Open patent services

The nature, definition, typical services, utility and future developments in Open Patent Services (OPS) are described. This is with particular reference to the European Patent Office (EPO), and German Patent and Trademark Office (GPTO) systems. The impact of OPS on both information providers and users is discussed.     

Some recent UK developments in encouraging the use of patents as source of information

The paper first outlines the network of responsibilities for information and library matters in the UK as they relate to patents and to the Science Reference Library. It then follows with a review of progress with developing a library-based information network for patents (PIN), with using new technologies and with educating potential users to appreciate the value of patent information. Finally, it briefly describes the new indexing schedules (UIS) being introduced by the UK Patent Office in 1983.     

Progress report on the establishment of a Patent Information Centre (informationszentrum patente) in the Federal Republic of Germany

The author describes the structure of the sectorial information centre for patent information (IZ 17) which is being established in the Federal Republic of Germany as central information service under the responsibility of the German Patent Office. The local patent information services will be incorporated in the system. Details are further given on the work of the user's working party 17, which since April 1980 has taken part in the planning of the information centre by the German Patent Office.     

Chinese patent applications reach six figures in 1996

Since the Chinese Patent Office started accepting patent applications on 1 April 1985, the yearly patent application number has increased steadily, although a sluggish period appeared later. The Office expected to reach the 100,000 year mark in the last year of the century, that also will be the end of the national “Ninth Five-year Plan” period. However, the promotion of science and technology and the sustained and rapid economic growth in the country have shown China to be a huge potential market, and this has contributed to a recent sharp increase in patent applications both from home and abroad. The number of applications filed in 1996 reached 102,735, 23.7% higher than the total number of 83,044 made in 1995. Of the 1996 applications, 80% came from domestic applicants and 20% were of foreign origin. The Chinese Patent Office granted 43,780 patents in the same year. A faster examination process of better quality and a more efficient overall administration procedure were scheduled at the Patent Office in order to cope with the new challenge.     

Patent analyses in the changed legal regime of the US Patent Law since 2001

In 2001, a new ruling for the publication of patent applications at the United States Patent and Trademark Office came into effect. Since then, all applications which are also filed with foreign offices have to be published 18 months after the application date, in analogy to the ruling in Europe and Japan. This new regime replaces the former system where only granted patents were published. With about 70% of all applications the share of pre-grant publications of applications of US origin is quite high, allowing new types of statistical analysis. In particular, the investigations of time series based on priority years instead of grant years can thus be performed much more topically. On the one hand, a larger dataset for applications of US origin is available; on the other hand, the sample of applications from Asian countries is generally much larger at the US Patent Office than at the European Patent Office. Despite these new opportunities, searches at low levels of aggregation by codes of the International Patent Classification still have to be handled with care.     

International patent classification from the viewpoint of Japanese users

To clarify the rules for IPC classification the Japanese Patent Office has issued a Working Standard for assigning IPCs to Patents the contents of which are briefly described in the article.In some selected groups the Japanese Patent Office uses a subdivision of the IPC so called ‘Developing Marks’ — in others a special classification is done parallel to and based on another viewpoint than the IPC — so called ‘Facet Classification Marks’. Finally some proposals of Japan for the Int. Cl.⁴ are mentioned.     

Abridgments of British patents — The end of an era

The Patent Law Amendment Act of 1852 and the coming into being of the “modern” British Patent Office is briefly mentioned. In 1852 Bennet Woodcroft F.R.S. was appointed Superintendent of the specifications and it was his idea to publish abridgments of each patent specification so that searches could be readily conducted in the Patent Office Library (or at home if the abridgments were purchased). The four series of abridgments covering the years from 1617 (or earlier in some cases) to the present day are described. Patent applications currently being published under the Patents Act 1977 contain abstracts of the specification on their front pages and there are several important differences between these abstracts and all the earlier series of abridgments. These differences are discussed and commented on and it is found that there are both advantages and disadvantages in the new system.     

Patent information from the Polish Patent Office

The Polish Patent Office activity within the scope of its patent information policy—with emphasis on the changes since the 1990s—is described. In addition to aspects of patent searching, such as documentation and databases, dissemination activities, for example education and training, and the role of Patent Information Centres, is covered. New challenges associated with the promotion of intellectual property protection and its role for the economy are also highlighted.     

Foreign applications at the Japan Patent Office - An empirical analysis of selected growth factors

This article aims to evaluate some of the possible factors which could have had a significant role in the increase in the yearly number of foreign patent applications at the Japan Patent Office. The analysed period ranges from 1991 to 2005. In the years considered, foreign applications increased constantly while the number of domestic filings remained almost the same or even decreased. The increase is more striking when compared to analogous figures of the US Patent and Trademark Office and the European Patent Office, where the corresponding ratio did not change too much in the same period. Building on previous literature, this paper analyses the impact of some macroeconomic and structural characteristics of the extending countries, on one side, and, on the other side, some features specific to the receiving country and its Patent Office (here Japan and the JPO). This work tries to capture the relevance of such drivers in the increased amount of foreign patent applications at the JPO.     

Recent developments in the documentation system of the Chinese Patent Office

Since the first Chinese Patent Law was promulgated, the Chinese Patent Office has been trying to establish its search files. It learned from some good experiences abroad and took its own concrete situation into consideration. A scientifically arranged and practical documentation system is expected.     

The Swedish Patent Office; a fully equipped international authority

The background and evolution of the Patent Department of the Swedish Patent Office is described, through the turmoil of the late 1970s—when the PCT and the EPC came into force—to the present situation characterized by flexible management and computerization.     

Duty of disclosure during patent prosecution in India

The Indian Patent Office has witnessed an increase in both volume and earnestness from applicants as a result of a duty to disclose that is mandated under Section 8, The Patents Act, 1970. There is a need to delink this with its original purpose. The present study aims at tracing the contours of the duty to disclose requirement in India and in the light of the recent cases, examine the extent to which Section 8 accomplishes the purpose. Elaboration of guidelines for Section 8 in the Manual for Patent Practice and Procedure and need for online linking of databases are suggested as measures for improvement.     

Organising the distribution of certain EPO data bases

The distribution of three data bases developed by the European Patent Office has been approved by the Administrative Council of the European Patent Organisation. These databases are: the ‘Family and Classification System’, the ‘Inventory of the Manual Search Files’, and the ‘EPO Classification System’. The conditions of the distribution and some practical points are specified.     

The patent system and the medium-sized industry

The statistics of the German Patent Office reveal that the majority of patent applications are filed by small and medium-sized industries (SMI) or private inventors and so confirm the importance of this sector for the technological innovation. However, many SMI do not make full use of the possible protection patenting offers them, and the importance for SMI of exploiting the patent literature as a source of technical information has only recently been acknowledged. There are many possible explanations of this reticence on the part of SMI, a number of them are analysed in the article, together with the advantages of patent protection. It is concluded that the Patent Office ought to make an effort to make access to its stock of information easier and more effective.     

Assessing the value of patent portfolios: an international country comparison

Patent counts have been extensionally used to measure the innovative capacities of countries. However, since economic values of patents may differ, simple patent counts may give misleading rankings, if the patents of one country are on average more valuable than those of another. In the literature several methods have been proposed, which shall adjust for these differences. However, often these do not possess a solid economic micro-foundation and therefore are often ad-hoc and arbitrary procedures. In this paper, we intend to present an adjustment method that is based on the analysis of renewal decisions. The method builds on the theoretical model used in Schankerman and Pakes (1986) and Besson (2008) but goes beyond both approaches in that it recovers the important long tail of the value distribution. It also transfers Besson’s (2008) econometric methodology (applicable to the organisational structures of the US Patent and Trademark Office) also to the European Patent Office which is necessary, since each application here may split up into several national patent documents. The analysis is performed for 22 countries. Exemplarily, we find that in the cohort of 1986 patent applications, Danish patents are about 60% more valuable than the average patent. German patents are a bit below average. Japanese patents are of least value. In the cohort of 1996, Danish patents lose some of their lead but are still more valuable than the average. While German are a bit above average, Japanese patents even fall further behind (possibly due to the economic downturn in since the mid of 1990ies).     

Automated patent searching: Preliminary results of USPTO studies

The United States Patent and Trademark Office has begun development of a ‘paperless’ automated system to replace its paper search files. In order to answer several questions related to automated operation, the US Office conducted a number of studies involving commercial patent search systems. The results of these studies are summarized in this paper.     

The influences of the structure and activity of biologically active compounds on the assessment of inventive step

The assessment of inventive step for (biologically) active organic chemical compounds is discussed in the light of the application of well-established structure–activity-relationship theory as an important part of the common general knowledge. Applying the problem–solution approach (PSA), several relevant decisions of the Technical Boards of Appeal of the European Patent Office are discussed and the relevance of the PSA in this particular technical field is documented.     

AIDB, the Italian Patent Information Users Group

The Italian Patent Information Users Group (AIDB—Associazione Italiana Documentalisti Brevettuali) was founded on February 24, 2004. At the end of that year, AIDB had 58 members, coming from different environments such as industry, private practice, public institutions, and content providers. During its first months of existence, AIDB coordinated various activities such as checking the extent and quality of documentation services offered by the Italian Patent and Trade Mark Office (UIBM), and promoting discussions about suitable certification schemes for professional patent searchers. In November 2004, AIDB organized a two-day national patent information conference, focused on the business impact of patent information and on the certification of patent searchers.     

Legal Validity Metrics for Patent Offices and Law Firms – Recycling of Patent Court Appeal Decisions for Quality Management

In all relevant patent systems an adversely affected party has the possibility to appeal the patent office's decision in front of a patent court or Board of Appeal (BoA). Within a European context, the EPO is, in a way, even engaging in de facto competition with national patent offices. As an example, the German Patent and Trademark Office (DPMA) provides quasi identical patent products and offers the same kind of legal recourse to the German patent court (BPatGer) for these products. Both offices offer an opposition procedure which is open for appeal, and also in the case of a refusal, both offices offer the possibility of appeals. Thus, the EPO Boards of Appeal are engaged in making decisions every year on around 2000 cases and, e.g., the BPatGer on 600 cases regarding the legal validity of the first instance's work. It is thus remarkable that, so far, nobody has systematically included the work of the patent courts in a statistical legal validity evaluation in the context of the Patent & Trademark Offices' (PTOs') quality assurance systems.Since there is obviously a need to establish a common standard for the comparison of first and second instance legal teachings in patent law, a methodology for comparative legal validity analysis is proposed in this paper. I have tested and optimised the approach while working as a project manager at the European Patent Office, based on analysis of 2300 appeal decisions from seven annual batches.     

Patent backlogs at USPTO and EPO: Systemic failure vs deliberate delays

This paper first describes the so-called patent backlogs and assesses the extent to which they might affect the examination process in major patent offices. Second it puts forward that the root causes of these backlogs in Europe and in the US are different. The backlog at the United States Patent and Trademark Office (USPTO) is three times larger than one at the European Patent Office (EPO) and is essentially due to very low fees and a weak rigor of the examination process. The observed long pendency at the EPO is more due to applicants’ strategic filing behaviors that aim at delaying the grant date, as it marks the start of high expenses due to translation requirements and multiple validation or renewal fees. Since the root causes of backlogs diverge between EPO and USPTO, their cure should also be different.