Algerian documents in a simple running series identical to the publication number but with the

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addition of a letter “D” e.g. application number DZD3213 dated 9th November 2000 became publication number DZ-3213-A1, published 17th May 2001. However, the corresponding facsimile document does not record an Algerian application number at all, but only the PCT international application data at INID 21 and 22, and the publication date at INID 47 is actually the publication date of the earlier PCT application, not the date of grant in Algeria. For publications with a nominal publication date of 2002 onwards, the EPO format of the application numbers changed, to a 4+7 format YYYYNNNNNNN e.g. 19970000024. The original format is shorter, being a 2+4 combination YYNNNN, where YY is the last two numbers of the year of application and NNNN is a running annual serial number. As before, national phase PCT cases normally record only the PCT international application number (PCT/CCYY/NNNNN or PCT/ CCYYYY/NNNNNN) at INID 21, together with any priority which the PCT case claims at INID 30. On publication, the document is given a new publication number from a running series, of up to 4 digits, followed by a KD code -A1. Due to the differences in filing requirements, grants based on a PCT national phase entry are invariably published in Arabic, whilst national applications may be in French or Arabic. For any given publication date, there may be large gaps (e.g. on 29th May 2005, the INAPI data indicates the publication of 10 cases, with numbers 2660, 2970, 3321–3326 inclusive, 3329 and 3330). It is important to note that the date of publication on the front page of an Algerian specification is not always significant in terms of actual availability in that form. The result is that the sequence of Algerian publication numbers is not in strict chronological order, if sorted according to the front page publication date rather than BOPI issue date. This is a particular problem with PCT national phase entry cases, as indicated above. These will be printed as a DZ-A1 specification after Algerian grant, and will carry a publication date at INID 47 (defined as publication date of a granted patent), which is not the date of grant within Algeria at all, but corresponds to the publication date of the predecessor WO-A unexamined application during the international phase. The announcement in the BOPI of the grant in Algeria is many months later than this date, after national phase entry and completion of Algerian formalities examination. Similarly, a nationally filed case typically carries a publication date on the front page of its specification which is a number of months earlier than the cover date of the BOPI issue announcing the grant. Some examples can be seen in Table 9.9. Note that due to the lack of availability of the facsimile form of the specifications, it is hard to judge whether this same issue is a problem in recent

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327

Table 9.9: Algerian publication and Bulletin dates. Publication number

INID  publication date

DocDB publication date

Algerian BOPI issue no/ date

DZ -A

..

.. (= WO /-A)

 / Oct 

DZ -A

..

.. (no prior PCT filing)

 / Oct 

DZ -A

..

.. (no prior PCT filing)

 / Dec 

DZ -A

..

.. (= WO /-A)

 / Dec 

years; the BOPI is available to 2014, whereas the publication year of the latest PDF copies of the specifications is no later than 2006, at the time of writing. A granted Certificate of Addition has a different title at INID 12 (Certificat d’Addition instead of Brevet d’invention) and a text annotation consisting of a cross-reference to the parent document’s number and application date. There is no entry in the INID 21 field for a conventional application number, although there is a date of application at INID 22; the serial number of the certificate of addition is printed at INID 61 instead. There is no unique KD code for these publications, and they take a publication number from the same sequence as regular patent grants. The Bulletin Officiel de la Propriété Industrielle (BOPI) is published approximately every 2 months. A collection of PDF copies is available on the INAPI website, covering some examples from the period 1967–1971, and an almost complete collection from issue 273 (October 2003) to date. Some issues contain only trademark or design data, and no patents, but content of each issue is clearly identified. At the time of writing, the most recent Bulletin with patent data was dated October 2014. Entries include basic bibliographic data, including publication and application number and dates, applicant details, an abstract (in French) and exemplary drawing. There is no classification data and cases are included in publication number order, with no additional indexes; the highest number reported in the BOPI of October 2014 was DZ 7900. No KD code is reported in the BOPI itself, although family databases apply the code -A1 for the grant documents.

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Databases and database-specific aspects Compared with Morocco and Tunisia, data from Algeria has not yet reached the same level of accessibility, as shown in Table 9.10. There is a limited range of documents in the EPO’s DocDB family database, which is made publicly available via the Espacenet website, but this appears to load the bibliographic details and PDF image files only when they are available together – more recent bibliographic data from the Algerian BOPI does not appear to be included, judging by the publication numbers which are available. The coverage statistics13 indicate that the most recent data was received in 2018, but relates to cases granted in 2006. There is no Algerian content in PatentScope, nor is there any indication that the country will participate in the Arabpat project in the near future.

Table 9.10: Algerian patent databases. Producer Service name

Platform

Coverage

EPO/ INAPI

Espacenet Worldwide

http://worldwide. espacenet.com

Nominal publication dates –, bibliographic data and page images.

LexisNexis

TotalPatent One

www.lexisnexisip.com/ products/total-patent-one/

Limited bibliographic data –, page images –.

INAPI

Bulletin (BOPI)

http://e-services.inapi.org/ SITE/?Rub=Boip

Approximately –. No search function – browse by issue number only.

INAPI

National database

http://e-services.inapi.org/ Currently unavailable SITE/?Rub=Recherche_enline

Egypt Historical aspects and current law Modern Egypt gained nominal independence from Britain in 1922, as a monarchy, and British occupation ended in 1952. The country became a republic the following year. There was a short-lived political union with Syria to form the United Arab Republic between 1958–1961. It is the third most-populous country in Africa (after Nigeria and Ethiopia) and the second-largest economy (after Nigeria), having overtaken South Africa in 2016. The current WIPO ST.3 country code for the Arab Republic of Egypt is “EG”; prior to changes in 1978, the code was “ET”, which is the current code for Ethiopia.

Egypt

329

A major substantive patent law came into force in 1951 (Law No. 132 of 1949), which also established the Egyptian Patent Office. This law did not allow per se protection of agrochemicals or pharmaceuticals, only for processes for their production, and provided for a reduced 10 year term for this subject matter. Following Egypt’s early accession to the WTO, TRIPS-compliant legislation was passed which allowed patentability for these inventions as well, but taking advantage of the built-in deferment period for developing countries. This was achieved by delaying repeal of parts of the 1949 legislation until 1st January 2005. A “Black-box” regime was implemented, allowing for the lodging of applications dealing with this subject matter between 1st January 1995 and 1st January 2005, with examination commencing once this period had expired and the new law was fully in force. Although the new law provides for a 20 year term for all subject matter, there is no provision for term extension for pharmaceuticals or agrochemicals. The current law is Law No. 82 of 2002 on the Protection of Intellectual Property Rights, particularly Book One which covers patents and utility models. Implementing regulations were issued the following year, as Council of Ministers Resolution No. 1366 of 2003 (also cited as Prime Ministerial Decree of the same number/year). Protection term under this law is 20 years from filing for patents and 7 years for utility models; patents already in force when the new law was introduced had their terms automatically extended to the 20 year standard. Specifications under the new law must be filed in Arabic, accompanied by an English and Arabic abstract. There is no early publication of unexamined applications. After substantive examination is completed, a notice of acceptance is entered into the monthly Patent Gazette, which is followed by a 60-day opposition period. At this point, third parties may obtain access to the application contents and register entries. A separate notice of grant is published after the opposition period closes. Some authorities suggest that grant should be completed within 12 months of the date of filing, but in practice the total duration between filing date and grant may be over 3 years, particularly since the accession of Egypt to the PCT in 2003. Apparent pendency times are also distorted by the late grant of pharmaceutical patents under the Black Box procedure. Renewal fees are payable from the second anniversary of filing onwards. The Egyptian Patent Office has operated under the auspices of the Egyptian Academy of Scientific Research and Technology (ASRT) since 1971. In 2009, it was accredited as an International Search Authority and International Preliminary Examination Authority under the PCT, and became operational from 1st April 2013, and is the first intellectual property office on the African continent to attain this status. Egypt does not belong to either of the two regional African patenting systems, OAPI and ARIPO.

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National patent documentation Both patent and utility model applications are allocated a serial number on receipt, from an annual series starting on 1st January each year. On grant, a separate publication number is issued from a continuous series, currently standing at somewhat less than 30,000; the same numbering series is used for both patents and utility models, interleaved. Grant documents are not given any KD code on their front pages, but utility models can be distinguished by the plaintext Arabic description at INID (12). The EPO allocates all Egyptian publications (patents, old-law patents of addition and utility models) the same KD code EG-A; the corresponding PatentScope records use a -B code. Grants issued from applications filed via the PCT route carry the letters “PCT” underneath the national coat of arms on the front page, but are not otherwise distinguished from other national applications i.e. no special number series or suffix. They do, however, generally include some bibliographic elements (such as applicant name, inventors names etc.) in English, whereas national front pages not claiming priority from outside Egypt are in Arabic only. The EPO standard for current application numbers renders them in a 4+2+5 format (4 digit Western year + 2 digit Western month + 5 digit serial number, of which up to 4 are commonly non-zero). Announcements in the Gazette also include the month element at INID (21), but the front page format (written in Arabic script) omits this element and uses only 4 digits for the serial number, left-filled with zeroes (see Table 9.11).

Table 9.11: Numbering schemes for Egyptian patent applications and grants. Application number format

DocDB standard format / date

Publication number format

DocDB standard format / date

/

EG (..)



EG -A (..)

/

EG (..)



EG -A (..)

/

EG (..)



EG -A (..)

/

EG (..)



EG -A (..)

/

EG (..)



EG -A (..)

Egypt

331

In the case of grants maturing from a PCT international application, the INID fields (30) or (31)(32)(33) on the front page of the granted document are used to record any national priority and the PCT international application number and date, as is conventional. However, INID (22) records the date of national phase entry, not the true national application date accorded to the case by virtue of the earlier PCT application. This can lead to confusion in interpreting the correct starting date for the term of the granted patent. To assist this process, all granted cases (PCT or national route) include on the front page a non-fielded text string, underneath the title field (INID 54), citing the legal national application date and a predicted expiry date. This information also enables the user to distinguish between a patent and a utility model, since in the latter case, the predicted term is shorter; the expiry date appears to be listed as 7 years less 1 day in the case of utility models, and either the exact 20th anniversary or within a few days of this, in the case of patents (see Figure 9.3). As a signatory state to the 1975 Strasbourg Agreement since shortly after its inception, Egypt classifies its national documentation according to the International Patent Classification. Recent issues of the Gazette and front pages carry the identifier “IPC8” or “Int.Cl.8” at INID 51; it is not clear whether Egypt is applying the most recent revisions as they come into force, but class marks are present down to sub-group level. The Patent and Utility Model Gazette issues monthly, with an annual numerical, applicant/inventor and classification index. It is available in PDF format since the beginning of 2000. The Gazette includes a listing of patent applications published after acceptance, in application number order, and a separate section on notice of patents granted (in grant number order). The legal date of grant is given with each record, and is not the cover date of the Gazette; each issue cumulates announcements of grants which have taken place during the course of the preceding month.

Databases and database-specific aspects Egyptian patent data is included in public databases such as the EPO’s Espacenet and WIPO’s PatentScope services, as well as some data available via the EGPO itself. The sources are summarised in Table 9.12. In addition to the Gazette, the Egyptian Patent Office publishes a monthly periodical “Egyptian Patent Abstracts”, which is available from 2000 onwards via the Office website. It is slower to publish than the Gazette, and at the time of writing is only available up to late 2016 (Gazette available to late 2018), which covers acceptances from

EG 26913–sub-title text indicates term from 2010.12.02 to 2030.12.02 (20 years, patent)

EG 26833–sub-title text indicates term from 2008.08.05 to 2015.08.04 (7 years, utility model)

332 Chapter 9 Africa and the Middle East

Figure 9.3: Front page data on Egyptian documents indicating patent term.

Egypt

333

Table 9.12: Egyptian patent databases. Producer

Service name

Platform

Coverage

Egyptian Patent Patent and Utility www.egypo.gov.eg > News Current month of Gazette; Office Model Gazette and Information > PDF issues since  Publications > (monthly). “Newspaper” Egyptian Patent Egyptian Patent Office Abstracts

www.egypo.gov.eg> News and Information > Publications > “Egyptian Patent Office Abstract”

Bibliographic data and English abstracts, – date.

Egyptian Patent Egyptian Patent Office Search

www.egypo.gov.eg> Search > Search in Egyptian Patent Office Database

Bibliographic data and English/Arabic abstracts, –date.

Egyptian Patent Espacenet Office/ EPO Worldwide

http://worldwide.espace net.com

Patents and utility models, –date. Mainly bibliographic data, some page images.

Egyptian Patent WIPO PUBLISH Office/ WIPO

www.egypo.gov.eg> Search > Search using WIPO PUBLISH

Patents, –date. Bibliographic data only (limited English translation, mostly Arabic only).

Egyptian Patent PatentScope Office/WIPO

www.wipo.int/ patentscope/

Patents and utility models, –date. Bibliographic data, some abstracts.

EPO/Agadir Agreement member states

Arabpat

http://ab.espacenet.com; www.arabpat.com

(as EPO Worldwide database)

Lexis-Nexis

TotalPatent One

www.lexisnexisip.com/ Patents –date, some products/total-patent-one/ page images –

approximately 1 year before, with abstracts published in English. An expected expiry date is included as part of the notice, as with the original Arabic front pages. A newer search facility has been added to the EGPO website in the form of a database produced through the WIPO PUBLISH cooperation programme. The coverage is more extensive in years, but more limited in content. It is not known at present whether this additional digitised data will be added to the PatentScope collection in due course, or made available to third party data distributors.

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Kenya Historical aspects and current law The earliest patent registered in Kenya dates from 1914, under the colonial Patents and Designs Ordinance 1913, derived from the United Kingdom. Entry number 1 in the new Register of Patents was announced in the Kenya Gazette dated 30th December 1914, and relates to the re-registration of patent GB 11371 of 1913, issued to the Marconi Wireless Telegraph Co. Ltd on 14th May 1914. The re-registration date was 23rd December 1914. Although the country became independent in 1963, it did not pass its own national legislation immediately. Kenya became a signatory state of the Paris Convention in its own right in 1965, but retained its pre-independence links, providing for the re-registering of United Kingdom patents by the continued operation of the former Kenya Patent Registration Ordinance 1933 as the Patents Registration Act 1962 (Laws of Kenya, Cap. 508). This was revised in 1982, but it was not until 2nd February 1990 that the country repealed this procedure and introduced its own substantive legislation in the form of the Industrial Property Act No. 19 of 1989 (Laws of Kenya, Cap. 509). Patents granted under this Act had an initial 7 year term, optionally extendible to a maximum of 17 years, both counted from the date of filing. There was no provision for early publication of unexamined applications; information concerning the application was published only once, at grant. Kenya has been a party to the PCT since 1994. It is a member of the Englishspeaking regional system ARIPO, and has ratified the Harare Protocol since 1984, meaning that it recognises ARIPO grants as valid on its territory, subject to a national right of refusal (see the section on ARIPO for further details). This membership of ARIPO boosts the annual number of patent rights entering into force in Kenya per year, beyond their national patents. Kenya has Swahili and English as its official languages, and all patent documentation is in English to date. The current national legislation is the Industrial Property Act No. 3 of 2001, which covers both national patent and national utility model laws. The implementing regulations were issued the following year, as Industrial Property Regulations, 2002 (Legal Notice No. 50), in force from 1st May 2002. There were a number of minor amendments issued in the Statute Law (Miscellaneous Amendments) Act No. 11 of 2017; one amendment increased the allowable delay for filing a request for substantive examination from the original 3 years from filing, to 5 years from filing.

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335

Under the 2001 law, applications must be filed in English. A provisional application is possible, which must be followed within 12 months by a complete filing, otherwise the application is deemed withdrawn; this has echoes of the old British law of 1949. Applications are assigned a filing date and submitted to a formalities examination; subject to completion of this, the bibliographic details are published at 18 months after filing/priority date, but the full specification is not made available by publication. A request for substantive examination must be submitted within 5 years of the national filing date in Kenya. In common with many other smaller patent offices, applicants may be required to submit search and examination results from equivalent cases outside Kenya, to assist in examination. If accepted, a certificate of grant is sent to the applicant and the grant is announced subsequently in the Kenya Gazette or the Industrial Property Journal; the grant notice consists of bibliographic details only. Invalidation proceedings may be initiated before the Industrial Property Tribunal within 9 months of grant. Renewal fees are payable annually, even whilst the application is pending. Kenya grants two forms of patent right; the main sequence of patents for invention have a term of 20 years from filing date and the utility models of 10 years from filing date. Patents of addition were allowable under older legislation, with a term which expired with the parent patent, but these are no longer issued. Pharmaceutical term extension is not allowable. The Kenyan patent system was administered by the Kenya Industrial Property Office (KIPO) from 1990, taking over most of the functions relating to IP rights from the Department of the Registrar-General; the latter retains responsibility for copyright. KIPO was reconstituted as the Kenya Industrial Property Institute (KIPI) in 2002 on the entry into force of the 2001 legislation. The ST.3 country code for Kenya is “KE”.

National patent documentation Kenyan patent documentation uses a current format for national application numbers which follows WIPO standard ST.13, using the form KE/P/YYYY/ NNNNNN, where YYYY is the year of application and NNNNNN is a 6-digit serial number. The serial number portion does not, at present, re-start at 000001 each year, but is issued in a continuous sequence. Although this form complies with the standard, there is some evidence that the year portion prior to the year 2000 was a 2+5 format e.g. KE/P/YY/NNNNN. PCT national phase entries have been recorded in two different ways. One format is identical to the national application number format, but the YYYY portion of the national application number consists of the year of national phase

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entry e.g. national application KE/P/2010/001151 is dated 24th March 2009, and is the 2010 national phase entry of international application PCT/JP09/056426 filed on 24th March 2009. A second format, in current use, omits the P portion of the number entirely and reduces the YYYY portion to 2 digits only, again representing the year of national phase entry e.g. national application KE/18/02989 has a national phase entry date of 16th August 2018 and is based on international application PCT/EP2017/053166. Applications are announced in the Intellectual Property Journal in numerical order; no new publication number is allocated, and the full specification is not published, only the bibliographic data and abstract. These announcements vary widely in their adherence to the statutory guideline of “as soon as possible after the expiration of 18 months from the filing date”. Some may be delayed substantially beyond this, whilst others may appear within a matter of weeks of the filing date; for example, the September 2018 issue of the Journal included numbers ranging from KE/P/2016/2500 (filed June 2016) to KE/P/2018/2986 (filed August 2018). Utility model applications use the same ST.13 standard, but replace the P with the letters U or UM and use a separate serial number series e.g. application number KE/U/2016/631, which was subsequently granted as KE 160-U. Publication numbers under the pre-1989 legislation were allocated in sequence, without a country code. Later references to the same grants in official publications (e.g. at the time of renewal fee payments) consisted of the grant number with a letter “P” prefix (see Table 9.13). The number series for both applications and publications were re-started with the introduction of the 1989 law. The first grant under the new series was published as KE 1, granted in 1994. Each IP right is issued in a separate running series, again without KD codes at source although these are added during the compilation of Kenyan data into family databases. Patents are currently below 1000 (the October 2018 IP Journal announced grants for numbers KE808-810 inclusive), utility models just over 200. Table 9.13 shows the pattern of publication numbers across the law change, based on DocDB and PatentScope data combined with the KIPI Journal and Kenya Gazette archive records. The general pattern consists of a grant rate of approximately 100 cases per year, with a hiatus between the repeal of the pre-1989 law and the first grant under the new system. A substantial proportion of all new cases filed now consists of PCT entries to the national phase, rather than filed directly at the KIPI. The KIPI gazette, IP Journal, is published monthly and is available in PDF from Jan 2003 to date. Under the older re-registration legislation, the IP office did not have a dedicated journal and the only announcement appeared in the

Kenya

337

Table 9.13: Kenyan publication (grant) numbers by date. Publication number

Grant date

Kenya Gazette (KG) or IP Journal (IPJ) announcement date

P 

..

.. (KG)

P 

..

.. (KG)

P 

..

.. (KG)

P 

..

.. (KG)*

KE 

..

.. (KG)

KE 

..

.. (KG)

KE 

..

.. (IPJ)

KE 

..

. (IPJ)

* appears to be the final re-registration, dated 18 Jan 1990, under the old Act (repealed 2 Feb 1990).

Government newspaper, the Kenya Gazette (see Figure 9.4 for an example notice from 1970). The Kenya Gazette continued in use for grant announcements for a transitional period after KIPO was created in 1990, but the modern IP Journal is the preferred means for publishing stages of progress through the KIPI procedure, although the law still provides for publication in either source. Each issue of the IP Journal contains separate sections for PCT national phase entry (application numbers allocated), national grants (including bibliographic details and an abstract), ARIPO grants (for which there may be substantial time lag), notice of renewal fee payments, and chapters on new utility models registered or utility models renewed. Users should note that the actual date of grant is not the cover date of the Journal; each record within the monthly issue has its own grant date recorded at INID 45, and grants from the preceding month are cumulated into one issue of the Journal. ARIPO grants are not re-numbered into a Kenyan national series, but retain the AP- grant number as originally issued by ARIPO.

Databases and database-specific aspects Kenya does not have a national patent database loaded on its own website at present. To date, national documentation must be accessed via third party sites such as Espacenet or PatentScope, or in the form of established family-based databases.

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Figure 9.4: Sample announcement in Kenya Gazette of GB re-registration.

The KIPI website does provide access to cumulated copies of the IP Journal, in PDF format, but there is no separate searching facility for these documents. In addition, the website includes a listing of expired patents; a few records include links to the full text of the patent itself, which may be unavailable for

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339

any other source. The listing is not comprehensive, but appears to be limited to expired patents related to the so-called Big 4 sectors (Manufacturing, Health care, Agriculture/Food security, and Housing) where the current Government is seeking to boost the Kenyan economy and infrastructure; since the patents listed are now available for use without licensing, they are included to illustrate KIPI’s role in achieving the Big 4 agenda aims. The coverage in PatentScope is recorded using a KD code -A, corresponding to the announcement of applications from the IP Journal; thus application KE/ P/1997/000102 is recorded as publication KE1997000102-A. As a consequence of this, the first 4 digits of the PatentScope publication number are not the same as the publication year e.g. KE2008000825-A was published on 31st January 2011. PatentScope does not include records of the final grant documents. The EPO’s DocDB and Espacenet services do not include the 18-month announcements, but only the grants, which are treated as the first publication. No coverage is present for the documents published under post-1989 legislation, so it is not clear how these will be processed if coverage resumes. For the back-file (1975–1989), there are two KD codes used; -A is used for granted (re-registered) patents and -D for a form of correction document; this code is used on occasions when numbering errors have been detected, as a means of distinguishing between two patents which have accidentally been issued with the same publication number. There are 16 known examples of this in the 10 year span of DocDB data 1977–87; one example is KE 3736-A granted to FMC Corp. in the field of agrochemicals on 10th July 1987 and KE 3736-D granted to Nestle SA for a food product on 4th September the same year. Access to the full text or PDF page images of Kenyan documentation is currently very limited, and is mainly available through the CIPIT website (see Table 9.14). The national law does not provide for the automatic publication of full specifications, either unexamined or at grant.

Table 9.14: Kenyan patent databases. Producer

Service name

Platform

Coverage

KIPI/ EPO

Espacenet Worldwide

http://worldwide.espace net.com

Patents and utility models, –c.. Mainly bibliographic data, some page images.

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Chapter 9 Africa and the Middle East

Table 9.14 (continued ) Producer

Service name

Platform

Coverage

KIPI/WIPO

PatentScope

www.wipo.int/ patentscope/

Patents and utility models, –. Bibliographic data, some abstracts.

Lexis-Nexis

TotalPatent One

www.lexisnexisip.com/ Patent bibliographic data, products/total-patent-one/ –

Strathmore University Center for IP and IT Law, Nairobi

Granted Patents

http://cipit.org > Granted patents > All Kenyan patents

Granted patents, – c. (some gaps) Number-only search, viewable full text, some PDF versions.

KIPI

IP Journal

www.kipi.go.ke > Journals

Monthly journal, – date (some gaps).

KIPI

Expired Kenya patents

www.kipi.go.ke > Big  Agenda

Irregular; currently ranges between KE – KE. Title and abstract only.

Introduction to the Middle East The countries of the modern Middle East have a complex history of governance and colonial influence throughout the nineteenth and early twentieth century. Although some areas became nominally independent in the aftermath of the First World War, the states which we now know did not fully emerge until the middle of the century. Their national intellectual property systems have been relatively slow to develop, although Bahrain had local legislation as early as 1955 (Patents, Designs and Trade Marks Regulation 1955) and the first Kuwait law was in place by 1962. Even today, many Middle Eastern countries place greater emphasis on trade marks or designs than on patents. Despite this low level of activity, research-intensive companies in certain industry sectors (notably oil and gas, electronics, software) are becoming increasingly aware of the need to protect their inventions in this region. Modern information services are gradually being put into place, to enable industry to apply for and to monitor IP rights granted in these countries. Relatively little has been published in English about documentation services from the Middle East, although the patent procedures and development have been the subject of a number of legaloriented texts14, 15.

Introduction to the Middle East

341

Table 9.15 summarises the status of each country as of late 2018 in relation to some major IP treaties. The final two columns indicate membership of two of the major trans-national cooperative bodies in the region. A few countries which are included in some definitions of the Middle East have been omitted here, in cases where their IP status is more influenced by membership of the EPO (e.g. Cyprus, Turkey) or they have been treated under the section on Africa (e.g. Egypt).

Table 9.15: Treaty and membership status of selected Middle East states. Country name

ST. code

Paris WTO Convention

PCT

Arab League

Gulf Cooperation Council*

Bahrain

BH

.. .. .. .. ..

Iran

IR

.. Observer

Iraq

IQ

.. Observer

Israel

IL

.. .. ..

Jordan

JO

.. .. .. ..

Kuwait

KW

.. .. .. .. ..

Lebanon

LB

.. Observer

Oman

OM

.. .. .. .. ..

Qatar

QA

.. .. .. .. ..

Saudi Arabia

SA

.. .. .. .. ..

Syria

SY

.. Observer

United Arab Emirates

AE

.. .. .. .. ..

Yemen

YE

.. ..

.. ..

..

.. ..

..

* Member states of the GCC are also automatically designated states under the regional GCC Patent Office (GCCPO).

Patent information, in the form of gazettes, bibliographic data or published patent specifications, is produced in small volumes when compared to the national documentation of (e.g.) smaller European nations with well-established IP systems. The WIPO Statistics Data Center provided the source data for Table 9.16, showing average grant rates in the most recent five years for which data are available.

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Table 9.16: Major patenting authorities in the Middle East, based on average grant rates 2011–2015. Office

ST. code











Average –

Israel

IL













Iran

IR













Saudi Arabia

SA

*











Lebanon

LB









*



United Arab Emirates

AE













Jordan

JO













Yemen

YE









*



* no data reported to WIPO; not considered in calculating averages.

For comparative purposes, the following Table 9.17 shows an index of patent rights scores reproduced in 201016 from an earlier work using an index developed by Park17. This scoring system included consideration of the coverage of protection (patentable subject matter), membership of international treaties, duration of protection, enforcement mechanisms and the existence of any restrictions on patent rights (such as compulsory working or compulsory licensing provisions). For comparison purposes, the score for South Africa is included, showing that most of the Middle Eastern countries scored lower during the period under review, although Israel was roughly comparable. Table 9.17: Patent rights scores for selected Middle East countries, compared to South Africa (after Park). Average –







IR

.

.

.

.

Iraq

IQ

.

.

.

.

Israel

IL

.

.

.

.

Jordan

JO

.

.

.

.

Saudi Arabia

SA

.

.

.

.

Syria

SY

.

.

.

.

South Africa

ZA

.

.

.

.

Office

ST. code

Iran

Israel

343

The following national sections consist of the most-active patenting countries in the region, whose patent documentation is relatively well-accessible and/or included in established family databases.

Israel Historical aspects and current law A patent system was established in Israel in 1917, and the first application was filed on 13th April the same year. The industrial property legislation in force during the British mandate period (the Patents and Designs Ordinance 1925) was retained after the formation of the state of Israel in 1948, with minor amendments in the form of the Patents and Designs Ordinance (Amendment) Law, No. 5712-1952. The earliest systems did not apply substantive examination, but operated a registration system only. In 1967, a new Patents Act was passed, which is still the current law, with amendments. Patents Law No. 5727-1967, as amended, first came into force on 1st April 1968. It is implemented by the Patents Regulations (Office Practice, Rules of Procedure, Documents and Fees) No. 5728-1968, as amended, which came into force the same year (1968). Under the original form of this Act, the granting procedure was very similar to that under the UK 1949 Act, consisting of an announcement of filing within a few weeks (title, applicant and application date only), followed by substantive examination and an announcement of acceptance, a period for pre-grant opposition and a final notice of grant. The original form of the acceptance notice consisted of basic bibliographic details and an examiner-written abridgement (summary description). Copies of the specifications were only made available to the public after grant. The 1967 law was amended when Israel became bound by the PCT in 1996, to incorporate procedures for handling national phase entries. A further amendment in 2012 (the Patents Law (Amendment No. 10), 5772-2012, in effect 9th July 2012) introduced a system for publication of patent applications after 18 months (for national filings; for PCT applications, the early publication provisions apply from 45 days after national phase entry). However, this step does not take place if the application has already reached the point of acceptance before 18 months. The publication takes the form of a new announcement in the official gazette with enhanced details, but unlike major authorities such as the IP5 countries, it does not result in automatic availability of the specification as a discrete document. The contents of case dossiers, including the specification as filed, are laid open on the same date

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as the gazette announcement; the specifications are not issued with a standardised front page, nor given a KD code. The 2012 law amendment also removed the requirement for the acceptance notice to include an abridgement, reducing it to bibliographic data only. Under the present law, most specifications (the majority derived from the PCT) are published in English, although some grants to local applicants may be in Hebrew or Arabic, both of which are official languages. Opposition may be filed within 3 months of the notice of acceptance. If no opposition is filed, or on completion of opposition proceedings, the patent is granted and a certificate is sent to the proprietor. Renewal fees are payable at the end of the 6th, 10th, 14th and 18th years from application date. The current term for a patent in Israel is 20 years from the filing date. Patent term extensions for pharmaceuticals have been allowed since 1998, and are regulated under the Patent Regulations (Extension of Period of Protection – Procedures for Application for an Order, for Opposition to an Order and for Application for Cancellation), No. 5758-1998, in force since 1st July 1998. The substantive patent law was amended at the same time under Amendment No. 3 of the 1967 Act (26th February 1998), and has been further changed since then (The Patents Act (Amendment No. 11), No. 5774-2014). The Israeli system is unusual in that the grant and duration of a term extension within Israel is tied to the existence of corresponding term extensions (or equivalent legal instruments such as SPCs) in selected other countries. The maximum term allowable is 5 years, and – similar to the US – term extensions are available for medical devices which require regulatory approval, as well as active drug molecules and formulations. Israel also grants patents of addition, which expire with their corresponding parent patent. One aspect of Israeli patent law which is significant to the information specialist is the allowance for national applicants (individual or corporate bodies) to make their initial filing outside of Israel. In fact, most Israeli companies file first as a US national or PCT international patent application18. Israeli citizens, permanent residents or other applicants (including government entities) that “owe allegiance to the state” are only obliged to file first in Israel when their applications relate to inventions in the defence, security or nuclear energy sectors. This can significant impact statistical studies and state of the art surveys on Israeli-originated technology, since many of the relevant patent applications will not claim Israel as the country of priority filing. The Israel Patent Office (ILPO) was appointed as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT in 2009, and started operations from 1st June 2012. It is, to date, the only ISA/IPEA in the Middle East region. Although it is formally a unit

Israel

345

within the national Ministry of Justice, it has operated as an executive agency since 2006. The country code for Israel is “IL”.

National patent documentation The ILPO publishes a monthly gazette, the Patents Journal (previously the “Patents and Designs Journal” to June 2014). Due to the waiver on requirement to publish after 18 months in cases which have already been accepted, recent issues of the journal are split into two parts; “Publication under Section 16A” (18 months) and “Publication without Section 16A”. The earliest disclosure of applications appears in the latter part of the Journal, in the section “Applications filed”, which consists of brief bibliographic data and IPC to sub-class only. These are not published documents, but the information may be included in some family databases using the dummy KD code -A0 or -D0. Details of national phase entries under the PCT are also published in this section; application numbers run in the same series as national filings. The “Publication under Section 16A” part of the Journal lists fuller bibliographic details (including complete classification) for national applications which have been pending for more than 18 months after Israeli application or earliest priority. The full specifications of applications and their dossiers are also made available after this point, but not “published” in the sense of being made available as official documents with a standardised front page and KD code. If the case has already been accepted within 18 months, the second disclosure consists of the notice of acceptance published in the “Publication without Section 16A” part of the Journal issue, and the dossier is made available at grant. Once substantive examination is completed, accepted specifications are advertised in the Journal for opposition, consisting of bibliographic data and repeating the application number allocated on receipt (INID 21) as the corresponding publication number (INID 11). After the close of the opposition period, a simple numerical index of notice of patents granted (no other data) is printed in the Journal. The full specifications published separately at this point carry the KD code -A on their front page; however, these are recorded as KD -B in the PatentScope database. For a national filing, the following sequence is typical for a case proceeding to grant including 18-month publication:

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Chapter 9 Africa and the Middle East

Event

Number

Date of event

Form of publication

Content published

Priority application

IL 

..

IL notice of filing

IL -A ..

Journal /

Application no. and date, IPC subclass, title, applicant name.

IL notice of first publication

IL 

..

Journal /

Application and publication no., complete IPC, application date, title, applicant and inventor name.

IL notice of acceptance

IL -A

.. (acceptance completed ..)

Journal /

Application and publication no., complete IPC, application date, title, applicant and inventor name

IL notice of grant

IL 

.. (grant certificate date)

Journal / (dated ..)

Grant number

If an applicant requests accelerated examination, the sequence of announcements is slightly modified. Since acceptance is reached within 18 months, the notice corresponding to the first publication contains a statement that accelerated examination has been requested: Event

Number

Date of event

Priority application

IL 

..

IL notice of filing

IL -A ..

IL notice of IL  accelerated examination

..

Form of publication

Content published

Journal /

Application no. and date, IPC subclass, title, applicant name, inventor name.

Journal /

Application and publication no., application date, title, applicant and inventor name.

347

Israel

(continued ) Event

Number

IL notice of acceptance

IL notice of grant

Date of event

Form of publication

Content published

IL -A* .. (acceptance completed ..)

Journal /

Application and publication no., complete IPC, application date, title, applicant and inventor name

IL 

Journal / (dated ..)

Grant number

.. (grant certificate date)

* This record is given the Kind of Document code -A in the Espacenet/DocDB database, but Kind of Document code -B in PatentScope.

A typical sequence of events for a PCT national phase entry is as follows: Event

Number

Date of event

Priority EP application

..

PCT PCT/EP/ application 

..

PCT WO .. publication /-A IL national phase entry

IL 

Content published

Form of publication

Full specification

WO pamphlet

Application no. and date, IPC subclass, title, applicant name, inventor name, related PCT data.

Journal /

..

IL notice of IL -A filing

..

IL notice of IL -A acceptance

.. Application and publication no., Journal (acceptance complete IPC, title, applicant and / completed inventor name, related PCT data ..)

Notice of grant

IL 

.. (grant certificate date)

Grant number

Journal / (dated ..)

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Chapter 9 Africa and the Middle East

Documentation and publication sequences for patents of addition are essentially identical to regular patent filings. The Journal announcements include a cross-reference at INID 61 to the application/publication number, but without any additional data such as parent application date. Some recent examples include IL251883 (addition to IL250455), IL238287 (addition to IL229023) and IL224379 (addition to IL209332). In September 2016, the ILPO began to use the Cooperative Patent Classification (CPC) for classifying its national documents, following training from the USPTO. As such, it was an early adopter of the scheme, which only came into force at the beginning of 2013. The CPC is not currently printed on the front page of specifications, but is available as a separate search field in the ILPO database. Users should note that, although most published documents are derived from PCT applications and produced in English, some nationally filed specification and all of the office communications in the case dossiers will be in Hebrew only. The searchable Patents Journal also has a Hebrew-only interface.

Databases and database-specific aspects As noted above, there is some confusion about the KD codes applied to Israeli publications. Complete specifications published at acceptance – in PDF form – carry a Table 9.18: Israeli patent databases. Producer

Service name

Platform

Coverage

EPO/ILPO

Espacenet Worldwide

http://worldwide.espacenet. com

Bibliographic data,  to date.

ILPO

Patent Journal

www.justice.gov.il/Units/ RashamHaptentim/Units/patent/ Pages/YomanPatentim.aspx

Complete from Jan  to date (PDF or Word versions); some content back to .

ILPO

Patent Office Database

www.ilpatsearch.justice.gov.il/ UI/MainPage.aspx

Not clear; appears to be similar to DocDB content,  to date.

Lexis-Nexis

TotalPatent One

www.lexisnexisip.com/prod ucts/total-patent-one/

Bibliographic data,  to date, some page images –

WIPO/ILPO

PatentScope

www.wipo.int/patentscope/

Bibliographic data, some page images, –.

Saudi Arabia

349

code “A”, but no such code is present in the national register, and the bibliographic records in PatentScope with the same publication date are listed with code “B” and are designated “Granted”. Since there are very few oppositions in Israel, it is not clear whether an amended specification is published, and if so, what code it carries. The format of PDF documents available from different sources appear to be substantially different; dummy front pages are created within Espacenet based on the bibliographic data supplied by the ILPO, whereas the form supplied via PatentScope appears similar to the formalised layout familiar from authorities such as the EPO and JPO. A summary listing of public sources is given at Table 9.18.

Saudi Arabia Historical aspects and current law Saudi Arabia entered into the modern era of intellectual property after the Kingdom acceded initially to the WIPO Convention in 1982, followed by the Paris Convention in 2004. Trade mark registration had been available since 1939–40, and an early form of recognition and remuneration for employee inventions was available under Article 97 of the Labour and Workers Law, Royal Decree No. M/21 dated 6/9/1389 AH (15th November 1969), but the first true patent law was passed in 1989 (Patent Law, Royal Decree No. M/38 dated 10/6/ 1409H (corresponding to 18th January 1989)). Since this preceded the accession to the Paris Convention, this meant that foreign applicants were not automatically entitled to claim their priority when filing within Saudi Arabia, although there was provision to do so within the law. The 1989 Law was repealed by the current law which dates from 2004, the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs, Royal Decree No. M/27 dated 29/5/1425H (corresponding to 17th July 2004). Unusually, the 1989 law included a “public interest” clause enabling the patent-granting authority to delay granting patents on certain products and manufacturing processes for a period of at least 10 years. The normal patent term granted was for 15 years, with the possibility of an extension for a further 5 years. The earliest granted patent under this law was issued on 23rd December 1995. When the 2004 law was passed, repealing the 1989 one, the public interest clause was deleted, and it now provides for a more conventional term of 20 years, counting from the date of filing.

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Chapter 9 Africa and the Middle East

The processing of patent applications under the 2004 law consists of filing (now mandatory in electronic form), allocation of an application number and a formalities examination. PCT applications started to be processed as national phase filings from 3rd February 2015. After formalities examination, the application is prepared to be laid open via the SPO website, typically within 4–5 months of national filing and much earlier than the widespread standard of 18 months after filing. If the applicant fails to pay the required publication fee, the application is rejected but will still be laid open. If publication and examination fees are paid, the case proceeds to substantive examination after being laid open. Up to two examination reports may be issued, after each of which the applicant is invited to submit amendments. If after the second report, the case is still not meeting the requirements for grant, it will be finally rejected. If the applicant amends their case and brings it into line with the grant requirements, a decision to grant is issued. Provided that grant and publication fees are paid, the case is published, using a new grant number. There is provision for opposition within 3 months of publication of the granted patent, which may lead to partial or total revocation. With the 1989 law, a General Directorate of Patents was created within the King Abdulaziz City for Science and Technology (KACST) to examine and grant patents, and was later formally designated the Saudi Patent Office (SPO). The most recent re-organisation has brought together responsibility for patents, trade marks and copyright under a new Saudi Authority for Intellectual Property (SAIP), although at present the SPO is retains its own identity as a Directorate within SAIP. The country code for Saudi Arabia is “SA”.

National patent documentation One aspect of national information sources is the use of the Hijri calendar. Users should note that, unlike the Japanese and Taiwanese calendars which retain the same month structure as the Gregorian system but renumber the years, the Hijri calendar year is based on a shorter lunar year, consisting of only 354 or 355 days. This means that the beginning and end of a specific Hijri year do not coincide with a single Gregorian year. Fortunately there are readily available Hijri-Gregorian conversion tools on the internet. In Western texts, a Hijri calendar year may be denoted by the suffix AH (e.g. 2018 corresponds to 1439–1440 AH). It should also be noted that each day within the calendar year commences at sunset, which can make exact conversion to the corresponding Gregorian day problematic; fortunately, front page data often includes the Gregorian date as calculated by the SPO, as well as the Hijri date. For both calendars, complete dates may be cited in the DD/MM/YYYY or YYYY/MM/DD form, or the Hijri month may be rendered in text

351

Saudi Arabia

form (see below). The Hijri calendar year is used as part of the application number and in the recording of dates, but other aspects of the law are unaffected; for example, once granted, the term of a Saudi patent is 20 years from filing, as calculated on the Gregorian calendar. Month

Transliterated name

Arabic name



Muharram

‫ُﻣ َﺤ َّﺮﻡ‬



Safar

‫ﺻﻔ ﺮ‬



Rabi al-Awwal

‫ﺭﺑﻴﻊ ﺍﻷ ّﻭﻝ‬



Rabi al-Thani

‫ﺭﺑﻴﻊ ﺍﻟﺜﺎﻧﻲ‬



Jumada al-Awwal

َ ‫ُﺟ َﻤﺎ َﺩ ٰﻯ ﺍ ْﻷ َّﻭﻝ‬



Jumada al-Thani

‫ﺟﻤﺎﺩﻯ ﺍﻟﺜﺎﻧﻲ‬



Rajab

‫ﺭﺟﺐ‬



Sha’ban

‫َﺷ ْﻌَﺒﺎﻥ‬



Ramadan

‫ﺭﻣﻀﺎﻥ‬



Shawwal

‫ﺷ ّﻮﺍﻝ‬



Dhu al-Qidah

‫ﺫﻭ ﺍﻟﻘﻌﺪﺓ‬



Dhu al-Hijjah

‫ﺫﻭ ﺍﻟﺤﺠﺔ‬

Date 1427/09/02 AH = ١٤٢٧٠٩٠٢.

In addition to the calendar differences, much of the numerical data (numbers and dates) on Saudi documents may be recorded in Arabic script. Although the basic character set is easy to interpret, users who are unfamiliar with Arabic may assume that a number is read from right to left, as with Arabic text, but in fact numerical data is read from left to right, as with Latin script: 



















١

٢

٣

٤

٥

٦

٧

٨

٩

٠

Application number 04 25 0278 = ٠٤٢٥٠٢٧٨.

Under the original law of 1989, there was no formal publication of Saudi patents, either unexamined or granted. From 2004, a back-file was released consisting of un-numbered specifications as filed (internally designated as SA-A)

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and a formal front page or grant certificate, as the SA-B. The first case was granted as SA1 on 23rd December 1995. Current grant certificate numbers are running at just over 6,000 for patents. After 2004, a more systematic publication process was put into place. However, although the applications as filed were laid open to public inspection, this was only on the SPO website, and the documents carried no systematic bibliographic details or standardised front page. These documents were not collated into a national database as such. After substantive examination, the only publication was in the form of an SA-B specification, which carried a grant (certificate) number only, and no cross-reference to the earlier document. From March 2012, e-filing became mandatory at the SPO, and the back file from 2004–2011 was prepared for conversion to modern standards, including the possibility of re-numbering earlier laid-open applications into the current system. The procedure for examination changed at around the same time, to fast-track the majority of applications such that they reach grant within approximately 6 months of filing. The Saudi office has used two application numbering systems during its short life (see Table 9.19). This has created some problems for family database producers attempting to convert Saudi document numbering into their own internal standard, and some errors are evident in the existing data sets. This is exacerbated by examples where the Saudi format has been cited incorrectly in priority claims. The period between 2000–2009, when the GG element at the beginning of the application number included a leading zero, is known to have led to problems even in the Saudi internal databases; for example, publication of the application 04 25 0351 is recorded as SA 4 25 0351-A. As indicated above, the so-called SA-A documents were not originally published in the conventional sense as individual documents with a distinct identifier, but simply laid open via the SPO website without a standardised front page. The application number was re-used as the SA-A publication number. After grant, the final form of the specification was published with a new SA-B publication number, corresponding to the grant certificate number, at INID (11). There is no cross-reference to the date of publication or number of the corresponding SA-A document on the front page of the SA-B grant. The date recorded at INID (45) is the date of payment of the publication fee, rather than the actual date of availability of the specification. The patent enters into force when the grant fee is paid, which is also commonly different from the INID (45) date; unfortunately the SPO does not use INID (24) to capture this on the front

Format

KGGHHNNNN K = Kind of Right designator:  = patent; in use from   = integrated circuit layout  = plant variety right  = design; used from   = PCT national phase entry

GG =  digit Gregorian year of application, HH = corresponding -digit year of Hijri year of application, NNNN = running serial number restarting at  at the beginning of the Hijri year

Definition

SA; SA; SA

SA*; SA#; SA*; SA*; SA*

   ;    ;    ;    ;    

Examples (DocDB)

; ; 

Examples (national)

#

* The Kind of Right designator has been ignored and the Gregorian year of application moved to the end of the number. The Kind of Right designator has been ignored, the 2-digit Gregorian prefix replaced by a 4-digit version and the serial number expanded to 8 digits with leading zeroes.

–date

– GGHHNNNN

Period

Table 9.19: Saudi application number formats.

Saudi Arabia

353

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page. Grant announcements are also made in the Patent Official Gazette, which publishes approximately 3 times per year. The SPO is considering changes to its publication system and number formats at the time of writing (see Table 9.20). If adopted, unexamined applications will be formally published with a new number, different from the application number, and made available through a publication server. The same number will be used for unexamined publications (SA-A2, published without search report) and corresponding granted (SA-B1) documents; the latter will also carry the number of the grant certificate, which will continue the existing running series. The Kind of Right designator will expand to 2 digits, the Hijri calendar year is eliminated and replaced with a 4-digit Gregorian year, followed by a serial number, i.e. SA KK GGGG NNNN-A. In this system, KK = 10 for a national patent application and KK = 11 for a PCT national phase entry. Table 9.20: Sequence of publications from Saudi Arabia. Saudi filing data format (example)

Unexamined publication format (example)

Grant format (example)

– GG HH NNNN (   (..))

(not numbered) (“SA   -A” (..))

SA NNNN-B (SA -B (..))

–date

K GG HH NNNN (    (..))

SA K GG HH NNNN-A (“SA    -A” (..))

SA NNNN-B (SA -B (..))

Proposal (not in force)

K GG HH NNNN

SA KK GGGG NNNN-A

SA KK GGGG NNNNB [SA NNNN-B]

Saudi Arabia is a member state of the GCC Patent Office, which is also located in Riyadh. Patents granted by the GCCPO are valid in Saudi Arabia. No validation or re-publication takes place after grant, and there is no separate announcement in the Saudi Patent Official Gazette concerning their entry into force.

Databases and database-specific aspects Saudi data is gradually being added to established multi-country sources such as the EPO’s DocDB and the WIPO PatentScope system. The Arabpat project, which provides access to patent documents from a number of Arabic-speaking

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355

countries, may load a back-file of Saudi data in the future. Once the office has established a regular system for publication of unexamined applications, the same sources may include these documents as well; at present, comprehensive coverage consists only of the grant documents. Databases covering Saudi documents are summarised at Table 9.21. Table 9.21: Saudi patent databases. Producer

Service name

Platform

Coverage

EPO/SPO

Espacenet Worldwide

http://worldwide.espacenet. com

Bibliographic data, –.

WIPO/SPO

PatentScope

http://www.wipo.int/ patentscope/

Bibliographic data, –.

EPO/SPO

Arabpat

http://ab.espacenet.com

Proposed

SPO

Patent Journal

www.kacst.edu.sa/eng/ IndustInnov/SPO/Pages/ PatentPublications.aspx

PDF issues of the Patent Official Gazette from No.  (May ) to date.

SPO

Patent Office Database

www.kacst.edu.sa/eng/ Bibliographic data from IndustInnov/SPO/Pages/spo. SA () onwards; some aspx) > Patents Search full documents.

On the SPO website itself, the search facility is split by date. There are two databases available, for cases filed before or after 29th March 2012. The older file has an English interface but the more recent one has an Arabic interface only. Bibliographic search is available, which includes dates of publication of unexamined applications and final grant details, with limited legal status information. Some full documents are available, usually as .TIF format files.

Jordan Historical aspects and current law Following the breakup of the Ottoman Empire in the wake of the First World War, the Emirate of Transjordan was established in 1921. The League of Nations granted a British mandate over the territory, which retained a certain level of

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autonomy. In 1946, Jordan’s independence was recognised, and the country formally became the Hashemite Kingdom of Jordan in 1949. Although Jordan has averaged fewer than 100 grants per year in recent times, the national intellectual property regime is continuing to develop; the most notable recent step is the country’s accession to the PCT in June 2017. A series of 10 Technical Innovation and Support Centres (TISCs) has been created, based mostly in Amman, under the auspices of the WIPO programme of support for global infrastructure and capacity building. The earliest IP laws in the period after independence were Law No. 33 of 1952 on Trademarks and Law No. 22 of 1953 on Patents of Invention and Industrial Designs, which provided for a 16 year term for patents, counting from the date of filing and excluded product patents, allowing only processes. Patents of addition were available and novelty was relative to Jordan. The first edition of the Official Gazette was published on 20th November 1958. This law was replaced in 1999 by Law No. 32 of 20th September 1999 on Patents, which entered into force on 1st December 1999, and which implemented a number of changes in anticipation of Jordan’s accession to the WTO and ratification of the TRIPS Agreement. This included extension of patent term to 20 years from filing, incorporation of a universal novelty standard and extended patentable subject matter to include both products and processes. The 1999 law remains the substantive act, as amended in 2001 (Temporary Law No. 71 of 2001 Amending the Patent Law) and 2007 (Law No. 28 of 2007 Amending the Patents Law, which provides procedures for handling PCT national phase entries). It has been reported that two further amendments, introducing electronic filing and 18-month publication of unexamined applications, entered into force on 16th June 2017 (Patent Law No. 16 and Patent Law No. 17, both of 2017). However, the official Jordanian website is not yet indicating whether new procedures have been put into place, and it is not clear whether the “publication” will be in the form of full specifications or bibliographic data only. The following description is based on prosecution procedures before these amendments were passed. On receipt, a patent application undergoes formalities examination. Applications must be submitted in both Arabic and English in all cases. If formalities examination is completed successfully, the substantive examination may take one of two different courses. If corresponding applications for the same invention are co-pending in other national patent offices, the Jordanian examination is suspended until another office reaches a decision on grant. The Jordanian examination will then either grant or refuse its own case, following the decision from the other office. Full substantive examination is only conducted within the Jordanian office if there are no corresponding filings elsewhere in the

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357

world. Whilst the application is still pending, there is provision for publication of the application details in the Official Gazette, after eighteen months from the filing/priority date. If the application passes the examination process, it is accepted and a second notice is published in the Official Gazette, including the abstract and drawing, in both Arabic and English; at this point the application contents are laid open to public inspection. The applicant then obtains provisional protection between the acceptance date and the grant date, during which enforcement action may be initiated. A three-month pre-grant opposition period commences on publication of the Official Gazette notice. If no opposition is filed, a patent certificate is issued and the patent granted, on payment of a grant fee. Patents of addition are also available in Jordan, with a term equal to the residual term of their parent application. Patent application and granting functions in Jordan are operated by the Patent Registration Section of the Industrial Property Protection Directorate (IPPD), a part of the Ministry of Industry, Trade and Supply. The country code for Jordan is “JO”.

National patent documentation Current application numbers are issued in an annual sequence as YYYY/nnnn, where nnnn is a serial number of up to 4 digits; there is some evidence that the format nnn/YYYY has also been used in previous years. The EPO standard inserts a letter P into the sequence and renders them as JOPYYYYNNNN (fixed length). The pendency period for national filings ranges from c.2–5 years from the date of filing in Jordan. In recent years, applications for pharmaceutical compounds and processes have formed an increasing proportion of filings in Jordan19. These cases typically claim foreign priority and have substantially longer pendency, since Jordanian decisions on grant are dependent upon the situation in other jurisdictions; intervals of 10 years between filing and grant are not uncommon. Existing databases do not contain records of any 18-month (pre-acceptance) documentation, and all of the family databases which integrate the second (acceptance) publication use a form of KD code to indicate a granted case; the code -B1 is used in the DocDB database to indicate the publication of notice of acceptance, whilst PatentScope uses code -B for the same documents. New announcements of grant appear to be cumulated at approximately 6-monthly intervals, typically around March and September of each year. The monthly Official Gazette is available from approximately 2008-present on the IPPD website, although copies back to 1989 may be loaded in due course. Most monthly issues

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consist principally or solely of trade mark or design information. Publication numbers are in a running series across publication years, in the form JO NNNN-B1, currently running around 3,300. The Official Gazette also includes a section listing patents which have expired, and some legal status changes such as re-assignments or post-grant name changes.

Databases and database-specific aspects A listing of known public databases of Jordanian patents is given at Table 9.22. The content in the WIPO PatentScope and EPO Espacenet databases appears to derive from the same national backfile, although there is some difference in the loading; some records in PatentScope currently have incorrect grant dates such as 1899.12.30 [sic] instead of the true values, found from the corresponding Espacenet records. It is known that the Jordanian authorities have a more up-to-date searchable database in-house, but to date this has not been made available for public searching. Jordan is a partner in the Arabpat project, and has loaded a collection of data onto the search site, but this appears to be synchronised with the Table 9.22: Jordanian patent databases. Producer

Service name

Platform

Coverage

EPO/IPPD

Espacenet Worldwide

http://worldwide.espa Bibliographic data,  to date cenet.com (irregular before c.)

EPO/IPPD

Arabpat

http://ab.espacenet. com

(as for Worldwide) + titles/ abstracts in Arabic.

IPPD

Official Gazette

https://ippd.mit.gov. jo/Pages/viewpage. aspx?pageID=

PDF copies of Official Gazette from –present. Bibliographic data, abstract and drawing for accepted patents. Limited legal status.

Lexis-Nexis

TotalPatent One

www.lexisnexisip. com/products/totalpatent-one/

Bibliographic data, – (irregular before c.).

WIPO/IPPD

PatentScope

www.wipo.int/ patentscope/

Bibliographic data, – (irregular before c.).

WIPO/IPPD

WIPO Publish

http://ippublish.mit. gov.jo/wiposearch/ public/home

No information provided at source

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359

main Espacenet Worldwide (DocDB) file, and the only additional data available are the titles in Arabic. No additional years of data, or copies of complete specifications, are currently available. Records on the main Espacenet website may be retrievable by CPC if there are additional family members present, but original Jordanian bibliographic data includes the IPC only.

Iran Historical aspects and current law There has been relatively little published in English concerning the Iranian patent system, especially the information resources, although the background is reviewed in a 2007 paper by Rezapour et al20. The earliest modern-era laws date back to a 1924 Patent and Trademark Registration Act, amended in 1931, but after that followed a long period with no updating apart from slight modification in 1958. These earlier laws did not allow pharmaceutical patenting, although this approach was modified by a Supreme Court ruling in 1997, allowing some degree of protection to be obtained for products. The patent term allowed was 10, 15 or 20 years according to the choice of the applicant; since overall renewal fees for obtaining a 20-year term were not substantially larger than for the shorter terms, most applicants opted for the maximum patent term. The 1924/1931 law and the regulations of 23rd June 1931 provided for an unusual “declaration-based” form of examination in Iran. Patentability searches used only internal databases and were apparently limited to prior Iranian patents only. After completion of the search, the inventors were expected to defend their invention in oral proceedings, conducted before technical experts from the Iranian Research Organization of Science and Technology (IROST). Questions of novelty were determined on the basis of the actual “persons of ordinary skill in the art” present at the hearing, instead of the hypothetical legal construct used in other substantive examination procedures. Both patents and patents of addition were permitted under this system. The Iranian parliament passed the current Patents, Industrial Designs and Trademarks Registration Act in 2008, coming into force on 5th May 2008, with the implementing regulations being issued the same year and bringing new procedures into force from 10th March 2009. This law is based on the WIPO templates, and amongst other changes, introduced the modern standard of a 20-year term into the Iranian system, the recognition of chemical processes as patentable subject matter, and a new definition of universal

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novelty applied to substantive examination. The country’s accession to the PCT in 2013 will undoubtedly further raise the profile of the national system and hopefully result in more systematic coverage of the documentation issued by Iran. The 2008 law was implemented for an initial trial period of 6 years, after which it was reviewed, but it appears that no substantive amendments were introduced after that time. Both patents and patents of addition are provided for under the new law. Although there is no explicit utility model law, personal communication21 indicates that a form of short-term patent is available, when a regular application is examined only for novelty and not inventive step. Although the new law provides for full substantive examination within the Iranian patent office, it is observed that in practice, the former system of deploying external experts to determine novelty and inventive step has continued, largely due to lack of expertise and resources within the office. Applications are being sent to appropriate technical centres of excellence for comment, in a system more akin to scientific peer-review than an in-house examination procedure. The granting authority in Iran has previously been the Administration for the Registration of Industrial Properties (ARIP), but is currently referred to as the Industrial Property General Office or the Iranian Industrial Property Office. These agencies are affiliated to the State Organization for Registration of Deeds and Properties. The country code for Iran is “IR”.

National patent documentation Information on national Iranian documentation is very limited. Evidence based largely on non-Iranian filings claiming priority from Iran indicates that elements from the Persian calendar (year and month) have been incorporated into the application serial numbering system. As with the Hijri calendar, the Persian calendar is based upon astronomical observations, and the length of years do not correspond to the Gregorian year. Dates using this calendar may be suffixed with SH (Solar Hijri or Hijri Shamsi). To assist in interpretation, it should be noted that the character set used for numerals in the Persian (Farsi) alphabet is subtly different to that used in Arabic, for the numerals 4, 5 and 6: Latin





















Arabic

١

٢

٣

٤

٥

٦

٧

٨

٩

٠

Farsi

۱

۲

۳

۴

۵

۶

۷

۸

۹

۰

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361

On receipt, an application is allocated a filing number. The current format appears to have been adopted in approximately 2012, and consists of 17 or 18 digits, in the sequence SSSS NNNNNNNN NNNNNn, in which the first block SSSS is the Persian calendar year (Gregorian 2018 = SH 1396–97), the final 5 or 6 digits are a serial number and the middle block of 8 digits is a recurrent sequence “50140003”. The significance of this middle block is not known, and it appears invariant across the period from 2012 to date. Older formats of application number are present; prior to approximately 1994, a standard serial number sequence across years was used, up to 5 digits and approaching 30,000 in total. From 1994–c.2012, the application number format (again based on evidence from Iranian priority claims in foreign documents) consisted of SSS MM NNNN where SSS MM consisted of the last 3 digits of the Persian year and the 2 digits of the Persian month, followed by a 4 digit serial number e.g. application 390110278 was filed in the month 11 of Persian year 1390. One notable feature of the Iranian law is the speed of prosecution. The law allows a maximum of 6 months for determination of patentability questions, and in practice many cases are published as granted within 1–2 months. Patents of addition appear to be still permissible, although it is not known how these are distinguished in the documentation. The official register should enable the user to become aware of them, due to the record of the predicted term; patents of addition have a term corresponding to that of their parent, not the standard 20 years from filing. After the granting authority has completed its examination, the applicant is required to arrange for publication of the basic bibliographic details in the national Official Journal. The data published consists of the filing number and date, patent number and grant date, applicant and professional representative details, title and term of protection. The final grant number appears to be in a running sequence, which has reached at least IR 80000 (based on 2013 evidence). According to limited statistics available from WIPO, recent grant rates average 4,000–5,000 cases per year, so it is possible that current (2018) grants are numbered in excess of 100,000. There is no classification data included; although Iran is a signatory to the Strasbourg Agreement, it has never been ratified or entered into force. Once acceptance is published in the Official Journal, the authority issues a grant certificate. Until at least 2013, the notices of acceptance were the only public notification relating to patent prosecution or grant. Searchability of this data was very limited, hindered by the fact that this publication is not a dedicated patent office periodical, but contains patent information distributed amongst large volumes of other official announcements and documents. This makes it is very difficult to search in a comprehensive manner. The

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situation has improved somewhat since e-filing was introduced, and the patenting authority has implemented at least a trial version of a dedicated patent database.

Databases and database-specific aspects A short review of the developments in Iranian documentation was published in 201422. This included information about the new web-based databases which were becoming available. Information included in the national database is limited to bibliographic data plus term of protection; automatic access to the complete specifications is not included. In 2012, in the wake of an e-filing system being introduced, the patent office was able to launch a trial version of the current website, to search announcements of patent grant. This enables display of the full text of granted patents since 2011, although the quality of the searchable bibliographic data is still inconsistent (for example, IPC is not available for all records, some records are title-only etc.). At least one private database of Iranian patents is known to exist, compiled from Official Journal entries between 2008 and 2014 and consisting of approximately 32,000 records23. Iranian documents are not included in either of the large public internet databases (PatentScope and Espacenet); the known public databases from Iran are listed in Table 9.23. Table 9.23: Iranian patent databases. Producer

Service name

Platform

Coverage

Government of Iran

Iranian Official Journal

http://www.rooznameh Announcements of patent rasmi.ir or http://www. acceptance; no patentrrk.ir/ specific search fields available.

Iranian Industrial Property Office

Invention Database

http://ipm.ssaa.ir/ Search-Invention (registration required) http://ip.ssaa.ir/ Patent/Search.aspx (trial version, discontinued?)

Assumed to be the same as trial version i.e. bibliographic data,  to date. Some (non-searchable) abstracts, description, claims, full page images (JPG).

Iranian Industrial Property Office

Home page

http://iripo.ssaa.ir/

Not known

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363

Regional patent systems in Africa and the Middle East Africa – ARIPO and OAPI There are two operating regional systems in Africa, one for a number of the former French colonies which operates in French, and the other covering a number of former British colonies with English as its working language. The Francophone organisation OAPI (the Organisation Africaine de la Propriété Intellectuelle) is based in Yaoundé, in the Cameroon. It has seventeen member states and dates its origins from 1962, when the Malagasy Republic and eleven other states concluded the Libreville Agreement, to form the African and Malagasy Patent Rights Authority (OAMPI). Subsequently, the Malagasy Republic (Madagascar) withdrew and additional members joined a new arrangement, founded on the Bangui Agreement of 1977. The members at the time of writing are: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, and Togo. The Bangui Agreement entered into force on 8th February 1982, and is unlike any other operating treaty in intellectual property anywhere in the world. By contrast with systems such as the EPO, this Agreement creates a single authority, which is empowered both to grant and litigate in the patents arena. The Agreement becomes the controlling legislation for the member states, and although they do retain a national patent office presence (referred to as a “Structure National de Liaison” or SNL), they are to all intents and purposes sub-offices of the OAPI headquarters in Yaoundé, Cameroon. A single patent is granted by OAPI, carrying the “OA” code prefix, which has effect in all the member states, and (most significantly) the Organisation uses a centralised court structure which enables a single case to establish validity or order revocation for all the territories. The Organisation grants patents, patents of addition and utility models. The parallel English-speaking organisation to OAPI is ARIPO, the African Regional Industrial Property Organization, based in Harare, Zimbabwe. Membership is determined by accession to the Lusaka Agreement of 9th December 1976. At the time of writing there are nineteen member states: Botswana, the Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Principe, Sierra Leone, Somalia, Sudan, Swaziland (eSwatini), Tanzania, Uganda, Zambia and Zimbabwe. Within the framework of ARIPO, the member states must become a party to the appropriate Protocol agreement in order to recognise the IP rights applications filed at ARIPO. These are the Harare Protocol of 10th December 1982, which entered into force on 25th April 1984 (patents,

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utility models and industrial designs), the Banjul Protocol 1993 (trademarks), the Swakopmund Protocol 2010 (traditional knowledge and folklore) and the Arusha Protocol 2015 (plant varieties). All ARIPO states apart from Somalia have ratified the Harare Protocol. Under this system, the applicant can file an application with either their national office or directly with the ARIPO office in Harare. As with other regional offices, a single application can have effect in all designated member states, but the ARIPO system – unlike OAPI and the EAPO – allows the applicant to designate fewer than the maximum number. Applications which are filed at a national office are forwarded to Harare for examination after the preliminary formal stages. After substantive examination is completed, copies of the application are sent to each designated state, which reserves the right to make a pre-grant declaration within 6 months of receipt, that the ARIPO patent will not have effect upon its territory. In recent years, a revision of the Harare Protocol has made a link between it and the Patent Co-operation Treaty. Under this system, designation of “ARIPO” in a PCT application is taken to mean automatic designation of all states party to both the Harare Protocol and the PCT. The country code for ARIPO is “AP”. Both of the African offices have benefited from support for development of their electronic infrastructure in recent years, including provision of suitable database software and digitisation of back files of documents. They each have a website (www.aripo.org for ARIPO and www.oapi.int/index.php/ for OAPI) but these were, until recently, mainly devoted to news and procedural aspects of the respective Offices’ work. The ARIPO office has implemented a version of the WIPO-PUBLISH software in order to load the “ARIPO Regional IP Database”, located at http://re gionalip.aripo.org/wopublish-search/public/home/ (Figure 9.5). Some data on patents from 11 of the member states (Botswana, the Gambia, Ghana, Kenya, Malawi, Mozambique, Rwanda, Tanzania, Uganda, Zambia and Zimbabwe) are available on this platform. Users must select either “ARIPO” or an individual country first, in order to select a database for search, after which there is a basic and advanced search screen. Unfortunately, there is no information on the content (document kinds, year range) available, so it is not known how far back these collections extend, nor how comprehensive a search tool it is. Confusingly, there is also a search facility available via the e-service menu on the ARIPO website, which presents a simpler search interface, also apparently covering both ARIPO patents and those of the member states, but again without any coverage information. The monthly ARIPO Journal is available in PDF format from early 2015 to date, also via the e-service menu (http://eservice.aripo.

Regional patent systems in Africa and the Middle East

Figure 9.5: Home page of ARIPO Regional IP Database.

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org). This contains sections on patent applications filed (bibliographic details only, published within a short period of filing or PCT regional phase entry), patent applications accepted (pre-grant, bibliographic details only) and patents granted (standard front page format, abstract and drawing). No KD codes appear on the granted patents; recent numbering is in the region of AP-4600. The same interface gives access to the official journals of the 18 member states which have joined the Harare Protocol (year coverage is variable, but at least the last 2–3 years in PDF format appear to be present for most countries) and a link to a Publication Server. However, this last module appears to be more akin to a searchable form of the ARIPO Journal rather than a full document delivery service; for granted patents, the front page from the Journal is the only information available. The home page of the OAPI site has links to the Bulletin Officiel (BOPI) which is released in several editions, corresponding to the various rights issued by the Office. The BOPI/BR (BRevets = Patents) is published approximately every 2 weeks, and is available from 2014 to date in PDF format. There does not appear to be a separately searchable database of published documents, but recent ones are available in PDF format using a live link within the BOPI announcement. Each issue of the BOPI contains bibliographic details and abstracts of granted patents. Application numbers are formatted using the year of national filing or PCT regional phase entry, plus a single-digit Kind of Right prefix and a serial number e.g. K YYYY NNNNN (example 1201700231 filed 22nd June 2017). Once granted, the document is re-published with a new number in a running series, currently in the region of 18000 (e.g. OA 18486 was announced in BOPI issue 10BR/2018 dated 4th December 2018). Once a grant announcement is located, the link at the end of the record provides access to the complete specification; the full URL for this is in which nnnnn is replaced by the grant number (see Figure 9.6). The notice of grant in the BOPI may be several months after the actual date of grant, but the latter is recorded at INID (24) on the front page of the specification. Publications from both OAPI and ARIPO are included in the EPO’s DocDB services, and there was a disk-based product (now discontinued) in the ESPACE series covering OAPI publications 1966–1992. ARIPO documents for the period 1985–2008 are also included in the WIPO PatentScope service. It was announced in early 2017 that OAPI and ARIPO have signed a new four-year cooperation agreement, in which the offices agreed to work towards harmonisation of their systems and to increase their technical cooperation, including in the area of patent information24.

Regional patent systems in Africa and the Middle East

367

Figure 9.6: OAPI Bulletin entry and link (“Consulter le mémoire”) to corresponding specification.

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The Gulf Co-operation Council (GCC) Patent Office The Patent Office of the Co-operation Council for the Arab States of the Gulf, to give it its full title, was established by a statute of 1992 and is based in Riyadh, Saudi Arabia. The implementing Regulations were passed in 1996 and the operational Rules in 1998. The first applications were received on 3rd October the same year. The Office has six member states: Bahrain (BH), Kuwait (KW), Oman (OM), Qatar (QA), Saudi Arabia (SA) and the United Arab Emirates (AE). The first issues of the official gazette were produced in 2000, but covered administrative details only; the first announcements of patent grant did not take place until 2002. Part of the reason for this delay was the need to amend the original 1992 statute in the light of the TRIPS Agreement. After the amended law entered into force in 2000, patent examination and granting resumed. The Official Gazette now issues approximately monthly and is available in PDF and HTML versions, with the complete archive back to No. 1 loaded on the GCCPO website. The GCC Office is a regional alternative to the national patent offices of its member states, and provides for a substantive examination, albeit outsourced to more-experienced national patent offices, including Austria. Two of the GCC member states – Oman and Qatar – had no patent laws at all prior to their membership and Kuwait’s patent law at the time provided only for the lodging of an application and the allocation of a filing date and number; no further action was taken. In practice, only the Saudi and UAE patent authorities were functioning, and for the remaining four members of the office, the GCC route initially provided the only route to obtain substantive patent rights; all of the countries now have updated domestic legislation which operates in parallel to the GCCPO. The original term of the GCC patent was fifteen years, but this was revised in 2000 in order to bring the regional law into compliance with the TRIPS Agreement, and now allows for a 20-year term from filing date. Prior to 2016, the GCCPO operated a consultative grant process, whereby patent applications which had completed their substantive examination were sent to the IP authority in each member state for comment; if a member state objected to a proposed grant within 45 days, the claims could be amended or other corrections made. This review was in addition to the 3-month period allowed for public opposition, which took place after publication of the examined specification. In practice, this procedure was not utilised very often, and following a decision in March 2016, this internal consultation mechanism was abolished. The GCCPO has also introduced online filing systems,

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and both of these changes have significantly reduced application processing times. Early issues of the Gazette included a section listing “Applications approved for grant by decision, subject to completion of processing”. Early in the life of the office, each application was given an application number in the form GCC/P/YYYY/NNN where YYYY is the Western year and N is a serial number. Corresponding entries in the Gazette had a so-called “Number of the decision to grant the patent” listed at INID (11), in the form P/NNNN; these announcements were equivalent to publication for opposition prior to grant. Entries for the same documents in subsequent issues of the Gazette amended this format to a simpler, running number series, which is now used as the publication number, corresponding to the definitive grant number issued at the end of the 3-month opposition period. Although the country code “GC” has been allocated to the office, it is not used in the Gazette – instead, a plain language designation of the office name appears at INID (19). A sample front page, using this old system, is shown at Figure 9.7. In December 2004, the EPO announced that they would begin to load the complete collection of all GCC granted patents (KD code GC-A) into its DocDB database. Existing patents were retrospectively renumbered by the GCC, starting from GC-0000001-A granted 2002. At the time of writing, just under 10,000 patents have been granted (the highest number in Gazette issue 57 of 31st January 2019 is GC0009654-A). The GCC website is at http://www.gccpo.org, from which versions of the Gazette (PDF or HTML format) can be downloaded. Each issue of the Gazette has listings of listings of newly-granted patents (title only) and corresponding front pages, withdrawn and rejected applications and lapsed/expired patents, as well as various administrative decisions and rulings. By using the HTML version, links provide access to a standard front page, including the “Number of the decision to grant the patent” as a plain text comment, and the standard publication number now appears at INID (11); the PDF version provides links to the PDF specifications, but without the front page. Each version of the newly-granted patents table includes both the publication number and its corresponding application number, although the latter appears without its corresponding year prefix. The old-style gazette entry shown in Figure 9.7 was predominantly in English – the newer gazette entries seen in Figure 9.8 are in Arabic, although since much of the data are available in HTML format, it is possible to machine-translate much of the data, including the front pages. Shortly after the GCCPO started operation, some information on the sources of information created by the office appeared in an article by Al-Hajeri25. The search resources have improved somewhat since then, and Western database producers have begun to be interested in obtaining bibliographic information

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Figure 9.7: Gulf Cooperation Council Patent Office – old style gazette entry.

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Figure 9.8: Gulf Cooperation Council Patent Office – new style gazette entry (two parts).

and adding it to existing family databases, although it has proved difficult to obtain regular supplies of new data; the Espacenet coverage is from 2002–c.2012, with bibliographic data only. The GCCPO’s own search engine (https://www. gccpo.org/CustomersService/Adv_Search.aspx) does not provide any data on the range of years covered, but trial searches suggest that it is substantially more up to date than Espacenet. Simple current awareness searches could be carried out by browsing the PDF gazette, but the records are very brief. However, if relevant documents are located, machine translation of character-coded

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Arabic full texts into English has improved in recent years, and can now be used effectively to gauge relevance of Arabic-language originals. Users accessing documents via the GCC website will find that recent publications are delivered in the form of a single PDF which includes the grant certificate (stating the term and predicted expiry date), the formal front page from the gazette and the Arabic specification.

References 1 Kongolo, T. (2013). Historical development of industrial property laws in Africa. WIPO Journal 5(1), 105–117. 2 World Trade Organisation (2013). Decision of the Council for TRIPS of 11 June 2013 on the Extension of the Transition Period under Article 66.1 for LDC Members. WTO document IP/C/ 64. Geneva: WTO. 3 World Trade Organisation (2001). Declaration on the TRIPS Agreement and Public Health. WTO document WT/MIN(01)/DEC/2 (20 Nov. 2001). WTO Ministerial Conference, Doha, 9–14 Nov. 2001. Geneva: WTO. 4 Merso, F. (2013). IP Trends in African LDCs and the LDC TRIPS Transition Extension. Policy Brief No 16, 1st June 2013. International Centre for Trade and Sustainable Development. Retrieved from www.ictsd.org [Accessed 2018.11.25]. 5 TRIPS Council (2015). Decision of the Council for TRIPS of 6 November 2015 on the Extension of the transition period under Article 66.1 of the TRIPS Agreement for Least Developed Country members for certain obligations with respect to pharmaceutical products. WTO document IP/ C/73. Geneva: WTO. 6 Papageorgiadis, N., Cross, N.A.R., Alexiou, C. (2014). International Patent Systems Strength 1998–2011. J. World Business 49(4), 586–597. 7 Papageorgiadis, N. (2018.11.25). Index of Patent Systems Strength. University of Liverpool Management School. Retrieved from https://www.liverpool.ac.uk/management/research/proj ects/patent-systems/. 8 WIPO (2018.11.25). WIPO Statistics Data Center. WIPO. Retrieved from https://www3.wipo. int/ipstats/. 9 Department of Trade and Industry (2018.06.04). Intellectual Property Consultative Framework. 6th July 2016, para. 4.1.2. DTI. Retrieved from https://www.thedti.gov.za/news2016/ IPConsultativeFramework.pdf. 10 Department of Trade and Industry (2018.06.04). Intellectual Property Policy of the Republic of South Africa Phase I, 2018, para. 7.1.2. DTI. Retrieved from https://www.thedti.gov.za/ news2018/IP_Policy2018-Phase_I.pdf. 11 South African CIPC; personal communication April 2018. 12 WIPO (2018.11.25). Survey of numbering systems used, or intended to be used, by industrial property offices with regard to applications, published documents and registered rights. Handbook on Industrial Property Information and Documentation, Part 7.2.2. WIPO. Retrieved from https://www.wipo.int/standards/en/part_07.html. 13 European Patent Office (2018.11.25). Weekly updates. EPO. Retrieved from https://www.epo. org/searching-for-patents/data/coverage/weekly.html.

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14 Abu-Ghazaleh, T. (ed.) (2000). Intellectual Property Laws of the Arab Countries. Alphen aan den Rijn: Kluwer Law International. ISBN 978-9041188427. 15 Price, D. (2009). The Development of Intellectual Property Regimes in the Arabian Gulf States. Abingdon: Routledge-Cavendish. ISBN 978-0415631457. 16 Hassan, E., Yaqub, O., Diepeveen, S. (2010). Intellectual Property and Developing Countries: a review of the literature. Rand Corporation Technical Report series, no. TR804. Cambridge: Rand Europe, 2010. Retrieved from https://www.rand.org/content/dam/rand/pubs/technical_ reports/2010/RAND_TR804.pdf [Accessed 2018.11.07]. 17 Park, W.G. (2008). International Patent Protection, 1960–2005. Research Policy 37(4), 761–766. 18 Kessel, S. (2006). A window on the Israeli patent scene. World Patent Information 28, 327–329. 19 Jaafari, D.S. (2012). Pharmaceutical Patents in Jordan. Journal of World Intellectual Property 15(4), 239–250. 20 Rezapour, M., Bagheri, S.K., Rashtchi, M., Bakhtiari, M.R. (2007). The Iranian patenting system; an introduction. World Patent Information 29, 250–254. 21 Bagheri, S.K. (April 2017), personal communication. 22 Bagheri, S.K. (2014) Facilitated access to Iranian patent information. World Patent Information 37, 43–47. 23 Bagheri, S.K. (April 2017), personal communication. 24 ARIPO (2018.12.06). OAPI and ARIPO Sign New Cooperation Agreement. ARIPO. Retrieved from http://www.aripo.org/news-events-publications/news/item/168-oapi-and-aripo-sign-new -cooperation-agreement. 25 (a) Al-Hajeri, M.F. (2006). The Gulf Cooperation Council (GCC) Patent Office. World Patent Information 28, 14–19; (b) Al-Hajeri, M.F. (2007). Addendum to “The Gulf Cooperation Council (GCC) patent office”. World Patent Information 29, 101.

Part II: Databases and search techniques

Chapter 10 Patent guides and libraries General directories and reference works Given the large numbers of publications on patents which are targeted at the legal community, it is perhaps surprising that relatively few works exist which provide a comprehensive survey of patent information sources. Part of the problem is that such compilations are out-of-date almost as soon as they are published. Many of the reference works included in earlier editions of this book are no longer produced, and the emphasis has tended to move towards lists of internet addresses which, although dynamic in theory, can nonetheless become filled with broken links, and often do little to remind the unskilled user that there are many non-Internet based (or even non-digitised) resources which still form part of the legal state of the art. For the record, it is worth noting that some older works retain archival value, if only to indicate how far and how rapidly the electronic market for patent information sources has changed. An early attempt at a list of electronic sources was published by Kulp1, and a European effort was completed by Rimmer2, which was later consolidated into book form3. The book by Kase4 was aimed at users of the (then) USPTO reference library, and although it is now very out of date, it does include a country-by-country survey of the holdings of that library, including some examples of patent front pages or bulletin entries, which can be helpful in interpreting the layout of documents from an era before the advent of INID codes. The Aslib publication edited by Sibley5 concentrated on the available (small) range of electronic information sources of the time, and the WIPO directory6 was more focussed on a listing of library stocks. For readers wishing to understand more of the “how” and “why” of patent searching, there are two reviews contributed by Simmons and Kaback in successive editions of the Kirk-Othmer chemical encyclopaedia7, 8. These are treated from the point of view of the industry-based searcher in the chemical context, but still have value for the non-chemical searcher as well. One of the few books to concentrate on the process of designing and implementing a search strategy – as opposed to making the choice of the appropriate information source, which is the emphasis of the current work – was edited by staff from Landon IP in the USA, the search firm responsible for delivering many of the outsourced search reports commissioned by the USPTO9.

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To a large extent, the working information specialist wishing to maintain awareness of developments in patent databases has had to rely upon a small number of well-established industry magazines and journals, such as Database (now discontinued), Online and Searcher (now merged into Online Searcher from 2013) and World Patent Information. Personal networking and short educational events are a primary route to maintaining search skills. Several countries in Europe have independent user groups, including the UK (BPIP), Italy (AIDB), Netherlands (WON), France and Denmark. Within Europe, there is an umbrella organisation, the Confederacy of European Patent Information User Groups (CEPIUG), whose website at www.cepiug.org provides links to each of the national member groups. The main professional body in the US is the PIUG (www. piug.org). Several of these organisations publish a newsletter or periodical publication, covering developments in local patent documentation and information services, and the PIUG maintains an open-access wiki and other learning resources, as well as running a major international conference each year. In addition to primary sources, the secondary and tertiary literature on patent information search techniques is relatively sparse. However, older books, if they can be located, still provide a useful context to developing skills. The first edition of the current work was a welcome addition to the literature10 which has now been supplemented by two further updates in 2006 and 2012, plus the current volume. As mentioned previously, the work by Liebesny is widely regarded as a classic11, and smaller volumes can still be helpful, such as those by Newby12, Finlay13 – which concentrates on the language skills for reading front pages of non-English documents – and Eisenschitz14. Users of the resources at The British Library’s Business and Intellectual Property Centre (BIPC) in London have benefitted from the many skilled staff in their former patents section, who have produced a number of introductory guides15, 16 and the larger work by Rimmer mentioned previously3, which concentrates on countries covered by the British Library stocks. A similar foundational work existed in German for many years17 but it appears that this was superseded by a CD-ROM version which unfortunately has also ceased production18. A later work by the same author19 has been distributed by FIZ-Karlsruhe, the European partners of STN International. In addition to works describing patent documentation as such, there are a number of useful directories of patent information sources. As with the printed works, link collections can quickly go out of date if not maintained properly, so it is always advisable to check before using such resources. Both the Australian-based IPMenu website (www.ipmenu.com/country.htm) and the US-based Intellogist website provided extremely useful services in the form of country-by-country listings in a standard layout, including links to national patent office resources, searching sites and reviews of major search tools. However,

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both are now offline. There are efforts ongoing to restore the underlying data collected for Intellogist, and the site may eventually reappear as a usable tool; a draft version is available, hosted by WIPO, as the INSPIRE databank, at https:// inspire.wipo.int/. A similar resource guide, the Patent Register Portal, is also hosted by WIPO and includes many useful indications about the electronic information resources provided by national IP offices; the Portal is located within the PatentScope service, or by direct link to www.wipo.int/patent_register_portal/. The Dutch user group, WON, also maintains a link collection of public patent information sources at www.won-nl.org/content/open/en/patinf.

United Kingdom patent libraries The United Kingdom has had a network of libraries with notable patent holdings for many years, which used to operate as the Patent Information Network (PIN) libraries. More recently, they have adopted the PATLIB label from the wider European network, and operate as PATLIB UK. The libraries vary quite widely in the range of services which they can offer, and the staff expertise available. Contact details and information on the clinics and other services provided at each library can be obtained from the UK Intellectual Property Office website at www. gov.uk/government/publications/uk-patlib-network/ or the equivalent directory at the EPO, at www.epo.org/searching-for-patents/helpful-resources/patlib.html. At the time of writing, there are 15 UK centres, based in Aberdeen, Birmingham, Cambridge, Glasgow, Hull, Leeds, Liverpool, London (the British Library BIPC), Manchester, Newcastle-upon-Tyne, Northampton, Norwich, Plymouth, Portsmouth and Sheffield. Other centres have previously existed at Belfast, Coventry University, Bristol and Swansea in the past, and they may still have some document collections in their stocks, but do not provide any other services.

United States patent libraries In the United States, the corresponding network of libraries operates under the title of the Patent and Trademark Resource Centers (PTRCs), formerly the Patent and Trademark Depository Library (PTDL) Program. This is fully supported by the USPTO, and details of the network can be found on the USPTO website at www.uspto.gov/learning-and-resources/support-centers/patentand-trademark-resource-centers-ptrcs, which includes a full listing by state. It is aimed to maintain at least one library in every state, and the more populous ones such as California, New York and Ohio have up to five; there are

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more than 80 in the whole network, although it has been as high as 120 in the past. As with the PATLIB UK, these libraries operate in a variety of environments – some are university based, others reside in parts of a general or public library serving the city. A few of the larger libraries have access to an expanded range of resources and search tools, including the public versions of the USPTO examiner tools, Pub-EAST (Examiner’s Automated Search Tool) and/or Pub-WEST (Web-based Examiner’s Search Tool), which has more flexible search functionality. These “super-centers” become regional focal points for patent information. All libraries in the network maintain a core collection of at least 20 year’s-worth of US patents, additional fact sheets and help materials for inventors, directories of patent agents and attorneys in the United States, and trademark support. A range of workstations are available for visitors in most libraries. Librarians at the Centers are trained to help and instruct users in running the searches for themselves, but not to provide legal advice or interpretation.

German patent libraries As with the United Kingdom, the German library network for patent dissemination was established before the PATLIB programme under the EPO, and provided contacts for industry to use patent information. The libraries are informally known as the PIZ (Patentinformationszentren) network and the administration has been formally incorporated as the Arbeitsgemeinschaft Deutscher Patentinformationszentren e.V. The centres are commonly based upon universities or local chambers of commerce. Their dedicated website is at www.piznet.de, showing contact details for the 21 libraries in the current network, and a good collection of additional basic help for the would-be patent information user in Germany. One of the most well-known centres, even beyond Germany is the Technical University at Ilmenau, which hosts a variety of information services under the PATON label, including an annual conference; the website for the Ilmenau centre can be found at www.paton.tu-ilmenau.de. Several of the centres organise periodical courses for industry or searchers, and carry out some search work on behalf of clients. The PIZnet consortium has worked to establish a quality standard for the performance of IP searches, in association with the SIGNO programme (Schutz von Ideen zur gewerblichen Nutzung, or Protection of Ideas for Commercial Use) supported by the German Federal Ministry of Economics and Technology (BMWi).

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The European PATLIB network The European Patent Office, through its sub-office in Vienna, has always been a strong supporter of the development of national patent libraries in its member states. In recent years, the EPO has sponsored an annual conference for the librarians from the PATLIB network, allowing staff to meet and exchange ideas and support. Each of the member states (with the sole exception of Monaco) has at least one library with stocks of patent material, and obtains access to the information products of the EPO to assist patent information use. The listing of members of the European PATLIB network can be found within the main EPO website, at www.epo.org/searching-for-patents/helpfulresources/patlib.html. By 2020, there were over 360 libraries in the network, and a directory is included on the website, which includes details of the services provided. The degree of coverage within the member states of the EPO is not necessarily linked to their industrial development or their length of EPO membership; countries such as Sweden and Switzerland have only one library each, the same as North Macedonia and Albania, whereas Romania has an extensive cluster of 18, three more than the United Kingdom. The network is administered via the member states, and new centres can join the network only once they have been officially recognised by their national patent offices. In 2019, the EPO organised a strategic review of the work of PATLIB, resulting in the so-called “Porto paper”20. This contains a list of recommendations from the PATLIB member organisations and supporters, addressed to the EPO. One of the goals of these recommendations is to enable each Patent Information Centre to become “a true IP excellence hub in the region it serves.”

Japanese patent libraries For many years, the Japan Patent Office disseminated its information products via the quasi-autonomous National Center for Industrial Property Information (NCIPI). This organization provided online access for the public file data to the regional bureaux of MITI (the Japanese Ministry of International Trade and Industry), and CD-ROM products to local libraries. Bulk electronic data updates were provided to the Japan Patent Information Organization (JAPIO), who produced a variety of products, including the bibliographic file of the same name, mounted on a variety of online hosts, and the Patolis online system. By the late 1990s, the JPO sought to take advantage of the internet to create a direct access route for its data, in the form of the Industrial Property Digital Library (IPDL) mounted on the main JPO website. The re-branded National Center for

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Industrial Property Information and Training (INPIT) was given responsibility for managing the IPDL (which evolved to become the present J-PlatPat system) on behalf of the JPO. The INPIT website still hosts J-PlatPat, which now includes the Patent Abstracts of Japan and a range of other searchable databases, at www.j-plat pat.inpit.go.jp. A direct network connection to the INPIT provides access to some 50 IP Support Centers around Japan, in each prefecture. Some of the more populous prefectures such as Tokyo, Kanagawa, Hiroshima and Fukuoka have several centres. A list and map (in Japanese) is provided at the INPIT website at https://chizaiportal.inpit.go.jp/area/. These Centers offer free assistance with patent information matters, particularly document supply for small and medium-size enterprises. Some of the larger ones also have consultants that advise on patent technology transfer, searches on the JPO’s information resources and other matters relating to patent filing and searching. In 2001, JAPIO was split into two; a non-profit corporation under the old name, charged with responsibility for making official Japanese data (including gazette and file wrapper data) available at marginal cost to third parties, and a new commercial Patolis Corporation, which continued to develop the paid-for databases, and to market the Patolis-e web-based search system. For a number of years, this enabled Patolis to establish more links with academia and to develop some advanced multi-lingual search systems based on dynamic machinetranslation between Japanese and English. However, the system never attracted sufficient customers and the Patolis Corporation was wound up by 2014.

Chinese patent libraries Given the size of the country, it is no surprise that China has placed a lot of importance on establishing a network of information centres, which are referred to as “local Intellectual Property Offices”. These have an important role in the dissemination and utilization of patent information to the public. During 2008–09, CNIPA (then SIPO) helped to establish 47 IPOs at provincial and city level, to construct a better basis for patent information services. As with other networks, not all of these local IPOs are fully developed. Publicity about the local IPO network is hard to find in English, and there does not appear to be a complete listing yet available. However, there is a link to a sub-site of the CNIPA website at http://ggfw.cnipa.gov.cn:83/PatentCMS_Center/ (in Chinese), which has a clickable map (see Figure 10.1) showing locations of a number of collaborative bodies, including the National Patent Literature Service Network and other small-industry assistance outlets. In parallel with the work of CNIPA,

Chinese patent libraries

Figure 10.1: Chinese industry support centres (website map).

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the Chinese Academy of Sciences (CAS) has constructed a network of IP centres around China, described by Wen et al.21.

South Korean Information Centers The Korean Intellectual Property Office (KIPO) collaborates with a large number of satellite organisations throughout the country, including the Regional Intellectual Property Centers (RIPC). This network originated in 1978 as “patent data reading centres” operated by local chambers of commerce. The current administration is shared between KIPO and the Korea Invention Promotion Association (KIPA). The RIPC website lists a network of some 25 resource centres across Korea, located in all the provinces and metropolitan cities of the country, at www2.ripc.org/portal/introduce/status.do (see Figure 10.2). They operate in a similar fashion to the PATLIB network in Europe, but have more emphasis on helping SMEs with issues such as drafting of applications and preparation for commercialisation of new products, as well as personal “patent clinics” and traditional search provision. The most recent addition to the network is based in a branch office of KIPA in Sejong City, the new designated national capital of South Korea.

Figure 10.2: The South Korea Regional IP Centers network (website map).

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The WIPO TISC project In 2009, WIPO launched a project named ARDI (Access to Research for Development and Innovation), to increase the availability of scientific and technical information in developing countries. This involved the establishment of a public-private partnership with commercial publishers, in order to provide free or low-cost access to technical journals, which would normally be beyond the means of educational institutions and research centres in these parts of the world. The following year, an equivalent programme to encourage access to commercial patent databases was also launched, under the ASPI (Access to Specialized Patent Information) label. Within the context of both of these initiatives, it was recognized that the scientists, technologists and their support staff such as local librarians, would need more training in the use and exploitation of these resources. This can best be done by focussing the training on staff at the access points for these new services, which have been designated as local Technology Innovation and Support Centers (TISCs). Since the first TISC agreements were drawn up in late 2010, a large number of TISCs have developed, through agreements between candidate institutions such as universities, national research centres or technoparks and chambers of commerce. To that extent, the network is similar to the PTRC or PATLIB models, in that the focus for delivery of these services is not limited to universityindustry collaboration, but extends to start-ups and small businesses as well. The most recent consolidated report at the time of writing22 mentions that a total of 638 TISCs had been established in 71 countries, many of them in Africa, Central America or South-East Asia. The current directory on the WIPO website, at www.wipo.int/tisc, lists just over 1000 centres in 60 countries, including a number being hosted by smaller national patent offices themselves. Wider national coverage has been achieved in some developing countries, including nearly 80 centres in Algeria, approximately 60 in Morocco and the Philippines, and nearly 40 in Vietnam. One important aspect of the potential of these centres is in assisting local industry to identify and use technology which is in the public domain, either because no IP rights have been applied for or the existing IP rights have expired or lapsed. As such, they are equally interested in being able to conduct research into the legal status of patents and in technology landscaping, as well as providing the type of services characteristic of the other library networks examined in this chapter. Few of the TISCs have achieved this level of maturity so far, but the WIPO Committee on Development and IP (CDIP) at its meeting in November 201923 was asked to consider a budget for improving their capacity to deliver this form of service.

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References 1 Kulp, C.S. (1984). Patent databases; a survey of what is available from Dialog, Questel, SDC, Pergamon and INPADOC. Database, 7(3), 56–72. 2 Rimmer, B. (ed.). (1988). Patent Information and Documentation in Western Europe – an inventory of services available to the public. (3rd ed.) Munich: KG Saur. ISBN 3-598-10744-7. 3 Rimmer, B.M., van Dulken, S. (1992). International Guide to Official Industrial Property Publications. (3rd ed.). London: British Library. ISBN 0-7123-0791-5. 4 Kase, F.J. (1972). Foreign patents – a guide to official patent literature. Dobbs Ferry, NY: Oceana Publications Inc. ISBN 0-379-00009-1. 5 Sibley, J.F. (1992). Online patents, trade marks and service marks databases. London: Aslib. ISBN 0-85142-289-6. 6 WIPO (1993). World Directory of Sources of Patent Information. WIPO Publication No. 209(E). Geneva: WIPO. ISBN 92-805-0109-7. 7 Simmons, E.S., Kaback S.M. (1996). Patents, Literature. In Kirk-Othmer Encyclopaedia of Chemical Technology, (4th ed.), pp.102–156. New York: Wiley. 8 Simmons, E.S.; Kaback, S.M. (2006). Patents, Literature. In Kirk-Othmer Encyclopaedia of Chemical Technology, (5th ed.), Volume 18, pp.197–251. Hoboken, NJ: Wiley Interscience. ISBN 978-0471-485056. 9 Hunt, D., Nguyen, L., Rodgers, M. (2007). Patent Searching: Tools and Techniques. Hoboken, NJ: J. Wiley & Sons. ISBN 978-0-471-78379-4. 10 Auger, C.P. (ed.) (1992). Information Sources in Patents. London: Bowker-Saur. ISBN 0-86291906-1. 11 Liebesny, F. (ed.) (1972). Mainly on patents; the use of industrial property and its literature. London: Butterworths. ISBN 0-408-70368-7. 12 Newby, F. (1967). How to find out about patents. Oxford: Pergamon Press. 13 Finlay, I.F. (1969). Guide to foreign-language printed patents and applications. London: Aslib. ISBN 0-85142-001-X. 14 Eisenschitz, T.S. (1987). Patents, trade marks and designs in information work. London: Croom Helm. ISBN 0-70990-958-6. 15 Ashpitel, S., Newton, D., van Dulken, S. (eds.). (2002). Introduction to patent information. (4th ed.). London: British Library. ISBN 0-7123-0862-8. 16 Newton, D. (2000). How to find information: patents on the Internet. London: British Library. ISBN 0-7123-0864-4. 17 Wittman, A., Schiffels, R. (1976). Grundlagen der Patentdokumentation: die Patentbeschreibung, Schutzrecht und Informationsquelle. Munich: Oldenburg Verlag. ISBN 3-4862-0521-8. 18 Wurzer, A.J. (ed.). (2002). Das Handbuch der Patentrecherche. Munich: NATIF® GmbH. ISBN 3-00-008724-9. 19 Wurzer, A. J. (ed.). (2003). Wettbewerbsvorteile durch Patentinformationen. EggensteinLeopoldshafen: FIZ-Karlsruhe. ISBN 3-88127-106-6. 20 EPO (2020.03.17). Porto Paper describing the conclusions of the PATLIB Summit (pub. 2019). EPO. Retrieved from www.epo.org/searching-for-patents/helpful-resources/patlib.html. 21 Wen. Y., Fang S., Zhang D. (2011). The structure and construction of the Intellectual Property Network of the Chinese Academy of Sciences (CAS). World Patent Information 33(1), 81–84.

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22 WIPO (2020.03.17). Technology and Innovation Support Centers (TISCs) Report 2017. WIPO. Retrieved from www.wipo.int/tisc/en/background.html. 23 WIPO (2020.03.17). Project Proposal on Using Inventions in the Public Domain. Document CDIP/24/16, (21st November 2019). WIPO. Retrieved from www.wipo.int/meetings/en/details. jsp?meeting_id=50452.

Chapter 11 National and multi-national patent information sources The chapters in Part I of this book have examined the patent documentation of the IP5 and many of the other states which contribute significantly to the total volume of information per year. However, a number of other industrially important countries have not been considered individually, but are also starting to provide public access to their own patent information resources. Patent documents from these countries can most commonly be retrieved either by dedicated local resources (such as their own national patent offices) or as part of a multi-national patent database. Both types of source will be examined in more detail in this Chapter. It is only in recent years that some of these offices have made available a sufficiently large digitised backfile of their information to interest the commercial information providers. Agencies such as the WIPO have assisted smaller patent offices, but much of the digitisation has been carried out by commercial organisations, notably Univentio and, more recently, Lighthouse IP, both based in the Netherlands. Several commercial hosts are beginning to licence the new bibliographic or full text collections arising out of this work. The structure of the following sections will try to place the wide range of different resources into context, by listing them according to the medium of distribution rather than country-by-country. Users wishing to locate resources for a specific country can do so via some of the guides and reference works discussed in chapter 10. It should be clear even from a short perusal of the holdings of any of the national patent libraries, that patent information in the 21st century is still being produced in a wide range of different media. Each medium has its strengths and weaknesses, and it is worthwhile becoming familiar with the available suppliers. A summary of some of the major tools in each medium follows.

Paper sources Surprisingly enough, some patent information still persists in paper form, both in the private sector and public products. Intellectual property offices in smaller, less-industrialised countries still maintain official registers on paper, and their official documentation such as periodical gazettes and printed specifications may https://doi.org/10.1515/9783110552263-011

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also be principally available on paper as well. This is partly because of the historical need for reliable long-term archival records of patent grants (some dossiers need to be maintained for at least 30 years), such that some countries have had to amend their patent law in order to permit national patent offices to maintain electronic-only records. National libraries may maintain nonofficial indexes on traditional card files or similar, even when the remainder of the national patent documentation is digitised; an example would be the card indexes of British patent filings and re-assignments and the Register of Stages of Progress for UK applications, both maintained by the British Library in London. Major libraries or patent office public search rooms are often still the only places to obtain comprehensive indexes and search tools for patent information issued before the mid-1970s. A few major countries have digitised their entire backfile, but this is not always a complete collection. Clearly, as time goes on, more and more patent information is being digitised. However, in the rush to electronic products, some niche paper-based services are at risk of being discarded without the development of a correspondingly efficient electronic service. Patent information user groups are a good mechanism by which searchers can liaise with (and if necessary, lobby) their national library and patent office, to preserve products which continue to deliver useful information.

Optical disk (CD-ROM, DVD) The Trilateral Offices (EPO, USPTO, JPO) were instrumental during the early 1990s in developing optical disks for use in dissemination of patent information. At a time when most information providers were only using CD-ROM for storing character-coded bibliographic information, the EPO developed the DOSbased “Patsoft” software to distribute images of the complete texts of their unexamined applications. These were modified TIFF format files, and a week’s production (some 1,500–2,000 documents) filled at least one CD-ROM. The product range was christened “ESPACE”®, from the French for “space”, since it was designed to save the many metres of shelf-space occupied by the paper equivalents. With the advent of the internet, many offices migrated to this method of distributing information instead, particularly once XML formats became commonly available. Some disk-based products remained in production until much later; the EPO did not cease production of its last text-based disks, such as the EPO Bulletin, until the late 2010s. The Patsoft software was replaced in the mid-1990s by MIMOSA (= MIxed MOde Software), which went through several versions and is still used as the

Optical disk (CD-ROM, DVD)

391

basis of the interface to the EPO’s online Global Patent Index. This application permitted searching of the character-coded text, combined with a means to display and print documents in a facsimile-like layout, including drawings. The ESPACE series at its height included a range of single-country and multicountry products, plus a number of directory-type databases. Some were collations of text-based front-page data or complete specifications, whilst others were principally a distribution medium for the entire specifications in facsimile format, such as static PDFs. Many national offices adopted the MIMOSA standard for authoring, although some did not. Tables 11.1 and 11.2 are mainly of historical interest today, but illustrate the extent to which optical disk technology dominated patent database production and distribution during the period 1990–2010, and in turn changed many in-house practices in the use of patent information1. Readers may also find the paper by White2 of interest, in that it gives a forwardlooking perspective from the mid-1980s about the hopes and potential of diskbased technologies in the patent information field.

Table 11.1: Optical disk-based products produced under the EPO data standards. Product name

Content (document kinds where known)

EPO Official Journal

Official Journal of the EPO

ESPACE-ACCESS-EPB

EP-B

ESPACE-ACCESS-EPC

National documentation from EPO member states

ESPACE-ASEANPAT

BN, ID, MY, PH, SG, TH, VN

ESPACE-AT

AT-B, AT-U

ESPACE-AU

AU

ESPACE-BENELUX

BE-A, NL-A, NL-C, LU-A

ESPACE-BR

BR

ESPACE-BULLETIN

EP-A, EP-B

ESPACE-CA

CA

ESPACE-CH

CH-A, -A, -B

ESPACE-CIS

Commonwealth of Independent States

ESPACE-CL

CL

ESPACE-DK

DK-B

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Chapter 11 National and multi-national patent information sources

Table 11.1 (continued ) Product name

Content (document kinds where known)

ESPACE-DOPALES

Central and South America

ESPACE-EP

EP-A, EP-B

ESPACE-ES

ES-A, -A, -A, -T, -T

ESPACE-FI

FI-C, FI-B

ESPACE-First

EP-A, -A, -A, A, A; WO-A, -A

ESPACE-GR

GR

ESPACE-IE

IE

ESPACE-IT

IT-A, -U

ESPACE-Legal

EPO Board of Appeal decisions etc.

ESPACE-Malaysia

MY

ESPACE-MC

MC

ESPACE-MX

MX

ESPACE-OAPI

OA-B

ESPACE-Philippines

PH

ESPACE-PT

PT-A, -U, -T

ESPACE-SI

SI-B

ESPACE-Thailand

TH

ESPACE-Vietnam

VN

ESPACE-World

WO-A, -A

GlobalPat

US, WO, EP, GB, DE, FR and CH

However, large projects such as GlobalPat, financed by the Trilateral Offices, illustrated some of the weakness of the medium. GlobalPat was designed to be a basic search tool containing English abstracts of patent documents from the PCT Minimum Documentation set, and was produced in subject-based sub-sets, consisting of 69 technology groups based upon the IPC. The backfile occupied 144 disks for the entire subject range, and eventually the product became uneconomic to produce due to the increased uptake of internet-based products. Production ceased once the disks for 2003 had been distributed.

Optical disk (CD-ROM, DVD)

393

Table 11.2: A selection of non-EPO disk-based products. Product

Coverage

Producer/distributor

COSMOS / BREV FR

INPI, France

DEPAROM

DE-A, DE-C, DE-U, DE-T

Bundesdruckerei, Germany

Deutsches Patentblatt

German national patent gazette

Bundesdruckerei, Germany

EAPO

EA-A, EA-B (combined series)

Eurasian Patent Organisation, Moscow

ESPACE-PRECES BG, CZ, HU, PL, RO, SK

Hungarian Patent Office

ESPACE-SI

SI-B

Slovenian Intellectual Property Office

ESPACE-UK

GB-A from 

Patent Office, United Kingdom

Korean Patent Abstracts

English language abstracts of KR-A documents

Korean Intellectual Property Office

Patent Abstracts English language abstracts of JP-A documents from of Japan 

JAPIO, EPO

Patents & Trademarks Assign

Assignment deeds on US patents and trademarks

USPTO

Patents Assist

Variety of support materials, including list of attorneys and agents, Index to the US Patent Classification, IPC – USPC Concordance, Manual of Classification, and Manual of Patent Examining Procedure.

USPTO

Patents Bib

Bibliographic information, –date

USPTO

Patents Class

Current classification information for all US patent types, including utility patents from –date

USPTO

PCT Gazette

WO front page data

Bundesdruckerei, Germany

PIPACS

HU-A, -B, -U

Hungarian Patent Office

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Chapter 11 National and multi-national patent information sources

Table 11.2 (continued ) Product

Coverage

Producer/distributor

US PatentImages

Facsimile images of US patents.

MicroPatent

USAAPP

Facsimile images of US published applications (US-A)

USPTO

USAPAT

Facsimile images of US granted patents (current law US-B, old law US-A)

USPTO

Linked disk+internet products One of the criticisms of early interactive search systems was their inability to display image information, integrated with text searching. This was largely due to a combination of slow transmission speeds and the high cost of mass storage. One of the first attempts to overcome this in the patents field was a system called Video Patsearch ®, launched by the now-defunct Pergamon InfoLine host at the US National Online Meeting in New York in 1981. This used local 12-inch laser disks to store image information from US patent documents, combined with an online text search capability. After a user retrieved bibliographic data for a relevant answer, the corresponding page images of the patent could be retrieved from the laser disk. The system was not very successful, partly due to the fact that the searchable text was limited to only the abstracts, not the full specification3. A further shortcoming of distribution by disk is the in-built time delay between the legal publication date of a patent document and the release of the page in electronic form. For current awareness purposes in industry, days may be critical in detecting competitor publications. To address this problem, before high-speed data communication and better file compression were widespread, EPO developed a MIMOSA-based solution to this problem. Services such as ESPACE-Bulletin or ESPACE-ACCESS were typically updated on a monthly basis, by issuing a new disk. A later development of the system allowed a subscriber to these products to download immediate updates between each disk issue, and integrate them under MIMOSA on their local hard drive; the new data could be searched in parallel with the old disk, as a complete virtual database. Once the new information arrived in DVD form, the update file could be discarded. The bibliographic disks, such as ESPACE-ACCESS, were also engineered to incorporate certain searchable fields in the bibliographic display, such as a

Linked disk+internet products

395

publication number or IPC code, as live links to a remote document server. In this way, a powerful, convenient offline search could be complemented by the storage capacity of an online document delivery service. Figure 11.1 illustrates an example of this linkage.

LIVE LINK TO ESPACENET SERVER

LIVE LINK TO WIPO IPC SCHEME

Figure 11.1: MIMOSA application searching ESPACE-ACCESS disks and linking to other servers.

The combination of the MIMOSA search software, originally developed for diskbased products, with larger databases located on a remote server, reached its logical development in the production of the EPO’s Global Patent Index, which is discussed later in this Chapter.

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Chapter 11 National and multi-national patent information sources

Proprietary electronic databases By far the largest group of databases in the multi-national arena are proprietary products. Many have been established over many years and form the backbone of the professional patent information industry. They are increasingly distributed by a variety of means, often migrating from command-line interfaces to browser-based search tools. The following discussions have been aimed at providing a glimpse at the content, rather than the mode of distribution, since it is the former which ultimately determines whether the database is a useable tool for the searcher.

Derwent World Patents Index ® (DWPI) (Clarivate Analytics) This bibliographic file, widely known simply as “Derwent” amongst the patentsearching community, is probably the oldest multi-national electronic patent database in existence. The earliest product was produced by Mr. Monty Hyams from 1948, and was a manually produced weekly bulletin, “British Chemical Patents Report”. This grew during the 1950s into Derwent Publications Ltd. It later became known as Derwent Information Ltd and was purchased by the Thomson Group (later Thomson-Reuters) and most recently reformed as the Derwent operating unit of Clarivate Analytics in 2016. The DWPI file is mounted on a number of commercial host systems, including Dialog, Questel and STN International as well as being distributed by Clarivate itself through the Derwent Innovation platform. The earliest Derwent products were paper-based bulletins used mainly for the purposes of patent current awareness. Initially, Mr. Hyams and his colleagues travelled regularly from the UK to Belgium, to take advantage of the rapidpublishing system in force for Belgian patents. It was realised early on that the published patent titles were poorly suited to rapid scanning for relevance, and the process of creating a specially-structured rewritten title was started. This is still used in the modern bibliographic database. As technology improved, it became feasible to cumulate the current awareness service into a retrospective search file, which was initially launched publicly on the ORBIT service, in 1976. The subject coverage of the early Derwent products was limited to the field of pharmaceutical patents only, in the so-called Farmdoc [sic – see footnotea]

a Popular legend has it that the final decision on the name for the new pharmaceutical service was taken in Italy, and consequently used the Italian form of the word.

Proprietary electronic databases

397

service. Coverage commenced in 1963. Two years later, agricultural chemicals were added (Agdoc), followed in 1966 by polymers (Plasdoc). In 1970, coverage had extended to general chemistry (as the Chemdoc service) and the remainder of the specialist chemical sector. The combined product was initially called the Central Patents Index and latterly Chemical Patents Index, CPI (Table 11.3). For the convenience of subscribers, the output was divided into a number of lettered sections. The first three components became the sections A, B and C, whilst the remainder were split into sections D through to M. This categorisation formed the basis of the Derwent Class system, or Derwent sections, which are still used for indexing of database records to the present day. Table 11.3: Derwent Chemical Patents Index (CPI) sections. Derwent Class (Section)

Definition

Earliest date covered

A

Polymers and plastics (Plasdoc)



B

Pharmaceuticals (Farmdoc)



C

Agricultural chemicals (Agdoc)



D

Food, Detergents, Water Treatment and Biotechnology



E

General Chemicals



F

Textiles, Paper Making



G

Printing, Coating, Photographic



H

Petroleum



J

Chemical Engineering



K

Nucleonics, Explosives, Protection



L

Refractories, Ceramics, Cement, Electro(in)organics



M

Metallurgy



Additional countries were also added between 1963 and 1970, and have been progressively added over subsequent years, until today’s database covers nearly 60 publishing authorities. By 1974, demand for a corresponding abstracting service for the mechanical and electrical arts resulted in the creation of GMPI (General and Mechanical Patents Index – later re-designated the Engineering Patents Index, EngPI) and the

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Chapter 11 National and multi-national patent information sources

EPI (Electrical Patents Index) respectively. These services covered patents from substantially the same countries as CPI, with the major exception of Japan, which was not fully covered in non-chemical fields until after 1995. The two additional areas of subject matter were similarly divided into Derwent Classes, as shown in Table 11.4. Table 11.4: Non chemical sections of DWPI. Derwent Class (Section)

Definition

Earliest date covered

P

General (engineering)



Q

Mechanical (engineering)



R

(Electrical)*

–

S

Instrumentation, measuring and testing



T

Computing and control



U

Semiconductors and electronic circuitry



V

Electronic components



W

Communications



X

Electric power engineering



* used initially for all EPI patents; the R section was closed in 1979 and electrical codes expanded into sections S-X from 1980 onwards. All existing R section database records were retrospectively re-indexed.

The combined CPI/EPI/GMPI database is now marketed as the Derwent World Patents Index, or DWPI. The distinctive aspects of the DWPI database, as it had become, were clear from the beginning: – re-written, informative titles and abstracts in English for all records, irrespective of the original language of publication – logical subject-matter based categorisation into segments, which could be purchased separately, particularly useful for current awareness or provision of full texts – two enhanced deep-indexing systems (Manual Codes and the chemical Fragmentation/Polymer codes) to improve retrieval (USPTO and EPO national classifications were also included from 2008) – standardised formats for publication numbers and application numbers

Proprietary electronic databases

399

– standardised assignee names, supplemented by a standard Assignee Code system which grouped some subsidiaries and superseded company name changes – error checking and standardisation in fields derived from primary data, such as the International Patent Classification – the development of database rules for a patent family system, making a clear distinction between first appearance of a new invention (the basic) and subsequent corresponding applications (equivalents) from other countries. This enabled Derwent to concentrate indexing effort upon a single example from each patent family. The original Derwent editorial and database production system was constructed in logical stages, which led to an enormous range of different products (on paper, microfiche and microfilm, CD-ROM and electronic formats). Many of these have been phased out in recent years, in favour of electronic products, but the legacy still makes itself felt. Consequently, it is useful to be aware of the ways in which the system has developed. Patents entering the database production system were channelled into a particular editorial group according to whether the subject matter was covered in the database (as noted above, Japan was only covered for chemistry, so engineering patents were not included at all for many years), and whether the publishing country was so-called “major” or “minor” (of which more later). The subject group reflected the Derwent Classes. If appropriate, a patent could be allocated to more than one class, but the “primary” class was used to determine which printed bulletin the abstracts would appear in. After preparation of a short abstract and new title, the printed Alerting Abstracts Bulletins were produced for each Derwent Class. All new basics from major countries had their database records enhanced with Manual Codes. The online abstract field contained the text of the Alerting Abstract, which is available to all users of the online file. After release of the Alerting Abstracts, an enhanced version of the abstract was produced and released only to pre-paying Derwent subscribers, according to the sections of the Derwent system covered by their subscription. These so-called Documentation Abstracts were also produced in paper bulletins and subsequently on microfilm and scanned images on CDROM (the Documentation Abstracts Journal, or DAJ, on CD-ROM, which used the Derpict application software for viewing and printing). Later still, paper reproductions and microfilm copies of the full patents were also produced by Derwent section. Neither the Documentation Abstracts nor the full texts were loaded onto the public access database. In recent years, the new form of the DAJ (now referred to as Enhanced Abstracts) have been made available online, but still only

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Chapter 11 National and multi-national patent information sources

for subscribers, in the form of a separate controlled-access database. The same database also provides access to the subscriber-only portions of the indexing, namely the Chemical Manual Codes and the fragmentation or polymer coding, covering publications issued in sections A, B, C or E. One of the key benefits for a subscriber company was the use of a common accession number system. This enabled a user to perform a search using subscriber indexing, retrieve an Alerting Abstract for initial relevance screening, and then locate the corresponding Documentation Abstract for detailed study and/or the complete patent text in a single step. With the advent of dynamic linking from within search databases to third-party databases containing the complete documents, much of the value of this system has been superseded, but the products are still produced and have retained some of their user base within industry. The printed Derwent products, in all technical areas, typically contained a single clipped image to aid comprehension of the text abstract. These images were too large for the available bandwidth to handle until the early 1990s, when the first images were loaded, in the engineering sector back to 1988, followed by images from chemical patents back to 1992. In the all-electronic environment of today’s DWPI file, the distinction between major and minor countries has become less significant than before. In the present-day file, each country’s patents are indexed to whatever depth is possible, based on the available source data. However, the practical outcome of both the old major/minor distinction and the present-day policy is that some DWPI records may receive only the Manual Codes, whilst others may have any appropriate deep indexing which the subject-matter merits, such as polymer coding or chemical indexing by fragmentation code and/or Markush indexing. Since recall may still be affected for some searches, a short explanation of the old major/minor country policy is included here. Essentially, a publication from a major country was given the full indexing treatment immediately, and the corresponding database record included any deep indexing appropriate to the subject section(s) concerned. If this publication was a basic, it followed that the DWPI family record was fully indexed from the point of its creation, and any subsequent equivalent patents were retrievable as if they had also been deep-indexed, since the same “pool” of indexing applied across the entire family. In a small percentage of cases, the first appearance of a new invention was from a minor country, and the added indexing was not created immediately. At this point, the record is only retrievable via a restricted range of bibliographic search fields. Full indexing, such as Manual Codes and/or deep subject indexing, was only added to the DWPI record when (or if) a subsequent equivalent

Proprietary electronic databases

401

member of the same patent family was published by a major country. This later member was fully indexed and the corresponding fields were populated in the updated family record. From this point onwards, the minor country basic publication became retrievable using the full range of retrieval tools. The time interval between the creation of the partially-indexed minor country basic record and the addition of full indexing via a major country equivalent was usually only a matter of a few weeks, so to all intents and purposes the minor country publication appeared to have carried the full indexing from inception, and no documents were lost in the search. A more substantial impact upon retrieval occurred in the (relatively rare) circumstances where a new invention only appeared in a minor country, and never re-published with any major country equivalents at all. In these cases, the database record for this invention remained less fully indexed than if the invention had appeared in a major country. For reference purposes, the current status of countries is included in the list of overall country coverage in Table 11.5; refer to the footnotes of the Table for the indexing treatment applied to each DWPI country. The same Table can be referred to in considering the other multi-country files discussed elsewhere in this chapter. The purpose of this overview is to provide an indication of the unique content available from each source listed. Users should note the following caveats: a) For simplicity, the Table generally shows the earliest year of coverage for any KD code (unexamined, granted, re-issued . . .) and any record format (basic bibliographic, additional abstracts, full text . . .) within a given database. The coverage of each KD code for a given country may vary; for example, DWPI contains records of Australian AU-A documents from 1963 and AU-B documents from 1993, so the earlier date of 1963 is recorded as the starting date for coverage in the Table. b) For some countries, database producers may have incomplete coverage or a few sample documents for a number of years before consistent data supply was established. The start year in the Table has been selected where possible to represent the first year of consistent and/or comprehensive coverage, not the oldest single record in the database. c) Third party data providers such as Questel, TotalPatent One and PatBase licence some of their core bibliographic data from the EPO (DocDB), hence it would be expected that their country start dates will often match the earliest record date from DocDB. However, some of these providers also have unique data content for individual countries (such as full text or additional years of coverage). Where this occurs, the Table replaces the DocDB start year with a date corresponding to the start year of the unique coverage; for example,

UNITED ARAB

AE

ALBANIA

ARMENIA

ANGOLA

AFRICAN REGIONAL

AL

AM

AO

AP

EPO

ACS

AZERBAIJAN

BOSNIA AND

AZ

BA

HERZEGOVINA

AUSTRALIA

AU









AUSTRIA

AT









(CAS)

ARGENTINA





(DocDB)

AR

OFFICE (ARIPO)

INDUSTRIAL PROPERTY

ANTIGUA & BARBUDA

AG

EMIRATES

ANDORRA

Country name

AD

code

Country (DPCI)



–, 





(Depatisnet)

Derwent DPMA

 –





(DWPI)

Derwent

Table 11.5: Country coverage for selected multi-country databases.













(Orbit.com)

Questel













(PatBase)

Minesoft

Lexis-Nexis

One)













(TotalPatent





















(Diamond)



















*





IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

402 Chapter 11 National and multi-national patent information sources

 

 









BULGARIA

BAHRAIN

BRUNEI

BOLIVIA

BRAZIL

BAHAMAS

BHUTAN

BOTSWANA

BELARUS

BELIZE

CANADA

SWITZERLAND

CÔTE D’IVOIRE

CHILE

CHINA

BG

BH

BN

BO

BR

BS

BT

BW

BY

BZ

CA

CH

CI

CL

CN









BURKINA FASO

BF



BELGIUM

BE



BANGLADESH

BD



BARBADOS

BB

Y











 –













































































*

















(continued )



















 *



*













Proprietary electronic databases

403

COLOMBIA

COSTA RICA

CZECHOSLOVAKIA

CUBA

CABO VERDE

CYPRUS

CZECHIA

EAST GERMANY

GERMANY

DJIBOUTI

DENMARK

DOMINICA

DOMINICAN REPUBLIC

ALGERIA

CR

CS

CU

CV

CY

CZ

DD

DE

DJ

DK

DM

DO

DZ

Country name

CO

code

Country

Table 11.5 (continued )

EPO

ACS







Y





















– –



Y

–

–

















(?)





–

–

–

(Orbit.com)

Questel



(Depatisnet)



(DPCI)

Derwent DPMA



(DWPI)

Derwent



(CAS)



(DocDB)























(PatBase)

Minesoft

Lexis-Nexis





















(?)

One)

(TotalPatent







–

















 –



















–









(?)





(Diamond)



IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

404 Chapter 11 National and multi-national patent information sources

ESTONIA

EGYPT

EUROPEAN PATENT

EE

EG

EP





FRANCE

UNITED KINGDOM

GULF CO-OPERATION

FR

GB

GC

GRENADA

GEORGIA

GHANA

GAMBIA

GD

GE

GH

GM

COUNCIL





FIJI

FJ









FINLAND

FI



ETHIOPIA

ET





SPAIN

























Y







































 







ES

OFFICE (EPO)

ECUADOR

ORGANISATION (EAPO)

EURASIAN PATENT

EC

EA































































*





*

























(continued )























Proprietary electronic databases

405





GUYANA

HONG KONG

HONDURAS

CROATIA

HAITI

HUNGARY

INDONESIA

IRELAND

GY

HK

HN

HR

HT

HU

ID

IE

IL

  







ISRAEL

INDIA

IRAQ

IRAN

IN

IQ

IR









–,





Y







(Orbit.com)

Questel















(Depatisnet)





(DPCI)

Derwent DPMA





(DWPI)

Derwent







GUATEMALA

GT





ACS (CAS)

EPO

(DocDB)

GREECE

Country name

GR

code

Country

Table 11.5 (continued )





















(PatBase)

Minesoft

Lexis-Nexis

One)





















(TotalPatent































*













*













(Diamond)



IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

406 Chapter 11 National and multi-national patent information sources

KYRGYZSTAN

CAMBODIA

KOREA, DEM. PEOPLE’S

KG

KH

KP

KOREA, REPUBLIC OF

KUWAIT

CAYMAN ISLANDS

KAZAKHSTAN

LAOS

LEBANON

LIECHTENSTEIN

SRI LANKA

KR

KW

KY

KZ

LA

LB

LI

LK



































KENYA

KE

REP.







JAPAN

JP









JORDAN

Y

JO



+

JAMAICA

–,

–,

JM



ITALY



IT



ICELAND

IS















































*



*





*



*

*









*





(continued )

















Proprietary electronic databases

407

LITHUANIA

LUXEMBOURG

LATVIA

MOROCCO

MONACO

MOLDOVA

MONTENEGRO

MADAGASCAR

NORTH MACEDONIA

MALI

MYANMAR

MONGOLIA

MACAO

MONTSERRAT

MALTA

LU

LV

MA

MC

MD

ME

MG

MK

ML

MM

MN

MO

MS

MT

Country name

LT

code

Country

Table 11.5 (continued )





















 ?









(Orbit.com)

Questel





(Depatisnet)









(DPCI)

Derwent DPMA







(DWPI)

Derwent







ACS (CAS)

EPO

(DocDB)





















(PatBase)

Minesoft

Lexis-Nexis

One)



















(TotalPatent



































*



















(Diamond)



IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

408 Chapter 11 National and multi-national patent information sources

NORWAY

NEPAL

NEW ZEALAND

AFRICAN INTELLECTUAL

NO

NP

NZ

OA

OMAN

PANAMA

PERU

PAPUA NEW GUINEA

OM

PA

PE

PG

ORGANISATION (OAPI)

 













Y

 –







NETHERLANDS

NL

PROPERTY

NICARAGUA

NI







NIGERIA

NG









NAMIBIA

NA







MOZAMBIQUE

MZ



MALAYSIA

MY







MEXICO

MX 







MALAWI

MW 





MAURITIUS

MU































































*







*

*









(continued )





–

















Proprietary electronic databases

409

PAKISTAN

POLAND

PALESTINIAN NATIONAL

PK

PL

PS

PARAGUAY

QATAR

RESEARCH

PY

QA

RD



SAUDI ARABIA

SA



RWANDA

RW









RUSSIAN FEDERATION

RU













(Orbit.com)

Questel

 



(Depatisnet)

SERBIA











(DPCI)

Derwent DPMA

RS



–







(DWPI)

Derwent

ROMANIA











ACS (CAS)

EPO

(DocDB)

RO

DISCLOSURE (NPL)

PORTUGAL

PT

AUTHORITY

PHILIPPINES

Country name

PH

code

Country

Table 11.5 (continued )















(PatBase)

Minesoft

Lexis-Nexis

One)















(TotalPatent















































(Diamond)



IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

410 Chapter 11 National and multi-national patent information sources

SLOVAKIA

SAN MARINO

SÃO TOMÉ & PRÍNCIPE

SOVIET UNION

EL SALVADOR

SYRIA

ESWATINI

THAILAND

TAJIKISTAN

TURKMENISTAN

TUNISIA

INTERNATIONAL

SK

SM

ST

SU

SV

SY

SZ

TH

TJ

TM

TN

TP

TR





SLOVENIA

SI

TURKEY

DISCLOSURES (NPL)

TECHNOLOGY





SINGAPORE

SG







–



















 –







–,





SWEDEN

SE







SUDAN

SD

























































































*







*











(continued )

























Proprietary electronic databases

411

EPO

ACS

WORLD INTELLECTUAL

WO

WS

VIET NAM

VN

SAMOA

ORGANIZATION (WIPO)

PROPERTY

VENEZUELA

VE













ST. VINCENT & THE

VC









UZBEKISTAN

UZ

GRENADINES







URUGUAY



UY





UNITED STATES

US



UGANDA

UG









UKRAINE

UA



TANZANIA

TZ







(Orbit.com)

Questel



(Depatisnet)

TAIWAN

(DPCI)

Derwent DPMA

TW

(DWPI)

Derwent



(CAS)



(DocDB)

TRINIDAD & TOBAGO

Country name

TT

code

Country

Table 11.5 (continued )

















(PatBase)

Minesoft

Lexis-Nexis

One)



















(TotalPatent























*















*









(Diamond)



IP

Global)

(PatentScope)

Lighthouse

IFI CLAIMS (Claims

WIPO

412 Chapter 11 National and multi-national patent information sources

YUGOSLAVIA

SERBIA &

YU

YU

ZAMBIA

ZIMBABWE

ZM

ZW









 









– –

– –





–

–

















–

–







–

–



Notes: DWPI: Country names printed in bold received full indexing treatment in the DWPI file from the start of their coverage. Country names printed in bold italics received minimum indexing treatment in the DWPI file from the start of their coverage, but were later promoted to receive full indexing. All other countries with an entry in the DWPI column are indexed with Manual Codes only. Source: Global Patent Sources (6th edn., 2007) and Personal Communication (Clarivate). DPCI: Countries with a (Y) entry instead of a start year are known to be partially included, but exact details of start year are not known. Diamond: Countries with an asterisk entry (*) have been listed as covered in early publicity, but are not present in the current coverage listings. Status uncertain.

SOUTH AFRICA

ZA

MONTENEGRO

YEMEN

YE

Proprietary electronic databases

413

414

Chapter 11 National and multi-national patent information sources

TotalPatent One has bibliographic Spanish data from 1828 via DocDB, but additional full text is available from 1919 (so 1919 is recorded as the starting date). d) In all cases, the presence of a starting year does not guarantee a complete collection of that country’s patent documents from that point onwards, nor how often updates have been received by the database producer; users should refer to the current status documentation provided by the database producer in order to identify any significant gaps or data delays. e) The Table does not represent an exhaustive listing of all multi-country data hosts, since there are many occasions when their content is a licensed version of one of the same basic data collections e.g. Google Patents utilises the same Alexandria collection which is distributed by Fairview Research as CLAIMS Direct, and many other hosts with multi-country coverage use the DocDB / INPADOC data, so their coverage will be identical to this source material. By listing one host for each of the major data collections, users will have sufficient information to detect differences in content between other host systems which are not specifically listed in the Table but are offering the same data sets. As indicated above, the full power of the DWPI indexing system is only available to subscribers. It represents a substantial investment in development time and in its maintenance and upkeep. The system is only available in the chemical arts, and has three components: 1. The CPI Manual Codes, consisting of a set of approximately 8,000 hierarchically-grouped indexing terms, represented by a systematic notation. The term listing has been revised a number of times since it was first created in 1963. The system is relatively stable in terms of numbers of terms, but in recent years has been revised on an approximately annual basis, to ensure that the terms reflect current technology. The notation is designed to allow truncation, permitting the searcher to broaden or narrow their field of search. Although Manual Codes are rarely adequate on their own to define a complete search, they are extremely valuable in excluding unwanted subject matter or refining a search with too many answers. Each database record in the chemical area will have at least one Manual Code applied; the range is approximately 1 to 8 Codes per record. The corresponding Manual Code system in the electrical area (EPI) is open to all users, but the vocabulary is structured in a very similar manner. The EPI Manual Code system contains approximately 15,000 codes. From 2006, a small number of Manual Codes were first introduced for parts of the mechanical field, and this system expanded to the current total of some 3,000 codes.

Proprietary electronic databases

415

Two examples of the Manual Code hierarchy is shown in Table 11.6. Clarivate now provides a search facility (Manual Code Lookup, MCL) for the system, as part of the DWPI Reference Center on their website, at www.clarivate.com/ mcl. Table 11.6: Example CPI and GMPI Manual Code hierarchies. CPI Manual Code

Definition

Date of introduction

K

Nucleonics, Explosives, Protection



K

Health Physics



K-A

Protective measures, monitoring, shielding, clothing etc.



K-A

Personal dosimeters



K-AA

. Industrial monitoring



K-A

Shielding



K-AA

. Transport/storage containers



K-AB

. Fall-out shelters



K-AC

. Shielding plants and equipment



K-AD

. Shielding personnel



K-A

Decontamination



K-AA

. Decontamination of personnel/clothing



GMPI Manual Code

Definition

Date of introduction

Q

Mechanical

Q

Special vehicles

Q

Ships; Waterborne vessels; Related equipment



Q-B

. Ship accessories



Q-B

. . . Passenger/crew accommodating arrangements; Cabins; Galleys



Q-BA

. . . Furniture – vessel specific



Q-BC

. . . Sanitation arrangements



Q-BC

. . . .Toilets



Q-BC

. . . .Washing facilities; Showers



416

Chapter 11 National and multi-national patent information sources

2. The chemical fragmentation codes, consisting of approximately 2,200 alphanumeric codes. Each code represents a small chemically-significant fragment, such as the presence of a specific element or functional group. If a chemical patent discloses a single compound, all the corresponding fragment codes appropriate to that compound are attached to the database record. For generic (“Markush”) disclosures, chemical fragment indexing is generated which corresponds to the range of compounds encompassed by the disclosure; for example, if a wide range of esters are disclosed, the code for “ester” will be added. By linking together the individual codes, the searcher is able to retrieve all records which specifically or generically disclose the compound(s) of interest to the search. The system is extremely complex to use to its full potential, but remains one of the few ways in which a true generic patentability search can be conducted. Competing topographical-based systems such as Marpat and MMS (discussed later in this chapter) operate on a different search model, and rarely provide retrieval for as many years of coverage, whereas Derwent fragmentation codes allow searching back to 1963 for some subject areas. A few example codes are given in Table 11.7.

Table 11.7: Example Chemical fragmentation code hierarchy. Series

Code

A:

Definition Alkaline earths

A

General (present but not fully defined)

A

Beryllium

A

Magnesium

A

Calcium

A

Strontium

A

Barium Fused ring heterocyclics. -N only; -ring systems

D: D

Indole (excluding D)

D

Di (or poly)hydroindole

D

Isoindole (including ,-dihydroindole)

D

Isoindole (excluding D)

D

Quinoline (excluding D)

Proprietary electronic databases

417

Table 11.7 (continued ) Series

Code

Definition

D

Di (or poly)hydroquinoline

D

Isoquinoline (excluding D)

D

Di (or poly)hydroisoquinoline

D

Benzazepine

D

Benzazocine

D

Indolizine and quinolizine

D

Tropane

D

Quinuclidine

D

Other -N, two-ring systems, not specified above

D

More than one ring systems from D coded.

3. The polymer coding (Plasdoc) system was introduced in 1966, and has undergone a number of revisions since. It operates in essentially the same manner as the chemical fragment codes, but instead of indexing small portions of an organic or inorganic molecule, the polymer codes characterise the monomer and repeat units of polymeric materials. There are additional codes enabling the functionality and method of manufacture of the polymer to be indexed. As with the chemical fragment codes, it takes a lot of skill to be able to use the system to best advantage. In recent years, some software tools have been developed to assist the novice in devising a suitable search strategy using the polymer codes. Additional information and support material on the use and availability of these detailed indexing systems can be found at the DWPI Reference Center on the Clarivate website, at www.clarivate.com/derwent/dwpi-reference-center/, and from the various third-party systems which host their data, such as STN and Proquest Dialog.

Derwent Patents Citation Index ® (DPCI) (Clarivate Analytics) The DPCI is a companion product to WPI. It uses the same family structure to group inventions into larger records, but the emphasis of this file is to facilitate

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the use of search reports in citation searching. The file is available on STN International and Proquest Dialog, and as part of the web-based Derwent Innovations Index (DII). The assumption behind DPCI is that the items cited in a patent application’s official search report (or, in the case of a US granted patent, the “References Cited” list) can be treated in the same way as the bibliography in a conventional journal article or review. The challenge in the patents field is to recognise that family groupings can affect both the citing patent and the cited patent. In respect of the citing patent, it is quite possible that equivalent family members may both cite the same patent; following the citation link may suggest that a new document exists which co-cites known prior art, but in fact the new document is none other than an equivalent of a known case. In respect of the cited patent, it is quite possible (indeed likely) that two examiners in different countries, each intending to cite the same invention, will do so by means of citing their own local family member. This gives the impression that the two search reports do not have any items in common, when in fact they do. Both of these problems can be circumvented if both citing and cited patents are grouped into their respective patent families. The DPCI achieves this by using the same family structure as DWPI. The original DPCI in the period 1994–1997 used the cumulated search reports from 16 countries, namely Austria, Australia, Belgium, Canada, European Patent Office, France, Germany, Japan, the Netherlands, New Zealand, PCT international applications, South Africa, Sweden, Switzerland, the United Kingdom and the United States. These compiled into the standard family structure of the DWPI record. Documents which co-cite an item from a known search report can be retrieved, irrespective of whether they cited the same family member or another one. The launch of DPCI included both examiner citations (from formal search reports) and applicant citations (additional references from the body of the text, provided by the applicant and not present in the formal search report). It proved very labour-intensive to extract the latter, so the product was soon relaunched with reduced content consisting of examiner citations only, and the country coverage reduced to only 6 countries: the EPO, Germany, Japan, PCT international applications, the United Kingdom and the United States. Coverage stayed at this level until 2008, when backfiles for a further 4 countries (Belgium, France, the Netherlands and Spain) were added, bringing the total to ten, and additional countries have been gradually reintroduced, bringing the current total to 32. The DPCI is the only commercial database which systematically collates search reports in this fashion. Once the searcher is aware of the pitfalls and caveats surrounding the use of the citation technique, it can prove a valuable additional resource. Its major use is probably during patentability searches, when it can be applied to either retrieve older literature (beyond the formal start date of

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most bibliographic files) or contemporaneous literature citing items in common. Support literature on the DPCI can be found at www.clarivate.com/der went/solutions/dpci/.

PlusPat, FamPat (Questel) The PlusPat file is derived from a core based upon the EPO’s internal search file, called EPODOC. This employed a strict family structure more suited to the needs of a patent office search examiner, resulting in smaller families. The number of countries covered was originally around 20 national authorities, but following the takeover of the INPADOC organisation by the EPO in the early 1990s, the INPADOC family file and the EPODOC file were gradually merged, effectively increasing the EPODOC coverage to around 70 countries. The major strengths of EPODOC were – the inclusion of some document types not covered in INPADOC (for example, the old Act JP-C certificates) – enhanced time coverage for some countries; for example, British patents are included from 1909 and German from 1877 – provision of ECLA classification for a substantial proportion of the file. The EPODOC file was loaded on the Questel system (now the Orbit.com webbased platform) for many years as the EDOC file. In the late 1990s, this was relaunched as PlusPat, with the addition of more English-language abstracts, further classification systems (including current US classes for US records), search reports including relevancy indicators, and clipped images. Despite not having the detailed proprietary indexing provided by WPI, PlusPat’s combination of abstracts and multiple classification systems make it a powerful search tool across many fields of technology. The principal weakness of PlusPat lies in the record structure. Records contain either a single publication stage, if that is all that has been released, or the corresponding multiple stages for the same application from the same authority (sometimes referred to as a “national family”). For international families, it was necessary to create the family on the fly, from an initial search set. Since not all fields were present for all document records, this could lead to the need to run an iterative search in several stages e.g. class search, family grouping, word search, family grouping, etc. This shortcoming in the PlusPat search procedure was addressed by the release of the FamPat file, with the same bibliographic records pre-grouped into international families. The rules for family selection are unique to FamPat, and

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will generally yield families with more members than the strict EPODOC algorithm, but fewer than the INPADOC system. The unique feature of the FamPat family is that it can be retrospectively re-structured, eliminating the need for cross-referencing family records which is sometimes found in WPI. The effect is to bring additional family members in, such as non-Convention filings, multiple US applications derived from US provisional filings (often not cited in a format which permits their capture algorithmically), and cognated cases. In recent years, Questel has moved almost totally away from its original command-line system and released all its patent files onto the web-based Orbit. com platform. Additional full text files have been loaded in parallel to the basic bibliographic data from the PlusPat/FamPat collections. The detailed country coverage for the full Questel range of products can be found in Table 11.5.

Merged data: the WPAM project (Orbit/Derwent/API) Any searcher involved in patent searching for more than a trivial period of time will soon discover that most patent databases have some unique feature which makes them more or less suitable for a specific kind of search. The question is often asked as to whether it would be possible to create a “super-database”, containing not only a merged set of bibliographic records (years, countries) but also a merger of the value-added indexing providing by one or more commercial database producer. One prominent proponent of the creation of such “super-databases” – or at least “super-records” – was Stuart Kaback, who expressed the idea at least as far back as 19834. The WPAM database formed a rare example of just such co-operation, when for a period it successfully combined the indexing of the DWPI file with that created by the American Petroleum Institute (API), specifically aimed at the oil and gas industries. For many years, the API obtained Derwent data under licence, in their particular subject field, and added a very powerful, text-based system of controlled indexing to these records. The enhanced records were released as the APIPAT file. The coverage was heavily dependent upon the DWPI file, but some additional material was also present – this included coverage of India and Poland (drawing upon CAS records) and possibly some limited content from countries with significant oil production such as Venezuela, not covered by any other file. The Central Abstracting & Indexing Services of the API were spun off during the early 1990s as EnCompass, which was acquired in 1999 by Engineering Information, Inc., a subsidiary of Reed-Elsevier, now known as Engineering Village and marketed through the main Elsevier website www.elsevier.com/sol utions/engineering-village/ or www.ei.org. Prior to the acquisition, the Orbit

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host (subsequently taken over by Questel) had merged DWPI and API files to form WPAM, which was only available to subscribers with the appropriate contracts with both data sources. The particular strength of WPAM was in patentability searching in the oil and gas industries, but the indexing system made it useful for a wider range of general process chemistry and chemical engineering, not just limited to small carbon-count molecules. The country coverage is virtually identical to DWPI, but with earliest content dating from 1964 and hence pre-dating Derwent’s own coverage of the industry sector, which did not commence until 1970. A more detailed breakdown of the variation was given by Simmons5. The patent content of the API continues to be available through the Elsevier host, as the EnCompassPAT file, which is now distributed alongside the Ei Patents source (which has coverage limited to two countries, US and EP). EnCompassPAT is also available on the STN host, in both subscriber and non-subscriber forms. It continues to be updated weekly and indexed using the EnCompass Thesaurus; the subject selection of records is limited to the petroleum industry and consists of some 30,000 new records per year.

INPADOC, DocDB and Open Patent Services (EPO) The INPADOC file family started life during the early 1970s as a product of the International Patent Documentation Centre, established by agreement between WIPO and the Republic of Austria as the Gesellschaft zur Errichtung und dem Betrieb des Internationalen Patentdokumenationszentrums mit beschränkter Haftung (INPADOC GmbH) and based in Vienna. In contrast to Derwent WPI, which focuses on creating a quality retrospective file for patentability and other subject-based searching, the principal focus of INPADOC was to establish a comprehensive family database. Each record is comparatively brief (main bibliographic details only) but the range of countries covered quickly exceeded those in DWPI. At the present time, coverage is available for over 100 countries, compared with approximately 60 for DWPI. The initial range of INPADOC products was distributed on microfilm, or made available via direct network access to a computer centre in Vienna. Subsequently, the file was made available on a number of commercial hosts, including Dialog, STN International, Questel, Lexis-Nexis, MicroPatent and Patolis. INPADOC products have traditionally been divided into distinct “modules” or “services” and some are still referred to by these names: – PFS Patent Family Service – PCS Patent Classification Service – PAS Patent Applicant Service (sorted by IPC)

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– PAP – PIS – PRS

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Patent Applicant Service (sorted by priorities) Patent Inventor Service Patent Register Service

Of these products, the PFS is the main source for the commercial products as far as bibliographic details are concerned. The PRS relates to legal status information, and is considered in more detail in Chapter 16. The implementation of INPADOC on commercial hosts has varied; STN keeps the bibliographic data (PFS) and legal status data (PRS) in the same file, whereas the Questel version separated the legal status service as a separate searchable file, called LGST. Since the advent of web-based search tools, the ability to merge content into a single virtual file by means of links has largely superseded the necessity to consider the merits of either former method of loading the data. Since little value-added data is being including in the compilation of PFS, it is possible to include new information very rapidly. The INPADOC centre receives its data directly from national patent offices, or in a few cases keyboards data from paper gazettes where electronic supply was not possible. All subject areas are covered, providing an electronic record of the complete patent publication record for each country. In some cases (such as Germany, Austria and Japan), INPADOC has branched out beyond the coverage of other bibliographic files, to include utility models and short-term patents. The INPADOC organisation was incorporated into the European Patent Office in 1991, and established as the Vienna sub-office of the EPO, dedicated to patent information products and services. The principal strength of the INPADOC database today is the breadth of country coverage and the comprehensive family algorithm, enabling a searcher to gain a rapid overview of the patent situation for an invention, on the basis of a single known case. The database is updated weekly, although time lag between formal publication date and actual entry into the database will vary from zero to many weeks, depending upon the patent office supplying the data. Most major countries have their bibliographic data added with 4–6 weeks at maximum, with many being available within days. A typical bibliographic record in INPADOC will include basic data such as title, inventors, applicant, application and priority data, classification (usually IPC) and sometimes an applicant’s abstract. No further abstracting or indexing takes place before the record enters the file. The EPO provides users with a great deal of support concerning the content of its search files, when they are made publicly available. For detailed coverage tables, the user should refer to the EPO website, at www.epo.org/searching-forpatents/data/coverage.html, which includes detailed manuals on content, numbering conventions and KD codes, and downloadable spreadsheets on currency. A

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quarterly newsletter was issued between 1992–2019, latterly called “Patent Information News”, which contained regular updates on file content, including additional country data or changes to the database; archive copies of this are available from www.epo.org/service-support/publications.html. The last issue was 2019/4. Following the INPADOC incorporation into the EPO, a project was undertaken to merge the bibliographic data in the existing EPO multi-country search file DocDB with the content of INPADOC. The entry for DocDB data in Table 11.5 includes the basic range of countries and years in the merged database. The resulting content formed the core data for a new XML service from the EPO, called the Open Patent Services, or OPS. Details of this are available at www.epo.org/ searching-for-patents/data/web-services.html. Instead of providing a fullyfunctional search system, with its own command language, the EPO offers access to an XML-format data warehouse. Each user – either individual company or commercial information provider – is able to create their own interface and command system to access the same data, providing it to their customers in a format and structure which accords with their particular usage. This can include configuring the system to filter out records or fields which are not appropriate for each individual or group user. The service is free of charge for retrieval of up to 4GB of data per week, or an annual subscription for heavier data users. More information on the launch of the service were released in EPIDOS News6 and the current test area on the EPO website is found at www. epo.org/searching-for-patents/data/web-services/ops.html.

Pharm (Questel) The original Pharmsearch file was multi-national in coverage, but restricted to a specific technology field, namely pharmaceuticals. It was designed to work in tandem with a database of generic chemical structures, called MPharm. The bibliographic file included additional deep-indexing fields such as therapeutic use, extraction, biological or chemical processes, formulations, therapeutic effects and toxicity from the beginning of coverage until 2000, but thereafter consisted of abstracts only. The MPharm structure file was merged in the early 1990s with a similar file of generic structures (WPIM) drawn from the DWPI bibliographic records, to form the Questel Merged Markush Service (MMS), which is discussed in a later section of this Chapter. The country coverage and indexing of the Pharm file is shown in Table 11.8. Additional details of the indexing schemes used are described by O’Hara et al.7.

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Table 11.8: Pharm country coverage. Publishing authority

Bibliographic details and abstracts only

Fully-indexed coverage including added keywords

DE

–, –date

–

EP

–, –date

–

FR

–, –date

–

FR-M

–

–

GB

–, –date

–

US

–, –date

–

WO

–, –date

–

The principal value of Pharm was its linkage of bibliographic records with corresponding structure records. Patentability searching in the MMS file by means of sub-structures created a list of candidate answers, which might otherwise be missed if searching relied upon conventional structure or text-based retrieval. With the closure of MMS from 2020, it is unclear whether the deep indexing data will be integrated with any other search source.

IMS Patents Focus / Ark Patent Intelligence (IMS Health/IQVIA) The IMS Patents Focus database was part of the “IMS LifeCycle” cluster of databases produced by the IMS Health group, which was absorbed into IQVIA in 2016. The database is hosted on Proquest Dialog. It is structured in a manner which is quite distinct from most multi-national patent databases, in that each record in the file is dedicated to a single pharmaceutical compound, including its chemical structure, synonyms and CAS Registry Numbers. In essence, this forms a directory of drugs which have reached Phase III clinical trials or beyond. Each record is supplemented by patent coverage, including bibliographic data for the patents protecting the drug and its formulations and processes. It also includes data on patent extensions and anticipated expiry dates. Information on the country coverage of Patent Focus is difficult to establish; publicity claims a “worldwide” coverage, but anecdotal evidence suggests that information can vary substantially in its quality and quantity for different countries. The format of the file does not make it very suitable for patentability searches, but it is an ideal source to establish questions such as the size and form of a given

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drug company’s therapeutic portfolio, or to estimate the time before a given known product will come off patent and be open to generic competition. In 2015, GenericsWeb, an Australian-based company specialising in patent expiry information for the generic pharmaceutical industry, was acquired by IMS Health and its main information product, Ark Patent Intelligence, subsequently became part of the IQVIA offering. Introductory information about the new form of Ark can be found at www.iqvia.com/solutions/industry-segments /generics/ark-patent-intelligence. It is not clear whether the data set from the Patents Focus source has been integrated with the (much larger) country coverage of Ark, but it seems likely that this has happened. Ark now claims coverage for up to 130 countries and is a rich source of data on patent term extensions and exclusivities.

Derwent Geneseq (Clarivate Analytics) The Geneseq™ database is a structure-searchable database of nucleic acid and amino acid sequences disclosed in patents. It is produced by the Derwent division of Clarivate Analytics, and draws upon the same basic coverage as the DWPI file. It provides a means of directly searching the sequences using a variety of commercial algorithms, to assist in establishing questions of patentability. The file is available on the STN International system. Once a record has been retrieved by structure, the corresponding Derwent family data can be viewed directly or crossed into the companion DWPI file for further searching. The coverage of Geneseq is identical with the DWPI file (some 60 countries) and it is claimed that more than half of the sequence data do not appear in any other publicly available sequence database. In 2019, Derwent purchased SequenceBase, another source of genetic sequence data, and it seems likely that this will be eventually integrated with Geneseq where possible. Additional comment on genetic sequence sources can be found in Chapter 18.

Chemical Abstracts / Marpat (CAS) The Chemical Abstracts Service (CAS) is a part of the American Chemical Society, and since 1907 has been responsible for producing the secondary publication, “Chemical Abstracts.” This service, now in the form of the electronic database, provides access to the world literature of chemistry, in the form of abstracts and indexing to the journals, reports, conference, thesis and patent literature. Although in the early days, journals formed its principal coverage,

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some patents have been included from the beginning, and today more than half of the abstracts produced each year are from the patent literature. The coverage of CAS was based upon editorial decisions of the publishers, and developed independently of the other major bibliographic files such as WPI. However, for the period from approximately 1975–1995, INPADOC provided a major data feed, and no country would be covered unless it was also in the INPADOC file. In recent years, CAS has been making content decisions independently, and so the coverage has diverged from that of INPADOC. More detail of the current content is found on their website at www.cas.org/support/docu mentation/references/patentcoverage/, and in older printed documentation8. The CAS bibliographic file is not a complete collection of all the patent documents from each country covered. A sub-set in the field of chemistry is chosen, which for the purposes of selecting patents is defined using a range of groups from the International Patent Classification and/or the (now defunct) United States Patent Classification. Some groups are defined as “core”, that is, all patents bearing a class from the list will be abstracted and indexed; other groups are “non-core”, which means that patents will be screened and only selected for inclusion if the document analyst considers that there is enough chemical content to warrant the inclusion. The country coverage list for the CAS file is given at Table 11.5. Apart from the caveat that general and mechanical inventions are not covered at all, there is a further restriction on the actual content, based on the so-called “national” criterion. This selection policy, typically applied to documents from smaller economies such as Eastern Europe or South East Asia, dictates that only patents from a corporation or individual resident in the country of publication will be included in the file. This is a form of family selection, since it tends to exclude the bulk of patent applications filed under the Paris Convention by applicants from abroad, and allows indexing effort to be concentrated upon patents from local inventors and inventing companies. The CAS bibliographic file exists in a number of different electronic versions. The most comprehensive, which includes abstracts and patent family data, is loaded on the STN International host, as CAPlus. This includes data back to the beginning of CAS in 1907, and even selected articles from the beginning of the century. It also provides enhanced classification information, by loading fields for additional class systems such as the Cooperative Patent Classification (CPC) or the Japanese system. Many patent searchers will approach the CAS bibliographic file via the corresponding Registry file, which is a database of specific chemical structures disclosed in each record. During the editorial processing of each record, any disclosed chemical compound – from any source – is checked against the master

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database at the time of input. If the compound appears to be previously unknown or reported, a new structure identity record is created, and a unique identifier is allocated to the compound, in the form of its CAS Registry Number ®. These numbers have a characteristic format NNNNNNN-NN-N, and can be used as a crossover key from the structure database to the corresponding bibliographic records. There are over 160 million individual compounds registered in the CAS Registry file, some dating back to the early 19th century, plus a further 70 million biosequences. These can be searched on the basis of structure or sub-structure, using a specialist command language to create a search enquiry in the form of a connection table. The computer matching of the query connection tables with the database connection tables produces an answer set in the form of the Registry Numbers of the matching compound(s). These numbers can then be linked to the originating article(s) which disclosed the compound(s). The ability to query by sub-structure, combined with the wide country coverage of the bibliographic file, makes the CAS Registry file a primary source for the searcher undertaking chemical patentability searches, and indeed is widely used by patent offices themselves in their statutory search work. One of the drawbacks of the original Registry file was that a new compound was only included in the file if there was evidence in the corresponding article that the compound had actually been made or isolated – typically, this evidence might be in the form of a piece of physical property data or a spectral record. As a result of this criteria for inclusion, many of the chemical compounds discussed in patent specifications had no corresponding CAS Registry record. This is because a substantial proportion of chemical patents disclose some fullycharacterised compounds and so-called “Markush structures”. The name is derived from the inventor of US 1506316 (granted 1924), Eugene Markush, who achieved passage of his claim 1 on alternative processes for dyestuff production by the simple linguistic expedient of a closed list of alternatives (“selected from the group consisting of aniline, homologues of aniline and halogen substitution products of aniline”), thus avoiding the use of the word “or”, which was anathema to the patent offices of the time. Markush structures are generic disclosures based around a core substructure with many optional chemical substituents, and can encompass many thousands, or millions, of discrete chemical compounds. Very few of these alternative forms (which some sources refer to as “prophetic” or “paper” chemistry) have actually been made, so did not fulfil the CAS criteria for inclusion in the Registry file. An example Markush structure, from German patent application DE 10360370-A1, is shown in Figure 11.2. In order to address the issue of these missing compounds, the Marpat file was created in the late 1980s. New search software algorithms had to be developed in order to provide the functionality required, and the American Chemical Society

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Chapter 11 National and multi-national patent information sources

Figure 11.2: An example of a Markush (generic) chemical structure.

obtained a patent on the method of searching generic chemical structures which has been implemented in the Marpat system9. The country coverage of the Marpat file at its launch was identical to the main bibliographic file, with the exception of patents from the former Soviet Union. The time range starts from 1988 for most countries. Russian Federation patents were included from the year 2000, and Korean patents from 2008, and small backfiles (additional 2–3 years) were added for other English, French or German language patents later. The main area in which Markush structures are used is for organic chemistry, which is fully covered in the file, but alloys, metal oxides, inorganic salts, intermetallics and polymers are not included. As with the original CAS Registry structure search, the searcher frames their request using specialist software applications, which convert a drawn generic structure into a form of connection table which is able to match against the database records. Marpat search results can take a considerable time to interpret, in order to understand where the generic enquiry has caused a hit in the structure. However, it is clear that both the CAS Registry and Marpat files have their part to play in overall chemical patentability searches, as it frequently happens that each file yields unique answers to the same basic enquiry. From 2009, an additional step was taken to improve coverage of compounds which fell between full Markush indexing and single, identified, compound registration. CAS announced that it would begin to register compounds disclosed in patents, even in the absence of specific evidence of synthesis, such as additional compounds from tabulated examples, or known compounds cited as being used in a novel manner. Further details of this coverage policy are shown at www.cas. org/support/documentation/chemical-substances/prophetics.

Merged Markush Service (Questel) The history of the MMS file runs closely in parallel with that of the Marpat file. Both systems seek to address the same need – to retrieve chemical patents from the prior art which generically disclose many hundreds or thousands of specific compounds, without characterising each one fully.

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At the same time as CAS was developing Marpat as a way of accessing the CAS bibliographic file, Derwent Information and the French Patent Office, INPI, were seeking to use alternative methods to access their DWPI and Pharm files respectively. The Derwent generic chemical file was known as WPIM (WPI Markush) and the French as MPharm. Coverage for each dated from the late 1980s at launch, on Questel. Both systems used the DARC software as the basis for the query construction and retrieval. DARC was originally developed to search the CAS Registry file of specific compounds, and the extension of the original DARC system to include generic structures has been discussed by Benichou et al.10 and references therein. After a number of years of working independently, Derwent and INPI joined forces to create the Merged Markush Service, or MMS. This consists of a single file of generic chemical structures, providing a key into the Pharm and DWPI files. Since the DWPI file includes pharmaceuticals, there is some overlap between the bibliographic content – a given chemical structure may link to a Pharm record for which there is also a DWPI record, or vice versa. After its original launch, coverage was extended backwards to include structures from 1978 for 4 major patent authorities in the field of pharmaceuticals (EPO, PCT, US and France), and to 1980 for Germany and the United Kingdom. Markush structures for additional Derwent sections on agrochemicals (section C) and general chemistry (section E) were extended back to 1982 for EPO, PCT, US and France and to 1983 for Germany and the United Kingdom. From 1987 forwards, the full range of Derwent major countries was covered, in all of sections B, C and E. A search in the MMS file will usually yield a mixture of structure results, with some consisting of specific compound hits and others being genericallyindexed Markush structures. The crossover key is in the form of a single unique compound identifier. Due to the different indexing policies and conventions applied by CAS (to Marpat) and Derwent (to MMS), combined with the unique mixture of compound types in MMS, it is quite feasible that the same search strategy applied to both Markush files can result in a corresponding bibliographic records being retrieved in one dataset but not the other, even when their bibliographic coverage is identical. The MMS file was redesigned to operate on a Unix platform around 2005, which improved some aspects of retrieval. However, the data files of Markush structures have now also been loaded on the STN system as the DWPIM service, and this enables a harmonised search strategy to be used across both the CAS and Derwent data, with the STN structure-building software. The MMS file remained available from Questel, as a stand-alone product, but in 2019–20 a technical problem was discovered which proved uneconomic to remedy, and it was

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announced that the system would close in September 2020. Other tools for creating and searching Markush structures have been developed in the private sector, including those from the ChemAxon company, based in Hungary, and these are in wide use in-house11, further reducing demand for a public search tool. A 2017 review of further developments in chemical structure searching can be found in the book chapter by Downs et al.12.

MAREC and Alexandria (Matrixware/IFI Claims Patent Services) The Information Retrieval Facility (IRF) was founded in Vienna in 2006 as an independent non-profit research consortium, with partners from a number of academic information retrieval research groups and private sector institutions. The principal aim of the IRF was to develop new tools for improving retrieval, particularly of patent information. Along with Matrixware Information Services GmbH, the IRF also worked on creating its own high-quality patent database, which could be used as a test collection in information retrieval trials; this was launched as MAREC (Matrixware Research Collection) in 2009. MAREC consisted of a static collection of approximately 19 million WO, EP, US and JP patent documents ranging in date from 1976–200813. Subsequently, Fairview Research Inc., (now trading as IFI Claims Patent Services) collaborated with Matrixware in the development of a regularlyupdated global patent database, which was made available to IRF partners as the Alexandria collection. This included some full texts and legal status, as well as bibliographic information, in a uniform XML format, and expanded the country coverage to include other patents from the PCT Minimum Documentation set. Some additional details of the content were described by Tait et al. in 200914. This file is now being distributed by IFI Claims as the Claims Global database. The coverage is outlined in Table 11.5, and more details can be found in the support documentation at http://docs.ificlaims.com/ display/CDVDP/CLAIMS +Direct+Documentation.

Diamond (Lighthouse IP) The Diamond bibliographic and legal status patent file is a new data set compiled by Lighthouse IP (www.lighthouseip.com) and released in 2018. One of the underlying aims of the project is to fill in the gaps in coverage which are present in the DocDB file, either as a result of a short break in data release or, in some cases, a complete cessation of any data supply from a country15. In

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addition, new countries which are not present in DocDB or other files at all have been added, usually at the level of basic bibliographic information and abstracts, but also back-scanned full text. Information is sourced directly from intellectual property offices worldwide, and in some cases is re-keyed from original paper-based information such as national gazettes. The initial release of the file contained over 150 authorities for bibliographic data and nearly 100 for legal status data. At least 75 countries have original language and/or machinetranslated English full text available. Further details of the country coverage, in terms of starting year, are provided in Table 11.5. Note that some countries present in the launch version may not be maintained due to difficulty of obtaining consistent data supply; a number of countries present in the launch version but not in current coverage lists are marked with an asterisk (*) (presumed present, status uncertain) in the Table. The file is currently being licensed by Lighthouse IP to publishers or information service providers only, and at the time of writing is not being loaded as a publicly available search file.

Public internet sources The internet has become the medium of choice for patent offices and many commercial producers to distribute their products. This section will consider some of the free-of-charge websites and portals available. It should be noted that few of these services offer encrypted or secure access, and in common with most internet search sites have little active support for the user. However, the unique information content makes it impossible to ignore these sites as useful complements to established commercial offerings.

National patent office websites Previous editions of this book have not attempted to compile a listing of all patent office websites, not least because there is a risk that many of the links will be out of date almost as soon as the list is completed. However, it has become clear that the “rush to the internet” is beginning to stabilise, and that national patent office websites are becoming a more prominent first-stop source for patent information. Accordingly, a resource list has been produced for this edition, and is reproduced at Annex C. Users wishing to review the latest situation are referred to one of the directory sites available, noted in Chapter 10, although it should be borne in mind that these can also be outdated.

432

Chapter 11 National and multi-national patent information sources

The most basic service which is provided by a national patent office website, at least as far as electronic patent information is concerned, often starts with the production of a PDF version of the official gazette. These may be useful for current awareness purposes, but are usually difficult to use for retrospective searching, with little if any structured data or searchable text. A major weakness in most national patent office searchable databases is the lack of detailed information about coverage, both in terms of document types (unexamined, granted, full text, abstracts) and number of years of content. National websites which have developed further typically include two major improvements in the form of (a) improving flexibility of searching, so that users have access to a genuine cumulated database of information, rather than individual gazette issues with limited points of access, and (b) the addition of back files of data, beyond the point at which an office has started to accept e-filed applications. This latter stage involves at least the scanning, and often the OCR conversion, of many thousands of paper files, and is only complete for a very few major offices. Despite the fact that the SCIT committee of WIPO (forerunner of the current Committee on WIPO Standards, CWS) adopted a recommendation in 1999 relating to the minimum contents for a patent office website16, there are still many examples amongst smaller office sites where the legal aspects of patenting are adequately described but the information services function of the authority features much less prominently. As an example, the rapid development of the AusPat site is a useful illustration of the enhanced range of information services which can be provided by national offices. For many years, access to the Australian collection of bibliographic data was only possible by means of a terminal emulator program, later adapted to run inside a browser window, providing information from a mainframe computer. In 2008, IP Australia consolidated much of the varied information (bibliographic, legal status, page images) into a single system called AusPat (www.ipaustralia.gov.au/auspat/). The first release provided information on pending and granted applications after publication at 18 months, similar to the original version of the EPO Register, searchable across 21 fields of data, including codified legal status events. The system was also designed to integrate a file inspection facility. The first expansion, extending bibliographic data back to 1920, was quickly accomplished, followed by full text searching launching in December 2010, consisting of approximately half of the entire Australian backfile (1904–1976 and 1999–2010). The remaining years of full text were progressively loaded over the next few years, together with the inclusion of the eDossier service, releasing electronic file wrappers for all cases made open to public inspection and filed in 2006 or later. In the space of only 3–5 years, access to Australian information increased enormously, along with the

Public internet sources

433

total volume of documentation which had been digitised. The office also produced comprehensive training and instructional material on AusPat, including a complete user guide17.

Patent Office portal sites and multi-national databases As the internet has developed as a primary method for distribution of patent information, there has been some research into the models of information retrieval which are best suited to this field. By and large, commercial online systems still retain much in common with the command-line systems of the 1960s, employing Boolean search strategies, and do not use the more advanced algorithms developed by information retrieval researchers in later decades. Readers may be interested in a recent review of the literature in the field18. In the public sector, experiments have tended to concentrate on different methods of storing the data and indexing the data, rather than more sophisticated methods of retrieval, as such. Two examples are portals and multi-national databases. Portal sites are designed to facilitate simultaneous searching over multiple countries. In these instances, the actual data sources remain distributed across multiple sites, while the portal forms a single point of entry; this model is sometimes referred to as “federated search” or “metasearch”. An alternative approach, adopted by some authorities, is to build a multi-national databases themselves, using data feeds from multiple patent offices, and then make this combined source available through their own single interface. Some examples of patent search portals are: Surf-IP (Intellectual Property Office of Singapore) The Surf-IP site (www.surfip.gov.sg) was a portal site introduced by the Singapore Patent Office (IPOS), to provide a single search window through which to interrogate the free search files at the Singapore, Japanese, Chinese, Thailand and Taiwanese patent offices, plus the USPTO (full text), PCT (full text), EPO, United Kingdom and Canadian systems loaded in Singapore. A private sector consultancy, Intellectual Property Exchange Pte. Ltd. (IPEXL), worked with IPOS to design, develop and operate SurfIP. The system was closed in 2011, partly due to it being superseded by improved access tools at each of the target national offices. PerFedPat (Vienna University of Technology) The PerFedPat system was an experimental portal for simultaneous access to Espacenet, Google Patents, WIPO PatentScope and the MAREC collection. Its

434

Chapter 11 National and multi-national patent information sources

design and construction are described by Salampasis et al.19, (although the system is no longer available to download and test as described in the paper), and also in the book edited by Lupu20. Some examples of public-sector multi-country databases are: Espacenet (European Patent Office) The EPO launched its multi-country web-based search service as esp@cenet® in 1999, and quickly became a very popular search service. The website has been redesigned a number of times, and the latest version, with a much-redesigned interface, was released in 2019. The name was simplified to Espacenet, without the embedded @ symbol, which in later years had led to some confusion. The original model consisted of two layers, or levels, of server. Each national patent office of the member states of the EPO undertook to provide a minimum of a rolling two-years’ worth of bibliographic data for its own patents. Some offices soon took this further, and loaded many more documents, including experimenting with provision of full text, or at least abstracts. All data on these so-called Level 1 servers were in the national language of the office concerned, and typically only provided titles and application, publication and classification information. In addition to these national Level 1 servers, two files with complete sets of EPO and PCT data were provided by the EPO itself. The largest file on the system is the so-called Worldwide file, which was initially referred to as the Level 2 server. This provides access to multi-country bibliographic data, including titles and abstracts, all in English. The file structure is based upon the DocDB internal search file at the EPO. Country coverage for this file is shown in Table 11.5. The earliest coverage date for any given country is usually for bibliographic data only; more recent years provide viewable (and sometimes searchable) character-coded text for some documents, and facsimile images in PDF format. Results are grouped in patent families using the EPO definition, and at least one member of each patent family is available in facsimile mode. Originally, page images were available only in one-file-per-page display, but the EPO later enabled complete document download as a single PDF. Bibliographic results from an Espacenet search can be used to obtain the INPADOC legal status (where available for the country concerned), the rest of the INPADOC family, patents cited in search reports, some character-coded full text, classification schemes (IPC and CPC), and also the national patent dossiers via the Global Dossier system. As the system has matured, more full text has become available, notably the EP and PCT collections in English, French and German. Searchers using the classification schemes are advised to

Public internet sources

435

check whether the documents in the Worldwide have been tagged with the scheme which they wish to use. The top-level domain for Espacenet is www.espacenet.com, or it can be entered via the main EPO website. Interfaces in languages other than English can be accessed by substituting an appropriate country code for xx in the general URL http://xx.espacenet.com. For example, access to http://nl.espacenet.com provides a Dutch interface for searchers who prefer to use this; however, these interfaces are currently still linking to the previous version of Espacenet, not the 2019 release. The national URLs do not provide any form of translation of the data, which must be still searched in the language as supplied – the only change provided by the address is the language of the interface, including the search mask. The Worldwide file can be accessed directly at http://worldwide. espacenet.com/. EPO Global Patent Index (GPI) A further development of EPO patent information services came about when the MIMOSA software, originally developed for limited-size databases on disk, was enhanced to be able to handle much bigger files. The data collections which formed the backbone of the Worldwide collection on Espacenet, together with the content from the now-defunct disk products ESPACE-ACCESS, ESPACE-ACCESS-EPC and ESPACE-FIRST, have been made available as the Global Patent Index, combining the additional flexibility and power of MIMOSA with the multi-country data collection. GPI enables users to create monitoring profiles for current awareness, enhanced downloading of data retrieved and detailed search of bibliographic and legal status data. The system resides on EPO servers and is available through a standard browser interface. Further information can be found at www.epo.org/ searching-for-patents/technical/espacenet/gpi.html. Unlike Espacenet, these expert-level services require pre-registration to create an account, and there is an annual fee for access to most of the databases available. DEPATISnet (German Patent and Trade Mark Office) DEPATISnet is a multi-country database accessed via the DPMA (German Patent and Trade Mark Office). It is available at https://depatisnet.dpma.de, with either a German or English search interface. Like the EPO’s GPI, it offers a much more sophisticated command language, based upon the IKOFAX software. The data available remains in the national language, with the exception of Japanese content which is based upon the PAJ file and is in English. Most documents, as with Espacenet, are available in PDF format, although DEPATISnet offers different resolutions up to 300 d.p.i. for screen viewing or printing.

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Chapter 11 National and multi-national patent information sources

The content of the system is expanding all the time; Table 11.5 provides a summary of the overall coverage. The main full text content is listed in Table 11.9, which has been enhanced with basic bibliographic information from DocDB, which brings in equivalents from many more countries for the family search. One added-value aspect, similar to the availability of CPC in Espacenet, is the provision of two IPC classification fields – one reflects the IPC as published by the patent authority concerned, and the second (a so-called “search file IPC”, using the German enhanced IPC system, DEKLA) is allocated by the German examiners on receipt of the document, and may differ from the original. Table 11.9: DEPATISnet full text coverage. Country code

Country name

Earliest year coverage

Searchable full text*

PDF text display*

AT

Austria







CH

Switzerland







CN

China







DD

East Germany



–

–

DE

Germany



–

–

EP

European Patent Office (EPO)







FR

France







GB

United Kingdom







JP

Japan







KR

South Korea







US

United States







WO

World Intellectual Property Organization (WIPO)







* = Percentage of records from each country with this field/format, averaged across all years/ document kinds.

Google Patents (Google) The first entry of Google into the world of patent information came in 2006, with the launch of a database of US patents. This included a proportion of OCR converted full text of older (pre-1976) documents, which gave some insight into the potential of the system but also illustrated the shortcomings of the OCR technology

Public internet sources

437

at the time. Since then, the country coverage has gradually expanded to bring in additional countries and search fields. The current coverage had expanded by 2018 to include the same base file as CLAIMS Global (the Alexandria collection – see Table 11.5), plus a range of non-patent literature such as technical manuals which have been deposited with Google; more details on this content, which focuses heavily on the IT industry, can be found in the website of the Prior Art Archive, created by MIT and Cisco (www.PriorArtArchive.org). One useful feature of the Google Patents system is the machine-allocated classification of the non-patent literature from Google Scholar and part of Google Books, such that the CPC system can be used to search both patents and non-patents in the same strategy. In addition, chemical name fragments in the full text collections (22+ countries) have been parsed and converted to several different line notations, in order to be able to search for specific chemical compounds by name or by 2D structure. The basic entry page to Google Patents is at https://patents.google.com – the advanced search page is found at the same URL followed by /advanced. The headline number of full text authorities falls between DEPATISnet and PatentScope, and currently stands at 22, as shown in Table 11.10. Incomplete and/or untranslated (original language only) collections of full text are present for the additional 9 countries shown in the separate section at the bottom of the Table21. Table 11.10: Google Patents full text coverage (2020). Country Country name code

Searchable full Searchable full text (grants) text (applications)

AT

Austria





AU

Australia





BE

Belgium





BR

Brazil

–



CA

Canada





CH

Switzerland

–



CN

China





DE

Germany





DK

Denmark





EP

European Patent Office (EPO)





438

Chapter 11 National and multi-national patent information sources

Table 11.10 (continued ) Country Country name code

Searchable full Searchable full text (grants) text (applications)

ES

Spain





FI

Finland





FR

France

–



GB

United Kingdom

–



JP

Japan





KR

South Korea





LU

Luxembourg

–



NL

Netherlands





RU

Russian Federation





TW

Taiwan





US

United States





WO

World Intellectual Property Organization (WIPO)

n/a





–

Partial full-text coverage: AP

ARIPO

BG

Bulgaria

–



CZ

Czechia





EA

Eurasian Patent Organisation



–

HU

Hungary

–



IN

India

–



PT

Portugal

–



RO

Romania

–



SK

Slovakia

–



Public internet sources

439

The Lens (CAMBIA/Queensland University of Technology) Originally designed in 1998 and launched as a public resource in 2000 as PatentLens, this was an early web-based search tool which concentrated heavily on the patents in the biological sciences area, particularly agricultural biotechnology, and providing searches on a subset of Australian data in this field. By 2006, the coverage had expanded to cover EP, PCT and US documents, and widened first to cover all fields of life sciences, then all fields of technology22. A search project on DNA and protein sequences was introduced in 2009. PatentLens was subsequently relaunched as The Lens in 2013, including content from DocDB and US/EP/WO/AU full text. The sequence database PatSeq followed in 2014, and further widened with the integration of non-literature from sources such as PubMed and Microsoft Academic in 2017–2018. The home page to release 6.7 of The Lens is found at www.lens.org. PatentScope (WIPO) The PatentScope system was originally designed as an enhanced method for scanning the PCT Gazette for new WO publications. Gradually, more data from the PCT international phase, together with national phase entry data, have been added. Further information on this legal status content can be found in Chapter 16. In parallel, the WIPO has been working with patent offices from less-developed countries to enable their digitisation programmes to proceed. This has usually involved scanning page images of national documentation, and for more recent years providing full searching capability, by means of OCR processing of the scanned copies. The PatentScope search engine can now provide simultaneous searching across the patent documents of the countries listed in Table 11.5. The main home page is at www.wipo.int/patentscope. The record content – especially the availability of full text – varies widely from country to country, which can have the effect of skewing answers towards retrieval of those records with the greatest amount of text, unless the search is conducted using language-neutral parameters common to all records, such as the IPC. The countries for which a proportion of records contain searchable full text are listed in Table 11.11. Unfortunately, PatentScope documentation does not break down the statistics into unexamined applications and grants – in most cases, only one Kind of Document per country is included in the database – so it is not possible to correlate this Table exactly with the data from Table 11.12, which summarises coverage data for a number of other major full text suppliers. One unusual feature of PatentScope is the provision of a Cross-Lingual Expansion (CLE) tool, which converts English keywords into a corresponding strategy using words derived from a further 12 languages (all the PCT official

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Chapter 11 National and multi-national patent information sources

Table 11.11: PatentScope full text country coverage (national collections, excluding PCT). Country Country name code

Earliest year coverage

Searchable full text (% records)

AP

ARIPO





AR

Argentina





AU

Australia





BR

Brazil





CA

Canada





CN

China





CO

Colombia





CR

Costa Rica





CU

Cuba





DD

East Germany





DE

Germany





DK

Denmark





DO

Dominican Republic





EA

Eurasian Patent Organisation





EC

Ecuador





EP

EPO





ES

Spain





FR

France





GB

United Kingdom





GR

Greece





IL

Israel





IT

Italy





JP

Japan





KR

South Korea





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441

Table 11.11 (continued ) Country Country name code

Earliest year coverage

Searchable full text (% records)

MA

Morocco





MX

Mexico





PR

Peru





PT

Portugal





RO

Romania





RU

Russian Federation





US

United States





UY

Uruguay





ZA

South Africa





publication languages apart from Arabic plus Italian, Swedish, Polish and Danish), then searches across the available sources to retrieve the results. There is also a built-in document translation facility to provide full-text in a preferred language, which assists browsing for relevance. SumoBrain / FreePatentsOnline (SumoBrain Solutions) The SumoBrain Patent Search Service (www.sumobrain.com) was launched in 2008 as a semi-commercial development and expansion of the original free-ofcharge service offered as FreePatentsOnline (www.freepatentsonline.com), also known as FPO. The original service centred around only US and EPO data sets, but enabled quite sophisticated searches including automatic word stemming and search term weighting. SumoBrain licensed in additional bibliographic and full text data, consisting of the PAJ file of English-language abstracts of Japanese applications and full text of PCT applications, and provides for users to purchase data in bulk for in-house use or through regular updates. All of the databases can be searched simultaneously (so-called cross-collection searching). There is some indication that PCT full text data may have been subsequently withdrawn, although bibliographic data appears current. Registration for SumoBrain is required in order to access the full range of facilities, but this is free-of-charge. SumoBrain provides a range of pre-fabricated alert topics, similar in concept to the alerting bulletins from other commercial publishers; some are based on an IPC sub-class. Registered

ARIPO

Argentina

Austria

Australia

Belgium

Bulgaria

Brazil

Belarus

Canada

Switzerland

Chile

China

Colombia

AP

AR

AT

AU

BE

BG

BR

BY

CA

CH

CL

CN

CO

Country Country code

 ?   

   



















–





Searchable full-text (applications)

Searchable fulltext (grants)

TotalPatent One

Table 11.12: Total Patent One, PatBase and PatSeer full-text content.

 

–



 















–

Searchable full-text (applications)













–



Searchable full-text (grants)

PatBase

–









 ?

 ?

–

 





–

–

–

–



Searchable full-text (applications)















Searchable fulltext (grants)

PatSeer

442 Chapter 11 National and multi-national patent information sources

Costa Rica

Czechoslovakia

Cuba

Cyprus

Czechia

East Germany

Germany

Denmark

Dominican Republic

Algeria

Eurasian Patent Organisation (EAPO)

Ecuador

Estonia

European Patent Office (EPO)

Spain

Finland

France

CR

CS

CU

CY

CZ

DD

DE

DK

DO

DZ

EA

EC

EE

EP

ES

FI

FR

      

– –    







 ?



–







































–





 ?











–

 







–













–













–

(continued )





–











 ?

 ?



–

 ?

–

Public internet sources

443

United Kingdom

Georgia

Greece

Guatemala

Croatia

Hungary

Ireland

Israel

India

Iceland

Italy

Japan

Kyrgyzstan

GB

GE

GR

GT

HR

HU

IE

IL

IN

IS

IT

JP

KG

Country Country code

Table 11.12 (continued )

  

  

 ? 

 





–





 ?





Searchable full-text (applications)

Searchable fulltext (grants)

TotalPatent One





–

–

 









Searchable full-text (applications)









Searchable full-text (grants)

PatBase

 –



–

–







 ?



  ?















–

 

 ?

Searchable full-text (applications)



Searchable fulltext (grants)

PatSeer

444 Chapter 11 National and multi-national patent information sources

South Korea

Kazakhstan

Lithuania

Luxembourg

Latvia

Morocco

Monaco

Moldova

Montenegro

North Macedonia

Mexico

Malaysia

Netherlands

Norway

New Zealand

OAPI

Philippines

Poland

KR

KZ

LT

LU

LV

MA

MC

MD

ME

MK

MX

MY

NL

NO

NZ

OA

PH

PL

–



 ?  – –

   



–















–

–



–











–



 

–

–



 ?

–



–

–

















–



 

–



























(continued )



–

–

–











–

–

–

–

–



–











–





Public internet sources

445

Portugal

Romania

Serbia

Russian Federation

Sweden

Singapore

Slovenia

Slovakia

Soviet Union

Thailand

Tajikistan

Tunisia

Turkey

PT

RO

RS

RU

SE

SG

SI

SK

SU

TH

TJ

TN

TR

Country Country code

Table 11.12 (continued )

 ?









–

–



 ?















Searchable full-text (applications)

Searchable fulltext (grants)

TotalPatent One

–







–

–

 –

–



–

–







–

–



–







Searchable full-text (applications)

 ?

















Searchable fulltext (grants)

PatSeer





–

–

 









 





Searchable full-text (applications)





Searchable full-text (grants)

PatBase

446 Chapter 11 National and multi-national patent information sources

Taiwan

Ukraine

United States

Uruguay

Uzbekistan

World Intellectual Property Organization (WIPO)

South Africa

TW

UA

US

UY

UZ

WO

ZA

–



–













–







–

–













–





–

 (En, De, Fr, Es, Ru)  (Kr, Jp, Zh)

–

 –







–





Public internet sources

447

448

Chapter 11 National and multi-national patent information sources

users of SumoBrain can store their own searches for use as regular alerting profiles.

Controlled-access internet Many of the internet patent search sites developed by patent offices – as well as some early experimental systems in the private sector – were made available to the public free-of-charge, and often without the need to create a user account, at least for access to the basic functions. Some required users to create a free account in order to use some of the more advanced features. However, as web technologies have developed, some of the traditional database production companies have started to reconfigure their proprietary data to work within a browser environment, providing a more familiar interface for the novice user. As bulk data from the patent offices has become more widely available at marginal cost, many start-ups in the patent search market have been able to integrate large data collections such as DocDB into their own systems. The resulting commercial interfaces are generally only accessible via an individual account and/or fee payment(s). Pricing models vary, from daily purchase of a password to a flat fee for annual unlimited access or a pay-as-you-go model. This section will not consider commercial browser-based forms of traditional command-line host systems (such as STNext), since the data content offered does not differ from that described elsewhere in this book.

TotalPatent One (Lexis-Nexis Univentio) The Univentio corporation, based in the Netherlands, has been well-known since the 1950s as a supplier of alerting services, full-document delivery and latterly as a producer of full-text databases which it licenced to other database vendors, such as STN. In 2004, the company started on a new direction, by developing a search system to distribute its own content directly. This was launched as Patent Warehouse. Shortly afterwards, Univentio was taken over by the Lexis-Nexis group, and the product was re-christened TotalPatent. After further development of the interface following several years’ experience in the market, a new version was released as Total Patent One. The distinctive aspect of TotalPatent’s offering is the large proportion of full-text files. These are produced by advanced OCR technology by Univentio themselves, and in a number of cases corresponding machine translations into English are produced at the same time. The TotalPatent interface permits the

Controlled-access internet

449

searcher to specify which file(s) they use, and runs a simultaneous search across the selection. In this sense, it is both a portal to individual national collections and a global family search tool. The overall country coverage is provided in Table 11.5, but the content of full-text available at the time of writing is provided in Table 11.12b, c. In addition to the full text files, the TotalPatent product has incorporated a wider range of bibliographic-only countries, and INPADOC legal status information. Document delivery in a number of formats is available. Following the relaunch as TotalPatent One, the search engine has been developed to incorporate some semantic search elements, as well as increasing the range of country data being loaded.

PatBase (Minesoft/RWS) The PatBase product (www.patbase.com) is a co-operative effort launched in 2003 between Minesoft Ltd., an information services supplier based in London and RWS Ltd, one of the UK’s largest patent information brokers and translation agencies. The product draws heavily upon public-domain sources, but has been increasingly supplemented by proprietary data. A principal bibliographic source is the OPS server of the EPO, supplemented by additional data from national patent office publication servers. The cumulated data are downloaded to a Minesoft server and reformatted into families, essentially based upon the INPADOC algorithm but with further corrections applied. The resultant database is available from the PatBase server, and covers some 95 patent-issuing authorities. After the launch of the bibliographic version, later versions of PatBase expanded the content by adding full-text patent documents in Latin and non-Latin scripts, such as Japanese, Chinese, Korean, Russian and Thai; these full texts have been integrated into the existing patent families. The full bibliographic content is tabulated at Table 11.5, and the detailed full text content is shown in Table 11.12, in parallel to that of TotalPatent One for comparison. The PatBase system also has built-in links to take advantage of external suppliers where appropriate. For example, requests for legal status can be fulfilled b In the year coverage columns, there are a number of countries for which the exact nature of the content is not clear; these are marked with a question mark (?). There is some doubt about whether the kind codes have been correctly interpreted, since other sources indicate that the given document kind did not exist at that date. c Note that where these search systems claim that machine translation is available, it may not be available for all document kinds, for a given country, nor for the full range of years of content.

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Chapter 11 National and multi-national patent information sources

either from the OPS server, the EPO Register or corresponding national registers, without a separate account being needed by the user. Display of facsimile documents is provided by links to existing sources such as Espacenet. Drawing pages can be reformatted into a proprietary “mosaic” showing all drawing pages on a single screen. The definitions of the various classification schemes available in the file are reached from services such as the WIPO classification listings or the JPO F-term index. The system is browser-based, and provides an number of navigational aids for reviewing results, including keyword-in-context features and multi-colour highlighting of hit terms, which can be presented in the form of a document map, showing where hits on search terms have occurred. Other features such as citation maps may also be displayed once initial bibliographic hits have been found.

WIPS Global The WIPS Global tool (https://global.wipscorp.com) is an English-language version of a product developed in South Korea by the WIPS Co. Ltd (www.wips.co.kr). The parent corporation is the only prior art patent search institute which has been authorized within Korea for the conduct of national and PCT searches. In its original form from the late 1990s, WIPS Global was a compilation and reformatting into a web-based format of a number of existing products, including the GlobalPat CDROM range, PAJ, KPA, Chinapats, DocDB and US data. Some data are provided in full-text, but the majority consists of basic bibliographic data plus abstracts in English; Table 11.13 lists the countries which have at least some full text available. The applicant name data in a number of the files has been standardised to facilitate cross-over between the files. One specific claim to distinction is that the service is able to include Korean data (KR-A and KR-B publications) into the INPADOC core families faster than the INPADOC file itself, producing enhanced family information. This is particularly useful at the grant stage, given the short opposition period available in Korea. One concern with the Korean data translated into English was the timeliness of delivery, which could be quite slow when specialist abstracts were being written. With the advent of machine translation, and access to Korean data via the Global Dossier system, access can be much more current. The WIPS organisation has also developed a range of visualisation and analysis tools surrounding this data set, marketed as ThinKlear. Since all the fields within each file loaded on the WIPS system have been standardised, it provides opportunities for meaningful analysis without some of the large cleanup operations necessary when merging information from several sources. More

Controlled-access internet

451

Table 11.13: Principal country coverage of the WIPS Global service. Country Country name code

Grants / Applications / Notes start year start year

CN

China

Full text, PDF / 

Full text, PDF / 

DE

Germany

Full text, PDF / 

Full text, PDF / 

EP

EPO

Full text, PDF / 

Full text, PDF / 

FR

France

Full text / Full text /  (?)

Pre- documents are grants, not unexamined applications

GB

United Kingdom

Full text / Full text /  (?)

Pre- documents are grants, not unexamined applications

IN

India

Full text, PDF / 

Full text, PDF / Bibliographic and abstract  only, –

JP

Japan

Full text, PDF / 

Full text, PDF / No PDFs, – 

KR

South Korea

Full text, PDF / 

Full text, PDF / Bibliographic only,  –

RU

Russian Federation

Full text / Full text / (?) 

TW

Taiwan

Full text, PDF / 

Full text, PDF / Bibliographic and abstract  only, –

US

United States

Full text, PDF / 

Full text, PDF / Abstracts, claims only,  –

WO

World Intellectual Property Organization (WIPO) (PCT)

–

Full text, PDF / 

Pre- documents are SU, not RU.

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Chapter 11 National and multi-national patent information sources

details on these products, and support material such as manuals and tutorials, can be found at the WIPS Global Help Center via https://www.wipsglobal.com/ service/cts/serviceIntro.wips.

QPAT and Orbit.com (Questel) Questel’s first move into browser-based platforms was in the form of the QPAT system, which provided secure access to a range of Questel’s existing patent databases. As a snapshot in time, Lambert’s paper of 2004 compares the thenleading edge commercial systems of Delphion, MicroPatent and QPAT, presented at the International Chemical Information Conference in 200423. One of the key differences highlighted was the presence of the PlusPat/FamPat bibliographic files on QPAT, whilst Delphion’s major multi-national database was the DWPI file; the contents of both can be compared in Table 11.5. Delphion and QPAT both had integrated visualisation tools; Delphion installed PatentLab II whilst QPAT licensed the anacubis software, which ceased development in 2005 and resulted eventually in a redesign of QPAT with bespoke analytics, and the re-emergence of the old ORBIT name as the current generation Orbit (www.orbit.com). The QPAT platform was officially closed in 2013. The Orbit.com system integrates additional search files, including coverage of national and international designs/design patents, links to legal status and litigation information. In 2018, Questel concluded a partnership agreement with Darts-IP, a Belgium-based information provider specialising in trade mark and patent litigation information, which considerably expanded the Orbit.com coveraged. One of the features of the Orbit.com content is the enriched indexing of the bibliographic data, which recently included information about Standard-Essential Patents (SEPs), drawn from data supplied by standard-setting organisations and integrated with the patent family information.

PatSeer (Gridlogics) PatSeer (www.patseer.com) is the trading name for a range of search products from Gridlogics, an Indian-based software corporation (www.gridlogics.com). Like many more recent distribution channels, the bibliographic content is

d Darts-IP was itself acquired by Clarivate Analytics in late 2019, so it remains to be seen how future collaborations may develop and how widely the litigation data may be made available through other providers.

Controlled-access internet

453

drawn heavily from the EPO’s DocDB, but with a much greater emphasis on the addition of parallel full text files from other sources, and corresponding machine translations, together with analytics software. The first public tool was Patent INSIGHT, followed by PatSeer in 2012 and Patseer Pro™, which combined the data content of PatSeer with the analytics of INSIGHT, in 2016. Various levels of contract are possible (PatSeer 360, PatSeer Premier, PatSeer Lite . . . ), with varying additional modules for business and financial data and IP intelligence monitoring. The full text content was upgraded significantly in 2016 and has continued to expand, to the current range of 71 full text files, which are summarised in Table 11.12.

Patently.com (EIP Europe LLP / Patently Ltd.) Patently.com (https://patently.com) is a new (2018) search platform from Patently Ltd., based in the United Kingdom. Its focus is on providing information to the legal intellectual property community. A major selling point is the use of a proprietary method of grouping patent families, referred to as Genetic® families, which uses analysis of the technical subject matter as well as priority relationships. Use cases for the system include patent and portfolio valuation and patent acquisition and licencing decisions.

Encryption and secure systems Since the last edition of this book, many public internet websites have adopted the use of HTTPS (Hypertext Transfer Protocol Secure) for more secure access and communication between websites. This includes free-of-charge search sites such as have been discussed in this Chapter. This migration is particularly helpful for the patent searcher, where issues of confidentiality of data can have a bearing on whether it is considered appropriate to use databases loaded on public websites, for commercially confidential searches. There are two aspects to data security which the patent searcher needs to consider: 1. Searcher-to-server communications – that is, can my search strategy be read by a third party, who might then be able to infer my research interests?, or 2. Server-to-searcher communications – that is, can the information which I wish to access be read by other users who have no right to access it? The second aspect is particularly important when considering paperless-office developments at various patent offices. If such processes are to work at all, it

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is important that the appointed representative of an inventor (such as a patent agent or attorney) is able to monitor the stages of progress of an application before it is laid open to public inspection. The examination process might be fatally compromised if a third party was able to gain access to a priority document. One business case where data encryption is a vital component is for communications between patent applicants, their professional representatives and the national/regional patent offices which are handling the application process. In order to strike the right balance between public access to material which has been deliberately released for open use, and confidential communications pertaining to pending cases, many of the major patent offices have implemented two versions of their national registers. A register exists principally to allow monitoring of the progress of an application through all its stages up until grant and beyond – that is, the classic source of definitive legal status information. Major offices also integrate a means of submitting a patent application electronically and tracking it through the confidential early stages of prosecution. The EPO’s Register system and the USPTO’s PAIR system are discussed in chapter 16 in the context of access to legal status information. Both exist in two forms, a public and private system. The public versions enable any third party to view, in electronic form, the same documents which have hitherto been made available in paper, such as the early unexamined publication and the contents of the file wrapper. These records are unencrypted and only made available after the publication of the unexamined case (or, in the case of old Act US documents, after the grant). The private versions of these two systems extend the availability of such information back to the first submissions. This enables a restricted user base to submit official forms and documents, pay fees and respond to correspondence from the patent office in a fully electronic environment. One advantage for the patent agent is that there are fewer delays and uncertainties; they can immediately check that a fee has been received, or that their letter arrived within the deadline for action required by the patent office. Once the preserve of the biggest offices, the installation of e-filing systems has accelerated dramatically in the last decade. Part of the impetus for this development was the 2002 modification by WIPO of the Administrative Instructions under the PCT, to establish the legal framework and technical standards for electronic filing and processing of PCT applications. The original epoline system for e-filing at the EPO was expanded to enable PCT electronic filing for European applicants who wished to use the EPO as receiving Office. The corresponding PCT software, called PCT-SAFE (Secure Applications Filed Electronically), was launched for all users in February 2004. The established technical standards ensured that the EPO and PCT filing software was compatible. Subsequently, WIPO has developed the ePCT-Filing software to replace PCT-SAFE. Filing

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using ePCT software is now accepted by over 60 Receiving Offices (that is, nearly half of the possible designated states under the PCT). Other secure or encrypted systems have also developed to support more widespread use of paperless systems for application, search and examination; these include the WIPO Digital Access Service (DAS) which enables participating patent offices to exchange priority documents securely, and WIPO Centralized Access to Search and Examination (CASE), which enables offices to share search reports on applications which have been lodged in multiple countries, and office correspondence created during substantive examination. WIPO has also created the IPAS (Industrial Property Automation System) which helps patent offices to digitise their internal work practices. All of these systems facilitate the use of work-sharing mechanisms which can lead to accelerated and more efficient examination, such as the Patent Prosecution Highway (PPH). The IP5 project to create the One Portal Dossier (OPD), or “Global Dossier”, is also being linked to WIPO-CASE, and the combined public elements of the information are being made available through PatentScope. More of the national patent offices which act as PCT International Search Authorities are being encouraged to join the WIPO-CASE system, to create a more comprehensive network for retrieval of detailed prosecution of worldwide patent applications24.

References 1 Hahnemann, S. (1995). Patent CD-ROMs: five years of experience and 2500 in jukeboxes. World Patent Information, 17(2), 106–111. 2 White, M.S. (1986). Impact of optical disc technologies on the storage and distribution of patent and trademark information. World Patent Information 8(3), 177–181. 3 Lambert, N. (2000). Orbit and Questel-Orbit; farewell and hail. Searcher 8(2), 73–76. 4 Kaback, S. (1983). Online patent searching: the realities. Online 7(4), 22–31. 5 Simmons, E.S (2001). In Armstrong, C.J.; Large, A. Manual of Online Search Strategies, volume II: Business, Law, News and Patents. (ed. Chapter 3, pp.23–140). Aldershot: Gower Press. ISBN 0-566-08304-3. 6 EPO (2003). Open Patent Services – or how raw data can be served pre-cooked. EPIDOS News No.3/2003. pp.1–2. 7 O’Hara, M.P.; Pagis, C. (1991). The PHARMSEARCH database. J. Chem. Inf. Comput. Sci. 31(1), 59–63. 8 Chemical Abstracts Service (1996). Patent information from CAS: coverage and content. Columbus, OH: American Chemical Society. 9 Fisanick, W. (1987). Storage and retrieval of generic chemical structure representations. US 4642762-A, (granted 10th February 1987). US application number 06/614219, filed 25th May 1984. 10 Benichou, P., Klimczak, C., Borne, P. (1997). Handling genericity in chemical structures using the Markush DARC software. J. Chem. Inf. Comput. Sci. 37(1), 43–53.

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11 ChemAxon (2020.04.02). Markush tools. Retrieved from www.chemaxon.com/products/mar kush-tools. 12 Downs, G.M., Holliday, J.D., Willett P. (2017). Representation and searching of chemical structure information in patents. In M. Lupu, K. Mayer, N. Kando, A. Trippe (eds.) Current Challenges in Patent Information Retrieval (2nd ed., Chapter 15, pp.391–408). Berlin: Springer-Verlag. 13 MAREC Statistics (2020.04.02). Information Retrieval Facility. Retrieved from www.ir-facility. org/prototypes/marec/statistics. 14 Tait, J., Lupu, M., Graf, E., van Rijsbergen, K. et al. (2009). Patent search: an important new test bed for IR. In Aly, R., Hanff, C. et al. (eds.) Proc. 9th Dutch-Belgian Information Retrieval Workshop (DIR 2009), Enschede, Netherlands, 2nd – 3rd February 2009 (ed. pp. 56–63). Enschede: University of Twente, Centre for Telematics and Information Technology (CTIT). 15 Lagemaat, W. (2020.04.02). Dodgy data: national patent records (first published 2018.04.17). World Intellectual Property Review. Retrieved from www.worldipreview.com/contributed-article /dodgy-data-national-patent-records. 16 WIPO (2002). Recommended minimum contents for intellectual property offices’ websites. WIPO Handbook on Intellectual Property Documentation and Information, Part 6 (Access to Industrial Property Information), p.6.1.1–6.1.3. Geneva: WIPO. 17 IP Australia (2019). AusPat User Guide; searching Australian patents. Canberra: IP Australia. Retrieved from http://pericles.ipaustralia.gov.au/ols/auspat/auspat_userguide.pdf 18 Shalaby, W., Zadrozny, W. (2019). Patent retrieval: a literature review. Knowledge and Information Systems 61, 631–660. 19 Salampasis, M., Hanbury, A. (2014). PerFedPat: an integrated federated system for patent search. World Patent Information 38, 4–11. 20 Salampasis, M. (2017). Federated Patent Search. In M. Lupu, K. Mayer, N. Kando, A. Trippe (eds.) Current Challenges in Patent Information Retrieval (2nd ed., Chapter 8, pp.213–240). Berlin: Springer-Verlag. 21 Data coverage (2020.04.09). Google Patents. Retrieved from https://patents.google.com (homepage link → “Around the World”). 22 Editorial (2006). Patently transparent. Nature Biotechnology 24, 474. 23 Lambert, N. (2004). Internet patent information in the 21st century: a comparison of Delphion, Micropatent, and QPAT. In Proc. International Chemical Information Conference & Exhibition, Annecy, France, 17–20 October, 2004. 24 European Patent Office (2018). Participation in WIPO-CASE in support of Global Dossier. Document PCT/MIA/25/8 (2018.01.26). Meeting of International Authorities under the Patent Cooperation Treaty. Geneva: WIPO. Retrieved from www.wipo.int/edocs/mdocs/pct/en/pct_ mia_25/pct_mia_25_8.pdf.

Chapter 12 The non-patent literature for the patent searcher Legal background to non-patent literature use At first sight, it may not seem appropriate for a book about “information sources in patents” to include a chapter on the non-patent literature. However, we need to distinguish between “information sources which a patent searcher may need to use” and “the information content of patents”. The objective of this book is primarily to describe the various databases and other sources whose content is based exclusively or primarily around the patent literature. Patent databases differ sufficiently from one another (and from other scientific and technical databases) in terms of their depth of content, range of years and available search tools, to fill a book on their own. Other books in this series are devoted to “information sources in . . .” and similarly seek to describe the literature of a technical field or defined subject domain1. Specialist searchers in these fields may find all that they need in such a focussed review. By contrast, anyone who searches in patents for any length of time will quickly be reminded that the definition of “novelty” in relation to the state-ofthe-art is enshrined in the various legal texts which form the background of their work, and that this definition is no respecter of the physical form of the disclosure. For example, the current text of the European Patent Convention reads (Art. 54(2)): The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

This means, in effect, that sitting down to perform a patentability search requires skills which extend beyond the specialist databases in patents, and include many different forms of literature, with varying degrees of bibliographic control, uniformity, archiving quality, indexing and accessibility. For convenience, any disclosure which falls within the definition above but is not contained within a patent document (unexamined application or granted patent) is referred to here as the “non-patent literature” (or NPL). Users of patent information may consider that, a priori, the non-patent literature would not be relevant at all when considering a freedom-to-operate search (see Chapter 14) but is most definitely to be included in questions of patentability, opposition or validity. However, on considering the question more https://doi.org/10.1515/9783110552263-012

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carefully, it can be seen that NPL search skills may come into play in other search scenarios. For example, if a state of the art survey reveals potentially dominating patents in the technical field, the search request may morph into a preliminary review of grounds for opposition or invalidity proceedings, in which NPL will almost certainly play a part. Even some FTO searches may include a request to review the NPL in the subject field, perhaps as an exercise in determining the business, market or financial environment in a new geographic area, or in the hope of detecting early signs of recently filed patent applications which have not yet been published. The primary concern of this Chapter is to highlight the need for consulting the NPL during patentability searches. There is evidence that, in recent years, the patent offices themselves are beginning to pay increased attention to this literature, when searching for novelty-destroying disclosures. This should not be surprising in the light of well-established folklore and some systematic research, both of which consistently indicate that a substantial proportion of the technical disclosures from patents are not repeated in journals, or vice versa (see for example references2, 3 or 4). Concern has also been expressed in some quarters about the competence of patent office examiners to locate non-patent literature5. It has been recognised for many years that the NPL should form part of a comprehensive patentability search. After the Patent Co-operation Treaty was signed in 1970, the subsequent implementing Regulations included a statement of the minimum necessary documentation set which would be regarded as a suitable basis for a global search. The text in force since the beginning of PCT operations up to date6 reads: The documentation referred to in Article 15(4) (“minimum documentation”) shall consist of: (i) the “national patent documents” as specified in paragraph (c), (ii) the published international (PCT) applications, the published regional applications for patents and inventors’ certificates, and the published regional patents and inventors’ certificates, (iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed. [my emphasis].

This requirement at paragraph (iii) initially led to the WIPO producing a socalled Journal Of Patent-Associated Literature (JOPAL), first on paper and subsequently as an electronic database. Bibliographic details from individual articles in the agreed list of NPL journals (as defined in Rule 34.1(b)) were selected by co-operating patent offices, classified and added to the database, thus forming a more focussed collection of information than could be obtained by searching existing commercial databases. There were no

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abstracts or full texts. By the year 2000, many of the participating offices no longer had the resources to undertake what was, in effect, the creation of an entirely new database of NPL which reproduced a subset of what was available in other places. By 2002, the EPO had started to integrate its own NPL database with the free-of-charge Espacenet service, providing an additional alternative approach to the NPL in the form of the so-called “XP” references. Even in 2000, the WIPO survey indicated that only about half of the offices contributing to the development of JOPAL used the source themselves, preferring either to use existing NPL databases or not having a requirement to conduct NPL searches at all7, 8. The JOPAL project was discontinued from March 20089. Despite this, the latest version of the approved NPL list can be found at the WIPO website10 and now includes approximately 250 sources of NPL. Many of the most recent additions are significant Asian-language journals and a number documenting traditional knowledge, including some internet-only sources. In Chapter 11, the Chemical Abstracts file of the ACS was referred to, and this is one of very few commercial information sources which seek to integrate a substantial portion of the patent literature plus additional non-patent records into the same indexing and database structure. By contrast, the majority of NPL sources fall into one of two classes. They are either (a) dedicated to a specific subject domain and contain little or only a small percentage of patent literature, or (b) collections of material from a common source (e.g. university document repositories) or with a defined physical form (e.g. theses, conference proceedings, books) but across all subject fields. An example of the first type is the INSPEC database of engineering and physics literature, whereas the second type is the NTIS database of US government reports, containing Federal research from medicine, agriculture, defence, environmental protection, engineering, and so on. For a review of the type (a) sources, see Adams11. In recent years, the situation has become yet more complicated as “new” information sources such as the internet and other informal disclosures have gained in prominence. Such literature is very poorly documented, archived or disseminated, yet legally it is part of the state-of-the-art on an equal footing with established literature. Conversely, some information (such as traditional knowledge) may be very old in its origin but poorly understood outside of the immediate locality of its source. Professional searchers and lawyers alike have expressed concerns about the practical ability to retrieve and cite such information in the context of patent examination or opposition (see for example references12, 13, 14). The same comments apply equally in newer subject fields

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such as software and business methods. Inventions in these areas have only recently become widely patentable in some jurisdictions, meaning that not only is there a dearth of well-archived documentation on technical progress, but also the patent examiners are relatively unfamiliar with how to locate it. Users of the patent literature will also perhaps be familiar with some well-known cases in which relevant prior art was located in a variety of extraordinary sources, including cartoons and fictional literature15, 16. As a result of this diversity, a patent searcher employed by (for example) an electronics company will need to gain familiarity with one group of NPL sources, whilst their counterpart in a chemical company will need to know and use an entirely different set of tools. To place on record a comprehensive survey of the non-patent literature sources for all subject fields is beyond the scope of this, or any, book. Such a survey would in effect have to be a global directory of scientific and technical knowledge since the beginning of human history; documenting the content of the entire internet would merely be a small part. However, there are certain well-established starting points which can be used to improve search skills in an unfamiliar area. Before discussing some of the aspects of the “conventional” NPL, the next two sections will review two distinct areas in which bibliographic control has developed in some entirely new directions; these are open-access journals and internet disclosures.

Open Access journals The field of open-access journals has developed very rapidly in parallel with the availability of the public internet, and in some ways could never have happened without the widespread use of electronic information transmission. Readers are recommended to consult Oppenheim’s review for background history on the field17. Oppenheim refers to a number of initiatives, some by commercial publishers (e.g. Springer’s OpenChoice, the Taylor & Francis iOpenAccess and Blackwell’s Online Open) and some by non-profit learned bodies, charitable trusts or public bodies (e.g. Public Library of Science (PLoS), the Wellcome Trust and Research Councils UK). A useful distinction is between so-called Gold Open Access and Green Open access. In the case of the Gold option, the costs of publishing are covered by authors or their submitting institutions, instead of by journal subscribers as under the traditional model. The document format may be very similar to existing commercial journals, with a reasonable level of bibliographic control (e.g. including ISSN identification and full archiving). The Gold-type model is typically offered as electronic or paper-based open access journals or as so-called hybrid

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journals, which are primarily subscription-based journals but where authors may have the option to pay for their article to be available on open access. There has been substantial growth in this sector; a survey by the Association of Learned and Professional Society Publishers showed nearly a fourfold increase, from just under 200 titles to nearly 800, in the period between 2005–2008. One good reference source to identify open access journals is the web-based Directory of Open Access Journals (www.doaj.org), which currently contains records for over 14,000 journals. For a proportion of these (approximately 80% at present), DOAJ also provides a search engine operating at the article level. It can also be used as a classified listing, to browse for open access journals in a specific technical field. By contrast, the Green model (also known as self-archiving) is a much looser model, with corresponding difficulty in determining how to include material in a patentability search. Typically, authors deposit peer-reviewed manuscripts of their articles in institutional repositories (e.g. open archives held by a university) rather than publishing through established journal sources. The document format may vary hugely, from simply abstracts to complete texts, and may relate to formal articles, theses, conference papers, and so on. The content is designed to be available without charge, sometimes after an embargo period. Green open access is typically offered by academic institutions, publicly-funded government bodies and some private research institutes. At least two well-established directories exist, the Directory of Open Access Repositories (OpenDOAR) (www.opendoar.org, now administered by JISC in the United Kingdom, www.jisc.ac.uk) and the Registry of Open Access Repositories (ROAR) (http://roar.eprints.org, hosted by the University of Southampton, UK). Unlike DOAJ, these services are designed principally to help the user to locate a repository, not to search its content. An additional useful feature in ROAR is the provision of statistics showing the rate and cumulated number of deposits; the sad truth is that many self-archiving initiatives may start in a burst of enthusiasm which is not maintained, so the ROAR statistics may help searchers to avoid moribund services. Nonetheless, there may be good reason (such as a unique subject collection) to pursue even the poorly updated sources in the hope of locating highly relevant prior art.

Internet disclosures With the increase in availability of the internet, it is inevitable that its content becomes part of the general background state-of-the-art. This is distinct from the use of the internet as a dissemination medium for established categories of literature, including all the various national patent office websites. One of the

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most difficult issues hindering the effective use of the internet as a routine search tool is that of establishing an unambiguous date of disclosure in respect of a web page, blog or wiki entry, discussion list posting and the like. The paper by Archontopoulos18 touched on the policy viewpoint of the European Patent Office as of 2004, whilst van Staveren19, van Wenzenbeek20 and Müller21 have added to the debate and contrasted the views of different jurisdictions. The debate still persists, both about the significance of internet sources for novel disclosures22 and how to discover them23. Essentially, a key problem with electronic-only sources arises because there is little mechanism for establishing that a particular disclosure has actually been first made on a specific date, nor that the material has been consistently available to the public between that date and the date on which it is retrieved by a statutory search. In the early years of public internet, there was equal concern about the security of the internet. In particular, it was not known whether information about the subject matter being searched could be securely transmitted, or whether it was being stored in the form of log files or similar records at the server end. Given this doubt, a searcher could not be sure that the subject matter of a pending or prospective patent application would not inadvertently become public knowledge. The USPTO went as far as to issue a policy on internet usage by their examiners24 which explicitly stated that: Where the Internet is used to search and retrieve prior-art information, PTO employees must restrict their search operations to determining the general state of the art. Internet prior art search strategies that could disclose sensitive information such as the elements of an invention are NOT permitted. [original emphasis]

Even if the issues of the security and volatility of the internet are solved, there still remains the issue of how to actually cite an internet-based source in a search report, Information Disclosure Statement or the like. Various standards25, 26, 27 have been issued which attempt to address the process of systematic citation for internet disclosures, and typically they will require the inclusion of a statement of the date on which the source was accessed, as well as any dates of publication which may be explicitly stated or inferred from the metadata on the web pages.

Reference guides The traditional approach to maintaining an awareness of the corpus of literature in a given technical field is by using human-collated reference guides. These are naturally very labour-intensive to prepare and have largely fallen out of use in recent years. However, one guide which has continued is Walford’s

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Guide to Reference Material, first published in 1959. Several volumes of a new edition have been published by CILIP, the UK professional body for librarians and information professionals. The most helpful one for the patent searcher is Volume 1, covering science, technology and medicine28. An older, but still useful, guide is the three-part work by Armstrong and Large, especially volume 129. A number of subject-specific guides still exist in print, but unfortunately many of these are now rather out of date1, 30, 31, 32 and their usefulness is primarily as a means to understand the background to the development of some of the longer-established commercial databases in each technical field. Some of the earlier volumes from the same series as this present one may also be helpful to establish a general picture of the literature from a given field33, 34. Additional guides may be dedicated to one form of literature, such as journals. They are designed principally to establish library holdings, but can also offer useful information such as year of first publication or changes of name, similar to source indexes. Good examples include the Union List of Serials in Libraries of the United States and Canada, which covered the journal literature until 194935 and its successor publication, New Serial Titles36, produced by the US Library of Congress until 1999. Similar works published in the United Kingdom include the World List of Scientific Periodicals mainly covering 1900–196037, which was incorporated in the British Union-Catalogue of Periodicals (BUCOP) for later years38.

Source indexes Users of established abstracting and indexing databases should expect to be able to identify at least some details of the primary literature which is selected for inclusion by the database producer. Ideally, in selecting a secondary source, the searcher needs to know, for each primary source, sufficient publisher details (such as an ISSN or journal coden) to ensure unambiguous identification of the publication, the start date of coverage and the end date (if any). It is additionally helpful if the producer records the name(s) of any successor publication(s) (which might help to explain why the coverage of a particular journal seems to stop abruptly), the degree of coverage (cover-to-cover or selected articles only) and preferably also some details on how to obtain original texts corresponding to the abstract. Sadly, few of the database producers maintain such a systematic “corporate memory”. However, for the patent searcher engaged in litigation, who may be called upon to give an account of why a specific piece of prior art was not located, such information may be vital.

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The classic tool of its kind in this area is the Chemical Abstracts Service Source Index (CASSI). Similar tools exist which document the coverage of major databases such as MedLine, Embase, Engineering Index (Ei Compendex), INSPEC, CAB Abstracts, Food Science and Technology Abstracts (FSTA) or AGRICOLA. It is much more difficult to obtain reliable and up-to-date source lists for more recent or dynamic search systems such as the Scopus portal from Elsevier or Google Scholar, although there are signs of improvement in this regard. From the searcher’s point of view, having available an explicit coverage record can be helpful in determining how much unique material may be accessible from each places, and how much is simply duplicating other searches. The lack of adequate documentation on content can deter the adoption of internet gateways to the non-patent literature as standard search methods; few searchers in industry can afford the luxury of spending time on multiple overlapping searches.

Special library sources One of the most cost-effective methods of screening the literature is to identify a special collection dedicated to the subject field in mind; this can remove the need to run the same search across many different sources. Many institutional libraries such as universities and colleges receive bequests of books or papers from prominent individuals, which can be a good starting point. Similarly, national trade or professional organisations and learned societies often maintain reference collections in their area of speciality. One useful global source for identifying special collections was the UNESCO Libraries Portal, a free-of-charge directory39 with content identifying libraries in all UNESCO member countries, classified into groups such as academic and research, public, national, government etc. Using a library directory is a different approach to the “global union catalogue”, perhaps best exemplified by WorldCat.org, where the actual library holdings are available for searching; the UNESCO portal and others will only provide contact details for the location, perhaps with some indication of the breadth of collection and access conditions. A surprising number of private libraries allow external users to access their material on request, even if only for personal reference rather than loan. At the time of writing, this portal seems to have been discontinued, which would be a great loss to international resource awareness if it proves to be permanent. The old home page can be seen at Figure 12.1. The UNESCO directory was helpful in providing details of national libraries, such as the Library of Congress in the United States, The British Library in the United Kingdom and the Bibliothèque national de France (BNF), or to national government websites. These in turn often have links to other specialist libraries

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Figure 12.1: The UNESCO Libraries Portal.

within their own country. A printed directory edited by Dale and Wilson40 has gone through many editions and provides useful coverage of the United Kingdom, including information on holdings, special collections and access for non-members. Sometimes, an information specialist may be faced by the reverse problem of database coverage, namely, once a journal of interest is identified, how to identify which secondary services include it in their coverage? For this, few tools exceed the scope of Ulrich’s Periodicals Directory, which has been in print since 1932 and now appears as a subscriber-only internet version41. The web edition covers over 300,000 publications, including open access journals, popular magazines, newsletters, newspapers, etc. As well as details of the secondary services which index/abstract each periodical, the content is sorted according to subject headings which also allow it to be used as a tool to identify other publications in the same technical field.

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Subject guides As indicated above, the preparation of a reviewed guide to the literature is a labour-intensive task. Although the internet has brought about a vastly improved access method to information, no search engine on its own can make an assessment concerning the quality of information which it retrieves; this is still the work of the searcher. In the absence of prior experience, one of the best ways of improving accuracy and veracity of retrieval is by using only trusted and recommended sources. There are many examples of such attempts to define the “best-of-the-web”; some even use the name explicitly (see, for example, www.botw.org) although some uses of the term indicate a greater concern with promoting website rankings in search engine result listings rather than establishing a genuine measure of information quality. As the internet has become a much more accepted tool for academic research, university librarians and information specialists have often cooperated in the process of preparing subject lists of useful websites for their students. In the United Kingdom, this process was consolidated into the Intute system (www.intute.ac.uk). Intute grew out of a number of separate portals, called Resource Guides, which were prepared for UK academic institutions by staff of JISC (previously the Joint Information Systems Committee, which runs the inter-institutional academic data network) as part of the Resource Discovery Network (RDN): these included BIOME (health and life sciences), EEVL (engineering, maths and computing) and PSIGate (physical sciences). The consolidated system provided a comprehensive search engine to locating websites dealing with a wide range of academic subjects, together with comments from subject specialists. The development of Intute is described by Hiom42 and Williams43. Sadly, the project was the victim of lack of funding and closed in 201144. Somewhat distinct to guides to websites, there are an increasing number of guides to electronic-only resources such as open access journals. The OpenDOAR and ROAR directories have been mentioned above. In addition, a number of search platforms have been created to try to promote access to scientific material, such as: – Scientific Commons from the University of St. Gallen in Switzerland (www. ScientificCommons.org – closed 2013, but a record of the project is at https://alexandria.unisg.ch/id/project/31629), – the OAIster (pronounced “oyster”) Open Archives Initiative (www.oclc.org/en/ oaister.html), which has now been largely integrated with the OCLC WorldCat system but searchable separately through https://oaister.worldcat.org, – the Open Science Directory prepared by EBSCO in cooperation with the Hasselt University Library in Belgium (www.opensciencedirectory.net), and

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– WorldWideScience, supported by the US Department of Energy’s Office of Scientific and Technical Information (OSTI) and the Worldwide Science Alliance (www.WorldWideScience.org). The last-named was initially a “super-portal” linking to many national science publishers’ websites, some of which provide document search facilities, but latterly includes direct search of a number of major national libraries and academic repositories.

Reviews Unlike patents, the primary journal literature can be re-organised into a range of new publications, sometimes termed the secondary literature and comprising simple bibliographies, critical reviews, or new comment on established work (such as the so-called Cochrane Reviews of clinical trials literature). These reviews can be important to help in establishing accepted teaching in a technical field, which may be useful material when arguing obviousness or “teaching away” questions in patent litigation. In an ideal situation, they can encapsulate what the legally-defined “person skilled in the art” would be expected to know. Locating review series may be a simple matter of identifying by title (e.g. “Annual Reviews in . . .”, “Advances in . . .”) or by using a Document Type field indicator in some abstracting databases. Where these documents exist, it may be possible to adopt a search strategy which recalls a large proportion of the older literature via reviews, and only resorts to primary literature searching to obtain publications for the most recent period.

Tertiary literature The next stage of literature consolidation after the review has traditionally been when the new information from a primary journal becomes accepted into the main body of theoretical or practical literature underpinning a discipline. This may happen when it becomes a part of the school or university curriculum, or is incorporated into recognised reference works or encyclopaedias. Since these are often limited to a single discipline, the reader is referred to guides such as those mentioned above for help in locating suitable works. Chemistry is particularly rich in such information or data compilations, which will help to illustrate the approach. A novelty search in organic or inorganic chemistry will often benefit from access to the Beilstein or Gmelin Handbooks (or their

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electronic equivalents, now integrated into the Reaxys databases marketed by Elsevier), which are organised according to chemical structure and enable a single point of entry to information published across many years. Collected volumes such as Houben-Weyl or Theilheimer can provide useful background to synthetic methods, and again may be indexed by the type of functional group involved in a reaction. Both these latter tools plus specialist encyclopaedias such as KirkOthmer may be of considerable help in establishing the background state of the art and giving patent attorneys an insight into possible inventive step objections which may arise. The particular strength of these types of source for the searcher is in ensuring that the older literature is not overlooked. Additional tertiary literature sources include general technology volumes such as specialist dictionaries, data compendia, statistical tables (for example, of materials engineering properties) or even searchable genomics or microbiological depositaries. Reference guides such as Walford may also help to identify tertiary literature and also many of the reviews, special collections or other NPL sources in the field – see Table 12.1 for some examples of the subject hierarchies which it uses. Table 12.1: Example hierarchies from The New Walford, Volume 1. Level 

Discipline

Science

Medicine

Medicine

Technology

Level 

Subdiscipline

Biological sciences

Health

Clinical Medicine

Engineering

Level 

Subject Marine and specialism Freshwater Biology

Environmental Oncology & Occupational Health

Civil Engineering

Level 

Type of source

Research centres and institutes

Handbooks and manuals

Associations and societies

Laws, standards, codes

Level 

Individual entry

National Marine Biological Library (website)

Patty’s Industrial Hygiene (book)

European Organisation for Research and Treatment of Cancer (website)

International Handbook of Earthquake Engineering (book)

Even sources such as the Encyclopaedia Britannica or Wikipedia should not be ignored, particularly where they have gone through several editions, each of which serves to capture a snapshot of the “common knowledge” prevailing at the time.

Other forms of literature

469

The Knovel organisation (www.knovel.com, now also part of the Elsevier organisation) has made a business of digitizing some major tertiary literature and data compendia such as the International Critical Tables, and databases from major publishers and learned societies such as Blackwell, Elsevier, John Wiley, Oxford University Press and Springer. The searchability varies according the amount of data which the publishers have allowed, under copyright restrictions, but at its widest includes full texts, table contents and graph captions. In the case of data compilations, the search engine allows so-called “smart unit” range searching for physical and chemical properties, something which is virtually impossible with traditional paper indexes. Similarly, Google is increasingly involved in digitisation of (mainly) out of copyright non-fiction material which may contribute to the fully-searchable state-of-the-art in due time; both Google Books and Google Scholar may be of help in retrieving this literature.

Other forms of literature The final part of this chapter will briefly review a few additional physical formats which may need to be considered when concluding a search of the non-patent literature. The level of availability is very inconsistent at the global level, and no doubt new tools are developing all the time to improve retrieval. However, they are typically addressed to a local audience and not easy to identify or use for searchers outside the geographical or technical environment. Consequently, the following sections can only indicate a very few of the trends in this area.

Grey literature The term “grey literature” has a number of different definitions, but for the purposes of this book it will be used to mean publications (in physical or electronic form) which are characterised by poor(er) bibliographic control and/or archiving. This may include ephemeral literature (e.g. pamphlets, technical support documentation, data sheets) which are often without a clear publication date or authorship, and reports which may be better identified in terms of source, but still appear in regular or irregular publication cycles or as single documents. These may not be submitted for normal bibliographic entry into established database or have any added-value indexing. Grey literature may originate from official sources such as government agencies or publicly-funded research centres, but also commonly emerge from the private sector or academia.

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Chapter 12 The non-patent literature for the patent searcher

Some forms of grey literature may have been recognised decades ago and formed the content of specialist databases, but increasingly it is becoming more economical for organisations simply to “publish” their reports by loading the texts onto their website, which renders its retrieval entirely subject to the vagaries of generalist search engines such as Google and Yahoo! and their indexing and retrieval policies. A few examples remain where more traditional bibliographic control has been exerted. These include British Research and Development Reports from the 1960s, which by a process of merger was cumulated into the SIGLE (System for Information on Grey Literature in Europe) during the 1980s, then into the French-sponsored website of the same name and finally cumulated as the OpenSIGLE EU-wide system located at www.opengrey. eu. In the United States, the Bibliography of Scientific and Industrial Reports produced from 1946 onwards became, in turn, the bibliography of Government Reports Announcements and eventually the indexing and abstracting service produced on paper as Government Reports Announcements & Index (GRA&I), known universally in electronic form as the NTIS (National Technical Information Service) database, one of the earliest files on the Dialog system. In both SIGLE and NTIS, running report series are allocated specific accession numbers for document delivery and additional meta-data which improve the chances of effective recall during search.

Theses Perhaps one of the largest untapped resources for scientific and technical research is in the form of higher degree theses and dissertations. Despite their potential, there have been very few moves to improve retrieval systematically for these forms of document. Even if the entire backfile could be digitised and made searchable full-text, the lack of effective indexing to bring this corpus into line with conventional journal literature would continue to hinder their use. There has been little success in breaking down geographic or language barriers in order to establish a world-wide retrieval capability. A very few sources succeed in merging a sub-set of theses with other literature (such as coverage by Chemical Abstracts, supplied via Dissertation Abstracts), but mostly they are maintained as a discrete national or institutional database. The United States is relatively well-served by the Dissertation Abstracts file, but few other countries have anything approaching a national collection. Dissertation Abstracts in its electronic form also includes selected British and European universities for recent years. In the United Kingdom, the Aslib Index to Theses existed from around 1950, but has now been discontinued on paper

Other forms of literature

471

and replaced by the Index to Theses (www.theses.com, marketed by Proquest as Dissertations & Theses Global ™). This offers mostly bibliographic (title, abstract, author) searching only, with limited full text searching, across some 500,000 records from UK and Irish universities. Another sub-set appeared in the form of British Reports, Translations & Theses which has now been cumulated into SIGLE. Further attempts to control the UK area include the EThOS (Electronic Theses Online System) project which involves 11 UK universities, plus the British Library and JISC (www.ethos.ac.uk, now integrated with the main British Library website). A more international attempt has been made by the Networked Digital Library of Theses and Dissertations (www.ndltd.org), which covers over 80 sources (individual establishments and some consortia) from some 16 countries, although coverage is overwhelmingly from the United States (60+%) or Canada (approx. 10%). Pan-European coverage has been started under the DART-Europe E-theses portal (www.dart-europe.eu). As an example of a source outside North America, the Agence Bibliographique de l’Enseignement Supérieur (ABES) SUDOC catalogue contains a French national thesis collection (https://sudoc.abes.fr). Unfortunately, it is not clear how the coverage of this overlaps – if at all – with the separate TEL (Thèses-EN-Ligne) system (http://tel.archives-ouvertes.fr) which claims to archive some 135 French universities, with over 12,000 full texts and is administered by CCSD (Centre pour la Communication Scientifique Directe) (http://ccsd.cnrs.fr). The persistent problem of lack of coverage information can make effective searching for theses frustrating, if not impossible.

Traditional Knowledge (TK) In recent years, the pharmaceutical industry in particular has grown increasingly interested in developing new biologically-active materials from plant genetic material or natural product extracts. There has been much debate about the equity of this process, amid allegations of “bio-piracy”. Some patent applications or granted patents have been revoked or amended after it came to light that the claimed effects were well-known before the patent filing, but poorly documented. The issue surrounding such traditional knowledge is that it is, by definition, well-established but only usually amongst a small local community, with no formal record of discovery or proof of prior use. In order to prevent loss of this form of folk or traditional knowledge, some attempts have been made to capture information about indigenous skills in conventional databases and make them available for patent offices during examination, or for public use.

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Chapter 12 The non-patent literature for the patent searcher

The WIPO established its Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) in 2000, and mandated it to take the lead in this field from the point of view of patenting. The issues being considered on TK include the development of guidelines and recommendations on recognition of TK in patent examination45, disclosure mechanisms for genetic resources used in inventions, the creation of an inventory of TK-related publications for reference as prior art and the support for development of national TK databases. The IGC has also contributed to an amendment to the PCT Minimum Documentation to take account of TK sources46. Many of the issues in relation to TK have points in common with the use of the internet as a source of prior art, including that of establishing an unambiguous publication date, the language and medium of publication and its level of detail (“enabling disclosure”) and actual availability to the public. In terms of searchable TK databases, there have been developments in a number of countries, including India, with its People’s Biodiversity Registers (PBR), Ayurvedic Materia Medica and the Traditional Knowledge Digital Library (TKDL) developed by the Indian Council of Scientific and Industrial Research (CSIR) – this latter was made available to the EPO from early 2009 to assist in their statutory searches, but is not publicly available (www.tkdl.res.in). In China, the Beijing East Linden Company has developed a TCM (Traditional Chinese Medicine) Database which includes patent coverage and extensive botanical indexing. In the Americas, there have been attempts in the US in the form of the Traditional Ecological Knowledge – Prior Art Database (TEK*PAD), although this is now listed as a “past project” and seems unlikely to be developed further47. In Venezuela, an Amazonian traditional medicines database, Biozulua, has been created48. The study by Alexander49 also mentions work under way in Peru and Panama. More recently, WIPO has made available a listing of known databases and registries in the field50.

Conference literature and technical standards Although both of these forms of literature are relatively well controlled, in terms of their bibliographic quality and origins, they deserve to be highlighted as of interest to the patent searcher for different reasons. It is not unknown for an oral conference presentation to accidentally or deliberately form the earliest disclosure of new scientific advances. Major or wellestablished conferences which previously distributed entire proceedings in book form (sometimes months or years after the event) are increasingly only offering collected abstracts of accepted papers, with little indication of the

Other forms of literature

473

exact content which was presented at the meeting. Conventional database producers have made various attempts to capture some information about conferences, but the level of detail can vary enormously, from a single record for the entire conference, perhaps with a table of contents, to separate records for each paper, including abstracts prepared from notes taken by attendees at the meeting. With the advent of camera phones and similar equipment, presenters need to take account of the fact that attendees can now capture evidence of disclosure beyond contemporaneous notes. There is some anecdotal evidence that information has been effectively stolen during verbal presentation – indeed, the American Chemical Society has issued a policy statement which includes the paragraph: It is the policy of ACS that photographing of slides and/or taping of presentations at ACS national meetings is prohibited unless permission is obtained from the individual presenters, the division program chair and the ACS national meetings staff.

Other professional bodies may have similar approaches, particularly where meeting attendance is limited to a closed group of members. This can create considerable problems in establishing exactly what was disclosed, as well as the date of disclosure of the relevant portion of the material (e.g. did it feature in the verbal presentation, the later printed proceedings, both or neither?). The content of technical standards, particularly in the electronics field, tends to be influenced in confidential discussions between the major industrial players. It is tempting for one company, with a pending patent application in a technical field, to seek to influence a draft standard to the point where it will fall within the scope of their application, if granted. The patent holder would then be in a position to ambush competing companies after the promulgation of the standard, and require them to pay royalties in order to operate within the standard (and the claims of the patent). Since this is clearly an undesirable outcome, WIPO has been working alongside national standard-setting bodies to encourage the use of patent pools or similar methods for respecting IP rights within the framework of standardisation51. Nonetheless, from the point of view of the patent searcher, it may be beneficial to maintain a watching service to include early draft standards, which may be indicative of technical developments not yet published in patent applications, and sometimes capable of being prior art to cite against them. There are signs that commercial database producers (including Questel) are beginning to add tags to certain patent bibliographic records when an entry is identified as being a Standard-Essential Patent (SEP), but this process depends very much upon the cooperation of the standard-setting bodies around the world.

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Chapter 12 The non-patent literature for the patent searcher

Technical disclosure bulletins For many years, certain major industrial companies produced a periodical bulletin for the specific purpose of laying open to public inspection some technical data which did not merit a patent application in its own right. The classic example is the IBM Technical Disclosure Bulletin (TDB). In the United Kingdom, a monthly publication called Research Disclosure (RD) allowed for anonymous publication in a similar fashion, although taking its content from a range of companies rather than dedicated to a single organisation. In recent years, the IP.com website has developed from what was originally a paper product, again with the objective of rapid publishing to prevent other people from being able to apply for a patent. A few online services provide access under licence to the electronic versions of TDB and RD, as well as the publishers’ own distribution network. Some patent offices subscribe to these services and as a result, citations to these products may be seen in official search reports. A review of defensive publication mechanisms was published by Adams et al. in 200252.

Institutional repositories and preprint servers In addition to the development of open access journals, which may or may not be included in the coverage of conventional indexing or abstracting services, many organisations in recent years have created freely accessible document servers, which are often used as a means for academic researchers to lay open results rapidly, with or without the formal refereeing process of full journal publication. In some cases, preprints deposited in these servers may proceed later to a more complete publication in conventional media, but many do not, and the preprint remains the sole disclosure of the research. Institutional repositories or other electronic-only searchable sources may be supported by academic consortia, national government or by other mechanisms. Few of these repositories include adequate deep indexing (if any), and many accept documents in multiple formats and languages. From the point of view of the patentability searcher, the only systematic way of accessing this material is either to identify a reputable secondary journal which indexes the contents of the server in a comprehensive manner, or to conduct individual searches in each of the sources which appear (on the basis of available information about the content) to contain records of relevance. In the latter case, the quality of retrieval will depend largely upon the search engine available, and will almost certainly rely heavily upon free text. A selection of subject-matter repositories and preprint servers are listed in Table 12.2.

http://www.chemspider.com/

http://europepmc.org/

http://arxiv.org/

http://biorxiv.org/

http://www.chemarxiv.org/

ChemSpider

Europe PubMed Central

ArXiv

bioRxiv

ChemArxiv

Chemistry.

Biology.

Physics, mathematics, computer science, statistics, some (quantitative) biology.

US PubMed + additional full text, local material

Chemical structure search

(continued )

American Chemical Society

Cold Spring Harbor Laboratory, US.

Cornell University, US.

European Molecular Biology Laboratory/European Bioinformatics Institute (EMBL-EBI), UK

Royal Society of Chemistry, UK

Springer; see also SpringerOpen (https://www.springeropen.com/)

+ medical journals

http://www.biomedcentral.com

BioMed Central (BMC)

Irish Universities Association

http://rian.ie

RIAN (Pathways to Irish Research)

Open University, UK / JISC

University of Bielefeld, Germany

Host

Irish universities, some public health institutions (All Ireland Public Health Repository, Royal College of Surgeons in Ireland)

Worldwide, multi-disciplinary

http://core.ac.uk/

CORE (COnnecting REpositories)

Principal subject matter Multi-disciplinary

Web address

BASE (Bielefeld http://www.base-search.net/ Academic Search Engine)

Server

Table 12.2: Selected repositories and preprint servers.

Other forms of literature

475

Web address

https://osf.io/preprints/socarxiv

https://osf.io/preprints/discover

http://www.science.gov/

Server

SocArXiv Preprints

OSF Preprints

Science.gov

Table 12.2 (continued )

US Federal research

Portal enabling integrated search across ArXiv and several smaller collections, including AgriXiv, EarthArXiv, LawArXiv.

Arts, humanities, education, law, social sciences.

Principal subject matter

Science.gov Alliance, US

Center for Open Science, US.

University of Maryland, US.

Host

476 Chapter 12 The non-patent literature for the patent searcher

Other forms of literature

477

Social media One of the most profound changes to the research process in the last decade has been the increase in the use of shared resources and collaborative research. Public sector research grants frequently require two or more institutions to work together, sharing either personnel, information, experimental equipment or more. This has required the opening up of communication channels, not only within an organisation but also between partners in an enterprise, whether it be a formal joint venture or some other arrangement. In this environment, there is an increasing tendency to conduct “virtual” project team meetings, with the result that large amounts of scientific information, opinion and data are being transmitted over essentially public networks. Although some social media or “collaborative working” platforms allow for the creation of closed groups, the level of security which is actually achieved – and the consequent conclusion as to whether such communication is truly in the public domain – has not been tested in the courts. In the context of search work to support opposition or revocation proceedings, it remains to be seen whether such “closed” sessions are subject to discovery. In addition to the basic problem of locating the disclosures at all, these sources are very different in other ways. The language used is likely to be much less formal than prepared presentations or written documents; sometimes text may be replaced by non-text indications (emojis etc.). Contributors may be less guarded against accidental disclosure whilst in an informal environment, making spontaneous comments without considering the adverse effects on patentability, especially in a jurisdiction which does not recognise a pre-filing grace period. Although archiving systems do exist for website pages, it is not clear what information is retained by the platform operators, or whether they could be required to surrender this in the event of legal proceedings. At the present time, the facilities to enable effective searching of the information on social media platforms are very variable in quality. General internet search engines do not provide adequate retrieval, and although some specialised tools exist, it is by no means clear exactly what they index, what is missed, or how long the material is retained for. Even the built-in search engines for a given platform may fail to retrieve relevant results in some circumstances; for example, Twitter search will not retrieve results from locked accounts, and a Facebook general search will not find comments which are sent to “friends only”. A selection of consolidating search tools is listed in Table 12.3, which claim to index one or more of the popular platforms such as Twitter, SnapChat, Instagram, WhatsApp or Facebook.

Pricing Part free, part paidfor.

Free of charge

Some free, mostly paid-for service Paid-for service

Source

https://www.social-searcher.com/

http://www.uvrx.com/social.html

https://www.talkwalker.com/

https://tagboard.com/

Table 12.3: Selected search engines for social media. Comment

Covers Twitter, Facebook, Google+, Instagram and Vine.

Coverage appears to include Facebook, Twitter, Myspace, LinkedIn, Plaxo, Bebo, Tumblr, Livejournal, Flickr, Google+

Searches for hashtags; may not retrieve other free text?

Focus on searching for brand names and consumer sentiment (especially talkwalker.com/social-media-analyticssearch).

Portal offering access to SocialBuzz, Google Appears to offer current awareness SocialSearch. Claims to cover “all major social searching of (at least) Facebook, Twitter, networks, including Facebook, Twitter, Google+, Google+ Instagram, and Tumblr.”

Description

478 Chapter 12 The non-patent literature for the patent searcher

References

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Conclusion This chapter has attempted to highlight some of the reasons why the non-patent literature should be of interest to the patent searcher. In the final analysis, it is up to the individual searcher, in collaboration with the inventor and attorney, to decide how far to go in a patentability search. The most important thing to remember is that although the patent literature frequently yields a range of references which are easy to retrieve and to cite, the non-patent literature may sometimes produce the best references to establish (or destroy) novelty or inventive step.

References 1 See for example, R.T. Bottle, J.F.B. Rowland (eds.) (1993) Information Sources in Chemistry and R.A. Macleod, J. Corlett (eds.) (2005) Information Sources in Engineering. The full listing of the Guides to Information Sources series can be found at www.degruyter.com/view/serial/GISB?language=en [Accessed on 2020.04.14] 2 Oppenheim, C., Allen, J. (1979). The overlap of US and Canadian patent literature with journal literature. World Patent Information 1(2), 77–80. 3 Graf, S.W. (2007). Improving patent quality through identification of relevant prior art: approaches to increase information flow to the Patent Office. Lewis & Clark Law Review 11, 495–519. 4 Smith, P.A. (1986). Patents as sources of technology. World Patent Information 8(2), 70–78. 5 Royal Society (2003). Keeping science open: the effects of intellectual property policy on the conduct of science. para. 3.28. Royal Society Working Group on Intellectual Property. London: The Royal Society. 6 WIPO (2019). Minimum Documentation. PCT Regulation 34.1b. Geneva: WIPO. 7 WIPO Standing Committee on Information Technologies (2000). Status Report on the JOPAL Project. Document SCIT/6/4 (24th November 2000). Geneva: WIPO. 8 WIPO Standing Committee on Information Technologies (2002). Status Report on the JOPAL Project. Document SCIT/7/13 (26th April 2002). Geneva: WIPO. 9 WIPO Standing Committee on Information Technologies (2008). Report of the Ninth Session of the Standards and Documentation Working Group. Document SCIT/SDWG/9/12, paras. 86–91. (21st February 2008). Geneva: WIPO. 10 WIPO (2010). Minimum Documentation under Rule 34.1(b)(iii) of the Regulations under the Patent Cooperation Treaty. In Handbook on Industrial Property Information and Documentation, Part 4.2 (February 2010 edition). Retrieved from www.wipo.int/export/sites/ www/standards/en/pdf/04-02-01.pdf (2020.04.14). 11 Adams, S. (2001). Using technical databases with minority patent coverage to enhance retrieval. World Patent Information, 23(2), 137–148. 12 Ruiz, M. (2002). The international debate on traditional knowledge as prior art in the patent system: issues and options for developing countries. Occasional Paper No. 9, Trade-Related Agenda, Development and Equity (T.R.A.D.E.) series. Geneva: South Centre. 13 Rao, S.S. (2006). Indigenous knowledge organisation: an Indian scenario. International Journal of Information Management 26(3), 224–233.

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14 Chakravarty, R. (2010). Preserving traditional knowledge: initiatives in India. IFLA Journal 36(4), 294–299. 15 The search report of GB 2117179-A cites the children’s comic “The Beano”, whilst Dutch published application NL 6514306-A was allegedly refused due to prior art from a Donald Duck story “The Sunken Yacht” published in 1949. 16 Brean, D.H. (2007). Keeping time machines and teleporters in the public domain: fiction as prior art for patent examination. Univ. Pittsburgh J. Technology Law & Policy, Vol. VII, (Fall 2006/Spring 2007), Article 8. 17 Oppenheim, C. (2008). Electronic scholarly publishing and open access. Journal of Information Science 34(4), 577–590. 18 Archontopoulos, E. (2004). Prior art search tools on the Internet and legal status of the results: a European Patent Office perspective. World Patent Information 26(2), 113–121. 19 van Staveren, M. (2009). Prior art searching on the Internet: further insights. World Patent Information 31(1), 54–56. 20 van Wezenbeek, B. (2008). Internet prior art. In Proceedings of the EPO Patent Information Conference, Stockholm, October 2008. Oral presentation. 21 Müller, M (2008). The debate about internet citations as prior art. In Proceedings of the EPO Patent Information Conference, Stockholm, October 2008. Oral presentation. 22 Adams, S. (2012). Survey of PCT search reports and the importance of the internet as a source of non-patent literature. World Patent Information 34(2), 112–123. 23 Loizides F., Diallo, B., Pollard, A., Mavri, A. (2017). Increasing the discovery and use of nonpatent literature (NPL): scientific publications in patent examination. In L. Chan, F. Loizides (eds.) Proceedings of the 21st International Conference on Electronic Publishing, Limassol, Cyprus, 6–8 June 2017, p.211–216. Amsterdam: IOS Press. 24 USPTO (1997). Interim Internet Usage Policy. Official Gazette of the United States Patent and Trademark Office, 25th February 1997, p.1195-O.G.-89. 25 ISO (1997). Bibliographic references – Part 2: Electronic documents or parts thereof. ISO 690-2:1997. Geneva: International Organisation for Standardization. WIPO Standard ST.14, para. 13 is derived from ISO 690-2. 26 Pears, R., Shields, G. (2008). Cite them right. Newcastle-upon-Tyne: Pear Tree Books. 27 Li, X., Crane, N. (1996). Electronic styles: a handbook for citing electronic information. (2nd ed.). Medford, NJ: Information Today, Inc. 28 Lester, R. (ed.) (2005). The New Walford: Guide to Reference Resources. Vol. 1. Science, Technology and Medicine. London: Facet Publishing. 29 Armstrong, C.J., Large, A (eds.). (2001). Manual of Online Search Strategies, Vol. 1. Chemistry, Biosciences, Agriculture, Earth Sciences, Engineering and Energy. Aldershot: Gower Publishing. 30 Bottle, R.T. (ed.). (1979). Use of chemical literature. (3rd ed.). London: Butterworths. 31 Bottle, R.T., Wyatt, H.V. (eds.). (1971). Use of biological literature. (2nd ed.). Hamden, CT, USA: Archon Books. 32 Auger, C.P. (1975). Use of reports literature. London: Butterworths. 33 Auger, P. (ed.) (1998). Information Sources in Grey Literature. (4th ed.). Munich: KG Saur Verlag. 34 Wood, D.N., Hardy, J.E., Harvey, A.P. (eds.) (1989). Information Sources in the Earth Sciences. (2nd ed.). Munich: KG Saur. 35 Brown Titus, E. (ed.). (1965). Union list of serials in libraries of the United States and Canada. (3rd ed.). New York: H.W. Wilson. (5 vols.).

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36 Library of Congress (1973). New Serial Titles. Multi-volume. Washington DC: Library of Congress Cataloging Distribution Service. Publication ceased 1999. 37 Brown, P., Stratton, G.B. (eds.) (1963). World List of Scientific Periodicals published in the years 1900–1960. (4th ed.). London: Butterworths Press. 38 Stewart, J.D., Hammond, M.E., Saenger, E. (1955–58). The British Union-Catalogue of Periodicals: a record of the periodicals of the world, from the seventeenth century to the present day, in British libraries. 4 vols. London: Butterworths Scientific Publications, 1955–58. [plus Supplement to 1960; 1960–68; 1969–73; annual vols for 1974–80]. 39 UNESCO Libraries Portal. (2011.09.10) Archive copy retrieved from https://web.archive.org/ web/20110910203155/http://www.unesco-ci.org/cgi-bin/portals/libraries/page.cgi?d=1 40 Dale, P., Wilson, P. (eds.) (2004) Guide to libraries and information units in government departments and other organisations. (34th ed.). London: British Library. 41 Proquest (2020.04.14). Ulrichsweb ™ Global Serials Directory. Retrieved from http://ulrichs web.serialssolutions.com. 42 Hiom, D. (2006). Retrospective on the RDN. Ariadne, 47, 30th April 2006. Retrieved from www.ariadne.ac.uk/issue47/hiom/. 43 Williams, C. (2006). Intute: the new Best of the Web. Ariadne, 48, 30th July 2006. Retrieved from www.ariadne.ac.uk/issue48/williams/. 44 Joyce, A., Kerr, L., Machin, T., Meehan, P., Williams, C. (2010). Intute: reflections at the end of an era. Ariadne, 64, 30th July 2010. Retrieved from www.ariadne.ac.uk/issue64/joyce-et-al/. 45 WIPO IGC (2008). Recognition of Traditional Knowledge within the patent system. Document WIPO/GRTKF/IC/13/7. (18th September 2008). Geneva: WIPO. 46 WIPO Meeting of International Authorities under the PCT (2005). PCT Minimum Documentation: Traditional Knowledge. Document PCT/MIA/11/5. (26th January 2005). Geneva: WIPO. 47 American Association for the Advancement of Science (2020.04.14). Traditional Ecological Knowledge Prior Art Database (2004). AAAS. Retrieved from www.aaas.org/programs/scien tific-responsibility-human-rights-law/past-projects-human-rights/ 48 Johnson, O. (2002). Venezuelan project establishes indigenous plant database. British Medical J. 325(7357), 183. 49 Alexander, M. et al. (2004). The role of registers and databases in the protection of traditional knowledge; a comparative analysis. Tokyo: United Nations University, Institute of Advanced Studies (UNU-IAS). 50 WIPO (2020.04.14). Online Databases and Registries of Traditional Knowledge and Genetic Resources. WIPO. Retrieved from www.wipo.int/tk/en/resources/db_registry.html. 51 WIPO (2020.04.14). Standards and patents. WIPO. Retrieved from www.wipo.int/patentlaw/en/developments/standards.html. 52 Adams, S., Henson-Apollonio, V. (2002). Defensive Publishing: a strategy for maintaining intellectual property as public goods. ISNAR Briefing Paper No. 53. The Hague: International Service for National Agricultural Research.

Chapter 13 Common search types (I) – alerting searches The patent information industry has a long history of conducting what, in the wider context, are currently referred to as “alerts”, or in older terminology, “selective dissemination of information” (SDI) services. Within the legal patent community, these procedures are commonly referred to as “watch services”. A number of companies around the world, which are today best-known as database producers or distributors, began life as a nationally-based watch service; examples include Univentio in Holland, and Research Publications in the USA (later subsumed into the Thomson group). Even the Derwent organisation, producer of the Derwent World Patent Index file, began life by producing current awareness bulletins in the late 1950s. Watch services as understood by the legal community often relate to a legal status monitoring process, although the same term can also equally be applied to bibliographic monitoring e.g. by assignee or subject. This chapter will concentrate on bibliographic alerting; legal status monitoring is addressed in more detail in Chapter 16. Current awareness services may be obtained in a variety of ways: – Purchase of standard bulletins created by database producers, using prefabricated strategies – Using standard bibliographic databases, selecting by time segment (update), and customised strategies; these may be run in-house or sub-contracted – Sub-contracted to specialist producers focussed on provision of watch services only.

Standard bulletins The advantage of standard bulletins is that all the hard work of constructing a search strategy and running it against document updates each week or month, is taken out of the hands of the customer, and given to the actual database producers. Since these organisations know their own products very well, they are able to construct search profiles which are optimised for use within their database. Historically, such bulletins were delivered in paper form, but have usually been replaced today by electronic facsimiles of the selected documents (such as PDF files) or as electronic updates ready for insertion into an in-house database. Derwent produced a range of standard bulletins for many years, using their Alerting Abstracts sorted according to broad subject areas defined by the Derwent Class system, e.g. the Section C Alerting Abstracts bulletin was dedicated to newlyhttps://doi.org/10.1515/9783110552263-013

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Chapter 13 Common search types (I) – alerting searches

published agrochemical patents. These sectional bulletins were supplemented by a series of subject-specific bulletins, called the Industry and Technology Patents Profiles (ITP). Most of the purely chemical bulletins have ceased production, but a substantial number of those in the engineering and electronic fields are still produced. Table 13.1 gives some indication of the range of standard profiles available in recent years. For more current information, users should consult Derwent directly.

Table 13.1: The Derwent range of patent current awareness products (2018). Subject field

No. of titles

Example title

Aerospace



Aircraft Structures and Systems

Alternative Power Generation



Solar Power

Automotive Chemical

 

Vehicle Seats, Seatbelts & Airbags Drug delivery systems

Communications



Multiplex and Multiple Access Information Transmission Systems

Computing and e-business



Cloud Computing

Discrete Electronic Devices



Optical Fibres and Light Transmission Control

Domestic and Leisure Equipment



Air Conditioners

Electric Power



Fuel and Hybrid Cells

Electronic Circuits



Electronic Data Coding and Conversion

Food Image and Audio Recording and Reproduction

 

Meat, Poultry & Fish Processing Video Cameras and Electronic Image Acquisition

Instrumentation and Testing



High Resolution Sensors

Life Sciences



Genetic Engineering

Machining and Manufacturing



Robotics and Machine Vision

Mechanical and civil engineering



Bearings

Medical Devices



Implants & Prostheses

Miniaturised Technologies



Carbon Nanotubes and Graphene

Standard bulletins

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Table 13.1 (continued ) Subject field

No. of titles

Example title

Packaging and Packing



Bottles, Cans & Jars

Paper



Paper Making Equipment

Semiconductor Technology



Semiconductor Substrate Processing

Relatively few of the major database producers still publish a standard range of alerting bulletins based on their own content. Even the range of CA Selects, which once ran to hundreds of titles based around selection from CAS section codes, has ceased to be advertised. However, one database producer (in addition to Derwent) which does still provide standard bulletins is EnCompassPAT, the former API database now owned by Elsevier. At the time of writing, their bulletin range consists of weekly or monthly PDF or HTML output, selecting new patents in the petroleum and petrochemical business area. The special topics available include: – Catalysts/Zeolites – Chemical Products – Environment Transport and Storage – Fuel Reformulation – Oil Field Chemicals – Petroleum Processes – Petroleum and Specialty Products – Petroleum Substitutes – Tribology Some level of patent current awareness can be achieved by a selection of other tools or products. These range from simple periodical listings in academic journals like “Nature”, through websites of lobby groups or special-interest groups (Worldwide RFID Patent Watch, Nanotech Bulletin), through news releases by university research foundations or similar, to IP consultancies. The selection policy may be obvious (such as a simple IPC-based strategy), through somewhat more subjective (intellectual selection of new food science patents in Leatherhead Food Research Association’s “Food Industry Updates” series), to the obscure (many “patent of the week” columns). One example of a selective listing service is the range of specialist journals published by Bentham Science (www.benthamscience.com), all published under

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the generic title of “Recent Patents on . . . ”. This range of journals consists of a mixture of basic title listings of newly published patents or applications, together with some more substantive articles, including more in-depth patent review articles with comment. The same model of publication was used by some other publishers in the past, e.g. Ashley Publications series of journals, “Expert Opinion on [e.g. Therapeutic] Patents”. Some of the Bentham material is open access. The editorial process for selecting which items appear in any given journal is unclear, but at least some listings are derived from searches in other databases, so the contents may suffer from time lag before appearing in the Bentham journal. Table 13.2 lists some of their current (2020) titles and others which have been in the series but may be discontinued (in italics). Table 13.2: Bentham Science “Recent Patents on . . .” journals. Anti-Cancer Drug Discovery Anti-Infective Drug Discovery Biotechnology Drug Delivery and Formulation Endocrine, Metabolic & Immune Drug Discovery Engineering Food, Nutrition & Agriculture Inflammation & Allergy Drug Discovery Mechanical Engineering Medical Imaging Nanomedicine Nanotechnology Regenerative Medicine

In-house strategies Any of the commercial databases mounted on the major hosts can be used to run current awareness profiles, and the ability to store and re-run search strategies is also becoming a feature offered by some of the free-of-charge websites as well. The user is able to construct a strategy in much the same way as if they were

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running a retrospective state-of-the-art or patentability search, but store it at the host end for automatic repeat running. Depending upon the host service, it may be possible to vary the frequency of running the search; for example, on a weeklyupdated database, it may be more cost-effective to run a profile each month, effectively cumulating 4 runs of the search. The responsibility for defining the search strategy under these circumstances rests entirely with the customer, although the commercial database producers should be able to provide advice and support on the process. The main danger with this type of current-awareness technique is that it is easy to forget the need for periodic revisions of the strategy. The temptation is to create the strategy once, and let it run thereafter unmodified. It may indeed continue to generate useful information, but many such strategies will contain search terms which may get modified over time (for example, a patent assignee name which disappears as a result of merger, or a classification code which is replaced by a new sub-division). It is vital to ensure that the contents of each strategy are systematically reviewed for continued accuracy, and modified if required. A further skill in the process of creating a current-awareness strategy is in the use of very broad search terms. There is a temptation to use precisely the same search terms as would be applied for a full retrospective search, but merely run it against a smaller section of the file, such as the weekly or monthly update. However, it is often true that a search term which would be difficult or impossible to use in a retrospective search because of ambiguity or excessively high retrieval can be a useful term in the mini-database created for each run of the profile. This is particularly true in the case of IPC-based classifications, which can form a very useful broad filter when used at the sub-class level. It is always worth examining a search strategy intended for a current awareness profile, to see whether it uses the most appropriate search terms for the size of database against which it will be run. One of the advantages of developing your own strategies for alerting purposes is that they can be highly focussed or tailored to specific needs, perhaps a single research project or department. However, the process is labour-intensive, and some companies prefer to sub-contract the process of actually running the profile to an external supplier. If taking this approach, it is crucial to establish good lines of communication, both for the initial definition of the profile and to allow for a rapid, effective means of updating it. The responsibility of each partner must be clearly defined, otherwise there is a risk that the process will develop a momentum of its own, and not be revised to reflect either changing research interests or modifications in databases. After a while, such a process will generate fewer and fewer relevant answers, and become effectively worthless to the customer.

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Specialist suppliers The advantage of the Derwent series of products is that individual patent records are added to each profile or section on the basis of an intellectual assignment, using the proprietary subject classification which is also applied across the retrospective file. Most other current awareness bulletins allocate records to a profile or group on the basis of a public subject classification such as the IPC. Users may find either approach helpful, depending upon their sector of industry and whether the subject is broken down in a helpful manner. A typical example of an awareness service based upon the IPC is Unycom’s Intellectual Property Management System (IPMS) system, now part of the CPA Global group (www.unycom.com). The IPMS is focused on the needs of patent attorneys, and the watch function has been integrated with docket handling, to allows annotation of new material received in a current awareness context, and improve the work-flow throughout an R&D corporation. Unycom’s system incorporates some of the technology devised by the Dutch company Treparel, allowing automatic clustering and categorisation of results. Other suppliers of IP formalities software are also including the means to integrate enterprise-wide current awareness with internal portfolio management activities, creating entire workflow systems, allowing for distribution of documents, annotation and in-house indexing, and archiving. In recent years, it has been proposed that artificial intelligence algorithms may be of help in creating clusters of patent documents and allocating internal classification or facets to them1, 2, 3. Such technologies may be of value in refining draft alerting strategies and improving the relevance and accuracy of in-house indexing. Specialist suppliers of patent current awareness can deliver their output in a manner which is easy to tailor to the customer’s requirement. Over the last few years, as more patent offices make available their data in bulk at marginal cost, an entire cottage industry of “alert providers” has grown up in recent years. In some cases, they are linked to provision of complete documents, providing the actual alerts free of charge but recouping costs by document delivery fees. The market for specialist patent document delivery has suffered markedly due to the instant availability of PDF copies from major countries, although there is still a place for expert suppliers in the case of unusual countries or specific forms of document. In Europe, some established current awareness suppliers still maintain their place in the market; examples include Centredoc of Switzerland, and Europatent GmbH (www.europatent.net) in Germany. A partner service of STN, the FIZ-Karlsruhe institute, has also set up the FIZ PatMon service. This draws upon the EPO DocDB database (both bibliographic and legal status) in order to provide regular alerting on the basis of a customer-defined strategy. Results are delivered by email and presented in a customer dashboard for easy scanning.

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References 1 Trappey, A., Hsu, F-C., Trappey, C., Lin, C-I. (2006). Development of a patent document classification and search platform using a back-propagation network. Expert Systems with Applications, 31(4), 755–765. 2 Bass, S., Kurgan, L. (2010). Discovery of factors influencing patent value based on machine learning in patents in the field of nanotechnology. Scientometrics, 82(2), 217–241. 3 Venugopalan, S., Rai, V. (2015). Topic based classification and pattern identification in patents. Technological Forecasting and Social Change, 94, 236–250.

Chapter 14 Common search types (II) – patentability and freedom-to-operate searches This chapter will discuss two types of search, which have some techniques in common. These are the patentability search and the freedom-to-operate (FTO) or infringement search. It is beyond the scope of this chapter, or this book, to explore the details of strategy development and execution; rather, it will try to provide insight about the qualities and characteristics required from a given information source, if it is to be suitable for use in one of these search tasks. The starting requirement for both types is a good mechanism to “search-bysubject”. In the case of the patentability search, our focus is a specific invention – perhaps still at the very early stages of development in a promising research project, or maybe reached the stage of an early prototype product. The inventor, working in collaboration with their patent agent or attorney, is aiming to establish whether an application for patent grant is likely to succeed. If this can be clarified before the patent application is filed, it may be possible to save substantial amounts of time and money. The searcher therefore comes to the project at a point when the inventor can describe in some detail the salient features of their invention, and it is these features which form the primary search concepts.

The patentability search Although a patentability search can be conducted after the patent application has been filed, it is often more cost-effective if the results are already at hand when the application is at the drafting stage. This is because it is easier to draft a patent application to avoid the known prior art from the beginning, than it is to file an initial application and then have to amend it in order to avoid a laterlocated document. Some industries or companies have a policy of not conducting full patentability searches themselves, but relying upon the official search from the patent office. Whilst this undoubtedly saves cost in the short run, the effectiveness of this strategy varies according to the nature of the industry. If a company is able to cease any further project development in the period between filing their application and receiving the official search report, then the applicant is theoretically able to respond in a very focussed manner to the prior art which the patent office itself has located. However, it is common for the applicant to want to continue https://doi.org/10.1515/9783110552263-014

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developing and optimising their invention after the application is filed. Under these circumstances, it is in their interests to know the general technical environment surrounding their invention as early as possible. This will help to guide the further research in the 12–15 months between filing and receipt of the official search report. A thorough retrospective search before, or immediately at, the time of filing, preferably followed up by a regular monitoring process until the early publication at 18 months, will help to ensure that there are no nasty surprises when the official search report is received. As discussed in Chapter 1, most countries require that a patent application satisfies four criteria in order to proceed to grant. It is the role of the inventor and attorney to show that the invention has merit in the area of industrial utility and does not fall into one of the classes of prohibited subject matter. The patentability search aims to address the remaining two aspects, namely novelty and non-obviousness (or inventive step). The search strategy requirement for novelty and inventive step are related, but subtly different. Both criteria are defined in relation to the state-of-the-art. Novelty is the requirement that the invention in hand does not already form part of the state-of-the-art. Inventive step is the quality that the invention would not be obvious to a person well versed in the appropriate technical field – in other words, someone who knows the relevant state-of-the-art (known in US legal jargon as the POSITA, the Person of Ordinary Skill In The Art). Therefore, our starting point for a patentability search has to be access to as much of the legally-defined state-of-the-art as possible. This means that we require one or more databases containing records – over many years (novelty relates to “disclosure at any time before the priority date”) – from many document types (novelty does not distinguish between a journal, patent, conference proceeding, report, internet web-site or other “document type”) – in all languages (novelty is still destroyed even if the disclosure is not in the official language of the examining patent office) In practical terms, such a starting point requires that our search databases provide the following elements:

Multiple country coverage This is to ensure that unique disclosures from one particular country are not missed. The nature of patents creates a complication at this point. The non-patent

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searcher, seeking to retrieve disclosures from the journal literature, might achieve their purpose efficiently by searching a range of different databases, each with its own unique content or geographic range, such as individual publishers’ websites or national union catalogues. Due to the lack of overlap, they are unlikely to retrieve the same item twice. However, for the patent searcher, duplication is a potential problem, as it is likely that a given prior invention will have been patented in several countries. This could lead to the retrieval of essentially the same document several times during a search, once for each country where it is patented. Consequently, the searcher must either search a range of single-country sources and reconcile themselves to a post-search processing stage, to de-duplicate the results, or (preferably) conduct their search in a patent family database, where each invention is only counted once.

Multiple technology coverage Patentability searching is, by its very nature, attempting to locate a reference to something that (we hope) has never been done before. A genuinely new and nonobvious invention is quite likely to include a degree of cross-pollination with other technical disciplines, which may mean that the search has to cross the line between hitherto unrelated subject areas. Whilst prior art to a “pure” chemical invention is unlikely to be located in a “pure” engineering database, there may well be certain aspects from remote areas of the prior art which have a bearing upon the case being searched. The experienced patentability searcher soon comes to sympathise with Oscar Wilde’s contention that “the truth is rarely pure and never simple”. It is a wise precaution to search in a database which covers a wide slice of applicable technology, rather than limit the approach to a highly-focussed database, whose coverage policy may ignore tangential but relevant items. This aspect of patentability searching is becoming much more important with the emergence of “hybrid” inventions, adapted for so-called Industry 4.0 applications where a new method of manufacture or a new product frequently incorporates aspects of the “internet of things”. It is no longer adequate for the search sources to be dedicated to a single technical field – or indeed that professional searchers are familiar with a single technical discipline.

Concept-based subject indexing / retrieval features This is particularly important if we are to fulfil our task to determine both novelty and inventive step. Establishing novelty appears, on the face of it, to be a

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straightforward search process – if nothing is found, the invention is new. However, we cannot allow our definition of “new” to mean merely that “no document uses the same words”. The drawback of first-level databases is that they capture documents individually, and do little to relate them to the wider corpus of knowledge, either in time or by subject. That is, a full-text record of a patent published last year will use last year’s terminology. Throughout technology, the vocabulary and key terms are in a constant state of change. Unless the searcher is also a skilled subject specialist with a remarkable memory, it is quite likely that they will miss relevant literature if they are relying purely upon the words in each isolated specification as their retrieval keys. A better choice would be a database which imposes a common subject classification, indexing or other taxonomy across the full time range of its coverage. The importance of this for the searcher was highlighted by a decision of the European Patent Office’s Technical Board of Appeal1, in which it was stated that: . . . identical processes yielding identical results constitute anticipation, even if described in terms different from those of the case in suit . . .

This ability to discriminate between a simple co-occurrence of text terms and a genuine degree of “similarity” is vital if the search is to be able to address the issue of inventive step. It could be argued to some extent that establishing novelty, where we wish ideally to locate one document which discusses all aspects of our case in hand, is a simple one of finding a “direct hit”. Inventive step, on the other hand, can be compromised if we are able to find one or more documents which, taken together, disclose some or all of the features of the invention. In other words, establishing inventive step requires “fuzzy searching”, in which we aim to locate a “indirect hit”, or one which possesses certain degrees of similarity to our case. It is very hard to achieve this objective in a first-level database, without additional concept analysis or subject indexing tools. Some of the research on semantic search technology2 has the potential to assist in inventive step searching, but so far few systems have achieved widespread acceptance amongst the patent search community. Anecdotal evidence suggests that semantic-based retrieval algorithms can deliver improved retrieval in some technical fields (e.g. engineering or mechanical) but not others. A summary of current challenges is given by Diallo and Lupu3, and a useful overview as of 2017 is provided by Mwakyusa4.

Patent and non-patent literature In the majority of Western industrialised countries, the definition of the state-ofthe-art is no respecter of document type. If an applicant wishes to obtain a patent

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within these “universal novelty” jurisdictions, then searches must be conducted with this definition in mind. This applies even if the applicant is based in another part of the world, and intends to lodge their priority filing locally. Hence, a company based in New Zealand which wants to obtain patent protection in a major trading bloc such as Europe, the United States or Japan needs to conduct their patentability searching to the higher standards of the target country. This is despite the fact that their local patent office examine and grant a New Zealand patent under local novelty rules, which (until the passing of the most recent Act) excludes any patent publication older than 50 years. Unfortunately, few databases offer a consistent handling of all literature types in their subject field, which would enable a single search to locate relevant prior art irrespective of the original document type. One of the exceptions is the Chemical Abstracts Service (CAS) bibliographic files, which apply a common indexing scheme to both chemical patents and non-patents. In other subject areas, it is necessary to supplement an initial patent search by a second search in the non-patent literature, merging the results. In recent years, the European Patent Office has substantially increased its efforts to search the non-patent literature (NPL). One of the ways in which it is helping the process is by applying classification marks from its in-house classification system (CPC), designed to store and retrieve patents, to items of NPL as well. This provides a common retrieval framework, similar in practice to the CAS indexing. As observed elsewhere in this book, Google Patents incorporates some NPL which has been machine-classified with CPC marks. However, such systems for a common metadata structure across all literature forms are still rare.

Rapid updating The final criterion for a good patentability source is that the content is up-todate. This is a difficult target to achieve with value-added databases, as the processes for refining first-level data inevitably take time, with the result that there can be an appreciable time-lag between the actual publication date of a patent document and its first appearance in the database. Many of the first-level databases can release new documents on the day of publication, and this makes them ideal for a top-up search, to supplement the main body of retrospective literature, and for ongoing monitoring for any competing applications whilst the case is being examined. However, even the value-added suppliers have made substantial strides in recent years, and offer fully-indexed records for new patents within a few days of publication. The main caveat for the searcher is to be aware of any persistent or transient data supply difficulties affecting their chosen database, before relying upon it for the patentability search. Such information,

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on “data gaps” and timeliness issues, is only slowly becoming widely available, usually through the medium of the database producer’s website or similar communications to the user community.

The freedom-to-operate search Many of the remarks concerning how to choose a source, or sources, for a patentability search also apply to a “freedom-to-operate” or “freedom-to-practice” search. Depending upon the requestor’s viewpoint (potential plaintiff or potential defendant) and the timing of the search, it may be requested as an “infringement search” as well. In all cases, the objective is to avoid the possibility of infringing someone else’s patent. If a company or individual wishes to engage in activities which may fall within the patent rights of another patent holder (for example, making, selling or importing a protected product), they will need to obtain permission – and probably a licence – from the patent holder. Alternatively, they may choose to modify what they intend to do, so that it falls outside the scope of the patent claims. In either case, the freedomto-operate search is an exercise to identify whose patent rights may present a restriction upon future actions. Failure to conduct this form of search can lead to a costly waste of time at best, if manufacturing or marketing plans have to be modified at the last moment, or legal action for infringement at worst. The search starts by seeking to identify patents held by third parties which are “about” the intended product or process – in other words, a subject-based search. However, we can generally ignore the issue of non-patent literature, since there are no enforceable rights associated with these, and concentrate on patents-only sources. Once a list of candidate patents is obtained, it can be limited by two further criteria. Firstly, since patents are territorial, the search need only concern itself with patents which confer rights upon the patent holder in the specific country where we plan to operate. Thus, the existence of a United States patent on a product which we hope to manufacture in the United Kingdom is no threat to operations, provided that we do not attempt to export the product to the USA. Our search results should consider any regional patent systems which protect inventions in the proposed country of operation. For example, if it is our intention to manufacture an item in Spain, it becomes necessary to search both national Spanish patents and any European Patents which have effect in Spain – either would be a bar to operations within that country. In some circumstances, it may be possible to impose this limitation at the beginning of the search, by utilising a database which only contains patents from the countries with which we are concerned.

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The second limitation relates to the legal status of any located, relevant patents. The patent holder will only be able to enforce their rights against an alleged infringer if they (the patent holder) have maintained the patent in force, including payment of any required renewal fees. They cannot allow their patent to lapse if they have no interest in working the invention themselves, and then revive it, merely for the purposes of deterring a competitor from entering the market. It is usually necessary to check upon the legal status of a patent in a separate step, by consulting official register data from the patent office concerned. Alternatively, the INPADOC database provides a consolidated source to legal status data from official sources in more than 50 countries, and is available on a variety of platforms. A third limitation also applies to freedom-to-operate searches, but generally falls outside the remit of the searcher or patent information specialist. This is the issue of claim interpretation. Patentee rights may only be enforced in relation to the claims portion of a patent document, not the entire disclosure. Once a search has been made to identify relevant documents, it is usually the task of the patent agent or attorney to provide a detailed legal opinion on whether the intended action falls within the exact scope of the patent claims. This stage should not be attempted by anyone unfamiliar with the relevant patent law. With these search requirements in mind, it becomes clear that for these types of search, our databases need to comply with the following standards:

Precise country/jurisdiction coverage Our source(s) must include comprehensive coverage of the country and/or region in which operation is planned. This is not always as straightforward as is seems; there are a surprising number of dependent territories and semiautonomous regions in the modern world, where it is not immediately obvious which country’s patents hold force. For example, a United States patent provides rights to the holder in the territory of Puerto Rico, even though that island does not have full statehood. Similarly, should we be contemplating setting up operations in Greenland, it would be necessary to consult some – but not all – patents in force in Denmark. Before conducting a freedom-tooperate infringement search, it is necessary to have a detailed description of exactly what is planned and where. This is also highly relevant when obtaining a search briefing from the client. If the objective of the client is to manufacture the product in one country but also export it to other countries, then the IP rights in both countries will be of relevance.

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Multi-technology sources Good access is needed to multi-technology sources, for the same reason as for a patentability search. In trying to avoid infringement, or at least to understand the potential risk of infringement, it would be foolish to overlook a relevant patent simply because it falls outside of the “obvious” subject area and hence not included in the database which we selected for the search.

Consistent retrievability across time The underlying reason is much the same as for patentability. With a freedom-tooperate or infringement search, the oldest relevant patents may be those which are coming to the end of their natural life, having been filed nearly 20 years before. Indeed, it is often the oldest documents which are the most commercially important to the patent holder and would be the most robustly defended if it did come to legal action. Hence the search must ensure that retrieval is comprehensive across many years’ worth of variable terminology. This can be a problem in cases where a multi-country database may have modified its indexing or its selection policy over the relevant time period of the search; for example, some databases may have started to include documents from a new country by adding title only, then started to capture abstracts at a later date. Clearly, if the search strategy is focussed on abstract text, there is the potential that relevant older documents, where the abstract field is missing, will not be retrieved.

Claim text Although it is the attorney’s job to provide legal opinion on the likelihood of actual infringement or a freedom to operate barrier, the searcher can assist the process, by facilitating access to the full text of the claims of any candidate answers in their report. It is only the claims which can be infringed, not the body of the disclosure. The rapid expansion in the number of searchable full text national collections has made it significantly easier to report the findings of these types of search, in the form of editable extracts from patent claims. Many countries now publish their specifications electronically, either as static facsimiles (TIFF or PDF page images, with drawings embedded) or as plain text. In the course of conducting the freedom-to-operate search, the searcher should have at least a basic understanding of how to read the claims in any candidate answers, but not to render a definite opinion of the relevance of the

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document to the search. From the searcher’s point of view, it is only possible to make a meaningful selection from amongst candidate answers if they have already clarified the intentions of the search client; for example, if the search client hopes to enter the market in a new jurisdiction, it may be relevant to identify process patents as well as product patents. The search professional should be skilled enough in document analysis to be able to distinguish the importance of different types of claim, and their relative importance to the search in hand. However, the fact that the claims are the most significant part of the text of the retrieved answers does not imply that it is good searching practice to limit the the search strategy to the claims field only. Claim language often uses inferred definitions based on descriptions in the body of the specification, so the specific wording of a claim may use more generic language than expected.

Access to legal status As with the claims, there will often be aspects of a legal status record which require specialist interpretation, but the searcher can assist by ensuring that the complete information is provided to the attorney, in relation to any specific cases identified in the search. If the located patent has expired, lapsed or been revoked, then it may be possible to proceed with actions which would otherwise have been considered infringement. However, there may be local restoration or appeal procedures which could revive an apparently dead patent, and proper legal advice is needed before commercial decisions are made. Having described one form of FTO search, it is worth noting that the same term is sometimes used for a “clearance search”. The objective with a clearance search is somewhat wider than a classic FTO search. Instead of having a specific action (manufacture, import etc.) in mind in respect of a specific invention, the clearance search is more of a fishing expedition, aiming at identifying which parts of the world may be free of intellectual property rights, now or in the foreseeable future, so that the organisation conducting the search has a better idea of the potential for (e.g.) establishing a new manufacturing base, subject to other factors. As a consequence, the clearance search should take account of pending patent applications, which may mature into a granted patent capable of being an obstacle to the operation, and even extend to reviewing the business and financial literature to discover news of the economic incentives available or information on construction of new factories by competing companies. In all cases, it is important for the patent searcher to gain a clear idea of the background and motives for the search request, in order to clarify what sources must be used.

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References 1 European Patent Office (1988). CPC International Technical Board of Appeal Decision No. T303/86. (Decision delivered 8th November 1988). ECLI:EP:BA:1988: T030386.19881108. 2 Eisinger, D., Mönnich, J., Schroeder, M. (2014). Developing semantic search for the patent domain. In H. Jung, T. Mandl, C. Womser-Hacker, S. Xu (eds.) Proceedings of the First International Workshop on Patent Mining and Its Applications (IpaMin 2014), Hildesheim, Germany, 8th – 10th October 2014. Hildesheim: CEUR Workshop Proceedings, Vol. 1292. Retrieved from http:// ceur-ws.org/Vol-1292/ipamin2014_paper11.pdf 3 Diallo, B, Lupu, M. (2017). Future Patent Search. In M. Lupu, K. Mayer, N. Kando, A.J. Trippe (eds). Current Challenges in Patent Information Retrieval (2nd ed.) Chapter 17, p.433. Berlin: Springer-Verlag GmbH. 4 Mwakyusa, P.E. (2017). Semantic annotation and Big Data techniques for patent information processing. M. Inf.Tech. Thesis, University of Jyväskylä, Department of Mathematical Information Technology (10th October 2017).

Chapter 15 Common search types (III) – portfolio and legal proceedings searching The portfolio search The portfolio search is based upon an attempt to reconstruct an accurate record of the intellectual property holdings of a particular person, usually in the sense of a legal person (corporate body) but sometimes a natural person (e.g. individual inventor). In either case, the principal challenge is identifying those patents which truly belong to that person at the date of search. However, this is not just a simple matter of looking up a name or corporation index, since both individuals and companies can change identity over time. Personal name records may change as a result of marriage or divorce but also due to evolving standards for capturing personal names from differing cultures and in different languages or scripts. Corporate names change frequently, as a result of merger, acquisition or devolution. At any given point in time, the intellectual property portfolio of a company will almost always consist of a mixture of items: – Non-patent IP (such as trade marks, designs and domain names) – these need to be borne in mind as setting the context for the patent IP, but will not be considered further here. – Patents on inventions which were originated by the company (“local technology”) – Patents on inventions originated outside the company, but which have been subsequently acquired (“bought-in” technology) – Licences to work patents held by a third party, which generate revenues for the licensing company (“leased” technology) In addition to these, the portfolio search will often locate items which used to belong to the company, but should no longer be counted within their portfolio by reason of sale or re-assignment (“transferred-out” technology). In some circumstances (for example, if the portfolio exercise is intended to identify the innovative capacity of the company), these items should be brought to the attention of the search requester. If the objective is acquisition, then clearly it will not be a good commercial decision to acquire a company based on an outof-date understanding of its IPR holdings; there is a risk that the purchaser may

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find that they have acquired a mere shell, and not actually acquired the assets which they sought. It should be clear that one of the primary considerations of a portfolio search is that the searcher needs a thorough understanding of the historical and current structure of the corporation under review. Patent bibliographic databases usually only capture the name of the patentee as at the date of publication of the document, and do not update this information, no matter how many times the company (and its IP) changes hands in subsequent years. To perform the portfolio search, we therefore need to know the present formal company name, common synonyms and abbreviations, common trading identities of subsidiaries and joint-ventures, and the ultimate parent or holding company. In addition, we need all of the above for at least the last 20 years, as it is possible that today’s company could still own in-force patents granted up to 20 years before, to any one of the multiple predecessor identities. A second aspect which needs to be considered with a portfolio search is the question of the maintenance of any identified patents. Many companies hold what appears on the surface to be an impressive inventory of patents, but commonly a substantial proportion of the items on the list will be expired or lapsed patents, and do not contribute to the overall portfolio, at least in the sense of giving an impression of the company’s industrial muscle. Once a document listing has been compiled, it is necessary to double-check each item to determine whether post-grant actions such as re-assignment or non-payment of annuity fees, revocation or other litigation have occurred, all of which will affect the value of the portfolio as a whole. To assist the searcher, some database producers have standardised assignee names. This at least helps to remove the problem of missing items due to trivial name variations, and in some cases serves to group together patents from known subsidiaries. The Derwent Patentee Code is the largest commonly available system for doing this; it is by no means perfect, and should be used with caution, but it can serve to help the patent searcher towards the ultimate goal. Documentation on the Patentee Code listing can be obtained from Clarivate1 as well as a look-up feature2. Some attempts have been made (e.g. by CHI Research in the United States) to compile dictionaries of company structure, to assist in patent portfolio searching, but these are generally limited in usefulness and/or very expensive to produce. Various data providers, such as Questel and Lexis-Nexis, have tried to integrate existing commercial information into their search systems in order to facilitate company name searching, but at the present time there is no universally agreed global company hierarchy, even to the extent of providing harmonised names of the same corporate entity translated into the common patent-publishing languages, let alone more details of the corporate structure. In recent years, there

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have been some attempts by national patent offices to enforce a form of standardisation upon the applicant’s names, but there are difficult legal issues and differing opinions about whether this is appropriate. There have been a number of meetings at WIPO to consider whether it is possible to make recommendations at the international level for the capture and storage of this information, but so far the experiments have been limited to one or two major patent offices and some private sector or academic research3, 4. The best advice at the current time is to supplement the use of the patentspecific tools with some of the well-established business information tools, such as Who Owns Whom or similar directories, before attempting a portfolio search. If the search target is a natural person, there is some hope of improvement in the future if unique identifiers such as the ORCiD system5 could be adopted for patent inventors, but this data capture has not yet been adopted by any national patent office for its own publications. There are two further aspects of a portfolio search, both of which relate to the timing of the search. Since a portfolio search is often used to try to assess the industrial strength of a particular firm, it is important to bear in mind that newly-published patent information – no matter how carefully it is collected – can usually only indicate the performance of a company’s R&D programme as is stood some 18 months before. This is because of the built-in time lag between patent filing and publication of unexamined applications in major jurisdictions and/or the PCT international phase. Clearly, this means that any meaningful search in the patent literature must be supplemented by further work in conventional news, business and financial information sources, to fill this gap. The other “timing” issue, which relates equally to all searches involving legal status, is to remember that we are observing a fluid situation, or a snap-shot picture, by consulting databases at a specific point. The most accurate legal status databases available can only give us a result which relates to that day; by the following day, new information may have been added, which has the potential entirely to re-shape our opinions of the portfolio.

Validity and opposition searching These types of search are similar in scope to a novelty or patentability search, in that it must address many document types and periods. However, they are addressed separately in this chapter because they have an additional – and essential – legal aspect to them.

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The aim of a validity or opposition search is to gather material for legal proceedings, questioning the validity of an opponent’s patent, or verifying the strength of one’s own intellectual property. The objective may be to raise questions as to whether a specific granted patent in fact complies with the requirements for patentability; to put it another way, to support an argument for revocation, or nullity. There is also a tendency to apply validity search techniques to in-house IP, as a way of establishing the worth of a portfolio and to set royalty rates for any licensing agreements. In a validity search, the searcher’s clients may have been accused of infringing the patent in suit, and are attempting to nullify the effect of that accusation by finding grounds to invalidate the patent. The simple argument is to “kill the patent, before it kills you.” If a party accused of infringement is able successfully to show that the plaintiff’s patent is not valid, they have no case to answer. This form of search can take place at any point during the life of the patent. An opposition search is designed to raise questions of patentability early in the life of a patent. Opposition proceedings – where they exist – tend to be handled by a special division of the granting patent office, rather than by the courts. In the case of the European Patent system, opposing a patent immediately after grant is an effective way of removing its effect in all the designated states simultaneously. Failure to take advantage of this procedure means that any later objections to the validity of the patent has to take place in parallel proceedings before the national courts in each state where nullity is sought. In both cases, the aim of the searcher is to identify subject matter which was published before the priority date of our known patent, and hence raise objections on grounds of lack of novelty or inventive step. It is therefore an essential step for the searcher to liaise with the legal specialists involved, to ensure that the priority date(s) are well understood. In complex cases, different parts of a patent application may have distinct priority dates attached to them (for example, if several cases were cognated into a single Convention filing), and the searcher must understand the cut-off date for each part of the search. During a validity or opposition search, many practitioners make use of the open access file wrappers relating to the patent in question, in every jurisdiction where the application has been pursued. It is conceivable that evidence cited for rejection in one country was not fully considered in another, so these may be raised during the proceedings. The significance and handling of any material from these sources depends to a great extent upon local law, and should be approached in consultation with a patent attorney.

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As with a patentability search, the primary bibliographic sources must cover multiple countries and multiple technologies sources. As well as extensive subject indexing, a validity search is one area where full-text can be a powerful support. Damaging prior disclosures may have happened through the examples or discussion part of a patent document, just as much as in the claims, and such items may not be highlighted by the use of abstracts in the search. Again, the type of literature providing the disclosure is not relevant, and all available patent and non-patent literature must be searched. Frequently, “grey” literature such as theses and reports can yield valuable material in support of the invalidity argument. Specialists in some search types (e.g. biotechnology, software, business methods, computing) maintain that more, and more relevant, prior art can be found in the non-patent literature than in patents, and the searcher must certainly cast the net very widely in conducting these types of search. See Chapter 12 for a more detailed discussion of the place of non-patent literature in the work of the patent search specialist. When selecting a search system for an opposition search, it is useful to determine whether the user has the ability to restrict their results by date. However, it is important to bear in mind that not all records in a database will populate the publication field to the same degree of accuracy. For example, a record for an article from a quarterly periodical will only list the publication date by month, not by day. The searcher should understand the command syntax thoroughly before applying date limitations, as this may run the risk of eliminating relevant material by accident. A related issue on publication dates is that of citing the internet. Being the fluid medium that it is, material which could potentially invalidate a patent may appear one day and disappear the next. Searchers using internet sources should ensure that they maintain some form of tangible record as to exactly when and where the prior art was located; if need be, this can include taking a printout of the relevant web pages and adding a date stamp. Formalised disclosure databases such as the Research Disclosure journal and the web-based IP. com (https://ip.com/products/prior-art-search-database/) provide an accurate audit trail for the contents of their files. For the viewpoint of the EPO on using and citing internet-based references, see the articles by Archontopoulos6 and van Staveren7. In recent years, certain EPO Board of Appeal cases8 have cast doubt upon the retrieval and handling of internet citations, and this issue is by no means resolved. New guidelines were released by the EPO in 20099, which were repeated in 201610. Some recent case law summaries from the EPO have also commented upon internet citations11.

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References 1 DWPI Patent Assignee Codes (2020.04.20). Clarivate.com. Retrieved from https://clarivate. com/derwent/dwpi-reference-center/dwpi-patent-assignee-codes/. 2 DWPI Patent Assignee Code Lookup (2020.04.20). Clarivate.com. Retrieved from https://clari vate.com/derwent/dwpi-reference-center/patent-assignee-code-lookup/. 3 WIPO (ed.) (2016). WIPO Standards Workshop on Applicant Name Standardization. Meeting Code CWS/WK/GE/16 (11 papers). 5th September 2016, WIPO, Geneva. Retrieved from www. wipo.int/meetings/en/details.jsp?meeting_id=40784. 4 WIPO (ed.) (2019). WIPO Standards Workshop on Name Standardization. Meeting Code WIPO/IP/CWS_NS/GE/19 (20 papers). 2nd–3rd May 2019, WIPO, Geneva. Retrieved from www. wipo.int/meetings/en/details.jsp?meeting_id=51426. 5 ORCID Inc. (2020.04.20). ORCiD – connecting research and researchers. Retrieved from https://orcid.org. 6 Archontopoulos, E. (2004). Prior art search tools on the Internet and legal status of the results: a European Patent Office perspective. World Patent Information 26(2), 113–121. 7 van Staveren, M. (2009). Prior art searching on the Internet: further insights. World Patent Information 31(1), 54–56. 8 European Patent Office (2007). Game system, game providing method, and information recording medium. Board of Appeal Decision T1134/06 (16th January 2007). ECLI:EP:BA:2007: T113406.20070116. 9 European Patent Office (2009). Notice from the European Patent Office concerning internet citations. Official Journal of the EPO, 32(8–9), 456–462. 10 European Patent Office (2016). Notice from the European Patent Office concerning internet citations. Official Journal of the EPO, Supplementary Publication 4, 212–218. 11 European Patent Office (2018). Boards of Appeal and Enlarged Board of Appeal Case Law 2017. Official Journal of the EPO, Supplementary Publication 3, Section F2.2 Archives and internet publications, 47–48.

Chapter 16 Sources for legal status searching What is “legal status”? The legal status search may be an enquiry in its own right, to establish the standing of a specific document, or as an adjunct to another type of search, such as a portfolio assessment. The basic principle of legal status searching is to establish whether a known document represents an enforceable right. The searcher’s motive may be varied. They may be wishing to obtain a licence to work the patent themselves, to know how to guide their research to avoid the possibility of infringement, or to enter the market as soon as the patent expires. Legal status information sources differ from bibliographic or full-text patent databases in a number of aspects, which relate to both their content and their interpretation. One of the first issues to tackle is that they are commonly only available in the official language(s) of the country concerned. Although a few national patent offices are trying to include standard elements (such as INID codes, or translation of standard words or phrases into English) which assist a user who is unfamiliar with the language, many of the national legal status registers remain difficult to understand in isolation because of the language barrier. Output should also ideally be interpreted by someone who is familiar with the local legislation, as individual events may be recorded in the form of the enabling legislation (for example, “Application filed under s.123 of the Patent Act” may not mean much to an information specialist, but does to a local patent attorney). Although there are a few exceptions, the search engines supporting these databases usually offer a very restricted means of accessing the data. Typically, it may only be possible to search by application or publication number, and not by wider criteria such as assignee, proprietor or class. As such, registers are not good tools to use for answering questions such as “how many patents does company X own in country Y?”; the registers are simply not designed to be able to handle a query which involves multiple parameters. These questions are best run against bibliographic databases first, to obtain a list of answers, and then crossed over into a register to check on the legal status of each application. It should always be remembered that legal status databases are “eventdriven” rather than “document-driven”. The creation of a new record or the modification of an existing record in the register is dependent upon a specific event in the life of the patent application, either whilst it is still pending or, in https://doi.org/10.1515/9783110552263-016

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some cases, after it has been granted. These events may include (for example) the applicant’s action in filing a request or other official form, the patent office’s issuing of an office action during substantive examination or the applicant’s response to an office action or payment of a due fee. This “event-driven” nature of the records has two implications. Firstly, national registers and other sources (e.g. national gazettes) may publish details of different events in the life of the same application; this that it may be necessary to view more than one source in order to establish all the events in the life of the application. Secondly, later parts of the legal status record may appear to contradict earlier parts, if the national law allows; for example, a notice of non-entry to national phase of a PCT application may be followed by a notice of grant, because the interim events relating to acceptance of late national phase entry and subsequent examination have not been captured. Recent moves at the international level have led to the creation of a WIPO Standard which contains recommendations on recording and exchanging data on legal status events. Part of this new standard includes mapping existing national events onto a generalised map of the prosecution pathway for a patent application, and this helps users of legal status information to be more aware of the wider context of each register record and the events within it1. To further complicate the picture, users should be aware that legal status registers only reflect events whilst the patent application is within the jurisdiction of the national granting authority. This means that any events which are not handled by the patent office may not be included in the register. This can include a wide range of events, such as post-grant litigation which did not result in any change in the claims (litigation which does result in amended claims will often be publicised in the official gazette, so appear in the database), transfers of ownership, granting of licences or granting of term extensions such as SPCs (which in Europe are administered by the national patent offices and not by the EPO; in other parts of the world they may be administered by the government health authority and not involve the patent office at all). Users should also be aware that for some significant post-grant events, there may be no mandatory requirement to report them to the patent office, for inclusion in the register. As a result, the omission of any such record from the register cannot be taken as conclusive proof that the event has not happened. This is a particular problem in relation to ownership data; many countries do not require under patent law that the transfer of ownership of a patent should be reported to the patent office, and there is little penalty or sanction for failing to report it. As a result, particularly in the case of wholesale re-assignment of an entire portfolio, the new owners rarely submit the data to the patent offices in a timely fashion. Finally, one distinct difference between bibliographic and legal status databases is in relation to the deletion of records. Whilst a bibliographic database

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remains a fixed record of the publication of a patent document, content in official patent registers may be removed if local laws permit. For example, the current Rule 147(4) of the Implementing Regulations to the EPC only requires the EPO to retain the file dossier of an application for 5 years after the date of refusal, withdrawal, revocation or lapse (including term extensions) in the last designated state. In practice, this period is often exceeded, but it illustrates the risk that useful information generated in the course of examination (for example, an examiner’s comments on the prior art and reasons for refusal) may not be available in perpetuity from official registers.

Services from patent offices The advent of the internet revolutionised the availability of information directly from national patent offices. For a number of years, the “Searcher” newsletter of the United Kingdom’s Patent & Trade Mark Group (PATMG) had a regular column written by Philip Eagle of the British Library, providing details of new resources of this type, and barely an issue passed without some expansion or change in the situation. Despite this expansion, although many European national offices (UK, Germany, Denmark, Netherlands . . .) and a substantial proportion of offices from other industrialised countries make their official register information available free-of-charge via the internet, there are still exceptions. Some smaller countries have not digitised their registers at all, whilst others only make headline data freely available, and charge for access to detailed documentation. Some of the directory services referred to in chapter 10 may assist in location of the resources available from a given patent office, and readers are also referred to Annex C for patent office homepages. Two additional sources for locating new registers are provided by WIPO, in the form of its directory of IP offices2 and its dedicated portal of national registers3. It should be noted that national registers can often be a separate website, distinct from that of the national patent office, although hopefully provided with a link. The Dutch patent information users group (WON) have also created an extremely useful categorised directory of websites4, including a listing of registers. Part of the directory is shown in Figure 16.1, including the (ringed) links to the sections of the directory covering national registers. Register information provided by patent offices falls into several distinct classes. The simplest type of register is searchable by patent grant number or application number, and provides a bibliographic record of the ownership of the patent at the date of grant; this is essentially the minimum mandatory

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Figure 16.1: WON directory of public register sources.

information required under Article 12(2)(a) of the Paris Convention. The next refinement is to include data on post-grant events, which may include such matters as re-assignment data, records of payment (or non-payment) of maintenance fees, licences granted (particularly if under legislative requirement, such as compulsory licences), expiry and term extension. The more complete registers can provide a good outline of the prosecution history of a case, with cross-references to divisional or continuation cases deriving from the master record. Some patent offices, such as Canada and Australia, provide an integrated service, with bibliographic information and legal status offered through the same interface. Display of the normal sequence of publication information is accompanied, either on a separate web page or at the bottom of the bibliographic page, by an outline sequence of legal status events. The same situation is true for Japan, where records located in the Patent Abstracts of Japan (PAJ) file have brief legal status details in English, provided that one or more events has occurred after 1995. The most comprehensive legal status is still only available in the Japanese language version of the register. The most complete forms of patent office service include the ability for a third party to view every item of correspondence passing between the applicant and the

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patent office in relation to a specific application, from the first official form with the priority documents through to the notice of acceptance and beyond. These socalled “file inspection”-type registers are relatively rare, although gradually increasing in number. In some cases (such as the United Kingdom), new legislation had to be passed in order to allow the patent office to make this information available in electronic, rather than paper, form. Two such enhanced registers are those from the USPTO, known as IFW (Image File Wrapper) and the EPO’s file inspection system, which was originally marketed as the epoline® service but is now integrated with the EPO Register. The creation of electronic records for file inspection is becoming more routine as patent offices enable electronic filing; for the large volume of older records, their paper files may never be scanned and added to the register.

PAIR and Image File Wrapper The PAIR (Patent Application Information Retrieval) system was the first stage of release by the USPTO of its status information. There are two forms, Public PAIR and Private PAIR. The Public PAIR system is open to all, and enables a legal status record to be retrieved for most US cases, subsequent to a publication stage. Before 2001, that meant that the PAIR record could only be viewed once the patent had been granted, but following the introduction of early publication by the USA in that year, it became possible to view a PAIR record whilst the patent is still under prosecution, provided that a corresponding US-A1 document has been laid open. Private PAIR is an encrypted system only available to registered patent agents or patent attorneys in the United States, and it enables them to monitor all the cases for which they are the appointed representative, including stages of progress prior to publication. This enables agents to file applications electronically, to monitor the dispatch and receipt of documents, make payments and respond to official actions. Private PAIR access is also possible for the independent inventor, or a person granted limited recognition, who have been allocated a customer number, and have a digital PKI certificate issued to them. At its initial launch, the coverage of the Public PAIR system did not extend to all in-force US patents, and it is not clear whether it will ever do so, although the USPTO indicated that it was scanning the back-file, at least on an ad hoc basis if not systematically. Although new filings have their dossier digitised from the first day, the information on the extent of the back-file is not readily available. Access to Public PAIR can be via the direct URL https://portal.uspto.gov/pair/ PublicPair or via the home page of the USPTO. It is controlled by the ReCAPTCHA™ technology, which requires a user to input some words presented as a visual

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challenge, in order to attempt to limit access by robots. However, bulk access is now permitted under certain conditions, for authorised data reprocessors. In June 2010, the USPTO entered into an agreement with Google which included some data-mining in the PAIR system. The experiments continued until 2015, and the results are still available for download at www.google.com/googlebooks/usptopatents-pair.html. The listing of application numbers indicates that the data set contains records from series 05 to series 13 of the utility patents, plus some design patents. The USPTO is now distributing bulk data itself, via the link www.uspto.gov/ learning-and-resources/bulk-data-products. There are six search criteria available in Public PAIR; application number, patent number (the modern US-B number), publication number (current US-A numbers), control number (used for re-examination requests), PCT application number (for cases which have entered US national phase) or International Design Registration Number (for Hague Agreement cases which have designated the US). The US application number field requires both the serial number and the series number to work properly, otherwise an error message is returned. One of the biggest drawbacks of the early Public PAIR system was the inability to search on interim filing numbers. This has largely been alleviated by the introduction of a new “Continuity Data” tab, which contains interim filing numbers in cases where the record being viewed is a divisional, continuation or continuation-in-part. This makes it much easier to follow the structure of the complex “national families” which can occur in the US. However, each individual PAIR record needs to be examined in order to obtain the full picture. For example, Figure 16.2 shows that US 6539778-B2 is a granted patent which is based upon application 09/892314, but it is not until the user accesses the PAIR record for this application number that we discover the corresponding published application number US 2002/0129641-A1, nor that US 6539778-B2 has been subsequently reissued as US RE42358-E1.

Figure 16.2: Continuity Data tab from Public PAIR.

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No foreign priorities are searchable in PAIR, although they can be displayed once the PAIR record has been located. Public PAIR provides the searcher with a great deal of information on the progress of the case towards grant, particularly in the form of the “Transaction History” tab, and, where appropriate, the maintenance fee payments. However, it does not form a complete prosecution history. For this, the Image File Wrapper (IFW) service is required, which has now been integrated with PAIR as a separate tab. The IFW service provides scanned electronic versions of the paper “file wrappers” available from the USPTO. These documents, which may run to many hundreds of pages for complex cases, provide a complete record of all communications between applicant and patent office during the processing of a patent application. IFW is also in two parts, with users of Private PAIR able to see electronic versions of their non-published cases as well as the public records on all published cases. The US law firm of Oppedahl & Larson LLP were heavily involved in testing the IFW system, and much more detail on the background and content of IFW can be found in the presentation by Oppedahl5. The same firm also distributed the “Partridge” software for automated monitoring of cases on PAIR; however, this no longer works on the Public PAIR site. The IFW tab initially provides an electronic table of contents for the file wrapper. Users may select some or all of the documents from the available list, which can then be downloaded in the form of a zipped file, containing scanned images of the document(s), or viewed directly online. The IFW system includes all cases filed since 30th June 2003, and work on back-scanning the paper file wrappers for older cases was commenced after the initial launch of IFW. However, as with PAIR, there is little substantive information from the USPTO website about whether the entire collection of file wrappers has been loaded. The USPTO indicated that its initial target was to include all cases pending on 30th June 2003 in the IFW system. It is worth highlighting that proper interpretation of legal status records requires a good knowledge of the relevant national law, as records of changes may not always be self-evident. A particular example in relation to the US is discussed in the paper by Simmons6 in relation to post-grant modifications required by additional prior art.

The European Patent Register The epoline® service was a portal produced by the European Patent Office, launched in 2001. It has gone through a number of developments, not least in name, and is now officially called the European Patent Register (replacing epoline

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and Register Plus). For a good review of the historical development of the system, see the papers by Rogier7, 8 and references therein, and the periodic updates at the annual EPO Patent Information Conference, such as the presentations by SánchezGarcía9. The interface has been redesigned several times since the first of these papers was published, and the content has expanded substantially. The EPO has published a Pocket Guide and a fuller Resource Book10 on the user of the Register, holds regular webinars on its use, and hosts a discussion forum at www.epo.org/ forum-register, where users can ask questions on how to search the system. The original component of the Register replaced the X.25-based legal status register, using a computer in The Hague to provide stages of progress data on European Patent applications. The development of the web-based Register, including a secure connection at https://register.epo.org/, allows greater flexibility in both search fields and display formats. Unlike PAIR, which only provides six basic search parameters (one per search), the current European Patent Register permits searching by 14 criteria which can be combined into complex search strategies (application number, publication number, date of filing, date of publication, priority number, priority date, grant date, title, applicant, inventor, professional representative, opponent, classification (IPC) or appeal case number). In practice, by far the most common fields used are the first ones, allowing a case-by-case inspection of pending or granted applications which the user may be monitoring – either their own or those of a competitor. However, the additional flexibility of the other fields can provide useful current awareness of prosecution of multiple cases. As with Public PAIR, the free Register only provides access to cases which have reached at least the stage of the publication of the unexamined application (EP-A1 or -A2). The record includes all the standard bibliographic items (required under Rule 92 (EPC 1973), current Rule 143 of the Implementing Regulations), plus additional information such as renewal fee payments and documents cited in the search report. The latter are provided in the form of links to the actual documents in the Espacenet service. An example record from the Register (for EP 666666-B) is shown in Figure 16.3. Selecting the “All Documents” link from the menu on the left provides the table of contents for the dossier, as shown in Figure 16.4. The operation to download elements from the dossier is essentially identical to the PAIR system, which is not surprising since the USPTO licenses the EPO-developed software for its service. The EPO also offers secure file inspection, equivalent to the US Private PAIR, allowing encrypted access to non-published cases for authorised representatives. It is also integrated with the online electronic filing service, allowing cases to be deposited with the EPO in approved electronic formats.

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Figure 16.3: Example record (truncated) from EPO Register.

The EPO is continually developing the Register system. These refinements include the ability to request e-mail updates whenever a Register entry is modified. This facility was initially provided by the WebRegMT (Monitoring Tool) software, now re-named Register Alert. A major enhancement was the delivery of more targeted alerting, to provide announcements only when a predefined Register event takes place. The Federated Register, which brings together a summary of the legal status in most of the EPO’s member states, has also provided a more convenient way of establishing the post-grant national events affecting a European Patent. It is worth commenting that, just as the OPS service has opened the door to developers to produce their own front-ends to bibliographic patent information, some commercial organisations have created new client front-ends to legal status information. One example is the original “EP Tracker” marketed by Minesoft Ltd., which provided access only to the EPO Register. A newer version, Patent Tracker (https://minesoft.com/our-products/patent-tracker), provides user-friendly tracking of events on a range of additional national registers, as well as the INPADOC data. Similar tools are provided in the form of the

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Figure 16.4: EPO file inspection – table of contents.

same company’s PAIRAlerts and Legal Status Tracker. Other commercial service providers, such as Orbit and Total Patent One (Lexis-Nexis PAIR-Watch), have either integrated links into their bibliographic tools to assist access to national registers from their patent family displays, or created dedicated alerting tools.

National registers from European countries As noted above, the WON website link set and the WIPO Patent Register Portal are good sources for locating new registers from all over the world, so this section will not attempt a comprehensive survey. However, it is worth emphasising that, despite the dominance of the EPO, the national registers from the EPO member states continue to be of importance. This is because they may be the earliest notification of legal status changes for IP rights in that country; this includes payment both of renewal fees on EP patents designating the territory and on national patents. A further reason is that national registers are sources of information on any types of IP rights not granted by the EPO, such as national utility models. Even though the EPO Register has implemented deep linking for most of its member states, and also introduced the Federated Register, there are still instances where the user will want to consult a national register directly.

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From the bibliographic information point of view, national registers may also contain information which is not available from the published patent applications. A typical example is the inclusion of search report contents from Germany, in cases where the search report was not completed at the time of the publication of the DE-A document (which is the case more often than not, since search may be deferred for longer than 18 months in Germany). The DPMAregister, which has replaced the older DPINFO service, is available at http://register.dpma.de/. The corresponding alerting service is DPMAkurier, which is accessible via the register. Both services are free of charge, although an e-mail address is required in order to receive new messages or copies of subscribed gazettes via DPMAkurier. Much of the national register in Germany are available through an Englishlanguage interface, and much of the content has also been translated. The same is true of France, which provides a set of standard legal status events in the form of short sentences, each linked to a code which is used in both the French and English versions of the database. This can aid understanding of the meaning of the event. The register entries for a specific case are accessible once a bibliographic record has been identified in the free “Base Brevets” (https://basesbrevets.inpi.fr/fr/accueil.html). The range of searchable fields has expanded since its first launch, and now includes a wide range of text, number and date criteria. The Information Register (Registre national des brevets, RNB) content is not as broad as the bibliographic database, but does include records for published and granted French national patents and utility certificates currently in force and any cases which were filed after 1989 but have expired after 1999. Additional data are available on published and granted SPC applications under the EU Regulations for pharmaceuticals and agrochemicals, since 1993. Full file inspection is available for national applications filed since 2001. In some cases, the file inspection contains less directly accessible information, but certified copies of selected documents (such as the formal “inscription” documents recording a change in the RNB) can be obtained for a small fee. There is extensive help in both English and French. As of 2020, the deep-linking of the EPO Register enabled connection to the electronic national registers of 34 out of the 38 full members of the EPO. The exceptions are Albania, which has a register but has not yet completed the linking, Cyprus (no e-register), Latvia (no e-register) and San Marino (no e-register). Data from Liechtenstein are found in the Swiss register. Other sources indicate that electronic registers are available for the Russian Federation, Ukraine and the Eurasian Patent Organisation based in Moscow (www.eapatis.com). The latter is rather unusual, in that it provides links to court information when a Eurasian Patent has been involved in litigation in any of the member states. In the case of the European Patent system, these post-grant actions take place

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Chapter 16 Sources for legal status searching

outside of the jurisdiction of the EPO and do not automatically (or systematically) get reported back for inclusion in the Register.

National registers from Asian countries With the increasing importance of Asian IP rights, many Western companies are seeking to obtain information on the validity of patents from this part of the world. With the exception of the three IP5 countries in Asia (Japan, South Korea and China), the development of electronic registers for these countries has been a recent step, in some cases only achievable through infrastructure support programmes sponsored by WIPO or by inter-office collaboration. The problem of the language barrier makes access to this information more problematic – in some instances, the national patent office runs two versions of its website, one in the national language and the other in English, and it can be challenging to determine whether all the information has been translated, or whether there are equivalent search features available on both sites. Some of the countries which have developed e-registers include China, Hong Kong, India, South Korea, Malaysia, the Philippines, Singapore, Taiwan and Vietnam. The current URLs for these registers are shown in Table 16.1. Table 16.1: Selected Asian legal status registers. Country code

Country

URL

CN

China

http://epub.cnipa.gov.cn/gjcx.jsp

HK

Hong Kong

https://esearch.ipd.gov.hk/nis-pos-view/pt#/advancedsearch

IN

India

http://ipindiaservices.gov.in/PublicSearch/PublicationSearch/ Eregister

KR

South Korea

http://engpat.kipris.or.kr/engpat/searchLogina.do? next=MainSearch

MY

Malaysia

http://www.myipo.gov.my/en/search-patent/?lang=en

PH

Philippines

http://onlineservices.ipophil.gov.ph/wopublish-search/public/patents

SG

Singapore

https://www.ip.sg/RPS/WP/CM/SearchSimple/IP.aspx? SearchCategory=PT

TW

Taiwan

http://twpat.tipo.gov.tw/

VN

Vietnam

http://iplib.noip.gov.vn/WebUI/WSearchPAT.php

Multi-country sources

519

The register at the IPO Philippines is of particular interest, in that it uses the WIPO-PUBLISH software infrastructure, which is one part of the technical support suite which WIPO provides to smaller developing patent offices. As more offices start to use this, it is possible that national registers will begin to present a more harmonised “look and feel” to third party users. In all cases when dealing with Asian information, the user is recommended to consult the EPO’s Asian information pages11, for the latest releases of its guide sheets. These consist of screensnaps from national language websites, with English annotations, which greatly facilitate access to detailed content of these registers and file inspection facilities.

Multi-country sources INPADOC-PRS For many years, the legal status module of INPADOC, the Patent Register Service or PRS, formed the principal electronic search tool for global legal status. It remains very important today, since it offers a facility to search across patent families and/or large numbers of documents very quickly. This is generally much more complex to do in national patent office systems, which are more designed for one-by-one interrogation. Where INPADOC-PRS has been loaded on a commercial host alongside other bibliographic patent databases, it is possible for a searcher to run a subject or assignee search in the bibliographic file, and to cross the large numbers of documents found into the legal status file in one operation, to check on validity, lapse and so on. The legal status information in INPADOC is historically sourced solely from national patent office gazettes, and codified into standard “events”, although some content is now retrieved directly from national registers and may be associated with a pre-existing national event code. Both the national and INPADOC event codes and the corresponding explanatory text are then entered as discrete sub-fields linked to the bibliographic record of the patent to which they belong. For example, the INPADOC PRS data, as viewed in Espacenet, for GB 2200000-B includes the following event: Event Date: Event Indicator: Category: Event description: Effective Date:

1993-09-15 PCNP H: IP right cessation Patent ceased through non-payment of renewal fee 1993-01-16

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Chapter 16 Sources for legal status searching

The event date (previously referred to as the PRS date) is the date on which the information entered the database, whilst the effective date is the date on which the action or legal event became effective. In this instance, the difference in dates is accounted for by the UK practice; announcements about patent expiry do not appear in the UK gazette until after the time interval for restoration has passed, hence an announcement in a gazette of September 1993 that a patent has been ceased since the preceding January. It is not unusual for legal status information to be retro-active in this way, and it is important that users should be familiar with local legislation and practices before interpreting the output from any legal status database. Some of the factors concerned have been described by Adams12. The Event indicator (formerly the PRS code) in the example above enables the searcher to pinpoint specific actions and to search for them in their own right, rather than checking case-by-case using patent number as the search key. In a commercial host, it would be possible, for example, to construct a strategy to retrieve all GB cases which had ceased through non-payment of renewal fee during a given year. The codes are unique to each country, in that a code describing an event in one country may be totally different to the code describing the nearest corresponding event in a second country. Detailed explanatory sheets for the meaning of each code (of which there were some 3,000 from 50+ countries) have never been prepared, so in some instances it is very complex to understand the individual events or sequence of events without referring back to the original gazette issue and/or consulting local associates familiar with the national law and procedure. The complexity of the scheme has led to a number of attempts in the private sector to create more user-friendly clusters of equivalent events, or even so-called “traffic light” indicators, to assist in the understanding of this data. After intensive lobbying by industry user groups, WIPO’s Committee on WIPO Standards (CWS) started a project to create a new set of recommendations on the capture, storage and exchange of patent legal status data, which led eventually to the first release of WIPO Standard ST.27, mentioned previously1. The coverage of the PRS service in INPADOC began to expand substantially in recent years, due in part to the growing importance of PCT information. As the PCT system has become a more popular method for both small and large applicants to enter the patent processing stream, it has become more important to be able to monitor the fate of such applications. Specifically, it is useful to be able to monitor whether an applicant has in fact entered the national (or regional) phase, especially since the list of designated states on the front page of a WO-A publication is no longer indicative of intent to enter national phase. It is arguable that it is even more important to be aware of non-entry to the national phase. When the applicant has made a decision not to pursue national patent protection in a given

Multi-country sources

521

country via the PCT route, then the information in the international patent application is, in effect, public goods in these territories, since no patent will be granted there (unless the applicant is simultaneously seeking protection via the Paris Convention route). During the 1990s, the EPO was charged by WIPO to initiate a project to collect PCT entry and non-entry data for as many countries as possible, and to include this in the INPADOC-PRS data set. Progress was made in the case of a number of larger countries, but virtually none proved able to supply consistent non-entry data (some exceptions were Australia, Canada, Germany, Japan and South Korea). Later attempts to improve data supply were boosted by an amendment to the PCT Regulations in 2017, which requires designated offices to inform the International Bureau of the entry into national phase within 2 months of it taking place13. The early evidence suggests that the number of offices providing this national entry data has risen from approximately 15 to just over 30 in the first few years after the rule change14, although this is still far from a complete set, given that the maximum possible number of reporting offices could be over 120 (allowing for EPO member states which do not accept national designation under the PCT but only via the EPO). A further expansion of PRS data has taken place with the inclusion of SPC (or equivalent pharmaceutical term extension) information from a number of countries. Table 16.2 contains a summary of the INPADOC and PatentScope legal status country coverage as of 2020. Note that this does not distinguish those countries for which both patent and utility model legal status is provided, and that in some cases an entry in the third column refers to data on the validation of European Patents designating that country, not for the national patent system itself. As with other tables of coverage in this book, users are reminded that the presence of a given start year in Table 16.2 does not take account of data gaps or delays; it is only indicative of the presence of some data from that year. The only exception to this rule is a few instances where a small amount of older national gazette data has been loaded (perhaps as trial material or from archival records), followed by a substantial gap before the commencement of consistent data feed; in those cases, the start year of consistent coverage is given. One example is Germany, where there are small amounts of data from 1971 and 1973 in the INPADOC file, before regular data flow started in 1978. Users should also note that content of these files may be expanded by adding older material as well as continuing frontfile loading; it is always advisable to check with the producers to obtain current content information.

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Chapter 16 Sources for legal status searching

Table 16.2: INPADOC PRS and PatentScope legal status coverage (2020). Country Country code

INPADOC-PRS

WIPO PatentScope

First(-last) year of national legal status or EP validation data

PCT national phase entry data (EPO or WIPO sourced)

SPC or equivalent data

PCT national phase entry data (Start yearYear to date)†

AE

United Arab Emirates

–

Yes

No

–

AM

Armenia

–

Yes

No

–

AO

Angola

AP

ARIPO

–

Yes

No

–

AR

Argentina



n/a

No

n/a

AT

Austria



Yes

Yes

–

AU

Australia



Yes

Yes

–

AZ

Azerbaijan

–

No

No

–

BE

Belgium



No

Yes

BG

Bulgaria

–

Yes

No

BR

Brazil



Yes

No

BY

Belarus*



Yes

No

–

BZ

Belize*



Yes

No

–

CA

Canada



Yes

No

–

CH

Switzerland



Yes

Yes

–

CL

Chile*



No

No

–

CN

China



Yes

No

–

CO

Colombia



Yes

No

–

CR

Costa Rica



Yes

No

–

CS

Czechoslovakia# 

–

–

CU

Cuba



Yes

No

–

CZ

Czechia



Yes

No

–

–

–

Multi-country sources

523

Table 16.2 (continued ) Country Country code

INPADOC-PRS

WIPO PatentScope

First(-last) year of national legal status or EP validation data

PCT national phase entry data (EPO or WIPO sourced)

SPC or equivalent data

PCT national phase entry data (Start yearYear to date)†

DD

East Germany

–

No

No

DE

Germany



Yes

Yes

–

DK

Denmark



Yes

Yes

–

DZ

Algeria

–

Yes

No

–

EA

Eurasian Patent Organisation



Yes

No

–

EC

Ecuador

EE

Estonia



No

Yes

–

EG

Egypt*



Yes

–

–

EP

EPO



Yes

No

–

ES

Spain



Yes

Yes

–

FI

Finland



Yes

Yes

–

FR

France



No

Yes

GB

United Kingdom 

Yes

Yes

–

GE

Georgia

–

Yes

No

–

GR

Greece



No

No

HK

Hong Kong



No

No

HR

Croatia



Yes

No

–

HU

Hungary



Yes

Yes

–

ID

Indonesia

–

Yes

No

–

IE

Ireland



No

Yes

IL

Israel



Yes

Yes

–

IN

India

–

Yes

No

–

–

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Chapter 16 Sources for legal status searching

Table 16.2 (continued ) Country Country code

INPADOC-PRS

WIPO PatentScope

First(-last) year of national legal status or EP validation data

PCT national phase entry data (EPO or WIPO sourced)

SPC or equivalent data

PCT national phase entry data (Start yearYear to date)†

–

Yes

No

–

IR

Iran

IS

Iceland

IT

Italy

JO

Jordan

JP

Japan



Yes

Yes

–

KE

Kenya

–

Yes

No

–

KG

Kyrgyzstan

–

Yes

No

–

KH

Cambodia

–

Yes

No

–

KR

South Korea



Yes

No

–

KZ

Kazakhstan

–

Yes

No

–

LT

Lithuania



Yes

Yes

–

LU

Luxembourg



No

Yes

LV

Latvia

–

Yes

No

–

MA

Morocco



Yes

No

–

MC

Monaco

–

No

No

MD

Moldova



Yes

No

MG

Madagascar

MX

Mexico



Yes

No

–

MY

Malaysia*

–

Yes

No

–

MZ

Mozambique

NI

Nicaragua

–

Yes

No

NL

Netherlands



No

Yes

NO

Norway



No

Yes

– 

No

Yes –

– –

– –

–

Multi-country sources

525

Table 16.2 (continued ) Country Country code

INPADOC-PRS

WIPO PatentScope

First(-last) year of national legal status or EP validation data

PCT national phase entry data (EPO or WIPO sourced)

SPC or equivalent data

PCT national phase entry data (Start yearYear to date)†

NZ

New Zealand



Yes

No

–

PE

Peru



Yes

No

–

PH

Philippines

–

Yes

No

–

PL

Poland



Yes

Yes

–

PT

Portugal



No

No

RO

Romania



Yes

Yes

–

RS

Serbia

–

Yes

No

–

RU

Russian Federation



Yes

Yes

–

SA

Saudi Arabia

–

Yes

No

–

SE

Sweden



Yes

Yes

–

SG

Singapore

–

Yes

No

–

SI

Slovenia



Yes

No

–

SK

Slovakia



Yes

Yes

–

SV

El Salvador



No

No

TH

Thailand

-

Yes

No

–

TR

Turkey

–

Yes

No

–

TW

Taiwan



n/a

No

n/a

UA

Ukraine

–

Yes

No

–

US

United States



Yes

Yes

–

UY

Uruguay



n/a

No

n/a

UZ

Uzbekistan

–

Yes

No

–

VN

Vietnam

–

Yes

No

–

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Chapter 16 Sources for legal status searching

Table 16.2 (continued ) Country Country code

INPADOC-PRS

WIPO PatentScope

First(-last) year of national legal status or EP validation data

PCT national phase entry data (EPO or WIPO sourced)

SPC or equivalent data

PCT national phase entry data (Start yearYear to date)†

YU

Serbia & Montenegro

–

Yes

No

–

WO

PCT



n/a

n/a

n/a

ZA

South Africa*

–

Yes

No

–

* due to problems with data supply, these countries are no longer listed as being covered by the INPADOC service. # Data relating to legal status in Czechia (including lapse, in force or pending) of applications filed before the 1993 dissolution of Czechoslovakia. † The Year to Date is included in order to give users an indication of which authorities are providing the data in a timely and/or ongoing manner; consult https://patentscope.wipo.int/ search/en/nationalphase.jsf for current data on national phase entry information in PatentScope.

WIPO PatentScope The PatentScope service did not originally contain information about the national/regional phases of a PCT application, and very little information about the documents lodged or exchanged during the international phase. However, in the last few years the system has expanded very rapidly. In particular, agreements have been concluded with many national and regional patent authorities to include their national phase entry data into PatentScope. Table 16.2 indicates the coverage, as of 2020, in comparison with PRS coverage for the same countries; note that PRS data will usually also include legal status of national patent applications which are not derived from the PCT. In addition to national phase entry data, the PatentScope service in recent years has included information about documents generated during the international phase, including priority documents, claims to priority, amended claims, international search reports and the various non-binding opinions delivered by the ISA/IPEA during the Chapter I or Chapter II procedures. Where available, the National Phase tab of a PatentScope record for a PCT international application

Multi-country sources

527

includes mention of any national application numbers allocated after national phase entry, and some links directly to the appropriate national register records.

OPD / WIPO-CASE / Global Dossier One further development in the integration of bibliographic and legal status sources has come in the form of the Open Portal Dossier (OPD) project, initiated by the IP5 patent offices. In 2012, the heads of the IP5 agreed to start work on linking together the official work dossiers of each authority (CNIPA, EPO, JPO, KIPO and USPTO) to assist work-sharing on cases which had been filed in at least two of the five organisations. The first linkages were achieved in 2014, between China and the EPO, and the system was progressively rolled out to cover the other offices by mid-2015. Initially the linkages were between official registers to share work on the examination of equivalent filings, but it soon became extended to public bibliographic services as well, notably via Espacenet15. Once the IP5 dossiers were linked, examiners and public are able to view machine translations of the dossiers of any of the other four countries, starting from the dossier of a given application in one member of the group. Having established this principle, the WIPO-CASE system also began to be linked into the IP5’s system, paving the way for many more countries to share information. The first additions via WIPO-CASE were PCT dossiers and those from Canada and Australia. Public access is limited to only those cases which have been published unexamined, but examiners are also able to view unpublished applications and those in substantive examination. WIPO-CASE data is viewable via a PatentScope record for a corresponding PCT application. Although the 5-way linkage of the OPD is now complete in terms of technical aims, the coverage available from the different offices is not, at the time of writing, exactly compatible. Public users can view all of the contents of the EPO Register (for applications filed on or after 1st June 1978 and which have been published unexamined), but the other offices vary somewhat in availability (Table 16.3). The consequence of this is that some public links may be “dead”, in that a corresponding dossier exists in the other authority but has not (yet) been included in the coverage of the OPD. Figure 16.5 shows the USPTO’s Global Dossier record for a PCT application which has been granted in four of the five IP5 offices, highlighting the publication numbers for each case.

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Table 16.3: Content of the Global Dossier system. Authority

Document types

Public access (after first publication)

Examiner access (all cases)

CNIPA

Patent applications

.

.

JPO

Patent and utility model applications

.

 (national filings)  (PCT national phase)

KIPO

Patent and utility model applications

.

.

USPTO

Patent applications

.

.

Figure 16.5: Global Dossier record via the USPTO (WO 2011/129660).

Third-party sources Bibliographic databases Consideration so far has been given to sources of information on how a given application is progressing through the various stages of application and towards

Third-party sources

529

grant, plus any post-grant activities which are still within the jurisdiction of the patent-granting authority (such as post-grant oppositions or maintenance fee payments). Such data are relatively easy to compile into existing database structures, via the application or publication numbers, or to be made accessible via electronic links into official registers. Examples of dedicated databases include: the IFI Current Patent Legal Status file of US patents (loaded on STN as the IFICLS file and the IFI CLAIMS ® /US Patents and Legal Status file on Proquest Dialog), covering such matters as certificates of correction, reassignment, reexamination requests and certificates, term extensions, expiry due to non-payment of fees, reinstatements, reissue requests, adverse decisions on interference actions, and disclaimer/ dedication data; the defunct Patolis-e service, which covered both Japanese patents from 1955 and utility models from 1960; and the bibliographic files from France, Germany and Russia, which included some data integrated with the basic bibliographic records. However, as increasing numbers of search service providers are now adding hyperlinks to their document records, the need to import the data and create enriched bibliographic files is much reduced. The addition of live links has the advantage of providing the user with access to the most up-to-date authoritative legal status data, without the time-lags inherent in data compilations. The apparently simple question of “When will this patent expire?” has been made much more complex in recent years, often as a result of different patent offices changing their statutory term and also making provision for administrative term adjustments and subject-matter term extensions. Searchers need to be aware of these pitfalls, which vary between jurisdictions. A good review of the complexity of the US situation appears in the paper by Clark et al.16. The IMS database Patent Focus (available on Proquest Dialog) has extensive pharmaceutical SPC data for multiple countries, and the PATDPASPC file on STN is dedicated to German pharmaceutical and agrochemical term extensions since the beginning of the EU SPC regime in 1992. Other printed directories, such as the Patolis Corporation’s publication “Extended pharmaceutical patents” (Japan-only from 1988) and the much older Derwent “Guide to Patent Expiries” (listing of statutory patent terms and extension availability for the countries covered by DWPI) have been discontinued. An early paper by Snow17 is still a useful reminder that some non-patent databases can yield useful information in this area.

Court data Once a patent has moved out of the jurisdiction of the national granting authority, there may be a need to monitor other sources of information in order to

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establish whether the rights as originally granted are still in force, completely or partially. Intellectual property lawsuits may result in revocation or partial nullity of a patent, and the mechanism for reporting these actions back to the national patent office, for inclusion in their registers, is far from perfect. It is often necessary to approach sources of court data as a totally separate search task. Some providers of bibliographic patent information have attempted to collate litigation data into a more familiar database format, to facilitate these searches. Clarivate is the owner of one such database for US litigation, Litalert®, which is licensed to established data providers such as STN, Proquest Dialog and Questel, and to specialist legal information suppliers such as Westlaw and Lexis-Nexis. Litalert contains records of patent lawsuits filed in the US District Courts since 1973. The record structure is usually fairly brief, but searching by patent number is allowed, and this can provide sufficient court data (such as a docket number) to allow retrieval of more information via the US court system. Competition (and a degree of complementarity) for Litalert comes from the (partly-free) service called PACER, which the US government has made available for searching District Court docket filings and related documentation. However, one of the shortcomings of PACER is that the patent in suit may not be recorded explicitly (in the form of the application or publication number) when the docket is filed, and there is a risk that relevant information will be missed if this service is relied upon. A comparison by Matula18 graphically illustrated the hazards of reliance upon a single source for patent litigation information in the US courts; in his example, Litalert, Lexis-Nexis Courtlink and the Westlaw Court Express service all found different results (1–3, 5 and 4 respectively) when searching for US court dockets relating to the same patent number over the same period of search activity. Apart from the USA, reliable court data on patent litigation is rarely compiled at the national level. Users will generally need to become familiar with which courts have jurisdiction in patent cases in the country or countries of interest, and identify whether the courts concerned have an established mechanism to publish their case diaries and judgements. The most prominent tool for searching across global patent litigation is Darts-IP (www.darts-ip.com/), which was acquired by Clarivate Analytics in late 2019. The service compiles IP case data from over 3,000 different courts in some 140 countries19, including proceedings of the EPO’s Boards of Appeal. It remains to be seen whether Darts-IP will continue to operate as a separate service or be fully integrated with Clarivate’s other search tools. Looking ahead, the operating practices of the EU’s proposed Unified Patent

References

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Court appear to be much more amenable to electronic publication and datasharing than older courts, and it seems reasonable to suppose that its decisions will feed into the EPO Register and also be collated into other search sources, in a timely fashion.

References 1 WIPO (2019). Recommendation for the exchange of patent legal status data. WIPO Standard ST.27 (revised version approved 5th July 2019, published September 2019). Geneva: WIPO. 2 WIPO (2020.04.21). Country profiles. www.wipo.int. Retrieved from www.wipo.int/directory/ en/. 3 WIPO (2020.04.21). Patent Register Portal. www.wipo.int. Retrieved from www.wipo.int/pat ent_register_portal/en/index.html. 4 WON (2020.04.21). Public Patent Information Sources. WON-NL. Retrieved from www.wonnl.org/content/open/en/patinf. 5 Oppedahl, C. (2004). Getting the most out of free databases at the USPTO. In Proc. PIUG Annual Conference 2004. Baltimore, Maryland (22nd–27th May 2004). Unpublished. 6 Simmons, E.S., Spahl, B.D. (2000). Of submarines and interference: legal status changes following citation of an earlier US patent or patent application under 35 USC §102 (e). World Patent Information 22(3), 191–203. 7 Rogier, V. (2005). epoline ®: Register Plus and Online Filing update. World Patent Information, 27(3), 251–256. 8 Rogier, V. (2007). epoline ®: Developments in online filing, Register Plus, and WebRegMT; e-learning tutorials; and usage statistics. World Patent Information 29(1), 54–60. 9 Sánchez García, Y. (2019.10.30). News on the European Patent Register – it happened because of you. EPO Patent Information Conference 2019, Bucharest, Romania, 28th–31st October 2019. Retrieved from https://www.epo.org/learning-events/events/conferences/2019/pi-conference /programme.html. 10 EPO (2019). European Patent Register Resource Book, (version 6.0, 4th November 2019). Retrieved from https://www.epo.org/searching-for-patents/legal/register.html. 11 EPO (2019.04.21). Asian patent information. EPO. Retrieved from www.epo.org/searchingfor-patents/helpful-resources/asian.html 12 Adams, S. (2002). A short examination of the timeliness and accuracy of United Kingdom patent legal status data sources. World Patent Information 24(3), 203–209. 13 WIPO (2017). Information concerning events at the Designated and Elected Offices. Rule 95.1(i). Regulations under the Patent Cooperation Treaty. (entered into force 1st July 2017). 14 WIPO (2018). Information concerning national phase entry. Document PCT/WG/11/10 (8th May 2018). PCT Working Group, 11th session, 18th–22nd June 2018, Geneva. 15 IP 5 (2020.04.23). IP5 File wrapper. FiveIPOffices.org. Retrieved from https://www.fiveipoffi ces.org/activities/globaldossier/filewrapper. 16 Clark, A.M., Berven, H. (2004). The face of the patent is not the whole story: determining effective patent life of a pharmaceutical patent in the United States. World Patent Information 26(4), 283–295.

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17 Snow, B. (1994). Drug patent extension information online: monitoring post-approval regulatory developments. Online 18(4), 95–100. 18 Matula, R.A. (2008). Searching for patent litigation. In American Assn. Law Librarians Annual Meeting 2008, Portland OR, 15th July 2008. Paper H5 (unpublished). 19 Darts IP (2020.04.23). Patent Cases Collection Coverage. Darts-IP. Retrieved from www. darts-ip.com/ip-cases-database/case-law-database-patent/patent-coverage/.

Chapter 17 Commercial intelligence search and analysis State-of-the-art searches The function of a state-of-the-art search is to provide a broad overview of a defined field of technology. A principal purpose behind such a search is to enable a company which may be contemplating entry to a new technical field to understand who are the major competitors or manufacturers, and what are the key technologies in the field. For this reason, this search type may also be referred to as a “technology overview” search. The results of such a search may assist a company in identifying gaps in the field which it may be able to exploit. At the other extreme, the search may show that the sector is already very crowded or competitive, or the technology is far removed from the company’s existing skill base, which may deter the putative entrant from making the investment at all. An intermediate result would perhaps be to show that some gaps still exist, which can be exploited with a judicious combination of new research and joint ventures with identified experts in the sector. Whatever the outcome, the stateof-the-art search is a prime example of where patent information can be used to prevent wasteful duplication of research. In recent years, the techniques of state-of-the-art searching have become much more extended, into different forms of analysis. New user groups have become much more active in the selection and analysis of bulk patent-related data, for the purpose of economic and financial assessments, tracking of innovation opportunities, valuation of patent portfolios and more. More patent offices are beginning to make their data available for open linking, or “big data” integration with other data sets. These new users need to be educated about the peculiarities of patent data before intelligent analyses can be conducted, and meaningful conclusions drawn. The fundamental requirements for a good state-of-the-art search have much in common with a patentability search i.e. understanding the question and motivation, or the technology focus of the request. However, whereas a patentability search is conducted when one has a specific invention already in mind, the searcher conducting a state-of-the-art search is more concerned with larger trends, at the industry, national or global level rather than the invention level. For example, instead of searching for references which might anticipate our new intermittent windscreen wiper mechanism, we wish now to review the whole field of automobile controls and actuators. As a consequence of this approach, we can approach a state-of-the-art search by using a broader-based subject strategy, https://doi.org/10.1515/9783110552263-017

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incorporating indexing features such as Derwent Class Codes, Chemical Abstracts section codes or even IPC to the sub-class level. Databases with proprietary indexing can be particularly useful here, as they are often designed with up-posting (collation of detailed subject indexing into broader clusters) in mind; the public classifications such as IPC and CPC can, paradoxically, be more difficult to use when generating a broad search, since the concept behind such systems is usually to apply the most detailed mark available, and up-posting may be more labour-intensive. A second decision when preparing a state-of-the-art search concerns multicountry coverage, based on an understanding of the market focus of the requester. If the client requesting the search has already made decisions about their geographic scope of interest, such as where they plan to manufacture and/or sell any products arising out of its new venture, then added care should be taken to ensure that the intellectual property in force in those specific territories is identified. At the other extreme, if the review is intended to focus on one country, a good initial view of the technological landscape can be obtained by searching in single-country databases. However, it should always be borne in mind that, once a research programme has started to generate potentially patentable new inventions, any patentability searches will need to be done in the light of the local definition of prior art – which will probably be universal. A thorough state-of-the-art search can initially be conducted in patent databases, but should ideally be supplemented by a range of business sector assessments derived from other sources. Non-patent literature such as market reports, company annual reports, press releases from individual companies, sector analysts or trade associations, financial returns and so on, can add further details, especially late-breaking technical developments which may be buried in the 18month “black hole” between patent filing and early publication. The searcher should never forget that patents can only indicate one aspect of the overall shape of a market sector. It is not unknown for market leaders to hold relatively few, or no, patents in their own name, but to exert their influence through patents licenced from other companies, or by effective use of trade secrets and other nonpatented know-how. At the very least, conducting some corresponding searches in the non-patent literature should be able to provide a degree of confirmation of the picture revealed by the patents. If the findings of the two searches appear to contradict one another, then further review of the situation is indicated. Traditionally, the scope of a state-of-the-art search was ultimately limited by the amount of information which the customer could absorb and make sense of. It was often recommended that the search should include good access to the complete texts of any patents identified, to enable a judgement to be made on their importance. This still holds true for small to medium-scale studies.

Patent analysis tools and techniques

535

If the search enables one or more seminal texts to be identified, these may serve as a shortcut to the user’s objective; the preamble to such patents can often be in the form of mini-reviews, and help competing companies to gain a good overall picture of the technical field relatively rapidly.

Patent analysis tools and techniques In recent years it has become more accepted that a state-of-the-art search can be reviewed without having actually to read all the patents. An entirely new field of data visualisation techniques has grown up, ranging from simple frequency rankings to sophisticated mapping and linking software. Whilst it is not recommended that the sales pitch of “You will never have to read another patent” can be taken at face value, these aids can certainly accelerate the understanding of a large set of data. One of the motivations behind the development of software to post-process patent search results has been simply the ever-increasing numbers of results obtained from even the most tightly constrained search strategy. If a search listing succeeds only in overwhelming the customer with a mass of indigestible data, it serves no real purpose, and cannot assist in the decision-making process. As a result, many software packages have been developed which seek to assist the user to make sense of the mass of information. This can sometimes be achieved by a simple spreadsheet-style ranking of assignee or inventor data, display of time-based graphs of numbers of applications against year of filing, or similar. Some tools are being built into the retrieval suite itself, such as the colour maps of hit-term highlighting found in PatBase and similar products. Analysis tools can be broken down into a number of types. Some tools produce relatively simple “snap-shot” analyses and rely upon pre-formatted or fielded information which is imported into a display application. The interpretation of such displays still relies upon human screening, so are probably best suited to handling answer sets in the hundreds rather than thousands. One such example is the SmartCharts product from Biz-Int Solutions (www.bizint.com), which provides an Excel-like output for rapid screening of search results; recent versions have more sophisticated functions enabling a user to merge results from different sources into a single display. Similar visualisation tools are now built into newer versions of the STN search service. Other producers include Invention Navigator from SIP GmbH (www.patentfamily.com), IPDiscover from KPN Consulting (www.ipdis cover.com, latest release 2017A) and MatheoPatent (www.matheo-software.com). The latter two tools are optimised to use free-of-charge sources such as Espacenet or the USPTO’s free search files.

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The use of more complex tools and applications – often referred to as patinformatics – takes the user beyond the need to handle the output from a restricted search, and are much more focussed on analysing an industry-wide or global survey, using tens or hundreds of thousands of documents. These may be termed patent landscapes, and often deploy a variety of data visualisation methods. There is a tendency at this scale to move away from analysing fielded data, and more towards mining of the raw text of the patent specifications. More advanced tools enable the user to create not only a one-off visualisation of a static set of search results, but to also integrate later results to provide an ongoing monitoring for trends in the selected technical field. With either type of tool – small or large scale, fielded or unfielded data – the validity of the results depends in equal part upon the accuracy of the initial search and the application of the analysis stage. For this reason, it is good practice to ensure that the source(s) of data underlying the analysis are thoroughly understood before offering an interpretation of the output. Some of the current range of tools are listed in Table 17.1. The Table cannot be exhaustive, due to the fast moving nature of the industry; even since the last edition of this book, many software applications and/or their companies of origin have been born, died or taken over. Since the intended scope of this book is to concentrate on the content of patent databases, rather than the tools used to search and analyse them, space does not permit for a detailed survey of these products. It is clear that it is becoming harder to distinguish between artificial intelligence applications designed to help in conducting a search, and computer-based or AIbased analyses of the resulting data sets. It should be noted, however, that the market still supports a mixture of products, some of which can import data from multiple sources and others which are integrated into a search platform and can only thus operate on the data available from that same source; examples include Derwent Innovation, Minesoft’s PatBase and CAMBIA’s The Lens. Recommended reading are two foundational papers and a later WIPOsponsored study by Trippe1, 2, 3 and the ACS symposium which he organised, which contained a range of useful papers4. One of the problems of dealing with these topics is that very few industrybased users have published realistic case studies to show the efficacy of the tools, although one comparative study by Yang et al. was published in 20085 and the same team at Bristol-Myers Squibb has also published later work concentrating on specific aspects of analysis6, 7. Much in-house research focuses on whether to invest in the software, in order to gain commercial advantage in the company’s usage of patent information, so users are reluctant to go into print concerning how useful the tools have been. The result is a large supply of anecdotal evidence with little objective assessment, either of the tool in isolation or of its performance

Patent analysis tools and techniques

Table 17.1: Patent analysis, visualisation and AI-assisted search tools. Software

Supplier

AcclaimIP

Anaqua (US)

AmberScope

AmberCite Ai (AU)

AnaVist

STN International (DE)

Elementary IP

elementaryip.com (US)

GoldFire

Invention Machine / IHS Markit (US)

Innography

CPA Global (JE)

InnovationQ

IP.com (US)

Intellixir

Questel (FR)

IP Advantage / See-The-Forest

IPVision, Inc. (US)

IPIntellisource

Wisdomain (KR)

M.CAM DOORS

M.CAM International (US)

Matheo Patent

Matheo Software (FR)

OpenRefine

OpenRefine.org / GitHub, Inc. (US)

PatAnalyse

PatAnalyse (GB)

Patent Insight

GridLogics (IN)

Patent Intelligence AI

ClearAccessIP (US)

PatSnap

PatSnap.com (SG)

Relecura

Relecura Technologies Pvt. Ltd. (IN)

SmartCharts

Biz-Int Solutions (US)

Spotfire

TIBCO (US)

TEMIS

Expert System SpA (IT)

TeqMine

TeqMine Analytics (FI)

Treparel

EvalueServe / KMX Patent Analytics (IN)

VantagePoint

Search Technologies (US)

537

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opposite equivalent tools. To a large extent, we still do not know whether the maps, diagrams or spreadsheets produced by these packages are an accurate reflection of commercial life or contain artefacts of the process of their creation. However, it is clear that the ability to bring some semblance of order to a mass of information has attractions for hard-pressed industry information departments, and development of these and many more tools will continue. Some insight into the impact which this will have upon the work of the patent information specialist can be found in the paper by Pargaonkar8.

References 1 Trippe, A.J. (2002). Patinformatics: identifying haystacks from space. Searcher 10(9), 28–41. 2 Trippe, A.J. (2003). Patinformatics: tasks to tools. World Patent Information 25(3), 211–221 and refs. therein. 3 Trippe, A.J. (2015). Guidelines for preparing patent landscape reports. WIPO Publication 946E. Geneva: WIPO. 4 Trippe, A.J. (Chair) (2001). Technical Intelligence. Chemical Information (CINF) Division Symposium, 221st National Meeting, American Chemical Society (San Diego, CA, 3rd-4th April 2001). Paper Nos. CINF 34–37, 45–48, 57–62, 71–74. 5 Yang, Y.Y., Akers, L., Klose, T., Barcelon Yang, C. (2008). Text mining and visualization tools – impressions of emerging capabilities. World Patent Information 30(4), 280–293. 6 Yang, Y.Y., Akers, L., Barcelon Yang, C., Klose, T., Pavlek, S. (2010). Enhancing patent landscape analysis with visualization output. World Patent Information 32(3), 203–220. 7 Yang, Y.Y., Klose, T., Lippy, J., Barcelon-Yang, C.S., Zhang, L. (2014). Leveraging text analytics in patent analysis to empower business decisions - a competitive differentiation of kinase assay technology platforms by I2E text mining software. World Patent Information 39, 24–34. 8 Pargaonkar, Y.R. (2016). Leveraging patent landscape analysis and IP competitive intelligence for competitive advantage. World Patent Information 45, 10–20.

Chapter 18 Specialist techniques Citations One of the earliest products to tackle patent citation searching was from the IFI Claims ® organisation, and maintained as the CLAIMS/Citation files on ProQuest Dialog. These databases provided the means to follow examiner-cited references published on granted US patents from 1947 (backward and forward citations). The first published US patent with this reference listing appears to have been US 2415068 of 4th February 1947 – the start date was dictated by the USPTO’s policy change the previous year1. The later development of internet websites, with their built-in facility for relating documents by means of a hyperlink, have accelerated the use of citations (both forward and back) in document searching generally, and patent searching is no exception. The principles of citation searching in the scientific literature were formalised by Eugene Garfield2 of the Institute of Scientific Information (ISI), although the technique had been well recognised in legal circles for many years. The background has been described by Weinstock3. Garfield’s work led to the development of the Science Citation Index ® and similar products in the social sciences and arts & humanities. The basic tenet of this form of search is that later articles which cite an item of known relevance will probably also have some subject-matter link with the earlier article. A more sophisticated approach is to use multiple forward citations, to locate further literature which also cites at least one of the items from the known article’s bibliography. The more items from their common bibliographies that the two articles have in common, the stronger the supposed link between them. This is known as bibliographic coupling, and was first discussed in the information science literature by Kessler in the 1960s4, 5. Garfield’s early work also included some application of the technique to patents6. However, in applying this principle to patent documents, there are two additional challenges. The first is a subjective assessment of the validity of the citation principle. When applied to journal literature, it is established practice for authors systematically to cite the earlier foundational articles from which their work has grown. In other words, the bibliography of a journal article is taken to be reasonably complete and thorough in its content, without bias for or against other works which pre-date the current one. However, the problem of applying this principle to patents is that patent search reports are not https://doi.org/10.1515/9783110552263-018

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intended to be systematic bibliographies of all relevant preceding work. In the case of a search report appended to an unexamined patent application, it contains items which in the opinion of the examiner present the most significant barriers to patentability – in other words, the list may contain one or more items of “knock-out” prior art which will, in due course, prevent the application reaching the status of a patent. There is no attempt to compile a systematic review of all previous work, only those items which damage the chances of the current application being granted. Consequently, a patent search report may well fail to cite one or more pieces of significant earlier work, simply because they do not bear directly upon whether the current application is patentable. The assumption behind using citations in patents is further distorted if the search report is from a granted patent only, not an unexamined application. Under these circumstances, the items in the list, used as search terms to locate further art, are by definition pieces of prior art which failed to prevent patentability of the current case. This is a particular problem with the lists of “References Cited” from US grants, which are largely derived from the Information Disclosure Statement provided by the applicant since 19927. These lists are framed very much with the applicant’s duty of candour in mind, and consequently tend to err on the side of generosity, to put it mildly. It is arguable, then, that any single citation selected from a US listing is likely to be a more tenuous link to earlier work than one from an examineronly listing. Following up these citations (backward or forwards) is then more likely to lead a searcher away from the subject matter contained in the current invention, rather than closer towards it. The second challenge is the issue of patent families and citation practice. The paper by Michel et al.8 shows clearly that each national patent office tends to favour citing documents from its own national collections i.e. the USPTO will preferentially cite US documents, the JPO will cite JP and so on. This is probably a reflection of the order in which document collections are searched, plus other factors. Whatever the exact reason, the implication for citation searching is that two patent documents may well cite the same invention but in the form of different family members. It is precisely this issue which DPCI was established to solve, by utilising the family structure of DWPI. The DPCI (Derwent Patent Citation Index) from Clarivate is a companion file to the DWPI file, loaded on STN International, and enables an unambiguous family-to-family citation link to be explored. A similar, free-of-charge service comes in the form of the Common Citation Document (CCD) database (http://ccd.fiveipoffices.org/), a project initiated by the IP5 patent offices to collate the official search reports from equivalent applications across all five authorities, although these links are still document-document rather than family-family. A user handbook for the CCD has been produced by the EPO9. The Australian-based service provider AmberCite has developed the AmberScope

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541

search tool (www.ambercite.com), which incorporates many more citation links in its algorithms, over more than one generation of citing/cited patents, to enhance retrieval of bibliographic data. Techniques for clustering of similar documents by means of citations-in-common has also been explored, using some of the principles first described by Small10. Since the advent of web-based search systems, the use of the hyperlink has facilitated the inclusion of a citation search function into many modern tools, but the user still requires a background knowledge of the principles and practice surrounding patent citation before they can obtain optimum results. An extensive discussion of the background to patent citations and their use as a search technique formed the basis of the IPI-ConfEx MasterClass™ held in Seville in 200811.

Patent classification New entrants to patent searching will typically try to apply whatever rules and techniques they have learnt from other search experiences, be that Google or some more sophisticated tool or database. These experiences usually tend to rely heavily on word-based searching and to present the searcher with a selection of the most recent and immediately relevant answers to fulfil the information need. Unfortunately, in patent searching, the legal requirements do not allow this flexibility; they demand that all of the prior publications, from all periods of time, are given equal prominence. To ensure that a greater proportion of the prior art is found, the great majority of searchers will eventually move to supplement their word searching by other means, which often includes classification12. There are a number of extant classification schemes applied to patent documents.

The International Patent Classification and its derivatives The International Patent Classification, or IPC, has been in force since 1968, and is currently employed by over 120 patent offices worldwide. The scheme is administered by WIPO, through the Strasbourg Agreement13. States which have signed this Agreement agree to add IPC classification to their published patent documents, and the classification work is usually carried out within the national patent office concerned. The IPC went through seven periodic revisions after its inception in 1968, at approximately five-year intervals. By the time it had reached the seventh edition

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(in force 2000–2005), it consisted of a hierarchical classification of technology, divided into some 67,300 sub-divisions. One or more classification marks, corresponding to the sub-divisions which best represent the subject matter of the patent, are applied to the application and published on the front page of the corresponding document. The same data are transferred to the electronic bibliographic files, and can be used to create a subject-based strategy for information retrieval. The method of operation of the IPC was substantially revised in 2006, and the so-called Reformed IPC is described in more detail later in this section. Some fundamentals have not been changed as a result of the reform. The basic notation of the IPC reflects the hierarchical structure of the technology tables, in that it is divided into 8 sections (A-H), followed by numeric classes (two digits) and a further single letter for the sub-class. Beyond this, the notation represents main groups (one or two digits) followed by an oblique slash and a variable length numeric sub-group, typically 2–3 digits but sometimes up to 8. Hence a typical mark may be made up in the following manner: Level

Notation

Definition (truncated)

Section

B

Performing operations, transporting

Class

B

Conveying; Packing; Storing; Handling thin or filamentary material

Sub-class BD

Containers for storage or transport of articles or materials, e.g. bags, barrels, bottles, boxes, cans, cartons, crates, drums, jars, tanks, hoppers, forwarding containers; accessories, closures, or fittings therefor; Packaging elements; Packages

Main Group*

BD / Containers having bodies formed in one piece, e.g. by casting metallic material, by moulding plastics, by blowing vitreous material, by throwing ceramic material, by moulding pulped fibrous material, by deep-drawing operations performed on sheet material

Subgroup

BD / Jars, e.g. for preserving foodstuffs

* the main group is always indicated by a /00 notation, whereas the sub-groups are represented by further digits after the “/” character.

A listing of the main classes of the 2018 edition of the IPC can be found at Annex D, for comparison with the CPC (discussed in a later section). With practice, it is possible to utilise the IPC to greatly improve the retrieval of relevant prior art, without relying upon word-based search terms. A variety of tools exist to help the user, including the loading of the all the edition texts, including the current one, on the WIPO website (www.wipo.int/classifications/ ipc/en/). An earlier CD-ROM based tool, IPC:CLASS, also included a feature for

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generating system-specific search strategies for a number of common databases14; the current web-based version achieves a similar result using the IPC Bridge tool. One of the key problems with the IPC was that it was essentially frozen for a five year period between revisions (see Table 18.1). This meant that if the technical field of an invention was particularly fast-moving, it became progressively less easy to classify with any degree of precision, until such time as that part of the scheme was revised to incorporate aspects of the subject matter. This would in itself create significant problems for the searcher, but was exacerbated by the fact that, once bibliographic records including an IPC mark were created (at the time of publication), they also remained frozen in time. Even if newer or more precise marks were introduced by later revisions of the scheme, the document front pages and the corresponding database records remained as under the old version. As a result, the searcher wishing to use the IPC to search back to the theoretical maximum (1968) would have to locate all the relevant marks across each revision period and cumulate them into a single strategy. Although this could be achieved by means of the Revision Concordance Lists, which maintained a permanent record of the changes between editions, it was a timeconsuming process. Table 18.1: IPC revision periods (1968–2005). Edition

Dates in force

First

..–..

Second

..–..

Third

..–..

Fourth

..–..

Fifth

..–..

Sixth

..–..

Seventh

..–..

As a consequence of these shortcomings, the IPC was radically revised effective 1st January 2006, with the launch of the “eighth edition”, or Reformed IPC. The new IPC was split into two distinct schemes (Table 18.2). The Core IPC scheme retained many of the features of the existing IPC, with a three-year revision period, and it was expected that it would be used by smaller patent offices wishing

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Table 18.2: IPC reform and ongoing revisions.

Eighth

Core IPC (editions)

Advanced IPC (revisions)

..–..

..–.. ..–.. ..–.. ..–.. ..–.. ..–..

Ninth

..–..

..–..

(core level abolished)

..–..

Annual revision of single edition from:

. to date

to classify a paper-based collection of documents. The other part, the Advanced IPC, was an all-electronic tool designed to be revised on a much more frequent basis, up to every 3 months, to reflect changing technology. In addition, the back-file problem was addressed by the creation of a new Master Classification Database (MCD), which held the bibliographic records of all patent documents together with their current classification marks, as revised. This effectively broke the link between the classification on the front page of a printed (or PDF) document and the class marks which could be used in an electronic subject matter search. The commercial database producers take a data feed from the MCD to reload any amended marks and keep their records in step with the current structure of the classification. A great deal of information and supporting material on how to use the IPC has been loaded on the WIPO website15, including links to WIPO Standards ST.8 and ST.10/C, showing how the classification is formatted for publication in electronic records and on patent front pages. Unfortunately, as shown by Table 18.2, the dual structure of the IPC could not be retained. Far fewer than expected of the smaller and medium-sized patent offices opted to use the Core level, and the rapid revision period for the Advanced level came to be recognised as too ambitious and not altogether necessary. The paper by Foglia illustrated some of the challenges of using this multi-level reformed IPC for searching16. Accordingly, WIPO decided that the Core level would be abolished effective from 1st January 2011, leaving the Advanced IPC as the single in-force scheme. National patent offices can choose to classify their documents using either the

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full scheme or only to the main group (/00 suffix) level – as before, this reduction in complexity is designed to make the scheme easier to use for those patent offices which are examining a smaller number of cases and not requiring the complexity of the full scheme in their national search files. The impact of this decision is illustrated in Figure 18.1. A patent application was made at the Slovenian patent office on 31st May 2012; this office has chosen to classify its national documents to the IPC main group level only. The Slovenian priority was claimed for a later PCT international application, dated 29th May 2013. Both the priority document and the WO-A pamphlet were subsequently published, as SI 24121-A and WO 2013/18066-A1 respectively. Despite being the same subject matter, the Slovenian national document is classified to the main group level only (G01B 13/00) whilst the PCT document carries the more detailed sub-group (G01B 13/06). Unless both documents are grouped as a family in a search database, the Slovenian document will not be retrievable by searching on the more detailed IPC mark. This factor could be potentially significant in the conduct of a freedom-to-operate search, since users may be tempted to search in national collections only and will need to understand the level of classification applied in that jurisdiction.

Publication SI 24121-A based on application 201200175 (2012.05.31). Classified as G01B 13/00

Publication WO 2013/180666-A claiming priority from SI 201200175. Classified as G01B 13/06

Figure 18.1: Family equivalents classified to different IPC levels.

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The impact of this “re-reform” of the IPC created a certain amount of confusion amongst the professional searching community. One immediate result was that database producers ceased to generate the so-called “roll-up Core” marks when indexing a document which had been classified by the old Advanced scheme, although they still remain as artefacts in some databases. The new system was simpler to administer, and has settled into a regular pattern of annual revision. Each new edition is published some 6 months before it comes into force, which can help both database producers and searchers to prepare for any changes to search strategies or alerting profiles. Despite the size and widespread application of the IPC, some large patent offices progressively found that it was not sufficient for their needs. Both the EPO and the JPO have enhanced the IPC for in-house use. The EPO scheme was called ECLA (European CLAssification), which has now been superseded by the Cooperative Patent Classification (CPC) but at its height consisted of some 130,000 sub-divisions; the Japanese version, the FI (File Index) is still in force and has increased the complexity from some 72,000 in the IPC to over 190,000 sub-divisions. Some aspects of the old ECLA system were carried over into the CPC, which is now the EPO’s sole in-house classification system. These include the dynamic revision process (continual in-house but generally released to the public 2–3 times per year) and the re-classification of affected back-file documents. Marks from the scheme do not appear on the EPO’s published documents at present, as classification activities are not generally completed until after the publication date; to that extent, the CPC behaves like the current IPC, in that electronic classification records can be amended or updated after the publication of the document. The EPO also takes on the task of applying its in-house classification to patent documents from a range of countries, including those defined in the PCT Regulations as the minimum documentation set required for international searches. This includes patents from the EPO and PCT from 1978, plus Germany, the United States, France, United Kingdom and Switzerland from 1920. The main exception to the rule is that Japanese documents do not usually have the CPC applied to them, as alternative retrieval means exist. The past application of ECLA, and the current usage of CPC, as a single classification for documents from many countries has meant that these schemes are a powerful search tool for patentability searching, and indeed are widely used within the EPO itself for such purposes. CPC is available to the external searcher, via tools such as Espacenet and several of the commercial bibliographic files or search systems, including the Chemical Abstracts file on STN, the DWPI file, PatBase and TotalPatent One. As well as being applied to patent documents, CPC is also used to classify some parts of the non-patent literature. As before, marks

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are applied by the EPO examiners, and permit retrieval of journal articles during the same search as the patent prior art. Users may sometimes observe that an EPO search report may cite journal literature with a dummy form of “patent number”; these are records from the non-patent literature, which carry an XP prefix to identify them, and are classified by CPC once they have been cited in an official EPO search report. Google has experimented with applying CPC marks algorithmically to non-patent literature, rather than intellectually as by the EPO. The FI system is the Japanese extension of the IPC but, unlike ECLA/CPC, is only applied to the national documents. Since approximately 2000, unexamined Japanese applications have had FI classes printed on the front page. It is available as a search tool via the JPO website, and also from commercial search files containing Japanese documents. Various help files exist, mostly loaded on the JPO website, and an article by Schellner17 also provides useful background. A selective comparison of the IPC and the FI systems are given at Annex E, showing how the FI system has extended the group structure; one example from each of the 8 IPC sections is included. The notation of both CPC and FI are based upon the IPC, but the example in Table 18.3 illustrates how the systems can diverge: the example refers to equivalent patent documents on the same invention. Typically, ECLA marks included additional letter-number extensions to a conventional IPC mark, whereas FI notations may include either a numerical sub-division, a file discrimination symbol (single letter) or both. CPC sub-group notations are all-numeric. A final variant on the IPC theme is the in-house system used by the German Patent Office, which is called DEKLA. As with ECLA, this is not seen on published documents, and little public information has been released on how to use the system. It is not applied to any commercial search files, but is available only within the German Patent Office, on the Depatisnet site. The DEKLA system adds about 40,000 additional sub-terms to the IPC, bringing the entire system to around 110,000 sub-divisions. The scheme is searchable on the DPMA site, but the default view is to hide the DEKLA-specific groups, and this needs to be reset before the extensions are seen. The opening page of the search screen is at http://depatisnet.dpma.de/ipc/, or it can be reached via the Depatisnet home page, using the IPC link.

The US Patent Classification The United States is one of very few national patent offices which retained its own classification scheme into the 21st century, until it was replaced by the CPC. Although the USPTO has always applied IPC marks to its documents,

US  A

JP – A

/. (US)

AF / (IPC) AF /, YS / (CPC)

/ (US)

AF / (FI)

AB /J (FI)

BB / (IPC)

AF/ (IPC .)

AB / (IPC )



AF /, YS / (CPC)

Current electronic classification

AF / (ECLA)

EP  A

Amended classification AF / (IPC .)



AB / (IPC )

Classification at publication date

Family member

Table 18.3: Variations in classification for members of the same patent family.

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Patent classification

549

under its obligations as a signatory to the Strasbourg Agreement, the US classification system was very much favoured, both for work flow within the office and also for retrieval of documents. During the period when the US classification was in operation, the IPC marks on US documents were applied algorithmically by concordance from the US classification, which was always allocated first, and consequently the IPC classes differed appreciably from the marks applied intellectually by other authorities to the same subject matter18. From the searcher’s point of view, this meant that IPC marks on US documents could not be relied upon as an accurate guide to the content of the documents when conducting a global search. Since the transition to the CPC, which is based on the same principles and core structure as the IPC, the IPC classification of US documents is likely to accord better with that applied elsewhere. Some further detail about the US system has been included in Chapter 3, to which the reader is referred. It consisted of some 130,000 sub-divisions with a largely numeric notation. As with ECLA, the system was revised rapidly and the older documents are re-classified under the new scheme, so that the most recent edition of the US patent classification could in theory be used to retrieve US documents back to the earliest patents of 1790. The USPTO website has retained some instructional material in the use of the US system, at www.uspto. gov/web/patents/classification/, even though the system is no longer in active use for the main range of US patents – it is still applied to US Design Patents. For comparison purposes, the issue class and the current class of the US equivalent of EP 257752 are included in Table 18.3.

Japanese F-term indexing It is important at this point to distinguish between the FI system, a classification based upon the IPC, and the F-terms, a separate indexing system devised by the JPO. The F-term (File Forming Terms) system is a unique Japanese deepindexing approach, applied only to Japanese documents. Although devised by the JPO, the F-terms are actually assigned by a quasi-autonomous agency, the Intellectual Property Cooperation Center (IPCC), established in 1985. The same organisation acts an external resource for the JPO in the conduct of its patentability searches. As with FI, the F-term system has grown out of demand from JPO search examiners to overcome the deficiencies of the IPC as a search tool, when faced with large volumes of prior art. It is a complex multi-dimensional scheme, allowing for very precise retrieval by the skilled user, but a detailed description is outside of the scope of these pages. The paper by Schellner17 also includes some background on the F-term system, and a more detailed

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discussion has been published by Adams19. They are available as a search tool via the JPO website and some commercial information providers have loaded Fterms into third-party databases. The definitions of the top-level FI theme codes are shown in Annex F.

The Cooperative Patent Classification (CPC) and the IP5 CHC project In October 2010, the EPO and the USPTO announced that they planned to develop a joint classification scheme, the Cooperative Patent Classification (CPC). The new scheme was designed to incorporate the best sub-divisions of both ECLA and the existing US scheme, but uses a notation and all-numeric subgroup structure closely mirroring the IPC principles. Development and expansion of both ECLA and the US schemes were frozen by late 2010, and work was finished on the new classification by the end of December 2012. The CPC entered into force as the in-house classification of both the EPO and USPTO on 1st January 2013. The USPTO began to print the new classification on the front pages of its unexamined publications from 14th March 2013, shortly after the first granted patents were published with CPC a month earlier. The US patent classification has been retained for the national design patents (classes preceded by the letter D). Initially, the EPO did not print the CPC on its documents, retaining the prior ECLA practice of creating electronic-only records, but there are some indications that they may start to publish CPC classes simultaneously with their documents in the future. After 2012, the USPTO and EPO became jointly responsible for the maintenance and development of the CPC, and the complete search files of both offices are now searchable using this system. In the first few years following the launch of the CPC, a number of other countries – including some of the member states of the EPO – have adopted the CPC as their own in-house classification. This means that the records of these patent publications in the DocDB/Espacenet search files now contain CPC from more than one source; some have been classified by the EPO examiners after publication, whilst others have been classified by the originating patent office. The display formats of the CPC field in Espacenet have been modified to clarify which office has applied which class marks to each bibliographic record. The official website for the CPC is located at www.cooperativepatentclassifi cation.org (also via www.cpcinfo.org). This includes a large amount of training material, updates on the revision process of the CPC and regular reports about which countries are adopting the scheme. Since the launch in 2013, the CPC has been implemented in at least 16 member states of the EPO plus the national

Additional non-word elements

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office of Brazil, China, Russia, South Korea, Mexico, Israel, the Eurasian Patent Organisation, Argentina, Australia, Canada and Chile. The CPC development has served to provide fresh impetus to progress on an IP5 project, originally entitled the Common Hybrid Classification (CHC). The CHC is now administered by the IP5 Working Group 1 (WG1) on Classification, as a longer term programme of work to integrate the best features of existing schemes, such as the CPC, FI and the in-house expansions of the IPC used in China and Korea, into a new International Patent Classification. Projects already underway in the framework of the Trilateral Offices (EP, JP, US) “Harmony” programme were completed and then subsumed into the bigger project. More information on this project, and how it relates to the CPC, can be found on the IP5 website, at www.fiveipoffices.org.

Additional non-word elements Classification is probably the most familiar manner in which a searcher may retrieve information without having to resort to word-based searching. However, depending upon the technical discipline of the search, there are other techniques which may be equally effective.

Chemical and genetic structures The discussions on the WPI, CAS and Marpat files in Chapter 11 referred to the use of specialist coding or drawing software to permit direct searching of chemical structures. This is widespread in industry, and the patent office statutory searches are increasingly moving away from text or classification-based searches in many areas of chemistry, in favour of sub-structure techniques. In the specialist field of biotechnology, tools like GeneSeq utilise sophisticated matching algorithms to directly locate equivalent sections of a genetic sequence. A very large proportion of the information content of a genetic sequence patent is not in the form of descriptive text at all, but only present as primary sequence data. The EPO and WIPO have created separate databases retaining this information in totally electronic form, to assist searchers. A few “mega-documents” consisting of many thousands of printed pages of sequence data, appeared before the major patent offices adopted the pragmatic policy of only releasing these cases in CD-ROM or other electronic form, not on paper20. The EPO separates these documents from the normal Publication Server, and distributes them via the sub-page www.epo.org/searching-for-patents/technical/publication-server/sequence-listings.

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html. Applicants working in the field of genetic sequences also tend to submit their priority documents entirely electronically, using standard software to validate the data input of the sequence. This considerably reduces the chances of error when releasing the data to third-party information providers. Several of the commercial vendors have loaded discrete files dedicated to genetic sequences, many of which are first disclosed in patents. Specific search algorithms have been created in order to identify sequences which are biologically similar to those in the database. These files include PCTGEN (nucleic acid and protein sequences from PCT publications), USGENE ® (similar content from US applications and granted patents from 1981) produced by SequenceBase Inc. (now owned by Clarivate), and GENBANK ® from the US-based National Center for Biotechnology Information (NCBI), which draws its content from journal disclosures and direct submissions. All three of these files are available on STN International. The CAS Registry file also includes large numbers of sequences derived from the documents indexed for Chemical Abstracts. A survey of the coverage of all of these files was provided in an e-seminar by Aichinger21 and an older (but undated) presentation by Austin22; more information can be found in the STN support pages.

Microbiological deposits A related area to sequence searching is that of microbiological inventions. There is provision, under the Budapest Treaty, for an applicant to deposit a sample of a microorganism with a neutral agency, when such an organism cannot be described in writing and forms an integral part of the patent application. Strict rules apply concerning who may have access to sub-samples of the deposit at various stages in the patent application. Specific INID codes exist to enable the applicant to record the information about the deposit agency as part of the frontpage bibliographic data. Unfortunately, this does not always get reliably transmitted to the commercial database providers, even when they have created corresponding database fields within their products. This is unfortunate, since it dilutes the value of having the field present at all if it is not accurately or systematically populated. However, under some circumstances, searching in the appropriate field may enable the searcher to locate patent documents utilising the same or similar microorganisms, without having to resort to full text searching.

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Numerical data searching With the advent of many more full text databases, it has become possible to search for much more precise parameters within the main body of a patent specification. Unfortunately, there are few instances where the searchable text can be examined as anything other than a string of characters; hence the need for searchers to be very aware of both legitimate synonyms and variant spellings or misspellings of significant search terms. In certain technical fields, however, it is desirable to be able to pinpoint references to numerical data such as weights, volumes, lengths, temperatures, electromagnetic frequencies etc. and to link them with the relevant units. There has been little commercial development of search systems capable of delivering such results. The Knovel web-based system provides a Material Property Search, searching data for the engineering community, focussed on non-patent literature. The best-known service for searching numerical data within the patent literature is the Numeric Property Search (NPS) on the STN International search system, which has been implemented on a range of the bibliographic patent files. The full text files have been parsed and numerical values and units extracted and re-indexed as searchable terms, both for exact match, user-defined tolerances and open or overlapping ranges. The NPS system is fully integrated with all the other search fields (text, names, dates etc.) available for the STN bibliographic files. Documentation on the feature is available from the STN website23.

Image data The final “non-text” parameter for a search is that of images. The technical drawings available in patent documents are particularly important for electrical or mechanical searchers, as they provide a rapid – and sometimes, the only – way of screening results in a list which has been retrieved by a conventional word or class search. Despite much research, developments in the ability to directly search image data have been slow. Some research was successful in trademarks24 but was not extended to direct image searching in patents; however, more recent research by Vrochidis et al.25, 26 on patent drawings looks very promising, albeit with limited sample search files. WIPO has been actively researching in the field of image search, for the purposes of creating its Global Design database27. The nearest approach to a practical solution for retrieving and analysing images is the various tools (e.g. in Espacenet, PatBase and WIPS) which provide a set of thumbnail images of drawing pages, as a mosaic, which facilitates

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rapid scanning of an answer set. Some progress has been made in the field of auto-captioning, where the cross-references between a figure element in the text, and the same element in a drawing, are created on-the-fly when a document is viewed on-screen. In the case of registered designs (or US Design Patents), classification schemes exist28 to enable a search on the graphic elements, although the granularity and the corresponding degree of precision in retrieval is low for the international (Locarno) system. Nonetheless, these schemes may be of some assistance in searching for US patent documents, since classes from the US Design classification may be applied to US utility patents where the invention has a particular aesthetic aspect.

References 1 United States Patent Office (1946). Patent Office Order, 19th December 1946. See also United States Patent Office (1953). Listing of References. In Manual of Patent Examining Procedure, (2nd ed.) Chapter 1300 Allowance and Issue, § 1302.12. 2 Garfield, E. (1964). Science Citation Index: a new dimension in indexing. Science 144(3619), 649–654. 3 Weinstock, M. (1971). Citation indexes. In Encyclopaedia of Library and Information Science, Volume 5. New York: Marcel Dekker Inc., pp.16–40. 4 Kessler, M.M. (1963). Bibliographic coupling between scientific papers. American Documentation 14(1), 10–25. 5 Kessler, M.M. (1965). The MIT Technical Information Project. Physics Today, 18(3), 28–36. 6 Garfield, E. (1957). Breaking the subject index barrier – a citation index for chemical patents. Journal of the Patent Office Society 39(8), 583–595. 7 US Patent and Trademark Office (1992). Duty of Disclosure. Federal Register 57(12), 2021–2036. [57 FR 2021], (published 17th January 1992, in force 16th March 1992). 8 Michel, J., Bettels, B. (2001). Patent citation analysis: a closer look at the basic input data from patent search reports. Scientometrics, 51(1), 185–201. 9 EPO (2019). Common Citation Document (CCD) Handbook. Version 4.0 (27th August 2019). Retrieved from http://ccd.fiveipoffices.org/CCD-2.2.1/ 10 Small, H. (1973). Co-citation in the scientific literature: a new measure of the relationship between two documents. Journal of the American Society for Information Science 24(4), 265–269. 11 Adams, S.R. (2008). Citations – myth, mystery or magic? In Proc. IPI ConfEx 2008, Seville, Spain (2nd–5th March 2008). Unpublished. 12 Adams, S. (2003). Patent searching without words – why do it, how to do it? Freepint Newsletter No. 130, pp.7–8, 6th February 2003. Retrieved from https://web.jinfo.com/go/ newsletter/130. 13 WIPO (1997). Strasbourg Agreement concerning the International Patent Classification of March 24, 1971. WIPO Publication No. 275(E). Geneva: WIPO, 1997. 14 WIPO (2000). IPC:CLASS (Cumulative and Linguistic Advanced Search System). CD-ROM Version 4.1 for Windows. Geneva: WIPO. ISBN 92-805-0859-8.

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15 WIPO (2020.04.25). International Patent Classification (IPC). www.wipo.int. Retrieved from www.wipo.int/classifications/ipc/en/. 16 Foglia, P. (2007). Patentability search strategies and the reformed IPC: a patent office perspective. World Patent Information, 29(1), 33–53. 17 Schellner, I. (2002). Japanese File Index classification and F-terms. World Patent Information, 24(3), 197–201. 18 Adams, S. (2001). Comparing the IPC and the US classification systems for the patent searcher. World Patent Information, 23(1), 15–23. 19 Adams, S. (2008). English-language support tools for the use of Japanese F-term patent subject searching online. World Patent Information, 30(1), 5–20. 20 EPO (2007). Decision of the President of the European Patent Office dated 12 July 2007 concerning the form of publication of European patent applications, European search reports and European patent specifications. Official Journal of the EPO, Special Edition 3/2007. Section D3, p.97–98. 21 Aichinger E. (2020.04.27). Biosequence searching. www.stn-international.com. Retrieved from www.stn-international.com/en/training-center/e-seminars/biosequence-searching-stncomprehensive-and-precise. 22 Austin, R. (2020.04.27). Exploring PCTGEN and USGENE. www.stn-international.com. Retrieved from http://www.stn-international.com/en/training-center/e-seminars/exploring-pctgen-andusgene-stn. 23 STN International (2020.04.27). Numeric property search on STN. www.stn-international. com. Retrieved from www.stn-international.com/sites/default/files/stn_training_center_ document/User Documentation/NumericpropertysearchonSTN.pdf 24 Eakins, J.P., Graham, M.E. (1998). Content-based Image Retrieval. Report No. 39, JISC Technology Applications Programme (JTAP). Newcastle, UK: Institute for Image Data Research, University of Northumbria at Newcastle. Retrieved from www.leeds.ac.uk/educol/documents/ 00001240.htm 25 Vrochidis, S., Papadopoulos, S., Moumtzidou, A., Sidiropoulos, P., Piantab, E., Kompatsiaris, I. (2010). Towards content-based patent image retrieval: a framework perspective. World Patent Information 32(2), 94–106. 26 Vrochidis, S. (2020.04.27). Patent Image Retrieval. In Information Retrieval Facility Symposium, 6th November 2008, Vienna. www.ir-facility.org. Retrieved from www.ir-facility.org/events/irfsymposium/irf-symposium-2008/videos-and-presentations 27 WIPO (2020.04.27). Global Design Database. www.wipo.int. Retrieved from www.wipo.int/ reference/en/designdb/. 28 WIPO (2019.01.01). Locarno Classification for Industrial Designs (12th ed.). Geneva: WIPO. Retrieved from www.wipo.int/classifications/locarno/en/.

Chapter 19 Future developments The impact of the World Trade Organisation and WIPO The World Trade Organisation (WTO) was founded in 1995, and currently (April 2020) has 164 member states, with a further 24 observers, some of whom are in accession talks1. The organisation was founded as a permanent forum to replace the series of international negotiations conducted under the post-World War Two treaty known as the General Agreement on Tariffs and Trade (GATT). Whereas the GATT talks principally involved only the major trading economies, the WTO membership includes many countries from the developing world. The final round of talks under the GATT framework was the Uruguay Round (1986–1994), which expanded the remit to consider new areas such as intellectual property. One result of these talks was the Uruguay Round Agreements Act (URAA) in the United States, which increased the statutory US patent term from 17 years to 20 years2. The WTO inherited the role of the GATT, and includes intangible trade amongst its interests. One of the annexes to the Marrakesh Agreement, the founding treaty of the WTO, is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, Annex 1C3). All new members of the WTO must ratify TRIPS on admission to the Organisation, although there are certain time concessions which allow developing countries a transition period before they must implement all of the provisions of TRIPS.

The WTO TRIPS agreement This Agreement outlines certain minimum standards of patent protection. Member states must offer protection for all inventions, in all fields of technology, provided that they fulfil the normal patentability criteria. Patent protection must also be available for a minimum term of 20 years. One of the most important provisions of TRIPS, for the patent information specialist, is Art. 2(1) which has the effect of ensuring mutual recognition of patent priority between member states of the WTO, in the same way that member states of the Paris Convention have done: Art. 2(1). In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).

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This means that any countries outside of the Paris Convention but within the WTO/TRIPS agreement have an international mechanism to recognise patent priorities, rather than having to rely upon bilateral treaties. The most significant patenting country which this affects is Taiwan, which entered the WTO in 2002 but is not a signatory to the Paris Convention. The non-recognition of priorities from Paris Convention countries by Taiwan, and vice versa, has historically created problems in the automatic collation of Taiwanese documents into patent family databases. WIPO publishes a regularly updated list of countries which are party to the Paris Convention, the WTO or the PCT4. A substantial number of developing countries had non-compliant legislation at the time they were admitted to WTO membership, and efforts to ratify TRIPS have resulted in many countries amending their patent laws in the period leading up to their accession. Particularly complex transitional provisions are found in those countries which have hitherto not allowed protection for certain inventions, notably new chemical products or new pharmaceutical drugs per se. It was originally intended that most states would have completed this harmonisation by 2005, but the Fourth Ministerial Conference of the WTO held in Doha, Qatar, in November 2001 authorised an extension of the deadline for least-developed countries to apply provisions on pharmaceutical patenting up to 1st January 20165. A further extension was agreed in late 2015, to defer compliance until 20336. The WTO has also been active in the fields of plant and animal protection, in the context of traditional knowledge (TK) and the various international agreements on biodiversity. Some of the working documents can be obtained from the WTO website7. The WIPO also has interests in the TK and plant genetics fields, and has established the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC); discussion of their activities can be found on the WIPO website8. Two general trends as a result of this work have been the amendment of national patent laws (especially in South America and Africa) in order to tighten control over natural genetic resources, and increased efforts (especially in India and China) to document the origin and usage of traditional medicines. The effect for the information specialist is that the last decade of the 20th century and much of the first decade of the 21st has produced patent documents under a wide range of transitional laws and regulations, which makes the task of determining such “simple” facts as patent term and legal effect, more than normally complex. By the second decade of the 21st century, the situation in respect of these particular issues has become more stable, but the legacy data remains to trip up the unwary searcher. One of the hidden issues in the patents area has been the extension of international quasi-legal forums into

The impact of the World Trade Organisation and WIPO

559

the determination of national intellectual property laws and practice. Two examples are the work of the WIPO Arbitration and Mediation Center9, which provides advice on patent-related matters, including in the life sciences and licensing (FRAND) disputes in relation of Standard-Essential Patents (SEPs); and the TRIPS Dispute Panels, which may enforce provisions of the TRIPS Agreement on WTO member states. One such significant decision required that all Canadian patents issued under their pre-1989 law should be extended from 17 years to a 20 year term10. This was accomplished in 2001 by an amendment to the Canadian law.

International activities at WIPO For many years, it appeared that WIPO activities were focussed principally on support for the legal administration of patent systems, and had little impact on their information dissemination functions. One such example was the conclusion of the Patent Law Treaty, which was signed in 2000 and entered into force in 2005. This was regarded as a first step towards framing the legal backbone to a true world patent system. It seeks to harmonise the national patent laws of the signatory states, by defining a standard set of administrative processes at the early stages of patent application, and was designed very much with the needs of the PCT applicant in mind, to facilitate a smooth transition from international to national or regional phase, including more elements of electronic filing and document transfer. As of 2020, there are 42 contracting parties11. The PLT was seen as the first step towards a corresponding Substantive Patent Law Treaty (SPLT), which would regulate the details of substantive patent examination and grant on an international basis. Negotiations for this proceeded very slowly, despite the optimism expressed at the Conference on the International Patent System in 200212 After several years of discussion on the first (2001) draft, the negotiations on the SPLT were put on hold in 200613. Despite this setback on progress towards legal harmonisation, WIPO has in the last decade become increasingly active in fields which directly or indirectly affect patent documentation and information. The Global Infrastructure sector of WIPO includes a number of units which have contributed significantly to the quality and/or availability of information products at the national and international level. Table 19.1 illustrates some of these activities.

Improved awareness at the local level of the IP system, especially for academia and small business researchers.

Innovation and Knowledge Infrastructure Department / Technology and Innovation Support

PatentScope Global Brand Database Global Design Database Pat-INFORMED (pharmaceutical licensing database)

Global Databases

Production and maintenance of bibliographic search tools and multi-lingual support.

WIPO-File: electronic submission of patent applications and supporting transactions. IPAS (Industrial Property Administration System): electronic workflow tools for patent office activities, including examination. WIPO-PUBLISH: facilitating electronic publication and exchange of patent documentation WIPO-CASE (Centralized Access to Search and Examination): exchange of examination documents, work-sharing and dossier integration.

IP Office Business Solutions Creation and support of software and infrastructure solutions for IP-related businesses.

Creation and support of national TISC infrastructures.

ST. – modern data capture and exchange of genetic sequence data. ST. – structured system for reporting patent legal status data. ST. – authority file standard enabling efficient audit of database completeness.

International Classifications Recent completion of new and Standards WIPO Standards ST., ST. and ST..

Impact on patent information Dynamic classification schemes more suited to modern search methods.

Activity

International Classifications Reform of the IPC. and Standards

WIPO Division

Table 19.1: WIPO patent information activities.

, 

, , 

, 





Reference

560 Chapter 19 Future developments

Future developments in regional patent systems

561

The Trilateral Offices and the IP5 Since 1983, the USPTO, JPO and EPO have cooperated as the “Trilateral Offices”, including working together on certain automation projects and harmonising policies on fees and information dissemination, such as exchange of priority documents between the offices. Information on their past work programme and continuing activities can be found on the Trilateral website, www.trilateral.net. With the developing importance of Asia, a meeting was held at Jeju, Korea in October 2008, at which two additional offices were brought into an expanded cooperation structure, loosely referred to as “the IP5” – the new members were the patent offices of South Korea and China. A separate website on this organisation has also been created, at www.fiveipoffices.org. The organisation has set up a number of cooperative projects, including work on classification, integrated dossiers and patent information matters. The One Portal Dossier (OPD) or Global Dossier system is one outcome of this cooperation, as is the Common Citation Document (CCD) database.

Future developments in regional patent systems In addition to the systems already discussed elsewhere in this book, there is increasing awareness of the need for economies of scale both in the process of granting patents and the information systems which support them. At various times, there have been tentative discussions about establishing regional patent systems in other parts of the world. These often develop out of regional economic cooperation agreements, or free-trade blocs. The Andean Community (see Chapter 8) has established a pathway which could lead to a South American office in the future. Similarly, the ASEAN states are beginning to share some infrastructure and examination effort, particularly in the context of the ASPEC (ASEAN Patent Examination Co-operation) programme (see Chapter 7). Even within Europe, the foundation of the Nordic Patent Institute (Denmark, Iceland and Norway) in 2006 and the Visegrád Patent Institute (Czechia, Hungary, Poland and Slovakia) in 2015 illustrates the benefits of common working practices. There has been less visible progress in the Middle East and the Caribbean, although there has been some speculation about an Arab League-supported initiative for an Arab Patent Office, most likely based in Cairo. The Caricom (Caribbean Community) grouping of 15 countries has some common legal framework in the form of the Caribbean Court of Justice (CCJ), and although a proposal for a Caribbean Patent Convention was announced in 2017, nothing further appears to have developed at the time of writing. In Africa, the two existing

562

Chapter 19 Future developments

regional intellectual property organisations (ARIPO and OAPI) remain in place for the day-to-day operation of the patenting systems covered by their member states, but at the administrative level there have been long-standing negotiations to form an umbrella organisation for African intellectual property policies, under the auspices of the African Union (AU). In 2016, the AU adopted a statute for the formation of the Pan-African Intellectual Property Organization (PAIPO), but as of June 2019 (the most recent update) this has only been signed by 6 AU members and is not yet in force22.

The future of patent searching? It is clear that the science – or art – of patent searching has taken great strides in recent decades. This is not only because of improved access to the information contained in patents, but improved techniques in how to search them. However, there are still challenges ahead. One noticeable trend has been the move away – within industry at least – from focussed patentability searching, and towards the use of patent information in bulk data studies. The emphasis has shifted from an understanding of the individual patent document in its context, and been replaced by more and more sophisticated ways of retrieving and illustrating trends and patterns in the whole of the patent literature. Newer user groups are demanding search results which can directly support commercial decisions at boardroom level, including competitive studies of an industry sector, internal portfolio management, merger & acquisition decisions and licensing issues. This trend in turn has led even some wellestablished information suppliers to question whether the average database user really needs to know about the content of what they are searching, to the same level of detail as has been the case in the past; the process of researching this edition has illustrated that this information is certainly less well-documented than before. The evidence of this trend in the use of patent information is also clear from the nature of the papers submitted to the major refereed journal in this field, World Patent Information. Over the last few years, the most highly-cited and highly-downloaded articles from this journal have been predominantly concerned with large-scale data handling and patinfomatics, rather than the traditional bibliographic-level studies. At one point, this even led the author of this current volume to reconsider whether such a detailed resource guide was of continuing value to the patent search community; readers who have got this far will realise that the conclusion was in the affirmative!

The future of patent searching?

563

However much the needs of the industry-based (or more generally, the private sector-based) searcher may have moved away from an understanding of detailed content, the patent offices and searchers based in legal practices are still conducting patentability-style searches, where interpretation of individual results still plays a key part in maintaining quality. In addition, anyone who is starting work for the first time with patent information, whether at the document level or bulk level, needs at least a foundation-level understanding of how patent systems work and the significance of the publications which they generate. Studies which are carried out by researchers who do not understand patent data – especially in how it differs from other publications in the STM sector – can produce highly misleading or skewed results, leading to bad decisions. In a world where more patent offices are providing bulk downloads of their data at marginal cost or free-of-charge, and providing ever more opportunities for linking data sets for advanced analysis, it is more necessary than ever to understand what the data actually says and how it originated. A second trend is in the nature of the inventions which are the subjects of modern patent applications. Much has been written about “Industry 4.0” and the “Internet of Things”, and this is already having an impact upon the type of patent application which is being submitted. It seems that it will no longer be adequate for a researcher to have an understanding of one technical domain, but also to understand enough about computerisation, robotics, networking or whatever other technology enables the invention to be inter-connected with the outside world. Patent applications which embody a hybrid of (e.g.) chemical and electronic technologies will no longer fit easily into existing one-dimensional classification schemes, and text-based searching will be subject to even more of the vagaries of drafting language than before. In this environment, it is questionable whether the traditional form of patent application (text + 2-dimensional images) will remain fit for purpose for long. At present, few offices are equipped to accept even a simple development such as colour drawings, let alone other supplementary data packages such as 3D genetic sequences or CAD-CAM system outputs. It is interesting to speculate whether, in the age of additive manufacturing, patent offices may call for a modern replacement of 19th century patent models, in support of an application23. If they did, it would certainly speed up comprehension of the application by the examiner, and probably create a more secure basis for determining infringement of the granted patent. There are some promising signs that these phenomena are being recognised, in the form of WIPO initiatives within the Committee on WIPO Standards (CWS24). These include the formation of a Design Representation Task Force, considering how to facilitate electronic data elements in design applications, and the 3D Task

564

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Force investigating the need for standardising those parts of patent applications which represent three-dimensional objects. It is clear that, even if the nature of a patent application is modernised, much work remains to develop the search and retrieval tools capable of retrieving such non-text material. At the same time, the growth of the “conventional” patent literature shows no sign of slowing down, and it is increasingly challenging to have any realistic expectation of conducting a truly universal novelty search. Some attempts have been made to develop the results of modern information retrieval research into practical patent search tools, but with little tangible results. Between 2007–2011, the Information Retrieval Facility based in Vienna held a number of symposia which attempted to tackle retrieval aspects which are peculiar to patent documents25, and two editions of a book outlining some of the challenges have been co-written by authors working with the IRF26. On the legal front, even though activities such as the SPLT appear to have foundered for the present, there is increasing pressure to reduce application backlogs by harmonised search activities and other work-sharing efforts, such as the Patent Prosecution Highway in its various forms; a summary of this programme is maintained by the Japan Patent Office27. However, there is still a need for caution in attempting a “one-stop shop” solution, either in database compilation or the conduct of searches. In a rush towards harmonisation, there is always a risk of “throwing out the baby with the bathwater”. Both the patent offices and legal communities have conducted ad hoc research on the variability of search results between offices, but these efforts have rarely involved searchers from industry. It is ultimately in the interests of all parties – inventor, attorney and searcher – to develop best-practice and move toward a genuinely global search protocol. But the range and complexity of today’s search tools – never mind those of the future – makes the assessment of what is the “optimum” a far-from-trivial exercise. This is partly a reflection of the tools, partly the data and partly human issues28, including the education of professional searchers. In order to address this last issue, that of the professional standing and training of patent searchers, a number of national patent searcher groups across Europe formed the Confederacy of European Patent Information User Groups (CEPIUG) in 200829. One of the specific tasks was to oversee negotiations on the creation of a professional certification mechanism. This took over the functions of the former Committee on Patent Search Standards (COPS), which was formed in 200330 as an ad hoc response to concerns voiced at the 2002 EPO Patent Information Conference about the lack of regulation of the patent search profession. The professional body awarding certification was founded in 2018 as the International Standards Board for Qualified Patent Information Professionals

References

565

(ISBQPIP31) and the first members were admitted from Europe and the USA in 2019. It is very much the hope of this author that the QPIP certification will become recognised as a measure of the competence and skills of individual patent searchers globally, as they contribute to the effective operation of the patent system in a world dominated by an ever-increasing size and complexity in the stateof-the-art.

References 1 WTO (2020.04.30). Members and Observers. www.wto.org. Retrieved from www.wto.org/english/ thewto_e/whatis_e/tif_e/org6_e.htm. 2 United States (1994). An Act to approve and implement the trade agreements concluded in the Uruguay Round of multilateral trade negotiations. Public Law 103-465 (108 Stat. 4809), §532(a). 3 WTO (2020.04.30). Trade-Related Aspects of Intellectual Property Rights. www.wto.org. Retrieved from www.wto.org/english/tratop_e/trips_e/trips_e.htm 4 WIPO (2020.01.02). States Party to the PCT and the Paris Convention and Members of the World Trade Organization. www.wipo.int. Retrieved from www.wipo.int/pct/en/paris_wto_ pct.html. 5 WTO/TRIPS Council (2002). Decision of the Council for TRIPS of 27 June 2002 on the Extension of the transition period under Article 66.1 of the TRIPS Agreement for Least Developed Country members for certain obligations with respect to pharmaceutical products. WTO document IP/C/ 25. Geneva: WTO. 6 WTO/TRIPS Council (2015). Decision of the Council for TRIPS of 6 November 2015 on the Extension of the transition period under Article 66.1 of the TRIPS Agreement for Least Developed Country members for certain obligations with respect to pharmaceutical products. WTO document IP/C/73. Geneva: WTO. 7 WTO (2020.04.30). Article 27.3b, traditional knowledge, biodiversity. www.wto.org. Retrieved from www.wto.org/english/tratop_e/trips_e/art27_3b_e.htm. 8 WIPO (2020.04.30). Intergovernmental Committee (IGC). www.wipo.int. Retrieved from www.wipo.int/tk/en/igc/. 9 WIPO (2020.04.30). Alternative Dispute Resolution (ADR). www.wipo.int. Retrieved from www.wipo.int/amc/en/. 10 WTO (2020.04.30). Canada – term of patent protection. WTO Dispute Settlement DS170. Retrieved from www.wto.org/english/tratop_e/dispu_e/cases_e/ds170_e.htm. 11 WIPO (2020.04.30). Patent Law Treaty (PLT). www.wipo.int. Retrieved from www.wipo.int/ treaties/en/ip/plt/ 12 WIPO (2002). Conference on the International Patent System, Geneva, March 25–27, 2002. WIPO Publication CD777. Geneva: WIPO. ISBN 92-805-1122-4. 13 WIPO (2020.04.30). Draft Substantive Patent Law Treaty. www.wipo.int. Retrieved from www.wipo.int/patent-law/en/draft_splt.htm. 14 WIPO (2020.04.30). International Classifications and Standards Division. www.wipo.int Retrieved from www.wipo.int/about-wipo/en/activities_by_unit/index.jsp?id=66

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15 WIPO (2020.04.30). Innovation and Knowledge Infrastructure Department. www.wipo.int Retrieved from www.wipo.int/about-wipo/en/activities_by_unit/index.jsp?id=22 16 WIPO (2020.04.30). Technology and Innovation Support Division. www.wipo.int Retrieved from www.wipo.int/about-wipo/en/activities_by_unit/index.jsp?id=1023 17 WIPO (2020.04.30). IP Office Business Solutions Division. www.wipo.int Retrieved from www.wipo.int/about-wipo/en/activities_by_unit/index.jsp?id=68 18 WIPO (2020.04.30). IP Office Business Solutions. www.wipo.int. Retrieved from www.wipo. int/global_ip/en/activities/ip_office_business_solutions/. 19 WIPO (2020.04.30). WIPO CASE – Centralized Access to Search and Examination. www. wipo.int Retrieved from www.wipo.int/case/en/. 20 WIPO (2020.04.30). Global Databases Division. www.wipo.int Retrieved from www.wipo. int/about-wipo/en/activities_by_unit/index.jsp?id=58 (and refs. therein). 21 WIPO (2020.04.30). Pat-INFORMED – The Gateway to Medicine Patent Information. www. wipo.int. Retrieved from www.wipo.int/pat-informed/en/ 22 African Union (2020). Statute of the Pan-African Intellectual Property Organization (PAIPO). www.au.int. Retrieved from https://au.int/en/node/32549. 23 Adams, S.R. (2005). Electronic non-text material in patent applications – some questions for patent offices, applicants and searchers. World Patent Information, 27(2), 99–103. 24 WIPO (2020.05.01). Committee on WIPO Standards (CWS). www.wipo.int. Retrieved from www.wipo.int/cws/en/. 25 Information Retrieval Facility (2020.05.01). IRF Symposium – Overview. www.ir-facility.org. Retrieved from www.ir-facility.org/irf-symposium. 26 Lupu, M., Mayer, K., Tait, J., Trippe, A.J. (eds.) (2017). Current challenges in Patent Information Retrieval. (2nd ed.) Heidelberg: Springer-Verlag, 2017. 27 Japan Patent Office (2020.01.01). Patent Prosecution Highway Portal Site. www.jpo.go.jp. Retrieved from www.jpo.go.jp/e/toppage/pph-portal/index.html. 28 Adams, S.R. (2009). New technologies for patent searching – what do we need? First Global Symposium of IP Authorities, Geneva, 17th 18th September 2009. (Unpublished). Meeting code WIPO/AUT/GE/09. WIPO: Geneva. 29 CEPIUG (2020.05.01). Confederacy of European Patent Information User Groups. www.ce piug.org. 30 Adams, S.R. (2004). Certification of the patent searching profession – a personal view. World Patent Information 26(1), 79–82. 31 ISBQPIP (2020.05.01). Qualified Patent Information Professional. https://qpip.org/.

Annex A: Member states of the PCT as of 2nd January 2020 Growth in PCT membership 1978–2020 180 160 140 120 100 80 60 40 20

Date on which PCT entered into force

Cameroon, Central African Republic, Chad, Congo, Gabon, Germany, Madagascar, Malawi, Senegal, Switzerland, Togo, United Kingdom, United States of America.

..

France

..

Russian Federation (initially as the Soviet Union)

..

Brazil

..

Luxembourg

..

Sweden

..

Japan

..

Denmark

..

Austria

.. ..

Monaco Netherlands

$

https://doi.org/10.1515/9783110552263-020

..

2020

2018

2016

2014

2012

2010

2008

2006

2004

2002

1998

State

2000

1996

1994

1992

1990

1988

1984

1986

1980

1982

1978

0

568

Annex A: Member states of the PCT as of 2nd January 2020

(continued ) State

Date on which PCT entered into force

Romania

..

Norway

..

Liechtenstein

..

Australia

..

Hungary

..

Korea (North)

..

Finland

..

Belgium

..

Sri Lanka

..

Mauritania

..

Sudan

..

Bulgaria

..

Korea (South)

..

Mali

..

Barbados

..

Italy

..

Benin

..

Burkina Faso

..

Spain

..

Canada

..

Greece

..

Poland

..

Côte d’Ivoire

..

Guinea, Mongolia

..

Armenia, Belarus, Georgia, Kazakhstan, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan, Ukraine, Uzbekistan

..

Annex A: Member states of the PCT as of 2nd January 2020

(continued ) State

Date on which PCT entered into force

Ireland

..

Portugal

..

New Zealand

..

Czechia, Slovakia

..

Viet Nam

..

Niger

..

Latvia

..

China#

..

Slovenia

..

Trinidad and Tobago

..

Kenya

..

Lithuania

..

Estonia

..

Liberia

..

Eswatini

..

Mexico

..

Uganda

..

Singapore

..

Iceland

..

North Macedonia

..

Albania

..

Lesotho

..

Azerbaijan

..

Turkey

..

Israel

..

Cuba

..

569

570

Annex A: Member states of the PCT as of 2nd January 2020

(continued ) State

Date on which PCT entered into force

Saint Lucia

..

Bosnia and Herzegovina

..

Serbia and Montenegro*

..

Ghana

..

Zimbabwe

..

Sierra Leone

..

Indonesia

..

Gambia

..

Guinea-Bissau

..

Cyprus

..

Croatia

..

Grenada

..

India

..

United Arab Emirates

..

South Africa

..

Costa Rica

..

Dominica

..

Tanzania

..

Morocco

..

Algeria

..

Antigua and Barbuda

..

Mozambique

..

Belize

..

Colombia

..

Ecuador

..

Equatorial Guinea

..

Annex A: Member states of the PCT as of 2nd January 2020

(continued ) State

Date on which PCT entered into force

Philippines

..

Oman

..

Zambia

..

Tunisia

..

Saint Vincent and the Grenadines

..

Seychelles

..

Nicaragua

..

Papua New Guinea

..

Syria

..

Egypt

..

Botswana

..

Namibia

..

San Marino

..

Comoros

..

Nigeria

..

Libya

..

St. Kitts and Nevis

..

Montenegro*

..

Laos

..

Honduras

..

Malaysia

..

El Salvador

..

Guatemala

..

Malta

..

Bahrain

..

Dominican Republic

..

571

572

Annex A: Member states of the PCT as of 2nd January 2020

(continued ) State

Date on which PCT entered into force

Angola

..

São Tomé and Principe

..

Chile

..

Peru

..

Thailand

..

Qatar

..

Rwanda

..

Brunei Darussalam

..

Panama

..

Saudi Arabia

..

Iran

..

Kuwait

..

Djibouti

..

Cambodia

..

Jordan

..

Samoa

..

$

The ratification by the Netherlands originally applied to the Kingdom in Europe, the Netherlands Antilles and Aruba. The Netherlands Antilles ceased to exist on 2010.10.10. As from that date, the PCT continues to apply to Curaçao and Sint Maarten. The PCT also continues to apply to the islands of Bonaire, Sint Eustatius and Saba from the same date, in their new status as part of the territory of the Kingdom of the Netherlands in Europe. # China has indicated that the PCT also applies to the Special Administrative Region (SAR) of Hong Kong with effect from 1997.07.01, but does not apply to the SAR of Macao. * Following the dissolution of Serbia & Montenegro, the Republic of Serbia inherited the former state’s legal status in respect of the PCT on 2006.06.03, and Montenegro joined in its own right shortly after independence.

Annex B: Numerical tables for reformatting national application numbers B.1 French INSEE (Institut National de la Statistique et des Études Économiques) département codes, used in EPO format of pre-1968 application numbers INSEE code

Department name

INSEE code

Department name



Ain



Maine-et-Loire



Aisne



Manche



Allier



Marne



Haute-Marne



Alpes-de-Haute-Provence



Hautes-Alpes



Mayenne



Alpes-Maritimes



Meurthe-et-Moselle



Ardèche



Meuse



Ardennes



Morbihan



Ariège



Moselle



Aube



Nièvre



Aude



Nord



Aveyron



Oise



Bouches-du-Rhône



Orne



Calvados



Pas-de-Calais



Cantal



Puy-de-Dôme



Charente



Pyrénées-Atlantiquesb



Charente-Maritimec



Hautes-Pyrénées



Cher



Pyrénées-Orientales

a Known as Basses-Alpes until 1970. b Known as Basses-Pyrénées until 1969. c Known as Charente-Inférieure until 1941. https://doi.org/10.1515/9783110552263-021

a

574

Annex B: Numerical tables for reformatting national application numbers

(continued ) INSEE code

Department name

INSEE code

Department name



Corrèze



Bas-Rhin



Haut-Rhin



Rhône



Haute-Saône



Saône-et-Loire

A

Corse-du-Sud

B

Haute-Corse

d



Côte-d’Or

d



Côtes-d’Armor



Creuse



Sarthe



Dordogne



Savoie



Doubs



Haute-Savoie



Drôme



Parisf



Eure



Seine-Maritimeg



Eure-et-Loir



Seine-et-Marne



Finistère



Yvelinesh



Gard



Deux-Sèvres



Haute-Garonne



Somme



Gers



Tarn



Gironde



Tarn-et-Garonne



Hérault



Var



Ille-et-Vilaine



Vaucluse



Indre



Vendée



Indre-et-Loire



Vienne

e

d Corsica (20) was sub-divided into 2A and 2B between 1975–2018. e Known as Côtes-du-Nord until 1990. f Code 75 was formerly assigned to Seine which was sub-divided into Paris (75), Hauts-deSeine (92), Seine-Saint-Denis (93), and Val-de-Marne (94) in 1968. g Known as Seine-Inférieure until 1955. h Code 78 was formerly assigned to Seine-et-Oise which was sub-divided into Yvelines (78), Val-d’Oise (95), Essonne (91), and Val-de-Marne (94) in 1968.

575

Annex B: Numerical tables for reformatting national application numbers

(continued ) INSEE code

Department name

INSEE code

Department name



Isère



Haute-Vienne



Jura



Vosges



Landes



Yonne



Loir-et-Cher



Territoire de Belfort



Loire



Essonnei



Haute-Loire



Hauts-de-Seinej



Loire-Atlantiquek



Seine-Saint-Denisl



Loiret



Val-de-Marne



Lot



Val-d’Oise



Lot-et-Garonne



Lozère

B.2 Italian province codes, used in EPO format of pre-2016 application numbers Chamber of Commerce

Code

INPADOC equivalent

Chamber of Commerce

Code

INPADOC equivalent

Agrigento

AG



Messina

ME



Alessandria

AL



Milano

MI



Ancona

AN



Modena

MO



Aosta

AO



Napoli

NA



Arezzo

AR



Novara

NO



Ascoli Piceno

AP



Nuoro

NU



i Code 91 was formerly assigned to Alger, in French Algeria. j Code 92 was formerly assigned to Oran, in French Algeria. k Known as Loire-Inférieure until 1957. l Code 93 was formerly assigned to Constantine, in French Algeria.

576

Annex B: Numerical tables for reformatting national application numbers

(continued ) Chamber of Commerce

Code

INPADOC equivalent

Chamber of Commerce

Code

INPADOC equivalent

Asti

AT



Oristano

OR



Avellino

AV



Padova

PD



Ban

BA



Palermo

PA



Belluno

BL



Parma

PR



Benevento

BN



Pavia

PV



Bergamo

BG



Perugia

PG



Biella

BI



Pesaro

PE



Bologna

BO



Pescara

PS



Bolzano

BZ



Piacenza

PC



Brescia

BS



Pisa

PI



Brindisi

BR



Pistoia

PT



Cagliari

CA



Pordenone

PN



Caltanissetta

CL



Potenza

PZ



Campobasso

CB



Prato

PO



Caserta

CE



Ragusa

RG



Catania

CT



Ravenna

RA



Catanzaro

CZ



Reggio Calabria

RC



Chieti

CH



Reggio Emilia

RE



Como

CO



Rieti

RI



Cosenza

CS



Rimini

RN



Cremona

CR



Roma

RM



Crotone

KR



Rovigo

RO



Cuneo

CN



Salerno

SA



Enna

EN



Sassari

SS



Ferrara

FE



Savona

SV



Firenze

FI



Siena

SI



Foggia

FG



Siracusa

SR



577

Annex B: Numerical tables for reformatting national application numbers

(continued ) Chamber of Commerce

Code

INPADOC equivalent

Chamber of Commerce

Code

INPADOC equivalent

Forli

FO



Sondrio

SO



Frosinone

FR



Taranto

TA



Genova

GE



Teramo

TE



Gorizia

GO



Terni

TR



Grosseto

GR



Torino

TO



Imperia

IM



Trapani

TP



Isernia

IS



Trento

TN



L’Aquila

AQ



Treviso

TV



La Spezia

SP



Trieste

TS



Latina

LT



Udine

UD



Lecce

LE



Varese

VA



Lecco

LC



Venezia

VE



Livorno

LI



Verbania

VB



Lodi

LO



Vercelli

VC



Lucca

LU



Verona

VR



Macerata

MC



Vibo Valentia

VV



Mantova

MN



Vicenza

VI



Massa Carrara

MS



Viterbo

VT



Matera

MR



Deposito Postale DP (postal deposit to UIBM Rome)



Two additional codes were available; – WX for applications via an authorized military body (publications were often supressed due to national security restrictions). – UB, a dummy code for patent applications deposited at the Rome office (UIBM) after the 2016 all-numeric system was implemented, to allow newstyle application numbers to be back-converted to old-style format.

Annex C: Website addresses of national and regional patenting authorities Important notes: The following table is based on the September 2019 edition of the WIPO Standard ST.3 for country codes. Some of the country codes in that Standard relate to dependent territories or countries which do not have their own national patent-granting legislation or national office website; in those instances, cross-references are given to indicate the jurisdiction which grants patents effective in that territory or country. A few dependent territories (e.g. British dependencies in the Caribbean) have passed national patent laws which enable the re-registration of patents from other jurisdictions, rather than granting independent national patents; in these cases, the address provided in this table is for the national office only, and further information on which countries’ patents may be eligible for re-registration can be found on the national office website. Users should be aware that these addresses refer to the home page of the official office (or supervising government department) only. Many patent offices also have additional e-filing portals, search resources or publication servers which may use completely different web addresses, which may not always be clearly linked from the office home page. Website addresses were verified 2018–2019, unless the country entry is in italics (see footnote #). Any ST.3 codes which relate to organisations which only grant IP rights other than patents (e.g. the EUIPO and the BOIP) are not included in the listing below.

https://doi.org/10.1515/9783110552263-022

Andorra

United Arab Emirates

Afghanistan

Antigua and Barbuda

Anguilla

Albania

Armenia

Angola

African Regional African Regional Intellectual Property Organization Intellectual Property (ARIPO) Organization (ARIPO)

Argentina

AD

AE

AF

AG

AI

AL

AM

AO

AP

AR

Instituto Nacional de la Propiedad Industrial (INPI)

Instituto Angolano Propriedade Industrial (AIPI); Ministério da Indústria (MIND)

Intellectual Property Agency of the Republic of Armenia

Drejtoria e Përgjithshme e Pronësisë Industriale (General Directorate of Industrial Property)

Registrar of Patents; Commercial Registry

Antigua and Barbuda Intellectual Property & Commerce Office (ABIPCO)

Afghanistan Central Business Registry and Intellectual Property (ACBRIP); Ministry of Commerce and Industries

Industrial Property Department; Ministry of Economy

Oficina de Marques i Patents del Principat d’Andorra (OMPA)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

http://www.inpi.gob.ar/

http://www.aripo.org/

http://www.mind.gov.ao/

http://www.aipa.am/

http://www.dppm.gov.al/ Alt: http://www.alpto.gov.al

http://www.commercialregistry.ai/

https://abipco.gov.ag/

http://www.acbr.gov.af/

http://www.economy.gov.ae/

http://www.ompa.ad/

Web address#

580 Annex C: Website addresses of national and regional patenting authorities

Austria

Australia

Aruba*

Azerbaijan

Bosnia & Herzegovina

Barbados

Bangladesh

Belgium

Burkina Faso

Bulgaria

AT

AU

AW

AZ

BA

BB

BD

BE

BF

BG

Patent Office of the Republic of Bulgaria

Centre National de la Propriété Industrielle (CNPI); Ministère de l’Industrie, du Commerce et de l’Artisanat (MICA)

L’Office belge de la Propriété intellectuelle (OPRI)

Department of Patents, Designs and Trademarks (DPDT)

Corporate Affairs and Intellectual Property Office (CAIPO)

http://www.bpo.bg/

http://www.commerce.gov.bf/

(continued )

https://economie.fgov.be/fr/themes/ proprieteintellectuelle/institutions-et-acteurs/office-belge -de-la-propriete

http://www.dpdt.gov.bd/

http://www.caipo.gov.bb/

http://www.ipr.gov.ba/

http://www.copat.gov.az/ Alt: http://www.patent.gov.az/

Azǝrbaycan Respublikasının Əqli Mülkiyyət Agentliyi (Intellectual Property Agency of the Republic of Azerbaijan) Alt: Azǝrbaycan Respublikasının Patent və Əmtəə Nişanları Mərkəzi (Patent and Trademark Office of the Republic of Azerbaijan) Institut za intelektualno vlasništvo Bosne i Hercegovine

http://www.opi-aruba.org/

http://www.ipaustralia.gov.au/

http://www.patentamt.at/

Bureau Intellectueel Eigendom Aruba

IP Australia

Österreichisches Patentamt

Annex C: Website addresses of national and regional patenting authorities

581

Bahrain

Burundi

Benin

Bermuda

Brunei

Bolivia

Bonaire, Sint (administered by The Netherlands q.v.) Eustatius and Saba*

Brazil

Bahamas

BH

BI

BJ

BM

BN

BO

BQ

BR

BS

Intellectual Properties Section, Registrar General’s Department (RGD)

Instituto Nacional da Propriedade Industrial (INPI)

Servicio Nacional de Propiedad Intelectual (SENAPI)

Brunei Darussalam Intellectual Property Office (BruIPO); Ministry of Energy & Industry

Department of Registry General; Ministry of Home Affairs

Agence Nationale de la Propriété Industrielle (ANaPI); Ministère de l’Industrie, du Commerce et de l’Artisanat

Industrial Property Office; Ministère du commerce, de l’industrie, des postes et du tourisme (MCIPT)

Industrial Property Directorate; Ministry of Industry, Commerce and Tourism (MOIC)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

http://www.bahamas.gov.bs/rgd

http://www.inpi.gov.br/

(none known)

http://www.senapi.gob.bo/

www.energy.gov.bn/bruipo/Home.aspx Alt: http://www.bruipo.gov.bn/

https://www.gov.bm/department/registrygeneral

http://www.micpme.bj/

http://mcipt.gov.bi/

http://www.moic.gov.bh/

Web address#

582 Annex C: Website addresses of national and regional patenting authorities

Botswana

Belarus

Belize

Canada

Democratic Republic Direction de la Propriété Industrielle; Ministère de of the Congo l’Industrie et PME

Central African Republic

Congo

Switzerland

Côte d’Ivoire

Cook Islands

BW

BY

BZ

CA

CD

CF

CG

CH

CI

CK

(grants from New Zealand are effective in the Cook Islands)

Office Ivoirien de la Propriété Intellectuelle (OIPI)

Eidgenössisches Institut für Geistiges Eigentum (IGE)

Antenne Nationale de la Propriété Industrielle (ANPI); Ministère du Développement Industriel et de la Promotion du Secteur Privé

Direction de la Propriété Industrielle; Ministère du Commerce et de l’Industrie

Canadian Intellectual Property Office; Industry Canada

Belize Intellectual Property Office (BELIPO)

National Centre of Intellectual Property (NCIP)

Companies and Intellectual Property Authority (CIPA); Ministry of Trade and Industry

(administered by Norway q.v.)

Bouvet Island

BV

Department of Intellectual Property; Ministry of Economic Affairs (MOEA)

Bhutan

BT

(none known)

http://www.oipi.ci/

http://www.ige.ch/

(none known)

(none known)

(none known)

http://www.cipo.ic.gc.ca/

http://www.belipo.bz/

http://www.belgospatent.org.by/

http://www.cipa.co.bw/

(none known)

http://www.moea.gov.bt/

(continued )

Annex C: Website addresses of national and regional patenting authorities

583

Chile

Cameroon

China (People’s Republic of)

Colombia

Costa Rica

Cuba

Cabo Verde

Curaçao*

CL

CM

CN

CO

CR

CU

CV

CW

http://www.cnipa.gov.cn/

http://www.minmidt.cm/

http://www.inapi.cl/

Web address#

Bureau for Intellectual Property of Curaçao

Instituto de Gestão da Qualidade e da Propriedade Intelectual (IGQPI)

Oficina Cubana de la Propiedad Industrial (OCPI)

Registro de la Propiedad Industrial; Registro Nacional; Ministerio de Justicia y Paz (MJP)

http://www.bip.cw/

http://www.igqpi.cv/

http://www.ocpi.cu/

http://www.rnpdigital.com/ Alt: http://www.mjp.go.cr/

División de Propiedad Industrial; Superintendência http://www.sic.gov.co/ de Indústria e Comércio (SIC)

China National Intellectual Property Administration (CNIPA)

Direction du Développement Technologique et de la Propriété Industrielle; Ministère des Mines, de l’Industrie et du Développement Technologique (MINMIDT)

Instituto Nacional de Propiedad Industrial (INAPI)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

584 Annex C: Website addresses of national and regional patenting authorities

Germany

Djibouti

Denmark

Dominica

Dominican Republic

Algeria

Eurasian Patent Eurasian Patent Organization (EAPO) Organization (EAPO)

Ecuador

Estonia

Egypt

DE

DJ

DK

DM

DO

DZ

EA

EC

EE

EG

http://www.cipo.gov.dm/

http://www.dkpto.dk/

http://www.odpic.dj Alt: http://odpic.net/

http://www.dpma.de/

http://www.upv.cz/

http://www.mcit.gov.cy/drcor

Egyptian Patent Office; Academy of Scientific Research and Technology (ASRT).

Eesti Patendiamet (EPA)

Servicio Nacional de Derechos Intelectuales (SENADI) replaced the Instituto Ecuatoriano de la Propiedad Intelectual (IEPI) in 

Institut National Algérien de la Propriété Industrielle (INAPI)

(continued )

http://www.egypo.gov.eg/ Alt: http://www.asrt.sci.eg/index.php/asrtdepartments/egpo

http://www.epa.ee/

https://www.propiedadintelectual.gob.ec/ Alt: http://www.iepi.ec/

http://www.eapo.org/

http://www.inapi.dz/

Oficina Nacional de la Propiedad Industrial (ONAPI) http://onapi.gob.do/

Companies and Intellectual Property Office (CIPO)

Patent- og Varemærkestyrelsen (PVS)

Office Djiboutien de la Propriete Industrielle et Commerce (ODPIC)

Deutsches Patent- und Markenamt (DPMA)

Úřad průmyslového vlastnictví (UPV)

Czechia

CZ

Intellectual and Industrial Property Section, Department of Registrar of Companies and Official Receiver (DRCOR); Ministry of Commerce, Industry and Tourism (MCIT)

Cyprus

CY

Annex C: Website addresses of national and regional patenting authorities

585

European Patent Office (EPO)

Eritrea

Spain

Ethiopia

Finland

Fiji

Falkland Islands

Faroe Islands

France

EP

ER

ES

ET

FI

FJ

FK

FO

FR

Institut National de la Propriete Industrielle (INPI)

(grants from Denmark are effective in the Faroe Islands)

(grants from United Kingdom may be re-registered in the Falkland Islands)

Fiji Intellectual Property Office (FIPO); Office of the Attorney-General

Patentti- ja rekisterihallitus (PRH)

Ethiopian Intellectual Property Office (EIPO)

Oficina Española de Patentes y Marcas (OEPM)

Domestic Trade and Intellectual Property; Ministry of Trade and Industry

European Patent Office (EPO)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

http://www.inpi.fr/

(none known)

(none known)

http://www.ag.gov.fj/

http://www.prh.fi/

http://www.eipo.gov.et/

http://www.oepm.es/

(none known)

http://www.epo.org/

Web address#

586 Annex C: Website addresses of national and regional patenting authorities

Gabon

United Kingdom

Patent Office of the Gulf Co-operation Council (GCC)

Grenada

Georgia

Guernsey

Ghana

Gibraltar

Greenland

Gambia

GA

GB

GC

GD

GE

GG

GH

GI

GL

GM

Industrial Property Office, Office of the Registrar General; Ministry of Justice

(grants from Denmark are effective in Greenland)

Registrar of Patents; Companies House

Registrar General’s Department; Ministry of Justice

Bailiwick of Guernsey IP Office

Sakartvelos Intelektualuri Sakutrebis Erovnuli Tsentri (Sakpatenti)

Corporate Affairs and Intellectual Property Office (CAIPO) Alt: Registrar of Companies and Intellectual Property; Supreme Court Registry

Patent Office of the Co-operation Council for the Arab States of the Gulf (GCC)

Intellectual Property Office

Office Gabonais de la Propriété Industrielle (OGAPI); Ministère de l’Industrie et des Mines Alt: Le Centre de Propriété Industrielle du Gabon (CEPIG) [administered by the same Government department] [website at www.cepig.net – NF]

(continued )

http://www.moj.gov.gm/departments/registrar_ general.php

(none known)

http://www.companieshouse.gi/

http://www.rgd.gov.gh/

http://ipo.guernseyregistry.com/

http://www.sakpatenti.gov.ge/

http://www.caipo.gov.gd/

http://www.gccpo.org/

http://www.ipo.gov.uk/

http://www.mines.gouv.ga/-ministere/organisme-sous-tutelle/-office-gabonais-de -la-propriete-industrielle-ogapi-/ Alt: http://www.mines.gouv.ga/-ministere/organisme-sous-tutelle/-le-centre-depropriete-industrielle-du-gabon-cepig/

Annex C: Website addresses of national and regional patenting authorities

587

Guinea

Equatorial Guinea

Greece

South Georgia and Uninhabited UK overseas dependent territory; no the South Sandwich IPR legislation in force. No mechanism for Islands extension of UK rights.

Guatemala

Guinea-Bissau

Guyana

Hong Kong

GN

GQ

GR

GS

GT

GW

GY

HK

(none known)

http://www.rpi.gob.gt/

(none known)

http://www.obi.gr/

(none known)

(none known)

Web address#

Intellectual Property Department

https://www.ipd.gov.hk/

Deeds and Commercial Registries Authority (DCRA); https://dcra.gov.gy/ Ministry of Legal Affairs (MOLA)

Direction Générale de la Propriété Industrielle; Ministère du Commerce, de l’Industrie et de la Promotion des Produits locaux

Registro de la Propiedad Intelectual; Ministerio de Economía

Hellenic Industrial Property Organisation (OBI)

Direction Générale de la Propriété Intellectuelle; Consejo de Investigaciones, Científicas y Tecnológicas de Guinea Ecuatorial (CICTE)

Service national de la Propriété Industrielle (SPI); Ministère de l’Industrie, des Petites et Moyennes Entreprises

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

588 Annex C: Website addresses of national and regional patenting authorities

Haiti

Hungary

International Bureau International Bureau of WIPO of WIPO

Indonesia

Ireland

Israel

Isle of Man

India

Iraq

Iran

HT

HU

IB

ID

IE

IL

IM

IN

IQ

IR

Industrial Property General Office; State Organization for Registration of Deeds and Properties

Industrial Property Department, Central Organization for Standardization and Quality Control (COSQC); Ministry of Planning

IP India; Ministry of Commerce & Industry

Department for Enterprise

Israel Patent Office (ILPO); Ministry of Justice

Intellectual Property Office of Ireland (IPOI)

Direktorat Jenderal Kekayaan Intelektual

Szellemi Tulajdon Nemzeti Hivatala

Service de la Propriété Intellectuelle, Direction des Affaires Juridiques; Ministère du Commerce et de l’Industrie (MCI)

Državni Zavod za Intelektualno Vlasništvo (DZIV)

Croatia

HR

Direccion General de Propiedad Intelectual de Honduras (DIGEPIH) Alt: Instituto de la Propriedad (IP Honduras)

Honduras

HN

http://iripo.ssaa.ir/

(continued )

http://cosqc.gov.iq/Patent/Default.aspx

http://ipindia.nic.in/

https://www.gov.im/categories/business-andindustries/intellectual-property/

http://www.justice.gov.il/En/Units/ILPO

https://www.ipoi.gov.ie/

http://www.dgip.go.id/

http://www.wipo.int/

http://www.hipo.hu/

http://www.mci.gouv.ht/

http://www.dziv.hr/

http://www.digepih.webs.com/ Alt: http://www.ip.gob.hn/ Annex C: Website addresses of national and regional patenting authorities

589

Iceland

Italy

Jersey

Jamaica

Jordan

Japan

Kenya

Kyrgyzstan

Cambodia

Kiribati

IS

IT

JE

JM

JO

JP

KE

KG

KH

KI

Intellectual Property Division, Ministry of Commerce, Industry and Cooperativeness (MCIC)

Department of Industrial Property (DIP), General Department of Industry; Ministry of Industry and Handicraft (MIH)

State Service of Intellectual Property and Innovation (Kyrgyzpatent)

Kenya Industrial Property Institute (KIPI)

Japan Patent Office

Industrial Property Protection Directorate; Ministry of Industry, Trade and Supply

Jamaica Intellectual Property Office (JIPO)

Intellectual Property Registry; Judicial Greffe

Ufficio Italiano Brevetti e Marchi

Einka Leyfa Stofan (ELS)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

https://mcic.gov.ki/intellectual-propertydivision/

http://www.mih.gov.kh/

http://www.patent.kg/ Alt: http://patent.kg/index.php/en/

http://www.kipi.go.ke/

http://www.jpo.go.jp/

http://www.mit.gov.jo/ Alt: https://ippd.mit.gov.jo/

http://www.jipo.gov.jm/

https://www.gov.je/Government/NonexecLegal/ JudicialGreffe/Sections/IntellectualProperty/ Pages/index.aspx

http://www.uibm.gov.it/

http://www.els.is/

Web address#

590 Annex C: Website addresses of national and regional patenting authorities

Comoros

St. Kitts and Nevis

Korea (North)

Korea (South)

Kuwait

Cayman Islands

Kazakhstan

Laos

Lebanon

St. Lucia

Liechtenstein

KM

KN

KP

KR

KW

KY

KZ

LA

LB

LC

LI

Bureau of Intellectual Property; Office of Economic Affairs (AVW)

Registry of Companies and Intellectual Property (ROCIP)

Intellectual Property Protection Authority; Ministry of Economy and Trade

Department of Intellectual Property; Ministry of Science and Technology.

National Institute of Intellectual Property (NIIP)

Registrar of Patents and Trademarks; General Registry

Patent and Trademark Department; Ministry of Commerce and Industry

Korean Intellectual Property Office (KIPO)

Invention Office of the Democratic People’s Republic of Korea

Intellectual Property Office; Ministry of Justice, Legal Affairs & Communications

Office Comorien de la Propriété Intellectuelle (OCPI); Ministère de la Production, de l’Environnement, de l’Energie, de l’Industrie et de l’Artisanat (MPEEIA)

http://www.avw.llv.li/

http://www.rocip.gov.lc/

http://www.economy.gov.lb/

http://www.most.gov.la/

http://www.kazpatent.org/

http://www.ciregistry.gov.ky/

https://www.moci.gov.kw/

http://www.kipo.go.kr/

(none known)

https://www.gov.kn/

(none known)

(continued )

Annex C: Website addresses of national and regional patenting authorities

591

Sri Lanka

Liberia

Lesotho

Lithuania

Luxembourg

Latvia

Libya

Morocco

Monaco

Moldova

LK

LR

LS

LT

LU

LV

LY

MA

MC

MD

Agentia De Stat pentru Proprietatea Intelectuală (AGEPI)

Office de la Propriété Industrielle; Ministry of Finance and Economy

Office Marocain de la Propriété Industrielle et Commerciale (OMPIC)

Intellectual Property & Innovation Department; National Agency for Scientific Research (NASR)

Latvijas Republikas Patentu valde (LRPV)

Office de la Propriété Intellectuelle (OPI); Ministère de l’Economie

Lietuvos Respublikos Valstybinis patentų biuras (VPB)

Registrar General’s Office; Ministry of Law and Constitutional Affairs

Liberian Intellectual Property Office (LIPO)

National Intellectual Property Office of Sri Lanka (NIPO)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

http://www.agepi.md/

https://mcipo.gouv.mc/

http://www.ompic.ma/

http://www.nasr.ly/

https://www.lrpv.gov.lv/

https://meco.gouvernement.lu/

http://www.vpb.lt/

(none known)

http://www.liberiaipo.org/

http://www.nipo.gov.lk/

Web address#

592 Annex C: Website addresses of national and regional patenting authorities

Montenegro

Madagascar

North Macedonia

Mali

Myanmar

Mongolia

Macao

Northern Mariana Islands

Mauritania

ME

MG

MK

ML

MM

MN

MO

MP

MR

Direction du Développement Industriel (DDI); Ministère du Commerce, de l’Industrie et du Tourisme

(grants from United States of America are effective in the Northern Mariana Islands)

Intellectual Property Department; Macau Economic Services Bureau

General Authority for Intellectual Property and State Registration (GAIPSR); Ministry of Justice & Home Affairs

Intellectual Property Section; Ministry of Education (Science and Technology)

Centre Malien de Promotion de la Propriété Intellectuelle (CEMAPI); Ministère du Commerce et de l’Industrie

State Office of Industrial Property (SOIP)

Office Malgache de la Propriété Industrielle (OMAPI)

Ministarstvo ekonomije, Direkcija za itelektualnu svojinu Crne Gore Alt: Zavod za intelektualnu svojinu Crne Gore (ZISCG)

http://www.commerce.gov.mr/

(none known)

http://www.economia.gov.mo/

http://www.burtgel.gov.mn/

http://www.moe-st.gov.mm/

(none known)

http://www.ippo.gov.mk/

http://www.omapi.mg/

http://www.mek.gov.me/ http://www.ziscg.me/

(continued )

Annex C: Website addresses of national and regional patenting authorities

593

Montserrat

Malta

Mauritius

Maldives

Malawi

Mexico

Malaysia

Mozambique

Namibia

MS

MT

MU

MV

MW

MX

MY

MZ

NA

https://www.registrargeneral.gov.mw/

http://www.trade.gov.mv/page/ipr

http://foreign.govmu.org/English/Pages/ Regional-Integration.aspx Alt: http://foreign.govmu.org/English/ AboutUs/Pages/International-Trade-Division. aspx Alt: http://foreign.gov.mu/

https://commerce.gov.mt/en/Industrial_ Property/Pages/home.aspx

(none known)

Web address#

Business and Intellectual Property Authority (BIPA)

Instituto da Propriedade Industrial (IPI)

Perbadanan Harta Intelek Malaysia (Intellectual Property Corporation of Malaysia [MyIPO])

http://www.bipa.na/

http://www.ipi.gov.mz/

http://www.myipo.gov.my/

Instituto Mexicano de la Propiedad Industrial (IMPI) http://www.impi.gob.mx/

Department of the Registrar General; Ministry of Justice and Constitutional Affairs

Intellectual Property Unit; Ministry of Economic Development

Industrial Property Office (IPO); Ministry of Foreign Affairs, Regional Integration and International Trade.

National IP Office of Malta

(grants from United Kingdom can be extended to Montserrat)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

594 Annex C: Website addresses of national and regional patenting authorities

Niger

Nigeria

Nicaragua

Netherlands

Norway

Nepal

Nauru

New Zealand

Organisation Africaine de la Propriété Intellectuelle

Oman

NE

NG

NI

NL

NO

NP

NR

NZ

OA

OM

https://www.iponz.govt.nz/

Intellectual Property Department; Ministry of Commerce and Industry (MOCI)

https://moci.gov.om/

(continued )

http://www.naurugov.nr/government/depart ments/department-of-justice-and-border-control. aspx

http://doind.gov.np/

http://www.patentstyret.no/

http://www.octrooicentrum.nl/ Alt: http://www.rvo.nl/octrooien

http://www.mific.gob.ni/

http://www.iponigeria.com/

http://www.mines.gouv.ne/

Organisation Africaine de la Propriété Intellectuelle http://www.oapi.int/ (OAPI)

Intellectual Property Office of New Zealand

Office of the Registrar of Patents, Trade Marks and Copyright; Department of Justice

Industrial Property Section; Ministry of Industry, Commerce & Supplies

Patentstyret

Octrooicentrum Nederland; Rijksdienst voor Ondernemend Nederland (RVO)

Registro de la Propiedad Intelectual (RPI); Ministerio de Fomento, Industria y Comercio (MIFIC)

Trademarks, Patents and Designs Registry

Agence Nationale de la propriété Industrielle et de la promotion de l’innovation (ANAPI); Ministère des Mines et du Développement Industriel

Annex C: Website addresses of national and regional patenting authorities

595

Panama

Peru

Papua New Guinea

Philippines

Pakistan

Poland

Portugal

Palau

Paraguay

Qatar

Romania

PA

PE

PG

PH

PK

PL

PT

PW

PY

QA

RO

(none known)

http://www.inpi.pt/

http://www.uprp.pl/

http://www.ipo.gov.pk/

http://www.ipophil.gov.ph/

http://www.ipopng.gov.pg/

http://www.indecopi.gob.pe/

http://www.mici.gob.pa/ Alt: https://www.digerpi.gob.pa/

Web address#

https://www.mec.gov.qa/

http://www.osim.ro/

Intellectual Property Department; Ministry of Economy and Commerce (MEC) Oficiul de Stat pentru Invenții și Mărci (OSIM)

Dirección Nacional de Propiedad Industrial (DINAPI) https://www.dinapi.gov.py/

(no patent law in force)

Instituto Nacional da Propriedade Industrial (INPI)

Urząd Patentowy Rzeczypospolitej Poiskiej (UPRP)

Intellectual Property Organisation of Pakistan

Intellectual Property Office of the Philippines

Intellectual Property Office of Papua New Guinea

Instituto Nacional de Defensa de la Competencia y de la Proteccíon de la Propriedad Intelectual (INDECOPI)

Dirección General del Registro de la Propiedad Industrial (DIGERPI); Ministerio de Comercio e Industrias (MICI)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

596 Annex C: Website addresses of national and regional patenting authorities

Serbia

Russian Federation

Rwanda

Saudi Arabia

Solomon Islands

Seychelles

Sudan

Sweden

Singapore

Saint Helena, Ascension and Tristan da Cunha

Slovenia

RS

RU

RW

SA

SB

SC

SD

SE

SG

SH

SI

http://www.zis.gov.rs/

Urad Republike Slovenije za intelektualno lastnino (URSIL) (Slovenian Intellectual Property Office, SIPO)

Legal and Lands Department; Government of St Helena

Intellectual Property Office of Singapore (IPOS)

Patent- och registreringsverket (PRV)

Registrar General of Intellectual Property; Ministry of Justice

Registration Division; Department of Legal Affairs, President’s Office

Registrar General’s Office; Ministry of Justice and Legal Affairs

Saudi Patent Office (SPO); King Abdullaziz City for Science and Technology (KACST). Superseded by Saudi Authority for Intellectual Property (SAIP)

Office of the Registrar General (ORG); Rwanda Development Board (RDB)

http://www.uil-sipo.si/

(none known)

http://www.ipos.gov.sg/

http://www.prv.se/

http://www.ipsudan.gov.sd/

(none known)

(none known)

(continued )

https://www.kacst.edu.sa/eng/IndustInnov/ SPO/ Alt: http://www.saip.gov.sa

http://org.rdb.rw/

Federal Service for Intellectual Property (Rospatent) http://www.rupto.ru/

Intellectual Property Office of the Republic of Serbia

Annex C: Website addresses of national and regional patenting authorities

597

Slovakia

Sierra Leone

San Marino

Senegal

Somalia

Suriname

South Sudan

São Tomé and Principe

SK

SL

SM

SN

SO

SR

SS

ST

http://www.aspit.sn/

http://www.usbm.sm/

http://www.oarg.gov.sl/

http://www.upv.sk/

Web address#

Serviço Nacional da Propriedade Intelectual (SENAPI)

Directorate of Registration of Businesses, Associations and NGOs; Ministry of Justice

Bureau Intellectuele Eigendom (BIE); Ministry of Justice & Police

http://senapi-stp.net/

http://www.goss.org/ [sub-page for Ministry of Justice]

http://www.gov.sr/ministerie-van-juspol/overjustitie-en-politie/departementen/departementsleiding/bureau-intellectuele-eigendom.aspx

Patents and Trade Marks Office; Ministry of Trade & http://www.mot.somaligov.net Industry

Agence Sénégalaise pour la Propriété Industrielle et l’Innovation Techologique (ASPIT); Ministry of Industry

Ufficio di Stato Brevetti e Marchi (USBM)

Office of the Administrator and Registrar-General (OARG)

Úrad priemyselného vlastníctva Slovenskej republiky (UPVSR)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

598 Annex C: Website addresses of national and regional patenting authorities

El Salvador

Sint Maarten*

Syria

eSwatini (Swaziland)

Turks & Caicos Islands

Chad

Togo

Thailand

Tajikistan

Timor-Leste

Turkmenistan

SV

SX

SY

SZ

TC

TD

TG

TH

TJ

TL

TM

http://commerce.gouv.td

http://tcifsc.tc/departments/registries/trade marks-patents

http://www.gov.sz/ [sub-page for Ministry of Commerce]

http://www.spo.gov.sy/

http://www.bip.sx/

http://www.cnr.gob.sv/

State Service on Intellectual Property; Ministry of Finance and Economy

(no patent law in force)

National Center for Patents and Information (NCPI); Ministry of Economic Development and Trade

Department of Intellectual Property (DIP); Ministry of Commerce

(continued )

http://www.tmpatent.org/ [link via EAPO website]

(none known)

http://www.ncpi.tj/

http://www.ipthailand.go.th/

Institut National de la Propriété Industrielle et de la (none known) Technologie (INPIT)

Direction de la Propriété Industrielle et de la Technologie; Ministère du Commerce et de l’Industrie

The Registrar of Trade marks/Patents; Financial Services Commission (FSC)

Intellectual Property Office (IPO); Ministry of Commerce, Industry and Trade

Syrian Patent Office (SPO); Ministry of Internal Trade and Consumer Protection, Directorate of Industrial and Commercial Property Protection.

Bureau for Intellectual Property Sint Maarten

Departamento de Registro de Propiedad Intelectual; Centro Nacional de Registros (CNR)

Annex C: Website addresses of national and regional patenting authorities

599

Tunisia

Tonga

Turkey

Trinidad and Tobago Intellectual Property Office

Tuvalu

Taiwan

Tanzania

Ukraine

TN

TO

TR

TT

TV

TW

TZ

UA

Tanganyika: http://www.brela.go.tz/ Zanzibar: http://www.bpra.go.tz/

http://www.tipo.gov.tw/

(none known)

http://www.ipo.gov.tt/

http://www.turkpatent.gov.tr/

http://www.mcctil.gov.to/

http://www.innorpi.tn/

Web address#

Ukrainian Intellectual Property Institute (Ukrpatent) http://www.uipv.org/

Tanganyika: Business Registrations and Licensing Agency (BRELA) Zanzibar: Zanzibar Business and Property Registration Agency (BPRA)

Taiwan Intellectual Property Office

Attorney General’s Office; Office of the Prime Minister

Türk Patent ve Marka Kurumu (Turkish Patent and Trademark Office, Turkpatent)

Registry & Intellectual Property Office (RIPO); Ministry of Commerce Consumers Trade Innovation & Labour (MCCTIL)

Institut National de la Normalisation et de la Propriété Industrielle (INNORPI)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

600 Annex C: Website addresses of national and regional patenting authorities

Uganda

United States of America

Uruguay

Uzbekistan

Vatican City (Holy See)

St. Vincent and the Grenadines

Venezuela

British Virgin Islands

Vietnam

Vanuatu

UG

US

UY

UZ

VA

VC

VE

VG

VN

VU

http://www.ursb.go.ug/

The Intellectual Property Office of the Republic of Vanuatu; Ministry of Trade, Tourism and Industry

Cục Sở hữu trí tuệ (National Office of Intellectual Property of Viet Nam (NOIP))

Intellectual Property Unit, Registry of Corporate Affairs; Financial Services Commission (FSC)

Servicio Autónomo de la Propriedad Intelectual (SAPI)

Commerce and Intellectual Property Office (CIPO)

Judicial Office; (grants from Italy are effective in Vatican City)

O’zbekiston Respublikasi Intellektual Mulk Agentligi (IMA)

Dirección Nacional de la Propiedad Industrial (DNPI); Ministerio de Industria, Energía y Minería (MIEM)

(none known)

http://www.noip.gov.vn/

(continued )

http://www.bvifsc.vg/registry-corporate-affairs

http://www.sapi.gob.ve/

http://www.cipo.gov.vc/

http://www.vaticanstate.va/

http://www.ima.uz/

http://www. dnpi.gub.uy Alt: http://www.miem.gub.uy/marcas-y-patentes

United States Patent and Trademark Office (USPTO) http://www.uspto.gov/

Uganda Registration Services Bureau (URSB); Ministry of Justice and Constitutional Affairs

Annex C: Website addresses of national and regional patenting authorities

601

Visegrad Patent Institute (VPI)

Yemen

South Africa

Zambia

XV

YE

ZA

ZM

Kosovo

XK†

Nordic Patent Institute (NPI)

Samoa

WS

XN

World Intellectual International Bureau of the WIPO Property Organization (WIPO)

WO

http://www.wipo.int/

Web address#

Patents and Companies Registration Agency (PACRA)

Companies & Intellectual Property Commission (CIPC)

The General Department for Intellectual Property Protection; Ministry of Industry and Trade

Visegrad Patent Institute (VPI)

Nordic Patent Institute (NPI)

Kosovo Industrial Property Agency (KIPA) or Agjencia për Pronësi Industriale (API); Ministry of Trade and Industry

http://www.pacra.org.zm/

http://www.cipc.co.za/

http://www.yipo.gov.ye/

http://www.vpi.int/

http://www.npi.int/

https://kipa.rks-gov.net/ Alt: http://www.kipa-ks.org

Registries of Companies and Intellectual Property https://www.mcil.gov.ws/services/intellectualDivision (RCIP); Ministry of Commerce, Industry and properties/ Labour (MCIL)

Country or authority Official name of intellectual property office (or name supervising government department)§

ST. Country code

(continued )

602 Annex C: Website addresses of national and regional patenting authorities

Zimbabwe

Zimbabwe Intellectual Property Office (ZIPO); Department of Deeds, Companies & Intellectual Property (DCIP)

http://www.dcip.gov.zw/

Notes: # Official names of IP offices or supervising government departments are provided in the original language where the country concerned uses a Latin script, or in English translation where the national language uses non-Latin scripts or alphabets. § The web address given is that of the national IP office, where it has its own website. In some countries, IP affairs are reported only on the website of the government department responsible for IP – in these examples, the parent department’s website address is given. If the entry for a country is in italics, the website has not been found during the current review, although the address is known to have been active in the past. In cases where two website addresses appear to be equally valid, both are given, the second indicated by “Alt:” for Alternative. * Following the dissolution of the Netherlands Antilles (formerly ST.3 code AN, now withdrawn) as a autonomous part of the Kingdom of the Netherlands in 2010, each of the constituent islands remains a part of the Kingdom under a different legal status. The islands of Aruba, Curaçao and Sint Maarten are autonomous constituent states (“landen”) within the Netherlands whilst Bonaire, Sint Eustatius and Saba are special municipalities (“bijzondere gemeenten”). Aruba and Curaçao have their own Bureaux of Intellectual Property. The Aruba Bureau is autonomous, whilst the Curaçao Bureau is a regional receiving office for the Octrooicentrum Nederland. All patent affairs for Bonaire, Sint Eustatius and Saba are administered by the Octrooicentrum Nederland; trademarks are handled by the Benelux Office for Intellectual Property (BOIP). † The two-letter code XK appears in the ISO 3166-alpha 2 listing and is used by some official bodies to indicate Kosovo, but has not officially been adopted as the ST.3 code, as of the September 2019 publication of the standard.

ZW

Annex C: Website addresses of national and regional patenting authorities

603

Annex D: Comparison of the class-level structure of the CPC (2018.05 edition) and IPC (2018.01 edition) The “No. of sub-classes” columns refer to the number of sub-classes (including indexing schemes) which belong to that class of the CPC or IPC, respectively, in the editions noted. Note that CPC class titles may be slightly re-worded, compared with the corresponding IPC classes, in some cases. Variations between the two schemes in the class structure or the number of available sub-classes are highlighted in bold italic type. Whenever classes are present in only one of the two classification systems, the corresponding row entry for the second system is left blank.

https://doi.org/10.1515/9783110552263-023

A

A

A A

A A A A A A A A

           

Agriculture; forestry; animal husbandry; hunting; trapping; fishing

Baking; edible doughs

Butchery; meat treatment; processing poultry or fish

Food or foodstuffs; their treatment, not covered by other classes

Tobacco; cigars; cigarettes; smokers’ requisites

Wearing apparel

Headwear

Footwear

Haberdashery; jewellery

Hand or travelling articles

Brushware

Furniture; domestic articles or appliances; coffee mills; spice mills; suction cleaners in general

A

A

A

A

A

A

A

A

A

A

A

A





Furniture; domestic articles or appliances; coffee mills; spice mills; suction cleaners in general

Brushware

Hand or travelling articles

Haberdashery; jewellery

Footwear

Headwear

Wearing apparel

Tobacco; cigars; cigarettes; smokers’ requisites

















Food or foodstuffs; their treatment, not covered by other  classes

Butchery; meat treatment; processing poultry or fish

Baking; equipment for making or processing doughs; doughs for baking

Agriculture; forestry; animal husbandry; hunting; trapping; fishing





A



HUMAN NECESSITIES

A

HUMAN NECESSITIES

No. of subclasses

No. of IPC Class title (IPC) subclass classes

CPC Class title (CPC) class

606 Annex D: Comparison of the class level structure of the CPC and IPC

Medical or veterinary science; hygiene

Life-saving; fire-fighting

Sports; games; amusements

PERFORMING OPERATIONS; TRANSPORTING

Physical or chemical processes or apparatus in general

Crushing, pulverising or disintegrating; preparatory treatment of grain for milling

Separation of solid materials using liquids or using pneumatic tables or jigs; magnetic or electrostatic separation of solid materials from solid materials or fluids; separation by high-voltage electric fields

Centrifugal apparatus or machines for carrying out physical or chemical processes

Spraying or atomising in general; applying liquids or other fluent materials to surfaces, in general

Generating or transmitting mechanical vibrations in general

Separating solids from solids; sorting

Cleaning

Disposal of solid waste; reclamation of contaminated soil

A

A

A

B

B

B

B

B

B

B

B

B

B

B B B

B

B

B

B

B B B

  

     

Subject matter not otherwise provided for in this section 

A 

Sports; games; amusements

A





















(continued )

Disposal of solid waste; reclamation of contaminated soil

Cleaning

Separating solids from solids; sorting

Generating or transmitting mechanical vibrations in general

Spraying or atomising in general; applying liquids or other fluent materials to surfaces, in general

Centrifugal apparatus or machines for carrying out physical or chemical processes

Separation of solid materials using liquids or using pneumatic tables or jigs; magnetic or electrostatic separation of solid materials from solid materials or fluids; separation by high-voltage electric fields

Crushing, pulverising or disintegrating; preparatory treatment of grain for milling

Physical or chemical processes or apparatus in general

PERFORMING OPERATIONS; TRANSPORTING







Life-saving; fire-fighting

A





Medical or veterinary science; hygiene

A



Annex D: Comparison of the class level structure of the CPC and IPC

607

B B

B B

B B

B B

B B



Machine tools; metal-working not otherwise provided for        

Casting; powder metallurgy

Grinding; polishing

Hand tools; portable power-driven tools; manipulators

Hand cutting tools; cutting; severing

Working or preserving wood or similar material; nailing or stapling machines in general

Working cement, clay or stone

Working of plastics; working of substances in a plastic state in general

Presses

Making articles of paper, cardboard or material worked in  a manner analogous to paper; working paper, cardboard or material worked in a manner analogous to paper

B

B

B

B

B

B

B

B

B

B

Making paper articles; working paper

Presses

Working of plastics; working of substances in a plastic state in general

Working cement, clay or stone

Working or preserving wood or similar material; nailing or stapling machines in general

Hand cutting tools; cutting; severing

Hand tools; portable power-driven tools; handles for hand implements; workshop equipment; manipulators

Grinding; polishing

Machine tools; metal-working not otherwise provided for

Casting; powder metallurgy























B



Mechanical metal-working without essentially removing material; punching metal

B

Mechanical metal-working without essentially removing material; punching metal

No. of subclasses

No. of IPC Class title (IPC) subclass classes

CPC Class title (CPC) class

(continued )

608 Annex D: Comparison of the class level structure of the CPC and IPC

Layered products

Additive manufacturing technology

Printing; lining machines; typewriters; stamps

Bookbinding; albums; files; special printed matter

Writing or drawing appliances; bureau accessories

Decorative arts

Vehicles in general

Railways

Land vehicles travelling otherwise than on rails

Ships or other waterborne vessels; related equipment

Aircraft; aviation; cosmonautics

Conveying; packing; storing; handling thin or filamentary material

Hoisting; lifting; hauling

Opening, closing or cleaning bottles, jars or similar containers; liquid handling

Saddlery; upholstery

Micro-structural technology

Nano-technology

B

B

B

B

B

B

B

B

B

B

B

B

B

B

B

B

B

B B B B B B B B B B B B

B B

B B B

                

Nano-technology

Micro-structural technology

Saddlery; upholstery

Opening or closing bottles, jars or similar containers; liquid handling

Hoisting; lifting; hauling

Conveying; packing; storing; handling thin or filamentary material

Aircraft; aviation; cosmonautics

Ships or other waterborne vessels; related equipment

Land vehicles travelling otherwise than on rails

Railways

Vehicles in general

Decorative arts

Writing or drawing appliances; bureau accessories

Bookbinding; albums; files; special printed matter

Printing; lining machines; typewriters; stamps

Additive manufacturing technology

Layered products

(continued )



































Annex D: Comparison of the class level structure of the CPC and IPC

609

CHEMISTRY; METALLURGY

Inorganic chemistry

Treatment of water, waste water, sewage or sludge

Glass; mineral or slag wool

Cements; concrete; artificial stone; ceramics; refractories

Fertilisers; manufacture thereof

Explosives; matches

Organic chemistry

Organic macromolecular compounds; their preparation or chemical working-up; compositions based thereon

Dyes; paints; polishes; natural resins; adhesives; miscellaneous compositions; miscellaneous applications of materials

Petroleum, gas or coke industries; technical gases containing carbon monoxide; fuels; lubricants; peat

C

C

C

C

C

C

C

C

C

C

C

CPC Class title (CPC) class

(continued )

C C C C C

C C C C

C

C

         



B

No. of subclasses

Petroleum, gas or coke industries; technical gases containing carbon monoxide; fuels; lubricants; peat

Dyes; paints; polishes; natural resins; adhesives; compositions not otherwise provided for; applications of materials not otherwise provided for

Organic macromolecular compounds; their preparation or chemical working-up; compositions based thereon

Organic chemistry

Explosives; matches

Fertilisers; manufacture thereof

Cements; concrete; artificial stone; ceramics; refractories

Glass; mineral or slag wool

Treatment of water, waste water, sewage or sludge

Inorganic chemistry

CHEMISTRY; METALLURGY























Subject matter not otherwise provided for in this section 

No. of IPC Class title (IPC) subclass classes

610 Annex D: Comparison of the class level structure of the CPC and IPC

Sugar industry

Skins; hides; pelts; leather

Metallurgy of iron

Metallurgy; ferrous or non-ferrous alloys; treatment of alloys or non-ferrous metals

Coating metallic material; coating material with metallic material; chemical surface treatment; diffusion treatment of metallic material; coating by vacuum evaporation, by sputtering, by ion implantation or by chemical vapour deposition, in general; inhibiting corrosion of metallic material or incrustation in general

Electrolytic or electrophoretic processes; apparatus therefor

Crystal growth

Combinatorial technology

TEXTILES; PAPER

Natural or artificial threads or fibres; spinning

C

C

C

C

C

C

C

C

D

D



C C C

 

D

C





C



D

Subject matter not otherwise provided for in this section 

C





Combinatorial technology

C





Natural or artificial threads or fibres; spinning

TEXTILES; PAPER

Crystal growth

Electrolytic or electrophoretic processes; apparatus therefor

(continued )











Coating metallic material; coating material with metallic  material; chemical surface treatment; diffusion treatment of metallic material; coating by vacuum evaporation, by sputtering, by ion implantation or by chemical vapour deposition, in general; inhibiting corrosion of metallic material or incrustation in general

Metallurgy; ferrous or non-ferrous alloys; treatment of alloys or non-ferrous metals

Metallurgy of iron





Skins; hides; pelts; leather

C





Sugar industry

Biochemistry; beer; spirits; wine; vinegar; microbiology;  enzymology; mutation or genetic engineering

Animal or vegetable oils, fats, fatty substances or waxes; fatty acids therefrom; detergents; candles

C

C

C



Biochemistry; beer; spirits; wine; vinegar; microbiology;  enzymology; mutation or genetic engineering

C



Animal or vegetable oils, fats, fatty substances or waxes; fatty acids therefrom; detergents; candles

C

Annex D: Comparison of the class level structure of the CPC and IPC

611

D

D D

D

   

Braiding; lace-making; knitting; trimmings; non-woven fabrics

Sewing; embroidering; tufting

Treatment of textiles or the like; laundering; flexible materials not otherwise provided for

Ropes; cables other than electric

Indexing scheme associated with subclasses of section D, relating to textiles

Paper-making; production of cellulose

FIXED CONSTRUCTIONS

Construction of roads, railways or bridges

Hydraulic engineering; foundations; soil-shifting

D

D

D

D

D

D

E

E

E

E E E

 

Hydraulic engineering; foundations; soil-shifting

Construction of roads, railways or bridges

FIXED CONSTRUCTIONS







Subject matter not otherwise provided for in this section 

D











Paper-making; production of cellulose

Ropes; cables other than electric

Treatment of textiles or the like; laundering; flexible materials not otherwise provided for

Sewing; embroidering; tufting

Braiding; lace-making; knitting; trimmings; non-woven fabrics

Weaving

D







D



Weaving

D





D



Yarns; mechanical finishing of yarns or ropes; warping or beaming

D

Yarns; mechanical finishing of yarns or ropes; warping or beaming

No. of subclasses

No. of IPC Class title (IPC) subclass classes

CPC Class title (CPC) class

(continued )

612 Annex D: Comparison of the class level structure of the CPC and IPC

F

F

Machines or engines for liquids; wind, spring, weight or  miscellaneous motors; producing mechanical power or a reactive propulsive thrust, not otherwise provided for 

Positive-displacement machines for liquids; pumps for liquids or elastic fluids

Indexing schemes relating to engines or pumps in various subclasses of classes F-F

Fluid-pressure actuators; hydraulics or pneumatics in general

F

F

F

F



 F

F



Combustion engines; hot-gas or combustion-product engine plants

F

F



Machines or engines in general; engine plants in general; steam engines

F

F



MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

Subject matter not otherwise provided for in this section 

E

F

Earth drilling; mining

E



Earth drilling; mining

E

E



Doors, windows, shutters or roller blinds, in general; ladders

E

E

Fluid-pressure actuators; hydraulics or pneumatics in general



















(continued )

Positive-displacement machines for liquids; pumps for liquids or elastic fluids

Machines or engines for liquids; wind, spring, weight or miscellaneous motors; producing mechanical power or a reactive propulsive thrust, not otherwise provided for

Combustion engines; hot-gas or combustion-product engine plants

Machines or engines in general; engine plants in general; steam engines

MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

Doors, windows, shutters or roller blinds, in general; ladders

Locks; keys; window or door fittings; safes





Locks; keys; window or door fittings; safes

E

Building

E





Building

E

Water supply; sewerage

E



Water supply; sewerage

E

Annex D: Comparison of the class level structure of the CPC and IPC

613

Ammunition; blasting

Subject matter not otherwise provided for in this section 

F F F F F F

F F F F F F

     

    

Storing or distributing gases or liquids

Lighting

Steam generation

Combustion apparatus; combustion processes

Heating; ranges; ventilating

Refrigeration or cooling; combined heating and refrigeration systems; heat pump systems; manufacture or storage of ice; liquefaction or solidification of gases

Drying

Furnaces; kilns; ovens; retorts

Heat exchange in general

Weapons

Ammunition; blasting

F

F

F

F

F

F

F

F

F

F

F









Weapons

Heat exchange in general

Furnaces; kilns; ovens; retorts

Drying











Refrigeration or cooling; combined heating and  refrigeration systems; heat pump systems; manufacture or storage of ice; liquefaction or solidification of gases

Heating; ranges; ventilating

Combustion apparatus; combustion processes

Steam generation

Lighting

Storing or distributing gases or liquids





F



Engineering elements or units; general measures for producing and maintaining effective functioning of machines or installations; thermal insulation in general

F

Engineering elements or units; general measures for producing and maintaining effective functioning of machines or installations; thermal insulation in general

No. of subclasses

No. of IPC Class title (IPC) subclass classes

CPC Class title (CPC) class

(continued )

614 Annex D: Comparison of the class level structure of the CPC and IPC

PHYSICS

Measuring; testing

Optics

Photography; cinematography; electrography; holography

Horology

Controlling; regulating

Computing; calculating; counting

Checking-devices

Signalling

Education; cryptography; display; advertising; seals

Musical instruments; acoustics

Information storage

Instrument details

Information and Communication Technology [ICT] specially adapted for specific application fields

Nuclear physics; nuclear engineering

ELECTRICITY

G

G

G

G

G

G

G

G

G

G

G

G

G

G

G

H

G G G G G G G G G G

G G

          

H

Subject matter not otherwise provided for in this section 

G





Nuclear physics; nuclear engineering

G

ELECTRICITY

Information and Communication Technology [ICT] specially adapted for specific application fields

Instrument details

Information storage

Musical instruments; acoustics

Educating; cryptography; display; advertising; seals

Signalling

Checking-devices

Computing; calculating; counting

Controlling; regulating

Horology

Photography; cinematography; analogous techniques using waves other than optical waves; electrography; holography

Optics

(continued )

































Measuring; testing

G





PHYSICS

G



Annex D: Comparison of the class level structure of the CPC and IPC

615

Subject matter not otherwise provided for in this section 

H H H H

  

Basic electronic circuitry

Electric communication technique

Electric techniques not otherwise provided for

GENERAL TAGGING OF NEW TECHNOLOGICAL DEVELOPMENTS; GENERAL TAGGING OF CROSSSECTIONAL TECHNOLOGIES SPANNING OVER SEVERAL SECTIONS OF THE IPC; TECHNICAL SUBJECTS COVERED BY FORMER USPC CROSS-REFERENCE ART COLLECTIONS [XRACs] AND DIGESTS

Technologies or applications for mitigation or adaptation against climate change

Information or communication technologies having an impact on other technology areas

Technical subjects covered by former USPC

H

H

H

Y

Y

Y

Y









Electric techniques not otherwise provided for

H



Generation; conversion or distribution of electric power

H

Electric communication technique

Basic electronic circuitry

Generation, conversion or distribution of electric power











H



Basic electric elements

H

Basic electric elements

No. of subclasses

No. of IPC Class title (IPC) subclass classes

CPC Class title (CPC) class

(continued )

616 Annex D: Comparison of the class level structure of the CPC and IPC

https://doi.org/10.1515/9783110552263-024

. using falling playing bodies or playing bodies running on an inclined surface, e.g. pinball games Additional FI structure . . Using small balls . . . Details, accessories . . . . Supply devices for playing balls . . . . . Small ball handling devices attached to playing boards . . . . . . prize winning devices . . . . . . . operation of prize winning devices . . . . . . . . mechanical . . . . . . . . . Tulip type . . . . . . . . . . with linked operation

AF /

AF /

FI notation















 B

 C

Main group

Sub-group(s)

Sports; games; amusements

(continued)

Indoor games using small moving playing bodies, e.g. balls, discs or blocks.

AF

Sub-class

FI sub-divisions

Card, board or roulette games; indoor games using small moving playing bodies; video games; games not otherwise provided for.

A

Class

Human necessities

A

Section

IPC structure

IPC notation

Level

Annex E: Selective comparison of Japanese FI classification schedules with the corresponding IPC

Rigid or semi-rigid containers of polygonal cross-section, e.g. boxes, cartons or trays, formed by folding or erecting one or more blanks made of paper. . Details of containers or of foldable or erectable container blanks . . Integral, inserted or attached portions forming internal or external fittings . . . Handles . . . . formed by folding a blank Additional FI structure . . . . . integrated with container . . . . . . container formed by folded blank composing cylindrical body . . . . . . . handle formed by extension part of closed lid flap, closed lid flap or extension part of side flap . . . . . . . . each of two opposite closing lid flaps having handle elements touching each other . . . . . . . . . at least one closed lid flap is equipped with slit which completely surround two handle elements and hold position of handle

BD

BD /

BD /

BD /

BD /

BD /

FI notation











Sub-class

Main group

Sub-group(s)

FI sub-divisions

Containers for storage or transport of articles or materials, . . . .; accessories, closures, or fittings therefor; packaging elements; packages.

B

Class

Conveying; packing; storing; handling thin or filamentary material.

Performing operations; Transporting

B

Section

IPC structure

IPC notation

Level

(continued)

618 Annex E: Selective comparison of FI and IPC schedules

Heterocyclic compounds containing ,,-triazine rings . not condensed with other rings . . having three double bonds between ring members or between ring members and non-ring members . . . with only hetero atoms directly attached to ring carbon atoms . . . . Only oxygen atoms . . . . . Cyanuric or isocyanuric esters Additional FI structure

CD

CD /

CD /

CD /

CD /

CD /

CD /

FI notation

Sub-class

Main group

Sub-group(s)

FI sub-divisions

Heterocyclic compounds

C

Class

. . . . . . . Hydrocarbon radical directly bonded to the nitrogen atom in the heterocyclic ring . . . . . . . . Manufacturing method . . . . . . . Substituted hydrocarbon radical directly bonded to the nitrogen atom in the heterocyclic ring

B

C

D

(continued )

. . . . . . having the structure shown in figure

A

Organic chemistry

Chemistry; metallurgy

C

Section

IPC structure

IPC notation

Level

Annex E: Selective comparison of FI and IPC schedules

619

(continued ) Additional FI structure . . . . . . . . Radical containing oxygen as the substitute radical . . . . . . . . . Ether radical as the substitute radical . . . . . . . . . . Ester radical as the substitute radical . . . . . . . . Allyl radical in which the hydrocarbon radical has or does not have alkylene . . . . . . . . Isocyanate radical as the substitute radical . . . . . . . . . Manufacturing method . . . . . . Cyanuric acid ester . . . . . . . Allyl radical bonded to the carbon atom in the heterocyclic ring via oxygen . . . . . . . . Allyl radical containing oxygen connected to the carbon atom in the heterocyclic ring via oxygen . . . . . . . Chain type substituted hydrocarbon radical connected to the carbon atom in the heterocyclic ring via oxygen . . . . . . Others

FI notation

E

F

G

H

K

L

M

N

P

Q

Z

620 Annex E: Selective comparison of FI and IPC schedules

. from homopolycondensation products . . from polyesters

DF /

DF /

DF /

Main group

Sub-group(s)

Additional FI structure . . . Characterised by fabricating methods

. . . Characterized by purpose, physical properties

. . . Characterized by structures and figures of filaments and threads

. . . Characterized by polymer structures . . . . From hydroxy carboxylic acid

FI notation

 (+  divisions)

 (+  divisions)

 (+  divisions)



 (+  divisions)

Natural or man-made threads or fibres; spinning

(continued )

Monocomponent man-made filaments or the like of synthetic polymers; Manufacture thereof

DF

Sub-class

FI sub-divisions

Chemical features in the manufacture of man-made filaments . . .. . .; apparatus specially adapted for the manufacture of carbon filaments

D

Class

Textiles; paper

D

Section

IPC structure

IPC notation

Level

Annex E: Selective comparison of FI and IPC schedules

621

Roof coverings; sky-lights; gutters; roof-working tools Special arrangements or devices in connection with roof coverings; Roof drainage . Roof drainage; Drainage fittings in flat roofs . . Gutters . . . Means for fastening gutter parts together

E

ED

ED /

ED /

ED /

ED /

Class

Sub-class

Main group

Sub-group(s)

Building

Fixed constructions

E

. . . . Showing liquid crystal, anisotropism (used in conjunction with the characteristics of polymer structure)



Section

. . . . Polyester having heterocyclic rings



IPC structure

. . . . From dicarboxylic acid and dihydroxy compounds

 (+  divisions)

IPC notation

Additional FI structure

FI notation

Level

(continued )

622 Annex E: Selective comparison of FI and IPC schedules

Arrangements for preventing or removing deposits or corrosion, not provided for in another subclass . Defrosting cycles Additional FI structure . Defrosting cycles

FB

FB /

FB /

FI notation

(+  divisions)

Sub-class

Main group

Sub-group(s)

FI sub-divisions

Refrigeration machines, plants, or systems; combined heating and refrigeration systems; heat pump systems

F

Class

(continued )

Refrigeration or cooling; combined heating and refrigeration systems; heat pump systems; manufacture or storage of ice; liquefaction or solidification of gases

Mechanical engineering; lighting; heating; weapons; blasting

F

. . . . Gutter catchments

 (+  divisions)

Section

. . . . Connecting eaves gutters and down pipes

 (+  divisions)

IPC structure

. . . . connection along direction perpendicular to axis

 (+  divisions)

IPC notation

. . . . Connecting along axial direction

 (+  divisions)

Level

FI sub-divisions

Additional FI structure

FI notation

Annex E: Selective comparison of FI and IPC schedules

623

(continued ) Additional FI structure . . by operating compressors

. . . by hot refrigerants

. . . . by hot gas bypasses

. . . . . with several evaporator circuits

. . . . . . evaporator circuits in parallel . . . . . . . evaporators being connected in series during defrosting . . . . . . . . condensed by one evaporator and evaporated by the other evaporator . . . . . . . . . selectively selecting evaporators to be condensed or evaporated . . . . . . . . . . Characterized by control . . . . . . . . . . . Characterized by control before and after the start or end of defrosting or control before and after switching defrosting to other evaporators . . . . by the reverse cycle

. . by two or more different defrosting cycles . . common control, e.g. control by frost falling detection

FI notation

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 C

 E

 F

 G

 H

 J

 (+  divisions)



 ( divisions)

624 Annex E: Selective comparison of FI and IPC schedules

. Digital recording or reproducing . . Error detection or correction; Testing Additional FI structure . . . Testing

. . . Error detection/correction . . . . Purpose

. . . . Error detection/correction process

. . . . . Error detection/correction by pattern comparison

GB /

GB /

GB /

FI notation

 (+  divisions)



 (+  divisions)

 (+  divisions)

 (+  divisions)

Main group

Sub-group(s)

Information storage

(continued )

Signal processing not specific to the method of recording or reproducing; Circuits therefor

GB

Sub-class

FI sub-divisions

Information storage based on relative movement between record carrier and transducer

G

Class

Physics

G

Section

IPC structure

IPC notation

Level

Annex E: Selective comparison of FI and IPC schedules

625

(continued ) Additional FI structure . . . . . Encoding/decoding process . . . . . . Characterised by the coding type.

. . . . . . . Convolutional code

. . . . . . . Combinations of codes

. . . . . . Characterised by the code capability.

. . . . . . Encoding processing method

. . . . . . Processing device

. . . . . Control by the error signal

. . . . . . Retry (re-recording or re-reading)

. . . . . Error compensation, interpolation

FI notation



 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

 (+  divisions)

626 Annex E: Selective comparison of FI and IPC schedules

Processes or apparatus specially adapted for the manufacture or treatment of semiconductor or solid state devices or of parts thereof . Manufacture or treatment of semiconductor devices or of parts thereof . . the devices having at least one potential-jump barrier or surface barrier, e.g. PN junction, depletion layer, carrier concentration layer . . . the devices having semiconductor bodies comprising elements of group IV of the Periodic System or AIIIBV compounds with or without impurities, e.g. doping materials

HL

HL /

HL /

HL /

HL /

Sub-class

Main group

Sub-group(s)

Basic electric elements

(continued )

Semiconductor devices; electric solid state devices not otherwise provided for

H

Class

Electricity

H

Section

. . . . Characterised by the error cause or type thereof.

 (+  divisions)

IPC structure

. . . . . Characterised by the object signal.

 (+  divisions)

IPC notation

. . . . Characterised by the error detection/correction object

 (+  divisions)

Level

. . . . Other processes relating to the error detection/correction process

 (+  divisions)

Annex E: Selective comparison of FI and IPC schedules

627

FI sub-divisions

Level

(continued ) IPC structure . . . . Treatment of semiconductor bodies using processes or apparatus not provided for in groups HL /-HL / Additional FI structure . . . . . Semi-conductor body exposure . . . . . . Ultraviolet, far ultraviolet, and visible light radiation exposure . . . . . . . Projection exposure (reticule) . . . . . . . . Alignment . . . . . . . . . Projection exposure alignment using marks . . . . . . . . . . for step and repeat projection exposure . . . . . . . . . . . with wafer marks and mask marks (process) . . . . . . . . . . . . Detection of alignment marks . . . . . . . . . . . . . Optically . . . . . . . . . . . . . . Light sources for detection

IPC notation

HL /

FI notation













 D

 E

 F

 G

628 Annex E: Selective comparison of FI and IPC schedules

Annex F: The theme groups of the Japanese F-term system (2016 revision) The Japan Patent Office’s F-term system is hierarchical in structure, with a toplevel theme group consisting of the first 2 characters of a 5-character theme code. There are approximately 2,800 theme codes, each defining a broad technical field, and related to one or more subject areas within the FI classification system. The subject coverage of a given theme code is most commonly defined by a contiguous range of FI classifications (e.g. theme code 4F035 “Spray control apparatus” is defined by FI groups B05B 12/00 to B05B 13/06 inclusive). However, occasionally a theme code may be formed from either (i) a single specific sub-group in the FI classification (e.g. 4M119 “MRAM or spin memory techniques” covers FI sub-group H01L 27/105,447 only), or (ii) a cluster of FI groups from the same sub-class (e.g. 4F205 “Moulding by coating moulds; moulding reinforced plastics” is defined by three ranges of FI groups: B29C 41/00 to 41/36 inclusive; B29C 41/46 to 41/52 inclusive; and B29C 70/00 to 70/88 inclusive), or (iii) a cluster of FI groups from different sections, classes or sub-classes (e.g. 5K028 “Time-division multiplex systems” is defined by one range of FI groups from sub-class H04J (3/00 to 3/26 inclusive) and a second range of groups from sub-class H04L (5/22 to 5/26 inclusive)). Out of the 2,800 theme codes, approximately three-quarters have been elaborated into a matrix structure of sub-divisions; the remaining quarter exist only as a broad search filter at the theme code level. For the sub-divided theme codes, the subject matter is divided first into a small number of “viewpoints” (conceptually equivalent to a spreadsheet row but often displayed over more than one physical row of the matrix) and then into a large number of individual 4-character “term codes” or “figures” (equivalent to a spreadsheet cell). For example: D

Theme group

Chemical engineering

D

Theme code

• Treating of waste gases

D AA

Viewpoint

•• Component to be treated

D AA

Term code

••• Halogens or halides

Note that sequential term codes may form hierarchies within their viewpoint, but always have the same 4-character notation. For example, the above term code structure continues below AA17: https://doi.org/10.1515/9783110552263-025

630

Annex F: The theme groups of the Japanese F-term system (2016 revision)

D

Theme group

Chemical engineering

D

Theme code

• Treating of waste gases

D AA

Viewpoint

•• Component to be treated

D AA

Term code

••• Halogens or halides

D AA

Term code

•••• Chlorine (Cl) or chlorides

D AA

Term code

••••• Hydrogen chloride (HCl)

Some term codes may be further linked to an additional (or “additive”) code placed after a dot e.g. 4G169 EA01.X. In this example, the X suffix indicates that the subject matter is described in the document claims. In the following table, the “total theme codes” column indicates the number of theme codes present in the system up to the 2016 revision, which is the current English-language translated version at the time of writing (mid-2018). New theme codes are being continually developed by the JPO, and some codes are periodically closed and/or re-arranged into new theme groups. The “discontinued codes” column shows the number of theme codes within each given theme group which have been discontinued, as the system has been revised over time; these are no longer being applied to new documents. However, some discontinued codes may still be relevant for retrieval of older literature. Further details on the revision status of the F-term system can be found (Japanese-language only) at https://www.jpo.go.jp/system/patent/gaiyo/bunrui/ fi/themecode.html, including a spreadsheet of all theme code tables at https:// www.jpo.go.jp/system/patent/gaiyo/bunrui/fi/document/themecode/code.xlsx. Titles or partial titles of theme groups in italics (below) are unofficial translations or clarifications, based on reviewing the subject matter covered by the group.

Total theme codes

Discontinued codes





Group 

Residual technology

B

Bioresources





C

Business machinery





D

Civil engineering





E

Construction





Annex F: The theme groups of the Japanese F-term system (2016 revision)

631

(continued ) Total theme codes

Discontinued codes

F

Measurement





G

Applied physics





H

Applied optics





K

Optical devices





N

Books and special printed materials





Group 

Mechanics





B

Textile processing





C

Production machinery





D

Transportation





E

Packaging machinery and checking devices





F

Physical distribution machinery





G

[Auto]Motive machinery





H

Automatic control





J

General machinery





K

Living [domestic] machinery





L

Air conditioning [and heating] machinery





Group 

Chemistry





B

Biotechnology





C

Medical science





D

Chemical engineering





E

Mechanical metal working





F

Polymer processing





G

Inorganic chemistry





H

Applied chemistry





632

Annex F: The theme groups of the Japanese F-term system (2016 revision)

(continued ) Total theme codes

Discontinued codes

J

High [molecular weight] polymers





K

Metals electrochemistry





L

Natural and synthetic fabric and fibre treatment, including paper





M

Semiconductors





Group 

Electricity





B

Data processing





C

Electronic image devices





D

Information storage





E

Interfaces [Electronic components and connectors]





F

Manufacture of semiconductors, semiconductor-based products





G

Telephonic communication





H

Image processing





J

Electronic circuitry





K

Digital communications





L

Computer applications





M

Dynamic Random Access Memory





Group 

Software

A

Software



Appendix 1: Glossary of patent terminology Anticipation

If a search reveals prior art which is sufficiently close to challenge the patentability of an application, the application is said to have been “anticipated”.

Applicant

Person applying for the patent. May be an individual or a corporate body (usually the inventor’s employer)

Application

Document lodged at a patent office, describing the invention for which the applicant seeks protection. Also used to indicate the published document laid open to public inspection, typically  months after the priority date.

Assignee

Strictly, the US corporate body or person in whom the rights to utilise a US-patented invention are invested. Loosely used in relation to non-US patents, to indicate the owner of a granted patent (also termed the proprietor).

Basic

The first-published member of a patent family.

Claims

Sequence of paragraphs at the end of a patent application defining the scope of monopoly sought. After substantive examination, the same section of the granted patent defines the legal rights of the proprietor.

Cognating

Procedure for combining two or more patent applications into a single case, to be examined as a unit.

Convention date

A later-filed application which claims priority from an earlier one is required to cite the date (and usually filing details) of the earlier case. Commonality in the Convention details are the basis for grouping patents into a family.

Deemed withdrawn

Declaration by a patent office that an applicant has failed to complete the necessary actions to ensure continuing examination of their application. The case is treated as if the applicant had taken positive steps to withdraw their case.

Designated state

A member country of a regional patent system, in which the applicant has indicated they wish to obtain patent protection via the regional route.

Disclosure

Public description or use which usually has the effect of destroying the novelty of an application (but see also Grace Period)

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Appendix 1: Glossary of patent terminology

Division / Dividing out

Procedure for splitting one original application into two or more cases, each of which is examined separately.

Equivalent

Second- or subsequently-published member(s) of a patent family.

Expiry

Termination of patent rights at the end of the patent term.

Family

Cluster of patent documents linked by one or more common priority date details. Comprises the basic, equivalents and (in some definitions) any non-Convention cases.

Gazette

Periodical publication of a national patent office, describing newly-published data on granted patent cases within their jurisdiction.

Grace period

An interval (typically  months) prior to the earliest patent application, during which time a disclosure of the invention will not destroy its novelty, provided that the disclosure is by, or authorised by, the inventor.

Grant

Statement by patent office that an application has fulfilled the patentability criteria and that the proprietor will be entitled to enforce their claims.

Infringement

Act of carrying out one or more activities which fall within the scope of the claims of a granted patent.

International Preliminary Examination

A non-binding opinion on the likely patentability of an invention filed under the Patent Cooperation Treaty. Conducted by an International Preliminary Examination Authority prior to transfer of the application to the national phase.

International Preliminary Examination Authority (IPEA)

One of a group of patent offices authorised to complete an International Preliminary Examination report on a Patent Cooperation Treaty international application.

International Preliminary Examination Report (IPER)

A non-binding opinion on the likely patentability of an invention filed under the Patent Cooperation Treaty. Conducted by an International Preliminary Examination Authority prior to transfer of the application to the national phase.

International Preliminary Report on Patentability (IPRP)

Procedure for delivering non-binding opinion on patentability during the international phase of the Patent Cooperation Treaty procedure. Replaced the earlier International Preliminary Examination Report from .

Appendix 1: Glossary of patent terminology

635

International Search Authority (ISA)

One of a group of patent offices authorised to complete a search report on a Patent Cooperation Treaty international application.

Invalidity

Proceedings in which a court or patent office may declare a previously-granted patent invalid due to one or more criteria. Often involving newly-identified prior art casting doubt on novelty, or arguments of lack of inventive step. Invalidity proceedings may be initiated as a counter-claim to infringement, but are not always heard in the same tribunal.

Inventive step

One of the common criteria for patentability; a demonstrable improvement over known technologies, requiring inventive capacity to be discovered.

Jurisdiction

Territory in which a given court or government has the power to administer justice and apply laws.

Lapse

Termination of patent rights before maximum theoretical term, frequently due to failure to pay renewal fees.

Legal status

Generic term for data concerning the point in the patenting procedure which an application has reached, or concerning post-grant events in the life of a granted patent.

Licence

Commercial agreement between the patent proprietor and another party, giving permission for them to carry out certain acts within the scope of the claims without danger of infringement action. The licence often includes terms for royalty payments to the proprietor, for example a percentage of the sale price on every item manufactured by the licensee.

Licence of right

Mechanism in some jurisdictions whereby owners of patents commit to grant a licence for others to work their patent. If the proprietor and the potential licensee cannot agree terms, the patent office or another tribunal may impose a contract. Licences of right are always nonexclusive. Proprietors may benefit from reduced renewal fees if their patent is endorsed “licences of right” in the national register.

Licensee

Holder of a licence from a patent proprietor. The proprietor may issue a single licence (sole licensee) or more than one.

636

Appendix 1: Glossary of patent terminology

Maintenance fees

See Renewal fees

National phase

Process of substantive examination of a Patent Cooperation Treaty application, carried out by the national patent offices of the designated states.

Non-Convention

An application which refers to the same invention as a known basic, but which does not claim the same priority date.

Novelty

One of the common criteria for patentability; a demonstration that the invention was not known (in the public domain) prior to the priority date of the application.

Nullity

See invalidity

Obviousness

One of the common grounds for opposition; objection to a patent on the grounds that it lacks inventive step.

Open to Public Inspection (OPI)

Action of making available to the public certain details about a patent application or a granted patent. Details vary widely in content, from short gazette entries to the entire specification.

Opposition

Legal process carried out before an internal patent office tribunal, in which a third party raises objections to the grant of a patent.

Paris Convention

Convention for the Protection of Industrial Property, , which governs reciprocal rights of patent applicants and proprietors in signatory states. One of the most important aspects is the mutual recognition of priority date.

Patent

Certificate recognising the rights of a proprietor to enforce their claims within a specified jurisdiction.

Patent Cooperation Treaty (PCT)

International treaty concluded at Washington DC in , governing a system of common international applications.

Patentability

Set of criteria in local patent law which are used to determine whether an application should be granted as a patent.

Preliminary examination

Short formal examination of an application, to ensure that local minimum standards and legal requirements for filing have been met.

Prior art

Subject matter in the public domain before the priority date of an application, which may be used to demonstrate lack of novelty or inventive step.

Appendix 1: Glossary of patent terminology

637

Priority date

The date of first filing of a patent application, which defines the cut-off point of the prior art to be considered during substantive examination.

Proprietor

The owner of a patent. The rights may undergo reassignment subsequently.

Public domain

Subject matter which is made available to the general public.

Re-assignment

The process of permanently transferring patent rights to a third party.

Regional phase

Process of substantive examination of a Patent Cooperation Treaty application, carried out by a designated regional patent office which grants patents on behalf of its member states.

Rejection

Statement by a patent office that an application has failed to demonstrate that it fulfils one or more of the patentability criteria, and that no patent will be granted based on the application as it stands.

Renewal fees

Periodic fees payable by the proprietor to a patent office, required to maintain the rights in the patent.

Restoration

Legal procedure to allow a patent to return to granted status, usually after accidental lapse. May also apply if a pending application has been deemed withdrawn.

Revocation

Court or patent office action to withdraw the rights of the proprietor to enforce the claims of a patent.

Search report

Literature search listing which, in the opinion of the patent office, contains one or more items capable of leading to rejection of a patent application.

Specification

The main body of a patent document, containing the detailed description of an invention, often with examples and/or diagrams. Also used to mean the entire document published after grant, as distinct from the patent.

Substantive examination

Process carried out by a patent office, comparing the detailed contents of a patent application against the prior art, to determine patentability.

Supplementary Protection Certificate (SPC)

Distinct legal instrument, linked to a patent, which confers an additional term for a portion of the subject matter in the patent claims. Limited to use in the pharmaceutical and agrochemical industries.

638

Appendix 1: Glossary of patent terminology

Term

The period of time during which the proprietor is entitled to enforce their claims against a third party. Often calculated from the application date, although certain US and other national patents counted from the grant date.

Term Adjustment

Procedure to modify the term of a granted patent if administrative procedures during examination have not been completed in a timely manner. Delays by the examining office may lengthen term, delays by the applicant may shorten term.

Term Extension (or Restoration)

Procedure to allow a proprietor to continue to enforce their claims, beyond the normal term of a patent, due to unavoidable loss of rights early in the patent-granting process. May be achieved by a Supplementary Protection Certificate, or equivalent mechanisms.

Utility (industrial)

One of the common criteria for patentability; a demonstration that the invention can be used in industry.

Utility (patent)

US terminology for a patent of invention, to distinguish from Design Patent or Plant Patent. Not to be confused with utility model.

Utility Model

Simple form of patent with less stringent patentability criteria, commonly used for protecting small improvements. Historically limited to mechanical devices in some countries.

Withdrawal

Action by patent applicant to terminate proceedings on their application.

Appendix 2: Index of abbreviations NOTE: This listing is not a comprehensive list of individual product names – these are discussed on the first occasion when the abbreviation is used in the body of the text. This edition of the index includes some of the content of ISO 639-1, the two-letter codes for languages, used in the body of the text to indicate publication or searchable languages for patent documentation. Abbreviation

Definition

ACS

American Chemical Society

Af

Afrikaans

ISO – language code

AIA

America Invents Act

US legislation ()

AIDB

Associazione Italiana Documentalisti Brevettuali

Italian special interest group

AIPA

American Inventors’ Protection Act

US legislation ()

AIPPI

Association Internationale pour la Protection de la Propriété Intellectuelle

International organisation for research into, and formulation of policy for, the law relating to the protection of intellectual property.

ANCOM

Andean Community

APC

(Office of the) Alien Property Custodian

API

American Petroleum Institute

Ar

Arabic

ISO – language code

ARIPO

African Regional Industrial Property Organization

English-speaking African regional IP office.

ASEAN

Association of South-East Asian Nations

BEPIUG

Belgian Patent Information User Group

BPIP

British Patent Information Professionals

UK special interest group

BRIC(S)

Brazil, Russian, India, China, (South Africa)

Cooperative trading bloc

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Comments

US

640

Appendix 2: Index of abbreviations

(continued ) Abbreviation

Definition

Comments

BSM

Brevet Spécial de Médicament

French form of patent

CariCom

Caribbean Community

CAS

Chemical Abstracts Service

CBD

Convention on Bio-Diversity ()

CCP

Certificat Complémentaire de Protection

CD-ROM

Compact Disk-Read Only Memory

CEPIUG

Confederacy of European Patent Information User Groups

CET

Central European Time

CFIB

Club Francophone d’Information Brevet

French-speaking special interest group

CHC

Common Hybrid Classification

IP project

CHPIUG

Swiss Patent Information User Group

CINF

Chemical Information (Division)

CIPO

Canadian Intellectual Property Office

CLIR

Cross-Lingual Information Retrieval

CNIPA

China National Intellectual Property Administration

CPC

Cooperative Patent Classification USPTO-EPO project

CPI

Chemical Patents Index

CWS

Committee on WIPO Standards

De

German

DII

Derwent Innovations Index

DPCI

Derwent Patent Citation Index

French SPC (equivalent term)

Division of the ACS

PatentScope search assistant

Formerly Central Patents Index

ISO - language code

Appendix 2: Index of abbreviations

641

(continued ) Abbreviation

Definition

Comments

DPMA

Deutsches Patent- und Markenamt

German Patent and Trademark Office

DVD

Digital Versatile (or Video) Disk

DWPI

Derwent World Patent Index

EAPO

Eurasian Patent Organisation

EAST

Examiner Automated Search Tool USPTO product

EBI

European Bioinformatics Institute

Part of EMBL

ECLA

European Classification

defunct – replaced by CPC

EEC

European Economic Communities Now replaced by the EU

EMBL

European Molecular Biology Laboratory

En

English

EPC

European Patent Convention

EPIDOS

European Patent Information division of the EPO

EPO

European Patent Office

EPODOC

EPO Documentation

Internal EPO search file

Es

Spanish

ISO - language code

EU

European Union

EUIPO

European Union Intellectual Property Office

FAQ

Frequently Asked Questions

FDA

(US) Food & Drug Administration

Administers US patent term extensions for pharmaceuticals

FI

File Index

Japanese enhanced version of the IPC

Fi

Finnish

ISO - language code

FIPS

Federal Institute of Industrial Property (Cyrillic abbreviation)

Russian Federation

Clarivate product

ISO - language code

(no longer used)

Formerly OHIM

642

Appendix 2: Index of abbreviations

(continued ) Abbreviation

Definition

Comments

FPDB

First Page Data Base

EPO product

Fr

French

ISO - language code

FTO

Freedom To Operate

GCCPO

Patent Office for the Gulf Cooperation Council

He

Hebrew

ISO - language code

Hi

Hindi

ISO - language code

IDS

Information Disclosure Statement

US

IFI

Information For Industry

Later IFI Claims Patent Services

IFW

Image File Wrapper

US

INID

Internationally agreed Numbers for the Identification of bibliographic Data

Set of numeric codes which define a range of standard fields found on the front page of a patent document.

INPADOC

International Patent Documentation Centre

INPI

Institut National de la Propriété Industrielle

IP(R)

Intellectual Property (Rights)

IPC

International Patent Classification

IPCC

Intellectual Property Cooperation Japan Center

IPDL

Industrial Property Digital Library Early term for national patent office databases esp. WIPO-sponsored

IPEA

International Preliminary Examination Authority

IPER

International Preliminary Examination Report

IPO

Intellectual Property Office

(principally) French national patent office; also used by other countries.

Generic term for national or regional patent-granting authority

Appendix 2: Index of abbreviations

643

(continued ) Abbreviation

Definition

Comments

IPPH

Intellectual Property Publishing House

Part of the CNIPA (China)

IPRP

International Preliminary Report on Patentability

ISA

International Search Authority

ISBQPIP

International Standards Board for Qualified Patent Information Professionals

ISO

International Organization for Standardisation

It

Italian

ISO - language code

Ja

Japanese

ISO - language code

JAPIO

Japan Patent Information Organization

JISC

(formerly) Joint Information Systems Committee

UK education institute maintaining national information networks and services

JOPAL

Journal of Patent-Associated Literature

WIPO

JPO

Japan Patent Office

KD

Kind of Document (code)

KIPI

Korean Institute of Patent Information

KIPO

Korean Industrial Property Office

KIPRIC

Korean Industrial Property Rights Information Center

KIPRIS

Korean Industrial Property Rights Information System

Ko

Korean

Administrative body for certification, based in the Netherlands

Alphanumeric suffixes to patent publication numbers, used to identify the type of document and its publication stage.

ISO - language code

644

Appendix 2: Index of abbreviations

(continued ) Abbreviation

Definition

Comments

KPA

Korean Patent Abstracts

Ky

Kyrgyz

ISO - language code

MA

Marketing Authorisation

Government permission to launch a new pharmaceutical or agrochemical onto the general market, following acceptance of proof of safety and efficacy.

MAT

Machine-Asssisted Translation

MIMOSA

MIxed MOde Software

EPO application for disk products

Mk

Macedonian

ISO - language code

MT

Machine Translation

NCIPI

National Center for Industrial Property Information

Japan

NPI

Nordic Patent Institute

DK, IS, NO collaboration

NPL

Non-Patent Literature

Generic term for any items in the prior art which are not in the form of published patent documents

NTIS

National Technical Information Service

US

OAMPI

Office Africain et Malagache de la Propriété Industrielle

African and Malagasy Patent Rights Authority (defunct)

OAPI

Organization Africaine de la Propriété Industrielle

Francophone Africa regional office

OCR

Optical Character Recognition

OEPM

Oficina Española de Patentes y Marcas

Spanish Patent and Trademark Office

OHIM

Office for Harmonisation of the Internal Market

EU agency for designs and trademarks – now EUIPO

OJ

Official Journal

UK Patent Office gazette (old name)

OPI

Open to Public Inspection

OPS

Open Patent Services

EPO product

Appendix 2: Index of abbreviations

645

(continued ) Abbreviation

Definition

Comments

ORBIT

Online Retrieval of Bibliographic Information Timeshared

Predecessor to Questel-Orbit host; later relaunched as a separate web-based system

PACER

Public Access to Court Electronic Records

US District Court network

PAIR

Patent Application Information Retrieval

US

PAJ

Patent Abstracts of Japan

PATMG

Patent and Trade Mark Group

UK special interest group – now defunct

PCT

Patent Co-operation Treaty

International agreement for streamlining the initial stages of patent filing. Administered by the International Bureau of WIPO.

PDF

Portable Document Format

A standard format for sharing of electronic files. Used by many patent offices for distributing specifications or gazette pages.

PDJ

Patents & Designs Journal

UK Patent Office gazette

PDSC

Patent Documentation Service Center

China

PIF

Patent Information Forum

Danish special interest group

PING

Deutschsprachige Patentinformationsnutzergruppe

German-speaking special interest group

PIUG

Patent Information Users’ Group Inc.

US-based special interest group

PIZ(net)

Patentinformationszentren(net)

German library network

PLT

Patent Law Treaty

PMS

Participating Member States

PPH

Patent Prosecution Highway

Pt

Portuguese

PTA

Patent Term Adjustment

Subset of EU member states, participating in Unitary Patent project

ISO - language code

646

Appendix 2: Index of abbreviations

(continued ) Abbreviation

Definition

Comments

PTAB

Patent Trial and Appeal Board

Division of USPTO

PTDL

Patent & Trademark Depository Library

US - now replaced by Patent and Trademark Resource Center (PTRC).

PTE

Patent Term Extension

Usually limited to patents relating to specific subject-matter only

QPIP

Qualified Patent Information Professional

Ro

Romanian

ISO - language code

RO

Receiving Office

National IPO for deposit of PCT international applications

Ru

Russian

ISO - language code

SCIT

Standing Committee on Information Technologies

International committee providing policy guidance and technical advice on the overall information technology strategy of WIPO

SDI

Selective Dissemination of Information

SDWG

Standards and Documentation Working Group

Part of the SCIT committee structure, addressing matters relating to the Intellectual Property Digital Libraries and WIPO technical standards

SGML

Standard Generalized Markup Language

A generic method for creating specialist markup languages, which define the general structure and elements of an electronic document, for creation and distribution purposes.

SIR

Statutory Invention Registration

US

SISA

Supplementary International Search (Authority)

PCT procedure

SPC

Supplementary Protection Certificate

Intellectual property right, granted separately from a patent, which allows continued exclusivity for a specific marketed drug or agrochemical, beyond the expiry date of the corresponding patent.

Appendix 2: Index of abbreviations

647

(continued ) Abbreviation

Definition

Comments

SPLT

Substantive Patent Law Treaty

Sv

Swedish

TIFF

Tagged Image File Format

TRIPS

Trade-Related aspects of Intellectual Property

WTO treaty

TVPP

Trial Voluntary Protest Program

US

UIBM

Ufficio Italiano Brevetti e Marchi

Italian national patent office

UKIPO

United Kingdom Intellectual Property Office

UPC

Unified Patent Court Agreement

EU treaty establishing common patent court structure

UPOV

Union pour la Protection des Obtentions Végétales

International Union for the Protection of New Varieties of Plants; intergovernmental organisation based in Geneva.

URAA

Uruguay Round Agreements Act

US legislation ()

USC

United States Code

USPTO

United States Patent and Trademark Office

Uz

Uzbek

ISO - language code

VPI

Visegrád Patent Institute

CZ, HU, PL, SK collaboration

WIPO

World Intellectual Property Organisation

UN special agency charged with administering a range of international treaties in the field of intellectual property

WO

Written Opinion

Part of PCT Chapter I procedure

WON

Werkgemeenschap Octrooiinformatie Nederland

Dutch special interest group

WTO

World Trade Organisation

XML

eXtensible Markup Language

Zh

Chinese

ISO – language code

ISO - language code

Index Note: Index entries for non-English terminology, including titles of national official gazettes, document types, calendars etc. are retained in the original language in italics, with an indication of the country of origin in brackets. 18-month publication see Patent document (historical background and current practices) acquis communautaire (EU) 38 ActionablePatents.com see WIPS Global / Wisdomain Afghanistan 6, 580 Africa 303–340, see Table of Contents for major sub-topics, see also individual country entries, see also African Regional Industrial Property Organisation (ARIPO), see also Organisation Africaine de la Propriété Industrielle (OAPI) African Regional Industrial Property Organisation (ARIPO) 22, 294, 304–307, 337, 363–366, 402, 438, 440, 442, 522, 562, 580 Agdoc 397 AIDB 156, 378 Albania 37, 45, 402, 517, 569, 580 Alerting Abstracts Bulletins (DWPI) 399 Alerting services see Current Awareness Algeria 304, 310, 324–328, 385, 404, 443, 523, 570, 585 Al-Muwassafat (Tunisia) 321 America Invents Act (AIA) 61–62, 68, 70–72 American Inventors Protection Act (AIPA) 62–63, 66, 68, 71 American Samoa 59 Anaqua Inc. 78, 537 Andean Community (ANCOM) 256, 258–259, 273, 277, 283, 288–290 Andorra 402, 580 Angola 304, 402, 522, 572, 580 Anguilla 580 Antigua and Barbuda 402, 570, 580

https://doi.org/10.1515/9783110552263-028

Arab League 341, 561 Archway (Archives New Zealand) (database) 253 Argentina 255–257, 267–271, 290–291, 402, 440, 442, 522, 551, 580 ARIPO see African Regional Industrial Property Organisation (ARIPO) ARIPO Journal (ARIPO) 364–365 Ark Patent Intelligence 424–425 Armenia 160, 166, 169, 402, 522, 568, 580 Aruba 572, 581, 603 Arusha Protocol (2015) 364 Asia and Australasia 185–254, see Table of Contents for major sub-topics Asian Patent Information (EPO service) 86, 220, 234, see also East meets West (conference series) ASPEC (ASEAN Patent Examination Cooperation) 235, 561 Association of South-East Asian Nations (ASEAN) 235–236, 391, 561 Associazione Italiana Documentalisti Brevettuali (Italy) see AIDB AUPATFULL (database) 245 Auslegeschrift (German document type) 138, 142 AusPat 239, 245, 432–433 Australia 27, 29, 108, 206, 231, 236–245, 402, 418, 432, 437, 439–440, 442, 510, 521–522, 527, 551, 568, 581 Australian Official Journal of Patents 238–239, 245 Austria 36, 45, 108, 138, 231, 368, 402, 418, 421–422, 436–437, 442, 522, 581 Authority file 42, 252–253, 560 Ayurvedic Materia Medica 472 Azerbaijan 169, 402, 522, 569, 581

650

Index

Bahamas 403, 582 Bahrain 340–341, 368, 403, 571, 582 Bangladesh 403, 581 Bangui Agreement (1977) 363 Banjul Protocol (1993) 364 Barbados 403, 568, 581 Base National de la Propriété Industrielle (Tunisia) (database) 323–324 Beijing East Linden Co. 198, 472 Beilstein Handbook 467 Belarus 160, 166, 169, 403, 442, 522, 568, 583 Belgium 6, 15, 36, 45–46, 111, 403, 418, 437, 442, 522, 568, 581 Belize 293, 403, 522, 570, 583 Benin 304, 363, 568, 582 Bentham Science 485–486 Bermuda 582 Bhutan 403, 583 Bibliographic standards (of patent documents) see Patent document (general description) Biozulua 472 BizInt Solutions see SmartCharts Black-box patent applications (TRIPS derogation) see Pipeline patents Boletim Oficial (Macao) 201, 205 Boletín de Patentes Concedidas (Argentina) 268 Boletín de Patentes de Invención y Modelos de Utilidad (Argentina) 268 Boletín de Propiedad Industrial (Chile) 273 Bolivarian Patent Convention (1911) see Caracas Agreement on Patents and Privileges of Invention (1911) Bolivia 255–258, 403, 582 Bollettino dei brevetti per invenzione, modelli e marchi (Italy) 146 Bollettino dei Certificati Complementari di Protezione (CCP) (Italy) 159 Bollettino dei Certificati Complementari di Protezione Fitosanitari (CCPF) (Italy) 159 Bonaire, Sint Eustatius and Saba 572, 582, 603 Bosnia & Herzegovina 37–38, 402, 570, 581 Botswana 304, 363–364, 403, 571, 583

Bouvet Island 583 BPIP (British Patent Information Professionals) 378 Brazil 6, 108, 255–267, 582, 639 BREF (database) 134 BREV (database) 393 Brevet Spécial de Médicament (French document type) 128, 132 BRIC(S) nations 291, 639 British Library 4, 181, 378–379, 390, 471 British Virgin Islands 601 Brunei 235–236, 403, 572, 582 Budapest Treaty (1977) 552 Bulgaria 36, 45, 403, 438, 442, 522, 568, 581 Bulletin Officiel de la Propriété Industrielle (BOPI) (Algeria) 325 Bulletin Officiel de la Propriété Industrielle (BOPI) (France) 130, 136 Bulletin Officiel de la Propriété Industrielle (BOPI) (OAPI) 366 Burkina Faso 304, 363, 403, 568, 581 Burundi 304, 582 Cabo Verde 304, 308, 404, 584 CADOPAT 293–294 CAMBIA see The Lens (CAMBIA) Cambodia 39, 235–236, 407, 524, 572, 590 Cameroon 304, 363, 567, 584 Canada 15, 31, 121–126, 206, 403, 418, 437, 440, 442, 471, 510, 522, 527, 551, 567, 583 Canadian Patent Office Record 124, 126 Caracas Agreement on Patents and Privileges of Invention (1911) 255 Caribbean Patent Convention 561 CARICOM 561 Cartagena Agreement (1969) see Andean Community (ANCOM) CAS Registry Number ® 424, 427–428, 552 CASSIS (database) 76 Cayman Islands 407, 591 CD-ROM see Optical disks (use in patent information) Central African Republic 304, 363, 567, 583 Central limitation (EPO) 44, 47–49 Central Patents Index (database) 397

Index

Centredoc 488 CEPIUG (Confederacy of European Patent Information User Groups) 378, 564 Certification (of patent searchers) see Qualified Patent Information Professional (QPIP) Chad 304, 363, 567, 599 Chemical Abstracts Service (CAS) (database) 69, 83, 210–211, 402–413, 425–428, 485, 495 Chemical Abstracts Service Source Index (CASSI) 464 Chemical Patents Index 397 Chile 108, 255–257, 272–276, 290, 403, 442, 522, 551, 572, 584 China (People’s Republic of) 13, 27, 53, 185–199, 235, 291, 382–384, 403, 436–437, 440, 442, 451, 472, 518, 522, 527, 551, 558, 561, 569, 584 China (Republic of) see Taiwan China (Special Administrative Region of Hong Kong) see Hong Kong China (Special Administrative Region of Macao) see Macao China Intellectual Property Right Net (database) see CNIPR (China Intellectual Property Right Net) China Patent Information Center see CNPAT (database) China Patent Information Center 198 ChinaPats (database) 196, 450 Chinese Academy of Sciences (CAS) 384 CIPIS (database) 215 CISPatent (database) 166 Citation searching 418, 539–541 CKS Web (database) 97 Claims (database) see IFI Claims Claims (of patent) 24, 498–499, 633 Claims Direct see IFI Claims Claims/Citation 539 Claims/Current Patent Legal Status 76, 77 Clairvolex 215 Clarivate Analytics 396, 417, 425, 452, 530 Classification searching 541–551 Clearance search 499 Closed national route (PCT) 111–112, 129, 146 CNFULL (STN) 199

651

CNIPA (China National Intellectual Property Administration) 186 CNIPR (China Intellectual Property Right Net) 196, 199 CNPAT (database) 196, 198 Cochrane Reviews 467 Colombia 255–257, 277–282, 290, 294, 404, 440, 442, 522, 570, 584 Common Hybrid Classification (CHC) 551 Community Patent (EU) see European Union (EU) Comoros 304, 363, 571, 591 Company structure (effect on portfolio search) 501–503 Comunidad Andina de Naciones (CAN) see Andean Community (ANCOM) Conference proceedings (non-patent literature) 472–473 Congo 304, 363, 568, 583 Congo (Democratic Republic of) 304, 583 Convention filing 11, 17, 39, 65, 426 Convention on Biological Diversity (CBD) (1992) 255–256 Cook Islands 246, 583 Cooperative Patent Classification (CPC) 49, 79, 125, 266, 348, 426, 546–547, 550–551 COPS (Committee on Patent Search Standards) see Qualified Patent Information Professional (QPIP) Correction (of defective documents) see ST.50 (corrections) COSMOS (database) 134, 393 Costa Rica 290, 293, 404, 440, 442, 522, 570, 584 Côte d’Ivoire 304, 363, 403, 568, 583 Council of Scientific and Industrial Research (India) 215 Country codes see ST.3 (country codes) CPQUERY (database) 198 Croatia 37, 46, 55, 406, 444, 523, 570, 589 Cross-Lingual Expansion (CLE) see CrossLingual Information Retrieval (CLIR) Cross-Lingual Information Retrieval (CLIR) 114–115, 439–441 Cuba 15, 293, 404, 440, 443, 522, 569, 584

652

Index

Curaçao 572, 584, 603 Current awareness 483–488 Cyprus 36, 45, 111, 404, 443, 517, 570, 585 Czechia 36, 45, 109, 404, 438, 443, 522, 526, 561, 569, 585 Czechoslovakia 443, 522, 526, 404 Data security 453–455, 462 Date of disclosure 459, 461–462, 472, 504–505 Deferred examination see Substantive examination (of patent application) DEFULL (database) 144 DEKLA 436, 547 Delphion 452 Democratic Peoples’ Republic of Korea (DPRK) see Korea (North) Denmark 6, 35, 36, 45, 109, 138, 378, 404, 437, 440, 443, 523, 561, 567, 585, 586, 587 DEPAROM (database) 393 DEPATISnet 141, 144, 402–413, 435–436, 547 Derwent Class 397–399, 483, 534 Derwent Fragmentation Codes 416–417 Derwent Innovation 396, 536 Derwent Manual Codes 414–415 Derwent Patent Citation Index (DPCI) 402–413, 417–419, 540 Derwent Patentee Codes 502 Derwent Polymer (Plasdoc) Codes 417 Derwent World Patents Index (DWPI) 17, 86, 87–91, 99, 124, 210–211, 396–417, 420–421, 423, 425, 429, 529, 546 Design rights, industrial 25–26, 53, 60, 70–71, 73–74, 76, 79, 84, 116, 140, 158, 162, 175, 186, 188, 236, 261–262, 264, 273, 278, 281, 290, 293–296, 314, 327, 340, 349, 353, 358, 359, 363–364, 452, 501, 512, 549–550, 553–554, 560, 563 Designation (of member states) 20, 24, 38, 42, 44, 47, 56, 107, 109, 111, 170, 186, 197, 239, 311, 316, 341, 364, 509, 520–521 Deungnok (Korean document type) 222 Deutsches Patentblatt (Germany) see Patentblatt (Germany)

DGENE see GeneSeq (database) Dialog see Proquest Dialog Diamond (database) see Lighthouse IP Directory of Open Access Repositories (OpenDOAR) 461, 466 Disclosure (in relation to novelty) 8–9, 18, 24, 60–62, 122, 247, 289, 427, 457–458, 459, 461–462, 472–473, 474, 477, 492, 633, 634 Dissertation Abstracts 470 Djibouti 304, 404, 572, 585 DocDB (database) 402–413, 423, 435–435 Document repositories (non-patent literature) 474–476 Documentation Abstracts Journal (DAJ) 399 Dominica 404, 570, 585 Dominican Republic 6, 290, 293–294, 404, 440, 443, 571, 585 DongFang Lindun (China) see Beiing East Linden Co. DPCI see Derwent Patent Citation Index (DPCI) DPMAkurier 517 DPMAregister 144, 517 Drawings (in patent specification) 24, 553–554, 563 Dual filing (China) 195 DVD-ROM see Optical disks (use in patent information) DWPI see Derwent World Patents Index (DWPI) EAPATIS 166, 173, 517 EAPO (database) 393 Early publication 10, see also individual country entries for national practice East Germany (former GDR) 138, 139, 143, 145, 404, 436, 440, 443, 523 East meets West (conference series) 94, 235 ECLA see European Classification (ECLA) Ecuador 255–259, 290, 294, 405, 440, 443, 523, 570, 585 EDOC (database) see EPODOC (database) Egypt 15, 108, 305, 310, 328–333, 405, 523, 571, 585 Egyptian Patent Abstracts 331, 333

Index

El Salvador 6, 290–291, 293, 411, 525, 571, 599 Electrical Patents Index (EPI) 398, 414 Electronic filing (of patent applications) 454–455 Electronic Official Gazette (Peru) 286 Electronic Official Gazette: Patents (eOG:P) (US) 72, 78 Electronic Theses Online System (EthOS) 471 Emperor’s Year (Japan) see Imperial calendar (Japan) EnCompassPat (database) 420–421, 485 Encrypted data systems 453–455 Engineering Industry Patents Profiles see Industry and Technology Patents Profiles Engineering Patents Index (EngPI) 397 EP Tracker (Minesoft) 515 EPFULL (STN) 51, 53 EPO Register Plus see European Patent Register EPODOC (database) 84, 419–420 epoline ® see European Patent Register Equatorial Guinea 305, 363, 570, 588 Eritrea 146, 305, 586 ESPACE (optical disk-based products) 50, 177, 296, 366, 390–395, 435 Espacenet 49, 51, 134, 174, 175, 296, 395, 433, 434–435, 459, see also individual country entries Estonia 36, 45, 169, 405, 443, 523, 569, 585 eSwatini 21, 307, 363, 411, 569, 599 Ethiopia 305, 308, 328, 405, 586 Eurasian Patent Organization (EAPO) 22, 27, 160, 166, 169–174, 393, 405, 443, 585 Europatent GmbH (World Patent Services) 488 European Classification (ECLA) 49–50, 419, 546–550 European Patent Office (EPO) 35–57, see Table of Contents for major sub-topics European Patent Organisation 35 European Patent Register 513–517 European Patent with Unitary Effect see Unitary Patent (EU) European Union (EU) 14, 31, 35–38, 53–56

653

European Union Intellectual Property Office (EUIPO) 53 Examiner Automated Search Tool (EAST) 75, 380 Excluded material (patentability criterion) 8, 81, 145, 160, 206, 218, 259, 268, 273, 289, 308, 320, 329, 356, 359, 558 Extension states (EPO) 35–38 Fairview Research, Inc. 76, 414, 430 Falkland Islands 586 Fāmíng Zhuānlì Gōngbào (Gazette of Patents for Inventions) (China) 187 Farmdoc 396–397 Faroe Islands 586 Fiji 405, 586 File Index (FI) classification 99, 546–549, 551, 617–628 File-forming Term (F-term) indexing 99, 450, 549–550, 629–632 FILPAT (database) 158, 159 Finland 15, 35–36, 45, 405, 438, 443, 523, 568, 586 First Page Data Base (FPDB) see GlobalPat (FPDB data) First-level data 14, 494–495 FOCUST-J (Wisdomain) 97 France 6, 31, 36, 45, 55, 111–112, 125–137, 429, 436, 438, 440, 443, 451, 517, 523, 529, 546, 567, 586 France Patents Fulltext (database) 136 FRANCEPAT (database) 136 Free Patents Online (FPO) 51, 78, 117, see also SumoBrain Freedom-to-operate searching (FTO) 496–499 FRFULL (database) 136 F-terms see File-forming Term (F-term) indexing FYROM (Former Yugoslav Republic of Macedonia) see North Macedonia Gabon 305, 363, 568, 587 Gaceta de la Propiedad Industrial (Colombia) 278 Gaceta Electrónica de Propiedad Industrial (Peru) 283, 286

654

Index

Gambia 305, 363, 364, 405, 570, 587 GBFULL (database) 182 GCC Patent Office (GCCPO) 22, 341, 354, 368–372, 587 GenBank (database) 552 General & Mechanical Patents Index (GMPI) 397–398, 415 GenericsWeb (database) 425 GeneSeq (database) 425, 551 Genetic sequence searching 551–552, see also Mega-documents (genetic sequence data) Georgia 39, 166, 169, 405, 444, 523, 568, 587 German Democratic Republic (GDR) see East Germany (former GDR) Germany 10, 27, 29, 36, 45, 55–56, 135–145, 231, 380, 393, 404, 418, 422, 429, 436, 437, 440, 443, 451, 488, 517, 521, 523, 529, 546, 567, 585 Germany, East see East Germany (former GDR) Ghana 305, 363, 364, 405, 570, 587 Gibraltar 587 Global Brand Database 116 Global Design Database 116 Global Dossier see Open Portal Dossier (OPD) Global Patent Index (GPI) (database) 435 Global Patent Search System (database) 234 Global Patents Fulltext (database) 52, 144, 182, 245 GlobalPat (FPDB data) 392, 450 Gmelin Handbook 467 Gong Gao (Chinese document type) 194 Gong Kai (Chinese / Taiwan document type) 188, 193, 233 Gonggae (Korean document type) 221 Gōnggào Fāzhèng (Taiwan document type) 233 Gōnggào Hézhǔn (Taiwan document type) 232 Gonggo (Korean document type) 221 Google 512, 547 Google Books 469 Google Patents 51, 78, 414, 433, 436–438, 495

Google Scholar 464, 469 Google+ 478 Grace period see Disclosure (in relation to novelty) Granted Patents Gazette (North Korea) 228 Greece 36, 46, 111, 406, 440, 444, 523, 568, 588 Greenland 587 Grenada 405, 570, 587 Grey literature (non-patent literature) 469–470 Gridlogics see PatSeer (Gridlogics) Guam 59 Guatemala 6, 293, 406, 444, 571, 588 Guernsey 587 Guinea 305, 363, 568, 588 Guinea-Bissau 305, 363, 570, 588 Gulf Co-operation Council see GCC Patent Office (GCCPO) Guyana 255, 256, 257, 258, 406, 588 Haiti 406, 589 Harare Protocol (1982) 307, 334, 363, 364, 366 Hatch/Waxman Act 31 Health Canada 126 Heisei (Japanese era name) 82–83 Hijri (Islamic) calendar 319, 350–351, 360 Holy See see Vatican City Honduras 293, 406, 571, 589 Hong Kong 175, 186, 197–206, 234, 406, 518, 523, 572, 588 Hong Kong Intellectual Property Journal 201 Hungary 36, 46, 109, 309, 406, 438, 444, 523, 561, 568, 589 HYPAT (database) 97 IBC Network 272, 276, 286, 300 IBM Technical Disclosure Bulletin (TDB) 474 Iceland 37, 46, 109, 407, 444, 524, 561, 569, 590 IFI Claims 76, 77, 402–413, 430, 529, 539 IFIALL (database) 76, 77 IFICLS (database) 77 Image File Wrapper (IFW) 78, 511, 513 Image searching 553–554 Imperial calendar (Japan) 81–83

Index

IMS Patent Focus (database) 424–425, 529 India 15, 108, 206–217, 291, 406, 420, 438, 444, 451, 472, 518, 523, 558, 570, 589 Indonesia 234, 236, 406, 523, 570, 589 Industrial applicability (criterion for patentability) 8 Industrial Property Journal (Kenya) 335–336 Industry and Technology Patents Profiles 484–485 Information Disclosure Statement (IDS) 68, 540 Information Retrieval Facility (IRF) 430 Infringement searching see Freedom-tooperate searching (FTO) INFULL (database) 215 INID codes see ST.9 (INID codes) INPADOC Patent Family Service (PFS) 421–422 INPADOC Patent Register Service (PRS) 422, 519–526 InPASS (database) 215 INPIT (Japan) 93, 94, 96, 382 Intellectual Property Exchange Pte. Ltd. (IPEXL) 433 Intellectual Property Publishing House (IPPH) 196, 199 Intellectual property rights (alternative protection mechanisms) 25–26, 28–31 Intellogist 378–379 Inter-American Convention for the Protection of Inventions, Designs and Industrial Models (1910) 255 International Bureau of WIPO 22, 101–113, 458, 521, 589, 602 International Convention for the Protection of Industrial Property (1883) see Paris Convention (1883) International Patent Classification (IPC) 21, 541–546, 560, Annex D, Annex E, see also individual country entries for national practice International Preliminary Examination Authorities (IPEA) 108–109 International Search Authorities (ISA) 108–110, 526 Internet disclosures 461–462, 505 Intute 466

655

Invention Laying-Open Gazette (Taiwan) 231 Invention Navigator 199, 535 Invention Publication Gazette (North Korea) 228 Inventions (Eurasian Applications and Patents) (Izobreteniya (yevraziyskiye zayavki i patenty)) (EAPO) 172 Inventive step (criterion for patentability) 8–9, 28, 42, 468, 492–494 IP.com 52, 78, 474, 505, 537 IP5 Patent Offices 111, 455, 527–528, 540, 550–551, 561 IPAS (Industrial Property Automation System) 455, 560 IPDiscover 535 IPEXL see Intellectual Property Exchange Pte. Ltd. (IPEXL) IPMenu 378 IPR Helpdesk (EU) 53 IPRTOP 199 IPS (Informatsionno-poiskovoy sistemy) (Russia) 167 Ipsum (database) 182 Iran 341–342, 359–362, 406, 524, 572, 589 Iraq 341–342, 406, 589 Ireland 29, 35, 36, 45, 46, 111–112, 174, 206, 406, 444, 475, 523, 569, 589 Isle of Man 174, 589 Israel 15, 108, 341–342, 343–349, 406, 440, 444, 523, 551, 569, 589 Italy 6, 31, 36, 46, 55, 111–112, 145–159, 378, 396, 407, 440, 444, 524, 568, 590, 601 Jamaica 407, 590 Japan 6, 10, 27, 29, 31, 81–100, 108, 217, 231, 381–382, 393, 398, 407, 418, 422, 436, 438, 440, 444, 451, 510, 521, 524, 529, 564, 567, 590, Annex F, see Table of Contents for major sub–topics Japan Patent Data Service Co. 94, 96 Japan Patent Information Organization (JAPIO) 94, 96–97, 381–382, 393 Japan Patent Office (JPO) classification 99, 547–548, 549–550, Annex E, Annex F JAPIO-GPG 97 Jersey 590

656

Index

JISC Research Discovery Network (RDN) 466 Jordan 39, 309, 341–342, 355–359, 407, 524, 572, 590 Journal of Patent Associated Literature (JOPAL) 458–459 JPFULL (STN) 96 JPlat-Pat 96 JP-NET / JP-NETe 94, 96 JZMC Intellectual Property 199 K2E-PAT 226 Kazakhstan 169, 407, 445, 524, 568, 591 Kenya 305, 310, 334–340, 363, 364, 407, 524, 569, 590 Kind-of-Document (KD) codes see ST. 16 (Kind of Document codes), see also individual country entries Kind-of-Right designator 148–150, 161–162, 188, 204–205, 209–213, 353–354, 366 KIPRIS 218, 220, 225–226, 518 Kiribati 590 Knovel 469, 553 Kohyo (Japanese document type) 87 Kokai (Japanese document type) 84, 86, 87 Kokoku (Japanese document type) 84, 85 Korea (North) 227–230, 407, 568, 591 Korea (South) 15, 27, 50, 102–103, 108, 114, 217–227, 235, 384, 393, 407, 428, 436, 438, 440, 445, 450–451, 518, 521, 524, 551, 561, 568, 591 Korean Institute of Patent Information (KIPI) 225–227 Korean Patent Abstracts (KPA) 226, 393, 450 KoreaPat (database) 226 Kosovo 602 K-PION (database) 226 KRFULL (database) 227 Kuwait 6, 340, 341, 368, 407, 572, 591 Kyrgyzstan 15, 169, 407, 444, 524, 568, 590 Laos 236, 407, 571, 591 Latin America see individual country entries see also Latipat Latipat 266, 267, 270, 272, 275–276, 282, 286, 300

Latvia 37, 36, 111, 169, 408, 445, 517, 524, 569, 592 Least-Developed Countries (LDC) 303–308 Lebanon 341, 342, 407, 591 Legal status searching 503–505, 507–532 Lesotho 305, 363, 569, 592 Letters patent 3 Liberia 305, 363, 569, 592 Library & Archives Canada 126 Libreville Agreement (1962) 363 Libya 146, 305, 571, 592 Liechtenstein 36, 45, 46, 407, 517, 568, 591 Lighthouse IP 389, 402–413, 430–431 Litalert 530 Lithuania 37, 46, 111, 169, 408, 445, 524, 569, 592 Litigation (court data) 529–531 London Agreement (2000) 44–47, 54, 56, 133, 179 Lusaka Agreement (1976) 307, 363 Luxembourg 15, 36, 45, 46, 408, 438, 445, 524, 567, 592 Luxembourg Agreement (1975) 55 Macao 186, 197–206, 408, 572, 593 Macedonia (FYROM) see North Macedonia Madagascar 305, 310, 363, 408, 524, 567, 593 Maintenance fees 497, 502, 510, 519–520 Major and minor countries (DWPI) 400–401, 413 (footnote) Malawi 305, 363, 364, 409, 567, 594 Malaysia 175, 234, 236, 309, 392, 409, 445, 518, 524, 571, 594 Maldives 594 Mali 305, 363, 408, 568, 593 Malta 37, 45, 46, 111, 408, 571, 594 MAREC (database) 430 Markush structures 400, 416, 423–424, 427–430 Marpat (database) 416, 425–429, 551 Matheo Patent 535, 537 Mauritania 305, 363, 568, 593 Mauritius 305, 409, 594 MCD (Master Classification Database) 544 MCPaIRS (database) 216

Index

Mega-documents (genetic sequence data) 42–43, 110, 551–552 Meiji (Japanese era name) 81, 82 Mercado Común del Sur see Mercosur Mercosur 256 (footnote) 273, 290 Merged Markush Service (MMS) 416, 423–424, 428–430 Mexico 50, 292–301, 409, 441, 445, 524, 551, 569, 594 Microbiological deposits 552 MicroPatent 394, 421, 452 Middle East 340–372, see Table of Contents for major sub-topics, see also individual country entries or GCC Patent Office or Arab League MIMOSA 134, 390–391, 394–395, 435 Minesoft see PatBase (Minesoft) Mínguó calendar 229, 233–234 Moldova 15, 39, 160, 166, 169, 408, 445, 524, 568, 592 Monaco 36, 45, 46, 111, 381, 408, 445, 524, 567, 592 Mongolia 408, 568, 593 Montenegro 37, 38, 408, 445, 571, 572, 593, see also Serbia & Montenegro Montserrat 408, 594 Morocco 38, 306, 310, 314–319, 385, 408, 441, 445, 524, 570, 592 Mozambique 306, 310, 363, 364, 409, 524, 570, 594 MPharm (database) 423–424, 429 Multi-lingual publications 14–16 Myanmar 235–236, 408, 593 Namibia 306, 363, 409, 571, 594 National classification 125, 138, 176–177, 266, 292, 398, see also Cooperative Patent Classification (CPC), see also European Classification (ECLA), see also Japan Patent Office (JPO) classification, see also United States Patent Classification (USPC) National phase (PCT) 87–91, 101, 111–113, 439, 503, 508, 512, 520–527, see also individual country entries for national documentation and procedures

657

National Technical Information Service (NTIS) 69, 459, 470 Nauru 237, 595 Nepal 409, 595 Netherlands 6, 10, 36, 46, 111, 255, 409, 418, 438, 445, 524, 567, 572 (footnote), 595, 603 (footnote) Netherlands Antilles 572 (footnote), 582, 603 (footnote) New Zealand 206, 244–253, 409, 418, 445, 525, 569, 583, 595 New Zealand Patent Office Journal 248 Nicaragua 290, 292, 409, 524, 571, 595 Niger 306, 363, 569, 595 Nigeria 306, 310, 409, 571, 595 Non-patent literature (NPL) 410, 411, 457–481, 495 Nordic Patent Institute (NPI) 22, 561, 602 North Korea see Korea (North) North Korea Science and Technology Network (NK Tech) 229 North Macedonia 15, 37, 46, 408, 445, 569, 593 Northern Mariana Islands 593 Norway 6, 15, 35, 37, 46, 109, 409, 445, 524, 561, 568, 583, 595 Novelty (criterion for patentability) 8–9, 28, 42, 61, 457–458, 492–495 NRI Cyberpatent 94, 97 Numbering systems (application, publication) see individual county entries for national practice, see also ST.13 (application numbering systems) Numeric Property Search (NPS) 553 OAMPI see Office Africain et Malagache de la Propriété Industrielle (OAMPI) OAPI see Organisation Africaine de la Propriété Industrielle (OAPI) Obviousness see Inventive step (criterion for patentability) Offenlegungschrift (German document type) 138, 139, 142 Office Africain et Malagache de la Propriété Industrielle (OAMPI) 363 Office of the Alien Property Custodian (APC) 69

658

Index

Official Bulletin. Inventions. Utility Models (Izobreteniya. Poleznyye modeli) (Russia) 166, 167 Official Gazette (Jordan) 357–358 Official Journal (Iran) 361–362 Official Journal of the Patent Office (India) 209 Official Journal of the Patents Registry (Hong Kong) 200 OHIM (Office for Harmonisation of the Internal Market) (EU) see European Union Intellectual Property Office (EUIPO) Oman 341, 368, 409, 571, 595 One Portal Dossier see Open Portal Dossier (OPD) Open Access (OA) journals 460–461, 465, 466 Open Archives Initiative (OAIster) 466 Open Patent Services (OPS) 423, 449–450 Open Portal Dossier (OPD) 199, 434, 450, 455, 527–528, 561 Open Science Directory 466 Open to Public Inspection (OPI) see Early publication Opposition searching 503–505 Optical Character Recognition (OCR) 75, 77–78, 116, 117–118, 181, 197–198, 266, 432, 436, 439, 448 Optical disks (use in patent information) 390–395 Oral disclosures 8, 472–473 Orbit.com (Questel) 402–413, 419–420, 452 Organisation Africaine de la Propriété Industrielle (OAPI) 22, 303–307, 309, 363–367, 392, 409, 445, 562, 595 PACER (Public Access to Court Electronic Records) 530 PAIR (Patent Application Information Retrieval) 71–72, 78, 454, 511–513, 516 Pakistan 410, 596 Palau 596 Pan-African Intellectual Property Organization (PAIPO) 562 Panama 290, 293, 409, 472, 572, 596

Pan-American Convention (1910) see Inter-American Convention for the Protection of Inventions, Designs and Industrial Models (1910) Paper indexes 389–390 Papua New Guinea 237, 409, 571, 596 Paraguay 255, 256, 257, 258–259, 290, 294, 410, 596 Paris Convention (1883) XI 6, 9, 17, 231, 289, 304–308, 341, 510, 557–558, see also Convention filing, see also individual country entries for treaty status PatBase (Minesoft) 99, 205, 401–413, 442–447, 449–450, 535, 536, 546, 553 PATDD (database) 144, 145 PATDPA (database) 144 PATDPAFULL (database) 144 PATDPASPC (database) 144, 529 Patent Abstracts of Japan (PAJ) 86, 94–96, 98, 435, 441, 450, 510 Patent analysis tools 533–538 Patent and Trade Mark Group (PATMG) 509 Patent and Trademark Depositary Library (PTDL) Program see Patent and Trademark Resource Centers (PTRC) Patent and Trademark Resource Centers (PTRC) 76, 379–380 Patent and Utility Model Gazette (Egypt) 331 Patent classification (general) 541–549 Patent Co-operation Treaty (PCT) (1970) 15, 22, 24, 101–119, 256, 304–307, 454–455, 458, 520–521, 522–526, see Table of Contents for major sub-topics see also individual country entries for national PCT practice, see also individual database entries for PCT coverage Patent document (general description) 20–25 Patent document (historical background and current practices) 3–28 Patent examination 7–9, 11–13 Patent family 16–20 Patent Gazette (Taiwan) 232 Patent information 13–16, 20–25 Patent Information Network (PIN) libraries 379

Index

Patent Information Users Group (PIUG, Inc.) see PIUG Patent Integration (database) 97 Patent Journal (South Africa) 312–313 Patent Law Treaty (PLT) (2000) 559 Patent libraries 379–385 Patent Office of the Co-operation Council for the Arab States of the Gulf see GCC Patent Office (GCCPO) Patent office websites 432, see also Annex C Patent Official Gazette (Saudi Arabia) 354 Patent Prosecution Highway (PPH) 101, 291, 455, 564 Patent searchers, certification 564–565 Patent Tracker (Minesoft) 515 Patent Trial and Appeal Board (PTAB) 70–72 Patent visualisation tools 537 Patent Warehouse see TotalPatent One (Lexis-Nexis) Patentability criteria 8–9 Patentability searching 491–496 Patentblatt (Germany) 143, 144, 393 Patentinformationszentren (PIZ) libraries see PIZ (German library network) Patently.com 453 Patents Abstracts of Russia (PAR) 166–167 Patents and Trademarks Assign (database) 393 Patents Assist (database) 393 Patents Bib (database) 393 Patents Class (database) 393 Patents Journal (Israel) 345 Patents Journal (United Kingdom) 177 Patentschrift (German document type) 138–139, 142 PatentScope (WIPO) 110, 112–115, 402–413, 433, 439–441, 455, 522–527, 560, see also individual country entries for database coverage PatentSQUARE (database) 97 Pat-INFORMED (database) 560 PATLIB (library network) 381 Pat-List-CN (database) 199 Patolis Corp. 94, 381–382, 529 PATOLIS/PATOLIS-E (search system) 381–382, 529 PATONbase (University of Ilmenau) 143

659

PatSeer (Gridlogics) 442–447, 452–453 Patsoft 390 PCT Gazette (database) 393 PCT International Search Authorities see International Search Authorities (ISA) PCT member states Annex A PCT Minimum Documentation 108, 218, 392, 430, 458, 472 PCTFULL (database) 118 PCTGEN (database) 552 PCT-SAFE (electronic filing software) 454 People’s Biodiversity Registers (PBR) 472 PerFedPat (portal) 433–434 Peru 255, 256, 257, 283–287, 290, 409, 441, 472, 525, 572, 596 Pharm (database) 423–424, 429 Pharmaceutical term extension 28, 30–31, 63, 129, 147–148, 424–425, 510, 521, 528–529, see also individual country entries for national practice Pharmsearch (database) see Pharm (database) Philippines 109, 234, 236, 392, 410, 445, 518, 519, 525, 571, 596 PIPACS (database) 393 Pipeline patents 207, 260–263, 268, 329 PIUG 378 PIZ (German library network) 380 PlusPat / FamPat (database) 419–420, 452 Plutarque 134 Poland 37, 46, 109, 410, 420, 445, 525, 561, 568, 596 Portfolio searching 501–503 Portugal 6, 36, 46, 197, 410, 438, 441, 446, 525, 569, 596 PRECES (database) 393 Preprint servers (non-patent literature) 474–476 Prior art 8–9, 42, 61, 68, 462, 472, 505 Priority 6–7, 231 Propiedad Industrial Latinoamérica see PROSUR Proquest Dialog 77, 96, 118, 136, 144, 182, 199, 215, 227, 245, 417–418, 424, 529, 530, 539

660

Index

PROSUR 270, 272, 276, 282, 284, 286–287, 290–291 Puerto Rico 59 Qatar 341, 368, 410, 572, 596 QPAT (Questel) 452 Qualified Patent Information Professional (QPIP) 564–565 Questel 52, 77, 84, 94, 96, 118, 137, 144, 157, 167, 182, 196, 199, 216, 227, 245, 253, 396, 401, 402–413, 419–422, 423, 428–429, 452, 473, 502, 530, 537 Raytec (Japan) 199 Reference guides 462–463 References cited see Patent document (general description) Regional Intellectual Property Centers (Korea) 384 Regional patent systems 22, 35–39, 169–174, 185, 363–366, 368–372, 561–562 Regional phase (PCT) 101, 111–112, 170, 366, see also Closed national route (PCT) Registry of Open Access Repositories (ROAR) 461 Reiwa (Japanese era name) 82 Research Disclosure (RD) 410, 474, 505 Reviews (non-patent literature) 467 Revista da Propriedade Industrial (Brazil) 266–267 Romania 37, 38, 46, 381, 410, 438, 441, 446, 525, 568, 596 Rospatent 160, 166–168 RUPAT (database) 167 RUPAT_OLD (database) 167 RUPATABEN (database) 167 RUPATABRU (database) 167 RUPATAP (database) 167 Russian Federation 108, 159–168, 169, 410, 428, 438, 441, 446, 451, 517, 525, 567, 597 RussiaPat (database) 168 Rwanda 306, 363, 364, 410, 572, 597 S.G.D.G. 325

Sai-kohyo (Japanese document type) 88–91 Saint Helena, Ascension and Tristan da Cunha 597 Samoa 6, 412, 572, 602 San Marino 37, 46, 112, 146, 411, 517, 571, 598 São Tomé and Príncipe 306, 363, 411, 572, 598 SARA (Advanced Search and Archive System) 157 Saudi Arabia 341, 342, 349–355, 368, 410, 525, 572, 597 Scientific Commons 466 Search report 10, 24, 40–42, 418, 491–492, 517, 637, see also Patent document (general description), see also individual country entries for specific KD codes Search4IP see Invention Navigator Selective Dissemination of Information (SDI) services see Current awareness Senegal 306, 363, 567, 598 Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu 231 Serbia 6, 37, 46, 410, 446, 525, 572, 597 Serbia & Montenegro 413, 526, 570, 572 Series code (US application numbers) 63–65 Seychelles 306, 571, 597 ShareResearch (database) 97 Shending Gonggao (Chinese document type) 193 Shenqing Gongbu (Chinese document type) 193 Shíyòng Xīnxíng Zhuānlì Gōngbào (Gazette of Patents for Utility Models) (China) 187 Shouquan Gonggao (Chinese document type) 193 Shōwa (Japanese era name) 82–83 Sierra Leone 306, 363, 570, 598 SIMBA (database) 159 Singapore 108, 175, 234, 236, 411, 433, 446, 518, 525, 569, 597 Sint Maarten 572, 599, 603 SIP GmbH 199, 535 Sistema de Información de la Gaceta de la Propiedad Industrial (SIGA) (Mexico) 294, 299

Index

Slovakia 36, 46, 109, 309, 411, 438, 446, 525, 561, 569, 598 Slovenia 36, 46, 111, 393, 411, 446, 525, 569, 597 SmartCharts 535, 537 Social media (non-patent literature) 477–478 Solomon Islands 597 Somalia 306, 307, 308, 363–364, 598 Source indexes (bibliographic database coverage) 463–464 South Africa 15, 291, 306, 308–309, 310–313, 342, 413, 418, 441, 447, 526, 570, 602 South America 255–291, see Table of Contents for major sub-topics South Georgia and the South Sandwich Islands 588 South Korea see Korea (South) South Sudan 21, 306, 308, 598 Soviet Union 159–161, 164–166, 411, 428, 446, 567 Spain 6, 27, 36, 44–45, 53, 55, 294, 314, 405, 418, 438, 440, 443, 523, 568, 586 Special libraries (source of NPL) 464–465 Sri Lanka 206, 407, 568, 592 SRPartner 97 ST. 3 (country codes) 21–22, 307, 579, 603, see also individual country entries for applicable codes ST. 9 (INID codes) 22–24 ST. 13 (application numbering systems) 139–140, 150, 229, 264, 335, 336, see also Kind-of-Right designator ST. 16 (Kind of Document codes) 10, 13, 21 see also individual country entries for applicable codes ST. 50 (corrections) 26–27, 69–70, 178, 220, 252, 264 St. Kitts and Nevis 571, 591 St. Lucia 570, 591 St. Vincent and the Grenadines 412, 571, 601 Standard-Essential Patents (SEPs) 452, 473, 559 Standards for patent documentation (WIPO) see WIPO standards

661

State Intellectual Property Office (PRC) (SIPO) see CNIPA State of the art (definition) 8–9 State of the art searching 533–535 Statute of Monopolies (England) 3 Statutory Invention Registrations (SIR) 68, 73 STN International 51, 53, 76, 77, 96, 118, 127, 136, 143–145, 168, 182, 199, 215, 226–227, 245, 378, 396, 417, 418, 421, 422, 425, 426, 429, 448, 488, 529, 530, 535, 537, 540, 546, 552, 553 Subject guides (internet resource guides) 466–467 Substantive examination (of patent application) 10–11, 101–102, 637 Substantive Patent Law Treaty (SPLT) 559, 564 Sudan 21, 306, 310, 363, 411, 568, 597 SUDOC (database) 471 SumoBrain 51, 441, 448 Supplementary Protection Certificates (SPC) see Pharmaceutical term extension SureChem/SureChEMBL 51–52 SurfIP (portal) 433 Suriname 255–256, 258, 290, 598 Swakopmund Protocol (2010) 364 Swaziland see eSwatini Sweden 6, 15, 35, 36, 46, 381, 411, 418, 446, 525, 567, 597 Switzerland 6, 15, 27, 35, 36, 45, 231, 381, 403, 418, 436, 437, 442, 466, 488, 522, 546, 567, 583 Syria 328, 341, 342, 411, 571, 599 System for Information on Grey Literature in Europe (SIGLE) 470 Taishō (Japanese era name) 82, 83 Taiwan 230–234, 412, 433, 438, 447, 451, 518, 525, 558, 600 Tajikistan 160, 166, 169, 411, 446, 568, 599 Tanzania 307, 363, 364, 412, 570, 600 Technical disclosure bulletins (non–patent literature) 474 Technical standards (non-patent literature) 473 TEL (database) 471 TELEMACO (database) 158, 159

662

Index

Tertiary literature (non-patent literature) 467–469 Thailand 234, 236, 392, 411, 433, 446, 525, 572, 599 The Lens (CAMBIA) 51, 78, 117, 439 Theses (non-patent literature) 470–471 Thomson-Reuters 396 Timor-Leste 599 TISCs (Technology Innovation and Support Centers) (WIPO) 385 Togo 307, 363, 567, 599 Tonga 600 Toroku (Japanese document type) 85 TotalPatent One (Lexis-Nexis) 52, 78, 96, 127, 137, 144, 157, 167, 182, 199, 215, 227, 234, 245, 253, 266, 272, 276, 282, 286, 300, 313, 319, 323, 328, 333, 340, 348, 358, 401, 402–414, 442–447, 448–449, 546, see also Univentio Trade marks 25–26, 53, 116, 501 Traditional Chinese Medicine (TCM) (database) 199, 472 Traditional knowledge (non-patent literature) 471–472, 558 Traditional Knowledge Digital Library (TKDL) 472 Translation (of documents) 13, 14–16, 44–47, 55, 87–91, 98, 102, 234, 372, 471, 527, see also individual country entries for national practice Translation (of search strategies or results) 114–116, 196, 226, 382, 441 Transliteration 95, 98, 118 Trial Voluntary Protest Program (TVPP) 69, 74 Trilateral Offices 185, 390, 392, 551, 561 Trinidad & Tobago 412, 569, 600 TRIPS Agreement (1994) 304–308, 341, 368, 557–559, see also individual country entries for national compliance Tunisia 6, 39, 307, 310, 319–324, 411, 446, 571, 600 Turkey 35, 36, 46, 411, 446, 525, 569, 600 Turkmenistan 169, 411, 568, 599 Turks & Caicos Islands 599 Tuvalu 600 TWPAT (database) 234

Uganda 307, 363, 364, 412, 569, 601 UIBM Online 157 Ukraine 109, 160, 166, 169, 412, 447, 517, 525, 568, 600 Ulrich's Periodicals Directory 465 Ultra-Patent (database) 97 UNESCO Libraries Portal 464–465 Unexamined (publication) see Early publication Unitary Patent (EU) 14, 54–56, 175, 645 United Arab Emirates 342, 368, 402, 522, 570, 580 United Kingdom 3–4, 6, 8, 27, 35, 36, 45, 55–56, 121, 174–182, 197, 206, 231, 255, 258, 303, 334, 379, 393, 405, 418, 429, 433, 436, 438, 440, 444, 451, 461, 463, 465, 466, 470, 474, 509, 511, 523, 546, 567, 586, 587, 594, see Table of Contents for major sub-topics United States of America 4, 6, 10, 25, 27, 59–80, 108, 122, 231, 294, 379–380, 412, 418, 436, 438, 441, 447, 451, 463, 470, 471, 502, 511, 525, 546, 567, 593, 601, see Table of Contents for major sub-topics United States Patent Classification (USPC) 79–80, 426, 547–549 Univentio 181, 389, 402–413, 448–449, 484, see also individual country entries for TotalPatent One coverage Unycom 488 Uruguay 255, 256, 257, 258–259, 290, 412, 441, 447, 525, 601 Uruguay Round Agreements Act (URAA) 62, 557 US PatentImages (database) 394 USAAPP (database) 394 USAPAT (database) 394 USGENE (database) 552 USPATFULL /USPAT2 / USPATOLD (database) 77 USSR see Soviet Union Utility models 28–29, 289, 290–291, 363–364, 422, see also individual country entries for national practice Uzbekistan 15, 166, 169, 412, 447, 525, 568, 601

Index

Validation states (EPO) 38–39 Validity searching 457, 503–505 Vanuatu 601 Vatican City 146, 601 Venezuela 255, 256, 257, 412, 420, 472, 601 Vietnam 234, 236, 385, 392, 412, 518, 525, 601 Visegrád Patent Institute (VPI) 22, 109, 561, 602 Walford's Guide to Reference Material 462–463, 468 Washington Treaty (1970) see Patent Co-operation Treaty (PCT) (1970) Watch services see Current Awareness Web-based Examiners’ Search Tool (WEST) 380 WILA Verlag 143 WIPO (World Intellectual Property Organization) 4, 20, 22, 101, 116–118, 143, 218, 220, 234–235, 252, 256, 257, 258, 264, 267, 290, 308, 309, 310, 342, 356, 361, 377, 379, 385, 389, 421, 432, 458–459, 472, 473, 503, 508, 509, 516, 518, 519, 520, 521, 536, 541–544, 551, 553, 558, 559–560, 563, see PatentScope (WIPO) for coverage of WIPO bibliographic database WIPO IP Portal 116 WIPO standards 20–25, see also ST.(n) for entries on individual numbered standards

663

WIPO-CASE 455, 527–528, 560 WIPO-FILE 560, see also Electronic filing (of patent applications) WIPO-PUBLISH 236, 321, 333, 358, 364, 519, 560 WIPS Global / Wisdomain 52, 78, 96–97, 117, 450–452 WON (Werkgemeenschap Octrooiinformatie Nederland) 378, 379, 509–510, 516 World Patent Information (journal) 378, 562 WorldWideScience 467 WPAM (database) 420–421 WPIM (database) 423, 429 WTM (World Traditional Medicine Patent Database) 198 WTO (World Trade Organisation) 256, 289, 303–308, 341, 557, 558, 559, see also TRIPS Agreement (1994) XP (country code) 50, 459, 547 Yandex (Russia) 168 Yemen 341, 342, 413, 602 Yugoslavia 37, 413 Zambia 307, 363, 364, 413, 571, 602 Zhuan Li (Chinese document type) 188, 193 Zimbabwe 307, 363, 364, 413, 570, 603