Patent Information NewsIssue 3 | 2010

Patent Information News 3 | 2010 September 2010 1

Are patents failing to fulfil their function as a source of technical information?An increasing number of people seem to think so.

Patent disclosure under academic scrutiny

Two recent papers from academicsin the United States could turn out to be landmark works if they succeed in provoking a rethink in thepatent world about the disclosure-related side of patenting.

In her 2009 paper entitled simply"Patent disclosure", Jeanne Fromer,Associate Professor of Law at Fordham University in New York,contends that the disclosure function is "under-performing".

Sean Seymore, Associate Professor of Law at Vanderbilt University inNashville, believes that patents continued on page 2 >

C O N T E N T

2 What you missed in the last issue3 Editorial3 Tips for esp@cenet users4 Changes to the IPC from 20114 Patent information training 5 News from Asia6 PANTAS – online searching for

patents and trade marks at MyIPO7 First examination reports

now on iPairs8 Striking the right balance:

the role of patent offices in thepatent information world

9 ESPACE Bulletin as a single online database

10 Browser-based access to MIMOSA-type data sources now available!

10 New citation data in GPI11 Patent statistics for

decision-makers: "New technologies, patent quality and entrepreneurship"

11 OECD database updates11 Publications Corner12 Other news

should be "readable teaching documents".

In "The Teaching Function ofPatents", Seymore asserts thatpatents could be a prime mediumfor disseminating technical knowl-edge, but says that they do not succeed in doing that today. He citesthe "pervasive use of ambiguous or opaque language" as a major barrier. Fromer observes that today'spatent system allows the patentapplicant to "under-divulge". It givespatentees, she says, an incentive to"obfuscate information they providewhenever possible".

Other commentators have arguedthat disclosure in patents is of littleimportance, as disclosure eithertakes place through other meansanyway or else the invention is self-disclosing. Patent information specialists will certainly have somedifficulties accepting this point ofview, as do Fromer and Seymore,who both feel that the disclosureside of patenting has been unfairlyneglected. They stress the dual function of a patent document as alegal instrument and as a descrip-tion of a new piece of technology.

2 Patent Information News 3 | 2010 September 2010

RETROSPECTIVE

References:Jeanne C. Fromer, "Patent Disclosure", Iowa LawReview 94, 2009, 539 (Fordham Law Legal StudiesResearch Paper No. 1116020)

Sean B. Seymore, "The Teaching Function ofPatents", Notre Dame Law Review 85(2), 2010, 621-669 (Washington & Lee Legal Studies Paper No. 2009-03)

And it is in this descriptive function,they propose, that patents areintended to stimulate innovation.

The evidence available, includingstudies done by the EPO, certainlysupports any theory that technolo-gists do not use patents much as asource of inspiration for theirresearch. Fromer devotes a couple ofpages to analysing why this may beso, noting that only 1.5% of USpatents are ever cited in scientificliterature, and pinpointing what she sees as four main areas of inadequacy:– the writer– the index– the reader– the enforcement

In essence, she suggests that patent documents are rarely used asteaching documents because theyare not written in a way that lendsthem to that function, because theyare not classified such that a non-patent expert can find them easily,because there is a disincentive toread patents due to the laws aboutwilful infringement, and becauseneither the patent offices nor thelegal system in general enforce asstrictly as they could the rules ondisclosure that already exist. She specifically notes, for example,that current regulations "do not systematically generate good titles".

In her paper, Jeanne Fromer recognises that there are opposinginterests in this area and says that itmust be possible for strong patentrights and effective disclosure tocoexist. As a first step she proposesthe concept of "layering" patentdocuments so that technical disclosure can function semi-independently of the legal aspects.

Sean Seymore introduces some concrete ideas for stripping awaythe jargon from patents, his mainproposal being to give patentoffices the power to require work-ing examples proving that theclaimed invention has been con-structed and works for its statedpurpose.

Patent information specialists willno doubt point out that patentdatabases used as a source of tech-nical information generally containunexamined patent applications asfiled, not granted patents. Neitherof the two authors tackle this pointin their papers. It may be that this isbecause there is no long tradition inthe United States for publishingpatent applications, and that European academics will pick up theissue when they join the debate.

At the time of writing, there wasvery little trace of academicresearch in Europe in this area, butit cannot be long before we see newwork appearing. Dietmar Harhoff,Professor of Business Administra-tion at LMU Munich, is currentlystudying a recent survey of morethan 9 000 inventors who have pro-vided estimates of the time saveddue to knowledge of the patent lit-erature. It is likely that some analy-sis of this will be published soon.

Sean Seymore will be one of theparticipants in the panel discussionon quality in the patent system on 19 October 2010 at the EPOPatent Information Conference inLausanne, Switzerland (seewww.epo.org/pi-conference).

continued from page 1

What you missed in the last issueAlternate issues of Patent Informa-tion News are published on ourwebsite only, and not in paper format. For those who missed it,here are some of the highlightsfrom Patent Information News2/2010 (available at www.epo.org/about-us/publications/patent-information/news/2010.html).

First results from large-scale surveyof European industry The EPO has recently carried outthousands of telephone interviewsacross all the EPC contracting statesand in the USA. The interviews wereaimed at ascertaining the level ofawareness of patent informationamong technology-based indus-tries, research organisations anduniversities, and establishing justwho does – or rather, doesn't – useit, and why. Detailed results will bepublished soon.

Divisional applications at the EPOA divisional application is a patent application which derives from anearlier application. It is filed afterthe earlier application (usually someyears later), but keeps the same filing and priority dates as the earlier application.

This article explained the legalframework relating to the filing ofdivisional patent applications at theEPO, some of the strategies in whichthey are used, and recent changes at the EPO which entered into forceon 1 April 2010.

New Indian patent informationretrieval system launchedThe Indian Patent Office (IPO) hasrecently enhanced the free data -bases available on its website andre-launched them as "iPairs", theIndian patent information retrievalsystem, bringing together the various options for free patentsearching provided by the IPO.

36 years in patent informationAn interview with Peter Paris, one of the major architects of theINPADOC databases, who retired atthe end of May, reveals his thoughtson current developments in patentinformation.

Understanding patentsThe article on patent disclosure in this issue of Patent Information News makes it very clear that there is little point in reading a text if you can't understandwhat it means. The question of understanding becomes even more acute if thedocument you want to read is in a foreign language.

Patent Information News 3 | 2010 September 2010 3

EDITORIAL

Consequently, it is of no surprisethat one of the obstacles that hasstood in the way of a successfulagreement on the establishment ofan EU patent is the whole issue oflanguages. Europe is rightly proud ofits multi-lingual culture and Euro-pean politicians have traditionallybeen very wary about taking anysteps into the language minefield.

The EPO believes that technologycan offer the politicians a way ofvaulting over the minefield and is working intensively with its member states on a wide range of

machine translation solutions. It ishoped that these will contributetowards finding an answer to thelanguage question where the EUpatent is concerned.

Machine translation technology isin any event becoming a muchappreciated extra tool for patentsearchers, especially now that translating automatically betweenAsian languages and English is generating usable results.

esp@cenet already offers machinetranslation for French, German,

Richard Flammer

esp@cenet

In this regular column, the expertsfrom the EPO's esp@cenet helpdeskteam pass on useful tips based onthe questions they receive fromusers. In this issue, the focus is onthe use of standardised applicantnames and on searching for citeddocuments using the SmartSearchfeature.

Standardised namesWhen you search on an applicant'sname in esp@cenet, the searchengine checks against both the"non-standardised" names asentered by the applicant on theapplication form, and a standard-ised version of the name, if avail-able. Therefore a search for NIKONwill also retrieve applications filedunder NIPPON KOGAKU KK.

Tips for esp@cenet usersThe standardised version of thename will be shown in the "Bibliographic data" tab, eventhough this might not correspondexactly to the name on the originaldocument. By clicking on the "+"sign next to the name of the inven-tor or applicant you will obtain thelist of non-standardised names. Thisfeature makes it easier to avoidmissing documents in a search.

To ensure clarity and consistency,the standardised name is assignedby the EPO and not the applicant.

Search for cited documents in esp@cenet A "cited document" is a documentcited by an examiner in a searchreport.

esp@cenet displays all the cited documents available in the data -bases, regardless of their country oforigin. They are shown under the"Bibliographic data" tab in the"Cited documents" section on theright-hand side.

There is no specific search field forcited documents in esp@cenet in thevarious search masks (e.g. AdvancedSearch).

However, it is possible to search for cited documents using the ctfield identifier in SmartSearch (see the online help files for moreinformation). For example, if youenter ct=EP1000000 in Smart-Search you will find the documentsin which EP1000000 has been citedin the search report.

Italian and Spanish, with more European languages in the pipeline.Beyond Europe, the EPO will beactive on the international stage tocontribute whatever it can to securing good machine translationtechnology for Korean, Japanese,Chinese and the languages of India.

Of course, translation is only oneaspect of understanding patents,which itself is a subject high on theagenda at the moment. If you haveviews on this that you would like toexpress, then please write to me atrflammer@epo.org.

Richard FlammerPrincipal Director Patent Information and European Co-operation

Name standardisation inesp@cenet

4 Patent Information News 3 | 2010 September 2010

1) This information was correct at the time of writing. However, further changes may beadded by WIPO prior to entry into force on 1 January 2011.

Table 1: Sub-classes affected by the IPC revision entering into force on 1 January 20111

CLASSIFICATIONS

TRAINING

WIPO has announced changes tothe International Patent Classifica-tion (IPC) scheme that will enterinto force on 1 January 2011.

The most significant impact on the structure of the IPC is that it will no longer have a "core" and an"advanced" level. From January, onlyone text will be published, corres -ponding to the current advancedlevel. Small patent offices will havethe option (derived from the Strasbourg Agreement itself) toclassify down to main-group level only.

A second change will be to abandonthe (theoretical) three-monthrhythm for revisions to the IPC,replacing it with an annual revision,in January each year.

There will also be a number ofchanges in the scheme itself asfrom 1 January. The sub-classesaffected are listed in the table.Among the most noticeable

Changes to the IPC from 2011modifications will be the introduc-tion of a new sub-class, B82Y, which will allow offices to classifyspecific uses of nanotechnologystructures for the first time. A pioneer in this area, the EPO intro-duced the Y01N tags for nanotech-nology inventions into its ECLAscheme a few years ago. The EPOintends to transfer the Y01N schemeprogressively into B82Y once itbecomes available.

Other sub-classes where substantialmodifications will take place are:– A01M – several new sub-groups

for scaring/repelling devices, suchas bird-scaring apparatus(A01M29)

– B21D – new sub-groups for metalshaping (B21D26)

– B60R – safety devices in cars, e.g.airbags (B60R21)

– C13B – a new sub-class coveringthe production of sucrose (C13C-C13J deleted)

– F24F – reorganisation of sub-groups for air-conditioningunits (F24F1)

– F41H – some new sub-groups fordefence installations (F41H11)

– H01R – several modifications tothe area of electrically conductiveconnections

– H04B – some new sub-classes inthe details of transmission systems (H04B1)

– H04N – major expansion to the sub-groups for pictorial communication (television, etc.)

More information about the newconcept is available on the WIPOwebsite at: www.wipo.int/ classifications/ipc/en/

For full details of the changes to theclassification symbols, click on the"Compilation" tag at www.wipo.int/ipcpub/.

The changes are shown in tabularformat, using the following codes:D – deletionC – modification with a change

of scope or involving reclassification

M – modification without a change of scope and not involving reclassification

N – new

The EPO will update the IPC symbolsfor all the documents in its data -bases in time for 1 January. It willalso endeavour to bring its ownECLA classification symbols into linewith the new IPC as speedily as possible.

A01M B21D B60R B82Y C07BC08H C13B C13C C13D C13FC13G C13H C13J F16D F23BF24F F41H G01M G06F G06MG06T G07B H01R H01T H04BH04J H04N

Patent information training Classroom trainingThere are still a few seats availablein the EPO's four-day advanced-levelpatent information training seminar:

4th EPO Patent InformationAdvanced Seminar, 8-11 November 2010 (PI08-2010)Details and registration informationcan be found in the searchable IPcalendar at www.epo.org/topics/ip-events/patent-event-search.html,for example by searching with thecode "PI08" in the free-text field.

Special topics at the EPO PatentInformation ConferenceSpecially designed training coursesat the EPO Patent Information Con-ference in Lausanne this Octoberwill include new topics aligned withthe conference programme. Trainingdays at the conference are 18 and 21October 2010. Details can be foundat www.epo.org/about-us/events/pi-conference/training.html.

Virtual classroom training andnewsflashes liveThe remainder of 2010 will see arange of patent information-relatedevents online. Apart from the regular online patent informationnewsflash, scheduled to take placeevery last Thursday of the month(except August and December),there will be a number of virtualseminars on patent informationtopics old and new, as well as sessions on the EPO's products andservices.

For the first time, we will also offera dedicated online question-and-answer session for all participantsin this year's classroom and online

training events. This will allow youto put all your questions direct tothe EPO's experts. Check out thesearchable calendar on the EPOwebsite for updates (filter virtuallive events by selecting "Onlinetraining" in the medium field).

For details of these and otherevents, visit www.epo.org/learningor contact Roland Feinäugle atPatent Information Training atpitraining@epo.org. To sign up forpatent information training e-mailalerts, use the online form athttps://secure.epo.org/patents/email/pi-training/index.en.php.

Patent Information News 3 | 2010 September 2010 5

PATENT INFORMATION FROM ASIA

India scheduled to join Madrid Protocol in 2010The upper house of India's parlia-ment passed the Trade Marks(Amendment) Bill 2009 on 10August 2010, paving the way for thecountry to join the Madrid Protocol.The Indian government is now inthe process of finalising the imple-menting rules. According to officialsources, the Madrid Protocol isscheduled to become operational inIndia by the end of this year.

For more information, see "Indiaexpected to join Madrid this year" inManaging Intellectual Property(MIP), published on 12 August 2010:www.managingip.com/Article/2650504/Search-Results/India-expected-to-join-Madrid-this-year.html?Keywords=india+madrid&Quick=True&OrderType=1

Further background is discussed inan interview with P.H. Kurian (Controller General of Patents,Designs and Trademarks), publishedin MIP on 1 May 2010: www.managingip.com/Article/2476571/Search-Results/India-prepares-for-Madrid-Protocol.html?Keywords=india+prepares+for+madrid&Quick=True&OrderType=1

China and Chinese Taipei agree to recognise each other's priority rightsChongqing, China, was the venuefor the signature by Mainland Chinaand Chinese Taipei on 29 June 2010of an agreement on intellectualproperty protection and an Eco -nomic Cooperation FrameworkAgreement (ECFA). Under the IPRprotection agreement, both sidesagree to recognise the priorityclaims of the other's applicants upto one year after filing of the original patent application (sixmonths for trade marks). Otheritems in the agreement include

co-operation in search andexamina tion, and the co- ordinationof measures against infringementand counterfeiting.

Further information has beenreleased by China's official newsagency Xinhua at: http://news. xinhuanet.com/english2010/china/2010-06/29/c_13376017.htm and onTIPO's website at: www.tipo.gov.tw/en/News_NewsContent.aspx?NewsID=4603.

Taiwanese citations now also available in EnglishOn 1 July 2010, the Taiwan PatentOffice (TIPO) launched a new English interface of the TWPAT data-base (http://twpat.tipo.gov.tw/tipotwoc/tipotwekm), where userscan now also see examiners' cita-tions. Citation data, which couldpreviously only be accessed in Chinese, is available for patentapplications published after 1 January 2008. In addition to PDFversions of original documents, theEnglish interface also includes therelated information published in thegazette for laid-open and grantedpublications.

New step-by-step search guides onhow to find citations and legal status information in TIPO's Chineseand English databases are nowavailable in the "Chinese Taipei –

News from Asia Searching in databases" section onthe EPO's virtual helpdesk at: www.epo.org/patents/patent-information/east-asian/helpdesk/chinese-taipei/search.html?update=patentinfo

Korean Patent Office implementsfurther fee changesThe Korean Patent Office (KIPO)implemented further adjustmentsto its intellectual property fees on28 July 2010, including a reductionin the examination request fee forutility models filed under the PCT,an increase in the registration fee

http://twpat.tipo.gov.tw/tipotwoc/tipotwekm

for patent term extensions, and anincrease in the fee for correctionrequests filed electronically. Thereare also changes to the fees foramendments, patent applicationsfiled on paper, and trade mark anddesign opposition requests.

For more information, please seeKIPO news (782) published on KIPO'swebsite on 3 August 2010:www.kipo.go.kr/kpo/eng/

SIPO publishes official English translation of revised ImplementingRegulations The revised Implementing Regula-tions to the new Chinese PatentLaw, which entered into force on 1 October 2009, were published on 9January 2010. An English translationis now available on China IP LawSearch at: www.ipr2.org/ipsearch/index_en.php (click on "Patents").

The English text of the revised Chinese Patent Law can also bedownloaded from this source.

JPO revises Examination Guidelinesfor Amendment of Description,Claims and DrawingsFollowing a decision of the GrandPanel of the IP High Court, whichindicated the general definition ofacceptable scope for an amend-ment, the Japan Patent Office (JPO)has now revised the correspondingExamination Guidelines. The revisedguidelines will be applicable toexamination from 1 June 2010. Moreinformation and links to the guide-lines are available on the JPO's English website at: www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/amendment_claims_drawings_e.htm

China establishes State IPR Advisory Committee On 5 August 2010, a "State IPR Advisory Committee" was set up inChina. The Committee's workincludes research into develop-ments in intellectual property rights and consultation on strategic decisions, policies and regulations. It is headed by former SIPO Commissioner Wang Jingchuan.

For further information, see: www.sipo.gov.cn/sipo_English/news/official/201008/t20100813_531273.html and www.chinaipr.gov.cn/newsarticle/news/government/201008/943589_1.html

For more news from Asia, go tohttp://eastmeetswest.european-patent-office.org/news

PATENT INFORMATION FROM MALAYSIA

6 Patent Information News 3 | 2010 September 2010

PANTAS – online searching for patents and trade marks at MyIPOPANTAS (Patent and Trademark Administration System) is a secure, web-based systemfor searching and filing patents, utility innovations and trade marks from Malaysia.

PANTAS is operated by the Intel -lectual Property Corporation ofMalaysia (MyIPO) and covers the 102 3301 applications filed at itsheadquarters in Kuala Lumpur andbranch offices in Sabah andSarawak, and the 41 2621 patentsand utility innovations granted inMalaysia since 1986.

Users must register to access thesearch interfaces in PANTAS. Whileregistering and searching are free,viewing detailed search results ordownloading full specifications issubject to a fee (payable via pre-paid account or credit card payment).

Fig. 1: Sample PANTAS result screen(source: https://pantas.myipo.gov.my/)

Fig. 2: Example of legal status display(source: https://pantas.myipo.gov.my/workflow/ENG/)

1) Figures up to March 2010 (source:http://www.myipo.gov.my/en/ip-statistics.html)

The patent search in PANTAS offers"simple" and "advanced" searchmodules. Users can search for pub-lished applications, granted patentsand utility innovations. The simplesearch screen is recommended forlooking up application numbers,and the advanced search interfaceallows searches with names (inventor, applicant/owner), IPCsymbols, or keywords in titles andabstracts. Users can search based ondate ranges (filing, priority or grantdates) and using wildcards (*, ?) andBoolean operators (AND, NOT, OR,NEAR).

The result list provides basic infor-mation on the documents foundand is displayed free of charge. This free information includes theapplication number, filing/grantdate, title of the invention and

latest legal status information.Access to detailed information suchas the front page data, abstract,claims, description and drawings(hyperlinked from the applicationnumber in the results list) anddownloading patents are subject to a fee.

PANTAS can be accessed at:https://pantas.myipo.gov.my/ (registration required).

Other search options onMyIPO's website

"Check Application" –legal status searchLegal status information forMalaysian patent applications canbe retrieved free of charge via the"Application Status Enquiry" func-tion. Clicking on "Check Application"in the "online services" section onthe MyIPO homepage opens thesearch screen. The search is by application number or identificationnumber (for Malaysian citizens).Legal status information is availablefor patents, utility innovations andtrade marks. The "Application StatusEnquiry" function provides details of dates (filing, priority, grant,expected expiry), numbers (applica-tion, grant) and names (applicant/owner), as well as the latest statusof the application. An additionalflowchart illustrates the steps in thegrant procedure and highlights thecurrent status of the application ingreen (see Figure 2).

The legal status search can be foundat www.myipo.gov.my/ or athttps://pantas.myipo.gov.my/workflow/ENG/ (free, no registrationrequired).

e-GazetteMyIPO also publishes electronicgazettes for patents, trade marks,industrial designs and geographicalindications. The e-Gazette forpatents is broken down into the following categories: granted,lapsed, invalid, errata and reinstate-ment of lapsed patent. Clicking oneach publication date will displaysimple tables (see Fig. 3) consistingof the application number, grantnumber, country of origin and IPC(by section only). Trade markgazettes are also searchable, the

Patent Information News 3 | 2010 September 2010 7

New feature of Indian legal status informationThe Indian Patent Office's "Indian Patent Information Retrieval System"(iPairs) became operational in early 2010. One of the highlights of the newsystem is the "Application Status" search function, which gives users accessto the prosecution history of patent applications pending with the IndianPatent Office.

In June this year, the legal status information accessible via "ApplicationStatus" was expanded to include examination reports. In India, the "firstexamination report" (FER) is sent to the applicant following substantiveexamination of the application. The applicant has to address and overcomeall the observations and objections raised within twelve months from thedate of issuance of the FER in order to "put the application in order forgrant".

Wherever applicable, the "Application Status" function provides a link fromthe basic legal status display to the examination report for the applicationin question. iPairs currently contains examination reports issued from July2009 onwards, and older examination reports are being uploaded gradually.

The "Application Status" search function is in a test phase now, so in criticalcases users are advised to check back with one of India's four patent offices.

Users can access the iPairs search system athttp://ipindia.nic.in/ipirs/patentsearch.htm

PATENT INFORMATION FROM INDIA

First examination reports now on iPairs

Sample examination report (source: http://ipindia.nic.in/ipirs/patentsearch.htm)

With the addition of the examination reports, information equivalent to theentire file wrapper of Indian patent documents – including bibliographicinformation, abstracts, full specifications and legal status data – is nowavailable via the Indian Patent Office's website.

Fig. 3: Extract from e-Gazette for granted patents (source: www.myipo.gov.my/en/patent/gazette-patents.html)

search criteria being gazette date,application number and class. Thelatest trade mark gazettes can bedownloaded in full as PDF files.

To access the electronic gazettes onwww.myipo.gov.my/, click on "e-Gazette" in the "online services"section.

PANTAS - Quick facts– registration required– offers secure search environment

(SSL)– free searching and basic

information access– chargeable access to details

and downloads – "simple" and "advanced"

search options – search in patents/utility

innovations/trade marks– search in bibliographic data,

title, abstract– access to basic legal status– full specifications available– payment via prepaid account

or credit card

Useful links– MyIPO website:

http://www.myipo.gov.my– PANTAS Online:

https://pantas.myipo.gov.my– News from Malaysia:

http://eastmeetswest.european-patent-office.org/news

For further details contact the EPO'sAsian patent information services:Tel.: +43 1 52126 4545e-mail: asiainfo@epo.org

8 Patent Information News 3 | 2010 September 2010

SWITZERLAND

Striking the right balance: the role of patent offices in the patent information worldIn this article, Alban Fischer and Theodor Nyfeler of the Swiss Federal Institute of IntellectualProperty discuss the patent information market and the balance between the commercial and public sectors

On 19 to 21 October, Switzerland will play host for the first time to the EPOPatent Information Conference. This conference is by far and way the mostimportant meeting-point for all those involved in the world of patent information. Although we are still waiting for the final results from theEPO's extensive survey, we already know that, despite the concerted effortsof the EPO and the national patent offices in recent years, the use of patentinformation in Europe lags far behind that of the USA. We would like to usethe occasion of the conference and the results of the study to put forwardthe view of the Swiss Federal Institute of Intellectual Property ("the Insti-tute") on the use of patent information, the responsibilities of the mainplayers, in particular the patent offices themselves, and the division of rolesamong the parties involved.

In the classic value creation chain for patent information, the first linkinvolves patent offices, in particular the EPO, collecting basic informationand making it available to the commercial service providers, who process itand make it searchable. Patent searchers then search for relevant content,which they in turn also process. Patent attorneys interpret the results andadvise their clients on the optimum strategy for their intellectual property.

For professional users, who know what they want and where to get it, thereis a lively market, with private providers at every link in the chain. Well-informed users can pick and choose from a broad range of providers to suittheir requirements. These users are also prepared to pay the cost-coveringprices that private providers are obliged to charge.

While the patent information market works well for experienced users, it is clear from various studies, not least the EPO's own investigations, that inexperienced users do not know enough about patent information to beable to decide whether or not they need it. Being informed is, however, afundamental prerequisite for a functioning market. The aim must thereforebe to find simple and efficient ways of getting inexperienced users – in particular SMEs – to recognise their need for patent information and todecide whether they wish to make use of what is available, and if so, inwhat form and with what degree of quality.

With this aim in mind, an increasing number of state authorities are takingon the tasks in this value creation chain – frequently at cross-subsidisedprices - and in doing so are destroying the established market structure.Some national patent offices, for example, offer searches at rock-bottomprices, in order to provide work for their examiners. The EPO itself has longsince become a service provider with its esp@cenet service. More and moreoften, state agencies are also subsidising strategy consultancy, or even

offering it themselves, citing the need to promote innovation: businessesshould be filing more patent applications, and should be making better useof patent information. As a result, private providers, with their competitiveadvantages such as quality and specificity, can no longer compete withstate-subsidised providers.

From our point of view this development is not welcome, because wherecompetition is destroyed by state intervention, problems with quality andcustomer service soon follow, along with wastage of public money. InSwitzerland, therefore, the principle of subsidiarity prevails. In other words,the state will only intervene if the market fails. If, however, a state authoritydoes get involved in the market, it must conduct itself like a private company. In particular, it must charge prices which at least cover its costs.

Against this background, the Institute differentiates between the patentinformation services it offers as follows:

– The provision of national patent data, in particular to the EPO and commercial data providers The crucial factor here is the quality of the data, because any services that follow can only be as good as the data on which they are based. The

SupportInformation

Value creation chain

Non-user

Searcher– Search– Processing

of results

Patent attorney– Interpretation– Strategy

Patent office– Basic

information

User– Applicant– Third parties– Technical

information

Provider– Added value– Search engine

Patent Information News 3 | 2010 September 2010 9

Institute therefore places great importance, within the framework of substantive examination, on the quality of the clarity and disclosure ofpatent applications as well as on full and timely data provision.

– The provision of information services for individual inventors, SMEs and universitiesThis category includes measures to improve awareness and training, as well as what are known as "assisted" searches, where inexperiencedusers can find out about the patent system and carry out a search together with a patent expert. In this area there is a partial failure of themarket, as such services are frequently of little commercial interest. Nevertheless, it is still important to make a clear separation from the services provided by commercial providers. As these services are cross-subsidised, ignoring these boundaries will lead to competition being distorted, with the resulting negative fall-out referred to earlier inthis article.

– The provision of professional patent and technology information servicesfor attorneys, industry and other experienced users of the patent systemThis is one of the tasks of the Institute which was specifically laid down bythe Swiss legislator. The Institute must cover all costs and charge market

prices. Under these conditions, the Institute's commercial services are animportant source, enabling it to find out more about the needs of industry and to continuously improve, which in turn is of benefit to thepublic services too.

The differentiation of customer needs, quality assurance and the separationof public and commercial services are therefore the main criteria to beapplied by any patent office when selecting and developing a new patentinformation service. If one or more of these criteria are not met – either inpart or in full – there is a risk that competition will be distorted, which willdo more harm than good to the overall aim of improving the disseminationof patent information and the utilisation of the patent systems in Europe.We therefore very much recommend taking a careful and consideredapproach when introducing further measures of state support.

ESPACE Bulletin – a turbo-booster for theEuropean Patent Register ESPACE Bulletin will soon be redesigned into a single-volume online database, with additionalfeatures to make it even more accessible to users.

Available online and updated weekly, ESPACE Bulletin provides access to bibliographic and procedural information on all published European patentapplications and granted European patents. It is the up-to-date electronicversion of the entire collection of the European Patent Bulletin paper-formbooks.

It contains bibliographic data and information relating to the examinationand opposition procedure for all these documents, from the first publicationuntil the end of the procedure before the EPO.

With more than 70 search criteria, the diversity and richness of the information in ESPACE Bulletin is ideal for creating specific data sets thatcan be analysed further.

With just a little practice you can easily generate EP patent statistics. Combine the search and retrieval power of ESPACE Bulletin with the online European Patent Register, which contains many additional detailsconcerning the examination, oppositions and appeals, and you will enjoytruly comprehensive access to everything there is to know about any European patent application, from publication to the end of the procedure.

PATENT INFORMATION EXPERT SERVICES

Watch out for further announcements on the EPO website. For more information, contact epal@epo.org

10 Patent Information News 3 | 2010 September 2010

PATENT INFORMATION EXPERT SERVICES

Browser-based access toMIMOSA-type data sources now available!Users have long been asking for a tool that provides the data coverage of esp@cenet and the search capabilities of the EPO's MIMOSA software, all through a simple internet browser, without the need for additional software.

Their wait will finally come to an end with the launch of the EPO's newbrowser-based access to the ESPACE databases at the EPO Patent Information Conference, taking place in Lausanne, Switzerland, from 18 to 21 October 2010.

The introduction of the EPO's new "EPO Patent Information Expert Services"client platform will enable users to access resources via a browser using aRich Internet Application.

The new interface offers professional search capabilities, allowing users to run complex queries, display, download and print their search results, andcreate diagrams to visualise them using statistics. Additionally, the outputcan be customised to suit individual needs. Access to the subscriptionESPACE online databases via this new interface is via a username and password.

What is the URL?https://data.epo.org/PIES_latest/ria.html

Learn more about the browser-based access tool and the ESPACE products in the EPO's virtual classroom series and training courses –see www.epo.org/patents/learning/pi-training.html.

For more information about EPO Patent Information Expert Services, contact epal@epo.org.

New citation data in GPIGlobal Patent Index (GPI), the EPO's premier product for patent searching, is about to be enhanced by the inclusion of a number of new search fieldsfor citations.

The new citation search criteria will be available in the search group"DETAILED SEARCH/Citation" as follows:

Code Label

CPIS Patent (international search report)

CPSS Patent (supplementary search report)

CPPE Patent (international preliminary examination phase)

CNIS NPL (international search report)

CNSS NPL (supplementary search report)

CNPE NPL (international preliminary examination phase)

More information can be found in the GPI user manual v1.5, addendum 1,which can be downloaded from http://www.epo.org/patents/patent-information/subscription/gpi/details.html

Extract from GPI of patent and NPL citations with search categories

Patent Information News 3 | 2010 September 2010 11

PUBLICATIONS CORNER

"Publications corner" is a regular feature of Patent Information News, providing readers with statistics and general information about EPO publications.

European patent publicationsJanuary – September 2010

EP-A documentsEP-A1

EP-A2

Total EP-A1 + A2

Percentage EP-A1 of total A1+A2 73.0%

EP-A3

EP-B documentsEP-B1+B2

Weekly average 2010

851

316

1 167

324

1 117

Total Jan-Sept 2010

33 205

12 310

45 515

12 621

43 555

Change vs. 2009

0.9%

–15.3%

–4.1%

5.2%

–8.0%

9.1%

� EP-A1: European patent applications published with search report � EP-A2: European patent applications published without search report� EP-A3: European search reports � EP-B1: European patent specifications� EP-B2: revised European patent specifications

Note: The table does not include statistics on European patent applications filed via thePCT route (Euro-PCT applications). These are published by WIPO and are not madeavailable by the EPO unless they are in a language other than English, French orGerman. Currently about 70% of all European patent applications are Euro-PCT filings.

Patent statistics for decision-makers: "New technologies, patent quality and entrepreneurship"Don't miss the conference in Viennaon 17 and 18 November 2010!

We would be pleased to welcomeyou at the "Patent statistics for decision-makers" conference. If youare interested, please register soonat www.epo.org/about-us/events/patstat.html

Existing (and prospective) PATSTATcustomers should also register forthe pre-conference workshop thatwill take place at the EPO's premisesin Vienna from 14.00 to 17.00 hrs onTuesday, 16 November 2010. Thissession represents a unique chance

to meet other users as well as members of the EPO PATSTAT team,who will be available to answer yourquestions.

Our programme boasts some highlyexperienced keynote speakers, and afascinating collection of presenta-tions from academics and represen-tatives from industry and patentorganisations (www.epo.org/about-us/events/patstat/programme.html).

This conference is more than just anopportunity to find out more aboutpatent statistics and to network withfellow users. It is also an opportunity

PATENT ANALYSIS

OECD database updatesThe OECD has released updates toits REGPAT, Citations and TriadicPatent Families databases.

The June 2010 edition of REGPATattributes applicants' and inventors'addresses to micro-regions for morethan 30 countries, in line with thelatest Nomenclature of TerritorialUnits for Statistics (NUTS).

WO equivalents to the patentscited, in order to facilitate furtherconsolidation of the data.

The datasets are available for down-load by writing to sti.contact@oecd.org. Please mention "OECD patentdatabase" in the subject line andspecify the name of the dataset youare interested in. Further informa-tion can be found at www.oecd.org/sti/ipr-statistics.

The Triadic Patent Families databasecovers European and Japan PatentOffice applications and US Patentand Trademark Office grants thatshare the same priorities.

The Citations database includescitations (patents and non-patentliterature) in patents at the EPO orfiled through the PCT. The data,derived from the EPO’s PATSTATdatabase, includes a list of EP or

to learn about new trends in measuring patent quality andpatent valuation, and how thesetrends will affect patenting strate-gies and promote innovation.

For more information, seewww.epo.org/aboutus/events/patstat.html

The OECD statistics portal(http://stats.oecd.org/) includesdata on predefined indicators atregional and country level forpatents in selected technologydomains (ICT, biotech, nanotech and environmental-related technologies).

www.oecd.org/sti/ipr-statistics

Some important telephone numbers

esp@cenet helpdeskTel.: +43 1 52126 4051Fax: +43 1 52126 4533e-mail: espacenet@epo.org

Electronic publications advice lineTel.: +43 1 52126 2411Fax: +43 1 52126 2492e-mail: epal@epo.org

INPADOC helpdeskTel.: +43 1 52126 115Fax: +43 1 52126 3292e-mail: inpadoc@epo.org

Asian patent informationTel.: +43 1 52126 4545Fax: +43 1 52126 4197e-mail: asiainfo@epo.org

TrainingTel.: +43 1 52126 1043Fax: +43 1 52126 4533e-mail: training.vienna@epo.org

Customer Service Centre (CSC)Tel.: +43 1 52126 4547Fax: +43 1 52126 2491e-mail: csc@epo.org

for subscriptions:Tel.: +43 1 52126 4546Fax: +43 1 52126 2492e-mail: csc@epo.org

Switchboard Tel.: +43 1 52126 0

EPO Customer Services are open for your enquiries on all mattersrelating to European patents: Tel.: +49 89 2399 4636, e-mail: info@epo.org

12 Patent Information News 3 | 2010 September 2010

OTHER NEWS

www.epo.org

P U B L I C A T I O N I N F O R M A T I O N

Publisher: Richard Flammer

Editors: D. Shalloe, K. Maes

Contributors: P. Aladenise, E. Ambros,

G. Boedt, R. Feinäugle, A. Fischer (IPI),

N. Horn, R. Iasovoli, C. Kämmer,

P. Le Gonidec, T. Nyfeler (IPI),

C. Pentheroudakis, I. Schellner,

D. Shalloe, H. Wongel

Design: Atelier 59

Patent Information News is

published by the

Principal Directorate

Patent Information,

European Patent Office,

Vienna sub-office,

Rennweg 12,

1030 Vienna, Austria

Tel.: +43 1 52126 0

The opinions expressed in this

publication are not necessarily those

of the EPO.

ESPACE and esp@cenet

are registered trade marks.

ISSN 1024-6673

"East meets West" in Vienna –save the dateThe "East meets West in Vienna"forum is the EPO's annual eventthat brings together patent information experts from Asia withusers from around the world. Thenext forum will be held on 14 and 15 April 2011.

For more information on previousforums, please visit www.epo.org/about-us/events/archive/2010/emw2010.html or contact the EPO'sAsian patent information services atasiainfo@epo.org.

The revised and expanded sixth edition of the "Case Law of theBoards of Appeal of the EuropeanPatent Office" was published inAugust 2010.

The book takes account of decisionsavailable in writing at the end of

New EPO publication – Case Law of the Boards of Appeal (6th edition)

December 2009, plus a number ofimportant ones from the first twomonths of 2010. Its individual chapters have also been compre-hensively updated in the light of the EPC 2000 revision. It will be aninvaluable source of information foranyone concerned with Europeanpatent law – as will the annual supplements published as specialeditions of the EPO Official Journal.

The sixth edition is available in allthree EPO official languages. TheEnglish, French and German edi-tions cost EUR 72 each, or you canorder all three volumes together forEUR 177 (prices include postage andpackaging).

The book is available from the EPOwebsite (www.epo.org/ordering)and booksellers: – ISBN 978-3-89605-101-6

(English edition) – ISBN 978-3-89605-102-4

(French edition)– ISBN 978-3-89605-100-8 (German

edition) The EPO also plans to make the"Case Law of the Boards of Appealof the European Patent Office" available electronically on its website.