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Issue 49 | February 12, 2003
Patent Searching Improvements On the Horizon
 The European Patent Office ("EPO") announced at its ("EPIDOS") Annual Conference in October 2002 that the information contained in the INPADOC databases will soon be available free of charge via esp@cenet®, the EPO's free worldwide patent information service on the internet. In addition to expanded information about related patent documents, the EPO's improvements will also allow users to obtain legal status information for each application in a patent family. These and other aspects of patent research are becoming so complex that some are now calling for a certification process for patent searchers.

What's the Big Deal About Patent Families?

The Paris Convention led to the birth of "patent families" and the corresponding need for international searching mechanisms to identify related patent documents. The first move in that direction came with the establishment of the IIB ("Institut international des brevets") in the Hague in 1947. The IIB was eventually incorporated into the European Patent Office in 1978. In the meantime, INPADOC (the "INternational PAtent DOcumentation Center") was established in Vienna with the support of WIPO (the "World Intellectual Property Organization") in 1972. INPADOC provided a centralized bibliographic source for patent documents and eventually became part of the EPIDOS ("European Patent Information and Documentation System") service through which the EPO now organizes and coordinates all of its patent information.

Still, there are many different systems for defining patent families in use today. However, their differences usually become apparent only when family members cite different applications for priority, or are issued with different claims. The narrowest definition of a patent family is used in most patent offices and includes only those documents where the priority documents and claims match exactly. Broader definitions used by certain commercial services include cases where the applications have only one priority document in common. The INPADOC family goes one step further by starting with the application number as the connecting element, and including documents having the same scope but lacking a common priority. This latter type of patent family is of particular interest to patent attorneys and their clients who are often concerned about unconnected patents that nonetheless provide a similar scope of protection.

What's so good about INPADOC?

INPADOC patent family data is more extensive than the "equivalents" that are currently displayed in esp@cenet® search results. While "equivalent" patent documents must stem from a single priority document, INPADOC families include documents that carry any of the priorities of the source document. Consequently, the INPADOC family data also includes priorities mentioned in the documents found that are not necessarily included in the source document itself.

Professional Certification for Searchers?

These and other aspects of patent searching have now become so complex that some are calling for professional certification. For example, the Dutch patent information group WON and the Netherlands Patent Office have already taken the initiative in this area and are currently running a second round of certification courses for would-be patent searchers. The EPO has also stated that it will contribute to establishing a professional qualification for patent searchers in Europe.

While calls for searcher certification have yet to reach the U.S., the USPTO's 21st Century Strategic Plan proposes a similar certification process for firms that will eventually conduct patent searches under contract to the Office. Along these same lines, the UK Patent office has already qualified the Danish and Netherlands Patent Offices to conduct some of its patent searches and examinations. In fact, the excessive workload crisis that is facing a number of patent offices is just one of the many issues noted by WIPO in its latest "Agenda for the Development of the International Patent System."

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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